1. Access to Protected works: Limits of Compulsory Licence and Parallel import Ajitha.P National University of Advanced Legal Studies, Cochin

2. Introduction As propounded by John Locke, people have a natural right to property and people own the labour of their bodies and the results of that labour. “It is just, that [the] author should reap the pecuniary profits of his own ingenuity and labour. It is just, that another should not use his name, without his consent. It is fit that he should judge when to publish, or whether he ever will publish.”(Millar v Taylor, per Lord Mansfield, 1769 4 Burr. 2334, at 252) International Covenants relating to protection of Copyright 1.The International Convention for the Protection of the Literary and Artistic works was adopted, 1886, the Berne Convention, with subsequent amendments 2.Trade-Related Aspects of Intellectual Property Rights, 1994 (A WTO Agreement)- Minimum standard+ enforcement mechanism. 3.WIPO Copyright Treaty 1996 4.WIPO Performances and Phonograms Treaty In India, Indian Copyright Act, 1914 was passed which was mainly based on the U.K. Copyright Act, 1911, which was replaced by the Copyright Act, 1957 Copyright is a Statutory right (S.6 of the Act), it protects only expressions and not ideas (R.G. Anand v. Delux Films, AIR 1978 SC 1613)

3. Balancing Copyright and Public Interests Art 27 of the Universal Declaration of Human Rights, 1948 provides that Every one has the right freely to participate in the cultural life of the community to enjoy the arts and share in scientific advancement and its benefits. And Every one has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author. As it evident from the provisions of UDHR which was proclaimed way back in 1948, a society should seek to strike to balance between rights of creators and the public interests. Every creator is entitled to the sweat of his brow and the society has right to enjoy the arts and share in scientific advancement and its benefits. The Copyright Act, 1957(the Act) also seeks to strike this balance through various provisions. Though it is nothing but an adherence to the minimum standards fixed by the TRIPS. Some of the mechanisms which seeks to strike this balance includes Compulsory licence, Parallel Import. Section 31,31A,32,32A,32B of the Act deals with Compulsory licence and amendments to proviso to S. 2(m),S.14 deals with Parallel Import

4. Compulsory Licence The owner of the Copyright may grant any interest in the right by licence to another person-should be in writing.(S.31) The Copyright board under certain circumstances may grant licence, on an application made. (Compulsory licence) Compulsory licence may be granted by the Copyright Board under these circumstances i. works withheld from public (S.31) ii.unpublished Indian works (S.31 A) iii.to produce and publish translations under certain circumstances (S.32 and S.32A) I.Works withheld from public (S.31) If the author of any Indian Work (Indian Work as defined in the Expl. to Section 31) has refused to republish or allow the republication or performance in public, or refuse to allow communication to the public by broadcast, or in case of sound recording the work recorded in such sound recording and by reason of such refusal the work is withheld from public, a person who has requested the owner to republish such work can complain to the Copyright Board seeking for a Compulsory licence.

5. The Copyright Board after giving the owner an opportunity to be heard, and holding an inquiry, is satisfied that the grounds of such refusal is unreasonable, may direct the Registrar of the Copyright to grant such licence subject to the payment of compensation as determined by it. Where two or more person apply to the copyright board for grant of such Compulsory licence, it shall be granted to the Complainant who is the opinion of the Copyright Board would best serve the interests of the general public. As held in the case of Entertainment India Limited v. Super Cassettes Industries (2004 29 PTC282 Bom.),held that field of Section 31 (1) (b) is narrower than that of Section 31 (1) (a) and Section 31 (1) (b) is in nature of Proviso or exception to Section 31 (1) (a),idea behind Section 31 (1) (b) is to take out broadcast from field of Section 31 (1) (a) and deal with the same separately, different treatment given to broadcast implies that even if copyright holder in work himself rebroadcasts the work or is allowing others to broadcast the work still complaint can be made. Also relied on in the case on Music Choice India Private Limited v. Phonographic Performance Limited, 2010(3)BomCR616.

6. II. Unpublished Indian works (S.31 A, inserted by way of Amendment Act, 1983) S.31A of the Act, provides that in case of an unpublished work, the author of which at the time of making the work was a citizen of India, where the author is dead, unknown or cannot be traced or the owner of the copyright cannot be found, any person may apply to the Copyright Board for a licence to publish such work or a translation in any language Before making such application the applicant should publish his proposal in one issue of a daily newspaper in English having circulation in the major part of the India, and where the application is for the publication of a translation in any language, also in one issue of any daily newspaper in that language Grant of such licence is subject to payment of royalty that may be deposited in the public account of India or in any account as specified to enable the owner or his heirs or representatives to claim such royalty at any time. In such cases of work, if the original author is dead, the Central Government may require the heirs, executors, or legal representatives to publish such work within such time as may be specified, if such publication is desirable in national interest. If the work is not published within such specified period the Govt. on application by a person permit him to publish on payment of royalty as determined by the Copyright Board

7. III. To produce and publish translations under certain circumstances (S.32 and S.32A) S.32A of the Act, provides that after expiry of a period of seven years from the first publication of a literary or dramatic work any person may apply to the Copyright Board to produce and publish translation of such work. In case of non Indian Work such application can be made after three years from the first publication of such work, for purposes of translation in any language, which is general use in India for the purposes of teaching, scholarship and research (as defined in the section). But where such translation is in a language not in general use in any developed country such application may be made after a period of one year from such publication. The licence granted in respect of non Indian work will not extend to the export of copies of the translation outside India and every copy of such translation should contain a notice to the effect that the copy is available for distribution only in India. However, the export of copies of translation in a language other than English, French, Spain can be made by the Government to any country if such copies are sent to citizens of India residing outside India or to any association of such citizens outside India, or where such copies are meant to be used for the purposes of teaching, scholarship, or research, and not for any commercial purposes. The export is possible only when importing country has permitted it. This licence is subject to other conditions specified in the section.

8. S.32A inserted by way of Amendment Act, 1983, of the Act provides that where, after the expiration of the relevant period (seven years for works relating to fiction, poetry, drama, music or art and three years for works relating to natural science, physical science, mathematics or technology, five years for any other work) from the date of first publication of an edition of a literary scientific or artistic work if the copies of such edition are not made available in India or such copies have not been put on sale in India for a period of six months to the general public or in connection with systematic instructional activities at a reasonable price by owner of the right of reproduction, or any person authorised by him in this behalf, then any person may apply to the Copyright Board for a licence to reproduce and publish such analogous forms of reproduction at the price at which such edition is sold or at a lower price for the purposes of a systematic instructional activities. A licence to reproduce and publish such translation of a work under S.32 A shall not be granted unless such translation has been published by the owner of the right of translation or a person authorised by him and translation is not in language in general use in India. However this is not applicable for any text incorporated in audio visual fixations prepared and published solely for the purpose of systematic instructional activities

9. The Rule of Exhaustion ‘Rule of exhaustion of rights' is a rule by “rights of the copyright holder are lost once the first sale of the article is effected i.e. the owner's control over the article and the rights therein are exhausted on the first sale and he/she cannot control every subsequent sale by enforcing rights over the same”. (John Wiley & Sons Inc. & Ors vs Prabhat Chander Kumar Jain & Ors, Delhi High Court,2010) There are three forms of exhaustion – 1)Domestic – where the owner exhausts his right only if the copies are sold for the first time domestically; 2)Regional – where the rights are exhausted only if the first sale occurs within his own country or any country within a region; and 3)International – where rights are exhausted irrespective of the place where the copies are first put for sale. In the first two situations, the owner retains the right to restrict import of copies made abroad into the domestic market or the region respectively. However, in case of international exhaustion, the owner loses this right on the first sale. The practical effect of such exhaustion is Parallel Import

10. Meaning of Parallel Import "Parallel import, insofar as copyright is concerned, involves an “original” copyright product (i.e. produced by or with the permission of the copyright owner in the manufacturing country) placed on the market of one country, which is subsequently imported into a second country without the permission of the copyright owner in the second country. For instance, the copyright owner of a book produced in India places the book on the market in India. A trader buys 100 copies of the book from India and imports them to China without the permission of the copyright owner of the book in China. This act of the trader bringing the books into China is called parallel import, the legality of which depends on the copyright law of the importing country (namely China in this example)." - Consumers International, Copyright and Access to Knowledge: Policy Recommendations on Flexibilities in Copyright Laws 23 (2006).

11. Trips and Parallel Import Article IV of the TRIPS Agreement provides that any intellectual property benefit that is given to one member nation must be given to all. This means that a member nation can allow parallel importation, "as long as the practice is applied equally to all members." TRIPS attempted to address exhaustion of rights and parallel importation although, in the end, it took a hands-off approach and specifically excluded dispute resolution settlements on the topic. (Ryan L. Vinelli, Bringing down the walls: how technology is being used to thwart parallel importers amid the international confusion concerning exhaustion of rights, 17 Cardozo J. Int'l & Comp. L. 135).

12. Parallel Import and India In Warner Bros. v. V.G. Santosh, Delhi Court, 2009 held that in the context of copyright law, while the principle of international exhaustion may apply to literary, musical, dramatic or artistic works; it does not apply to cinematographic film and to sound recordings as well.This case involved the import from US into India of legally purchased DVDs of films produced by Warner Bros. which were not yet released for public viewing in India. The Judge based his decision on the difference between the wordings of Sec. 14(1)(d) (e), 14(1)(a)/(b)/(c). While under the former, the copyright owner continues to exercise his right to sell or give on hire a particular copy “regardless of whether such copy has been sold or given on hire on earlier occasions”, under the latter, he ceases to exercise these rights over copies which are “already in circulation.”

13. Parallel import and S.14 This means that the buyer of a cinematographic film or a sound recording cannot sell or give on hire, his copy of the film or recording without the previous permission of the copyright owner. However, the buyer of a literary, musical, dramatic or artistic work does not require any such permission. The Court favoured this interpretation also on the ground that since owners of copyright in films/recordings can exercise their right to distribute the work through licences which can be limited geographically, accepting international exhaustion would permit a licensee, who acquires a copy, to exploit the copies beyond his contractually imposed geographical limit and thus nullify the object of geographically limited licences.

14. Changes proposed by the Copyright Amendment Bill, 2010 The Bill proposes to add a proviso to the definition of an “infringing copy” under Sec. 2(m) - “Provided that a copy of a work published in any country outside India with the permission of the author of the work and imported from that country into India shall not be deemed to be an infringing copy.” Correspondingly, the words “regardless of whether such copy has been sold or given on hire on earlier occasions” in Sec. 14(1)(d)(ii) and 14(1)(e)(ii) are proposed to be deleted. Also, the word “hire” in the above sections has been replaced by “commercial rental” which definition is proposed to be added by Sec. 2(fa) - 2(fa) “commercial rental” does not include the rental, lease or lending of a lawfully acquired copy of a computer programme, sound recording, visual recording or cinematographic film for non-profit purposes by a non-profit library or non-profit educational institution.

15. Impact of the Bill, 2010 The effect is that the significance of the Warnes Bros. case will become irrelevant. Indian Copyright law will recognise the principle of international exhaustion uniformly without making any distinctions between the various works. Further, the exclusion of ‘copies of works lawfully published abroad and imported into India’ from the definition of “infringing copy”, facilitates the application of international exhaustion rule. Exception is provided to the applicability of International exhaustion by way of addition of definition ‘commercial rental’. This exclusionary definition of ‘commercial rental’ is influenced by S.109 (2) (b) (1) (A) of the U.S. Copyright Code.

16. TRIPS Compliance and the Bill, 2010 Moreover ‘commercial rental’ under the Indian law applies not only to sound recordings and computer programmes but also to cinematographic films. The Amendment enables India to comply with Article 11 of the TRIPS which states that “In respect of at least computer programs and cinematographic works, a Member shall provide authors and their successors in title the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works. A Member shall be excepted from this obligation in respect of cinematographic works unless such rental has led to widespread copying of such works which is materially impairing the exclusive right of reproduction conferred in that Member on authors and their successors in title. In respect of computer programs, this obligation does not apply to rentals where the program itself is not the essential object of the rental.”

17. Parallel Import and Access An report was prepared in 2006 by Consumers International, (a non voluntary organisation for the protection of rights of consumers) in which they studied the costs of textbooks in eleven countries, including India, by average purchasing power of each country's citizens, instead of absolute cost. Based on that study, and a detailed investigation of international treaties on copyright and the flexibilities allowed in them, Consumers International recommended that India should amend our law to make it clear that parallel importation of copyrighted works is legal (on page 51 of the report). TRIPS, leaving the option of Parallel import open, india has taken a right step forward by adding provisio S.2(m) of the Act by way of the Copyright Amendment Bill, 2010. This would increase Public access to protected works

18. Access, Compulsory licence and Parallel Import In the Indian Context, the provisions of Compulsory licence, with subsequent amendment in 1983, seeks to enhance public access to the protected works and serves the public interest at its best With the changes proposed by the Copyright Amendment Bill, 2010 by way of addition of a Proviso to Section 2(m), and related amendments in S.14 with respect ‘commercial rental’, brings Indian law in tune with the TRIPS agreement. As the very object of copyright is to strike a balance between innovation and public interest the Indian Copyright Law, the existing provisions and the proposed amendments attempts to achieve this object in a quite balanced proportion. The existing limits on Compulsory licence and Parallel import in the Indian law in fact facilitates to achieve this object in an appropriate manner. Thus the efforts of the Indian Legislature in the realm of Copyright law is laudable!