CASE LAW: PHONOGRAPHIC PERFORMANCE LIMITED VS CANVAS COMMUNICATION

In the recent case of Phonographic Performance Limited (“Plaintiff”) Vs. Canvas Communication (“Defendant”), the Hon’ble High Court of Delhi decides that the owner’s right to issue licenses in respect of a copyright does not cede at any time, unless the owner grants exclusive right in that regard to a copyright society.

The plaintiff is engaged in the business of issuing licenses of sound recordings for public performance/ communication, on the basis of assignments made to them by their members, who own copyright in such recordings. The plaintiff filed a plaint against the defendant as a quia timet action. The plaintiff claims that on December 13th, 2021, he learnt that the defendant was putting up a stall at the Warehouse Expo organised at Pragati Maidan since 16th December, 2021 and was planning to use sound recordings, in which the copyright was held by the plaintiff, without obtaining any license from the plaintiff. The plaintiff issued a notice to the defendants by e-mail on 13th December, 2021, requiring the defendant to cease and desist from using or playing the sound recordings, in which the plaintiff owns the copyright.

According to Section 30 of the Copyright Act, 1957 (“the Act”), the plaintiff, as the owner of copyright in the aforesaid sound recordings is entitled to grant licenses for communication to the public/ public performance of the plaintiffs’ collection of sound recordings to any third parties. Any communication of such sound recordings without a license from the plaintiff, amounts to infringement of copyright under Section 51(a)(i) of the Act. Moreover, allowing a place to be used for profit for the communication of such sound recordings also constitutes infringement under Section 51(a)(ii) of the Act.

The defendant vide their response to the notice did not deny the fact that it was intending to exploit sound recordings in which the plaintiff holds copyright. The only defence taken by the defendant in their response was that the plaintiff was not entitled to issue licenses in respect of the sound recordings in question, by virtue of the second proviso to Section 33(1) of the Act.

The plaintiff was a copyright society registered under Section 33 of the Copyright Act, from 7th May, 1996 till 20th June, 2014 and the plaintiff was required to re-register itself as a copyright society, which was not done.

The coordinate Bench of the Hon’ble Court interpreted the provisions of Section 33 to hold that the owner’s right to issue licenses in respect of a copyright does not cede at any time, unless the owner grants exclusive right in that regard to a copyright society and expressed the view that the right of the owner would subsist. Following thereupon, the coordinate Bench interpreted the second proviso to Section 33(1) by noting that there is an independent copyright in a sound recording, distinct from the copyright in a cinematographic work or other work in which the sound recording may be included. According to the coordinate Bench, the aforesaid independent right subsists, unless and until the owner of copyright exclusively authorises a copyright society to issue such licenses.

In view of foregoing, the Court stated that the stand taken by the defendant in its response to the plaintiffs’ cease and desist notice is contrary to the law. The Court restraint the defendant from exploiting or using any sound recordings or other work in which the plaintiff holds copyright including sound recordings which was in the process of being exploited by the defendant in connection with the Work Expo Exhibition.