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Further, India’s music tastes are changing and with consumers open to modern interpretations of old Bollywood numbers, many labels have started investing in this area. Some of the big market players being T-Series, Saregama, Gramophone, Bathla etc. The rights of owners and the makers of cover versions has been in dispute for some time and much clarity has been provided by the amended Copyright Act of 2012 (hereinafter, the “Act”) and subsequent decisions.
What are Cover Versions or Version Recordings?
‘Cover Version’ or ‘Version Recordings’ are fresh renditions of previously published songs made using a new set of musicians, performers and artists in a studio of their own and producing a record which is entirely different from the original recording. Cover versions are often contemporary versions of familiar songs. These artists sing these songs, sometimes as a tribute to their favourite artists in their own style and giving it their personal touch. The question is whether these cover versions of the original songs evoke issues of copyright infringement in original songs?
The principle of making cover versions without express consent is an accepted practice in various parts of the world. The Indian Copyright Act, 1957 that has already been amended five times prior in 1983, 1984, 1992, 1994 and 1999, was recently amended in 2012. The amendment of 2012 brought about many important changes including clarifying the copyright issues pertaining to cover versions which will be dealt with below. In order to understand the legal implications of the cover versions in India, it may be necessary to take note of some of the relevant legal provisions.
II. Protecting Cover Versions or Version Recordings under the Act,
A. Nature of Licenses Under the Act
1. The Act has carved out a clear distinction between voluntary license and non-voluntary license.
2. Voluntary license is categorically provided under Section 30 of the Act whereby both parties are to consent to the terms of the license.
3. Non-voluntary licenses are of two types under the Act:
a) Compulsory license under Section 31 and 31A of the Act;
b) Statutory compulsory license under Section 52(1)(j) of the Act read with Rule 21 of the Copyright Rules.
B. Statutory Compulsory License Under the Act
1. Section 52 of the Act provides inter alia as follows:
(1) The following acts shall not constitute an infringement of copyright, namely:
(j) the making of a sound recording in respect of any literary, dramatic or musical work, if —
(I) “…sound recordings of that work have been made by or with the licence or consent of the owner of the right in the work.”
(Ii) “…the person making the sound recordings has given a notice of his intention to make the sound recordings, has provided copies of all covers or labels with which the sound recordings are to be sold, and has paid in the prescribed manner to the owner…”
2. Further, Rule 21 of the Copyright Rules provides for: “…making of records
(1) any person intending to make sound recordings under clause (j) of sub-section (1) of section 52 shall give a notice of such intention to the owner of the copyright and to the Registrar of Copyrights at least 15 days in advance of making such sound recordings… amount of royalties due…to be made at the rate fixed by the Copyright Board…”
C. Requirements under Section 52 (1) (j) of the Act
a) Consent is not a necessary ingredient:
i. Sub-clause (i) refers to the expression “sound recordings of that work”. The use “that” before work, means that the work links back to what was already mentioned. Therefore, “that work” herein refers to the “literary, dramatic and musical work”;
ii. If “sound recordings” here referred to the version recordings which are the subject of the exemption, then the link back to them would have been expressed by referring to them as “the sound recordings” or “the said sound recordings” or “such sound recordings”. The definite article has been elided precisely because the words “sound recordings” here connote any sound recordings.
iii. Thus, the said sub-clause is only applicable to sound recordings of the works wherein such works have been authorisedly utilised for making of sound recording before the cover version recording is made. It was held by the Supreme Court in Gramophone Co. v Mars Recording, 2001 PTC 681 (SC) that in as much as the requirements under Section 52(1) (j) of the Act and Rule 21 of the Rules are satisfied, there is no violation and that the consent requirement is only for the first recording. The said reasoning was also adopted recently in M/s Mars Recording Pvt Ltd v M/s Saregama India Ltd, RFA No.125 of 2009 in its order dated 20 January 2015.
iv. Further, if consent was necessary, there would not have been a separate Section 52(1) (j) and Section 30 would have sufficed in this regard.
v. The fact that such a clause is not provided under voluntary license requirement under Section 30 shows the legislative scheme of dispensing with the requirement of consent in case of cover versions.
vi. When the Act was first passed, the corresponding section stated:
(j) the making of records in respect of any literary, dramatic or musical work, if
(i) records recording that work have previously been made by, or with the license or consent of, the owner of the copyright in the work.
Thus, the intention was that only the initial recording required the consent of the copyright owner by using the word ‘previously’, and not the subsequent recording i.e. the cover version. The judgment of the Delhi High Court, Gramophone v Super Cassettes Industries Ltd dated 01 July 2010 (44) PTC 541, has analysed this aspect in detail and it has been held that:
“…in respect of a literary, dramatic or musical work, which has been circulated to the public by the author himself or under his authority, by making a sound recording, the protection of the author’s copyright is diluted so far as the making of subsequent recordings is concerned. Though, he continues to own the copyright, his express consent is not necessary…”.
b) Notice of intention:
Sub-clause (ii) refers to - the person making the sound recordings has given a notice of his intention to make the sound recordings, has provided copies of all covers or labels with which the sound recordings are to be sold…
Under Sub-clause (ii), work royalties have to be paid. The same has already been pre-worked and pre-declared by the Copyright Board so that no petition is necessary to the Copyright Board to fix the royalty in each separate case.
d) Other requirements:
i. No alterations shall be made which have not been made previously by or with the consent of the owner of rights, or which are not reasonably necessary for the adaptation of the work for the purpose of making the sound recordings. The same has been provided in recognition of the moral rights of the author protected under S. 57 of the Act;
ii. The packaging or label should not be misleading or confuse the public as to their identity;
iii. No such recording shall be made until the expiration of two calendar years after the end of the year in which the first recording of the work was made; and
iv. The person making such sound recordings shall allow the owner of rights or his duly authorised agent or representative to inspect all records and books of account relating to such sound recording.
e) Section 52(1)(j)(i) and 52(1)(j)(ii):
Another issue which needs considerable unravelling is whether sub-clauses (i) and (ii) of Section 52 (1)(j) should be read “disjunctively” or “conjunctively” which was brought up due to deletion of ‘and’ between the two clauses by the amending Act of 1994. It was first considered in the case of Gramophone Co. of India Ltd. v. Mars Recording Pvt. Ltd. & Ors., 2000 PTC 117 which was later appealed to the Supreme Court Gramophone Co. of India Ltd. v. Mars Recording Pvt. Ltd. & Ors., 2001 PTC 681 (SC). As per the Karnataka High Court, the two sub-clauses should be read disjunctively and not together and the same reasoning has been followed in subsequent cases as well. However, as per the said interpretation, it would mean that a cover version might be made with the permission of the copyright owner under the first clause; and alternatively by proceeding under the second sub-clause by following the procedure laid down therein. The said interpretation suffers from a serious flaw as it assumes that the first two words of sub-clause (i) refer to the sound recording of the cover version. Further, based on the above reasoning, if we were to read them disjunctively, assuming an “or” between them, the consequences would be absurd. The Supreme Court, however did not express any opinion and merely held that the facts were not established.
The correct interpretation mandates that the sub-clauses are conjointly read and thus, the ingredients of Section 52(1)(j) should be:
a) That there is a literary, dramatic or musical work from which a person desires to make sound recordings;
b) Sound recordings in respect of such works have been previously made with the consent of the copyright owner;
c) The person making the records has given a prescribed notice and paid the prescribed royalty at the rate fixed by the Copyright Board subject to the other conditions.
It is pertinent to note that Section 31 C after the amendment of 2012 supports a conjoint reading by using the words “...where sound recording of that work have been made by or with the license or consent of the owner”. Thus, clarifying that it is a pre-requisite in case of cover version of a sound recording that a sound recording of that work has been made by or with the consent of the author.
III. Cover Versions/ Version Recordings post 2012 amendment
Due to the deluge of litigation, the position of cover versions and version recordings was clarified through the insertion of Section 31 C which reads ‘Statutory License for Cover Versions’. As per the committee report on copyright amendment, which was duly approved by the committee in its meeting held on 18 November 2010, it was further clarified that Section 31 C was not a new provision for statutory licence for cover version, but replacement of section 52(1) (j) for improved clarity. The said amendment was carried out with the view that continuation of fair use clause with statutory license under 52 (1) (j) needs to be removed from the list of fair dealing under section 52 and be placed under Chapter VI i.e., licences. Section 31 C has the following conditions:
a) Requirement of same medium as the original.
b) Time period after which a cover version can be made has increased from 2 years to 5 years.
c) Payment has to be made in advance, and for a minimum of 50000 copies which may be lowered by the Copyright Board if the works are of a particular language or dialect.
d) Cover versions have an additional requirement wherein they are not allowed to ‘contain the name or depict in any way any performer of an earlier sound recording of the same work or any cinematograph film in which such sound recording was incorporated’ along with the requirement of being misleading or confusing to the public regarding its identity.
e) Cover versions must state that they are cover versions.
f) No alterations are allowed in the literary or musical work which has not been made previously or with the owner’s consent. Under the earlier provision, alterations were allowed if they were ‘reasonably necessary for the adaptation of the work’. However, as per the amendment now they are only allowed if it is ‘technically necessary for the purpose of making of the sound recording’.
The impact of the above amendments were recently discussed in detail in the case of Division Bench of Karnataka Appellate Court in January 2015 in M/s Mars Recording Pvt Ltd v M/s Saregama India Ltd, wherein the court clarified that “Though reference to a ‘Statutory License’ was not to be found in the Act prior to its amendment Act 27 of 2012, the procedure to secure such license…under Section 52(1)(j) (ii) and the procedure….under Section 31C of the amended Act, are identical though with some minor variations as to particulars.” Thus, S. 52(1) (j) has the flavour of a Statutory License. The court considered the law as it was prior to the amendment and held that there would not be an infringement of copyright in a sound recording, if the same has been with the consent or by license of the copyright owner.
While much clarity has been sought after the 2012 amendment, there are cases which are still pending and grappling with the issues of cover versions.
Anand and Anand
The Indian media and entertainment industry - particularly the film industry popularly known as Bollywood, earlier confined to only Indian film and music lovers, has expanded above and beyond the Indian terrain over the last two decades. Much of the popularity of the Indian film industry is owed to its music. According to KPMG, India’s music business will nearly double over the next five years, bringing in an annual income of INR 18.9 billion (USD 300 million) in 2019.
Prachi Agarwal BSc. LL.B, works in the litigation department of Anand and Anand. She completed her studies at National Law University, India in 2007 and at George Washington University, US in 2008. Ms Agarwal is actively involved in intellectual property litigation practice including patents, trademark, copyright and designs and also provides clients with legal advice in intellectual property law matters. She previously worked at IP law firm Ditthavong, Mori and Steiner, Virginia, US and is licensed to practice in the Commonwealth of Virginia, USA and India.
Managing partner Pravin Anand focuses on intellectual property, litigation and dispute resolution. He completed his law studies in New Delhi in 1979 and has since been practicing as an intellectual property lawyer. Mr Anand has been a counsel in several landmark intellectual property cases involving the first Anton Piller Order (HMV cases); the first Mareva Injunction Order (Philips case); the first Norwich Pharmacal Order (Hollywood Cigarettes case); Moral rights of Artists (Amarnath Sehgal case); Recognition for pro bono work for rural innovators at grass root level (National Innovation Foundation Award - Govt. of India); First order under the Hague Convention (Astra Zeneca case) and several significant cases for pharmaceutical clients such as Novartis, Pfizer and Roche. He is a co-author of two volumes of Halsbury's Laws of India on Intellectual Property and serves on the editorial board of several international intellectual property journals. Mr Anand is also author of the India chapter in Copyright Throughout the World - WEST (Thomson Reuters).