By, Neeraja Seshadri & Prathiksha Chandrashekar

 

Introduction

The extent of the applicability of the fair use doctrine of the United States in copyrighted works has often to be characterized in terms of its ‘transformativeness’.[1] This doctrine which is fairly novel in the Indian copyright jurisprudence has been evolved by the Courts in the United States of America.[2] Following its extensive application by the United States Courts in a plethora of judgments[3], the Indian Courts have applied the concept of transformative use in cases which makes it pertinent to analyse the impact of application in the Indian context.

US perspective

The doctrine of fair use in the United States is primarily dealt with under Section 17 of the Digital Millennium Copyright Act, 1998.[4] Fair use is a limitation on exclusive rights in works of authorship granted and is determined based on four factors namely: purpose and character of the use, nature of copyrighted work, amount and substantiality of the portion taken and the effect of the use on potential markets. The concept of transformative use falls under the first criteria of purpose and character of the use. In 1990, Justice P.N Leval expounded the doctrine of transformative work[5] and since then it has been steadily applied in almost 90% of the cases involving the fair use doctrine.[6] Most cases involving commentary, criticism and parody have used the defence of transformative use.[7]

 

Campbell v. Acuff-Rose Music Inc[8] is one of the initial cases decided by the US Courts where transformative use as an underlying concept of fair use was extensively dealt with. The central focal point of enquiry, in this case, rested on the fact whether the new creation in question actually alters the original work adding a new expression, meaning or message to the original work by substantially changing the character of the work underlying a newer purpose. The case, in essence, explained transformative use and cautioned that merely making superficial changes with the underlying purpose being the same would not constitute a transformative work. It was also observed that in the scenario that a work is considered to be transformative in nature, it is insignificant if the copying is whole, substantial or minimal as it would not act as a market substitute and neither affect the market share of the prior work. In Cariou v. Prince[9] the ordinary observer test was laid down to evaluate cases of transformative use where a newer meaning of the work must be observed by a reasonable man. The US courts have gradually fine-tuned the concept of transformative use and the concept lies at the core of the US copyright jurisprudence.

In the case of Perfect 10 v. Amazon[10] the US District Court was faced to explore yet another angle of the use of the concept of transformative work. Google, in essence, displays thumbnail images of copyrighted photographs in its search results, this was challenged as an infringement. It was held that Google’s use of thumbnails was highly transformative in the sense that the search engine virtually transforms the image and in lieu of this also provides social benefit by transforming an original work into an electronic reference tool. The court, in this case, characterized the cache copying function of full-size images performed by a user’s computer as a transformative use thereby helping the user in assessing the internet in an effective manner. Further, it was observed that the impending public benefit outweighs the commercial considerations that Google may obtain in the process of displaying the said thumbnails.[11] This instance is an example of transformative use of the copyrighted material.[12]

Indian Perspective

The doctrine of fair dealing, which is a common-law approach, is an exception to copyright infringement laid out in the copyright statute. Unlike the position in the United States which is decided on a case to case basis, there is an exhaustive list of acts considered as fair dealing under Section 52 of the Copyright Act, 1957.[13] A concept similar to that of transformative use was initially laid down in RG Anand v. Deluxe Films[14] before such a doctrine was even propounded in the United States. The Court, in this case, held that where the theme is the same but is presented and treated differently, the subsequent work becomes a completely new work and no question of violation of copyright arises. The doctrine as propounded by Justice Leval in America is similar to the position taken by Indian Courts in 1978. However, according to the concept of transformative use in the United States, even the underlying theme must be different.[15] As Indian Courts have started incorporating the concept of transformative nature of works according to the US perspective for fair dealing cases in India, it becomes imperative to assess the viability of adopting this doctrine in the Indian copyright regime.

Section 52(1)(a)(ii) of the Copyright Act,1957[16] in a nutshell states that criticism or review of a literary, dramatic, musical or artistic work would be considered fair dealing and would not attract liability for infringement of copyright. The concept of transformative use is interpreted to be a part of the term ‘review’ under many cases primarily involving literary works. The Chancellor Masters of the University of Oxford v. Narendra Publishing House[17] is one of the landmark judgments where this doctrine was first analyzed. The Plaintiffs contended that the Defendant had substantially reproduced the contents of their work which was a textbook with mathematical exercises and was liable for copyright infringement. The Court held that the purpose of the guide created by the Defendant in this instant case was completely different from that of the textbooks of the Plaintiff as it was created with the intention to provide assistance to students weak in the subject and that it would not affect the market value of the work of the Plaintiff in any manner. It was observed that when a subsequent work though based on the same theme is presented and treated differently, the work is considered to be as transformative under the term review. In this case, the Court adopted the four-factor test laid down by the courts of the United States. The stance taken by the Delhi High Court in the case of University of Cambridge v. B.D. Bhandari and Ors.[18] was also a similar one where it was held that the nature of guide books was transformative in nature. In this case, The Plaintiff contended that the grammar exercises from the works of the Plaintiff was substantially copied by the Defendants. The Court held that the literary sophistication of these works was different from one another.

The Delhi High Court also dealt with the concept of transformative work in the case of Super Cassettes Industries Ltd. v. Mr. Chintamani Rao and Ors.[19]  The Plaintiff filed a case for permanent injunction and contended Defendant was engaging in infringing activities by broadcasting cinematograph and musical works to which the Plaintiff owned copyrights. The Defendant in stated that this was a case of fair use as the works were transformative in nature. Though the Court held in favour of the Plaintiff in the instant case, there were no conclusive criteria that the Court enunciated for further use. The court merely observed that substantiality would include the quality and quantity of work. A common precedent referred in all these cases is V Ramaiah v. K Lakshmaiah,[20] where the court held that in case of literary works like guide books if a fair dealing defence is taken it becomes imperative that there is an independent contribution of the author in the newly created work.

Conclusion

The legal conundrum revolving the applicability of this doctrine in the Indian context arises from the lacunae with respect to the criteria which are required to categorize a work as transformative to accord the fair use protection. The US standard is the four-factor test which has been evolved in the Campbell case. However, there exist no such guidelines for adjudication of claims of transformative nature of works in India which can be counterproductive when an arbitrary case to case application is made. For example, in various cases, though the court has evaluated the concept of transformative use, the aspect of the substantiality of copying has not been extensively dealt with as it has been in the United States which makes it tedious to draw the boundaries with respect to what constitutes transformative use in India. Though a straightjacket formula cannot be formulated in this regard, it becomes imperative to set out guidelines that can be followed. These lacunae pose a threat while evaluating cases of copyright infringement considering that this doctrine can be used as a safe harbour to evade copyright infringement. Due regard must also be given to the fact that there exists a common law doctrine where works which are public interest which may otherwise be infringing can be allowed to prevail.[21] This doctrine, however, is rarely used in India or in the United Kingdom. Further, in the current scenario, this doctrine has been used only in the case of literary works. There are various concerns about what would be considered a substantial amount of copying and transformative use in case of musical works and other works as such a defence was put forth before the court in Saregama India Ltd. v. Balaji Motion Pictures Limited and Ors.[22] The United States position of fair use is most close to the proposition in the Berne Convention, 1886[23] and in many situations seem like the right approach to incorporate. However, the most pressing concern of using this doctrine in India is that there exists a provision which clearly provides an exhaustive list of what acts are not considered infringing. By incorporating this doctrine there is a chance that certain acts which have no basis in the statute get away with copyright infringement which on a long run may prove counterproductive as it undermines the sanctity of the provision in itself.

 

[1] Copyright Services, Understanding Fair Use, University of Minnesota (Jun.18, 2020, 9: 37 PM) https://www.lib.umn.edu/copyright/fairuse

[2] Richard Stim, Fair Use: What is Transformative, nolo (Jun.18, 2020, 9: 36 PM)  https://www.nolo.com/legal-encyclopedia/fair-use-what-transformative.html

[3] Rogers v. Koons 960 F.2d 301 (1992); Leibovitz v. Paramount Pictures, 137 F.3d 109(1998); Seltzer v. Green Day, 725 F.3d 1170 (2013); Blanch v. Koons 467 F.3d 244 (2006); Bill Graham Archives v. Dorling Kindersley Ltd, 448 F.3d 605 (2006).

[4] 17 U.S.C. §107.

[5] Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev.1105,1106 (1989-1990).

[6] Jiarui Liu, An Empirical Study of Transformative Use in Copyright Law, 22 Stan. Tech. L. Rev. 163, 163 (2019).

[7] Rich Stim, What is Fair Use, Stanford University Libraries (Jul. 5, 2020, 8:25 PM) https://fairuse.stanford.edu/overview/fair-use/what-is-fair-use/#:~:text=In%20its%20most%20general%20sense,permission%20from%20the%20copyright%20owner.

[8] Campbell v. Acuff-Rose Music Inc, 510 U.S. 569 (1994).

[9] Patrick Cariou v. Richard Prince, 714 F.3d 694 (2013).

[10] Perfect 10 Inc v Amazon.com, Inc, 508 F.3d 1146 (2007).

[11] Jane Ginsburg & Robert Gorman, Copyright Law, 184 (Foundation Press/Thomson Reuters, 2012).

[12] Australian  Law Reform Commission, Transformative and Fair use, Australian (Jun.18, 2020, 9: 36 PM) https://www.alrc.gov.au/publication/copyright-and-the-digital-economy-dp-79/10-transformative-use-and-quotation/transformative-use-and-fair-use/

[13] §52,The Copyright Act, 1957, No. 14, Acts of Parliament, 1957 (India).

[14] RG Anand v. Deluxe Films, AIR 1978 SC 1613.

[15] Patrick Cariou v. Richard Prince, 714 F.3d 694 (2013).

[16] Id. at §52(1)(a)(ii).

[17] University of Oxford v. Narendra Publishing House, ILR (2009) 2 Del 221.

[18] University of Cambridge v. B.D. Bhandari, 2011 SCC OnLine Del 3215.

[19] Super Cassettes Industries Ltd. v. Mr. Chintamani Rao and Ors, 2011 SCC OnLine Del 4712.

[20]  V. Ramaiah v. K. Lakshmanaiah, 1989 PTC 137

[21] David Vaver, Canada’s intellectual property framework: A comparative overview, 17 Intellectual Property Journal 125-149 (2004).

[22] Saregama India Limited v. Balaji Motion Pictures Limited and Ors , 2019 SCC OnLine Del 10036.

[23] Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, as revised at Paris on July 24, 1971 and amended in 1979 S. Treaty Doc. No. 99-27 (1986)

Image source: Photo by Markus Winkler on Unsplash