By, Antony Moses

Introduction:

Section 52 (ab) of the Indian Copyright Act sanctions the “doing of any act which is necessary for the extraction of “essential information” necessary for “operating interoperability” by a lawful possessor of a computer program, provided that “such information is not otherwise readily available”. This article shall examine whether the parameter of the word “any act” would include the acquisition of a compulsory license for the purposes of achieving interoperability.

What is Interoperability?:

The Indian law offers no definition for the term “interoperability”. It has been defined in the Digital Millennium Copyright Act as the “ability of computer programs to exchange information and of such programs mutually to use the information which has been exchanged[i]”.

Allowing for interoperability is important because the value of any software product depends upon its ability to work with systems already in the market. For example: The ability to view our e-mail across different browsers becomes possible because of sharing of interoperable information across platforms. Software companies and especially, start-ups rely on interoperability to build new and innovative products.

What is a compulsory license? :

The legal protection afforded by copyright is not supreme. A compulsory license is “an involuntary contract between a willing buyer and an unwilling seller imposed and enforced by the State[ii]”. It is granted by the State when the owner of a copyright is depriving the public of the benefit of the work by refusing to grant license to such work or by refusing to republish the same. It is usually a remedy issued to avoid and prevent monopolistic abuses[iii]. Therefore, a compulsory license is an exception to the general rule of copyright infringement in the interest of competition. However, the author of the work receives royalty for such involuntary use[iv].

The Indian Copyright Act envisions compulsory license in the following cases;

  • In works withheld from the public (Section 31)
  • In unpublished works or published works (Section 31 A)
  • For benefit of disabled (Section 31 B)

Why an Argument for a Compulsory License:

The law leans in favour of interoperability to promote innovation.  Hence, Section 52 (ab) of the Copyright Act provides an exception by allowing for the “extraction of essential information which is necessary for operating interoperability”. To that extent, reverse engineering of a computer program or subjecting a program to black box testing and “clean room processes” are accepted practices and there is substantial international case-law to supplement their legality as well[v].

To create interoperable products, developers require access to the specifications implemented in systems that enable interconnection with other services. If such information is proprietary, usually, developers will have to apply for a license with the owner of such information.  However, if such owner refuses to license out such information, innovation and competition in a market shall effectively stand silenced. This hits the foundation of copyright law as, ultimately, the point of Copyright law is to promote creativity[vi], competition and innovation. Therefore, the question as to whether compulsory licenses can be issued to force the holder of a copyright to provide interoperable information needs examination.

Indian Law:

Section 31 justifies a claim for a compulsory license if;

  • Firstly, “the work has been withheld from the public”, because of the “owner’s refusal to republish the work” and
  • Secondly, the owner’s refusal is on ground which are not reasonable in law[vii].

A refusal need not be explicit. If there is a willingness to grant a license subject to unreasonable terms that may also constitute a refusal[viii]. Though, a claim for a compulsory license for the purposes of acquiring interoperable information may squarely fall within the purview of the second condition, prima facie, it is uncertain whether the specifications of a program would fall within the purview of “a work” under Section 31.

However, the scheme of the Act merely contemplates compulsory license as in the case of broadcasting/telecasting[ix]. Moreover, Article 8.2 of the TRIPS agreement states that appropriate measures are required to be taken by member states to prevent the abuse of intellectual property rights by its holders and imposes the responsibility upon member states to thwart practices which unreasonably restrain trade or adversely affect technology transfer. Since India is a signatory to TRIPS, the same must be taken into consideration where the Act is ambiguous[x]. And therefore, we may, by implication, observe that compulsory licensing for the purposes of interoperability is possible.

The Solution:

However, a test to determine the cases in which compulsory license must be granted must be clearly established. Although a mere refusal of an entity to grant license should not be leveraged to claim compulsory license, exceptions must be provided with respect to entities who intend to abuse their position for gain. There is always the possibility that an entity which has achieved a dominant position in the market with respect to its products, can ideally abuse their position with an intention to embark in horizontal or vertical expansion.

Microsoft v Commission[xi] (2007) is an apt example. In 1998, Sun Microsystems filed a complaint with the European Commission alleging that Microsoft violated Article 102 of the TFEU (Treaty of the Functioning of the European Union) by refusing to license specifications that Sun’s work-group server operating systems needed to interoperate with Microsoft’s operating systems Windows.

In 2004, the Commission found Microsoft’s behaviour to be an abuse of dominant position[xii] and it considered the case to be an “exceptional circumstance” in which a right-holder had to be stripped of his copyright protection.  In its decision made the following observations.

  • Microsoft held a dominant position in the market with respect to PC operating systems and its software had become the de facto standard for client PC’s[xiii].
  • The refusal to license formed a general pattern of Microsoft’s conduct. Prior to the release of Windows 2000, Microsoft always disclosed its interface specifications. However, after the development of Windows 2000, the company stopped supplying its disclosures since by then, it had already developed its own work group server operating systems[xiv].

However, the Commission in its judgement delivered in September 2007, the Court relied on the conditions laid down by the European Court of Justice in IMS Health GmbH & Co. OHG v NDC Health GmbH & Co. KG[xv].The European Court of Justice in IMS Health held that “for a refusal of a dominant undertaking to give access to a product or service indispensable for carrying on a particular business to be treated as abusive, it is sufficient that three cumulative conditions be satisfied, namely,

(i)that that refusal is preventing the emergence of a new product for which there is a potential consumer demand,

(ii)that it is unjustified and

(iii)such as to exclude any competition on a secondary market”.

Conclusion:

Though these tests seem to have their footing in competition law, it offers an exhaustive solution for the IP facet of the problem as well. These conditions as laid down in IMS Health focus on promoting the emergence of new products in the market rather than focussing on an entity’s abuse of dominant position. Therefore, the underlying principles of compulsory licenses are satisfied. Moreover, an entity’s abuse of dominant position becomes only relevant for the purposes of the third test. Furthermore, an undertaking which may not be a dominant player in the market may also refuse to part with interoperable information for unjustified reasons. The second test covers that contingency.

[i] 17 U.S.C. § 1201(f).

[ii] See G.J. Arnold, International Compulsory Licensing: The Rationales and The Reality, IDEA: The Journal of Law and Technology (1993). Also See, Atul Dua & Rahul Goel, Crossroads of Regimes – Competition Law and Intellectual Property Rights, Manupatra, http://www.manupatrafast.com/articles/PopOpenArticle.aspx?ID=1aaf8a76-9fa7-4954-abb4-874671fd8c78&txtsearch=Subject:%20Competition%20/%20Antitrust#**.

[iii] Andrew C Mace, TRIPS, eBay and Denials of Injunctive Relief: Is Article 31 Compliance Everything?, 10 Colum. SCL & Tech. L. Rev. 232, 245 (2009).

[iv] See Edith Penrose, The Economics of the International Patent System 162 (1973).

[v] See e.g., Sega v Accolade, 977 f.2d 1510 (9th Cir 1992).

[vi] Joseph Gratz & Mark A Lemley, Platforms and Interoperability in Oracle v Google, 31 Harv. J. L & Tech (Special Issue) 603 (2018).

[vii] Super Casettes Industries Ltd v Music Broadcast Private Limited, (2012) 5 SCC 488: AIR 2012 SC 2144.

[viii] Entertainment Network (India) Ltd v Super Casettes Industries Ltd, (2008) 13 SCC 30.

[ix] Avatar Singh, Business Laws 836 (10th ed. 2014).

[x] Id.

[xi] Case T-201/04, Microsoft v. Comm’n, 2007 E.C.R. II-3601, ¶1330.

[xii] Commission Decision COMP/C-3/37.792 Microsoft, 2004 O.J. L32/23, ¶ 546.

[xiii] Id at ¶448 and 472.

[xiv] Id at ¶579, 584, 587 and 588

[xv] Case C-418/01, IMS Health GmbH & Co. OHG v. NDC Health GmbH & Co. KG, 2004 E.C.R. I- 05039, ¶ 38.

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