Social direct impact on the viewers. It

Social
Media and IPR issues

                         

Media plays a very
important role in dissemination of information as it has a direct impact on the
viewers. It derives its freedom from Article 19 (1)(a) i.e. freedom of speech
and expression over which only reasonable restrictions can be imposed.

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Social media has
revolutionised the way we communicate and spread information. Today,
information is readily available on the digital sphere, making us more
susceptible to IP violations. In general terms, social media is media generated
online through social-interactions by the user. It is distinct from television,
radio and newspapers which have a target audience and go one way, as with the
advent of the advanced web 2.0 technology the information flows from multiple
sources.

Social media allows one
to publish, download, stream or transmit information. Some common social media
sites include Twitter, Instagram, Facebook, Myspace, Youtube, Piratebay, etc.

Social media imposes a
number of threats to Intellectual Property Rights. In the virtual world as
well, the same legislations and common law rules apply but the speed by which
the information is transmitted and the number of audience it targets at a time
is what that poses a problem for the IP owners.

This research focusses on
the intellectual property issues that arise on social media. The major problem
areas identified include copyright, trademark and trade-secrets.

 

1.      COPYRIGHT

Copyright is one of the
most important Intellectual Property Rights. 
It is a right which the law gives to the creator or the owner of the literary,
dramatic, musical and artistic works and producers of cinematograph films and
sound recordings. The owners of the copyright have certain exclusive rights
which enables them to use their property without disturbance and to prevent the
misuse of their property. Copyright comes with a bundle of rights that include
rights of reproduction, communication to the public, adaptation and translation
of the work.

1.1
Infringement of copyright

Use of a work without the
permission of the owner amounts to copyright infringement. Infringement occurs
when a person intentionally or unintentionally copies/uses the work of another
without credit. Infringement is usually classified into two categories –
primary infringement and secondary infringement. Primary infringement involves
the actual act of copying, while secondary infringement in turn includes
unauthorised dealings, examples include, selling the pirated books, importing
etc. The secondary infringer has the knowledge of the infringement while on the
other hand, this knowledge, may or may not be present with the primary
infringer. Some common examples of copyright infringement include-

·        
File Sharing/piracy- It is one of the most
common method of infringement. File sharing refers to the uploading and
downloading of music, movies, videos, photographs, books, text, or any other
data that is shared between users of the internet, commonly referred to as
‘peers.’  Current peer-to-peer (‘P2P’)
file-sharing websites include MiniNova, FrostWire, uTorrent, and The Pirate
Bay.1 One such example of file
sharing is the leak of the movie UDTA
PUNJAB, two days before its release. The producers of the movie brought a
petition against Bharat Sanchar Nigam Limited (BSNL) and forty-nine other
defendants requesting the court to order to take down one hundred and fifteen
links.2 The court passed a john
doe order in this case. This order is passed when the defendant is unknown in a
case. Such activities attract both the cyber law as well as copyright law
ambit. S65a and S65b of the Copyright Amendment Act, 2012 help in preventing
piracy in the digital domain.

In
MGM Studios, Inc. v. Grokster, Ltd, the
US SC ruled against several peer to peer file-sharing sites. The Court
unanimously held the defendants to be liable for inducing or contributing to
copyright infringement by distributing a device with the object of promoting
its use to infringe copyright.3

 

·        
Parody/Memes- It is a work that critically
comments on an existing work to point out its flaws or it is a humorous
characterisation of a work. It can be in the form of a satire or joke.
Parodies, generally, do not infringe copyright and come under the purview of
the doctrine of fair use. In the case of RG
Anand v M/S Delux Films4,
the SC while dealing with the issue of copyright infringement held that if
the theme of the work is same but the subsequent work is completely new, then
in that case it will not amount to copyright infringement. An inference can be
drawn that spoofs and parodies that are completely new do not amount to
infringement. The court in Blackwood and
Sons v AN Parasuraman5
the court laid down two conditions to fall under the fair use doctrine i.e.
the parodist must not intend to compete with the owner of the copyright and
should not make improper use of the original work. Further, in the case of Civic Chandran v Ammini Amma6 the defendants had copied
a famous play to criticize it but in the instant case, the court accepted the
defence of fair dealing.

 

·        
Re-tweeting-

Twitter
and Copyright issues are rampant these days. An article in WIPO magazine
titled- “Are Tweets Copyright-Protected?” clearly deals with the matter.

It
clearly states that copyright protection depends upon three things- size,
content and Scènes à faire. 7 The 140-character limit on
twitter makes it almost impossible to reach the test of originality. Further,
the content on twitter is basically a fact which is not copyrightable. Scènes à
faire carves out unprotectable similarities between two works in terms of
character, setting or theme.

Therefore,
since the tweets are based on facts and their size is too small, it is
difficult to claim copyright infringement against them.

 

 

 

2.      TRADEMARK

The
Section 2 (zb) of the Trade Marks Act, 1999 defines a trademark as, “a
mark capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others and may
include shape of goods, their packaging and combination of colours.” 8Different types of
trademarks and trademark infringement on social media include-

·        
Disparagement – It is a critical issue as
consumer behaviour can be influenced by comparative advertisements.  There is no proper legislation on
disparagement but it falls under the ambit of defamation and trademark.  In the case of Hindustan Unilever Limited vs. Gujarat Cooperative Milk Marketing
Federation9,  the court held that for a product to be
disparaged, three ingredients need to be present-

·        
a false/misleading statement regarding the
goods,

·        
that deceived consumers and

·        
was likely to influence consumer behavior.

This
view was reiterated in the following cases Reckitt
and Colman of India Limited vs M.P 
Ramachandran and Another10, Dabur India Ltd vs Colgate Palmolive11 and Godrej Consumer Products Ltd. Vs Initiative Media Advertising.12 In the case of Pepsi Co.,
Inc. v. Hindustan Coca Cola Ltd13.,
the court observed that “some amount of showing down is implicit but
it should not be of ‘slighting’ or ‘rubbishing’ nature”. Disparagement is
also rampant in the digital sphere and there is a dire need to curb the same.

·        
Parody and trademarks

In
PETA vs Doughney14,
the defendant had created a site with domain name peta.org which comprised the
plaintiff’s registered trade mark. The defendant argued that his site titled
People Eating Tasty Animals was a parody of the plaintiff’s name People for the
Ethical Treatment of Animals. The court rejected the defence and he was held
liable for trademark infringement.

 

·        
Hashtags

A
hashtag allows grouping of similarly tagged messages and eases an electronic
search as one click can lead to all the grouped messages. The word hashtag was
added in the Oxford dictionary in the year 2014.15 Hashtag in conjunction
with a product name or campaign tagline can be registered as a trademark. The
United States Patent and Trademark Office (USPTO) states: “A mark comprising of
or including the hash symbol (#) or the term ‘hashtag’ is registerable as a
trademark of service only if it functions as an identifier of the source of the
applicant’s goods or services.” Hashtag trademarks registered in the United
States include: #smilewithacoke and #cokecanpics (The Coca-Cola Company),
#McDstories (McDonalds), and #makeitcount (Nike).16

 

·        
Brand protection

Online
trademark infringement can involve meta-tagging, deep linking, pay-per-click
advertising or offer of counterfeiting goods on online selling sites. This
often exploits the brand-name of the company tampering its image and goodwill.
In Banyan Tree Holding (P) Limited v. A.
Murali Krishna Reddy and Anr17 the court while dealing
with the case of jurisdiction laid down the following guidelines: In order to
establish jurisdiction, the plaintiff must prove that the defendant was engaged
in a commercial activity by targeting its website specifically at customers in
the place of the court’s jurisdiction. The court further held that Simply
posting an advertisement on a passive website does not allow consumers to enter
into commercial transactions and therefore is not enough to invoke jurisdiction
and it is important for the plaintiff to demonstrate that this specific
targeting of customers caused “damage or inconvenience” to his reputation.

In
the case of Mattel, Inc. and Others v
Jayant Agarwalla and Others18 , two Indian brothers launched a Facebook game called scrabulous.
The brothers were sued by Mattel inc and Hasbrow for trademark and copyright
infringement. The Court stated that Scrabble is a famous mark and the use of a
similar mark would amount to trademark infringement. The brothers later on
changed the name of the game to Lexulous.

The
issue of trademark infringement with respect to meta-tagging was raised in the
case of Samsung Electronics Vs. Kapil
Wadhva19
in which an importer of Samsung printers had meta tagged its website to
that of Samsung, the court granted an injunction restraining the defendant
company from meta tagging its website to that of Samsung.

In
the case of Christian Laboutin Vs. Nakul
Bajaj20,
the court ordered an interim injunction against the defendant company for
selling its products without permission on its social networking site, www.darveys.com.

 

3.       CELEBRITY RIGHTS

India
is a land of celebrities ranging from the Bollywood actors, politicians, sports
persons, TV actors, reality show stars, businessmen etc. Every individual who
has a public identity or in other words is recognized by public at large is a
celebrity. Rights enjoyable by celebrity includes performer’s rights, morality
rights, publicity rights, personality rights, trademark and passing off rights.

Ø  Morality rights

Moral rights are the rights of attribution
and integrity over the works performed.21
Prior to the amendment of 2012, the Copyright Act did not provide moral rights
to the performers. The copyright amendment at, 2012 inserted a new section 38B
which is similar to the section 57 which provides moral rights to the author.
The reason to provide moral rights to the performers is to bring copyright act
1957 in conformity with the provisions of WIPO Performances and Phonograms
Treaty, 1996. Section 38B provides two moral rights to the performer of a
performance. They include-

(a)  The
right to be identified as the performer of his performance except where
omission is dictated by the manner of the use of the performance,

(b) 
The right to restrain or claim damages in respect of any distortion, mutilation
or other modification of his performance that would be pre-judicial to his
reputation.

The importance of moral rights was seen in
the case of Manisha Koirala v. Shashilal
Nair 22where
in the movie Ek Choti Si Love Story, 4 intimate scenes were performed by a
double which Manisha Koirala contended were performed without her consent. The
actresses’ contentions were purely based on defamation but there was no remedy
available to her on the basis of her moral rights.

 

Ø  Publicity rights

This right is often referred to as
merchandising right and is available to an individual to claim monetary
benefits arising out the use of his name, likeness, voice and fame.

 

Actors are considered as performers within
the purview of section 2qq of the Indian copyright act, 1957 which entitles
them to claim performer’s right which includes economic, moral and non-tangible
rights. Non-tangible rights include the right over the persona of the
performer, the right against use of likeness23 or name of the performer24. Personality is a means
by which one individual is recognized by another.  In the internet era, manipulated images of
the celebrities can be used for commercial purposes and can cause
defamation.   25In the case of ICC Development (International) Ltd. v.
Arvee Enterprise26 , it was observed that
the right of publicity has evolved from the right of privacy and can inhere
only in an individual for any indicia of an individual’s personality like his
name, personality trait, signature, voice etc. This right vests in an
individual and he alone is entitled to profit from it. In the case of Titan Industries Ltd. v. Ramkumar Jewellers
27, Delhi High Court
recognized an enforceable right in the identity or persona of a human being. So
also, Madras High Court in the case of Shivaji Rao Gaikwad v. Varsha
Productions   28accepted the proposition
that personality right vests in persons, who have attained the status of a
celebrity. Any infringement of such right of publicity requires no proof of
falsity, confusion, or deception, especially when the celebrity is identifiable
and no one can make an unauthorized use of the persona or any indicia of the
individual’s personality.  29Further it was observed in
Star India (P.) Ltd. v. Leo Burnett (India) Pvt. Ltd30., that it was necessary
for character merchandizing that the characters to be merchandized must gain
some public recognition that is, a form of independent life or public
recognition for itself independently of the original product or independently
of the milieu/area in which it appears.

In India, the moral rights extend towards
famous personalities like Mahatma Gandhi, Phoolan Devi, Rajnikanth, etc. Thus,
within a basic framework, celebrities can protect their name and image in India
and this right can be claimed by their legal heirs, when the image and
reputation of the deceased is at stake.31

 

The nature of social media encourages
publicity rights violations, directly and indirectly. In one instance,
basketball super star, Michael Jordan, sued a food store Jewel Food for running
a congratulatory campaign on Twitter, after he was inducted into the basketball
Hall Of Fame. Though Jewel Foods argued that it was commercial speech, the
Appeals Court held that the action of the food store amounts to publicity
rights violation.

In another case, Ranveer Singh, an Indian
star sent a notice for violation of his publicity rights to an organization,
youcustomfreak, for using his image and the name of his film for selling
slippers on Facebook. Realizing its mistake, the organisation immediately took
down the infringing content.32

 

4.      TRADE SECRET

It is a branch of IPR which does not
have a proper legislation. Trade Secret is a formula, practice, process,
design, instrument, pattern, or compilation of information which is not
generally known or reasonably ascertainable, by which a business can obtain an
economic advantage over competitors or customers.

 

The
vital question raised when it comes to social media is that whether contacts of
an employer on networking sites like myspace or Twitter amount to trade secret.

In
the case of Christou v. Beatport33, the court held in
affirmative. In the instant case, Christou owned night clubs, and Bradley was
his employee. Bradley’s primary role was to find good DJs and organize events
at Christou’s night clubs. By virtue of his role, Bradley had access to the
MySpace account of Christou’s night club group. While working with Christou,
Bradley founded Beatport and later left his job.Subsequently, Bradley started a
competing night club after a few days. Aggrieved by his actions, Christou sued
for trade secret misappropriation among other grounds. After analyzing the
facts, the Colarodo Court held that the friends list on MySpace is like a
database of business contacts and is protectable as a trade secret. Therefore,
the Court concluded that accessing and using information in the MySpace account
amounts to trade secret misappropriation. The Court reasoned that though
contacts are publicly available, specific data relating to the contacts is not
available and such data can form part of a company’s trade secrets.34

 

In
an another case, Invidia v. DiFonzo35, DiFonzo was employed
with Invidia as a hair stylist between 2010 and 2012. The terms of employment
of DiFonzo with Invidia included confidentiality, non-compete and
non-solicitation clauses. The confidentiality clause required DiFonzo to
maintain secrecy of Invidia’s trade secrets, which included customer lists,
pricing information, etc. In 2012, DiFonzo left Invidia and joined David Paul’s
salon. On her joining, David Paul posted on Facebook announcing DiFonzo’s
affiliation with his salon. On seeing the announcement, Kaiser posted on
Facebook – “See you tomorrow, DiFonzo.” Subsequently she cancelled her
appointment with Invidia. Aggrieved, Invidia sued DiFonzo for solicitation of
customers and trade secret misappropriation. After reviewing the facts, the
Court held that posting of an announcement does not amount to solicitation. It
further pointed out that connecting with clients of Invidia on Facebook as
friends does not amount to trade secret misappropriation. Nevertheless, the
Court stated that the result would have been different if DiFonzo solicited
business from her Facebook friends.36

 

However,
the court in Eagle v. Morgan, decided in negative. In this case, Eagle, a
former employee had created a LinkedIn account for developing business
relations. The employer assisted in maintaining the account and also had the
password to access the account. After termination of Eagle’s services, the
employer changed her profile and the contents therein. The court held that all
the LinkedIn connections belonged to the employee since she had created the
account and the mere fact that the employer directs maintenance of the account
does not give any proprietary rights to the company.37

So, by perusal of the
above cases, it is clear that while deciding on the question of trade secret
violation, the court will look at the nature of the employment and the nature
of the information.

 

Conclusion

With increase in
digitalization, where everyone is handy with social media, there has been an
increase in IP violations. Since, IP is still at nurturing stage, people lack
awareness of both, one that their rights are being violated and second that
they are violating other’s right. Generating awareness amongst the people is
the need of the hour. Since, the impact and reach of social media is quite
wide, there is a dire need to protect the same either through a legislation or
strict regulations.

1Bianca L. Scheirer  ,Continuing
Legal Education Society of British Columbia, February 2011.            

2 Balaji Motion Picture Limited vs. Bharat
Sanchar Nigam Ltd., SUIT (L) NO. 694 OF 2016.

3545
U.S. 913.

4 1978
AIR 1613.

5 AIR
1959 Mad 410.

6 1996(16)
PTC 670.

7 Available at: http://www.wipo.int/wipo_magazine/en/2009/04/article_0005.html

8

9 5
SUIT (L) NO. 204 OF 2017 BOM HC.

10 1999
PTC(19) 741.

11 2004
(29) PTC 401 (DEL).

12 2012
(52) PTC 260 (Bom).

13 2003
(27) PTC 305 (Del) (DB).

14 263
F.3d 359, No. 00-1918 (4th Cir., August 23, 2001.

15 Available at:
http://en.wikipedia.org/wiki/Hashtag last accessed on 19 January, 2015.

16 Available at:
http://www.wipo.int/wipo_magazine/en/2017/05/article_0009.html.

17 CS
(OS) No. 894/2008.

18 2008
(153) DLT 548.

19 C.S.
(OS) No. 1155/2011

20  CS(OS) 2995/2014.

21 Sterling
J.,World Copyright Law (Sweet and Maxwell,London), 1998,p.55.

22 (2003)
2 Bom Cr 136.

23 Onassis
v. Christian Dior, 122 Misc.2d 603 (1984).

24 Pressley
v. Russen, 513 F.Supp. 1339(D.N.J 1981).

25 Monika
Verma , ACTORS IN INDIA: ASKING TO BESTOW THEIR MORALITY RIGHTS ( April 2014)
AVAILABLE AT: WWW.MANUPATRA.ORG.

26 (2003)
26 PTC 245 (Del).

27 2012
SCC OnLine Del 2382.

28 (2015)
1 LW 701 (Mad).

29 Ibid.

30 (2003)
27 PTC 81.

31 Kumari
T V, CELEBRITY RIGHTS AS A FORM OF MERCHANDISE-PROTECTION UNDER THE
INTELLECTUAL PROPERTY REGIME, Journal of Intellectual Property Rights, 9 (2)
(2004) 134. 

32 Available at:

Social Media and Intellectual Property (IP): Part V – Publicity Rights and Celebrity Rights

33 Christou
v. Beatport, LLC No. 2010-02912 (D. Colo. Mar. 14, 2012).

34 Available at:
https://www.bananaip.com/ip-news-center/social-media-ae-secret-cases/

35 Invidia,
LLC v. DiFonzo, 30 Mass. L. Rep. 390 (Mass. Super. Ct. 2012).

36 Ibid.

37 Available at: https://spicyip.com/2015/01/guest-post-ownership-of-social-media-contacts.html.

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