GUEST POST: RAMIT RANA AND AMAN SAGA: CONTOURS OF INTERMEDIARIES’ LIABILITY IN COPYRIGHT INFRINGEMENT THROUGH INTERNET MEMES

We are pleased to bring to you our next guest post co-authored by Ramit Rana and Aman Sagar. Ramit is the founding Partner at STEP NEXT LEGAL, New Delhi. He is a Practising Advocate at the Delhi High Court, and other lower Courts of Delhi with over five years of experience. He has industry experience in Networking and Testing, as he had done B.Tech in Computer Science.He has worked for cases under  IPR (Trademark, Patents & Copyright), RERA, CCI, Arbitrations, DRC, Cyber Laws, Data Protection and Privacy laws, Property, Recovery Suits, 138 NI Act, Custom Matters, Arbitration, L.A, N.C.L.T. and all kind of Civil and Criminal matters.

Aman is a final year law student pursuing B.A. LL.B. (H) with a specialization in intellectual property laws at the Central University of South Bihar and he is at present an Intern with STEP NEXT LEGAL.

Ramit and Aman had co-authored a piece for us earlier on regulation of cyber security which can be viewed here.

The Internet is a terrifying place for anyone with even the smallest amount of name recognition. -Flavorwire Staff

Introduction

Our modes of entertainment have witnessed a paradigm shift with our advancement towards tech world in the 21^st century. Global connectivity and outreach of internet has enabled us to perceive entertainment from a perspective which couldn’t have ever been imagined. One of the entertainment activities that gained immense popularity and applaud on virtual platforms since last decade is creating and sharing “internet memes”. This phenomenon has become a ubiquitous module of global internet regime. Needless to say, the idea of an internet meme is one of the distinctive internet species of creativity which can be exploited for entertainment or commercial purposes or both. This Article aims at exploring whether or not an internet meme could be brought under the ambit of copyright infringement in light of fair dealing envisaged under Indian copyright regime. The article further involves the analysis of intermediaries’ liability for copyright violations in terms of internet memes. Applicability of safe harbor principle on the premise of circulation of internet memes has also been critically touched upon. At the end, it is argued that memes tend to violate copyright in a work but holding intermediaries liable for secondary infringement seems unlikely.

Copyright in Internet Memes

Internet meme is a unit of information in the form of a video, image, or phrase circulated via internet. It generally comes in the form of an image and a caption which may be a witty message or catchphrase. Internet memes sees light of the day with originators i.e. people who create the underlying images or excerpts/stills from a cinematograph film that will become memes at someone else’s hand. This work is then used by persons who move ahead in creating a meme that is similar but differs slightly from the original work. The difference is so gained with the help of witty message or catchphrase. Based on styles, internet memes can be of four types- cinematograph stills, personal photographs, rage comics and original work. An internet meme shall qualify as an artistic work under section 2(c) of the Copyright Act, 1957 (hereinafter the Act) since it possess the characteristics of a photograph with the caption. The Hon’ble Supreme Court in Eastern Book Company & Ors vs. D.B. Modak & Anr observed that copyright also subsists in derivative works under the ambit of section 13 of the Act provided it resulted after application of little bit of skill, labour and capital of an author.

Based on preceding premises, there remains no or less doubt that prima facie internet memes comes under the umbrella of derivative work. However, there can be instances where it can be original or independent creation too. But who’s owns the copyright subsisting in them in former case? Banking upon the ratio decidendi in the above mentioned precedent, it may be resonated that if a work is derived from another work which is already in public domain and involves minimum amount of skill and labour, then protection can be claimed under section 13 of the Act. However, situation seems quite complex in terms of protected works, for say images or videos involving celebrities or cinematographic films. Since, an internet meme is a derivative work, therefore it can be deduced that copyright owner is the only party with the legal right to create a derivative work or to authorise others for adaptations of his work in other forms. In that very case, question arises as to whether creation of an internet meme without the consent of the owner of a work amounts to infringement or it ought to be situated under the shadow of fair dealing?

Fair Dealing in Internet Memes

Fair dealing acts as a statutory exception to activities which are not deemed as infringement. The defence is triggered to proclaim that certain act is desirable and aligns with basic aims of copyright law. To put it differently, the exception encompasses certain acts which are not infringement but fair. Under section 52 of the Act, certain acts are provided to be excluded from the domain of infringement. Unlike UK and India, US follow the doctrine of fair use which is more broader and less specific than fair dealing. In Campbell v. Acuff-Rose Music, Inc. (1994), the US Supreme Court laid down a four-factor test to determine fair use- (1) the purpose and character of the use; (2) the nature of copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The Court held that, “[w]here a work does not “supersede” the original but instead “adds something new, with a further purpose or different character,” it is more likely to qualify as a fair use”. This test has been relied and followed in plethora of Indian judgements including Chancellor Masters & Scholars of the University of Oxford v. Narendera Publishing House and Ors. (2008) when the Court felt that it was important to depart from conventional approach of exhaustive fair dealing list and look into various other aspects that could be encompassed therein on the basis of fair use doctrine.

As far as first factor is concerned, it is required to be investigated if the “purpose” of creation is motivated with commercial gain or otherwise. If the intention leans in favour of exploiting the derivative internet meme commercially, then attracting fair use defence seems highly unlikely. However, if the work is transformative or furthers a new meaning to the prior work i.e. conveys memetic information instead of fulfilling the creative function of the original work then, the balance of fair use may weigh well in favour of the creator. Further, taking note of nature of the pre-existing or copyrighted work from which meme in question has derived its existence is of utmost importance. The reason being, it throws light on the “value” of materials used. If the prior work, for say an image portraying a celebrity, is intended to communicate the message of spirituality but the author of an internet meme uses that image to promote his brand digitally (using it to attract customers to have an economic advantage) by misappropriating the message, the same shall disentitle him to surpass this stage of the test. Again, the underlying reason being no purpose of the society at large is being fulfilled by dissemination of information that way. Given the third factor which requires investigation into the quantity and value of the materials used, there exists a minimal amount of originality in relations to derivative internet memes since those parts could merely be selection or arrangement of elements culled out from the copyrighted work. An internet meme usually copies and fixes protected material thereby subjecting to liability for infringing the reproduction right vested in the owner of copyrighted work. Therefore, chances remain too low for an internet meme to surpass this stage of test as well. It is imperative to address the effect of the use of so derived internet meme from copyrighted work on its potential market since it is the most important factor to be considered while determining the applicability of fair use. If the amount of copied work is teensy, it is likely to have no or diminutive effect on the value or market of copyrighted work. Evidence of substantial harm to it would weigh against finding the fair use. Therefore, this stage is also dependent upon the intention of such use. When derivative work is solely intended for private purposes, for say to extend funny aspects embodied therein, the factor seems easy to be fulfilled.

Taking account of all the factors of US settled fair use in the given circumstances, it wouldn’t be wrong to state that internet memes does not qualify to be included under the umbrella of Indian fair dealing exception but satisfy a prima facie case for infringement of either derivation or reproduction right. This also holds true where contents of the original internet memes are reposted or imitated with trivial modifications without acknowledging the original creator over social media to generate royalty. However, an internet meme might be entitled to fair dealing provided its usage is solely for private and non-commercial purposes.

Intermediary’s Liability

It’s an irrefutable fact that memes may escalate by means of email, instant messaging, forums, blogs, or social networking sites and gain massive popularity worldwide. Now let’s assume a scenario where a person creates a meme based on a copyrighted work and publishes the same on a social media platform. The question stands whether such online platform shall be deemed liable for facilitating an act of infringement? In order to answer this question, it is apt to understand the notion of intermediary and its liability from the perspective of copyright law. As per section 2(1)(w) of the Information Technology Act, 2000 (hereinafter IT Act), an intermediary means “any person who on behalf of another person receives, stores or transmits that record or provides any service with respect to that record and includes telecom service providers, network service providers, internet service providers, web-hosting service providers, search engines, online payment sites, online-auction sites, online-market places and cyber cafes.”

During the year 2015-16, AIB (All India Backchod) created and published considerable original memes on their Facebook page depicting characters from Game of Thrones on a novel background with products which were unrelated to it in toto, thereby furthering a witty scenario due to such interaction of the characters and products. These internet memes spread like a wildfire in the digital world. There would arise less dispute regarding non-applicability of fair dealing in the instant case as such dealing undeniably stand in contravention of the spirit of copyright law. Precisely, it is an example of digital branding, a term which has gained high prominence in this digital world. Taking nature of these memes into account, it is imperative to deduce that the sole purpose underlying such creation was to indulge in digital branding i.e. to advertise products or services of various companies in which AIB holds interests by way of endorsements. Against this backdrop, it is likely to fail under the Four Factor Test for finding an exception under fair dealing head and thus, would amount to infringement. Since Facebook (acting as an intermediary) was used to publish and share those memes on a large scale, would it be true to say that Facebook shall be liable in terms of contributory or secondary infringement as well?

Applicability of Safe Harbour Principle

India recognizes Safe Harbour Doctrine by virtue of Section 79 of the IT Act which goes hand-in-hand with the Information Technology (Intermediary Guidelines) Rules, 2011 (hereinafter the Guidelines). The law envisages that an intermediary whose function is limited merely to providing access to a communication system over which information made available by third parties is transmitted or temporarily stored or hosted shall not be held liable for any third party information, data, or communication link made available or hosted by him. The Delhi High Court in Christian Louboutin SAS vs. Nakul Bajaj and Ors (2018) held that safe harbour principle can be successfully pleaded only by those intermediaries whose roles are limited to providing technical parameters to users. Thus, it acts as immunity to intermediaries against the contents posted by end users over which they lack editorial control. Foreign jurisdictions like US & EU also provide such immunity to online intermediaries and do not to hold them liable for illegal contents posted by third parties.

In Amway India Enterprises Pvt. Ltd. & Ors. vs. Amazon Seller Services Pvt. Ltd. & Ors. (2019), the Delhi High Court noted that due diligence requirements provided under the Guidelines need to be complied with for intermediaries to continue to enjoy the status of intermediaries. Thus, in order to attract the aforesaid section, intermediaries are put to strict mandate to monitor their online contents as well as not to conspire, aid, abet or induce commission of any unlawful act. Further, Rule 3(4) of the Guidelines stipulates that intermediaries shall disable any information which is in contrary to Rule 3(2) within thirty-six hours after obtaining knowledge by itself or after communication of actual knowledge by an aggrieved person in writing. The Supreme Court clarified the stance of intermediaries in light of Rule 3(4) in the landmark Shreya Singhal Judgment. It was opined that intermediaries are under compulsion to remove such content from their portal pursuant to appropriate order of a Court or upon being notified by the appropriate government or its concerned agency.

If we take this into account, it is evident that even if a person is affected by an act of infringement like happened in the case of AIB, he shall not succeed in curbing out such content available with an intermediary. Technically, he needs to obtain a Court order and that order shall serve as “actual knowledge” as per statutory requirement under Rule 3(4). However, this rule witnessed an exception in Myspace Inc. v. Super Cassettes Industries Ltd (2016), whereby the Delhi High Court eased this requirement for instances of copyright infringement. The Court held that receiving specific knowledge of the infringing works from the content owner in a manner provided by intermediary will suffice the requirement of actual knowledge and would negate the necessity of a Court order. The stand was reiterated recently in Amway Case (mentioned above) where the Delhi High Court while elaborating on due diligence requirement under section 79(2)(c) of the IT Act observed that intermediaries must also take adequate measures to remove any content that violates their terms of usage/policies defined in accordance with the Guidelines upon receipt of knowledge even in the absence of a court mandate. But whether an intermediary would be able to adjudge an act of infringement by merely comparing both the works? And what if it is unable to distinguish between both the works and denies removal of content? Whether or not such will amount to furthering or inducing an act of infringement on the part of intermediary under section 79(3)(a) of the IT Act? Unfortunately, position of law is unclear about the same due to lack of cases pertaining to internet memes in India.

Conclusion

From what happened in the Cambridge Analytica Scandal, it is apt to presume that platforms like Facebook are no longer passive players. Due to lack of proper regulatory mechanism, online intermediaries shape and manipulate our perceptions. The diligence framework prescribed under the law lacks description as to kind of content that is not permitted which in turn increases the chances of take-down notices before intermediaries by manifold. A recent study undertaken by the Centre for Internet & Society stands in line with this contention. It might also be apt to resonate that not all intermediaries have adequate legal competence or resources to deliberate on the legality of contents posted online. Consequently, intermediaries shall fail to seek subjective determination of the issue and shall advance to comply with the notices. Therefore, it is suggested that the law should specifically recognize activities that fall under the ambit of section 79 of the IT Act. Evolution of a new regime in terms of fair dealing theory is also a need of this hour. Ambiguity in relation to notice and action procedures under IT Act should also be resolved. Establishment of small fast track courts to deal with issues primarily related to copyright infringement related to internet memes can also be given a thought. Constitution of an Independent Oversight Board by Facebook in May 2020 to monitor contents posted on Facebook and Instagram seems to be a welcoming step in this direction. Furthermore, it will also be fruitful if usage policies of such intermediaries are revised laying stress on copyright infringement through internet memes. However, it will also be interesting to see how Courts respond to infringement issues pertaining to internet memes in light of compliance with prevailing laws.