1 December 2012CopyrightNishchal Anand and Aditya Gupta

Framing the debate: what is the scope of liability?

The crime scene: a murder has taken place. The accused is arrested. The weapon retrieved is a gun. The gun is licensed in John’s name. John has been ‘linked’ to the crime scene. However, had the gun been found in John’s possession, John would have been ‘framed’ in the crime scene.

In this article we will discuss the concepts of ‘linking’ and ‘framing’, as well as the liability for linking or framing infringing content, not in the setting of a crime scene but in the context of infringement over the Internet.

What is linking?

Linking represents one of the most characteristic features of the Internet, enabling users to click on a specially coded text to navigate to a webpage or element of a webpage associated with that link’s code. Websites typically contain links which when clicked upon redirect the users to another location either within the same website or on another website. Situations may arise where a ‘link provider’ provides a hyperlink to another location, which in turn hosts the infringing material, thereby facilitating access to that material.

What is framing?

Framing is a concept in HTML development where a single website may be divided into various frames capable of operating independently of each other. In the advertising world, framing is a practice similar to linking with the exception that the framed link operates upon the host’s website itself rather than redirecting the user to the linked website. Framing helps the user to view the contents of the framed website without having to navigate away from the host website.

This article seeks to examine the following proposition: would a website host be held liable for hosting a frame or providing a link that infringes the rights of a third party? The scope of liability of such intermediaries under trademark law and copyright law is examined.

In the first decision of its kind, the Delhi High Court in Super Cassettes Industries Ltd v MySpace and Anr, has shed light on the law pertaining to intermediary liability in India for hosting copyright-infringing material. The decision discusses two critical aspects of intermediary liability: liability under the Copyright Act, 1957 and the availability of a safe harbour to intermediaries for making available copyrightinfringing content.

Intermediary liability under copyright law can be traced under two heads.

Liability for permitting use of ‘a place’ for communication of a work

Section 51(a)(ii) of the Copyright Act, 1957 imputes liability for copyright infringement on any person who without authorisation permits, for profit, any place to be used for the communication of a copyrighted work to the public. The Delhi High Court has interpreted the term ‘any place’ as including a webspace or an intangible space on the Internet.

Therefore, any entity that allows its webspace to be used for communicating to the public copyrighted content is potentially liable for copyright infringement. It is noteworthy that such liability can be imputed only where such person has knowledge or reason to believe that communication of such work would amount to copyright infringement.

The Delhi High Court decision holds that the fact that a website provides safeguards for filtering copyright-infringing content implies that the website host has reason to believe that the content hosted by it may infringe copyright, thereby bringing him within the ambit of this section. Apart from the presence of filters, actual or constructive knowledge may be imputed on a website host on the basis of editorial control and notice by the copyright owner.

A link provider who merely hosts a hyperlink to the location hosting the infringing material is not responsible for communicating the work to the public either directly or through any means of display or diffusion. Accordingly, rights holders may find it difficult to impute liability to a link.

A website that contains a frame displaying copyright-infringing work effectively communicates the infringing work to the public, thereby attracting liability under Section 51(a)(ii) as explained above.

Therefore, knowledge or reason to believe on behalf of the website host that a frame on its website may contain infringing material may make the website host liable for infringement under the Copyright Act, 1957. However, there may be instances where the hosting website has no knowledge of the contents or effective control over the contents being framed. This is a situation that typically arises with social networking websites where the control over the posting of content lies solely with the user.

Liability for ‘authorising infringement’

Liability for hosting copyright-infringing material may also be imputed on intermediaries for authorising an infringing act. Under Section 14 of the Copyright Act, the authorisation of an infringing act is a separate act of infringement from the act which is itself authorised and a person is liable for having authorised an infringement.

"The unauthorised use of a trademark in a frame on a website is likely to create confusion or a false impression of association between the trademark owner and the website host."

The threshold for establishing authorisation of infringement is high and is not satisfied by mere knowledge of infringement. Active participation, inducement or approval are necessary ingredients of authorisation. The jurisprudence in Australia, Canada and the UK suggests that the retention of control, profits made by the intermediary and the non–removal of infringing material on receipt of notice shall be relevant factors for determining the liability of an intermediary for authorising infringement.

Rights holders may seek to bring the acts of link providers under the ambit of ‘authorisation of infringement’. In this regard, reliance may be placed on Australian jurisprudence, especially the decision in Cooper v Universal Music Australia Pty Ltd, wherein the Full Federal Court held that websites which host hyperlinks to locations that host infringing material are liable for authorising copyright infringement.

Similarly, websites containing frames which contain copyrightinfringing material may be held liable where they specifically approve, or actively participate in, or induce the infringement. However, as mentioned above, the threshold for establishing authorisation of infringement is higher and requires proof of more than mere knowledge of the infringing activity.

Scope of liability under trademark law

Under Indian trademark law, a registered trademark is infringed where a person uses in the course of trade, a mark which is identical or deceptively similar to the trademark in relation to the goods and services for which the trademark is registered.

Liability under trademark law is particularly relevant in the context of framing, since frames generally appear as advertisements on the host website and may be indicative of a commercial link between the framer and the host. The unauthorised use of a trademark in a frame on a website is likely to create confusion or a false impression of association between the trademark owner and the website host, thereby infringing the rights of the trademark owner.

Safe harbour for intermediaries

The Information Technology Act, 2000 (IT Act) was amended in the year 2008 and through this amendment the scope of safe harbour provisions for intermediaries was substantially altered. Section 79 of the IT Act immunises intermediaries from liability under any law for any data, or communication link made available or hosted by it.Section 79 imposes conditions for and exceptions to the safe harbour for intermediaries. Section 79 suggests that an intermediary may be held liable for infringement if it:

  1. Initiates the transmission; or
  2. Selects the receiver of transmission; or
  3. Selects or modifies the information contained in the transmission; or
  4. Does not observe due diligence while discharging its duties; or
  5. Conspires or abets or aids or induces the infringement of the copyright; or
  6. Upon receiving actual knowledge, or on being notified that any information, data or communication link residing in or connected to a computer resource and controlled by the intermediary is being used to commit the unlawful act, fails to expeditiously remove or disable access to that material on that resource without vitiating the evidence in any manner.

The Information Technology (Intermediaries Guidelines) Rules, 2011 provide that an intermediary must observe due diligence in informing the users of a computer resource not to host, display, upload, modify, publish, transmit, update or share any information that infringes any patent, trademark, copyright or other proprietary rights.

In the absence of this, the intermediary may be held liable for infringement along with the primary infringer. It is noteworthy that where the intermediary has been informed of the rights holder’s intellectual property, the intermediary must monitor the content hosted and, or, made available by it and cannot rely on post-infringement measures to claim immunity.

However, there is currently an embargo on the immunity available to an intermediary under Section 81 of the IT Act which specifically excludes application of Section 79 to copyright and patent infringement. Though ambiguity existed regarding the interpretation of Section 79 and Section 81, the Delhi High Court in the Super Cassettes decision clarified that an intermediary cannot avail itself of immunity under Section 79 of the IT Act.

Conclusion

With the Delhi High Court decision in Super Cassettes, rights holders have greater clarity on the scope of intermediary liability in India, at least for hosting copyright-infringing content. It is noteworthy that even in the absence of a specific legislative mandate, the judiciary has interpreted statutory provisions expansively in order to account for technological advances and to ensure that rights holders are not rendered remediless against newer and previously unforeseeable modes of infringement.

Nishchal Anand is an associate in Anand and Anand’s litigation department. He can be contacted at: nishchal@anandandanand.com

Aditya Gupta is an associate in Anand and Anand’s litigation department. He can be contacted at: aditya@anandandanand.com

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