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TMI Blog2015 (8) TMI 865X X X X Extracts X X X X X X X X Extracts X X X X ..... st amplitude (in respect of not preventing reproduction of content of broadcast), but facts underlying broadcast, was facially untenable – Such rights have long been held to be barred as they are "similar" to copyright protection – Thus, rights claimed by respondent, over and above broadcasting rights, to prevent others from publishing or sharing match information or facts, for irrespective of commercial or non-commercial use, was precluded by Section 16 of Copyrights Act – If Parliament had intended such rights to exist, they would have been enacted, with suitable mechanisms for their enforcement and effectuation. Dissemination of Information – Unjust Enrichment – Whether Respondents were unjustly enriched by dissemination of match information – Held that:- once we recognize that mere information cannot be subject matter of protection under common law, it becomes apparent that other means continue to remain available to protect such information – Doctrine of unfair competition prohibiting misappropriation of match information would either mean that misappropriation under common law can supersede Copyright Act or that copying and misappropriation refer to two distinct acts – Ind ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e suits, holding that they were barred. A Division Bench set aside the learned single judge‟s order, and directed that the application for ad-interim injunction should be heard on its merits. Thereafter, the learned single judge, by the impugned order, granted the ad-interim injunction in the manner described earlier. The facts are that Star India Pvt. Ltd. (Star) filed three suits against Piyush Agarwal (Cricbuzz), Idea Cellular ( Idea ) and OnMobile Global Ltd. ( ONMOBILE ). The Board of Cricket Control in India (BCCI) was arrayed as the common defendant in all the three cases. BCCI, however, supported Star, claiming paramount rights over all information emanating from cricketing events as the organizer and promoter of that sport in India. Star and BCCI contended in the suit that the latter (BCCI) by agreement dated 10.08.2012 had assigned a bouquet of rights‟ exclusively to Star. These included Mobile Rights‟ and Mobile Activation Rights‟, and Star alleged that the defendants had violated those rights and consequently filed the suits currently in question for permanent injunction and damages. Star also moved interim injunction applications against the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... als with promotion and organisation of cricketing events in the country by the Government of India. It is not funded by the Government. It funds all cricket related activities, from setting up of the stadium to starting training academies for umpires, scorers etc. Its main source of funding is by monetizing content arising from cricket matches, such as sponsorships and commercial advertisements. The revenue received from sale of match tickets is negligible. Of the revenue generated, BCCI claims to plough back 85% into promoting the game of cricket in India. The defendants on the other hand do not contribute their revenue or a part thereof for the purpose of promoting the game of cricket in India. The BCCI and the plaintiff claim that defendants are eating away into the mobile and internet rights, without sharing the profit gained by them; thereby indulging in unfair competition and unjust commercial enrichment. 6. Star and BCCI based their arguments upon the principle underlying the decision of the United States Supreme Court in International News Service vs. Associated Press, 248 U.S. 215, 39 S.Ct. 68 (1918) (hereafter INS ) to the effect that one who fairly pays the price sho ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ss. The defendant‟s act of appropriating facts and information from the match telecast and selling the same is nothing but endeavouring to reap where the defendants have not sown. 7. The plaintiff also relied on Secretary, Ministry of Information and Broadcasting, Govt. of India Ors. v. Cricket Association of Bengal Ors., (1995) 2 SCC 161 where the Supreme Court, held that BCCI was a non-profit making organization, which officially controls the organised game of cricket in India and had held that BCCI‟s duty was to explore the most profitable avenues of telecasting the event. Underlining the need to protect time sensitive information emanating from cricketing events specifically score updates/match alerts the plaintiffs position was that match information did not enter public domain for a particular span of time. A distinction was drawn between those having access to television or radio and their ability to be informed about match status in real-time and those who do not have such access ( like those in office or courtrooms etc) who cannot have instant access to match status. 8. The appellant‟s argument, in defence, was that the proprietary rights̶ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s recognized under the Act. Their (the appellant‟s) activity was not the result of free-riding because they did not copy the broadcast content or provide access to audio or visual footage of the broadcast. The appellants contended that they were legally entitled to disseminate the score updates/match alerts to the public and consequently generate income. Such information, emanating from the cricket matches i.e. score updates/match alerts, were facts‟ over which there cannot be copyright monopoly. In support, reliance was placed on Victoria Park Racing and Recreation Grounds Co. Ltd. vs. Taylor, 58 CLR 479 ( the Victoria Park Case ) and Feist Publications, Inc. V Rural Telephone Service Co., 499 U.S. 340 (1991) ( Feist ).The score update had entered the public domain and therefore, could be freely used by anyone. Finally, the Constitution under Article 19(1)(a) confers upon them the freedom to disseminate information to the public. It was submitted that for any kind of copyright protection, or protection akin to those rights, the claimant should show originality (Servewell Products Pvt. Ltd. Anr. v. Dolphin, 2010 (43) PTC 507 (Del) and Eastern Book Company v. DB Mod ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... od further limited by Section 39A as the latter provision belonged to the Chapter of the Act which deals with neighbouring‟ or related rights‟. It enumerates provisions of the statute which apply to copyright would also apply, mutatis mutandis to the neighbouring rights (eg. Performer‟s rights, Broadcasting reproduction rights). Section 16 is not enumerated under Section 39A of the Act. Under the Copyright Act, rights besides copyright are created; they include rights of broadcasting organisations under Section 37, rights of performers under Sections 38 and 38A, and the moral rights of authors which are recognized under Section 57. They are distinct from copyright. The single judge relied on ESPN Star Sports v. Global Broadcast News Ltd. Ors. 2008 (38) PTC 477 (Del.) (DB) (ESPN Case). In view of these, it was held that pre- emption under Section 16 of the Act, only applies to copyright or any similar right with respect to works‟ and cannot be extended to the other rights in any manner whatsoever. The learned single judge said that the plaintiffs have merely approached this Court to find a remedy in common law against the tort of unjust commercial en ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion or other activation which are expressly prohibited. Mobile Rights means the Mobile Activation Rights and the right to deliver or provide access to the Feed or Footage, the Audio Feed, any Unilateral Commentary and Unilateral Coverage in the Territory during the Rights Period, for reception and viewing in an intelligible form on a Mobile Device where the communication link(s) used in such delivery comprises, at least in part, Mobile Communications Technology and/or Mobile Broadcast Technology but excluding Television Delivery and Internet Delivery. 33. If the plaintiff did not intend on generating revenue by exploiting these mobile rights‟ and mobile activation rights‟, it could have resorted to bidding only for selective rights since they were also available on an a la catre‟ basis. It is amply clear that the plaintiffs grievance is not infringement of its exclusive rights over the footage of the cricket match, but specifically regarding the right to raise revenue by disseminating match information contemporaneously via SMS/MVAS by exploiting the mobile rights‟ and mobile activation rights‟ exclusively assigned to it in the Media Rights ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 13. The Appellants‟ argument that match information was in the public domain was brushed aside; the impugned order held that as the plaintiffs did not seek copyright of the score updates, there was no question of information entering the public domain. The term public domain, according to the learned single judge, had different connotations, as match facts did not enter the public domain simultaneously with the events, due to the time lag of few seconds as a result of time taken for transmission. As a corollary, the information has still not entered the public domain qua the persons who do not have any access to a source of contemporaneous information i.e. TV or radio. The court went on to hold that facts relating ball by ball progress of the match were in great demand and consequently it could not be said to be available immediately after the event. 14. The court found merit in the Appellant‟s argument that they have a fundamental right to disseminate such information as demanded by the public; yet it felt that the Court had to balance the right of the organiser of an event to monetize his own event as against the right of the public to receive information reg ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... owned by anybody either under statute or common law. In this context, it is stated, that the plaintiffs aver in the suit that they assert exclusive rights over Match Information generated during a cricket match, which is purely factual information, incapable of copyright protection which cannot transform into wider, ill-defined rights of indefinite duration. Therefore, it cannot ask that match information of the kind which is subject matter of the suit, should be protectable as a property right. It is further submitted, in this context that there are several unresolved policy issues which constrain the court from holding that cricket scores or match information is property. These concerns include - the scope of such right, difference between protected facts and those which are not protected, the term/period of such hot news protection, question of who is the first owner of the property i.e. organizer or the players, manner of licensing of the rights, applicability of provisions relating to such incidents, how can proprietors of such rights relinquish them to bring them into the public domain, compulsory licensing of such rights, exercise of jurisdiction by a regulatory body t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ne, it would cover this case; at least, the language of the majority opinion goes so far. We do not believe that it did. While it is of course true that law ordinarily speaks in general terms, there are cases where the occasion is at once the justification for, and the limit of, what is decided. This appears to us such an instance; we think that no more was covered than situations substantially similar to those then at bar. The difficulties of understanding it otherwise are insuperable. We are to suppose that the court meant to create a sort of common-law patent or copyright for reasons of justice. Either would flagrantly conflict with the scheme which Congress has for more than a century devised to cover the subject-matter... It appears to us incredible that the Supreme Court should have had in mind any such consequences. To exclude others from the enjoyment of a chattel is one thing; to prevent any imitation of it, to set up a monopoly in the plan of its structure, gives the author a power over his fellows vastly greater, a power which the Constitution allows only Congress to create... xxxxxxxxxx xxxxxxxxxxxxxxx Congress might see its way to create some sort of temporary righ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or some entity can own an event; one may be an organizer. Certain aspects or features of an event may be capable of ownership. In support of this contention, i.e. inability to own facts, reliance is placed on the judgment in Eastern Book Company v Modak 2008 (1) SCC 1. The sporting event as a whole is incapable of ownership. The mere expending of money or effort would not render the underlying facts relating to sporting events property, capable of protection. What is conceivable, counsel submitted, is that the organizer of an event can have certain rights which flow from (a)his ownership/control over the venue i.e. land; and/or (b)statute. In this context, the following observations in Victoria Park (supra) were relied on: Further, he does no wrong to the plaintiff by describing to other persons, to as wide an audience as he can obtain, what takes place on the plaintiff‟s ground. The court has not been referred to any principle of law which prevents any man from describing anything which he sees anywhere... It was stated that not only the plaintiffs, but also others had the right to monetize the facts and information, over which there could be no monopoly. It is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 223;s coverage would be off-tube with ambient sound provided by pre-recorded sound effects, the BBC complained that Talksport was incorrectly representing the nature of the coverage it was providing, and incorrectly representing itself to be the holder of live broadcasting rights. 19. It is submitted that the concept of unjust enrichment is embodied only in Section 72 of the Contract Act, which extends to pre-existing contractual or quasi contractual relationships. Learned senior counsel also relied on Sports and General Press Agency Ltd v Our Dogs Publishing Co Ltd [(1916) 2 K.B. 880] Cadbury-schweppes Pty Ltd and Others v Pub Squash Co Pty Ltd. [(1981) 1 W.L.R. 193] and Hodgekinson Corby Ltd v Wards Mobility Services Ltd [1994 Ch. 1564]. Sports and General Press Agency Ltd. was relied on to state that the organizer of an event cannot grant a license or an exclusive license to a right (here the right to photograph) that does not exist. The organizer of an event, by virtue of being in control of premises, can impose any restrictions he wishes by contract. But there is no such proprietary right in common law so as to proceed against third parties. It was held there that: ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ights in contemporaneous/ almost instantaneous dissemination of Match Information through Mobile SMS updates to those class / market of persons who have no access to television, radio or internet and have access to Match Information only through mobile phones. It is asserted that match information does not pass into public domain upon broadcast / telecast of the match for third parties to freely and commercially exploit. There is a clear distinction between the information passing into public domain and information being available to the public. Exploitation of Match Information through one mode of communication (such as television / radio broadcast) does not imply that BCCI has foreclosed / abandoned its right to exploit Match Information through all other modes of communication (such as mobile, internet). Modes of access to a match have evolved from stadium to radio to TV to internet and mobile. The advent of mobile technology provides an additional independent market of cricket lovers who are not in a position to follow the progress of a cricket match either through television, internet or radio. 23. The respondents cited the instance of someone in a meeting or in a trek in t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... aims in the cricket match itself; furthermore, the entire structure of rights in sports event, including broadcasting rights, audio rights, internet rights, stadium rights etc. would be rendered nugatory. Counsel also stated that if ownership is partially or fully conceded even for one of the rights, then all incidents and insignia of ownership must follow in respect of the entire bundle of rights vesting in the BCCI. 27. It is asserted that a Division Bench of this Court has recognized the distinction between general content on the one hand, and newsworthy content generated from a special event on the other and observed that the organizer is entitled to appropriate the newsworthy information/value of such special events. Counsel submitted that the rights claimed and sought to be enforced are not absolute, in that not all factual information is the subject matter of protection, but only a limited property right - the right to generate revenue by monetizing Match Information through the new platform / medium of Mobile services. 28. The respondents refute the argument that learned Single Judge failed to address the primary question mentioned in the Division Bench order dated 03 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... be disseminated commercially only with their consent upon satisfaction of the terms which may be imposed in that regard. Learned counsel further emphasized that the existence of mobile rights of the kind which are subject matter of present case have been clearly established by custom and usage across the world and are capable of enforcement. 31. It was argued by learned senior counsel for the respondent that property rights evolve and are to be viewed contextually. The ownership of some rights need not be based on the ability of the proprietors to exclude the entire world but from its enjoyment for all times or absolutely; it can be a limited one as in the circumstances of the present case. Just as property need not be tangible, the exclusivity need not be absolute at any point of time or against absolute in other time or as regards the object, i.e. the entire world. So long as the one who asserts the right can establish exclusivity that he, as creator or one having exclusive rights to the underlying events that constitute the fact can successfully prevent commercial dissemination, the Courts would enforce the monopoly - a limited one, having regard to the context of the case, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ltant misappropriation should be injuncted. Lastly, it was argued that the appellant‟s submissions are unfounded because the BCCI is under a mandate to ensure that dissemination of match information is optimized commercially for the greater public good. Concomitantly, the mobile rights too have to be monetized to promote the sport of cricket in India. In support of this submission, learned counsel relied upon the judgment reported as Secretary, Ministry of Information and Broadcasting v. Cricket Council of Bengal 1995 (2) SCC 161. Learned counsel lastly relied upon the ruling of the Division Bench in New Delhi Television Limited v. ICC Development (International) Limited and Another [FAO(OS) 460/2012] and submitted that the limited protection by way of injunction of a finite duration granted to preserve the sanctity of hot news on the basis of the unfair competition and unjust enrichment doctrine was warranted by the facts and circumstances of the case. 35. Before discussing the merits of the rival contentions, it would be necessary to extracts certain provisions of the Copyright Act, 1957. Though Star and BCCI assert that the rights on which the suit is premised are ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the making of the work a citizen of India or domiciled in India; and (iii) In the case of work of architecture, the work is located in India Explanation- In the case of a work of joint authorship, the conditions conferring copyright specified in this sub section shall be satisfied by all the authors of the work. (3) Copyright shall not subsist- (a) In any cinematograph film if a substantial part of the film is an infringement of the copyright in any other work; (b) In any sound recording made in respect of a literary, dramatic or musical work, it in making the sound recording, copyright in such work has been infringed. (4) The copyright in a cinematograph film or a sound recording shall not affect the separate copyright in any work in respect of which a substantial part of which, the film, or as the case may be, the sound recording is made. (5) In the case of a work or architecture, copyright shall subsist only in the artistic character and design and shall not extend to processes or methods or construction. 14. Meaning of copyright- For the purposes of this Act, copyright means the exclusive right subject to the provisions of this Act, to do or aut ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ons; (iii) To communicate the sound recording to the public Explanation - For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation. xxxxxxxxx xxxxxxxxxxx xxxxxxxxxxxxxx 16. NO COPYRIGHT EXCEPT AS PROVIDED IN THIS ACT. No person shall be entitled to copyright or any similar right in any work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or of any other law for the time being in force, but nothing in this section shall be construed as abrogating any right or jurisdiction to restrain a breach of trust or confidence. xxxxxxxxxxx xxxxxxxxxxxxxx xxxxxxxxxxxxxx 37. BROADCAST REPRODUCTION RIGHT. (1) Every broadcasting organisation shall have a special right to be known as broadcast reproduction right‟‟ in respect of its broadcasts. (2) The broadcast reproduction right shall subsist until twenty- five years from the beginning of the calendar year next following the year in which the broadcast is made. (3) During the continuance of a broadcast reproduction right in relation to any broadcast, any person who, without the lice ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Star to disseminate the information/content emanating from the event; other copyrights emanating from recording of the live event too have been assigned to Star. These include the right to record, reproduce, broadcast etc. the actual event with other related rights. Among these are mobile distribution rights, which is the bone of contention in these proceedings. The plaintiffs assert that these rights enable only Star, to the exclusion of all others to disseminate time sensitive match information, i.e. almost contemporaneous news such as the result of a ball bowled, milestones achieved by the player, the score, fall of a wicket, etc. through SMS alerts. The appellants (defendants) assert that once the event occurs, it is a fact over which no one can claim monopoly. The reporting of such facts cannot be restrained and doing so, through courts would abridge free speech. The defendant argue that there is no such hot-news principle which can be enforced by courts in India; that such non-statutory common law rights, founded on so- called notions of unfair competition or unjust enrichment, are unenforceable. They also rely on Section 16 of the Copyright Act. Is the plaintiffs ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ld that mere copy- edited portions of judgments (which contained the basic facts) did not entitle the publisher copyright protection as they did not amount to minimum requirement of creativity . That the appellant expended some skill, labour and money did not entitle them the protection: The exercise of the skill and judgment required to produce the work is trivial and is on account of the labour and the capital invested and could be characterized as purely a work which has been brought about by putting some amount of labour. This ruling, in the Court‟s opinion, is an important mile stone in the development of law in India, because the Court veered away from the previous copyright protection standard indicated in University of London Press, Ltd. v. University Tutorial Press, Ltd., [1916] 2 Ch. 601, i.e. the claimed work being the product of the labour, skill and capital of one man which must not be appropriated by another, not the elements, the raw material, upon which the labour and skill and capital of the first have been expended. To secure copyright for this product, it is necessary that the labour, skill and capital expended should be sufficient to impart to the prod ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nal: viewers with the right equipment see the football results displaced on their screens. It is clear that the text regarded as a literary work may be copyright but that copyright will belong to the news agency, not the broadcaster. The broadcaster does acquire a copyright in his broadcast, but this is a narrow one. Thus, it would be an infringement of it if another broadcaster captured the signals and re-transmitted them. But it would not be an infringement (of the broadcasting copyright) if someone copied down the results from his television screen and published them in a newspaper. He is copying the underlying text but not the signals. (emphasis in original). 40. Accordingly, what determines that the appellants‟ acts are wrongful or not is whether the underlying match information is protected in law. Given this, match information - which are essentially facts occurring as against the public at large - do not per se have any claim to protection under the Copyright Act, as the plaintiffs admit. Further, taking an argumentuma contrario approach in specifically excluding facts and information from the scope of protection under the Copyright Act, the Parliament has specifi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e applicability of other provisions, (that do not find express mention under Section 39A). The wording of Section 16 - and very importantly, Section 63 (which create offences) refer to other rights . By Section 16, copyright or any similar right (in a work) apart from what is created by the Act is precluded. No doubt, the expression work limits the exclusion. However, equally, while the text of the Copyright Act does not prescribe what the rights referred to in the words other similar rights - other than copyright - are, this must necessarily allude to, inter alia, broadcasting rights. This is clear from the following reasons: Section 63 - which creates offences (and yet is not included in Section 39A as applicable to broadcasting rights) states that infringement of (a) copyright in a work, or (b) any other right created by this Act would be punishable with imprisonment. Similarly, expressions which are not defined by Chapter VIII are used; their meaning (i.e. words such as sound recording, visual recording, fair dealing, etc.) can be only construed with reference to other provisions of the Copyright Act. In other words, though there is no express reference to Section 16 i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e broadcast, is facially untenable. Such rights have long been held to be barred as they are similar to copyright protection (Ref Donaldson v Beckett 1 ER 837 (1774); Section 31 of the Copyright and Designs Act, as well as Section 46 (5) of the UK Copyright Act, 1956 (repealed) and Section 171 (2) of the UK Copyright Designs and Patents Act, 1988). 44. As a result of the above discussion, it is held that the rights claimed by the plaintiffs, over and above the broadcasting rights, i.e. to prevent others from publishing or sharing match information or facts, for irrespective of commercial or non-commercial use, is precluded by Section 16 of the Copyrights Act; it is also precluded because of the provisions of Chapter VIII of the said Act. If Parliament had intended such rights to exist, they would have been enacted, with suitable mechanisms for their enforcement and effectuation. The Hot News doctrine and its application in India 45. The so-called hot news doctrine, in support of the content misappropriation claim, which is the leitmotif of the plaintiff‟s case, was premised on unfair appropriation of a quasi-property right; which was propounded in INS (supra). ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... who have earned it to those who have not; with special advantage to defendant in the competition because of the fact that it is not burdened with any part of the expense of gathering the news. The transaction speaks for itself, and a court of equity ought not to hesitate long in characterizing it as unfair competition in business. 46. The US Supreme Court was not unanimous; there were three dissenters; two renowned jurists, i.e. Holmes, J and Brandeis, J dissented. Specifically, Justice Brandeis remarked, in his opinion that: Then the creation or recognition by courts of a new private right may work serious injury to the general public, unless the boundaries of the right are definitely established and wisely guarded. In order to reconcile the new private right with the public interest, it may be necessary to prescribe limitations and rules for its enjoyment; and also to provide administrative machinery for enforcing the rules. It is largely for this reason that, in the effort to meet the many new demands for justice incident to a rapidly changing civilization, resort to legislation has latterly been had with increasing frequency... 47. The next decision, this one reli ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ‟s jurisdiction (to declare the hot news doctrine) was underpinned on a federally existing common law in an area concededly which fell in the states‟ legislative domain. No state (or federal) statute existed. That doctrine was discredited and the previous rulings upholding the federal common law principle overruled. Here, Brandeis, J spoke for the court which overruled the federal common law doctrine: The fallacy underlying the rule declared in Swift v. Tyson is made clear by Mr. Justice Holmes. The doctrine rests upon the assumption that there is a transcendental body of law outside of any particular State but obligatory within it unless and until changed by statute,‟ that federal courts have the power to use their judgment as to what the rules of common law are; and that in the federal courts the parties are entitled to an independent judgment on matters of general law‟: But law in the sense in which courts speak of it today does not exist without some definite authority behind it. The common law so far as it is enforced in a State, whether called common law or not, is not the common law generally but the law of that State existing by the autho ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the SportsTrax device; it also offered evidence at trial concerning STATS‟s America On-Line ( AOL ) site. Users, who accessed STATS‟s AOL site, were provided with more comprehensive and detailed real-time game information than was displayed on a SportsTrax pager. NBA asserted six claims for relief: (i) state law unfair competition by misappropriation; (ii) false advertising under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125(a); (iii) false representation of origin under Section 43(a) of the Lanham Act; (iv) state and common law unfair competition by false advertising and false designation of origin; (v) federal copyright infringement; and (vi) unlawful interception of communications under the Communications Act of 1934, 47 U.S.C. Statute 605. Motorola counterclaimed, alleging that the NBA unlawfully interfered with Motorola‟s contractual relations with four individual NBA teams that had agreed to sponsor and advertise SportsTrax. The NBA court rejected that there could be any copyright in sporting events: Sports events are not authored in any common sense of the word. There is, of course, at least at the professional level, considerable preparati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... vides such information to the media in each arena. In the future, the NBA plans to enhance Gamestats so that it will be networked between the various arenas and will support a pager product analogous to SportsTrax. SportsTrax will of course directly compete with an enhanced Gamestats. However, there are critical elements missing in the NBA‟s attempt to assert a hot-news INS-type claim. As framed by the NBA, their claim compresses and confuses three different informational products. The first product is generating the information by playing the games; the second product is transmitting live, full descriptions of those games; and the third product is collecting and retransmitting strictly factual information about the games. The first and second products are the NBA‟s primary business: producing basketball games for live attendance and licensing copyrighted broadcasts of those games. The collection and retransmission of strictly factual material about the games is a different product: e.g., box- scores in newspapers, summaries of statistics on television sports news, and real-time facts to be transmitted to pagers. In our view, the NBA has failed to show any competit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 223;s misappropriation claim based on New York law is pre-empted. The Federal Pre-emption clause (Section 301) reads as follows: 301. Preemption with respect to other laws (a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. (b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to-- (1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or ... (3) activities violating legal or equitable rights that are not equivalent to any of the excl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ause of action for misappropriation has been preempted by the Copyright Act. The adoption of new technology that injures or destroys present business models is commonplace. Whether fair or not, that cannot, without more, be prevented by application of the misappropriation tort. Indeed, because the Copyright Act itself provides a remedy for wrongful copying, such unfairness may be seen as supporting a finding that the Act pre-empts the tort. 53. It would thus be seen that the INS decision, propounding time sensitive hot-news-misappropriation doctrine, based on unfair dealing and unfair competition, had its sceptics from inception. The majority judgment in INS acknowledged that even such time sensitive information was not copyrightable (as it was publici juris). Cheney saw its foundations being questioned by the Appellate Circuit Court. Errie Railroad, a later decision of the Supreme Court, undercut the constitutional legitimacy of the Court‟s assumption to weave doctrines, i.e. the jurisdiction to discover and enforce federal common law. In NBA, the Second Circuit, post the 1976 Copyright Act, interpreting a federal pre-emption provision (Section 301, which enjoined St ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... wledge, skill or labour. This is sufficiently evidenced by the history of the law of copyright and by the fact that the exclusive right to invention, trademarks, designs, trade name and reputation are dealt with in English law as special heads of protected interests and not under a wide generalization. In dissenting from a judgment of the Supreme Court of the United States by which the organized collection of news by a news service was held to give it in equity a quasi-property protected against appropriation by rival news agencies, Brandeis J. gave reasons which substantially represent the English view and he supported his opinion by a citation of much English authority (International News Service v. Associated Press(1)). His judgment appears to me to contain an adequate answer both upon principle and authority... Similarly, later in Moorgate Tobacco Co. v. Philip Morris [156 CLR 414 (1984)], the High Court of Australia upheld the Victoria Park Judgment and held: the decision in International News Service, which was hailed in the United States as a landmark in the law of unfair competition, has been seen even in that country to be more properly described as an island. I ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rliament has deemed fit to exclude from protection under the Copyright Act. The plaintiff has not been able to show, in the opinion of the court, how it has proprietary rights over the facts and information it seeks to protect - even for a limited duration. A telling aspect of the present case is that the plaintiff is willing to state that the moment the event occurs, i.e. any ball is bowled or a wicket falls, the fact or information passes into the public domain, as far as viewers and subscribers (i.e. both the spectators at the venue, as well as the tens of millions of television viewers) are concerned. However, it does not somehow become part of the public domain, if any one or some of them chose to relay the underlying facts, in the course of commerce. This aspect completely undermines the plaintiff‟s case about it possessing proprietary rights for very limited duration, in respect of such facts. For the reasons discussed above, it is held that the plaintiff cannot claim any exclusive property or other such rights to injunct the publication of match information, or hot-news, as claimed by it, irrespective of whether the object of such third party is to publish such inform ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d to be the appropriate balance between competing claims and policies. Neither legal principle nor social utility requires or warrants the obliteration of that boundary by the importation of cause of action whose main characteristic is the scope it allows, under high-sounding generalizations, for judicial indulgence of idiosyncratic notions of what is fair in the market place. (emphasis supplied) 59. In fact, the recent trend internationally to accord protection to rights in information - in varying degrees - or to accept the doctrine of unfair competition‟, especially in the European Union, is pursuant to legislative action by the European Council, and not as a judicial extension. To the contrary, similar proposals for extending the scope of protection judicially was rejected in a line of cases, most notably, Cadbury-Schweppes Pvt. Ltd. v. Pub Squash, [1981] 1 WLR 193. 60. Denying the claim about the tort of unfair competition does not betray the Court‟s reticence to protect rights in intangibles or to ensure fairness‟ in commercial dealings, but rather, reflects sound judicial restraint, to defer to the Parliament‟s policy decisions represented in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nce of the claim, it appears to be a claim for unauthorized copying‟ of facts, which are not copyrightable. Thus, for example, claims that assert passing off, or a fraudulent element, or indeed, a question of information disclosed in confidence (as specifically mentioned in Section 16), each having a distinct qualitative element from a mere copyright may survive Section 16 pre-emption, but not otherwise. A contrary reading would allow for claims based on alternate common law remedies that Section 16 considers to be the sole domain of the statute. At the same time, the Court ought to be cautious of the scope of pre-emption under Section 16 to not restrict independent claims merely because ... (it) relates to intellectual property (or specifically, copyright) ... (Aronson v. Quick Point Pencil Co., 440 US 257, p. 262) Rather, if the nature and degree of the right asserted by Star is such that it conflicts with the scheme of the Copyright Act (Kewanee Oil Co. v. Bicron Corp., 416 US 470 (1974), thus offering the equivalent of a (copyright) monopoly (Sears, Roebuck and Co. v. Stiffel Co., 376 US 225, p. 233) that the Act itself does not recognize, its claim must be pre-emp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is similar or not forming an independent inquiry that the Court must undertake) is precluded by the Copyright Act. 64. In this case, and generally, as far as copyright subject matter is concerned, the claim for unjust enrichment is whether the defendants were unjustly enriched‟ by the dissemination of match information, which isidentical to a claim for the defendant‟s infringement of the match information over which Star asserts rights. Thus, for example, claims of unjust enrichment against a tabloid for publishing Elvis Presley‟s photographs inspired by the plaintiff‟s collection (Curtin v. Star Editorial Inc., 2 F. Supp. 2d 670 (E.D. Pa. 1998), and a similar claim against a studio for building a replica of the plaintiff‟s home in a movie sequel (Tavormina v. Evening Star Productions Inc., 10 F. Supp. 2 d 729 (S.D. Tex, 1998)), were considered to be pre-empted, amounting to (in essence) copyright claims though dressed up under alternate heads of common law. In Tavormina, the Court specifically noted that it: agrees with the Defendants that the Plaintiff‟s claim for unjust enrichment is pre-empted because it involves the same conduct th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... chment is to be seen on merits, (assuming that it is not pre-empted by Section 16), such a claim cannot - by definition (with limited exceptions as noted below) - injunct or prohibit the defendants from disseminating match information, but rather, only be the basis for a restitutionary award. Importantly, the property interest claimed by the plaintiff under the hot news doctrine/doctrine of unfair competition is conceptually distinct from the claim of unjust enrichment. Whereas the former (if considered to be a valid claim) provides an interest that injuncts the defendants from disseminating match information (thereby classifying the defendant actions as wrongful), the latter does not contain any finding of wrongdoing, but rather, is a purely restitutionary remedy that requires the defendant to return the profit (the principle being to disgorge the defendant of its profits, rather than compensate the plaintiff for any right violated). That restitution for unjust enrichment (relied on by Star) is distinct from restitution for wrongdoing is a well-settled proposition affirmed recently by the Canadian Supreme Court in Kingstreet Investments Ltd. v. New Brunswick, [2007] 1 SCR 3: ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ent of the defendant, (b) at the expense of the claimant, (c) an unjust factor in allowing the retention of such benefit. (see, Burrows et. al., A Restatement of the English Law of Unjust Enrichment 44 (Oxford, Oxford University Press, 2012)); Birks, An Introduction to the Law of Restitution 16-8 (Clarendon Press, Oxford 1989)). 68. Accepting this formulation, in Sahakari Khand Udyog Mandal Ltd. v. CCE Customs, (2005) 3 SCC 738, the Supreme Court elaborated upon the aspect of unjust enrichment stating: 31. Stated simply, unjust enrichment means retention of a benefit by a person that is unjust or inequitable. Unjust enrichment occurs when a person retains money or benefits which in justice, equity and good conscience, belong to someone else. 32. The doctrine of unjust enrichment , therefore, is that no person can be allowed to enrich inequitably at the expense of another. A right of recovery under the doctrine of unjust enrichment arises where retention of a benefit is considered contrary to justice or against equity ... This position was also approved in Godfrey Phillips India Ltd. Anr. v. State of U.P Ors. (2005) 2 SCC 515, where the Court held that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as a matter of right; and even though the underlying principle of recovery is the principle of unjust enrichment, nevertheless, where recovery is denied, it is denied on the basis of legal principle. It is therefore necessary to consider whether Mr. Lightman‟s submission can be upheld on the basis of legal principle ... In failing to provide any clear unjust factor, as also in not addressing whether the benefit gained by the defendants was at the plaintiff‟s expense‟, (both crucial legal requirements for a claim of unjust enrichment, as opposed to a broad reference to the fairness and justness of the plaintiff‟s claim), the approach of the Learned Single errs in its findings on this issue. 69. If one were to deal with this issue afresh - two questions arise: first, have the defendants, though undeniably benefiting from the dissemination of match information, been so benefited at the expense of Star; and secondly, if so, does the retention of such benefit present any unjust factor? On the first question, Star must demonstrate that the defendants‟ enrichment is at its expense. This remains a well-established and indeed, unchallenged, propositio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nally, unjust enrichment). Sections 38 and 39 of the Specific Relief Act empower the civil court, in exercise of its jurisdiction, to issue injunctions. Although, textually, Section 39 talks of mandatory injunction and does not advert to statute based rights, it speaks of such remedy being available to prevent the breach of an obligation existing in favour of the claimant. While the last two illustrations to the Section 38 suggests that obligations not spelt out in express terms and not found in either contract or statute, but arising out of the relationship or the peculiar conditions are enforceable through injunction, as is clear from the above discussion, none of those conditions exist to entitle the plaintiff to the injunction. 72. Accordingly, for the above reasons, this court is of opinion that the plaintiffs cannot claim an injunction based on either the doctrine of unfair competition or unjust enrichment. 73. The above discussion would have been dispositive of the issues which arose for consideration in this case. However, it would be appropriate that this court deals with one aspect which was brushed aside by the learned single judge. The Appellants had argued that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ther one of wisdom in recognizing the important role that courts must play within the sphere allotted to them. In other words, the Constitution visualizes that restrictions, saved by virtue of Articles 19 (2) and 19 (6) are in terms of enacted law, and not judge-declared fiats Doing what the plaintiff invites this court to do would be to enclose from the public match facts and information which are not protectable in any manner known to law. Such an injunction would tend to insidiously, and in a creeping manner, denude the fundamental right to free speech and dissemination of topical information to members of the public. 74. In view of the above discussion, it is held that the plaintiffs claim for ad interim injunction on all counts, i.e. ownership of facts based on the hot news principle and the claims for unfair competition and unjust enrichment cannot be granted. Prima facie, it is also held that claims so made are statutorily precluded. Consequently, the impugned judgment and order of the learned Single Judge has to be and is set aside. The three appeals i.e. FAO (OS) No.153/2013, FAO (OS) No.160/2013, and FAO (OS) No.161/2013 are therefore allowed. All pending application ..... X X X X Extracts X X X X X X X X Extracts X X X X
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