Several artists and content creators labour under the misconception that limiting the use of another artist’s content to a few seconds in their work would grant them a defense of de minimis from a claim of copyright infringement. However, this is not true. The principle of De Minimis is a common law principle that has been derived from the Latin term ‘De Minimis Non-Curat Lex’, which means that the law does not care for, or take notice of, very small or trifling matters. What constitutes de minimis is dependent on several factors and precedentially, courts have been cautious in extending this excuse.
Although Indian copyright law does not expressly include the concept of de minimis, this doctrine has been inculcated in the law via several precedents. It was first discussed in the landmark India TV Case. As per the facts of the case, the plaintiff had found during regular monitoring that the defendant had without prior licensing, broadcasted sound recordings and audio-visual songs (video/cinematographic films) from various cinematograph films, the copyright of which is held by the plaintiff. India TV defended this claim as fair dealing under Section 52(1)(a) and 52(1)(b) of the Indian Copyright Act, 1957 as well as the de minimis doctrine. When elevated to the Division Bench of the High Court of Bombay via appeal2, the court traversed the various methods of application of the de minimis rule as was analyzed in judicial precedents:
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METHOD |
MEANING |
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Substantial Similarity |
De Minimis is applicable in cases of comprehensive non-literal similarity; where Courts have strived to identify the fundamental essence of the structure, and it being copied, even where specific expression is not copied. |
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Fourth Factor of Fair Use |
The fourth factor in determining fair use as per US statute is the effect of the use upon the potential market for or value of the copyrighted work which is used to determine de minimis. |
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Other Areas of Law |
In the present matter, the court held that the lack of consistency in the judicial precedents is no ground to conclude that de minimis is not a viable copyright infringement defence. |
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Way Forward |
In the present judgment, the court laid down the following factors of determination: 1. Size and type of harm 2. Social cost of adjudication 3. Purpose of alleged infringement 4. Intent of alleged infringer 5. Effect on the legal rights of third parties |
Most recently, the Bombay High Court in Shemaroo Entertainment Limited vs. News Nation Network Private Limited clarified that the defence of de minimis and fair use has to be seen through the prism of the facts involved in the case.
I. BRIEF FACTS OF THE CASE
The suit as filed by the plaintiff was based on a claim of copyright infringement by the defendant of the plaintiff’s owned audio-visual content. It was noted that the parties had entered into a non-exclusive licensing agreement for the said audio-visual content on 19th July, 2019 till 30th June, 2022 but prematurely terminated it at the behest of the defendant on 1st August, 2020. However, the defendant continued using the audio-visual content without license, post the termination of the agreement.
II. ARGUMENTS ADVANCED
On 20th April, 2021 the plaintiff brought to the notice of the defendant, instances of infringement of the plaintiff’s copyright in the month of August to October, 2020 and demanded the consolidated amounts towards the damages. The plaintiff submitted that content for which the parties had previously entered into a license agreement, cannot now be distributed by the defendant without the payment of license fees and that defence of fair dealing cannot be claimed where the content is commercially exploited.
The defendant categorically declined the claim of copyright infringement. The defendant undertook to refrain from disseminating the plaintiff’s purported content save and except as a part of its ordinary and regular course of business i.e. report news and programmes and not to individually and otherwise commercially exploit the plaintiff’s material for their own personal benefit. Such use of the plaintiff’s content by the defendant is permissible under Section 52 of the Copyright Act, 1957, as it is covered under the doctrine of ‘fair dealing’. The defendant stated that it had used the plaintiff’s content only for an extremely limited and short span of time, hardly lasting a minute, in their regular and ordinary programs, and that the action of disseminating the plaintiff’s content was bonafide, thus finding sanctuary under the doctrine of de minimis.
III. COURT’S FINDINGS
The court accepted the plaintiff’s argument and accepted that the defendant having taken a license for valuable consideration in the past, for exploitation of the plaintiff’s content, cannot now turn around and contend that the unauthorized exploitation of the content in which the plaintiff has the copyright, either amounts to a ‘fair dealing’ or deserves to be ignored on the principle of de minimis non curat lex. It is not the case of the defendant that there was a qualitative change in the nature of the exploitation; during the continuance of license agreement and post-termination. If for an identical activity, the defendant had obtained license for valuable consideration, on first principles, these defences may not be readily available to the defendant.
With regard to de minimis the court held that it is not only the duration of the exploitation which matters. There is a qualitative element as well in deciding both the aspects of fair dealing and de minimis. The length and extent of the copyrighted work, infringement of which is complained of, is undoubtedly of vital importance. However, it could not be reduced to just a quantitative test of minute and seconds dehors the qualitative aspect. The submission on behalf of the defendant that the exploitation was hardly for a minute, therefore, does not carry the matter thorough.
The court has also looked into the matter of purpose of infringement. In the context of the nature of the activity engaged in by the defendant, where advertising constitutes the primary source of revenue, onus rests on the defendant to demonstrate that the content was used for the purpose of reporting on current events and affairs as they have claimed. However, the defendant was unable to provide evidence in this respect and the court was bound to give importance to the plaintiff’s claim that such infringement was done for commercial purposes.
Therefore, the court believing that the balance of convenience tilts heavily in the favour of the plaintiff, granted them injunctive relief.
Based on the above discussion, it can clearly be said that there exists NO magic number in determining de minimis. Arguments such as ‘we only used xyz seconds of the content’ are not a valid argument. Although they have persuasive value, such an argument must be accompanied by other factors such as accidental usage, non-commercial intent etc. Courts prefer to look at such cases keeping in mind the backdrop of the alleged infringement and taking into consideration the five-factor test laid down in the India TV Case, as has been evidenced by the Shemaroo Case.
This article has been authored by Ms. Ananya Agarwal.