ESPN STAR SPORTS VS GLOBAL BROADCAST NEWS LTD.

(2008) 38 PTC 477 (DB)

SUBMITTED BY:

NAME: MANI RAJ

ROLL NO: 2124

SEMESTER: SEVENTH

SESSION: 2019-2024

COURSE: B.A., LL.B. (Hons)

SUBMITTED TO:

PROF. DR. S.C. ROY

PROFESSOR OF LAW

FINAL DRAFT SUBMITTED IN THE PARTIAL FULFILMENT OF THE TITLED COURSE

Intellectual Property Law

October 2022

CHANAKYA NATIONAL LAW UNIVERSITY

NYAYA NAGAR, MITTHAPUR, PATNA-800001

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 DECLARATION

I, Mani Raj, hereby declare that the work reported in B.A., LL.B (Hons.) titled “ESPN STAR
SPORTS VS GLOBAL BROADCAST NEWS LTD , (2008) 38 PTC 477 (DB)” submitted at
Chanakya National Law University, Patna is an authentic record of my work carried out under the
supervision of Prof. Dr. S.C. Roy. I have not submitted this work from elsewhere and I am fully
responsible for the contents of my project report.

MANI RAJ

ROLL NO. – 2124

B.A., LLB. (Hons.)

7th Semester

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 ACKNOWLEDGEMENT

The researcher takes this opportunity to express his profound gratitude and deep regards to his
guide Prof. Dr. S.C. Roy , for his exemplary guidance, monitoring and constant encouragement
throughout the course of this project. The blessing, help and guidance given by him time to time
shall carry the researcher a long way in the journey of life on which the researcher is about to
embark.

The success and final outcome of this project required a lot of guidance and assistance from many
people and I am extremely privileged to have got this all along the completion of this project. Last,
but not the least, I am thankful to all the members of my family, friends and teachers without
whose assistance and encouragements I could not have completed my thesis.

MANI RAJ

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 TABLE OF CONTENTS
DECLARATION ............................................................................................................................ 2
ACKNOWLEDGEMENT .............................................................................................................. 3
1. Parties to the Case.................................................................................................................... 5
1.1. AIMS AND OBJECTIVES .............................................................................................. 6
1.2. HYPOTHESES ................................................................................................................ 6
1.3. RESEARCH METHODOLOGY ..................................................................................... 6
2. Facts of The Case .................................................................................................................... 7
3. The Contentions of The Parties................................................................................................... 7
4. Section 61 of The Copyright Act, 1957. ................................................................................... 10
5. Fair Dealing .............................................................................................................................. 14
6. Final Judgement: (September 26th, 2008) ................................................................................ 16
BIBLIOGRAPHY ......................................................................................................................... 17

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 1. Parties to the Case
The plaintiff, ESPN Star Sports is a general partnership under the laws of the State of Delaware,
United States of America. Its beneficial owners are Star Group Limited (50%) and ESPN, Inc
(50%). The latter is a subsidiary of the Walt Disney Group. The Plaintiff has its office in Singapore;
it is engaged in the production and the telecasting of sports channels under the name of ESPN,
STAR Sports and STAR Cricket (referred to as 'Channels') among others, in India. Its principal
production facility is located in Singapore. It broadcasts 12 channels from that facility to about 26
countries. It claims to have the services of 35 dedicated, fulltime, award winning professionals. It
retains three dedicated leased satellite lines from London. The Plaintiff has engaged the services
of world class cricket commentators. It creates live feed by deploying the range of 18-26 cameras
on the ground apart from software such as Hawk eye, Snickometer, virtual spectator and super
slow motion etc.

Defendant No. 1, Global Broadcast News Limited, is a Broadcaster having a number of news
channels by the name of 'CNN-IBN' and 'IBN7'.

The Defendant No. 2, TV Today Network Pvt. Ltd., is a Broadcaster which has news channels by
the name of 'Aaj Tak' and 'Headlines Today'.

The Defendant No. 3, Media Content and Communications Services India Pvt. Ltd., is a
Broadcaster having a news channel by the name of 'STAR news'.

Defendant No. 4, Zee News Ltd., is a Broadcaster having a news channel by the name of 'Zee
News'.

Defendant No. 5, New Delhi Television Ltd, is a news Channel by the name of 'NDTV 247'.

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 1.1. AIMS AND OBJECTIVES

The researcher tends to emphasize on the study of –

 the concept of fair dealing under The Copyright Act, 1957.
 the ownership of copyright of modified telecasts.
 differentiation between the broadcasting reproduction rights and copyrights.

1.2. HYPOTHESES

The researcher presumes that-

1. The Appellant is the copyright owner of the substantially modified final telecast, it can file
a suit against the Respondent. In such a situation, since the Appellant is the copyright
owner, the requirement stated in Section 61 does not affect the maintainability of the suit.
2. If the Appellant is to be treated as Exclusive Licensee of the Broadcasting Rights given
the special nature of these rights and the fact that they operate independent of provisions
other than those mentioned in Section 39A of the Copyright Act, Section 61 does not affect
the maintainability of the suit.

1.3. RESEARCH METHODOLOGY

The researcher will be relying on doctrinal method of research to complete the project and the
researcher will be relying on both primary and secondary sources to complete the project.

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 2. Facts of The Case

About Plaintiff:

A. ESPN had exclusive rights to broadcast India vs Australia Test matches, One Day
International (ODI) matches and the solitary T20 cricket match to be played in
Australia from December 26, 2007 onwards till March 8, 2008.
B. No other person, entity and/or Cable Operators could broadcast/telecast in India,
the Cricket Matches without a license from the Appellant or its sole and exclusive
distributor ESPN Software India Private Ltd.
C. ESPN granted licenses to over 5000 cable operators in India to transmit their
channels on their cable networks.

About Respondents:

A. There were 5 respondents broadcasters including major channel networks like

CNN-IBN, IBN7, Aaj Tak, Headlines Today etc.
B. The respondents had indulged in using/appropriating without authority, substantial
portions of the footage of the appellant's channel namely Star Cricket which had
telecast the test matches exclusively from December 26, 2007 to January 28, 2008
for creating programmes which they were commercially exploiting.

These respondent news channels only had the permission to use the footage ONLY for regularly
scheduled news bulletins provided such usage would not be for more than two minutes per day.

3. The Contentions of The Parties

The Plaintiff argued that the permissible levels of broadcast of such cricket matches by news
channels, for the purposes of news, could not be in excess of 30 seconds per bulletin and a total of
2 minutes per day. As opposed to this minimal usage cap, the data submitted by the Plaintiff before
the court showed that the aggregate amount of the plaintiff’s footage already used by the Defendant
news channels varied from a maximum of approximately 15 hours to a minimum of roughly 9
hours, over a given period of telecast.
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Judgment1 dated 18 February 2008 by Single Judge in favour of respondents

1) Case filed by ESPN was first dismissed on account of:

A) Section 61(1) Owners of copyright to be party to the proceeding. —

In every civil suit or other proceeding regarding infringement of copyright instituted by an

exclusive licensee, the owner of the copyright shall, unless the court otherwise directs, be made a
defendant and where such owner is made a defendant, he shall have the right to dispute the claim
of the exclusive licensee.

Since Cricket Australia (sports body) being the owner of copyright not been made a party to the
suit, the suit ought to be dismissed as not maintainable.

B) The plaintiff (ESPN) had not disclosed the entire agreement, which was a relevant factor for
the exercise of discretion in granting or refusing ad-interim relief. However, the same standard
cannot be applied while considering whether the plaint has to be rejected as not disclosing a cause
of action.

A cause of action is a bundle of facts which are required to be proved for obtaining relief and for
the said purpose, the material facts are required to be stated but not the evidence.

Second innings of the case: ESPN counsel challenging judgement dated 18 February 20082

Shri C. A. Sundaram, the learned senior counsel appearing for the appellant while contending that
the impugned judgment and order dated 18th February 2008 be set aside, raised his arguments on
a three- fold basis.

I. Broadcasting reproduction rights visa-a-vis Copyright in the Indian Copyright Act, 1957.

He contended that it is important to note that even after the aforesaid amendment of the Copyright
Act, the definition of 'copyright' under Section 14 was not amended to include 'Broadcast
reproduction right', as has been the case in some countries such as the United States of America,
United Kingdom and New Zealand, where Broadcast reproduction right had been specifically
included within the meaning of copyright. Hence, applicability of section 61 is questioned.

1
(2008) 36 PTC 492
2
Ibid

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From the reading of Section 373 of the Copyright Act as well as the Statement of Object and
Reasons, it is evident that the definition of 'copyright' under Section 14 of the Copyright Act did
not provide any protection to the broadcasters.

Respondents council Mr. Soli Sorabjee, defended and again mentioned section 61 is applicable as
section 55 mentioned in Section 39-A which states, without which a broadcast reproduction right
holder would have no civil remedy, refers specifically to "owner of copyright";

He claimed that the use of footage for this purpose was therefore the respondents' right under the
freedom of speech and expression guaranteed under Article 19(1)(a) of the Constitution of India.
The footage was used for bona fide reporting, which is clearly in public interest.

Judgement: On a careful consideration of the arguments advanced by the learned counsel

appearing on either side, I am of the view that the Satellite television broadcasting right is an
independent right for which the plaintiff cannot claim any copyright.

The fact that such a distinction exists is demonstrated by Section 51 of the Copyright Act which
deals with acts constituting infringement of a copyright, whereas there is a separate section, i.e.,
Section 37(3) that deals with acts constituting infringement of broadcast reproduction rights."

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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
licence of the owner of the right does any of the following acts of the broadcast or any substantial part thereof,—
(a) re-broadcasts the broadcast; or
(b) causes the broadcast to be heard or seen by the public on payment of any charges; or
(c) makes any sound recording or visual recording of the broadcast; or
(d) makes any reproduction of such sound recording or visual recording where such initial recording was done without
licence or, where it was licensed, for any purpose not envisaged by such licence; or
(e) sells or hires to the public, or offers for such sale or hire, any such sound recording or visual recording referred to
in clause (c) or clause (d), shall, subject to the provisions of section 39, be deemed to have infringed the broadcast
reproduction right.

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 II. The ownership of Cinematographic Copyright in the Cricket Matches telecast in the present
case.
III. Defence of fair dealing.

Argument by ESPN: the permissible levels of broadcast of such cricket matches by news channels,
for the purposes of news, could not be in excess of 30 seconds per bulletin and a total of 2 minutes
per day.

Judgement: the application for interim relief ought not to have been rejected merely by holding
that 30 seconds or 7 minutes cap cannot be a universal rule.

The Plaintiff argued that the permissible levels of broadcast of such cricket matches by news
channels, for the purposes of news, could not be in excess of 30 seconds per bulletin and a total of
2 minutes per day. As opposed to this minimal usage cap, the data submitted by the Plaintiff before
the court showed that the aggregate amount of the plaintiff’s footage already used by the Defendant
news channels varied from a maximum of approximately 15 hours to a minimum of roughly 9
hours, over a given period of telecast.

4. Section 61 of The Copyright Act, 1957.

The court overruled the earlier decision of non-maintainability of the suit in light of Section 61.

Section 61 of the Copyright Act reads as follows:

61. Owners of copyright to be party to the proceeding. – (1) In every civil suit or other proceeding
regarding infringement of copyright instituted by an exclusive licensee, the owner of the copyright
shall, unless the court otherwise directs, be made a defendant and where such owner is made a
defendant, he shall have the right to dispute the claim of the exclusive licensee.

(2) Where any civil suit or other proceeding regarding infringement of copyright instituted by an
exclusive licensee is successful, no fresh suit or other proceeding in respect of the same cause of
action shall lie at the instance of the owner of the copyright.

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Thus, as is clear from a plain reading of the text, the provision mandates that in an civil suit of
infringement filed by an exclusive licensee, the owner of the copyright shall, unless the court
otherwise directs, be made a Defendant. As stated above, Justice Ravindra Bhat dismissed the suit
on the ground that the Appellant (Plaintiff) had failed to comply with the mandate of Section 61
of the Copyright Act. He concluded that, “the mandate of Section 61(1) applies in case of claims
for infringement of broadcast reproduction rights and the non-impleadment of the owner of
copyright is fatal to the maintainability of the suit. Similarly, the non-joinder of owner of the
copyright renders the suit liable to be rejected. The proviso to Order 1, Rule 9 Civil Procedure
Code enacts that a suit can fail for non-joinder of a necessary party. The failure to implead the
owner of copyright in the present case has resulted in keeping out a party whose presence is
necessary for a final and complete decision on the question involved in the proceeding. Thus, apart
from the suit being not maintainable due to Section 61(1) of the Act, it is also bad for mis-joinder
of a necessary party.”

It is pertinent to note that in his reasoning Justice Bhat treated copyright and broadcaster rights to
be at par, such that, provisions which govern copyright would also be applicable to broadcasters
rights unless specifically excluded.

On appeal, the double bench of the Delhi High Court stated that as per Clause 11 of the Statement
of Objects and Reasons of the Copyright Act, the broadcasting reproduction rights were akin to
the rights of copyright holder. This terminology in itself showed that the two rights, though akin
to each other, operated in exclusive and separate ambits.

The court further strengthened its argument of the separate existence of the two rights on the
multiple reasons of:

(a) inclusion of a separate definition of ‘broadcast’ in Section 2(dd) of the Act and not including
it within the definition of ‘work’ (defined under Section 2(y)) that would be the subject matter of
copyright protection under Section 13 of the Copyright Act;

(b) copyright infringement being dealt with under Section 51 of the Copyright Act, whereas the
infringement of Broadcasting Rights being dealt with under Section 37(3) of the Act, independent
of any reference to provisions dealing with copyright infringement;

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(c) Lastly, that fact that Section 39A4 referred only to certain specific provisions, applicable to
copyright, which were to be adapted, modified and applied to rights of broadcasting
organisations. Hence, given the fact that the legislature has enumerated the specific provisions
which are to be made applicable to broadcasting organizations, the absence of a non-
obstante clause does not take away from the exclusive operation of these provisions, independent
and to the exclusion of provisions not mentioned in the concerned section. Thus, since Section 61
is not mentioned in Section 39A, the same is not applicable to infringement suits filed by exclusive
licensees of broadcasting rights.

To briefly reiterate, the separation between broadcasting rights and copyright is important because
it leads to the conclusion that the latter are ‘special’ in nature and are exclusively governed by
Chapter VIII of the Copyright Act and the adapted and modified versions of the sections mentioned
in Section 39A. Since Section 61 is not mentioned in Section 39A, the same is not applicable to
the exclusive and special domain of broadcasting rights and infringement suits filed by exclusive
licensees of broadcasting rights.

However, the most interesting part of the judgment regarding Section 61 relates to the analysis
made of the separate parts of the telecast and the various rights held by the Appellants in the
telecast. It is pertinent to note that during the telecast of these matches, the Appellant also
telecasted several shows like experts in a pre-match analysis, change of innings show and a post
match show, wherein cricket experts analysed the match and the result etc. Also, during the match
the Appellants organized commentary by cricket experts and legends. The commentary is
partnered by telecast of statistics and hawk eye analysis during the match. For example, when a
batsman was to start his innings, the Appellants would flash his career statistics or flash statistics
reflecting the possible run rate the batting team could reach if it retained a certain run rate. The

4
OTHER PROVISIONS APPLYING TO BROADCAST REPRODUCTION RIGHT AND PERFORMER'S
RIGHT.
Sections 18, 19, 30, 53, 55, 58, 64, 65 and 66 shall, with any necessary adaptations and modifications, apply in relation
to the broadcast reproduction right in any broadcast and the performer's right in any performance as they apply in
relation to copyright in a work:
Provided that where copyright or performer's right subsists in respect of any work or performance that has been
broadcast, no licence to reproduce such broadcast shall take effect without the consent of the owner of rights or
performer, as the case may be, or both of them.

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court held that the Appellants held copyright over the independent insertions and programs
telecast. However, in the live match broadcast by the Appellants as exclusive licensees of
Cricket Australia, they held broadcasting reproduction rights, independent and exclusive of the
copyright held by them in their own additional inputs. It also went on to say that the telecast by
the Appellant is distinct from that of the host broadcaster in light of the substantial additional inputs
made by the Appellant. Consequently, given the substantially altered nature of the final telecast
made by the Appellant, it holds copyright in the same. Therefore, given the fact that the Appellant
is the copyright owner of the substantially modified final telecast, it can file a suit against the
Respondent. In such a situation, since the Appellant is the copyright owner, the requirement stated
in Section 61 does not affect the maintainability of the suit. Moreover, if the Appellant is to be
treated as Exclusive Licensee of the Broadcasting Rights given the special nature of these rights
and the fact that they operate independent of provisions other than those mentioned in Section 39A
of the Copyright Act, Section 61 does not affect the maintainability of the suit.

This decision of the Court also meets the practical concern of the exclusive licensees. Normally,
under the exclusive license agreement, a foreign owner of the copyright or ‘broadcasting rights’
relinquishes all rights in the licensed market and often under the agreement allows the exclusive
licensee to file infringement suits within the licensed territory. The point being that, after an
exclusive licensee is appointed, the concerned market becomes his exclusive domain for
exploitation of the licensed intellectual property rights, even to the exclusion of the copyright
owner. Hence, subject to the terms of the contract, the owner has little incentive to effectively
contest the infringement suit in the concerned country/territory of the exclusive licensee. Thus,
casting a burden on the licensee to make the owner a party would often result in an ex-
parte decision in relation to the owner and unnecessary delay in the proceedings since the Plaintiff
would have to prove that he has made all reasonable attempts to serve notice on the owner such
that he can turn up for the hearing.

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 5. Fair Dealing

Before the Single Judge Bench, the Defendants had raised the defense of fair dealing to the claims
of infringement. The Plaintiff opposed the defense stating that the extent of usage of the telecast
footage and the fact that the news channels benefited commercially from the same took away from
the claim of fair dealing. To support their claims the Plaintiff cited the earlier dicta of the Delhi
High Court in Prasar Bharti v. Sahara T.V. Network Pvt. Ltd.5 and the Broadcast Code published
by the British Broadcasting Corporation (BBC) and BSkyB, dated 29.2.2006. These sources
basically restrict the broadcast usage by news channels and state clear caps in terms of time that a
news item can report specified sporting events, using excerpts from the event. As per the BBC
Broadcast Code, the concerned broadcast usage cannot exceed 90 seconds per sport events within
the specified events. While, as mentioned above, in the Prasar Bharti case, the Delhi High Court
accepted a cap of seven minutes of a broadcast in 24 hours. On the basis of these sources, the
Plaintiff argued that the permissible levels of broadcast of such cricket matches by news channels,
for the purposes of news, could not be in excess of 30 seconds per bulletin and a total of 2 minutes
per day. As opposed to this minimal usage cap, the data submitted by the Plaintiff before the court
showed that the aggregate amount of the plaintiff’s footage already used by the Defendant news
channels varied from a maximum of approximately 15 hours to a minimum of roughly 9 hours,
over a given period of telecast.

It is pertinent to note that the Appellate Court did not give any ruling on the matter of fair dealing
or grant any interim relief as the concerned matches and telecast were over. However, as regards
the defense of fair dealing the court stated that any unauthorized and prolonged telecast/replay of
cricket matches or portion thereof falling beyond the concept of fair dealing and is an infringement
of the exclusive rights of broadcasting organisations. They went on to disagree with the earlier
judgment of a single judge and stated that the matter should not be dismissed on the mere ground
that the cap proposed by the Appellant cannot be made universal. Interestingly the single judge in
his obiter had dismissed the injunction application on the ground that the Plaintiff had not shown
sufficient materials, barring the aggregate length of the clippings used by defendants in their news

5
(2006) 32 PTC 235

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programmes and sports reviews, to say that it amounted to unfair dealing. Thus, the Plaintiff had
not satisfied the balance of probabilities to be granted an injunction in its favour and not on the
ground of the Plaintiff proposing a universal time cap.

Further, the court went on to state that there is no universal time cap or 30 seconds or 7 minutes,
and to what extent an infringing telecast is fair dealing depends on the facts and circumstances of
each case. To establish the relevant parameters to be used in determining of fair dealing, the court
adopted the parameters laid down in Media Works NZ Limited and Anr. v. Sky Television
Network Ltd., wherein it was stated that, “fair dealing meant that the extract must be brief, and
should be considered in light of the length of the recording. Moreover, the extracts should be used
within 24 hours of the concerned event for it to amount to current event and only be used in a
programme that reported current events, e.g., not in a review of the player’s career to date.” Using
these parameters, in the case the High Court of New Zealand decided the matter in favour of the
Broadcasters. The Delhi High Court adopted the test and went on to state that commercial
deployment of the Appellant’s footage in excess of 30 seconds per bulletin and a total of 2 minutes
per day may negate the plea of fair dealing. Thus, bringing the law back to the post Prasar
Bharti dicta. Thus, based on all these arguments the court opined that the Defendant could show
controversial incidents and landmark achievements of players, however, in the guise of fair use
such events could not be shown to the extent that fair comment transpires into a commercially
profitable programme.

The most interesting part of the fair dealing argument kicks in with the connection made by the
Respondents between Fair Dealing, Freedom of Speech under Article 19(1)(a) of the Indian
Constitution and their right to telecast the snippets from the match. Following the established
practice of American courts in this regards, the Delhi High Court held that though news reporting
is a fundamental right, repeated and prolonged telecast by the Respondents, especially in the form
of a special programme, may amount to commercial exploitation which is not protected under
Article 19(1)(a), especially so, when the factum of the programme being aired later in the day is
constantly advertised and announced by news channels and such programmes are liberally
interposed with commercials. Thus, on these grounds, while not granting the interim relief
application in favour of the Appellants, the court concluded that the excessive usage of the
Appellant’s telecast commercially by the Respondent negated their plea of fair dealing.

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 6. Final Judgement: (September 26th, 2008)

I. They held that the broadcast reproduction right as contended by the appellant are to be
treated as separate, distinct and independent rights. Therefore, unable to agree with the
interpretation of the impact of Section 61 of the Act, which the learned Single Judge has
preferred to adopt.
II. We are also unable to subscribe to the view taken by the learned Single Judge that non-
compliance of Section 61 of the Act leads to the legal position in the present case where
the suit of the appellant warranted dismissal of the suit on account of not making the
original owner Cricket Academy (C.A.) a party as per the mandate of Section 61of the Act.
III. In our view, Section 61 of the Act having been specifically left out by the Legislature by
virtue of Section 39-A of the Act specifying the applicable provisions of Chapter VIII of
the Act to broadcast reproduction rights, clearly rules out the applicability of Section 61 of
the Act and the learned Single Judge's view therefore does not commend itself for approval
by us. D. We also hold that even if we assume that Section 61 of the Act were to apply, the
dismissal of the suit was not justified in view of the independent copyright owned by the
appellant in the eventual telecast comprising of vital inputs by the appellant.
IV. To conclude, though the dicta of the Delhi High Court did not result in an interim
application against news channels in this case, as stated by the court itself, its decision and
the strict parameters laid down by it are relevant for deciding similar future cases.

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 BIBLIOGRAPHY

Primary Sources:

 The Copyright Act, 1957.

 The Constitution of India.

Web Sources:

 www.scconline.com
 https://spicyip.com/2008/10/for-love-of-cricket-delhi-high-courts.html

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