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Confidential

5/21/17
Does the law have a sense of
humour?
Humour and Trademarks
The Tata demon and the Turtle

Greenpeace created a Pacman-style videogame to promote awareness

about the Dhamra Port Project being constructed by Tata which is the
nesting ground of the Olive Ridley turtles. It depicted Tata as the demon
of which was wiping out the population of the endangered turtles.

Tata filed a suit against Greenpeace on the ground of defamation and

infringement of trademark.
 Tata v. Greenpeace International
[2011]

The Supreme Court in Tata v. Greenpeace International did not hold Greenpeace
liable for trademark infringement as it did not use the trademark in an arbitrary
manner and used the logo to convey a message regarding endangered Olive
Ridley Turtles.
The Tata logo was used for purpose of criticism and fair comment, in this case, to
highlight an environmental problem to mobilise public opinion, and is
considered due cause
The use of the word demons with Tata was merely a hyperbole, an
exaggeration to make a strong impression. It did not have a literal connotation.
Parodies and Copyright
A song by an activist group based on the
song Anaconda by Nicki Minaj called out
against Hindustan Unilever for dumping
toxic waste in the water in Kodaikanal
 Parodies and
copyright
The comic group AIB wished to make a
parody of the YashRaj production of Dhoom
3. The production house however did not
give them permission to carry on with the
project and threatened to approach the Anti-
Piracy authorities if it was uploaded again.

AIB succumbed to drop the idea of the

parody but came back with a powerful
response.
 The Parody Test

Market Substitution Test: Does the work intend to compete with the
original copyright holder?

Transformative Character Test: Does the work have a transformative

character?

Substantiality Test: Does the parody use a substantial portion of the

original work?
Market Substitution Test

The creator of the comic content should not have an intention to

compete with the original work.
There should be no intention of deriving profits by substituting the
original work in the market.
Criticism and review of the original work should form the basis of
creating the parody.
Substantiality Test

The most important question at this juncture is: To what extent

should the parody or satire rely on the original work?
If the parody does not rely too much on the original work, then
the audience will not be able to recognise the work from which it
is derived and thus it will not be able to understand the humour.
If the parody relies too much on the original work, it could be
considered an infringing work.
 Transformative character Test

The comic content should possess a transformative character.

A parody is considered transformative when the purpose it serves is substantially
different from that served by the original work.
There should be an element of novelty and uniqueness in the subsequent work,
which sets it apart from the original one.
AIB and Shudh Desi Endings use the underlying theme and basic storyline of the
original work but modify the nuances to transform it into comic content.
 Tanmay Bhat posted certain
Defamation
videos on Snapchat, where he
swapped his face with those of
Lata Mangeshkar and Sachin
Tendulkar.
It shows a mock argument
between the two celebrities on
whos a better batsman- Kohli or
Tendulkar.
Interestingly, complaints were
filed by a number of people
except those who were actually
 The statements made by Tanmay Bhat might have affected the victims but
did it lower the reputation of these persons in the society?

An artist has a greater leeway to portray public icons in a manner he

perceives
What constitutes defamation

Defamation, under the Indian Penal Code, is considered a criminal offence

and is punishable with imprisonment.
The Courts have laid down certain requirements for the offence:
A false and defamatory statement must be made, which is harmful to the
reputation of the person and intend to lower his intellectual character.
The complaint must be filed by a person aggrieved by the alleged
defamatory statement.
The publication of the statement must be made to a third party.
 More on defamation
The dead may be defamed

Companies can be defamed and can defame

Case to be filed by the defamed person

Defence against defamation:

Civil defamation truth or fair comment

Criminal defamation

o Public conduct of public officials

o Truth required for public good

o Conduct of person on public question

Other relevant laws under the IPC

S. 153(a): Promoting enmity between different groups on grounds of

religion, race, place, residence, language, etc

S. 124A: Attempting to excite disaffection towards the Government

S. 292: Publishing material that appeals to the prurient interest of or tends

to deprave and corrupt a person who is likely to consume the material

S. 295A: Deliberate and malicious acts, intended to outrage religious

feelings of any class
Issues relating to
obscenity
In 2015, the comic group AIB organized the
first edition of Knockout in India, a show
where celebrities are mocked.

After the video released on YouTube,

numerous complaints were filed against the
group for being obscene and vulgar.

What are the parameters for judging if the

content is obscene?
Tests of Obscenity

Ranjit Udeshi v. State

Whether of Maharashtra
the content may deprave (1965)
and corrupt the
Hicklins Test minds of people who are vulnerable to its influence and
into whose hands it may fall.

Aveek Sarkar v. State of W.B. (2014)

Contemporary Whether the dominant theme of the material, taken as
Community a whole, appeals to the prurient interest of an average
Standards Test: person.
Father,
Documentary
Son
on
and
communal
Holy War
violence, and analysed how
instances of sexual violence
towards women increased during
such riots.
The Board felt that it had certain
obscene scenes which could
promote violence.
The Supreme Court held:
Where art and obscenity are so
mixed, the element of art must be so
preponderant as to overshadow the
obscenity or make it so trivial or
inconsequential that it can be
ignored.
 Boris Becker
magazine coverpublished
A German magazine an
article with a picture of Boris Becker,
a world-renowned tennis player, posing
nude with his fiance.
The purpose of the photograph was to
protest against the evils of racism and
apartheid in Germany, and promote
inter-racial relationships.
The Court held that:
It is important to consider assess the
material in the context of the message
the creator was trying to communicate.
Gandhi Mala Bhetala (I met
Gandhi)
A complaint was lodged in relation to

the publication of an allegedly obscene

poem on Gandhi in an in-house
magazine.

The Court held that the poem qualified

as an obscene piece of work under the
community standards test.
If the author chooses a historically
respected person as a medium to use
obscene words, the creativity melts into
insignificance and obscenity merges
into the surface.
 Key Takeaways

Obscenity without a preponderant social or artistic purpose is not protected

under the freedom of speech and expression.

Over the years, Courts have taken into consideration the changing morals of
contemporary society. The content should adhere to the societal standards of
obscenity to escape censure.

Sex and obscenity are not synonymous.

Discussion and advocacy of ideas, howsoever unpopular, are the essence of Article
19(1)(a) of the Constitution. Only when such discussions intend to incite people to
commit offences can the freedom be gagged.
 Humour and religious sentiments

A PIL was filed seeking a restraint on the

exhibition of the movie PK in movie theatres or
television.
The PIL stated that the movie defamed the Hindu
culture and would hurt the religious sentiments of
Hindus.
It depicted a self-styled Godman preaching Hindu
religion and exploiting the faith of his followers.
 Principles laid down by the Court

The effect of allegedly offending words/visuals is to be judged from the standards of

reasonable and strong-minded men.
The Constitution protects the right of the artist to portray social reality in all its
forms, which may take the form of questioning values and mores that are prevalent
in society.
Free speech cannot be suppressed on the ground either that its audience will form
harmful beliefs or may commit harmful acts as a result of such beliefs, unless the
commission of harmful acts is a real close and imminent consequence of the
speech in question.
The anticipated danger should not be remote, conjectural or far-fetched. It should
Humour
Aseem
and the
Trivedi, a political
cartoonist, was arrested for
government
sedition and spreading hatred on
the India Against Corruption
site.

The Court held that people could

not be penalized for criticizing
the government with a view to
obtaining a change in the
government.

Statements, however strongly

worded, can express
disapprobation of the measures
of the government as long as they
Intermediary
Liability
Who
Under are
the IT Act, an
intermediaries ? who
intermediary is any person
receives, stores or transmits
online content to the end user.

Broadly there are six types of

intermediaries, which have
different functions- Internet
Service Providers, search
engines, DNS Providers, Web
Hosts, interactive websites and

cyber cafes.
 Regulatory Overview

The IT Act, read with the IT (Intermediaries Guidelines) Rules, 2011,

provide certain safe harbour provisions for intermediaries.
An intermediary is not liable when:
Its function was limited to providing access to a communication
system over which information made available by third-parties is
transmitted or temporarily stored or hosted;
The intermediary does not initiate the transmission, select the
receiver and select or modify the information contained in the
information.
 Case Study: Indijobs case

A blogger posted content on hubpages.com about the guru Nirmal Baba calling
him a fraudster.

The website refused to remove the content after being notified by the gurus
followers and refused to give the contact details of the blogger.

The Delhi High Court held that the blogging site was not merely an intermediary
as it had editorial control over the content posted on the website.

Hence, hubpages.com could not claim immunity under the safe harbour
provisions under the IT Act.
 Case Study: MySpace v. Super Cassettes (2016)

MySpace is operates a social networking and entertainment website. Users can

access a wide range of music, videos and images without paying a fee.
Super Cassettes Ltd. filed a suit against MySpace on the ground that it facilitated
copyright infringement.
MySpace relied on the judgment in Viacom International v. Youtube where the
District Court in US held that general awareness is not sufficient to hold an
intermediary liable. The intermediary should have actual knowledge of the
infringing content.
 Case Study: MySpace v. Super
Cassettes (2016)

PRINCIPLES LAID DOWN BY THE COURT:

The onus of flagging the infringing content is on the content owner following
which the intermediary has the duty to take down the content.
The copyright owner has a duty to specify the works which are prima facie
infringing.
If the intermediary is tasked with identifying and removing infringing work, it
may have a chilling effect on freedom of speech.
 Case Study: MySpace v. Super Cassettes (2016)

PRINCIPLES LAID DOWN BY THE COURT:

MySpace exercised due diligence by notifying users against uploading content
without due license, and required them to comply with the privacy policy and user
agreements.

If copyright owners specifically notify the intermediary about infringing works

and despite such notice it does not take down the work, then the safe harbour may
be denied.
Due Diligence Framework for
Intermediaries

Publication of rules and regulations, privacy policy and user agreement

for access.
Disclaimer to users to not transmit information which, inter alia, is
obscene, vulgar, harmful to minors, impersonates another person,
infringes any IP rights or threatens the sovereignty of India.
Act within 36 hours of receiving knowledge of any infringement.
Issue warnings to users on the consequences of violation of the rules,
user agreement and privacy policy.
 Key Takeaways

The IT (Intermediaries Guidelines) Rules, 2011 use a number of terms like blasphemous,
ethnically objectionable and harmful to minors which have not been defined and are extremely
vague.

By subjecting different kinds of intermediaries to the same liability regime, the Rules fail to
appreciate their differences.

The Rules do not provide the user an opportunity of being heard after the filing of a complaint.
Moreover, they not provide a safeguard mechanism to deal with frivolous complaints.
Approach under US Law

Section 512(c) of the Digital Millennium Copyright Act, 1998 limits the
liability of service providers with respect to copyright infringing material on
their system or network.
In order to be eligible for the immunity, the service provider has to fulfil the
following conditions:
It should not have actual knowledge that the material or an activity using the
material on the system or network is infringing, or
In the absence of actual knowledge, it should not be aware of facts or
circumstances from which the infringing activity is apparent, or
Upon receiving knowledge or awareness, it should acts expeditiously to remove
or disable access to the material.
The service provider should not receive any financial benefit attributable
to the infringing activity, where it has the right and ability to control such
Procedure under DMCA

Copyright owner submits a notification, under penalty of perjury, to the service

providers designated agent.
Upon receiving a proper notification, the service provider has to promptly
remove or block access to the material.
The service provider has to promptly notify the subscriber about the takedown.
The subscriber can respond to the notice and takedown by filing a counter
notification.
The service provider has to put the material back up within 10-14 business
days after receiving the counter notification, unless the copyright owner
files an action seeking a court order.
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The End

Thank You

Confidential 5/21/17