Rajiv Gandhi National University of Law, Punjab

Project Submitted in Partial Fulfillment of B.A., L.L.B. (Hons.), Business Law

Group, Tenth Semester

TOPIC:
OWNERSHIP OF A WORK CREATED IN THE COURSE OF
EMPLOYMENT BY A PERSON UNDER A CONTRACT OF SERVICE:
CRITICAL ANALYSIS

SUBMITTED ON MARCH 10, 2017

SUBMITTED TO:

MRS. RENUKA

(ASST. PROFESSOR OF LAW)

SUBMITTED BY:

JYOTI RAJPUROHIT

[B.A.LL.B (HONS.), 10TH SEMESTER, 12835]

RAJIV GANDHI NATIONAL UNIVERSITY OF LAW, PUNJAB

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 PATIALA-147001

Mrs. Renuka Patiala (Punjab)

Asst. Professor of Law Date: ________

RGNUL, Punjab

Patiala

SUPERVISORS CERTIFACTE

This is to certify that the Project Report entitled: OWNERSHIP OF A WORK CREATED IN THE

COURSE OF EMPLOYMENT BY A PERSON UNDER A CONTRACT OF SERVICE: CRITICAL

ANALYSIS has been submitted to Rajiv Gandhi National University of Law, Punjab in fulfillment
of the requirements for B.A. LL.B (Hons.), tenth semester is an original and bona-fide research
work carried out by Jyoti Rajpurohit under my supervision and guidance.

______________________

(Mrs. Renuka)

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 ACKNOWLEDGMENT

I have been taught the subject of IPR by our Respected Assistant Professor, Prof. Ms. Geetika,
who helped in the accomplishment of this project. Maam has helped me at every step by guiding
our research, suggesting ways to make the project more interesting and better researched. I
sincerely thank her for her support and guidance.

I would also thank the members of the library staff and computer section for the cooperation in
making available the books and accessing the internet even during their free time.

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 TABLE OF CONTENTS

TABLE OF STATUTES AND CASES............................................................................... iv

CHAPTER I.................................................................................................................. 1
INTRODUCTION TO THE PROJECT...............................................................................1
CHAPTER II.................................................................................................................. 3
RESEARCH METHODOLOGY......................................................................................... 3
CHAPTER III................................................................................................................. 5
FIRST OWNERHIP OF WORK AND WORK MADE ON HIRE...........................................5
Understanding the term Author...........................................................................10
CHAPTER IV.............................................................................................................. 12
CRITICAL ANALYSIS OF POSTULATIONS IN SECTION 17(A):.......................................12
WORK MADE ON HIRE............................................................................................... 12
CHAPTER V............................................................................................................... 16
CRITICAL ANALYSIS OF POSTULATIONS IN SECTION 17(B)........................................16
CHAPTER VI.............................................................................................................. 18
CRITICAL ANALYSIS ON POSTULATIONS IN SECTION 17(C).......................................18
CHAPTER VII............................................................................................................. 19
CONCLUSION............................................................................................................ 19
BIBLIOGRAPHY.......................................................................................................... vii

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 TABLE OF STATUTES AND CASES

Index of Statutes:

I. Indian Copyright Act, 1957

i. Section 2(d), Indian Copyright Act, 1957:

Section 2(d) "author' means,- (i) in relation to a literary or dramatic work, the author of the work;
(ii) in relation to a musical work, the composer; (iii) in relation to an artistic work other than a
photograph, the artist; (iv) in relation to a photograph, the person taking the photograph; (v) in
relation to a cinematograph8 or sound recording the producer; and (vi) in relation to 9 [any
literary, dramatic, musical or artistic work which is computer-generated, the person who causes
the work to be created;]

ii. Section 17, Indian Copyright Act, 1957

First owner of copyright-
Subject to the provisions of this Act, the author of a work shall be the owner of the copyright
therein:
Provided that
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his
employment by the proprietor of a newspaper, magazine or similar periodical under a contract of
service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar
periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first
owner of the copyright in the work in so far as the copyright relates to the publication of the
work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the
purpose of its being so published, but in all other respects the author shall be the first owner of
the copyright in the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or
portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the
instance of any person, such person shall, in the absence of any agreement to the contrary, be the
first owner of the copyright therein;

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(c) in the case of a work made in the course of the author's employment under a contract of
service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in
the absence of any agreement to the contrary, be the first owner of the copyright therein;
2
[Provided that in case of any work incorporated in a cinematograph work, nothing contained in
clauses (b) and (c) shall affect the right of the author in the work referred to in clause (a) of sub-
section (1) of section 13;
Index of Cases:

i. I.P.R. Society v. E.I.M.P Association

The case discussed the impact of provios (b) and (c) to Section 17 of Indian Copyright Act, 1957
upon the employees in respect of a cinematograph film. A crystal clear conclusion was drawn by
the Court that the rights of a music composer or lyricist can be defeated by the producer of a
cinematograph film in the manner laid down in Provisos (b) and (c) of Section 17 of the Act.

ii. Dhankappan v. Vidyarambhan Press and Book Depot (p) Ltd

This case laid down the ruling interpreting the privisions of Section 17 of Indian Copyrigjt Act,
1957 that an author engaged on fixed remuneration is not is not a servant of the publisher, and
unless, there exists a contract to the contrary, the copyright still vests in the author.

iii. Shepherd v. Conquest, (1856) 17 CB 427

An old case that held that the copyright in a literary work or the right of representation can
become vested a^ initio in an employer other than the person who has actually composed or
adapted a literary work. However, no such effect can be produced when the employer merely
suggests the subject, and has no share in the design or execution of the work. It is an abuse of
terms to say that in such a case the employer is the author of a work to which his mind has not
contributed an idea.

iv. V.T. Thomas v. MalayalaManorama Co. Ltd., AIR 1989 Ker 49.

In the case of V.T Thomas v. MalayalaManorama, the question before the court arise that weather
an employer can claim the copyright over the future work of the employee after the termination
of the employee. In this case the defendant Mr. Thomas was a cartoon artist and use to draw

vi
carton for plaintiff Manorama but even after the termination of the defendant he kept on drawing
the particular cartoon, the plaintiff claimed the copyright over that cartoon as the cartoon
character was developed during the course of the employment as an employee, the court held that
in the case of termination of the employment, the employee is entitled to the ownership of
copyright in the works created subsequently and the former employer has no copyright over the
subsequent work so created. On the point of the development of the cartoon character during the
course of the employment court allowed both parties to continue the publication of the cartoons.
Concluding with that cartoon characters were developed by the author in 1957 which entitle him
to copyright.

v. Simmons v. Healthy Laundry Co, 91910) 1 KB 543.

A case under Workmens Compensation Act that differentiated between a contract of service
and a contract for service. Held that it depended on the amount of control exercised by the
employer over the employees. The greater the amount of direct control exercised over the person
rendering the services by the person contracting for them, the stronger the ground for holding it
to be a contract of service.

vi. Zee Entertainment Enterprises Ltd v. Gajendra Singh and ors, 2008,53 PTC(36)
(Bom)

This case laid down principles for differentiating between a contract of service and a contract
for service. In this particular case the court observed the clauses of the employment agreement
where the court found out that some of the clauses are in favor of contract of service and some
are of contract for service. Then the court took the consideration of the fact that the signing of the
voucher by the defendants on behalf of the plaintiff to make payments, TDS certificate indicates
him as contractor, regarding letters send to defendants by the plaintiff appointing as a chairman,
seeking his career progress, Gross salary package revised, usually and last the court observed
that the word salary can never be used in the contract for service as a result the court held it to be
a contract of services. In this particular case the court has observed the ingredients of the
employment of the defendant to determine the nature of the contract.

vii. Gee Pee Films v. Pratik Chowdhury, MANU/WB/0335/2001, at paras.16, 18, 20

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The Honble Calcutta High Court held that the composition of lyrics and music was not under a
contract of service in that case; the Honble High Court, during the course of the judgment,
referred to the case of Market Investigations Ltd. v Minister of Social Security (1969) 2 QB
173).

viii. Architect Bruno Dias Sinaza v. Gustavo Renato Pinto, (1998) 2 CCR 470.

ix. Arya Pratinidhi Sabha v. Arvind Niketan, 1979 ALJ 1220

x. Beloff V Pressdram Ltd [1973] RPC 765.
xi. Byrne v. Statist Co. (1914) 1 KB 622.
xii. Community for Creative Non-Violence v. Reid , 490 U.S. 730 (1989).
xiii. Dhankappan v. Vidyarambhan Press and Book Depot (p) Ltd., (1968) 2 Andh LT 71.
xiv. Kenrick& Co. v. Lawrence & Co., 25 QBD 99 (106).
xv. Music Broadcast Private Limited v. Indian Performing Right Society, 2011 Bombay
High Court decision.
xvi. P.N. Krishna Murthy v. Co-operative for American Relief Everywhere, 2000 PTC
658 (Del).
xvii. Radio Today Broadcasting Ltd. v. India Performing Rights Society, (2007 (34) PTC
174 (Cal).

xviii. Samuelson v. Producers Distributing Co. Ltd, (1932) 1 Ch 201.

xix. Simmons v. Healthy Laundry Co., 1910 1 KB 543.
xx. State of Madras, v. A.L.S. Productions, (1974) 33 STC 335 (339, 340) (Mad.)
xxi. Stevenson Jordan and Harrison Ltd., McDonald and Evans, (1952) 1 TLR
1010(CA).
xxii. Sukha v. Ninni, AIR 1966 Raj 163.
xxiii. Thomas v. Turner, (1886) 33 Ch D 292.
xxiv. University of London Press Ltd. v. University Tutorial Press,(19160 2 Ch 601.
xxv. University of London Press v.University of Tutorial Press [1916] 2 Ch 601.
xxvi. Walter v. Lane, 1900 AC 539.
xxvii. Zee Entertainment Enterprises Ltd v. Gajendra Singh and ors, 2008,53 PTC(36)
(Bom).

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 CHAPTER I
INTRODUCTION TO THE PROJECT

The concept of authorship and ownership are vital when the propriety over a copyright is in
question. Copyright being a property right, it raises important questions pertaining to ownership
and mechanisms of exploiting copyright. So far as copyright is concerned, authorship and
ownership are two distinctconcepts, each of which embodies its own peculiar rights.: the author
having moral rights and the owner of the copyright having economic rights. Generally, the
author of a work is also the owner of the copyright in the work, however this is not the case in all
circumstances. The person who makes the work is normally the first owner of the copyright in
the work, owing to the principle that ownership flows from authorship, provided that he has not
created the work in the course of his employment. An author may create a work in his own behalf
on his own account or at the instance of another person or in due course of employment by
another person. The former one is a case when the author is the owner of copyright in the work
created. Authors who write books and musicians who compose music as freelancers or
independent contractors come under this category. On the other hand, an author may also create
or produce a work at the instance of another person on exchange for a valuable consideration. An
example being a photographer taking a photo at the instance of another person or a painter
drawing a portrait at the request of another person. In such situations, the person at whose
instance such works are created are the owners of the copyright. The third category is that of
works created in the course of employment under a contract of service or apprenticeship, as an
employee working under a contract with the employer. In such instances, in the absence of an
agreement to the contrary, the employer is the first owner of copyright. This goes against the
general rule that the person who creates a work is the author of the said work and therefore the
owner of the copyright too. The copyright law defines a category of works called work made for
hire. In works made for hire, the author is considered to be the employer or the commissioning
party and not the employee or the person who created the work. The employer or the
commissioning party may be an individual or a company.
The Research paper delves into understanding the concept and the underlying principles behind
such a deviant/exceptional rule in the events of works created for hire. The paper presents the
jurisprudential aspects of the ownership of works created in the course of employment, what

1
constitutes an employer-employee relationship, what goes into constituting during the course of
employment. The paper then finally establishes the difference between an author and owner of
copyrights under various situations as envisaged under Section 17 of the Indian Copyright Act,
1957. Finally, the Researcher presents a conclusion on the how exclusivity of the rights of the
employees, be it music composers or lyricists, need to be maintained entitling them to claim
royalties in light of the growing exploitation in the hands of the employers.

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 CHAPTER II
RESEARCH METHODOLOGY

Aims and Objectives

The paper aims to present a critical analysis of the jurisprudential principles that underlie
Section17 that confer copyright on creators of work, however deviating from this general rule
under certain circumstances, thereby trying to present a detailed discussion as to why and how
this deviance was brought about by the legislators in the first place and if the same is being
applied in various industries and if it is protecting the interests of the parties as was sought to be
the aim of the Section. The study is undertaken in specific reference to the work created by a
person in the course of an employment by another in exchange for a valuable consideration.

Scope and Limitations

The scope of this paper extends to examiningonly a handful but landmark case-laws, both
common law and Indian, that have seen the application of this Section and interpreted and laid
down tests and guidelines that help determine employer-employee relationship, agreements to
the contrary et al.

The Researcher has limited her study to examining the conferment of ownership of copyrights
upon employers and the situations that guide such ownership only in the Indian context, though
case laws from other jurisdictions have been used to enunciate the principles that guide even the
Indian courts.

Research Questions

1. What is the general rule of ownership of copyrights?

2. What are the exceptions to the general rule of ownership of copyrights?
3. What are the situations that confer ownership upon employers for the works created by an
employee under a contract of employment?
4. How has the judiciary interpreted such conferment of rights upon an employer in light of
establishing employer-employee relationships or in the context of employment

Sources

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Books, statutes, reports, articles have been used as major secondary sources.

Style of writing

An analytical style of writing has been adopted in this paper. The paper is in an Chapter format

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 CHAPTER III
FIRST OWNERHIP OF WORK AND WORK MADE ON HIRE

As has already been stated in the introductory chapter of the Research paper, the author of a work
is usually the first owner of such work. However, section 17 of the Indian Copyright Act
creates exceptions to the rule to ownership of copyright. It lays down provisions that determine
who may be regarded as the first owner of a copyrighted work in certain circumstances:1

a. In the case of a literary, dramatic or artistic work made by the author in the course of
his employment by the proprietor of a newspaper, magazine or similar production
under a contract of service orapprenticeship, for the purpose of publication, in the
absence of any contract to the contrary, the very proprietor shall be the first copyright
owner in the work in so far as the same relates to publication of the work in a
newspaper, magazine or a similar periodical. However, such copyright is limited to
the rights of publication alone or reproduction of the work for the purpose of its being
published, and for all other purposes, the copyright shall vest with the author of the
work.2
b. Subject to the provisions mentioned above, in the event of a photograph taken, or
portrait drawn, or an engraving or a cinematographic film made, at the instance of a

1
Section 17, Indian Copyright Act, 1957
First owner of copyright-
Subject to the provisions of this Act, the author of a work shall be the owner of the copyright therein:
Provided that
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the
proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the
purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of
any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the
publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the
purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the
work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an
engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall,
in the absence of any agreement to the contrary, be the first owner of the copyright therein;
(c) in the case of a work made in the course of the author's employment under a contract of service or
apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement
to the contrary, be the first owner of the copyright therein;
2
[Provided that in case of any work incorporated in a cinematograph work, nothing contained in clauses (b) and (c)
shall affect the right of the author in the work referred to in clause (a) of sub-section (1) of section 13;]
2
Section 17(a), The Copyright Act, 1957.

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 person in exchange of a valuable consideration, such person shall be the first owner
of copyright, provided no agreement to the contrary exists.
c. In the event of a work made in the course of the authors employment under a
contract of service or apprenticeship to which the provisions of clauses (a) and (b)
do not apply, the employer shall be the first owner of the copyright in the said work,
provided the absence of any agreement to the contrary.
d. An amendment was introduced in 2012 by virtue of which a proviso was added to
Section 173 that stipulates that in case of any work incorporated in a cinematographic
work, nothing contained in clauses (b) and (c) shall affect the right of the author
referred to in clause (a) of sub-section (1) of Section 13.4

The reason behind the amendment was owing to the then existing situation in which works made
by music composers and lyricists for hire were first owned by the producers unless there was a
contract to the contrary. It was this situation that was sought to be changed and the resultant
effect of this proviso is that it seemingly aims to take away the rights of the producers to sign

3
Inserted by the Copyright (Amendment) Act, 2012 (Act No. 27 of 2012) w.e.f. 21.06.2012.
4
Section 13, Indian Copyright Act, 1957:
Works in which copyright subsists
(1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout
India in the following classes of works, that is to say,--
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) 1[sound recording],
(2) Copyright shall not subsist in any work specified in sub-section (1), other than a work to which the
provisions of section 40 or section 41 apply, unless,--
(i) in the case of a published work, the work is first published in India, or where the work is first
published outside India, the author is at the date of such publication, or in a case where the author was
dead at that date, was at the time of his death, a citizen of India;
(ii) in the case of an unpublished work other than 2[work of architecture], the author is at the date 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 3 [sound recording] made in respect of a literary, dramatic or musical work, if in making
the 3 [sound recording], copyright in such work has been infringed.
(4) The copyright in a cinematograph film or a 3[sound recording] shall not affect the separate copyright in
any work in respect of which or a substantial part of which, the film, or, as the case may be, the 3[sound
recording]is made.
(5) In the case of 2[work of architecture], copyright shall subsist only in the artistic character and design and
shall not extend to processes or methods of construction.

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work for hire arrangements with authors in an attempt to ensure that they receive their due
consideration/compensation. However, owing to the ambiguous phraseology, the proviso opens
doors to multiple interpretations. It can either mean that now on authors cannot sign works made
for hire contracts or that it may also merely mean that these arrangements are valid as long as the
rights of the author under Section 13 are not affected. Since Section 13 only makes a reference to
works in which copyright subsist, therefore it is unclear as to what rights are being referred to in
the proviso to Section 17- Is it merely the right to collect royalty or is it copyright per se.
Another question that arises is what happens in case of a work, where the work is incorporated in
a cinematographic work much later, if such rights would revert in such a situation? Even the
scope of this proviso remains ambiguous. The constitutional validity of this proviso, has for clear
reasons, been challenged before the Delhi High Court by several parties and a decision is
awaited, considering the language and the objective intended to be achieved by such a proviso.5

The effect of provisos (a) and (b) on the employee was taken into consideration by the Supreme
Court in the case of I.P.R. Society v. E.I.M.P Association6 in which the following issues were
addressed:

i. Whether in view of the provisions of the Copyright Act, 1957, an existing and future
right of music...composer, lyricist is capable of assignment.
ii. Whether the producer of a cinematograph film can defeat the same by engaging the
same person.7

The Apex Court in the case held that in accordance with the first of the two provisos, viz, Proviso
(b), when a cinematograph film producer commissions a composer of music or lyricist for
reward for valuable consideration for purpose of making his cinematograph film for or for
composing music or lyric therefore, i.e. the sounds for incorporation or absorption in the sound
track associated with the film, he becomes the first owner of the copyright therein and no
copyright subsists in the composer of the lyric or music so composed, unless there exists a
contract between the employer and the employee to the contrary, i.e. the composer on one hand
5
Copyright: Works Made for Hire and Film Production (2012) available at
http://www.bananaip.com/works-made-hire-film-
production-part-notes-copyright-amendment-2012/ (Last
visited on April 29th, 2016).
6
I.P.R. Society v. E.I.M.P Association, AIR 1977 SC 1443.
7
I.P.R. Society v. E.I.M.P Association, AIR 1977 SC 1443.

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and the producer on the other. Then the Court went on to observe that the same result follows
from the reading of proviso (c) that the rights of the music composer can be defeated by the
producer of a cinematograph film in the manner carved out in the above-mentioned two provisos
to Section 17.8 Despite the matter having been seemingly settled by the Supreme Court in the
said case, the legal debate continues and the decision has been posed to criticisms from various
ends. At first perusal, it would seem that Supreme Courts interpretation of Section 17(b) seems
to be patently illegal and incorrect. A prima facie reading of Section 17 (b) makes it clear that it
governs commissioning of a limited set of works- photographs, paintings, portraits, engraving,
cinematographic films and not with respect to literary or musical works. Even then, what the
Supreme Court seems to have effectively held is that if the lyric or music has been composed for
the first time ever as part of and for the purpose of, making a cinematographic film that is to say,
that the lyric or music composition is closely and intimately connected with the concerned
cinematographic film, the film producer, and not the lyricist or the music composer is the first
owner of the work.9 The underlying rationale of such a decision can be that a cinematographic
film is a combinationof multiple underlying works, and that the various underlying works are
seamlessly and indistinguishably weaved together. This principle has now legislatively been
ratified by way of way of an amendment to Section 2(f) in 1994, whereby a sound recording
accompanying the visual images / recording has been expressly included within the definition of
cinematograph films. The Supreme Court went on to hold that the same consequence shall
follow under Section 17 (c ), if the composer or the lyricist is employed under a contract of
employment or apprenticeship with the producer to compose the work. However, it remains
unclear whether in the current systems of work in film industry, the work of a music composer or
a lyricist could actually be considered to have been created in the course of employment under
a contract of service considering the fact that they create their works as persons in business of
their own account.10

8
I.P.R. Society v. E.I.M.P Association, AIR 1977 SC 1443.
9
Adarsh Ramanujan &SayareeBasu Mallik, Rights over sound recordings Indian court gets criticized for getting
the law right? (2010) available at http://www.lakshmisri.com/Uploads/MediaTypes/Documents/Rights-over-sound-
recordings.pdf (Last visited on May 4, 2016).
10
Gee Pee Films v. Pratik Chowdhury, MANU/WB/0335/2001, at paras.16, 18, 20. The Honble Calcutta High
Court held that the composition of lyrics and music was not under a contract of service in that case; the Honble
High Court, during the course of the judgment, referred to the case of Market Investigations Ltd. v Minister of
Social Security (1969) 2 QB 173).

8
Therefore, it follows that if the producer of sound recording is the owner of the copyright over
works of the lyricist and composers, he would not be required to acquire license from lyricists
and composers to make and exploit sound recordings owing to the fact that the works had been
created at his instance and under his employment. However, most of the existing legal debate,
both in judicial and academic circles, is a result of an incorrect understanding of the above two
principles. In Radio Today Broadcasting Ltd. v. India Performing Rights Society11, the Calcutta
High Court ruled that Radio Today was obliged to pay royalty or license fees to IPRS, a society
of lyricists and composers if the songs whose lyrics were penned and music composed by the
members of the society are broadcast through the road station and not producers unless the rights
had been assigned to them. Therefore, although the 1977 IPRS case was cited, it is evident that
the High Court misapplied the decision. A similar decision was ruled by the Bombay High Court
in Music Broadcast Private Limited v. Indian Performing Right Society12 upheld the rights of the
music companies over sound recordings, to the exclusion of the lyricists and composers whose
works were the underlying materials for the sound recording. The decision therefore seems to
have enunciated the right position of law that falls squarely within the scheme of the Act as well
as SC decision. The 2012 statutory amendment in Section 17 seems to provide some clarificatory
direction to the whole situation.

Understanding the term Author

The term author is defined in Section 2(d) of the Act13. A person who merely suggests the plot
of a novel or a play to the writer, or the subject of a picture to an artist, is not the author of the
respective things.14 Similarly, a person who merely writes the dictation of another isnt an author.

The sub-section visualizes two entities, the author and the employer. The term author has to
be interpreted in relation to a work. In relation to an artistic work, it is rarity a situation to
imagine that the same person would be an author as well as an employer. The artistic works of an

11
Radio Today Broadcasting Ltd. v. India Performing Rights Society, (2007 (34) PTC 174 (Cal)),
12
Music Broadcast Private Limited v. Indian Performing Right Society, 2011 Bombay High Court decision.
13
Section 2(d), INDIAN COPYRIGHT ACT, 1957:
(d) "author' means,- (i) in relation to a literary or dramatic work, the author of the work; (ii) in relation to a musical
work, the composer; (iii) in relation to an artistic work other than a photograph, the artist; (iv) in relation to a
photograph, the person taking the photograph; (v) in relation to a cinematograph8 or sound recording the producer;
and (vi) in relation to 9 [any literary, dramatic, musical or artistic work which is computer-generated, the person who
causes the work to be created;]
14
Shepherd v. Conquest, (1856) 17 CB 427.

9
author made as employee, and while in the course of employment passes onto the employer, in
events as postulated in Section 17. The process comes to an end in events such as the end or
termination of employment. This would then follow that so far as future productions are
concerned, there is no inhibition arising out of the statutory sanctions in the said sub-section. 15
The artist has the liberty to draw and claim its authorship and ownership, can give life to the
characters without as he wishes and present them to the media as he prefers.16

The author, is therefore, the person who originates or executes the work. In case of a literary
work, the author is the person who creates its literary form or style. 17 In the case of a dramatic
work, it is the person who creates the dramatic form. Therefore, a person who merely suggests a
subject or a method and treatment, cannot be an author. 18 In the event an author employs a
shorthand writer to note down matters, word for word, shorthand, the author is the copyright
owner and not the shorthand writers19An author engaged on fixed remuneration is not a servant
of the publisher, and unless, there exists a contract to the contrary, the copyright still vests in the
author.20Prima facie, the author of a literary work is the person who originates the language used,
and the author of an artistic work is the person who actually executes the design. And when a
manuscript is corrected and revised before a publication, and the corrections and revisions are
substantial and material and adds substantially to the work, the reviser, in such a situation,
becomes the author of the work. It all therefore, is incumbent on the amount of work done.21

15
Iyengars Commentary on The Copyright Act, 189 (Dr.Raghbir Singh ed., 7th edn., 2010).
16
V.T. Thomas v. MalayalaManorama Co. Ltd., AIR 1989 Ker 49.
17
There is no copyright in an idea, but only in the form, whether it is a written production or a picture, in which the
idea is ultimately out and the copyright is vested in the person who has clothed the idea with the for. See Donoghue
v. Allied Newspapers Ltd., (1937) 3 All ER 503.
18
Kenrick& Co. v. Lawrence & Co., 25 QBD 99 (106).
19
Walter v. Lane, 1900 AC 539.
20
Dhankappan v. Vidyarambhan Press and Book Depot (p) Ltd., (1968) 2 Andh LT 71.
21
Samuelson v. Producers Distributing Co. Ltd, (1932) 1 Ch 201.

10
 CHAPTER IV
CRITICAL ANALYSIS OF POSTULATIONS IN SECTION 17(A):
WORK MADE ON HIRE

As has already been stated, the Indian Copyright Act, 1957 gives recognition to the doctrine of
Work made on hire under Section 17(a), (b) and (c) of the Indian Copyright Act and the
judiciary time and again has given its interpretations of the terms, course of employment and
contract of service.22 The general underlying principle is that when something is done or
produced by a person in the employment of another, then whatever he does or produces is a part
of the business or duty assigned to him as that others employee, the copyright in the work so
produced will, in the very first instance, shall constitute the property of the employer.23

The requirements for a proprietor of a newspaper, magazine or similar periodical, under a

contract of service or apprenticeship to be the first owner, insofar as the copyright relates to the
publication of the work in a newspaper, magazine or similar periodical, or to the reproduction of
the work for the purpose of being so published, the work should be done by the author-

(a) In the course of his employment

(b) Under a contract of service or apprenticeship24

In the course of his employment

The crucial question is whether the person creating the work is an employee such that the
copyright over the works created by him belongs to the employer or whether the person is an
independent contractor such that he owns the works created as an owner/author.25The work in
question must be done by the author in the course of his employment, which in turn means in the
course the work which the author is employed to do and what is incidental to it. 26 They do not
necessarily mean during the currency of the engagement. The man is not said to be working in
22
Lals Commentaries on law of copyright and neighbouring rights, 332 (2ndedn., 1999).
23
Deborah E. Bouchoux, THE LAW OF TRADEMARKS, COPYRIGHTS, PATENTS AND TRADE SECRETS, 232 (4 thedn.,
2010).
24
Aniruddh Singh, The Scenario of the Copyright (2014) available at http://indianbarassociation.org/wp-
content/uploads/2014/02/The-Scenario-of-the-Copyright.pdf (Last visited on May 6, 2016).
25
Id.
26
Mira T. Sunderarjan, MORAL RIGHTS: PRINCIPLES, PRACTICES AND NEW TECHNOLOGY, 187 (2 NDedn., 2005)

11
the course of employment, unless the facts suggest that it is (a) in the course of his employment
and (b) in performance of a duty under his contract of service, that he does it. 27 In case a
permanent employee does some special work for the proprietors entirely and wholly in his own
time and under an independent engagement outside his ordinary duties, then he cannot be said to
have been done by him in the course of his employment 28 In a 2001 case of P.N. Krishna
Murthy v. Co-operative for American Relief Everywhere,29 where a claimant could not produce
any evidence in support of his claim that the copyrights vests in them and the book was written
and translated for the employer by the employee during employment. None of the modes had
been claimed foe assignment of the copyright ownership that had been provisioned in Section 19
of the Copyright Act, 1957, as per which the assignment remains valid for a limited period of 5
years. A notice in writing is a requirement precedent to the right of waiver, relinquishment or
giving up of copyright as has been laid down in Section 21. 30 So all these defences of
waiver/relinquishment/giving up of ownership could not be claimed by the defendants. All of the
above established facts put on record put a seal of approval on the plaintiffs claim that it was
actually he and not the CARE that enjoyed the copyright in the story books.31

In Community for Creative Non-Violence v. Reid32, the court observed that the term employee in
order to determine the purposes of determining authorship of works made foe hire should be
rationalized in accordance with the general common law agency principles. If the person doing
the work is an employee under common law agency principles and the work was done in the
scope of employment, the employer is the copyright owner/author.

The court put forth the following certain factors that characterize an employer-employee
relationship:

i. Control by employer over the work: If the employer has a say in how the work is to
be executed, has the work done at the employers location and provides equipment
and tools to the person to create work

27
Arya Pratinidhi Sabha v. Arvind Niketan, 1979 ALJ 1220
28
Byrne v. Statist Co. (1914) 1 KB 622.
29
P.N. Krishna Murthy v. Co-operative for American Relief Everywhere, 2000 PTC 658 (Del).
30
VikashVashisth, Law & Practice of Intellectual Property in India, 126 (1999)
31
P.N. Krishna Murthy v. Co-operative for American Relief Everywhere, 2000 PTC 658 (Del).
32
Community for Creative Non-Violence v. Reid ,490 U.S. 730 (1989).

12
 ii. Control by the employer over the employee: If the employer controls the workers
schedule in creating and executing work, has the right to have the worker do other
assignments, determines and decides the method of payment and/or has the right to
hire the workers assistants, such evidences an employer-employee relationship.
iii. Status of employee: If the employer is in the business to produce such works, and
extends benefits to workers similar to those received by other workers, and withholds
taxes from the workers compensation, then it is indicative of an employer-employee
relatrionship.

Course of Employment and Contract of Service

To fall within the proviso, the contract must be one of service and not for service. The
difference between the two expressions was enunciated in the celebrated case of Simmons v.
Healthy Laundry Co.33 which held that the question really turns on the degree of control
exercised by the employer on the employee. The greater the amount of direct control exercised
over the person rendering the services by the person contracting for them, the stronger the
ground for holding it to be a contract of service. The decision in Simmons was applied to a case
under the Copyright Act, 1911 in University of London Press Ltd. v.University Tutorial Press34 in
which it was held that a person may be employed on a mixed contract, partly of service and
partly for service so that the copyright under one part vests in the employer and under the other
in the author.3536

Another test that was laid down was if the person was performing business in his account and
which would constitute a contract for service and if the person performed the services as an
employee and which formed an integral part of the business, then it is a contract of service 37 If
a person is left to do the work on his own convenience and is left on the skills required to do a
job then the person would not be said to be acting under a contract of service, but for service. 38
However, if the contract specifies aspects like guidance or control over the work of contractorto
arrive at a particular end result,then it would be a contract of service.39
33
Simmons v. Healthy Laundry Co., 1910 1 KB 543.
34
University of London Press Ltd. v. University Tutorial Press,(19160 2 Ch 601.
35
Stevenson Jordan and Harrison Ltd., McDonald and Evans, (1952) 1 TLR 1010(CA).
36
Zee Entertainment Enterprises Ltd v. Gajendra Singh and ors, 2008,53 PTC(36)(Bom).
37
Beloff V Pressdram Ltd [1973] RPC 765.
38
University of London Press v.University of Tutorial Press [1916] 2 Ch 601.
39
DhirendraNathGkuha, COMMENTARY ON THE INDIAN COPYRIGHT ACT, 1957, 121 (1985).

13
Agreement to the Contrary

Section 17 and 18 show where the copyright vests. So, in case a work is done by an author for a
consideration for a publisher the copyright in it would normally vest in the publisher subject to
any contract to the contrary.40 The agreement may be expressed or implied. The author may
reserve to himself the copyright, even though there is an undoubted contract of service.
Conversely, even when there is no contract of service, it may be agreed that the employer may
have the copyright.41 In the first case, the legal title to the copyright will vest in the author on the
making of the work; in the latter case, the agreement should, however, be by way of assignment
in writing.

40
Section 17, INDIAN COPYRIGHT ACT, 1957.
41
Massine v De Basil, (1938) Macg Cop Cas 223.

14
 CHAPTER V
CRITICAL ANALYSIS OF POSTULATIONS IN SECTION 17(B)

Ownership of Copyright in Artistic Works

The Act confers copyright in every original artistic work.42The originality required need only be
such as to demonstrate that the work was not copied from another. If an artistic work is merely a
production with minor improvements of a previous one, it is not an original work, but if the
additions and improvements are substantial, there may be copyright in them alone.43

Photograph

The term photograph is defined in Section 2(s0. As between the photographer and the one who
sits for a portrait, the copyright belongs to the latter, if the photographer is merely employed for
the occasion. But when the portrait is taken at the expense of the photographer and at his
solicitation, then in the absence of a contract to the contrary, the photographer acquires title to
the copyright.

Painting

The term painting is included in term artistic work.44 The ownership of a painting does not
necessarily carry with it the right to copyright. The right to property in a painting and the right to
secure a copyright for work are separable and may belong to different persons.45

Engraving

The term is defined in Section 2 (ii) to include etchings, lithographs, wood-cuts and other similar
works but not photographs. In the case of engravings, it is the hands whose hands produce them
who is the author. Engraving constitute independent artistic works in themselves, and they are
entitled to a separate copyright from any pictiure on which they are based.

Cinematographic film

42
Section 13, INDIAN COPYRIGHT ACT, 1957.
43
Thomas v. Turner, (1886) 33 Ch D 292.
44
Section 2 ., INDIAN COPYRIGHT ACT, 1957.
45
Lal, supra note 22, at 199.

15
Defined in Section 2 (f). Section 17 dealing with the ownership of copyright as has already been
discussed before, by clause (b) provides that in the case of a cinematograph film made, for
valuable consideration at the instance of a person. Shall person in the absence of any agreement
to the contrary shall be the owner. The provisions therefore clearly indicate that the right to
exploit the cinematograph film is only with the person at whose instance the film is made.
Therefore, even if it is taken that the assesses who produced the advertising films were the
owners of the raw film, the ownership and right of exploitation of the finished product cannot be
said to be with them as they have no copyright in the ultimate product. According to Section 17,
the advertiser at whose instance the films were made is the owner of copyright and it is he who
can exploit the film.46

Valuable Consideration

In order to have value, a thing must be an object of human desire. It must be something that is
bargained for and for which, in the eye of law, men will give other things in exchange. The
requirement of value is one, which excludes those things that are not the subject of bargain and
exchange by men. Valuable consideration consists in the accrual of some right, interest or benefit
to one party, or in the giving, suffering or undertaking if some abstinence, loss or detriment, or
responsibility by the other party, at the request of the promisor. Where a promisor acquires a
pecuniary advantage and, therefore, agrees to do something at the desire of the promisor, it
constitutes a valuable consideration.47

46
State of Madras, v. A.L.S. Productions, (1974) 33 STC 335 (339, 340) (Mad.)
47
Sukha v. Ninni, AIR 1966 Raj 163.

16
 CHAPTER VI
CRITICAL ANALYSIS ON POSTULATIONS IN SECTION 17(C)

This proviso covers only those cases to which proviso (a), or proviso (b) does not apply. The
greater the possibility that the services rendered are of nature of professional services and that
contract is not of service, the greater the degree of independence or direct-control.48

48
Architect Bruno Dias Sinaza v. Gustavo Renato Pinto, (1998) 2 CCR 470.

17
 CHAPTER VII
CONCLUSION

At the end of this Research paper, the researcher concludesthat in this age of ever evolving work
environments and flexible work relations, ascertaining the owner and author copyright can be a
complicated process. Judicial intervention to make such a determination can be a costly and a
time consuming affair. The easiest way to get the clouds over such uncertainty over the
ownership of copyright cleared, is for the relevant parties to address such issues directly on the
already enunciated legislative and judicial prinici8ples that have deliberated enough upon what
constitutes, employer-employee relationship and course of employment.

The Indian Copyright Act has tried to cover all types of works, including those created in ones
own account, created in the course of an employment, moral as well as economic right of the
owners of copyright. As has already been put forth in the paper, the judiciary has played a vital
role in cases of works made in course of employments by elucidating various principles and tests
for determining ownership and authorship of works created in the course of employment. Of late
a lot of amendments have been inserted in the Act with regards the tights of the copyright holders
and creators of works, one such being the rights of music composers and lyricists under a
contract of employment with the producers. Copyright is generated by creation and not by ideas
then how can ownership of a work be attributed to the one who has the idea and not its creator?
By denying ownership to the creators of work owing to the fact that there exists no contract to
the contrary and hence ownership gets automatically transferred to the producers/employers, we
are only paving ways to increasing the plight of these artists/employees and seeing exploitation
of their rights. The 2012 amendment is a laudable, revolutionary provision in favour of music
composers and lyricists whose works get incorporated in the cinematograph films. It states that
notwithstanding any assignment of copyrights in works such as lyrics and music composition
that have been incorporated in a cinematograph film, the authors of such underlying works shall
continue to possess the right to remuneration from any exploitation of the underlying works.
Therefore, there is a need to re-inforce such amendments such that most advantageous protection
can be afforded to authors and composers. The object behind this being to enforce the principle

18
underlying Intellectual Property that copyright is meant to protect creativity and cater to the
pockets of the funder of a work than the creators of such work.

19
 BIBLIOGRAPHY

BOOKS

I. Deborah E. Bouchoux, THE LAW OF TRADEMARKS, COPYRIGHTS, PATENTS AND

TRADE SECRETS, 232 (4thedn., 2010).

This book is a good read on the changes that are being brought about in the Intellectual Property
in consonance with the emerging technological advancement across the world. It discusses the
copyright, trademark and patents law in various jurisdictions and contains discussions on cutting-
edge IP issues such as liability Internet Service Providers, jailbreaking of iPhones. Used this
material to make references to the concept of work made for hire discussed at page 231 of the
book and other underlying principles such as employer-employee relationship, course of
employment etc.

II. DhirendraNathGkuha, COMMENTARY ON THE INDIAN COPYRIGHT ACT, 1957, 121

(1985).

This book is a comprehensive commentary on the Copyright Act, 1957

III. Iyengars Commentary on The Copyright Act, 189 (Dr.Raghbir Singh ed., 7h edn.,
2010).
This book is a comprehensive and lucid reference and reading material on the Copyright Act,
1957. It presents a traditional format of Section-wise commentary of the Indian Copyright Act to
deal exhaustively with all aspects of the Act. I have used this book to look into the jurisprudential
aspects of Section 17, Section 13 allied sections that concern the issue of ownership and
authorship of works created during course of employment.

IV. Lals Commentaries on law of copyright and neighbouring rights, 332 (2ndedn., 1999).

Seminal on analysis of Section 17 of Indian Copyright Act, 1957.

V. Mira T. Sunderarjan, MORAL RIGHTS: PRINCIPLES, PRACTICES AND NEW

TECHNOLOGY, 187 (2NDedn., 2005)

vii
An interesting material on the development of IP laws in the light of ever growing technology
and development.

VI. VikashVashisth, Law & Practice of Intellectual Property in India, 126 (1999)

Commentary on Indian Copyright Act. Used this to refer to Section 17 and various case laws
relating to ownership and authorship of copyrights, moral rights etc.

ARTICLES

i. Adarsh Ramanujan &SayareeBasu Mallik, Rights over sound recordings Indian court gets
criticized for getting the law right? (2010) available at
http://www.lakshmisri.com/Uploads/MediaTypes/Documents/Rights-over-sound-
recordings.pdf (Last visited on May 4, 2016).

This article presents an analysis of the observations made by the courts right form the
Supreme Court ruling in IPR Society v EIMP Associationin in relation to the rights of the music
companies over sound recordings, to the exclusion of the lyricists and composers whose works were
the underlying materials for the sound recording in light of Section 17 of the Indian Copyright Act,
1957.

ii. Aniruddh Singh, The Scenario of the Copyright (2014) available at

http://indianbarassociation.org/wp-content/uploads/2014/02/The-Scenario-of-the-
Copyright.pdf(Last visited on May 6, 2016).

This paper presents various fundamental concepts of copyright law and discusses their
significance/relevance to ownership, rights of owner of the copyright and few other
contemporary issues pertaining to ownership and their rights. This paper has been used to
understand specific terminologies that are relevant to the understanding of what constitutes
contract of service and course of employment to determine ownership of copyrights of
works created in the course of employment.

iii. Copyright: Works Made for Hire and Film Production (2012) available
athttp://www.bananaip.com/works-made-hire-film-production-part-notes-copyright-
amendment-2012/(Last visited on April 29th, 2016)

viii
This blog article is an interesting insight into the debate on the constitutional validity of the
proviso inserted as an amendment to Section 17 of Indian Copyright Act, and discusses the
various issues in its regard considering the open ended-ness of its language.

ix