Incidental Inclusion of Copyright Material
As a filmmaker, if you thought that any third party's intellectual property appearing in the background of your scene is completely okay for you to shoot the scene and publish your film containing the same, then you'd have to think twice, more so if you are an Indian filmmaker.
Even if you considered that such third party copyright work is appearing for a fraction of a second, let's say if a lay person's photograph is used in a photo album that a lead actor is going through, or if the lead actor is browsing through a magazine that contains a third party model's image in it, you could be potentially in violation of Indian copyright law, unless prior permissions and releases are obtained. Read on to know more
1.1 Importance of Film’s Strategic Presentation
In the film making process, every scene is strategically picturized to convey the filmmaker’s intent to the audience. To convey the intent clearly, acting by the lead and subordinate cast is not enough; the set designs, locations, props, dresses, etc., play a vital role. For instance, in the Harry Potter franchise, if the lead character Harry Potter were to be shown running around wearing a clown dress, then the audience could find it humorous, and the serious intent of a particular scene would be lost. Thus, strategizing a film’s presentation is an essential aspect of producing a good film.
1.2 Strategies to Avoid Infringement Claims
1.2.1 Under the prevailing copyright regime worldwide, filmmakers are obligated to ensure that they do not infringe any third-party copyright while producing or exploiting their films. Filmmakers hire prop masters, costume designers, painters, construction coordinators to strategically prepare film sets, scout shooting locations, props, dresses, etc., to ensure that no third-party copyright infringement claims are raised. Yet sometimes, there are instances where incidental inclusion can give rise to copyright infringement claims. In 1965, a case was filed in New York City claiming copyright infringement for showing handmade puppets in a television program known as ‘The Captain Kangaroo Show’. Yash Raj Productions was sued by Mr. Suneet Varma claiming copyright in a dress worn by Rani Mukherjee in the film ‘Bunty Aur Babli’.
1.2.2 The challenge for film-makers is that for various operational reasons, it is not feasible to create new materials, props, etc., to showcase the filmmaker’s intent. For that reason, while using third party brands or props, filmmakers resort to the usage of a small notice or brand masking in film scenes so that third-party copyright claims can be avoided. For example, we have seen application of black paint on the packaging of household appliances in Tarak Mehta Ka Ulta Chashma, during scenes that showed the lead character’s business of selling electronic appliances. Not doing so could have resulted in third party’s infringement claims for showing their brands without permission or for wrongfully associating the show with the said brand.
2. Protection for incidental inclusion
2.1 Legislative Understanding of Incidental Inclusion
2.1.1 The process of filmmaking frequently uses third-party copyrighted works like paintings, architecture, etc., that are visible in the background because of their permanent placement in publically accessible places which are captured in a frame while shooting scenes. Several jurisdictions protect filmmakers against copyright claims against incidental inclusions of such copyrighted works which become part of a film even though they were not part of the screenplay. Think of a scene where lead actors are walking down a public street, where multiple brand outlets or publicly installed artistic works could be visible and therefore incidentally get included in a film.
2.1.2 In India, section 52(1)(u) of the Copyright Act, 1957 states that inclusion of artistic works in cinematography films shall not amount to infringement of copyright if such works (i) are permanently situated at a place or premise accessible by the public; or (ii) are included in the background or are merely incidental. Similarly, in the UK, section 31 of the Copyright, Design, and Patents Act, 1988 protects incidental inclusion of copyrighted work.
2.2 Difference between Indian and UK law
2.2.1 In India, the protection of incidental inclusion is limited to the use of artistic work in a cinematography film. As per section 2(c) of the Copyright Act, 1957, ‘artistic work’ means painting, sculpture, drawing, engraving, photograph, architecture, or any other artistic work. In Gramophone Company of India Ltd. vs. Super Cassette Industries Ltd. Delhi High Court clarified that under no circumstances, a third-party’s literary, dramatic, or musical works or sound recordings could be included in cinematography films without proper approval or license from the copyright owner.
2.2.2 Whereas, as per UK law, section 31 of the Copyright, Design, and Patents Act, 1988 safeguards inclusion of all copyrightable works in any form of artistic work, sound recordings, films, or broadcastings. However, there is a qualifier for the inclusion of musical works, which states that if any musical work is included deliberately, such work cannot be considered incidental inclusion. For instance, a filmmaker may show the lead character dancing to Michael Jackson’s songs to showcase that the lead character in the film is a Michael Jackson fan; however in that case, such songs cannot be considered as included incidentally.
2.2.3 Both the Copyright Act, 1957 and the Copyright, Design, and Patents Act, 1988 fail to define the scope of such inclusions as to when they could be considered as ‘incidental’. Understanding of the term ‘incidental’ will depend on the circumstances on a case-to-case basis.
3. Understanding incidental inclusions through judicial pronouncements
3.1 Judicial Interpretation of Incidental Inclusion in the UK
3.1.1 In IPC Magazines Ltd. vs. MGN Ltd., the term ‘incidental’ was interpreted in its ordinary dictionary meaning, i.e., casual, subordinate, not essential, or background. IPC Magazines Ltd. issued a magazine titled ‘Woman’ for women readers; later, MGN Ltd. also published a magazine for women as a supplement to The Sunday Mirror. In a television commercial for The Sunday Mirror, MGN Ltd. used the cover of Woman magazine to showcase the price difference between Woman magazine, which was sold for 57 pennies, and the woman magazine published with The Sunday Mirror, which was provided for free. The commercial showcased Woman magazine’s cover as-is with a black band superimposed to display its price. IPC Magazine Ltd. claimed that the advertisement infringes its copyright in the logo, the layout, and the photograph featuring on Woman magazine’s cover. MGN Ltd. contended that the use of Woman magazine cover is incidental to the purpose of advertising The Sunday Mirror, and thus, protected under section 31 of the Copyright, Design, and Patents Act, 1988. The court dismissed MGN’s defense and stated that the use of Woman magazine’s cover is not incidental inclusion as the advertisement would have lost its impact if MGN Ltd. had not used the precise cover. Thus, under no circumstances can the inclusion of Woman magazine’s cover be considered casual, subordinate, not essential, or background.
3.1.2 Peter Smith J. applied the understanding of IPC Magazines Ltd. vs. MGN Ltd. judgment in Football Association Premier League Ltd. & others vs. Panini. Panini distributed collectible stickers with images of football players wearing their kits with club and league emblems. The Football Association Premier League Ltd. (hereinafter referred to as ‘FAPL’) submitted that the league emblem is FAPL’s property, and Panini has infringed their copyright. Peter Smith J. opined that these emblems are an integral part of the photograph, without which the sticker would have been incomplete. Thus, Panini’s use of FAPL’s emblem cannot be considered incidental inclusion and amounted to FAPL’s copyright infringement. Panini filed an appeal against the said decision contesting that since the emblems are not visible on all photographs, its inclusion must be judged on the circumstances under which the photographs were taken. Further, Panini claimed that ‘incidentality’ of the inclusion should be judged in light of the artistic consideration. The Court of Appeal rejected Panini’s claims to test ‘incidentality’ of inclusion in light of artistic consideration as the intent of creating the stickers was solely commercial, and without emblems, the commercial value would not have been the same. For this reason, the Court of Appeal upheld the decision of the lower court.
3.2 Judicial Interpretation of Incidental Inclusion in India
3.2.1 Similarly, in India, the circumstances of the case are vital to evaluate incidental inclusion. In Suneet Varma Design Pvt. Ltd. and Anr. vs. Mr. Jas Kirat Singh Narula and Anr., the plaintiff sued the defendants for infringement of the plaintiff’s copyright in the dress worn by actor Rani Mukherjee in the film ‘Bunty Aur Babli’. The plaintiff claimed that the defendant did not take plaintiff’s prior permission before using his dress in the film. He further contested that the defendants have circulated promotional materials where the actor can be spotted in that particular dress. Without raising any question to plaintiff’s copyright in the dress, the defendants submitted that they are protected under section 52(1)(u) of the Copyright Act, 1957, as the dress in question is only shown for few seconds and does fall within the protections of incidental inclusion in a cinematographic film. The Delhi High Court opined that one could only determine the incidental nature of inclusion after evaluating the evidence. Court further observed that by using the actor’s photograph in the dress in question, defendants have given importance to the dress and thus cannot claim that the use of dress was merely incidental. Parties got into an out-of-court settlement where the defendant agreed not to use the dress in question in the future or as promotional material in any film.
4.1 The Indian Copyright Act, 1957 provides a limited scope of protection for incidental inclusion. As a result, filmmakers in India have to be extra cautious about third party works that appear anywhere in their cinematography film. In light of the observations made above regarding UK law, Indian filmmakers have a higher standard of duty and care to ensure that third party works and materials are used anywhere in the film only after undertaking suitable due diligence, since Indian copyright law allows quite a narrow protection under section 52(1)(u) of the Copyright Act, 1957, by excluding majority of works from the purview of its protection, and where protection is afforded, permissible instances have been limited.
4.2 For instance, in a scene, if someone is humming a third-party song in the background, then during post-production, the editors will have to ensure that the humming is not audible in the final version of the film. While, one could say that the Indian law is more sensitive to interests of copyright owners, one does get a sense that the type of film-making possible under such a regime can only be a very deliberate endeavour, which excludes possibilities for ‘found footage’, type of shootings. The Indian law also makes the compliance burden higher for documentary film-makers who often do not shoot deliberate or curated scenes and leave it to the subject matter to express itself. As a result, more resources are invested in ensuring legal compliance where third party copyright works may get incidentally included. However, suppose the ambit of protection for incidental inclusion is widened through relevant amendments, then certain type of film-making which rely on different styles could save themselves the hassle of elaborate post-production editing, or pursuing third party copyright owners to obtain suitable waivers, often at some difficulty and costs.
4.3 Regardless, where any film-maker does feel that third party works may have been included in the background, either by accident, chance or casually, it would be a good idea to obtain suitable waivers and personality/property clearances from third parties, since the current Indian copyright law affords very slim protections. Where a studio is commissioning a line producer, it will be a good idea to include suitable protections including by way of obtaining adequate indemnities against third party claims concerning usage of their copyright works even where such inclusions are not deliberate.
Important Disclaimer: The information provided herein this article is our interpretation and understanding of the law. The legal analysis presented hereinabove is not given for application to any specific set of facts or circumstances peculiar to you or your organization. You may rely on the the write-up for your peculiar facts or circumstances at your sole risk only. We will not be liable, answerable or responsible to you under any client-privilege relationship.
1. Mura v. Columbia Broadcasting System, Inc., 245 F. Supp. 587 (S.D.N.Y. 1965).
2. Section 52(1)(u) Copyright Act, 1957. “(u) the inclusion in a cinematograph film of— (i) any artistic work permanently situate in a public place or any premises to which the public has access; or (ii) any other artistic work, if such inclusion is only by way of background or is otherwise incidental to the principal matters represented in the film."
3. Section 31 Copyright, Design, and Patents Act, 1988. “Incidental inclusion of copyright material. (1) Copyright in a work is not infringed by its incidental inclusion in an artistic work, sound recording, film or broadcast. (2) Nor is the copyright infringed by the issue to the public of copies, or the playing, showing or communication to the public, of anything whose making was, by virtue of subsection (1), not an infringement of the copyright. (3) A musical work, words spoken or sung with music, or so much of a sound recording or broadcast as includes a musical work or such words, shall not be regarded as incidentally included in another work if it is deliberately included.”
4. Section 2(c) of Copyright Act, 1957. “(c) “artistic work” means, — (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) a work of architecture; and (iii) any other work of artistic craftsmanship;”
5.2010 (44) PTC 541 (Del).
8.  FSR 431
9.  EWCA Civ 995.
10. 2007 (34) PTC 81 (Del).