[This post is authored by SpicyIP Fellow Yogesh Byadwal. Yogesh is a 3rd year B.A. LL.B. (Hons.) student at National Law School of India University, Bengaluru. He is interested in IP Law, Constitutional Law and Criminal Law. His previous posts can be accessed here].
In St Art India Foundation v. Acko General Insurance, the Delhi High Court is faced with the opportunity to elaborate whether and how street art in general is subject to the Copyright Act, the scope of ‘artistic work’ under Sec. 2(c), the fair use exemption thereof under Sec. 52(1)(t) and ‘moral rights’ of the author in such work. In this post, first I will briefly discuss the facts of the case and the arguments raised by both parties. Second, I will discuss the scope of ‘artistic work’ and discuss whether a ‘mural’ as a form of street art is subject to the Copyright Act. Third, I will analyse whether (i) mural paintings are included under Sec. 52(1)(t); and (ii) if yes, whether the proviso of the same or ‘fixation requirement’ excludes it from the scope of fair use. Lastly, I will discuss the argument of moral rights of the author in contending the ‘fair use exemption’ of their work.
Facts and Arguments
In the present case, the plaintiff filed a suit alleging infringement of copyright in a mural titled ‘Humanity’ against the defendant. It is submitted by the plaintiff that the said mural falls under ‘artistic work’ in sec. 2(c)(i), and, thus, copyrightable under sec. 13(i)(a) of the Copyright Act (‘the Act’). As a corollary, it also asserted ‘moral rights’ over the mural under Sec. 57 of the Act. This post by Prof. Kochupillai explains that ‘moral rights’ confers ‘a special right to the author for protecting his/her work even if the creator transfers the ownership and relinquishes all economic rights over the created work’. In other words, an author of the artistic work can nevertheless obtain an injunction or damages from a party for ‘mutilating their work’ after the transfer of ownership.
The defendant, on the other hand, has contended that their use of the ‘mural’ in their advertisement was exempted as ‘fair dealing’ under Sec. 52(1)(t) since the mural was situated in a ‘public place to which the public has access.’ In its rebuttal, it was submitted on behalf of the plaintiff that (i) a mural is not permanent, but is temporarily situated; and (ii) mural is a “painting, falling under a separate category, and thus, the provisions under Sec. 52(1)(t) of the Act does not apply.” I will discuss this argument later in the post.
The court recorded that the principal question for determination is ‘whether the defendant’s conduct would constitute fair dealing or not under the provisions of the Copyright Act, 1957.’ Earlier, the defendant had taken down the impugned hoarding and subsequent to the hearing, has agreed to take down all the impugned social media posts and any specific URLs displaying the mural, in the interim.
Whether a Mural is Subject to the Copyright Act?
It is important to note that in the proceedings the defendants have not raised the contention that the ‘mural’ is per se non-copyrightable. Nevertheless, I will elaborate on whether ‘murals’ are subject to the Copyright Act.
Under the scheme of the Copyright Act, in order to determine whether copyright subsists, the work must first satisfy the condition under Sec. 13(1) of being ‘original artistic work’. ‘Artistic work’ is defined under Sec. 2(c) of the Act which includes a painting and any other work of artistic craftsmanship.
The Copyright Office, in its 2018 Practice and Procedure Manual(the manual) defines ‘artistic work’ as ‘any work which is an original creation of an author or an owner fixed in a tangible form, is capable of being entered into the Register of Copyrights….,’ However, the Copyright Act nowhere mentions the ‘fixation in tangible form’ requirement for artistic work (see here and here) like ‘dramatic work’ under Sec. 2(h) of the Act
A ‘Painting’, in the manual, is defined as an ‘artistic work whether or not it possesses any artistic quality’, provided it is original and on a surface of some kind. As per the Cambridge Dictionary, ‘Mural’ is defined as ‘a large picture that has been painted on the wall of a room or building’(here).
In the present case also, the mural in question was painted on a wall (surface) and thus can be regarded as a painting under Sec. 2(c) (i). Therefore, it is undeniable that a mural, which is a form of street art, is an ‘artistic work’ under Sec. 2(c) and subject to the Copyright Act.
Fair Use Exception
The defendants have contended that the artistic work of ‘mural’ is included under Sec. 52(1)(t) and thus would fall under the ‘fair use’ exception of the Copyright Act. On the other hand, the plaintiff has argued that such work is a ‘painting’ under Sec. 2(c)(i). The answer to this question, in turn, will determine whether the reproduction or publication of such work is an infringement of copyright or saved by ‘fair use exemption’. Copyright law allows for the defence of ‘fair dealing’, where works can be used to a limited extent without having to obtain permission from the copyright owners (pg. 166 of Create, Copy, Disrupt).
On a straightforward reading of Sec. 52(1)(t), an artistic work classified as ‘painting’ falls under the ‘fair use dealing’ provision. Surprisingly, the Plaintiffs have also conceded that a mural is, in fact, a painting (Para. 29 of the order) but then argues that the mural will not fall under the ambit of Section 52(1)(t), which is contradictory to their earlier argument. Therefore, on a bare perusal of the provisions and the plaintiff’s submissions, publishing the mural by the defendants should be regarded as a fair use. Separately, if we look at the plaintiff’s submission were they arguing that ‘fair use exemption’ under clause (t) only extended to artistic works under Sec 2(c)(iii)? If so, then their submissions seem to be erroneous upon a perusal of the provision. If not, then was there a typographical error?
The second requirement of ‘public place’ or ‘premises to which public has access’ under section 52(1)(t) is prima facie is also satisfied. The plaintiff have conceded that the said mural is in a public place. However, they contend that the said mural is ‘temporary and not permanently situated’. The purpose of ‘fixation requirement’ ensures the work ‘to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”(pg. 107 of Cambridge Handbook of Copyright in Street Art and Graffiti) To reiterate, the Copyright Act does not talk about the fixation requirement except for dramatic works, cinematographic and sound recordings. In India also, the Manual of Copyright Office merely mentions that a painting must be on a surface of some kind. Therefore, the requirement is not as much concerned with the permanency of the surface itself as much as the medium upon which ‘artistic work’ is impressed upon irrespective of the nature of the surface. As a result, even temporary existence of the art work should satisfy the requirement of fixation.
Therefore, even though court has noted that ‘the advertisement of the defendant reproduced the mural’, the fair use exemption under Sec. 52(1)(t) will allow the defendant to use the mural without seeking permission from Plaintiff.
Moral Rights
So far, it is established that the mural is included under Sec. 52 which exempts certain acts from infringement of copyright. However, moral rights are special rights of the author independent of copyright, which, if violated, can be litigated against(here). Moral rights confer special rights on the author to protect their work. ‘Integrity right’(here), a subset of moral right, “allows artists to prevent distortion, mutilation or other modification of their works which would be prejudicial to their honor or reputation.” Sec. 57 of the Act provides such right under the Indian context.
DHC, in this case, has observed that the defendant has ‘clearly reproduced the mural in its advertisement’, and therefore used it for ‘commercial purposes’. Therefore, it can be argued that the work has been ‘surgically removed’ from the context of ‘social messaging’ to ‘commercial profit-making’ since the defendant seeks to advertise/promote their company through inclusion of the ‘mural in their ad-campaigns. The ‘decontextualization’(pg. 117 of Cambridge Handbook) of the mural per se is ‘modification’ under Sec. 57 of the Act.
Why should commercialisation of an artistic work be considered ‘distortion’ or ‘mutilation’ under Sec. 57? As part of moral right, an author has the right to prevent violation of author’s ‘special personality.’ This right protects the author against unfair use or misuse of his work. Therefore, save the consent of the author, using the work for commercial work for advertisement is not permissible(pg. 514, ‘The moral right of the Author’). Therefore, misuse of the work in a commercial setting without the author’s permission is a significant modification of the work which violates the integrity rights of the author.
In Mannu Bhandari v. Kala Vikas Pictures, the plaintiff had argued that ‘commercialisation’ of her novel into a feature film was ‘mutilation’ and ‘distortion’ of her original work. The DHC had observed that ‘modification’ should “not be so serious that the modified form of the work looks quite different work from the original”, which, as a result, is a ‘perversion’ of the original and ‘may amount to distortion or mutilation.’ Therefore, the plaintiff in this case must be able to prove that the commercial usage of their mural in the form of advertisement by the defendant was a modification which perverted the original work to the extent of ‘mutilation’ or ‘distortion’. Moreover, the said advertisement reproducing the mural carries the tagline ‘Welcome Change’ along with the Defendant’s logo as part of the ad-campaign of the plaintiff. The same can be challenged for misrepresenting the plaintiff’s work as that of the defendant’s.
However, as discussed in this post by Karishma, “concept of moral rights has not been meaningfully considered in Indian jurisprudence more than a handful of times.” Karishma in her posts(here and here) has extensively explained how courts have gone back and forth on subjective-objective tests for determination of violation of ‘integrity rights’ of the author such as reputation of the author. The present case presents the court with an opportunity to expand the scope of ‘moral rights’ of street artist under the Copyright and develop the limited jurisprudence on the same.
