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Opinions expressed in the case studies and any errors or omissions therein are the responsibility of their authors and not of the editors of this volume or of the institutions with which they are affiliated. The authors of the case studies wish to disassociate the institutions with which they are associated from opinions expressed in the case studies and from any errors or omission therein.

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> Introduction

ON THIS PAGE: 
> I. Problem in Context
> II. The players involved
> The decision to seek redress and preparations
> Preparations for a legal suit
> III. The Outcome and Challenges
> The verdict
> Triumph of the rule–based international trade regime
> IV. Lessons for Others
 > Reactions to the court order
> History of Miles at a glance

I. Problem in Context    back to top

‘“It’s daylight robbery in Murder,” screamed a cult Bangladeshi rock band, and its plea has been heard’, writes the Telegraph of Calcutta in its front-page story on ‘tune-lift’ in the Hindi movie Murder (Telegraph, 20 May 2004). Miles, a very popular Bangladeshi music band (see box) has accused music director Anu Malik, a music-mogul of the Mumbai movie world, of committing pure piracy of one of its original compositions.

On receiving messages from fans in the United States, the United Kingdom, Australia and India that their song ‘Phiriye Dao Amar Prem’ (Give me back my love) had been copied in the soundtrack of Murder, Manam, Hamin and other members of Miles collected a copy of the movie and sat down to watch it themselves. When the song ‘Jana Jane Jana’ was being played, the band members could hardly believe their ears. Only the language was different — Hindi. Otherwise, ‘the lyrics are a shadow of ours, the tune is the same. Even the beat break-ups, the use of guitar and filler notes are the same. How could Anu do such thing?’ wondered Hamin, one of the guitarists and vocalists of Miles. ‘Even when a musician is inspired by a song, he can only copy eight measures. But this is a complete copy of Phiriye Dao,’ added Hamin (Bombay Times, 18 July 2004).

The Bengali song ‘Phiriye Dao’ was composed by Miles for its music album ‘Prathasa’ (Hope) in 1993. It was released in Bangladesh and Pakistan. In 1997 this same song was included in a music album named ‘Best of Miles, Vol. 1’ released by the Asha Audio Co. of Calcutta, and it became very popular in both Bangladesh and West Bengal, India.

Now the song has been used in the soundtrack of the Hindi block-buster movie Murder without, of course, the permission of its original composers.

The Mumbai (previously Bombay) movie world known as ‘Bollywood’, in imitation of the United States’ Hollywood, earns millions of dollars by producing and exporting its films, typically including music and dance, romance and comedy, all over the world, including Bangladesh. Compared with India’s, Bangladesh’s movie/music production is just a dwarf. Bangladesh runs a huge trade deficit with India, and the import of movies/music from India contributes significantly to it.

Under such circumstances, copying and reproducing a Bangladeshi song without any payment of royalties is not only unethical but also a blatant violation of the intellectual property rights recognized by the World Trade Organization. It hurts, in this particular case, the business interests of the Bangladeshi rock band Miles.

‘Just as Santana cannot leave a concert without performing “Black Magic Woman”, we cannot conclude a concert without performing “Phiriye Dao”. Our songs have a huge potential for the non-Bengali audience. We had planned to release their Hindi versions. Our plans to go Hindi are in jeopardy. We are open to singing for Hindi films too. The offer should have come to us’, said Hamin in a description of how the copying of their song had hampered Miles’ prospects, including, of course, business prospects (Bombay Times, 18 July 2004). And it goes without saying that since Bangladesh is the ‘home’ of Miles, so when its business interests are hurt, Bangladesh’s business interests also are hurt.

II. The players involved    back to top

The decision to seek redress and preparations

The members of Miles discussed among themselves the possibility of seeking and getting compensation for the injury caused to their business prospects. It was decided that they should contact lawyers, people well versed in matters relating to the WTO, and the Ministry of Commerce.

The relevant people in the Ministry of Commerce showed keen interest in the case. They contacted their counterparts in the Ministry of Commerce in India, who suggested that Miles should seek redress to the problem by taking the violators of copyright to court. The Bangladesh Ministry of Commerce advised the members of Miles accordingly, and asked the Commercial Counsellor and others in the Calcutta office of the Bangladesh deputy high commission to extend all possible co-operation to the band members in this regard.

By approaching some individuals well-versed in WTO matters, the band members learned that they can claim protection for their work under the copyright and related rights provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The main provisions on copyright and related rights in the TRIPS Agreement are contained in the Berne and Rome Conventions. In addition, the TRIPS Agreement contains provisions related to

1. computer programs and databases;
    
2. rental rights to computer programs, sound recordings and films;
    
3. rights of performers and producers of phonograms; and
    
4. rights of broadcasting organizations.

In the case of Miles, Article 11 and Article 14 of the TRIPS Agreement are the most relevant ones. According to Article 11, member countries are required to provide authors of computer programs, sound recordings and cinematographic films the right to authorize or to prohibit the commercial rental of their copyright works. In addition, Article 14 provides that the performers shall have, ‘in respect of a fixation of their performance on a phonogram’, the right to prevent the reproduction of such fixation.

On being advised by the Ministry of Commerce and bolstered by the knowledge of the rules of WTO, members of Miles finally decided to go to the court of law. ‘By going to court, we are registering our protest against such an unethical deed’, said Hamin to the Bombay Times (18 July 2004).

Preparations for a legal suit    back to top

Sinha and Company, a Calcutta law firm, was contacted on behalf of Miles for filing suit against the violators of copyright. Accordingly, lawyers of the firm served notices on the offenders, prepared relevant documents including ‘notations’ of the original and copied songs, collected audio-cassettes of the two songs and so on. Finally, after the expiry of the notice period, a writ petition was filed on behalf of Miles in the Calcutta High Court on 17 May 2004 against the producer Mahesh Bhat and the music director Anu Malik of the film Murder, the singer of the song, Amir Jamal, the recording firm Saregama (India) Ltd and the audio company RPG Global Music (London).

In the writ petition it was claimed that the defendants had collaborated on copying core elements from the petitioners’ song ‘Phiriye Dao Amar Prem’ in the soundtrack ‘Jana Jane Jana’ of the movie Murder. It was further claimed that the themes of the two songs had been similar and their melodies identical. Even the use of chords was the same in both the songs. ‘This is gross infringement of the International (Intellectual) Property Rights as well as the Copyright Act’, stated Pratap Chatterjee, the lawyer for the petitioners (Telegraph, Calcutta, 20 May 2004).

As compensation for the ‘injury’ caused to the business interests of the petitioners, 50 million rupees were demanded from Anu Malik, Mahesh Bhat, Saregama India Ltd and RPG Global Music; in addition, ‘total reimbursement’ for the expenditure incurred in filing the case also was demanded. A court order was also sought for appointing a receiver or special officer to seize the entire lot of soundtrack software from Saregama’s Dum Dum studio. Besides this, the band’s lawyers demanded that the respondents ‘should be directed to disclose upon oath details of cassettes and CDs distributed by them to various vendors and retails’.

III. The outcome and challenges    back to top

The verdict

On hearing the petition, the Hon. Justice S. K. Mukherjee took prima facie cognizance of the matter and passed an interim order on 19 May 2004. In his learned judgment, the justice ordered the respondents to remove the song from the soundtrack of the movie Murder. The court order further barred the respondents from manufacturing, selling, distributing or marketing any music cassette or disc containing the song.

Triumph of the rule-based international trade regime    back to top

The verdict of the Calcutta High Court in the Miles case was a triumph of the rule-based international trade regime. Previously, intellectual property right (IPR) laws were applicable mainly within national boundaries, and only the nationals of a country could benefit from such laws; India was no exception to such practice. The Indian Copyright Act empowered the government to extend the benefits of the Act to the nationals of other countries (i) if India had entered a bilateral treaty with that country; (ii) if India and the country concerned had been parties to a common international convention guaranteeing protection to intellectual property rights; or (iii) if the Indian government was satisfied that the country concerned had adopted measures to reciprocate similar protection to the works of Indian nationals.

But Bangladesh and India had neither signed any bilateral agreement nor been parties to any common international convention related to the protection of property rights in literary and artistic works before 1995. So, according to the provisions of the Indian Copyright Act, Bangladesh would not have the right to claim IPR protection for its citizens’ works in India before 1995.

However, both Bangladesh and India became members of the WTO on its formation in 1995, and the Indian Copyright Act was amended accordingly to make it compatible with the TRIPS Agreement. The amendment to Chapter IX of the Act, entitled ‘International Copyright: power to extend copyright to foreign works’, inserted a new section after s. 40 which reads as follows:

40A (1) If the Central Government is satisfied that a foreign country (other than a country with which India has entered into a treaty or which is a party to a convention relating to rights of broadcasting organizations and performers to which India is also a party) has made or has undertaken to make such provisions, if any, as required for the protection in that foreign country, of rights of broadcasting organizations and performers as is available under this Act, it may, by order published in the Official Gazette, direct that the provisions of Chapter VIII shall apply —…. (c) to performances that are incorporated in a sound recording published in a country to which the order relates as if it was published in India.

In addition to making necessary amendments to the Copyright Act of 1957, the Indian government also issued the International Copyright Order 1999, extending the benefits of the provisions of the Indian Copyright Act to nationals of all WTO member countries. This automatically granted Bangladesh, as a member of the WTO, the status of receiving copyright protection in India for its citizens’ works.

In the present case, both India and Bangladesh as members of the WTO are bound by its rules. When some nationals or business firms of India infringed the copyright (included in the IPR) of the Bangladesh nationals —members of the band Miles — it was possible for the latter to seek legal redress for the injury caused by such infringement of copyright. And this was particularly provided for in the WTO rules (National Treatment Principle of TRIPS).

Thus although the TRIPS Agreement was not the first of its kind to enable copyright owners to defend their rights in foreign countries, because of the variations in standards of protection and eligibility criteria, it was previously possible for someone to violate the intellectual property rights of nationals of other countries and exploit it for commercial purposes both within and outside the country, that is for both domestic supply and export. The TRIPS Agreement, by ensuring a minimum standard of protection and eligibility criteria, was intended to put an end to such violations of intellectual property rights beyond national boundaries. The case described here serves as a concrete proof of such an intention.

The present case is a further proof of the fact that Bangladesh was a special beneficiary of the provisions of the TRIPS Agreement. Prior to amendment to make it TRIPS-compatible, the Indian Copyright Act provided for the extension of copyright protection to the works of nationals of other countries provided that that country also granted reciprocal treatment to the works of Indian nationals. But in this case, the Bangladesh band Miles obtained ‘National Treatment’ although Bangladesh still has until 2006 (an allowance of grace period for Bangladesh as a least developed country (LDC)) to accord similar treatment to the nationals of India (or any other country, for that matter).

But availing themselves of the benefits of the provisions laid down in the WTO rules involved costs and challenges for the copyright owners of Bangladesh. These were in terms of money, time, lack of information and uncertainty about the outcome, compensation and the amount thereof. In this particular case, the band has won only the first round of the battle. It is yet to secure a verdict on the nature and amount of monetary compensation commensurate with the damage caused to the band’s business prospects.

IV. Lessons for others    back to top

Reactions to the court order

Nevertheless, the members of Miles were very happy with the decision of the court. In particular they were pleased because not only did they get their copyright recognized, the recognition came promptly too. ‘We were impressed by the promptness with which the first hearing in the Calcutta High Court was completed and the injunction order was passed. Normally, it does not happen so quickly. We proceeded systematically, organizing everything very carefully. Particularly, we submitted the technical notations of our song and that of the “copied” song’, said the members of the Miles (Prothom Alo, 26 May 2004).

Mahesh Bhat, the producer of Murder, responded to the injunction order by removing the song from the soundtrack of the movie. However, in his defence he said that the song had been bought from the Jeddah-based Pakistani singer Amir Jamal. ‘We had bought the song from Amir Jamal…. and it was only recreated by Anu’, Mahesh Bhat told a Telegraph reporter when contacted on his cell phone (Telegraph, Calcutta, 20 May 2004).

But the most interesting and vindicating confession came from Anu Malik, the music director of Murder. Recording his reactions for the first time since the controversy over the song ‘Jana Jane Jana’ surfaced, Malik confirmed that ‘This song, as well as “Kaho Na Kaho” (another song from Murder) were taken from a Pakistani singer by the producers and the music company. I have not even recorded that song, leave alone composed it’ (Telegraph, Calcutta, 26 May 2004). Malik said that he had been shocked to be dragged into this controversy: ‘The people who bought the song from the Pakistani singer must also clarify that I had nothing to do with it.’

Manam Ahmed, the Miles keyboard player, was asked in an interview about the statements made by both Mahesh Bhat and Anu Malik that the controversial song was purchased from the Pakistani singer Amir Jamal. In reply, Manam Ahmed mentioned that this song had been composed in 1993 for their album ‘Prothasa’, which had even become popular in Pakistan. It was released in India again in 1997 by the Asha audio company of Calcutta. ‘If Amir Jamal was the original composer of the song, why did not he come up with a complaint during the last ten-year period?’ asked Manam (Prothom Alo, 10 June 2004).

Manam Ahmed’s contention was confirmed by the audio company Asha of Calcutta. S. D. Lahiri, the proprietor of Asha, said, ‘The song appears in our 1997 release “Best of Miles Vol. 1”. The Murder track has reproduced ditto the entire musical arrangement of the Miles number, including the specific guitar parts’ (Telegraph, Calcutta, 20 May 2004). On the other hand, shrugging off their responsibility in the whole episode, S. F. Karim, business manager for Saregama India Ltd, said, ‘We have little role in this, except reproducing and printing what the producer and music director have given us. Had it been non-film music, we would have had a more proactive part in the composition’ (Telegraph, Calcutta, 20 May 2004).

In short, the members of Miles are very happy with the outcome. They are happy to see that their rights have been established. On the other hand, the violators of copyright have also learned that they cannot get away scot-free after perpetrating such infringement of others’ copyright. They can be expected to be more cautious in future. But above all, this case upholds the fact that intellectual property rights, like other property rights, are inviolable. This will simultaneously serve as a warning to would-be violators of intellectual property rights and as an encouragement to creative people all over the world by reassuring them that their creative works will not be pirated. And all of these follow from the TRIPS Agreement — one of the three major instruments that constitute the legal rights and obligations of the WTO.

* Professor, Department of Economics, University of Chittagong.