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ON THIS PAGE:
> I. Problem in Context
> II. The
> The decision to seek redress and preparations
> Preparations for a legal suit
> III. The Outcome
> The verdict
> Triumph of the rule–based international
> 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
‘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
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
- computer programs and databases;
- rental rights to computer programs, sound recordings and films;
- rights of performers and producers of phonograms; and
- 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
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
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
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’
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
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
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.
History of Miles at a Glance
First public appearance on Bangladesh
Television as Miles.
First solo public concert at Shilpakala Academy Auditorium, Dhaka.
Capacity attendance of 2,000.
First album released in English, entitled ‘Miles’:
three original songs, seven covers.
Played at the Sonargaon Pan Pacific
Hotel’s discotheque and coffee shop in Dhaka six nights a week.
Many solo and joint concerts.
Second album released in English,
entitled ‘A Step Further’:
seven original songs and three covers.
First Bangla album, ‘Protisruti’,
released: twelve original Bangla songs, bringing the band
unprecedented popularity with a number of hit songs.
A number of television appearances
performing the Bangla songs.
First concert outside Bangladesh, in
Bangalore, India: UK rock music performed in three-hour solo
concert. Attendance 7,000.
Second Bangla album, ‘Prottasha’,
was released with twelve original Bangla songs: record-breaking
sales. To date the highest-selling album of Miles’ music in
Numerous television appearances, and
many concerts with audiences of 12,000 plus.
Signed with Pepsi Cola for a sponsorship agreement of one year,
which included exclusive concerts organized by Pepsi.
First CD released as the ‘Best
of Miles’, from Hollywood, United States, the first ever
CD of a Bangladeshi band. Sold very well in United States, United
Kingdom, Japan, United Arab Emirates and Bangladesh.
Solo three-hour concert in Chandigarh, India, of UK rock music.
Two concerts in the Gulf states of Abu Dhabi and Dubai. Audiences
Numerous concerts in Bangladesh.
Asia’s largest cable TV network Star TV’s music channel ‘V’
and ‘MTV’ Asia covered Miles’ concert and tour news.
Many concerts in Bangladesh colleges and
universities, as well as private dinner-dance performances.
Solo two-and-a-half-hour concert in
Calcutta of mostly Bangla songs. Audience 7,000.
Released third Bangla album (the band’s fifth), ‘Prottoy’,
containing eleven original songs, a high-selling album in
Bangladesh and abroad, giving the band its third consecutive hit
Successful major tour of United States and Canada over two months,
performing in New York, Dallas, Oklahoma, Chicago, Florida and
Montreal to audiences of 500 to 2,500 people, ticket prices
ranging from $20 to $100.
Increasing air-play of Miles’ Bangla
and English songs on India’s FM Radio, and increasing press and
record company interest there. Release of the band’s first
singles cassette, ‘Prayash’,
two original Bangla songs performed as extended dance songs.
Supported by earlier TV performances, they were very well
BBC conducted and aired a number of interviews with Miles in
various programmes along with some of their most popular Bangla
Interview with Miles published in London’s oldest Bangla
Band’s seventh disc recorded, partly in India and partly in
Performed in many charity concerts to
audiences of 1,000 to 20,000 people.
Performed another successful concert in Calcutta to an audience of
about 6,000 people.
Made a number of music videos through the year for satellite TV
channels including MTV.
First compilation album released in India as ‘Best
of Miles’ (Vol. I), a ‘perennial seller’ in record
company language, with huge radio play.
Second compilation album ‘Best of
Miles’ (Vol. II) released six months later, also topping
the charts. The two albums received great reviews in the local
press, making Miles very well known in West Bengal, India.
Performed in concert in Chittagong
stadium, with an audience of over 30,000.
Second guitar player taken on by the band.
Performed at Shibpur Engineering College, Calcutta, in front of an
audience of 5,000 — Miles’ fifth performance in India, the
highest number of concerts by any band from Bangladesh.
* Professor, Department of Economics, University of Chittagong.