Elsevier vs. Alexandra

Introduction

A library website called Sci-Hub offers free access to books and academic articles. Sci-Hub and another website that is similar to it, Lib-Gen, were the targets of a copyright infringement complaint brought before the Delhi High Court by publishing firms who claimed that both websites engaged in online piracy.

The publishing companies claim that Sci-Hub shared and made unauthorised access to their literary works—in the form of medical journals—available to the general public for use and download. It was also claimed that the website Lib-Gen, also known as Library Genesis, illegally made it possible for users to access the aforementioned publications in both the scientific and medical disciplines as well as non-scientific literature.

Sci-Hub’s owner, Elbakyan had grounded her application to dismiss this lawsuit on the claim that there was no valid copyright assignment agreement between the plaintiffs and the authors of works in respect of which copyright infringement was claimed.

[Image Sources : Shutterstock]

SCI Hub

A 3 November 2022 order prohibited the defendants from amending their written submissions. The defendants requested a change that would have the effect of contesting the plaintiffs’ ownership of the copyright to the underlying works. “In the case at hand, although it is not in dispute that the Plaintiffs are owners of the Copyright in their works,” stated the written statement that was being sought to be changed. The plaintiffs filed a sealed cover containing a number of assignment agreements, which the defendants only learned about thanks to a court order dated January 14, 2022. On this cover, the defendants founded their claim. They then wanted to retract their unequivocal acknowledgment that the plaintiff owned the copyright, citing the assignment agreement’s legal unenforceability. The defendants also cited the Supreme Court ruling in Om Prakash Gupta v. Ranbir B. Goyal, which permits written statements to be amended if the assignment agreement was disclosed after the lawsuit was filed. The bar for amending a written statement is also lower than it is for amending a plaint, according to Baldev Singh and Others v. Manohar Singh, where it was allowed to add, substitute, or change a cause of defence.

In the order, there are two primary issues that stand out: one relates to the assignment agreements, and the other concerns the type of revision that can be made by filing a plaint. First, despite the assignment agreement being in a sealed cover, the defendant had access to it along with the plaint, hence the court refused to allow alteration. The defendant’s initiative to review the contract cannot serve as justification for approving a change to the written submission. In order to do this, the court ruled that the Om Prakash judgement was not relevant to the current situation. The Heeralal v. Kalyan Mal ruling, which said that “an admission of the defendants cannot be allowed to be withdrawn, if such withdrawal amounted to wholly displacing the case of the plaintiff and would cause him irretrievable prejudice,” was also cited by the court. The defendant wanted to retract the admission rather than clarify or explain it, which would have challenged the plaintiff’s ownership rights, the court determined. As a result, the court denied the defendant’s plea for revision.

The defendant then used Order VII Rule 11 of the Civil Process Code to reject the plaint, claiming that it was legally barred and failed to provide a cause of action. The defendant said that the assignment agreements relied upon by the plaintiffs were illegal and unenforceable because they failed to grant the plaintiffs ownership rights. They claimed that the assignment agreements obliged the Plaintiffs to give the authors the “exclusive right to publish and disseminate the articles” in exchange for royalty payments and other forms of payment. According to Sections 23 and 25 of the Indian Contract Act of 1872 and Sections 16 and 19 of the Copyright Act of 1957, the agreement was null and unenforceable in the absence of this economic component.

The defendant was held accountable by the court for admitting that the plaintiffs were the owners of the copyright after their attempt to retract this statement (described above) was denied. The court also took note of the fifteen assignment contracts that were made between the authors and the plaintiff, giving the plaintiffs sole ownership of the literary work. By submitting these agreements, the plaintiffs have satisfied their initial burden of establishing ownership of their work in accordance with Section 55(2) of the Act. While the court did not undertake a scrutiny of these agreements, it read the plaint to disclose a cause of action where the plaintiffs asserted copyright ownership on the basis of these agreements and narrated facts to prove copyright infringement by the defendant. Therefore, the court dismissed the application by the defendant.

It is intriguing to consider how the dispute would have developed if the defendants had contested the plaintiffs’ ownership of the copyright from the moment the lawsuit was filed. In such a case, the court would have to examine the issue of whether the plaintiffs were the owners of the copyright in the works before analysing whether Sci-Hub and Libgen’s act constituted copyright infringement. The problem arises because the plaintiffs, who in this case are publishers, may already own the copyright or it may still belong to the creators of the works. Sections 17 and 18 of the Copyright Act in India specify who is the original owner of copyright and permit the transfer of such rights. The author and publisher’s contractual responsibilities should be examined by the court in order to determine who owns the copyright. The complaint in this action further alleges that “By virtue of agreements between the Plaintiffs and authors of the numerous literary works published by the Plaintiffs, the Plaintiffs have been assigned and are, inter alia, the owners of the exclusive rights.” As a result, the court will need to delve into each plaintiff’s contractual policy in order to determine whether this claim is viable.

Conclusion

The assignment of the work must state “royalty and any other payment payable,” according to Section 19 of the Act. While the author may receive consideration in the form of media attention or publication, the royalty must be paid in cash. Agreements between publishers and authors of journal articles frequently exclude this provision about royalties due to the latter. The significance of the assignment agreements and the significance of raising the issue of who actually owns the copyright in the dispute are brought out by a study of this case. If the defendants had challenged the ownership status from the beginning of the dispute, the plaintiffs would have encountered a challenge to provide the validity of the assignment agreements in light of assigning ownership of copyright to the publishers and providing the authors with royalties in return.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

  • Lokesh Vyas & Praharsh Gour, What if? discussing the elsevier ltd.. and Ors v Alexandra Elbakyan and Ors in the multiverse of substantive copyright arguments Spicyip (2023), https://spicyip.com/2023/02/what-if-discussing-the-elsevier-ltd-and-ors-v-alexandra-elbakyan-and-ors-in-the-multiverse-of-substantive-copyright-arguments.html (last visited Mar 31, 2023).
  • Prime Legal, Delhi High Court rejects Sci-hub owner’s application to dismiss copyright infringement case Prime Legal (2023), https://primelegal.in/2023/03/03/delhi-high-court-rejects-sci-hub-owners-application-to-dismiss-copyright-infringement-case/ (last visited Mar 31, 2023).

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