We are pleased to bring to you a two-part guest post by Himanshu Arora. Himanshu is an IP lawyer practicing at the High Courts of Delhi and Punjab & Haryana and the District Courts at Amritsar. In this two-part post he analyses the possible outcomes in an ongoing copyright dispute in the US between DishTV on one hand and ZemTV and TVAddons on the other. In Part III of the post he’ll will be analysing this dispute under the Indian law.
DISHTV vs. TVAddons: A Prognosis of Achievable Outcomes – Part I
Himanshu Arora
In June 2017, American satellite and broadcast provider ‘Dish Network’ dragged one ‘ZemTV’ (an add-on developer for kodi software) and ‘TVaddons.ag’ (the largest add-on online library for Kodi-software users) to the Texas Federal Court for copyright infringement. According to the complaint, ‘ZemTV’ is accused for directly infringing the copyrights of various TV channels by providing an add-on (whereby the channels are retransmitted over internet), which allows the end-users to stream the copyright-content on their TV illegally i.e. without paying any subscription fee to the broadcasters, while the ‘TVAddons website’ is accused to be indirectly (contributory/vicariously) liable for marketing and inducing the distribution of the ‘ZemTV add-on’ to the end-users. The case is still at its nascent stage and effective replies are yet to be filed by both the accused coupled with the thingness that a lot of questions of facts are still to be established by both the parties but this bipartite post would try to augur the possible outcome of the case.
Part I of this two-part series would cover the following Stage A completely and Stage B partially i.e. qua the first defendant. Part II would take the Stage B to its logical end, while embracing other important aspects and the conclusion.
A. Setting itself in motion – by giving concise information regarding the facts of the case, especially ‘Kodi-software run set-top boxes’ and how the accused entities come in the picture; and
B. An atomistic appraisal – an attempt to separately examine the prima facie validity and viability of possible claims and defenses in the case and other important aspects;
STAGE A
What is Kodi software and its set-top box?
Kodi is a free and open source media player application for playing videos, music, pictures, games, and developed by the XBMC Foundation. It allows users to play and view most streaming media, such as videos, music, podcasts, and videos from the internet, as well as all common digital media files from local and network storage media in a Netflix kind-of interface. It’s very much available for download on the Android Play store and compatible with Microsoft Windows, Linux and iOS operating systems as well.
A Kodi Set-top Box, famous for its Plug and Play capability, is essentially a set-top box or a HDMI stick with the software installed on it. It allows people to stream shows and watch them on any platform including a computer, smartphone and tablet.
Though, Kodi is a neutral platform but over last few months, it has hogged negative limelight for two reasons. Firstly, for the misuse of its specific feature of Add-ons or plug-ins that allow the end-users to gain unauthorized access over copyrighted media content by installing illegal or unlicensed add-ons over the software. Secondly, for the sale of ‘fully loaded’ digital media players or set-top boxes that comes with such pre-loaded add-ons. The founders of the Kodi Software i.e. XBMC Foundation has always tried to disassociate the Kodi project from such illegal products, and also requisitions third-party add-ons providers to refrain themselves from exhibiting any kind of association with the foundation.
ZemTV and TVaddons.org – the incriminated parties
Zemtv is an unofficial Kodi add-on, which, after installation upon the software, unlawfully retransmits the TV channels and allows the end-users to scrape online copyright media content over their devices. Technically, as alleged, it captures live broadcast signals of the protected channels outside the U.S, transforms into a format which is serviceable for internet streaming and then uploads and transfers the transcoded content to computer servers (controlled and operated by the developer) and the redirect the same to end-users, who have installed the Zemtv Addon. (Pssst. I may be wrong in understanding and/or explaining the technical aspect or procedure of this operation, please correct me, if found wrong). After serving subpoenas upon Facebook, Twitter and Paypal etc., ZemTV service/addon was found to be developed and operated by one Shahjahan Durrani, who’s based in London.
‘Tvaddons.ag’ or ‘Tvaddons.org’ (now Tvaddons.co) is a third-party website and a platform, which hosts hundreds of unofficial Kodi-Addons and probably, the largest repository for addons. TVaddons website claims itself to be the only legitimate source for different types of addons and tools and to have participation of combined total of 36 million active users. The website also notifies a disclaimer for disassociating itself with the Kodi founders. It is owned and operated by Adam Lackman, who resides in Montreal, Canada.
STAGE B
ZEMTV
– Defense of ‘Fair Use’ – The ZemTV has been alleged to be liable for directly infringing DISH’S copyrights in audio-visual works (in violation of 17 U.S.C S 106) and is an infringer (in accordance with 17 U.S.C S.501). Apparently, the complainant is likely to succeed against this prime-accused on merits but after considering the developer’s response to media, I am sure that the developer will definitely take the defense of ‘fair-use’ in this case. The developer has taken the guard by saying that it has developed the Kodi add-on for learning python and broadening his coding skills (i.e. for educational purposes) and was further doing a community service (i.e. non-commercial use) and without receiving any profit.
Now let us examine that whether this possible defense of ‘fair use’. The determination of the issue that whether an activity is within the realm of ‘fair-use’ hinges upon the application and counterpoising of following four factors outlined in Section 107 of the Copyright Act, which were thoroughly analyzed and explained by the US Supreme Court in Sony Corporation of America v. Universal City Studios (Betamax Case):
1. The purpose of the use – As mentioned earlier, the developer claims that the purpose of performing the infringing activity was purely educational and non-commercial basis. Conversely, the complainant claims that the developer used to ask donations from the end-users for maintenance and other purposes. This plea, though looks after-thought, is purely a mixed question of law and fact and will be decided after the trial. However, it cannot take the defense of ‘transformative’ use (i.e. conversion of original to new work) as merely retransmission of the copyright content in a different medium is not a ‘fair use’ as held in ‘Napster case’.
2. The nature of the work being used – The rationale behind this factor is that certain types of works, typically those involving “more of diligence than of originality or inventiveness,” require less copyright protection than other original works. Thus, for example, informational works, such as news reports, that readily lend themselves to productive use by others, are less protected than creative works of entertainment. In this case, the copyright work is audiovisual works (motion pictures) which involves good level of creativity and deserves strong protection and DishTV have probably got the rights to communicate the same work to public. This factor would definitely weigh against ZemTV.
3. The amount of the work used – This factor takes into account the proportion of the original work which has been copied and/or infringed by the infringer. Sometimes, copying of entire works may also amount to fair use but it behavior of other factors has to be considered also. In this case the ZemTV has copied the entire original work, as it has merely retransmitted the audiovisual works, so this factor would also go against ZemTV developer.
4. The effect of the use upon potential market for or value of the original work – This is one the most decisive factor amongst all as it may singly outweigh other factors. It is the right of the author/s to commercially exploit their works by themselves or by assigning/licensing these rights and to protect the value of their work but if this right is impinged or any activity acts as barrier in exercising this right or any activity degrades the value of such work/s, then the same has to discontinued forthwith. In this case, after installing ZemTV addon, end-users were able to stream the TV channels via internet over their devices without paying any subscription fees to the DishTV and/or other broadcasters, which serves as a ‘market-substitute’ for the original work, and such activity will definitely have massive impact upon the potential market, therefore, this factor also goes against the developer.
So, from my standpoint, the developer would not succeed in this ‘fair-use’ defense, subject to the judgment upon the somewhat important first factor. For better understanding of ‘fair-use’ doctrine, readers are humbly invited to read ‘Campbell’, ‘Author’s Guild’, and ‘Grokster’ case.
– Passive Service provider – The developer alleges inter-alia that it is an open-source developer and ZemTV was merely a passive service, which was scraping content from a third-party source i.e. ZemTV.com, and completely disavows its involvement, hosting and/or control over the websites or other content sources that were allegedly accessible through ZemTV addon. By taking up this defense, the developer is trying to shift himself to the category of ‘merely conduit’ online service providers, so it could possible take-up the defenses available in Digital Millennium Copyright Act (DMCA) Though it’s apparently a specious argument, nevertheless, in order to succeed in this defense, primarily, it has to demonstrate its status as a ‘service provider’ with a ‘working notice-and-takedown process and repeat infringer policy’. Well, it would be a herculean task for the developer to succeed in this defense and claim immunity as it has to firstly qualify himself as a ‘mere conduit’ (rather than a direct infringer itself) and then prove that it has complied with all other necessary DMCA requirements/provisions. Moreover, it has also to prove that it has no reason to believe that the retransmitted content was not authorized or illegal.
For Part II of the post, please click here.