Tag: Intellectual Property Rights Laws

Copyrights – Intellectual Property Rights Laws and Practices Important Questions

Question 1.
State, with reasons in brief, whether the following statements are, true or false.
(v) Under the Copyright Act, 1957 moral rights are available to the authors
even after the economic rights are assigned. September 29, 2016
Answer:
True.

• Under the Copyright Act, 1957 moral rights are available to the author even after the economic rights are assigned.
• Under section 57 of the Act an author of the copyrighted work can restrain or claim damages in respect of any distortion mutilation of the work or any other action in relation to the said work which would be prejudicial to his honor or reputation.
• These rights can be exercised even after the assignment of the copyright.
• They can be enforced by an action for breach of contract or confidence, a suit for defamation, or passing off as the case may be.

Question 2.
With reference to the relevant legal enactments, write short notes on the following:
(vi) International copyright.
Answer:
Copyright work may not be limited to the territory of India only. Section 40 authorizes the Central Government to extend copyright protection to foreign works.

Section 41 provides that work made or published by certain International organizations is granted Copyright protection in India. “Accordingly, Government of India enhances the scope of copyright protection bypassing the copyright order under which copyright protection was granted to certain International organizations.

Question 3.
With reference to the relevant legal enactments, write short notes on the following :
(v) Term of copyright
Answer:
In the case of copyright, the author of a work of art or any other work in respect of which copyright exists, is granted an exclusive right to make, copies or reproduce the subject matter for a certain period.

• The period or term of copyright is defined under sections 22 to 29 of the Copyright Act, 1957
• The term of copyright can be expressed by means of the following table:

Copyright in relation to	Term of copyright
Literary work Artistic work Dramatic work Musical work	Life of author +60 years more
Anonymous work Photographs Cinematographic film Sound Recordings Government work	60 years from the end of the year in which, the work was first published
Broadcasts made by broadcasting organization	25 years from the end of the year in which the broadcast was first made

Question 4.
Attempt the following:
(iv) What are the requisites for conferring copyright protection to works of international organizations?
Answer :
The conditions which must be satisfied are:

1. At the time of making the first publication of the work, there should not be any copyright in the work in India.
2. The work must be published under the control of an international organization.
3. If the work is published under an agreement with the author, such agreement should not reserve the author any copyright in the work or any copyright in the work should belong to the organization.

Question 5.
The attempt of the following:
(iii) Mention the remedies for infringement of copyrights under the Copyright Act, 1957.
Answer:
The owner whose rights are infringed have the following remedies

• The owner can apply for an injunction.
• The owner can claim loss of damages.
• The owner of the copyright can initiate proceedings for the possession of infringing copies.

Question 6.
(a) Do the following amount to infringement under the Copyright Act, 1957? Give reasons in brief:

1. Prof. Ajay recited in public an extract from a poem by Rabindranath Tagore.
2. ABC, Publishers published a compilation of speeches of Atal Bihari Vajpayee, former Prime Minister, delivered in public without permission.
3. A newspaper publishes a copy of the masterpiece painting of Ganesh Pyne while carrying a story on his death.
4. A book is not available in India. A librarian makes 10 copies of the book for the use of the public library.
5. A magazine reproduces an article on a political topic by Kuldip Nayar.

Answer:
(1) Reciting-a poem of Rabindranath Tagore by Prof. Ajay will not amount to infringement under Section 52 of the Copyright Act, 1957 if Prof. Ajay does not claim that poem as his own.

(2) ABC Publishers published a compilation of speeches of Atal Bihari Vajpayee, former Prime Minister, delivered in public without permission is the amount to infringement under the Copyright Act, 1957.

(3) Publishing a masterpiece painting of Ganesh Pyne by a newspaper while carrying a story on his death is not amount to infringement under Copyright Act, as it only represents the work of the deceased.

(4) A maximum of three copies of the book can be taken by a librarian for the library if a book is not available in India. In the above case, a librarian makes 10 copies of the book for the use of the public library which is an infringement of the Copyright Act.

(5) A magazine reproduced an article on a topic by Kul. deep Nayar amounts to infringement under the Copyright Act, 1957 if the prior permission has not been taken.

Question 7.
How is computer software protected in India?
Answer:
(1) Modern society relies heavily on computer technology. Without software, a computer cannot operate. Software and hardware work in tandem in today’s information society. Intellectual property protection of software is crucial not only for the software industry but for other businesses as well.

(2) Indian Patent Act offers patent protection to products or processes (if they satisfy various requirements of patentability) as long as they do not fall under non-patentable subject matter. Sections 3 and 4 of the Indian Patent Act specify a list of subject matter that is not patentable, in particular, “a mathematical or business method or a computer program per se or algorithms” is of specific importance to software innovation.

(3) The Indian Patent Law does not contain any specific provision regarding the protection of computer software. Computer software on the other hand is protected by copyright as applicable to literary and aesthetic works. A computer program is therefore dealt with as a literary work and the law and practice in relation to literary works will apply to computer programs.

(4) The Indian Patent Act, as of now, excludes only ‘computer programs perse’ from patentability. The issue of whether computer programs tied to certain hardware can be patented is a controversial one. Still, an invention shall not become unpatentable in India merely because it was implemented with software.

(5) The definition of “Literary work” under section 2 (o) of the Copyright Act, 1957, includes computer programs, tables, and compilations including computer databases. Like the unauthorized copying of literary works, unauthorized copying of computer programs also attracts the same legal consequences under copyright law.

Question 8.
(b) Microsoft develops software applications. Thus, it is the ‘author’ with the copyrights. When you buy the Microsoft software, what is purchased, is it the software or is it license to use the software?

1. What are the rights of the user? Can they be transferred?
2. Does the user have the right to free updated versions of the software?
3. If the price of a particular application is too high for the Indian consumers, what is the recourse with the Indian government to help the users in getting it at a low price?

Answer:
(1) The user has a right/license to use the software and the user has rights only as a licensee of the copyright holder. These types of software are known as proprietary software. These rights are defined in the sale agreement or end-user license agreement or software license agreement. The right to use the software can be transferred from one person to another as per the sale agreement or end-user license agreement. or software license agreement.

(2) Generally, a licensee is not allowed free updates of the software. He may be given updates at a concessional rate but it is not a matter of right. The government of India can ask for a compulsory license if the price is too high for the Indian consumer. Royalty must, however, be paid to Microsoft in the case of compulsory license.

Question 9.
Copyright is a ‘bundle of rights. Elucidate.
Answer:
Copyright is not a single right, rather it consists of a bundle of different rights in the same work.
It confers on its owners the rights to:

• To reproduce the work
• To issue copies of the work to the public
• To perform the work in public
• To communicate the work to the public
• To make any translation of the work
• To make any adaptation of the work
• To make any cinematograph film or sound recording in respect of the work
• To prepare derivative works based upon the copyrighted work.

In addition to the above rights which the holder of the copyright enjoys in respect of his work, he is also entitled to protect any other person from any of the above-mentioned rights without his assent. Further following moral rights are also enjoyed by the author or the copyright holder.

• The right of Publication
• The right of Paternity
• The right of Integrity

Question 10.
What is ‘Artistic Work’? Can artistic work be registered as a design under the Designs Act, 2000?
Answer:
An ‘artistic work’ is defined in Section 2(c) of the Copyright Act, 1957 as follows:
‘Artistic work means:’

1. A painting, a sculpture, a drawing (including a diagram, map chart, or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;
2. A work of architecture; and
3. Any other work of artistic craftsmanship.

It includes a graphic work, photograph, sculpture, or collage, with “graphic work” further defined to include paintings, drawings, diagrams, maps, charts, plans, engravings, etchings, lithographs, woodcuts, or similar. The definition of a “photograph” excludes stills from a film but includes slides, negatives, and microfilm. Architectural works (including buildings of any kind), and works of artistic craftsmanship, such as jewelry or pottery, are also included. Copyright subsists in all of the above, regardless of artistic quality or craftsmanship. Courts in India have time and again recognized that creations of nature can be protected as copyrighted artistic works. For instance, the famous Panda logo of the World Wildlife Federation and the Crocodile logo of the famous French clothing brand, Lacoste, have been recognized as protected artistic works by the Delhi High Court.

The requirement of originality, therefore, would not bar copyright in an artistic work such as a painting or a drawing embodying a creation of nature, such as an animal Or a bird, because the originality of the work would be judged on the basis of the manner in which such a creation of nature is depicted arid not the idea of the creation of nature itself.

‘Artistic Work’ cannot be registered under the Design Act. Such work is registerable under Copyright Act in India. Design includes features of shape, configuration, pattern, ornament, or composition of lines or colors applied to v any article in two or three-dimensional form, or both, by any industrial process or means – whether manual, mechanical or chemical, separate or combined- which in the finished article appeal to and are judged solely by the eye. This definition excludes any mode of construction or anything which in its substance is a merely mechanical device. It also excludes any trademark or property mark as well as any artistic work is protected under the Copyright Act. The Delhi High Court observed in the case of Microfibres Inc. v. Girdhar and Co. that artistic work can be divided into original artistic work and commercial/industrial manifestation of such artistic work such as design derived from and founded upon the original artistic work.

In the latter case, the work should be registered as a design under the Design Act. Whereas the original art. work can acquire protection under the Copyright Act as an artistic work or else the protection under the Design Act qua the product created from the artistic work when industrially applied. ‘Artistic Work’ cannot be registered under the Designs Act, 2000. Such work is registerable under Copyright Act only.

Question 11.
A law journal copy-edited a court judgment. It sought copyright by establishing the amount of skill, labor, and capital put in the inputs of the copy-edited judgment. It was contested on the ground that judicial pronouncements are in the public domain and that their publication does not infringe copyright. Will the law journal succeed in its copyright of a copy-edited judgment? Give reasons in support of your answer
Answer:
A matter having similar facts was decided by the Supreme Court in the case titled Eastern Book Company & Others, vs. D.B. Modak & Another. [Appeal (civil) 6472 of 2004, D/12/12/2007 (A.I.R. 2008 Supreme Court 809,810)]. As per the judgment, the judicial pronouncements of the Apex Court would be in the public domain and its reproduction or publication would not infringe the copyright law. That being the position, the copy-edited judgments would not satisfy the requirement of being a work which is to be protected by the copyright law merely by establishing some amount of skill, labor, and capital put in the inputs of the copy-edited judgments since the original or innovative thoughts contained in the judgment carrying the creativity are completely excluded from being subject to copyright.

Accordingly, original or innovative thoughts are necessary to establish copyright in the authors1 work. The principle that where there is a common source the person relying on it must prove that he actually went to the common source from where he borrowed the material, employing his own skill, labor and brain and he did not copy, would not apply to the judgments of the Courts because there is no copyright in the judgments of the Court unless so made by the Court itself. To secure a copyright for the judgments delivered by the Courts, it is necessary that the labour, skill and capital invested should be sufficient to communicate or impart to the judgment printed in some journal some quality or character which the original judgment did not possess and which differentiates the original judgment from the printed one.

The Copyright Act is not concerned with the original idea but with the expression of thought., Copyright has nothing to do with originality or literary merit. Copyrighted material is that what is created by the author by hi own skill, labour and investment of capital, may be it is a derivative work which gives a flavor of creativity. The Copyright work which comes into being should be original in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author.

To claim copyright in a compilation, the author must produce the material with exercise of his skill and judgment which may not be creativity in the sense that it is novel or non-obvious, but at the same time it is not a product of mere labour and capital. The derivative work produced by the author must have some distinguishable features and flavor to raw text of the judgments delivered by the’Court. The trivial variation or inputs put in the judgment would not satisfy the test of copyright of an author.

Adding, in the copy-edited ve.rsion the cross-citations to the citation(s) already given in the original text; adding names of cases and cross-citations .,,where only the citation of the case is given; adding citation and cross-citations where only name of the case is given; inserting citation in case history where only the title and year of the impugned/ earlier order is given; presenting in their own style the cases when they are cited repeatedly in the judgment; providing precise references to the quoted matter in the judgment by giving exact page and paragraph number as in the original case source/treatise/reference material; adding margin headings to quoted extracts from statutes/rules, etc.,

when they are missing from the original text of the judgment; adding the number of the Section/ Rule/Article/Paragraph to the extract quoted in the original text; adding the names of Judges on whose behalf opinion given; adding ellipsis” “to indicate breaks in quoted extract; supplying the matter inadvertently missed in quoted extracts in the original text of the judgment; changing the text as per corrigenda issued, etc., does not give the Law Journal Copyright in the copy-edited judgment.

Question 12.
(b) Several unpublished Ph.D. dissertations and television documentaries are lying idle in the university library. A publishing house is interested to publish unpublished Ph.D. dissertations in the form of books and reproduce this television documentary but the problem is copyright. Can the publishing house apply for a compulsory license for these academic resources like a compulsory license for patented drugs?
Answer:
The law on this particular point can be ascertained from the language of section 31 and section 31A of the Copyright Act, 1957. Section 31 of the Copyright Act, 1957 provides that:

If at any time during the term of copyright in any work which has been published or performed in public, a complaint is made to the Copyright Board that the owner of copyright in the work (a) has refused to re-publish dr allow the re-publication of the work or has refused to allow the performance in public of the work, and by reason of such refusal the work is withheld from the public; or

(b) has refused to allow communication to the public by broadcast of such work or in the case of a sound recording the work recorded in such sound recording, on terms which the complainant considers reasonable, the Copyright Board, after giving to the owner of the copyright in the work a reasonable opportunity of being heard and after holding such inquiry as it may deem necessary, may, if it is satisfied that the grounds for such refusal are not reasonable, direct the Registrar of-Copyrights to grant to the complainant a license to republish the work, perform the work in public or communicate the work to the public by broadcast, subject to payment to the owner of the copyright of such compensation and subject to such other terms and conditions as the Copyright Board may determine.

Compulsory License in Unpublished or Published Works Further, section 31A of the Copyright Act, 1957 provides that: Where, 1 in the case of any unpublished work or any work published or communicated to the public and the work is withheld from the public in India-, the author is dead or unknown or cannot be traced, or the owner of the copyright in such work cannot be found, any person may apply to the Copyright Board for a license to publish or communicate to the public such work or a translation thereof in any language. Section 31A further provides that before making an application to the Copyright Board, the applicant is required to publish his proposal in one issue of a daily newspaper in the English language having circulation in the I major part of the country and where the application is for the publication of f ( a translation in any language, also in one issue of any daily newspaper in that language.

The section continues to lay down that the Copyright Board after holding such inquiry as may be prescribed, direct the Registrar of Copyrights to grant to the applicant a license to publish the work or a translation thereof in the language mentioned in the application subject to the payment of such royalty and subject to such other terms and conditions as the.Copyright Board may determine, and thereupon the Registrar of Copyrights shall grant the license j to the applicant in accordance with the direction of the Copyright Board.

In the facts of the present case, generally, the ownership over the dissertation belongs either to the University or the Student itself (if agreed to , by the University). The publishing house is thus not entitled to approach the Copyright Board asking for grant of a compulsory license to publish the work, at the first instance. It has to first approach the Copyright Owner / Holder ‘ seeking its permission for such publication/republication. However, if later it is found that the Copyright owner/holder is unreasonable in withholding or refusing to grant its consent for such publication or re-publication of the work, then a case can be made out before the Copyright Board who shall consider and decide the matter on its own merits.

Question 13.
(b) Rajesh is a poet and maintains a blog ‘poet.blog.com’. He occasionally published his work on websites. He claims copyright infringement due to google’s alleged copying and distributing one of his works. Google defend and said that it is using an automated program called Googlebot. The program creates an index of the work available on the internet. The program created a cached version of the site. The cached version was then included in the search result of the google search engine. One clicks on the link to the cached version, the user can view a snapshot of the page as it appears at The time the Googlebot is found on site. Advise is there any copyright violation of Rajesh?
Answer:
Caching involves the storage of an entire site or another complete set of materials for a source for later use. It is a process used by internet browsers of storing “browsed” material in the browser computers’ RAM or cache memory.

The purpose of caching is to speed up repeated access to data and to reduce network congestion resulting from repeated downloads of data. Caching is an efficient tool. It is something that a browser programmer does independently of the user. Cached copies are incidents of using the browser program. Section 52 (1)(c) of the Copyright Act, 1957 deals with caching and categorize this as fair dealing.

‘Transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:

Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent-court refraining from facilitating access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access.1

There is no case of direct infringement on the part of Google since the entire process of displaying the search results and then viewing the cached page was a non-volitional act on •the part of Google. It must be mentioned that ‘safe harbour1 provisions relating to copyright infringement always mention that there can be no liability if the act was an automated process and not volitional.

In the given case, the reproduction of copyright work is happening due to caching memory which is essentially a technical nature of the computer. Hence, it falls under fair dealing.

In the case of Field v. Google, Blake Fields, who is an attorney and a poet, published certain poems on his blog. Google, in the course of indexing this blog, created a cached copy of his poems. In September of 2004, he filed a copyright infringement suit against Google claiming that caching of his poem “Good Tea” involved the unauthorized copying and distribution of his work. He claimed that when Google served, and users clicked on the cached copy of his poems, Google was not only ‘distributing’ unauthorized copies of his work, but ‘creating’ an unauthorized copy as well. It is also relevant to note that Field registered his poems with the Copyright Office before publishing them on his website and he did not employ the feature that prevented Google from caching his website.

The court framed two issues to decide the matter:

1. Does the creation of a cached copy constitute unauthorized copying?
2. When Google serves the cached copy to the user as a search result, does it amount to unauthorized distribution? The court found that no copyright infringement had occurred and delivered the judgment under the following broad heads:

Direct Infringement:
There was no direct infringement since the entire process starting from the display of search results and the subsequent viewing of the cached page — was a non-volitional act on the part of Google. This is consistent with the prevailing law on intermediary liability, which states that service providers cannot be held liable if the allegedly infringing act was an automated process. Bear in mind that Field did not accuse Google of infringement for creating the cached copy in the first instance or that users who viewed the cached copy were violating his copyright, and therefore Google was thereby liable for secondary infringement. The field appears to have taken the most tenuous defense — that the ‘creation of new copies’, when a user clicked the cached link, constituted copyright infringement.

Question 14.
FACTS :
Anand, the news reporter on behalf of the print media newspaper WORLDNEWS approach Alexander for his comments on the Indian foreign policy after the surgical strike of Indian force against Pak Sponsored terrorism. Alexander assured him to provide a piece of article written by him instead of the interview due to paucity of time. His Article was critical of the role of Pakistan and China on terrorism issues. Subsequently, he sends the article to Anand, which he submits to the WORLDNEWS as an editorial article after making certain corrections. The edited version of the article is soft on China for its role in international terrorism.

Based on the above facts answer the following questions :

1. Who owns the copyright on the given piece of the article?
2. Is there any violation of the rights of the author of the copyrighted work?

Answer:
(1) In copyright, the Author and owners are two separate personalities. As per Section 17 of the Copyright Act. 1957. The author becomes the owner of his copyright work. Although, this is subject to the provisions of the Act. If the author creates a work during the course of employment under the contractual obligation of any creative work, then in the absence of any contrary conditions, the employer will be the owner of the work owing to the Contract of employment.

Although, if the contract of employment is not in between the creator and the owner of the publication, then the copyrighted work belongs to the author and owner of the work. For instance, Sectional provides that where a work is made by the author in the course of his employment by the proprietor of a newspaper, magazine, or a periodical, under a contract of service or apprenticeship for the purpose of publication in a newspaper, magazine or periodical, the said proprietor, in the absence of any agreement to the contrary will be the first owner of the copyright in the work in so far as it relates to the publication of the work in any newspaper, magazine or similar periodical or to the publication of the work for the purpose of being so published.

Except in such cases, the author will be the first owner of the copyright in the work. In VT Thomas vs. Malaysia Manorama Co Ltd, it was held that in the case of termination of the employment, the employee is entitled to the ownership of the copyright in the works created subsequently and the former employer has no copyright over the subsequent work so created. It is based on this distinction between employees and the freelancers that the Court, in this case, recognized authorship of the content and form of the cartoon series in favor of the freelancer Thomas.

There thus exists disparity in the rights over the copyright of a freelancer who contributes to a periodical and an employee who creates original work in course of his employment under a contract of service. In the present case, Alexander has written an article not in the capacity – of the employee but as independent of such contractual obligations. Therefore, he remains the author and owner of the copyrighted work. WORLD NEWS or Reporter Anand cannot be the author or owner of the creative work published.

(b) There exists no copyright in news or facts or information, as the same is neither created nor have they originated with the author of any work, which embodies these facts. Facts may be discovered and discovery of facts cannot be given the protection of copyright.

The protection of copyright is afforded only when a fact or event or information or material is applied to create a form of work, literary or otherwise. When there is no copyright in news, there can be no infringement of an original Idea’ either, copyright may exist in the manner of expressing it. That being the position, any edited piece of work that had an established amount of skill, labor and capital put as inputs would amount to innovative thoughts and creation of the editor.

Copyrighted material is that what is created by the author by his own skill and labor. The news element in the information reporting current events contained in the literary production is not the creation of the writer but is a report of matters that ordinarily let us put in different words, it is the history of the day. They can never be copyrighted and are part of the public domain available to every person. Accordingly, there is no violation of the rights Alexander.

Question 15.
(c) Do the following acts constitute an infringement of copyright. under the Copyright Act, 1957 :

1. Making or publishing a painting, drawing, engraving, or photograph of a work of architecture.
2. Reproduction of a literary, dramatic, musical, or artistic work in the form of a cinematographic film.
3. Reconstruction of a building or structure in accordance with the architectural drawings or plans by reference to which the building or structure was originally constructed.
4. Making of any sound recording or visual recording for the private use of the person making such recording, or solely for the purposes of bona fide teaching or research.
5. Making translation of a literary work.

Answer:
(1) According to Section 52 of the Copyright Act, 1957 making or publishing a painting, drawing, engraving, or photograph of a work of architecture does not constitute any sort of infringement of copyright.

(2) As per the provisions of the Copyright Act 1957 reproduction of any type of literary, dramatic, musical, or artistic work in form of cinematographic film is considered an infringement of copyright.

(3) According to Section 52 of the Copyright Act,1957 reconstruction of a building or structure in accordance with the architectural drawings or plans by reference to which the building was originally constructed does not fall within the purview of infringement.

(4) As per the provisions enlisted under Section 52 of the Copyright Act, 1957 there is no infringement in case sound recording or visual recording is used for private purposes or in course of bonafide teaching or research.

(5) Yes, making the translation of any form of literary work will fall within the ambit of infringement of copyright under the Copyright Act, 1957.

Question 16.
(a) TV stations in Chennai and Mumbai published weekly TV guides covering their programs exclusively and claimed copyright protection. Arch TV Guide wanted to publish a comprehensive guide of TV programs of both the stations but was prevented by TV stations, Chennai and Mumbai on the ground of copyright infringement. By preventing this, the TV stations sought to ensure that third parties did not reproduce their program listing.

Arch TV Guide complained to the Competition Commission of India (CCI) citing the Competition Act, 2002, and arguing that the TV stations, Chennai and Mumbai were indulging in an anti-competitive practice of refusal to deal. The TV stations drew the attention of the CCI to Section 3(5) of the Competition Act, 2002 and argued that the said section did not restrict the right of any person to restrain any infringement of or to impose reasonable conditions, as may be necessary for protecting any of the rights conferred upon them under IPR statutes.

TV stations, Chennai and Mumbai contended that Section 3(5) of the Competition Act, 2002 provided protection of their IPR, namely, copyright and prayed that the CCI should restrain. Arch TV Guide from publishing the comprehensive guide. Arch TV Guide urged that the said the anti-competitive practice should not be condoned while providing protection to IPRs, in this case, copyright. It prayed that it may be allowed to publish the comprehensive guide in customers’ interest and public interest, available In light of the facts provided if you were the CCI, what would be your decision?
Answer:
(1) In terms of Section 3 (5) of the Competition Act, 2002, only those restrictions on freedom of competition inherent in the protection of IPR could be permitted. Refusal of the TV stations based on their reliance on copyright provisions prevents the creation of a new product (Arch TV Guide’s) for which there is customer demand.

(2) The TV stations by such refusal to deal excluded competition in the market. Section 3 (5) of the Competition Act, allows only ‘reasonable conditions’ for protecting IP Rights. If unreasonable conditions exist in a situation, they fall under the ambit of the Competition Act and such ‘unreasonable conditions’ cannot be condoned in offering protection of IP Rights. Copyright of the TV stations Chennai and Mumbai cannot be protected in the light of their refusal to allow Arch TV Guide to publishing the comprehensive guide, which would be in the interests of customers and the public. Consequently, Arch TV Guide should be allowed to publish the comprehensive guide.

Question 17.
Read the following case and answer the questions given at the end:
The plaintiff, Polymer India Ltd., is a leading manufacturer and distributor of quality products made using plastic molding technology. Its products include toys, school furniture, and playground equipment. The plaintiff is also the registered proprietor of the trademark ‘PLAY’ since 25th August 2005.

The plaintiff sued eight defendants namely Playwell Impex Pvt. Ltd., Mayank, Ms. Meenakshi, Pawan, Vishal, Darshan, R.P. Associates, and Funko India who are involved in the manufacture and distribution of similar products. The plaintiff claimed relief of permanent injunction to restrain the defendants from infringing its copyright, common law rights in designs, and passing off of deceptively similar products. An ex parte ad interim injunction was granted to the plaintiff by a Court vide its order dated 7th August 2015 and the goods of the defendants were seized by the Court Commissioner appointed vide the same order.
The plaintiff’s contentions are:

• That the product? of the plaintiff are unique and conceptualized individually, which involves the study of the market, preparation of the drawings, drawing a feasibility report, preparation of a new color scheme, finalization of dimensions, etc.

• That the defendant Playwell Impex Private Ltd. is engaged in the business of manufacture, distribution, and sale of toys in collusion with the other defendants including R.P. Associates who was earlier the distributor of plaintiff’s products, and Darshan, who is an ex-employee of the plaintiff. The defendant Playwell Impex Pvt. Ltd. has launched a range of toys that are identical and deceptively similar to the toys made by the plaintiff and is thereby passing off its goods as those of the plaintiff, infringing the bundle of intellectual property rights of the plaintiff in its products.

• That the toys manufactured and sold by the defendants under the brand FUNKO are a substantial re-production and colorable imitation of the products of the plaintiff.

• That there is a clear distinction between an original artistic work and a design derived from it for industrial application on a product. The original art work which may be used to industrially produce the designed article would fall within the meaning of artistic work defined under section 2(c) of the Copyright Act, 1957 and would be entitled to copyright protection as defined under section 2(d) of the Designs Act, 2000.

• That the defendants in their written statement have admitted the e-mail of the defendant Darshan 1o the defendant Playwell Impex Pvt. Ltd. forwarding the brochure of the toys of the plaintiff and therefrom it is. evident that the defendant Playwell Impex Pvt. Ltd. is replicating from the brochure of the plaintiff. The defendants’ contentions are:

• That the drawing in which the plaintiff claims copyright does not constitute a design within the meaning of Section 2(d) of the Designs Act, 2000 and is thus, not capable of being registered under the Act.

• That the plaintiff has no right to claim the protection of design without any’ registration.

• That the plaintiff’s toys which are being manufactured since the year 1992, are not novel and similar products are available in the market for ages.

• That the plaintiff’s products to which the design has been applied have been reproduced by it, more than 50 times by an industrial process.

• That the interim injunction granted is not justified when infringement is not proved.
Questions :

1. Discuss the relation between the Copyright Act, 1957 and the Designs Act, 2000.
2. What will be your decision on the interim injunction? Will you confirm or vacate the same? Give reasons.
3. Is the plaintiff entitled to copyright protection? Can artistic works related to design be protected under the Copyright Act, 1957?
4. Explain the copyright protection to foreign works in India. What are the conditions for such copyright protection in India?

Answer:
(1) Section 2 (d) of the Design Act, 2000 defines the term ‘Design’ and expressly excludes “and artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957″ from its scope. Section 2 (c) of the Copyright Act defines an “Artistic Work” to include any work of artistic workmanship. Hence, an artistic work does not decline within the definition of a Design under the Design Act, 2000. Section 15 of the Copyright Act, 1957 declares that copyright does not subsist under the Act in any design which is registered under the Design Act.

Furthermore, the said section declares that “Copyright in any design, which is capable of being registered under the Design Act, 2000, but which has not been so registered, shall cease as soon a’s any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright, or, with his license, by any other person.” Reading together the above provisions in the Copyright Act, 1957 and the Design Act, 2000 it may be concluded that artistic work . will not decline within the definition of a Design under the Design Act, 2000, but if it is related to a Design, then they can be protected under the Design Act and not under the Copyright Act, 1957.

(2) In the above case, analyzing the relationship and the interplay between the Copyright Act and the Design Act, the artistic works which are related to a Design can be protected under the Designs Act and not under the Copyright Act. The previous ex parte injunction granted to the plaintiff deserves to be vacated in favor of the defendants. The application of Plaintiff for the interim relief is dismissed. Moreover, the applications made by the defendant for the vacation of the ex parte order and return of its goods are allowed. The goods seized by the Court Commissioner/s shall be forthwith released to the defendants.

(3) Considering the inter-relationship between the Copyright Act, 1957 and the Design Act, 2000, it is appropriate to state that if a design is applied to an article and re-produced for more than 50 times by an industrial process after making a drawing, then the drawing cannot be treated disjunctively from the said design and the copyright cannot be vested in such a drawing. Section 15 (2) of the Copyright Act expressly provides for the end of the said protection, The Design and Copyright law are interrelated by Section 15(2) of the Copyright Act, 1957 and Section 2(d) of the Design Act, 2000. Section 15(1) of the Copyright Act categorically prohibits copyright protection if a design is registered under the Design Act.

Moreover, sub-section 2 of Section 15 states that, if a design is capable of being registered under the Design Act but the same has not been, registered, such design will cease to have copyright protection as soon as an article to which such design is applied is reproduced more than 50 times by an industrial process. Section 2(d) of the Design Act excludes any artistic work as defined in Section 2(c) of the Copyright Act from the definition of ‘design’ under the Design Act, 2000. The plaintiff’s products are manufactured more than 50 times by an industrial process and their design are registrable under the Design Act, 2000. No protection on the basis of copyright can be given to Plaintiff.

(4) As per Section 40 of the Copyright Act, 1957, the Central Government may, by order published in the Official Gazette, direct that all or any provisions of the Act shall apply in. respect of the work of any foreign country. Indian Copyright law is presently at parity with the international standards as contained in TRIPS. The Copyright Act, 1957 after the amendment made in the year 1999 fully reflects the Berne Convention on Copyrights and the Universal Copyrights Convention, to which India is a party.

India is also a party to the Geneva Convention for the Protection of Rights of Producers of Phonograms and is an active member of the World Intellectual Property Organization (WIPO) and UNESCO. The works of such foreign country are thus protected in India under section 40 of the Copyright Act, 1957, read in conjunction with the International Copyright Order 1999. Under the Copyright Act, 1957 works of foreign authors/owners are accorded the same protection in India to which the Indian citizens are entitled to under the Act.

Conditions for the Copyright Protection of Foreign Work The Copyright Protection to a foreign work is subject to certain conditions which are mentioned below:

(1) That before making an order under this Section in respect of any foreign country (other than a country with which India has entered into a treaty or which is a party to a convention relating to copyright to which India is also a party), the Central Government shall be satisfied that foreign country has made, or has undertaken to make, such provisions if any, as it appears to the Central Government expedient to require for the protection in that country of works entitled to copyright under the provisions of this Act.

(2) That the order may provide that the provisions of this Act shall apply either generally or in relation to such classes of works or such classes of cases as may be specified in the order.

(3) That the order may provide that the term of copyright in India shall not exceed that which is conferred by the law of the country to which the order relates.

(4) That the order may provide that the enjoyment of the rights conferred by this Act shall be subject to the accomplishment of such conditions and formalities if any, as may be prescribed by the order.

(5) That in applying the provisions of this Act as to ownership of copyright, the order may make such exceptions and modifications as appear necessary, having regard to the law of the foreign country.

(vi) That the order may provide that this Act or any part thereof shall not apply to works made before the commencement of the order or that this Act or any part thereof shall not apply to works first published before the commencement of the order.

Question 18.
Read the following case on Copyright Law and answer the questions that follow:
The present case is in relation to a widely publicized Telugu film entitled ‘Sardar Rubber Singh’.This is a film that stars Mr. Savan Kalyan, an actor of considerable renowned in the Telugu film industry known as Tollywood. The movie was scheduled to release on 8th April 2016. From August 2015 Sardar Rubber Singh was widely advertised. The Plaintiffs themselves admit to having seen posters in January 2016 but waited till March 2016 for the trailer. Sardar Rubber Singh is scheduled for release on 8th April 2016. The Suit was filed on 24th March 2016, at the very last minute. Defendant says that Sardar Rubber Singh has been produced with a ? 65 Crore budget. It is scheduled for theatrical release in 2000 screens worldwide and over 600 screens in Hindi. Back-to-back distribution and commercial agreements have been executed with several large cinema chains in India, U.S.-A. and across the world.

The case was filed on behalf of the plaintiff Aitfaaz Khan. Plaintiff alleged infringement in respect of his film ‘Jdbaang’ on two footings. That is a copyright infringement and passing off. Two films were produced by the Plaintiffs Aitraaz Khan. The franchise features. Mr. Balwan Khan was shown as a colorful police officer known as ‘Chulbul Pandey’. The first issue is that the Bulbul Pandey character from the Jabangg films has been infringed by the Defendants in their forthcoming film ‘Sardar Rubber Singh’. This is a sequel to the Defendants-’ hugely successful ‘Rubber Singh’, a remake authorized under a written and undisputed assignment, of the first ‘Jabangg’ film.

In 2009/2010, Plaintiff produced and released the first Jabangg film. The film script, story, screenplay, and dialogue were written by Anubhav Singh, hired by Plaintiff Aitraaz Khan on a commission basis for that purpose. The Plaintiffs created the unique character of Bulbul Pandey, portrayed by Mr. Balwan Khan. This character is described as “a corrupt but fearless police officer”. According to the plaintiff, there are various features that make this character unique they are:

(1) Bulbul Pandey (portrayed by Mr. Balwan Khan) plays a corrupt but fearless police officer. He lives with his family and has a troubled relationship with his stepfather and half-brother. He calls himself “Robin Hood” Pandey.

(2) Bulbul Pandey has his unique, funny, and bizarre way of dealing with rogue elements. The character has developed a unique dance style. The entire character of Bulbul Pandey was that of an endearing, loving, and funny police officer, a spontaneous and peculiar laugh adds charm to his steps. Bulbul Pandey rides a bike in the movie.

(3) Bulbul Pandey wears aviators and has a unique style of tucking the aviators on the back of his collar in the Film.

(4) Bulbul Pandey has a well-built body type, neat close-cut hairdo and handlebar pencil-thin moustache. Though a police officer, he wears a uniform with the top buttons open.

(5) Bulbul Pandey is a very light hearted police officer who dances with the other police officials at the police station. Even his fighting style has comic elements.

The Jabangg film was extremely successful. This uniquely etched character of Chulbul Pandey and it is suggested that this is no ordinary, generic or ‘stock’ police hero. Some two years later on 21st January, 2011, the Plaintiff entered into an agreement with Rameshwara Arts, a proprietary concern of the Savan . Kalyan, for the remake rights of the first Jabangg film.

As per the agreement the Assignee obtained absolute rights for remaking the film in Telugu language only. The Assignee will be having absolute rights to exploit the remade version of the film in Telugu Language only all over the world in all dimensions commercially and non-commercially. As per the agreement the term “Remake Rights” shall mean and included the rights to make a Film based on the Film and/ or

Script but not limited to the following:

(1) The right to remake the Film in Telugu Language and for the Territory based on and using the story line, script, scenes, screenplay, dialogues, characters, picturisation, designs, dramatic work, artistic works and names of the characters, passages, title of the Film or any part thereof etc. of the Film in any manners as Assignee may deem fit the Film or the story line of the Film in any manner Assignee so chooses.

(2) The exclusive right in the intellectual Property of the New Film including but not limited to the Copyright and all other ancillary rights and exclusive rights in the New Film and its underlying works.

(3) Any and all other rights that are incidental to and are necessary for appropriate utilization of the above mentioned rights i.e. (i) and (ii) of this clause. As per the agreement the term “Script” means and includes jointly and severally the story, each script outline treatment, draft, re-write and polish and screenplay of the Film in Hindi with dialogues.

Plaintiffs’ case is that the Rubber Singh character portrayed by Mr. Savan Kalyan is nothing but an avatar of the Bulbul Pandey character portrayed by Mr. Balwant Khan. If Rubber Singh brought into existence a wholly different persona, then surely its creators and owners have the right to further use that character and persona, no matter What any document said. Other than the name, there is no difference, and anyone seeing Rubber Singh on-screen, played by Mr. Savan Kalyan, will believe that he is seeing Bulbul Pandey albeit with a different visage.

Defendant’s contention is that the name was different. The portrayal was different. The stylization was different; The locales were different. So too were his mannerisms, qualities and, most of all, his core value system, his moral compass: where Bulbul Pandey is fearless but corrupt, Rubber Singh is fearless and honest. This was an adaptation developed distinctively. The script or story line underlying Rubber Singh, is said to have been developed by Mr. Savan Kalyan himself, has an independent copyright. Further they informed that the agreement of 21sl January, 2011 relates not to a licence but to an assignment, a very different thing.

The Rubber Singh character for the first Telugu film, though a derivative character, was one that was unique to that particular film. This is reflected by the fact that there is an assignment in perpetuity and with exclusivity. Copyright vested with the Defendants within the meaning of Section 14(a) and (d) respectively of a literary work and a cinematographic film. The rights in the Rubber Singh character are wholly distinct from the rights in the Bulbul Pandey character. The rights in the Rubber Singh character vest in and only in the Defendants.

Defendants claim was not only that the producers had copyright in the cinematography film but that they also owned the rights in the script, and that it was the entirety of all of this material that was assigned. There is also an argument in passing off that any person watching the Rubber Singh film is bound to recognise in the Rubber Singh’s character as portrayed by Defendant Mr. Savan Kalyan, the Bulbul Pandey character portrayed by Mr. Balwant Khan. It is one thing to say that the character first portrayed by Mr. Balwant Khan is now being portrayed as an adaptation by Mr. Savan Kalyan. It is quite another thing to say that the two characters are exact and that anyone seeing Mr. Savan Kalyan’s performance would think and only think of Mr. Balwan Khan’s portrayal of a particular and character and none other.

Again of this conflation of the two personas, and of the Rubber Singh character having no persona of his own, there is no evidence. The Court is of the opinion that both Bulbul Pandey and Rubber Singh wear their uniforms in a casual manner are hardly unique. The Rubber Singh character features a police officer who is both fearless and honest. The Bulbul Pandey in the Jabangg franchise is’just as fearless, on the footing that we all want our heroes to be fearless, but he is at the same time corrupt, a nod to reality but hardly an aspiration. The setting of the two films is different, the Jabangg films are set in North India while the Rubber Singh films are in the Andhra / Telangana region.

There are many other points of distinction too. Basing on the argument advanced and reasons explained in the present case the Bombay High Court is unable to find for the Plaintiffs on either a prima facie or balance of convenience, as a result, the court decline ad-interim reliefs.
Questions:

1. Examine the concept of the cinematographic film and mention the right provided to performers under the Copyright legislation.
2. ‘Computer programs per se not patentable.’ Discuss the patentability of computer programs in India and other jurisdictions. Specify under which law they are protected.
3. Explain the term infringement of copyright and highlight any six statutory exceptions therein.
4. Discuss the terms Assignment and licenses, explain the procedure and conditions to be followed while entering into an assignment.
5. Critically analyze all the provisions and grounds established by the defendant to put his case for infringement of copyright? In whose favor the High Court awarded the judgment.

Answer:
(1) According to Sec. 2 (f) of Copyright Act, 1957 —
‘Cinematograph Film’ means any work of visual recording and includes a sound recording accompanying such visual recording and ‘Cinematograph’ shall be construed as including any work produced by any process analogous to cinematography including video films. Thus, the term cinematographic film includes a video film which has been recorded in a VCR. [Entertaining Enterprises and Others v. State of Tamil Nadu and Others, AIR 1984 Mad 278] The Bombay High Court in Fortune Films International v. Dev Anand and Others AIR 1979 Born 17, held that in view of the definition of “artistic work”, “dramatic work” and “cinematograph film”, it would appearthatthe Copyright Act, 1957, does not recognize the performance of an actor as ‘work’ which is protected by the Copyright Act.

To overcome the lacuna in the law as pointed out in the aforementioned judgement of the Bombay High Court in relation to the protection of actors, the Act was amended in the year 1994 and a new concept of performer’s rights was introduced into the law. Performer’s Right: Section 38 (as substituted in the year 1994) provides that where any performer appears or engages in any performance, he shall have a special right to be known as the “performer’s right” in relation to such performance. The performer’s right shall subsist until fifty years frorrrthe beginning of the calendar year next following the year in which the performance is made.

Exclusive Right of Performer: As per section 38A without prejudice to the rights conferred on authors, the performer’s right which is an exclusive right subject to the provisions of the Copyright Act to do or authorize for doing any of the following acts in respect of the performance or any substantial part thereof, namely:
(a) To make a sound recording or a visual recording of the performance, including-

• reproduction of it jn any material form including the storing of it in any medium by electronic or any other means;
• issuance of copies of it to the public not being copies already, in circulation;
• communication of it to the public;
• selling or giving it on commercial rental or offer for sale or for commercial rental any copy of the recording;
• to broadcast or communicate the performance to the public except where the performance is already broadcast.

It may be also be noted that once a performer has, by a written agreement, consented to the incorporation of his performance in a cinematograph film he shall not, in the absence of any contract to the contrary, object to the enjoyment by the producer of the film of the performer’s right in the same film. However, the performer shall be entitled to royalties in case of making of the performances for commercial use.

Moral Right of the Performer
Section 38B of the Act provides that the performer of performance shall, independently of his right after assignment, either wholly or partially of his right, have the right:

(1) To claim to be identified as the performer of his performance except where omission is dictated by the manner of the use of the performance; and

(2) To restrain or claim damages in respect of any distortion, mutilation, or other modification of his performance that would be prejudicial to his reputation. It may be noted that mere removal of any portion of performance for the purpose of editing, or to fit the recording within a limited duration, or any other modification required for purely technical reasons shall not be deemed to be prejudicial to the performer’s reputation.

(b) Modern society relies heavily on computer technology for multiple reasons. Without software technology, computer hardware cannot be operated, and therefore the software and hardware work in tandem in today’s information society. Therefore, considering the heavy reliance placed by different businesses on the i/se of software for its different business purposes the intellectual property protection granted to software becomes not just important but also very crucial to the software industry as well as other industries.

A Software patent is generally defined as a patent that protects some programming technique. The Foundation for a Free Information Infrastructure (FFII) has defined a software patent as being a “patent on any performance of a computer realized by means of a computer program.” The intellectual property law protection with respect to computer software has been highly debated both at the national as well as international levels.

The following are the important issues concerning software patents:

1. Whether software patents should be allowed, and if so, where the boundary between patentable and non-patentable software should lie;
2. Whether the inventive step and non-obviousness requirement is applied too loosely to software; and
3. Whether patents covering software discourage, rather than encourage, innovation.

Most countries place limitations on the grant of patents on inventions involving software as the ultimate product. Also, there is no settled definition of a software patent laid down under the law. For instance, U.S. patent law excludes “abstract ideas”, and this has been used to refuse the grant of patent to products involving some software. In Europe, “computer programs as such” are excluded from the phenomenon of the patent. The Patent laws in several countries favor the grant of patent protection for software innovations. Such countries include the USA, Australia, and Singapore, to name a few. However, many other countries, which include India and European nations, have more stringent laws concerning the grant of patent protection to software innovations.

Most of the jurisprudence relating to software patents emanates from the United States, which is considered the cradle of software patents. In the landmark decision of the US Supreme Court in Diamond v. Thehr, (1981), the court ordered the Patent Office to grant a patent on an invention even though computer software was utilized in it. Indian Patent legislation offers patent protection to products and processes (if they satisfy the requirements of patentability) except the non-patentable subject matter laid down in sections 3 and 4 of the Patents Act, 1970. As per section 3(k), it is clearly indicated that ‘a mathematical or business method or a computer program per se or algorithms’ are non-patentable inventions.

One may also refer to the recently released Manual of Patent Office Practice and Procedure (2011) which clarifies ambiguities in respect of patentability. Even the manual does not provide for the patentability of computer software in combination with hardware. The text in the Manual is reproduced below. If the claimed subject matter in a patent application is only a computer program, it is considered as a computer program per se and hence not patentable. Claims directed at computer program products are computer programs per se stored in a computer-readable medium and as such are not allowable. Even if the claims, inter alia, contain a subject matter which is not a computer program, it is examined whether such subject matter is sufficiently disclosed in the specification and forms an essential part of the invention.

In India, Computer Software is protected by the Copyright Law as applicable to literary and artistic works. Computer software on the other hand is protected by copyright as applicable to literary and artistic works. A computer program is therefore dealt with as a literary work and the law and practice in relation to literary works will apply to computer programs. Section 2(o) of the Copyright Act, 1957 lays down that the term ‘literary work’ includes computer programs.

(c) Copyright law confers upon the owner of the work a bundle of rights in respect of reproduction of the work and the other acts which enable the owner to get financial benefits by exercising such rights. If any of these rights relating to the work is carried out by a person other than the owner without the license of the owner or a competent authority under the act, it constitutes an infringement of copyright in the work. Since copyright is granted for a limited period, there will be no infringement if the reproductions of the work or other acts concerned are carried out after the term of the copyright has expired. The exclusive rights conferred on the owner depending on the nature of the work in which copyright subsists. Accordingly, the type of acts that will constitute infringement will also depend on the nature of the work.

Any person who without authorization or assent of the copyright owner, exercises the rights in respect of the work which is the subject matter of copyright, or does anything which is the sole right of the copyright owner, commits an infringement of the copyright (Kartar Singh Gianiv. Ladha Singh & Others, AIR 1934 Lah 777). Thus, if the reproduction of the work is carried out after the expiry of the copyright term the said act will not amount to infringement of copyright. Section 51 of the Copyright Act contemplates situations where copyright in a work shall be deemed to be infringed. As per the section copyright in a work shall be deemed to be infringed: (a) when any person, without a license granted by the owner of the copyright or the Registrar of Copyrights or in contravention of the conditions of a license so granted or of any condition imposed by a competent authority does:

1. Anything for which the exclusive right is conferred upon the owner of the copyright, or

2. Permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware ‘ and had no reasonable ground for believing that such communication to the public would be an infringement of copyright, or

3. When any person: (i) makes for sale or hire or sells or lets for hire, or by way of trade display or offers for sale or hire, or (ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or (iii) by way of trade, exhibits in public, or (iv) imports into India, any infringing copies of the work. However, the import of one copy of any work is allowed for private and domestic use of the importer. Section 51 clarifies that the reproduction of literary, dramatic, musical, or artistic work in the form of a cinematograph film shall be deemed to be an ‘infringing copy.

The principle of conditional grants to proprietary rights in any intellectual property is to promote the public interest. This is universally recognized and incorporated in the intellectual property system. Protection and enforcement of intellectual property rights must:

1. Be conducive to social and economic welfare;
2. Safeguard an individual’s fundamental rights; and
3. Promote commerce, competition, and innovation.

In Copyright Laws exceptions and limitations are provisions which in public interest permit the use of copyrighted works without prior authorization or a license from its owner. Generally, exceptions and limitations to copyright are subject to a three-step test set out in the Berne Convention for the Protection of Literary and Artistic Works. Briefly stated, the Berne Convention provides that an exception or limitation to copyright is permissible only if:

1. It covers special cases
2. It does not conflict with the normal exploitation of the work; and
3. It does not unreasonably prejudice the legitimate interests of the author.

Statutory Exception
Section 52 (1) Copyright Act contains around 33 categories of exceptions wherein the act committed shall not amount to an infringement of copyright. The objective behind laying down this exception is to promote the public good and thus enable the reproduction of the work for certain public purposes, and for the encouragement of private study, research, and promotion of education.
The list of acts that do not constitute an infringement of copyright is:

(1) A fair dealing with any literary, dramatic, musical, or artistic work, not being a computer program, for the purposes of-

• Private or personal use, including research;
• Criticism or review, whether of that work or of any other work;
• Reporting of current events and current affairs, including the reporting of a lecture delivered in public;
  The explanation appended therewith further clarifies that storing of any work in any electronic medium including the incidental storage of any computer program, which is not itself an infringing copy for the said purposes, shall not constitute an infringement of copyright.

(2) The reproduction of a literary, dramatic, musical, or artistic work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding;

(3) The reproduction or publication of a literary, dramatic, musical or artistic work prepared by the Secretariat of a Legislature or, where the Legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;

(4) The reproduction of any literary, dramatic or musical or artistic work in a certified copy made or supplied in accordance with any law for the time being in force;

(5) The reading or recitation in public of reasonable extracts from a published literary or dramatic work;

(6) The publication is a collection, mainly composed of non-copyright matter, bona fide intended for instructional use, and so described in the title and in any advertisement issued by or on behalf of the publisher, of short passages from published literary or dramatic works, not themselves published for use in which copyright subsists. Provided that not more than two such passages from works by the same author are published by the same publisher during any period of five years.

(7) The reproduction of a literary, dramatic, musical, or artistic work-

• by a teacher or a pupil in the course of instruction; or
• as part of the questions to be answered in an examination; or
• in answers to such questions;

(8) The performance, in the course of the activities of an educational institution, of a literary, dramatic or musical work by the staff and students of the institution, or of a cinematograph film or sound recordings if the audience is limited to such staff and students, the parents and guardians of the students and persons connected with, the activities of the institution or the communication to such an audience of a cinematograph film or sound recording.

(9) The performance of a literary, dramatic or musical work by an amateur club or society, if the performance is given to a non-paying audience, or for the benefit of a religious institution;

(10) The reproduction in a newspaper, magazine or another periodical of an article on current economic, political,- social or religious topics, unless the author of such article has expressly reserved to himself the right of such reproduction;

(11) The storing of a word in any medium by electronic means by a non-commercial public library, for preservation if the library already possesses a non-digital copy of the work;

(12) The making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plan) by or under the direction of the person in charge of a non-commercial public library for the use of the library if such book is not available for sale in India;

(d) The owner of the copyright can transfer his rights to any other person by way of either assignment of the copyright or by issuing licenses. The owner of the copyright in an existing work or the prospective owner of a copyright in a future work may assign to any person the copyright as per sections 18 and 19. Sections 17 and 18 of the Copyright Act, 1957 lay down provisions as to in whom the copyright vests. Section 17 mentions that if a work is done by an author for consideration by a publisher, the copyright in it would normally vest in the publisher subject to any contract to the contrary.

Section 18 states that the owner of the copyright in an existing work or the prospective owner of future work may assign the copyright to any person, either wholly or partially and either generally or subject to limitations and either for the whole of the copyright or any part thereto. Modes of Assignment: Section 19 of the Act provides that an assignment of copyright should be in writing signed by the owner of the copyright or by his duly authorized agent. Mere acceptance of remuneration or delivery of manuscript does not constitute an assignment of copyright. The oral assignment is invalid and ‘it is impermissible in law (K.A. Venugopala Setty v. Dr. Suryakantha U. Kamath AIR 1992 Kar 1).

This section requires that the assignment should be in writing signed by the assignor or by his duly authorized agent. The assignment of copyright should specify the assigned work, rights including and the duration, territorial extent of assignment and the amount of royalty or any other consideration payable to the author or his legal heirs. In case the assignee does not exercise his rights within a period of one year from the date of assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of said period, unless otherwise specified in the assignment. The assignment of copyright in any work contrary to the terms and conditions of the rights already assigned to a copyright society in which the author of the work is a member is void.

The Assignment of copyright in any work to make a cinematograph film does not affect the right of the author of the work to claim an equal share of royalties and consideration payable in case of utilization of the work in any form other than for the communication to the public of the work, along with the cinematograph film in a cinema hall.

Amendment of 2012 to Section 19
Three clauses have been added with respect to the assignment to Section 19 which basically says that royalty has to be paid to the authors whose work has been exploited in a cinematographic film other than by way of exhibition of the film in a cinema hall. This simply means that the authors are entitled to the subsequent royalties which may arise in the course of further exploitation of the film which includes their work. For example, they will also be entitled to a royalty for satellite rights, home video, internet, right, etc. This again strengthens the position of the authors of the work are the actual owners of anything apart from their work in the cinematographic film. The second clause that has been added is for sound recording and is the same as above. What the authors can do is register their work with a copyright society and thereafter license it to whoever they like Licenses.

A license is different from an assignment as the licensee gets certain rights subject to the conditions specified in the license agreement but the ownership of those rights vests solely in the owner of the copyright. On the other hand, in case of an assignment, the assignee becomes the owner of the interest assigned to him. The original owner of the copyright transfers all his/her rights to the assignee and retains none.
A license can be voluntary or compulsory.

Voluntary Licensing
Section 30 of the Indian Copyright. The act defines what is meant by voluntary licensing. According to Section 30 the owner of the copyright in any existing work or the prospective owner of the copyright in any future work may grant any interest in the right by license in writing signed by him or by his duly authorized agent.

Therefore, the copyright owner of any existing work or the prospective owner of any future work can grant any interest in the right by way of a license. However, it has to be borne in mind that in case of future work, the license will come into force only when the work comes into existence. Compulsory Licensing: Compulsory license is the term generally applied to a statutory license to do an act covered by an exclusive right without the prior authorization of the right owner. Compulsory licensing allows for the use of protected (in this case, copyrighted material) without the prior permission of the owner of the right.

(e) In the present problem the defendant put forward the following grounds before the High Court to buttress his case that there is no infringement of copyright:

1. The Plaintiff themselves admitted that they saw the posters of the movie in January 2016 itself but waited till March 2016 for the trailer. Sardar Rubber Singh was scheduled for release on 8th April 2016 and the suit was filed on 24,h March 2016 at the very last » minute. This shows that the plaintiff’s intention was to try to cause loss and damage to the defendant.

2. Plaintiff and Defendant had entered into are agreement whereby the assignee obtained an absolute right to remake the film in Telugu language only. Further, under the agreement, the Assignee was conferred an absolute right to exploit the remade version of the film in the Telugu language only all over the world in all dimensions commercially as well as non-commercially.

3. Defendant’s contended that the name of the movies is different^ the Portrayal is different, the stylization is different, the locales were different and so were his mannerism, qualities and, most of all, his core value system, his moral compass; whereas Bulbul Pandey is fearless and corrupt, Rubber Singh is though fearless but honest. This was an adaptation developed distinctively. The script or the storyline underlying the character of Rubber Singh is said to have been developed by Mr. Sayan Kalyan himself, and thus he has independent copyright over the same. Further, they informed that the agreement of 21st January 2011 relates not to a license but to an assignment which is a very different thing from a mere license.

4. Copyright vested with the Defendants within the meaning of Section 14(a) and (d) respectively of a literary work and a cinematographic film. The rights in the Rubber Singh character are wholly distinct from the rights in the Bulbul Pandey character. The rights in the Rubber Singh character vest in and only in the defendants.

5. Further, the defendants claim that the producers had copyright in the cinematograph film but they also owned the rights in the script and that it was the entirety of all of this material that was assigned.

6. The setting of the two films is different and while the Jabangg films are set in North India the Rubber Singh films are in the Andhra/Telangana region and that there are many other points of distinction too. Taking into account the provisions of the Copyright Act especially with reference to section 14 (a) to (d) and section 17 of the Act, in the present case, the Bombay High Court held that it is unable to find any reason in favor of the Plaintiffs on either a prima facie case or on the test of balance of convenience. As the result, the court refused to grant any ad-interim relief to the plaintiff. Hence the suit was dismissed and the judgment was passed in favor of the defendant.

Question 19.
Read the following case and answer the questions given at the end:
The plaintiff, Super Cassettes Industries, contended before the High Court that the defendant, SCN Sujla Channel, a cable operator in Rajasthan was heavily using songs and film extracts to enhance its viewership. According to the plaintiff, in June 2015, when its executive captured on CD and DVD, the content being broadcast by the defendant, it realized that a major chunk of the content was copyrighted by the plaintiff and was broadcast without its consent.

Prominent examples of such content included such famous songs as Tere Mast Mast do Nain (Dabangg) Dhinkaq Chika (Ready), and Sadi Gali (Tanu Weds Manu). The plaintiff contended that it apprised the defendant of its public performance licensing scheme under which it could legally broadcast the infringing content and also sent it a cease and desist notice in August 2015 by which the defendant was requested to seek the requisite license and pay damages worth ₹ 25 lakhs for the infringement of the plaintiff’s copyright.

Since the defendant did not respond to the notice, the plaintiff contended that the defendant’s conduct fell within the four squares of Section 51 of the Copyright Act and that the plaintiff was entitled to the grant of damages. Since the licensing fee charged by the plaintiff was 18 per month per .household, and the defendant had thousands of connections, the plaintiff argued that it was entitled to damages worth 11 crores in addition to a rendition of accounts of profit and delivery of the infringing tapes.

The Delhi High Court noted that the plaintiff had been able to successfully establish that, since it was the owner of copyright in the concerned content, its rights had been violated by the defendant within the meaning of Section 51 of the Copyright Act. Further, since the defendant did not indicate the names of the author or owner of copyright in the films and sound recordings, broadcast by it, the Court held that it had failed to comply with the statutory command engrafted in Section 52A of the Act. In the light of the fact that the defendant had infringed the plaintiff’s rights in a deliberate and calculated fashion and did not even bother to contest the proceedings instituted by the plaintiff, the Court held that the grant of damages was warranted.

Thereafter, the Court articulated the proposition that the aim of such damages would not only be to penalize the wrongdoer but also to recompense the plaintiff for the loss suffered by it. While the Court acknowledged the fact that the plaintiff’s prayer for the grant of damages has gone unrebutted, it noted that it had not put forth any material that could assist the Court in ascertaining what illegal revenue was earned by the defendant by virtue of the infringing content. Holding that the plaintiff’s rate card which indicated the license fee that it charged cable operators for the broadcast of its content was an indicator of the profits that it could have earned, the Court held that the same could not take the plaintiff’s case very far in light of the fact that its estimate of ₹ 1 crore was founded only upon its bald assertion that the defendant had thousands of customers.

Therefore, the Court asked the plaintiff to put forth cogent and reliable evidence to indicate the amount of compensatory, damages that it was entitled to owing to the defendant’s conduct and asked the defendant to share with the plaintiff its accounts of profits on the basis of which the plaintiff could compute the same. Finally, it granted punitive damages worth 15 lakhs in the interim.
Questions:

1. Does the Copyright Act envisage the grant of punitive damages? Does the High Court have a legal basis for granting punitive damages?
2. Having asked the plaintiff to put forth cogent and reliable evidence to indicate the number of compensatory damages that it was entitled to, was the Court correct in awarding interim damage of ₹ 5 lakhs?
3. Cite three case laws on grant of damages in IP infringements cases (no need to describe them). What provisions of the Copyright Act apply in the instant case of Super Cassettes?

Answer:
(1) The Copyright Act does not envisage the grant of punitive damages by way of remedies. There is no specific provision in the Act to award the same. But the Act provides for certain remedies like grant of injunction, damages, and accounts in case there is an infringement of a right. The Court’s award, in this case, lacks the legal basis and is based on the string of precedents in which the Courts have created for themselves this power. The Courts would do well to acknowledge the absence of the jurisprudential basis for the grant of punitive damages, but yet in the interests of the owners of copyright, the Courts may be inclined to tread the path of awarding compensatory damages. At the same time, it is desirable that the Courts should insist on the plaintiff to provide a strong evidentiary basis before granting punitive damages.

The question of whether punitive damages should be awarded requires the consideration of whether the defendant’s misconduct ‘shocks the conscience, and has an element of ‘wilful and wanton disregard’, as punitive damages are known to be awarded only in extremely rare cases. In the case of Time Incorporated vs. Lokesh Srivastava, it was stated by the Honorable Court that, “the time has come when the Courts dealing actions for infringement of trademarks, copyrights, patents, etc. should not only grant compensatory damages but award punitive damages also with a view to discourage and dishearten lawbreakers who indulge in violations with impunity out of lust for money so that they realize that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them”.

Recently in the judgment of the Delhi High Court, the Court has fined one firm for software piracy. The suit was filed by Microsoft and Adobe. The firm was found guilty of using pirated software for commercial purposes without adequate licenses. Court has awarded the compensatory and punitive damages of ₹ 10 lakh to the firm. This is the

first-ever judgment by any Indian Court where punitive damages are also awarded. It is desirable that the Courts should insist on the plaintiff to provide a strong evidentiary basis before granting punitive damages,

(2) In the case at hand, the High Court of Delhi has noted that the plaintiff has been able to successfully establish that, since it is the owner of copyright in the concerned content, its rights have been violated by the defendant within the meaning of Section 51 of the Copyright Act. Further, since the defendant did not indicate the names of the author or owner of copyright in the films and sound recordings broadcast by it, the court has held that it had failed to comply with the statutory command engrafted in Section 52A of the Act.

Upon observing that the defendant has indeed infringed the plaintiff’s rights in a deliberate and calculated fashion and did not even bother to contest the proceedings instituted by the plaintiff, the court held that the grant of damages was warranted. Thereafter, the court articulated the proposition that the aim of such damages would not only be to penalize the wrongdoer but also to recompense the plaintiff for the loss suffered by it. There are many valid reasons for the same and is also supported by the case law.

While the Court acknowledged the fact that the plaintiff’s prayer for the grant of damages has gone unrebutted, it noted that it has not put forth any material that can assist the court in ascertaining what illegal revenue was earned by the defendant by virtue of the infringing content. Holding that the plaintiff’s rate card which indicates the license fee that it charges cable operators for the broadcast of its content Is an indicator of the profits that it could have earned, the court held that the same could not take the plaintiff’s case very far founded only upon its bald assertion that the defendant has thousands of customers.

Therefore, the court asked the plaintiff to put forth cogent and reliable evidence to indicate the number of compensatory damages that it is entitled to owing to the defendant’s conduct and asked the defendant to share with the plaintiff its accounts of profits on the basis of which the plaintiff can compute the same. Finally, it granted punitive damages worth ? 5 lakh in the interim in favor of the plaintiff. But, it is difficult to fathom how the Court could have awarded punitive damages while acknowledging the proposition that the plaintiff had failed to establish the number of compensatory damages that it was entitled to. Only after the Court ascertained the actual quantum of the losses suffered by the plaintiff on account of the defendants’ conduct could it use that figure to arrive at the number of punitive damages.

Read More: C Programming Lecture Notes

(3) Case-Law germane to the award of damages in IP Infringement cases are:

1. Times Inc. v. Lokesh Srivastava, 116 (2005) DLT 599: [2006] 131 , CompCas 198 (Delhi). Decided by High Court of Delhi on 3^rd January 2005.
2. Microsoft v. Kiran and another, 2007 (35) PTC 748 (Delhi): ILR ; (2007) Supp. (5) Delhi 200. Decided by High Court of Delhi on 7^th September 2007.
3. GlaxoSmithKline Pharmaceuticals v. Sarath Kumar Reddy G., 234 (2016) DLT 459: MANU/DE/2939/2016 Decided by High Court of Delhi on 2^nd November 2016.

The Delhi High Court’s verdict in GlaxoSmithKline Pharmaceuticals v. Sarath Kumar Reddy G can serve as a loadstar for the courts faced with a prayer for the grant of damages in IP infringement cases. In that verdict, the Court effectively safeguarded the plaintiff’s interest by J scrutinizing the prayer for the grant of damages by applying the same evidentiary standards that it applied for the grant of other reliefs. The provisions of the Copyright Act applicable in the Super Cassettes case are Sections 51 and 52A thereof.

CS Professional Intellectual Property Rights Laws and Practices Notes