INTELLECTUAL PROPERTY RIGHTS
COPYRIGHT
Copyright is an exclusive right given to or derived from a work or expression made by an individual. Copyright subsist in
Nature and meaning
Copyright is an incorporeal right in nature i.e it cannot be seen or handled but exist only in contemplation. The basic intention of creating copyright was to give the rightful ownership to the person responsible for the creation of the work as he is the owner of the property ,only he can dispose the same by his own will. Copyright is an intellectual property as it originates in the mind of the person then is reduced to material form. The most important thing to remember is that “copyright subsist only and only in work which is reduced in material form and not in mere ideas and thoughts which exists in a man’s brain”. Copyright is an exclusive right for the person which excludes others to use or copy the same work or other acts which under copyright law can only be done by him. Copyright is limited in time. Unlike other physical property rights copyright exist only for a limited period and enters into public domain on expiration which makes it a public property free of any hindrance from being used. The Copyright Act, 1957 contemplates the copyright laws in India. The copyright being governed by a statutory provision not only gives an exclusive right to the owner but also maintains balance for the interest of the public by imposing certain statutory limitations. These limitations on the above rights are
Copyright law in India limits the duration of copyright to the life of the author and 60 years after his death referred as 60 years pma i.e.” post mortem auctoris”. After the expiration of the duration it passes on to the public as a public property free to be used from any limitation.
The doctrine of fair use was another limitation for the author as it means that certain use of the copyright work is legal and permitted under the term “Fair use”. Fair use is the free use like use for the purpose of research, teaching, studying, and reporting the event etc.
SCOPE OF PROTECTION
Under the copyright act 1957, copyright subsist in the original literary, artistic, dramatic, musical, cinematographic films, sound recording according to section 13 of the act.
Section 13 of the act also states that that copyright shall not subsist in the above work if section 40 and 41 applies dealing with international copyright but copyright will exist in such case if -
i) in case of published work----the work was first published in India or if the work is published outside India- the author is a citizen of India at the date of such publication or if author is dead then at the time of his death was a citizen of India
ii) In case of unpublished work except work of architecture----the author at the time of making of the work is a citizen of India or domiciled in India.
iii) In case of work of architecture—the work is located in India.
The explanation states that where work is of joint authorship, then the above conditions needs to be satisfied by each of such authors.
Sub section (3) of section 13 states that copyright shall not subsist-
i) In a cinematograph film if the substantial part of the film is the infringement of copyright in any other work.
ii) In a sound recording made for a literary, dramatic or musical work where such work itself is in infringement of copyright.
Sub section (4) states that copyright in a cinematograph film or sound recording shall not affect the separate copyright in other work done related to such film or recording.
Sub sec (5) states in work of architecture, copyright shall exist in design and artistic character and not in process of construction of the same.
Section 13 is to be read with section 2 (b),(c),(f),(h),(o),(xx) which defines the work in which copyright subsist.
TEST OF ORGINALITY
According to section 13 (1)(a) copyright exist in the work which is original literary, dramatic, artistic or musical. Therefore the work must be original which means must not be copied from other work. Work may be original if the author has applied his own skill and labour and not merely copied the existing material and originality exists even if the author has drawn on knowledge which is common to himself and others or has used existing material but his own skill and labour must be used exclusive to him.
In Eastern Book Co. v Navin J Desai(2001 PTC 57(Del) the Delhi High Court examined the requirement of originality in the literary work. The plaintiff was the publisher of CD-ROM Supreme Court Cases. The allegation made was that the competitors THE LAWS and GRAND JURIX have infringed the copyright in their work which is compilation of the supreme court judgments and the head notes. The plea of the plaintiff is that judgments were copy edited before publishing which includes correcting errors in typing, Para numbering, citation of cases, applying comas and full stops which includes skill and labour thus copyright subsist in such work. The court held that no copyright exist in the judgments and it was in public domain and been published once and the copy editing work is too trivial for copyright to exist. In respect of head notes the court held that if the plaintiff could establish that there was originality and intellect was put in making the head notes, copyright shall exist but the defendant undertook to ensure that head notes copyright was not infringed thus no order was passed.
The judicial decisions has extended the list of work on which copyright exist such as books ,school textbooks, question papers set for examination, law reports, application and other forms, list of bills, catalogues etc.
In Anil Gupta v Kunal Dasgupta (2002 25 PTC 1) the Delhi High Court observed for the first time that copyright subsist in concepts also. The allegation made by the plaintiff was that the plaintiff conceived the idea of producing a reality television program called swayamvar containing the process of match making for commercial purpose. He disclosed the idea to the defendant under a confidential agreement in 1998 but subsequently he observed that defendant has produced the same concept under the name shubha vivah which was infringement of the plaintiffs copyright. The court observed that an idea per se has no copyright. The novelty and innovation lies in the concept conceived by the plaintiff to combine a reality show with the subject like matchmaking and capable of being protected.
Section 2 (o) of the Act states that the literary work includes computer programmes, tables and compilations including computer read with section 2 (ffc) which defines computer programme.
therefore broadly defining the computer produced work there are 3 categories 1)work created using a computer(where a person uses a computer to obtain desired work) 2) work created by a computer(work where no human author is involved) 3) intermediate work(area between computer generated works and works made using programmed computer as a tool such as music)
Section 14 of the Act states the meaning of the copyright. The section states that copyright shall subsist in the following divided in 5 categories
Explanation of the section states that copy of work which has been sold once shall be deemed to be copy already in circulation as mentioned above.
In the famous case Fortune Films v Dev Anand AIR 1982 Cal 245, it was held that the performance of an actor in a cinematograph film does not fall within the definition of ‘cinematograph film’ to be found section 2 (f) and hence, is not protected under this act. Only the cinematograph film and its sound track enjoys protection.
Section 17 defines the term FIRST OWNER OF COPYRIGHT. The section states that the author of a work shall be the first owner of its copyright. The sections states that the author as defined under Section 2(d) of the Copyright Act,1957 shall be the first owner of copyright but there are certain exceptions to this law which are as under-
Then the said proprietor shall be the first owner of the copyright provided there is no agreement contrary to this. But the proprietor shall be the first owner of the copyright limited only to the publication of such work in newspaper, magazines or similar periodical or reproduction of the work for the purpose of it being published. And except of such copyright the first owner shall be the author himself in all other respects.
Such person who has given the consideration shall be the first owner of the copyright.
c) in case of any work on which copyright subsist
Then the employer shall be the first owner of the copyright.
cc) in case of an address or speech delivered to the public
d) In case of a government work, the government in absence of any agreement to the contrary shall be the first owner of the copyright therein.
dd) in case of a work made or first published under the control or directions of any public undertaking ,in absence of any agreement to the contrary such public undertaking shall be the first owner of the copyright therein. Public undertaking means-
i) Undertaking owned or controlled by govt. or
ii) A govt. Company defined by section 617 of the companies act or
iii) A body corporate established by or under any central, provincial or state act.
e) In case of the work which is concerned with section 41 of this act, the international organization concerned shall be the first owner of the copyright therein.
Section 18, 19 states the right of an owner of copyright to assign the copyright and the mode of such assignment.
Section 18 states that the owner of a copyright in an existing work or a prospective owner of a future work can assign the copyright therein either wholly or partially and either generally or limited copyright for whole of copyright or part thereof. The owner of copyright who assigns copyright is called assignor and the person to whom assigned is the assignee.
Where the assignment of copyright is made then the assignee becomes the owner of the copyright of the part of work assigned to him and the assignor is the owner of copyright which has not been assigned.
The future copyright for future work shall come into existence when the work comes into existence and the future assignee includes his legal representative, if the assignee dies before the work comes into existence.
Section 19 states mode of assignment.
In the case AA Associates v Prem Goel(2002) 24 PTC 269, the plaintiff in this case acquired the sole and exclusive rights of distribution, exhibition and exploitation of the picture ‘mazboor’ within the territory of Delhi and Uttar Pradesh. The question was whether the distribution, exhibition and exploitation rights in Delhi and Uttar Pradesh includes telecast right as well. The court observed that the contract was limited by geographical indication specifically, and if the film is shown on Doordarshan there will be no geographical limitation as such. Therefore, once the plaintiff had entered into an agreement with geographical limitations it was obvious that it was confined only to theatrical rights in Delhi and Uttar Pradesh and did not include telecast rights.
TERM OF COPYRIGHT
Section 22 of the act states the term of copyright in published literary, dramatic and artistic work (except than in photographs)which is published during the lifetime of the author shall be for 60 years from the calendar year next to the year the author dies. And where the work is by joint authors then term shall start from the time the last author dies.
Section 25 states the term of copyright in photographs shall be 60 years from the year beginning next to the year in which photographs were published.
Section 26 states the term of copyright in cinematograph films shall be 60 years from the year following the year in which the film was published.
Section 27 states the term of copyright in sound recording as 60 years from the year next to the year recording was published.
Section 28, 28A, 29 states the term of copyright subsisting until 60 years from the year next to the year the work was published. Work being govt. Work, works of public undertakings, work of international organisation respectively.
Section 30 to 32B states that an owner of a copyright can give license granting certain interest in the right to copyright to another person.
(The law relating to the licensing can be read from the bare act of sections mentioned above but the concept of license can be understood as follows)
The term license is similar to the term assignment as read under section 18 and 19 yet there is a difference between the two. Careful reading of section 18 states that owner of copyright can transfer the copyright wholly or partially or generally or limitation while section 30 states that owner of copyright can grant any interest in the right. This means that in assignment the assignee becomes the owner of the copyright which is assigned to him but in license the licensee gets only specific interest in the right and does not become an owner.
In the case Gramophone company of India ltd v shanty film corporation (AIR 1997 Cal 63) the shanty film corp. which was the owner of the film ‘shatru’ had entered into an agreement with the gramophone company for the production and distribution of records of the film. Subsequently the shanty films permitted the defendant no.2 to publish cassettes. The plaintiff argued that since the defendant had assigned the production and distribution to him, the defendant cannot assign the same to any other person. But the defendant argued that there was no assignment of rights but only license to use the right.
The court observed that the intention of the parties whether it was an assignment or license should be gathered in the normal course from the writing and words used therein. If the word assignment is used in then the assignment in the normal course be accepted. In the event where the writing contains the clause that assignor retains some rights inspite of writing in relation to copyright then the same may be either partial assignment or license.
Sections 33 to 36A states the procedure followed by the copyright societies which can be understood from the bare reading of the sections. No elaborate explanation is required than the sections. These copyright societies are formed to help in enforcement of copyright with the benefits both to the owner of the copyright and the general public.
Section 37 states the broadcast reproduction rights. It states that every broadcasting organisation shall have a special right called the broadcast reproduction right in respect of broadcast. The term of such broadcast right shall be for 25 years from the year next to the year in which it is broadcasted.
Section 37 is to be read with section 39. Section 37(3) lays down the acts which shall be treated as the infringement of the broadcast reproduction rights to be read with section 39 which is an exception to section 37(3) as it states the acts not be infringing the broadcast reproduction right. Section 37(3) states the following acts if done without the license of the owner of the right during the continuance of broadcast reproduction right as infringement-
a) Re- broadcasts the broadcast, or
b) Causes the broadcast to be heard or seen by public on any payment, or
c) Makes any sound or visual recording of the broadcast, or
d) Makes any reproduction of such sound or visual recording where such recording was made without license or if license was taken it was taken for any purpose not granted under the license, or
e) Sells or hires or offers for sale or hire such above mentioned recording
While section 39 states the acts not deemed as any infringement of broadcast reproduction right or performers right (discussed below) as-
a) Making of any sound or visual recording for private use or bona fide teaching or research purpose, or
b) The use of any excerpts of broadcast or performance with fair dealing in the reporting of current events or bona fide review or research or teaching, or
c) Acts which have been adapted or modified which do not constitute infringement of copyright under section 52(this section enlists the acts which does not infringes the copyright)
Section 38 deals with the performers right read with section 2 (q) and 2(qq) which defines a performance and a performer.
Section 38 states that where any performer appears in a performance, he shall have a special right to be known as performers’ right. This performer’s right shall exist for 50 years starting from the year next to year in which performance is made.
Section 38(3) states the infringement of the performer’s right as performing following acts by any person without the consent of the performer during the continuance of the performer’s right-
a) Making sound or visual recording of the performance or
b) Reproducing the sound or video recording which was either made without performers consent or where the consent was made for a different purpose or for purpose different than as mentioned in section 39.
c) Broadcast of the performance except according to section 39 or re-broadcast of performance by same broadcasting organisation of an earlier broadcast which did not infringe the performer’s right.
The main part of the section is clause (4) which states that where the performers consents to incorporation of his performance in a cinematograph film then the provision of section 38 shall have no application.
Procedure of protection
The procedure of protection of copyright does not necessarily mean registration of copyright is a mandatory requirement to for its enforcement or for institution of an infringement suit. However, evidence is always better and of great value in a suit. It is therefore recommended to register the copyright. The process of registration is discussed in the act under section 9 to 12 and section 44 to 50.
Section 9 states that a copyright office shall be formed for the purpose of this act which shall be under the control of a registrar of copyright under the direction of the central government.
Section 10 states that the central govt. shall appoint one registrar and one or more deputy registrar.
Section 11 states the establishment of a copyright board by the central government. This copyright board shall consist of one chairman and members between 2 to 14(not less than 2 not more than 14)
The qualification required for the appointment of a chairman is that either he should have been a judge of high court or is qualified to be appointed as the judge of the high court. While the registrar of the copyright as discusses under section 10 shall be the secretary of this copyright board.
Section 12 states the powers and the procedure of the copyright.
In the case Glaxo operations UK Ltd v Samrat Pharmaceuticals AIR 1984 Del 265 it was held that the copyright exists whether the registration is done or not, and that the registration is mere piece of evidence.
Section 44 to 50 deals with the registration of the copyright.
Section 44 states that a register of copyright shall be maintained at the copyright office which shall be used to enter the names or titles of the works and names and address of authors, publishers and owners of the copyright and other particulars.
Section 45 states that the person interested in the copyright in any work shall make an application with the prescribed fee to the registrar for entering the particulars of the work in the register.
The registrar shall after holding the required inquiry enter the particulars in the register of the copyright.
Section 46 there shall also be kept indexes of the register of copyright at the office.
Section 47 states that the register of copyright shall always be open for inspection and any person can extract any information from such register by making prescribed payment.
Section 48 states that the register is the prima facie evidence of the particulars entered and the extracts from the register or documents purporting to be the copies therefrom certified by the registrar and sealed with the seal of the office of copyright shall be admissible in all courts without further proof or production of the original.
Section 49 and section 50 deals with the correction of entries in the register of copyright and rectification of register by copyright board respectively.
INFRINGEMENT OF COPYRIGHT
Infringement of copyright is defined as when the work which has been protected by copyright is used by another person than the owner of the copyright. The Indian law on copyright states certain acts which do not form infringement of copyright which can be pleaded in defense by a defendant in a suit for infringement of copyright.
One of the surest tests to determine clearly whether there is any infringement or not is the ‘lay observer test’. It lays down that where a reader or a viewer after reading or viewing both works can clearly make out or is of opinion and is under an unmistakable impression that the subsequent work is the copy of the first one.
Section 51 states the acts which constitute infringement of copyright as –
a) When a person, without the license granted by the owner or registrar of copyright or in contravention of conditions of license or a competent authority does the following-
i)does anything which is the exclusive right of the owner of copyright conferred by this act, or
ii) Where the communication of the work to public is infringement of copyright and the person for profits permits any place to be used for such communication unless he was not aware or had no reasonable ground to believe that such communication is not permitted.
b) When any person makes infringing copies of the work-
i) by making for sale or hire or lets for hire or lets for hire
ii) for the purpose of trade or to such extent so as to affect the interest of the owner
iii) public exhibition of infringing copies by way of trade or
iv) importation of infringing copies in India
The explanation of this section states that reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an infringement copy.
In the case Supercassette Industries v Nirulas Corner House P Ltd [148 (2008) DLT487], the act of a hotel proprietor making to his guests available a public performance by presentation of a film or audio on the grounds that the guests were paying for the accommodation and the benefits went with it without license from the owner amounted to infringement of copyright.
D. Narayan Rao v Prasad (1979)2APLJ231, the defendant had borrowed a part of the speech which was only for two and a half minutes in a 3 hour long movies ,yet it was held that a substantial part of the speech had been copied.
Section 52 is an exception to 51. It states the acts which do not constitute infringement which are-
And as provided by the section.
In the case Academy of general edu.,manipal v B. Malini Mallaya AIR 2009 SC 1982, it was observed by the court that when a fair dealing is made, inter alia, of a literary or dramatic work for the purpose of private use the same is within the ambit of section 52 of the act.
REMEDIES AGAINST INFRINGEMENT
Where the rights of the owner of copyright are infringed, the owner has two kinds of remedies under the Indian law of copyright. The three kinds of remedy are-
CIVIL REMEDIES
Section 55 states that where the copyright in any work is infringed, the owner of the copyright is entitled to the all such remedies except as provided by this act by way of
Provided if the defendant proves that at the date of infringement, he was not aware or had no reasonable ground to believe that copyright subsist in the work, the plaintiff shall have no other remedy than an injunction in respect of infringement and a decree for the whole or part of the profit made by the defendant in the sale of the infringed copies.
In P. Lakshmikantham v Ramakrishna Pictures AIR 1981 AP 224
It was observed that the remedy of injunction can be joined with the remedy of profit and accounts, but the remedies of account and profit can never be joined in any case.
CRIMINAL REMEDIES
SECTION 63 provides the criminal remedies. It states that any person who knowingly infringes or abets the infringement of
Shall be punishable with
Section 70 states the cognizance of offences. The section states that no court inferior to that of a metropolitan magistrate or a judicial magistrate of first class shall try any offence under this act
PROCEDURE FOR PROTECTION
The procedure for protection under the patents act is dealt under chapter III which lays down the law regarding the application for patent, chapter IV dealing with the publication and examination of application, chapter V dealing with opposition to grant of patent, chapter VIII dealing with grant and sealing of patent and rights conferred thereby and chapter XIV dealing with patent office and its establishment.
Though the procedure layed down in the act is detailed but there are important sections in the act which need to be understood to get the layout of the procedure followed
Chapter XIV provider patent office and its establishment
Section 73 speaks that the controller general of patents, designs and trade marks appointed under section 3 (1) of the trade marks act, 1999 shall be the controller of patents for the purpose of this act. Under the superintendence and directions of the controller, the central govt may appoint as many examiners and other officer as it thinks fit.
Section 74 establishes patent offices as central govt may specify with braches as specified by central govt having its seal.
Section 75 restricts the employees and officers of the patent offices to acquire or take any interest or rights in the patent issued except by way of inheritance.
Section 76 restricts the officers or employees to furnish information on matter dealt under the act or to prepare or assist in preparation of the document required to be lodged in the patent office or conduct research in the records of the patent office unless required by this act, written direction by central govt or controller or order of the court.
Now after the concept of establishment of patent office comes the application to these offices which are dealt under chapter III
Section 6 states the persons entitled to apply for patents are-
In the case Shining Industries v Shri Krishna Industries, AIR 1975 ALL 231
It was observed that a firm can also apply as an assignee for patent
Section 7 states the application for patent shall be for one invention only to be filed in the patent office with complete specifications
Section 9 of the act basically provides the option to file a provisional application which means where an invention is not complete; the inventor may file provisional specifications and protect the priority of applying for grant of patent. But the law makes it imperative to file complete specification within 12 months of filing the provisional specification.
Section 10 discusses the content of specifications whether complete or provisional. While section 11 states the priority dates of claims of a complete specification r/w section 2 (1) (w) giving meaning to priority date as by section 11.
Chapter IV of the act deals with the publication and examination of application.
Section 11A states that the application for patent shall not be open for public till 18 months from date of filing of the application or the date of priority whichever is earlier. After the stated period it shall be published in the official gazette. The publication shall include the particulars of the date of application, number of application, name and address of the applicant and an abstract. It is to be r/w with section 35 stating the secrecy directions relating to inventions relevant for defence purpose.
Section 11B states the examination of the application only when the applicant or the interested person makes a request for examination within 48 months from date of filing of the application. Read section 11B with section 12 stating the examination procedure.
According to section 23 of the act where the controller accepts the complete specification shall give notice of it to the applicant and shall advertise in the official gazette of such acceptance which shall be open for public inspection.
Chapter V provides the opposition to grant of patent.
Section 25 of the act enables a person to oppose the grant of patent within 4 months from the date of advertisement of the acceptance of a complete specification on the following grounds (refer the act )-
a. wrongful obtaining
b. prior publication
c. prior claiming
d. prior public knowledge or public use
e. obviousness or lack of inventive step
f. not a patentable invention
g. invention not sufficiently and clearly described
h. failure to disclose information regarding foreign application
i. Conventional application time barred
j. non disclosure of origin of biological material
k. prior knowledge in local or of indigenous community
On receipt of the notice of opposition, the controller shall constitute a board to be known as the opposition board consisting of such officers as he may determine. The board shall conduct the examination in accordance with prescribed procedure.
The controller shall on receipt of the recommendation of the opposition board and after hearing the applicant and opponent shall order either to maintain or to amend or to revoke the patent.
In a recent case of Novartis v Cipla (593/CHENP/2005)
IN THIS CASE the Cipla filed an opposition of grant of patent against Novartis. The controller chose the issue of novelty in favour of the applicant, and issues of inventive step and non inventiveness in favour of the opponent and concluded that the claims were obvious under section 3 (e) of the Indian patent act.
Chapter VIII states grants and sealing of patents and rights conferred thereby
Section 43 deals with grant and sealing of patent stating that where a complete specification in pursuance to an application for a patent has been accepted, the patent shall be granted and controller shall cause the patent to be sealed by a seal of the patent office and on such date it shall be entered into the register.
Under section 46 of the act the patent shall be granted only for one invention only.
Section 47 must be read as it provides certain conditions on grant of the patent, r/w section 48.
Section 48 grants rights to patentee. It states that the patent granted shall confer the following rights on the patentee-
The most important section is the section 53 stating the term of the patent granted. The term of patent shall be 20 years from the date of filing of the application for the patent. It also states that where the patentee fails to pay a renewable fee within prescribed time where required shall cause the patent to cease. The time limit can be extended to 6 months.
ENFORCEMENT AND REMEDIES
Once a patent is granted, the patentee may enforce it by serving a cease and desist notice on the infringers or filing a lawsuit against him. Cease and desist notice means to cease that is discontinue and desist means not to take up later again. In the lawsuits the defendant may counter the allegation of infringement of the patent by challenging and attacking the validity of the patent so granted.
Any unauthorized making, using, offering for sale, selling of any patented invention within a jurisdiction of any patented invention can be termed as infringement of the patent.
Section 104 to 114 deals with remedy in case of patent infringement
Section 104 states that that no suit shall be instituted for infringement of a patent in any court inferior to a district court having jurisdiction to try the suit. It also states that where a counter claim for revocation of a patent is made, the suit shall be transferred to the high court for decision.
Section 108 states the reliefs granted in suit for infringement. The court may grant in any suit for infringement an injunction and at the option of the plaintiff, either damages or an account of profit. The court may also order the subject matter of the infringing shall be seized, forfeited or destroyed without payment of compensation
Under section 109 the licensee who has been granted a license of patent by the inventor shall have the right to institute any suit for infringement of the patent like the patentee.
Section 111 states that the court shall not grant any damages or account of profit in a suit for infringement against the defendant who proves that on the date of infringement of the patent he was no aware and had no reasonable ground for believing that the patent existed
One of the most vital parts of the patent law in India is that under section 115 of the patent act, the court appoints a scientific adviser to assist the court on a point of fact or of opinion in any suit for infringement of patent
Chapter XX of the patent act envisages penalties
If any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with fine that may extend to Rs one lakh under Section 120
Section 118 and 119 is to be read for penalties
Appeals lie from decision, order or direction of the controller or central govt. Under section 15,16,17,18,19,20,25(4),28,51,54,57,60,61,63,66,69(3),78,84(1)-(5),85,88,91,92 and 94 of the act
Copyright 2014 @ Dejuris Consultants
Dejurislawnotes@gmail.com
Pranam.pankaj@gmail.com