Monthly Archives: September 2016

Interplay of section 51 and 52 of the Copyright Act, 1962: Delhi High Court judgement

This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon’ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962. This case tries to draw the line between the rights of the author, publishers of the work and competing rights of society.

The case was between THE CHANCELLOR, MASTERS & SCHOLARS OF THE UNIVERSITY OF OXFORD & ORS. Vs. RAMESHWARI PHOTOCOPY SERVICES & ANR. In this case, five plaintiffs THE OXFORD UNIVERSITY PRESS, CAMBRIDGE UNIVERSITY PRESS U.K., CAMBRIDGE UNIVERSITY PRESS INDIA PVT LTD., TAYLOR & FRANCIS GROUP U.K., and TAYLOR & FRANCIS BOOKS INDIA PVT. LTD. filed a suit against RAMESHWARI PHOTOCOPY SERVICE and UNIVERSITY OF DELHI for the relief of permanent injunction from infringing the copyright of the plaintiffs in their publications by photocopying, reproduction and distribution of copies of plaintiffs‘ publications on a large scale and circulating the same and by sale of unauthorised compilations of substantial extracts from the plaintiffs‘ publications by compiling them into course packs / anthologies for sale. Amongst other arguments, defendant replied with claiming that their activities fall under section 52 of the Copyright Act, 1962 and hence do not constitute infringement.

The article does not intend to discuss all the arguments on the behalf of the plaintiff, defendant and views of the judges on the same. Instead, this article intends to discuss effect of the judgment on the interplay between section 51 which declares certain acts as infringement of copyright and section 52 of the act which allows certain acts to be done without falling within the purview of infringement. Article also intends to discuss the scope of educational use allowed under copyright act in light of this landmark judgement.

In September, 2012, University of Delhi (DU) was ordered by the court to examine the proposal to obtain a license from Reprographic Rights Organisation such as IRRO for preparing course packs was passed. By the same order, court also ordered defendant No.1 to maintain proper accounts of sales and to file a fortnightly statement before the court. In reply, DU submitted that question of obtaining licenses arises only if their activity causes infringement of the plaintiffs’ right. Court accepted the contention of the DU and decided on whether activities of defendant fall under infringement.

Vide order dated 17th October, 2012, the defendant No.1 was restrained from making, selling course packs / re-producing the plaintiffs‘ publications or substantial portions thereof by compiling the same either in a book form or in a course pack, till the final disposal of the application for interim relief.

Later, in order to decide whether activities of defendant fall under section 51 or not and if so did they fall under section 52 or not, court observed as below:

Did the activities of defendant fall under section 51?

The court concluded that activities of defendant fall under section 51 and observed as below:

The defendant No.2 University thus, though entitled to issue the books, published by the plaintiffs and purchased by it and kept by the defendant No.2 University in its library, to whosoever is entitled to issuance of the said books from the library, per Section 14(a)(i) and Section 51(a)(i) would not be entitled to make photocopies of substantial part of the said book for distribution to the students and if does the same, would be committing infringement of the copyright therein.”.

Did the fall under section 52?

Court had to decide whether reproduction of material fall under section 52 (i) and while doing that court had to decide whether activities allowed so as not to constitute infringement also cover institution and more than one pupil and whether interpretation of term ‘instruction’ should be restricted to lecture or not. Court held that institution providing instructions to more than one pupil fall under activities allowed under section 52. Moreover court also held that instruction cannot be limited to the term lecture in classroom.

Can section 52 be interpreted as independent of the section 51 or it is proviso or exception to section 51?

Once the acts listed in Section 52 are declared as not constituting infringement of copyright and the reproduction of work resulting from such acts as not constituting infringing copy, it follows that the exclusive right to do the acts mentioned in Section 52 has not been included by the legislature in the definition in Section 14; of copyright, once that is so, the doing of such act cannot be infringement under Section 51 and the question of taking the same out by way of proviso or exception does not arise.

Are defendants liable for infringement?

Section 51 prescribes that copyright is infringed inter alia when any person does anything exclusive right to do which has been conferred by the Act on the owner of copyright. It follows, if there is no exclusive right, there is no infringement. Section 52 lists the acts which do not constitute infringement. Thus, even if exclusive right to do something constitutes copyright, if it finds mention in Section 52, doing thereof will still not constitute infringement and the outcome thereof will not be infringing copy within the meaning of Section 2(m).

Ultimately, court held defendants not liable of infringement.

Court observed that if students were not having access to course packs provided by the defendants, it would not have resulted students buying books, rather it would have resulted in students sitting in libraries taking notes by hand. That would have been injustice in the age of modern technologies. Court also held that declaring acts of defendants as infringement would result in such interpretation of law that results in regression of the evolvement of the human being for the better.

However this judgement did not deal with the cover-to-cover copying of the books as that was not a fact in issue. We will have to wait till we get verdict dealing with such issue.

Further, as consequences of this judgement, with free licensing of photocopying the books, publishers are more likely to invest less in Indian markets. However, some IP experts are also of the view that there would not be any such effect. Let time reflect the real effects.           

About the Author: Ms. Divya Choubey and can be reached at: swapnil@khuranaandkhurana.com

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New Hyderabad Branch Opened

Khurana & Khurana, Advocates and IP Attorneys (K&K) along with IIPRD are delighted to announce that they have opened up branch Office in Hyderabad in wake of the rising client requirements and towards their goal of expanding their operations across India. With the new Office, K&K and IIPRD now have offices in Noida (NCR), Mumbai, Bangalore, Pune, Indore, and Hyderabad.

K&K is one of the fastest growing full service IP and Commercial Law Firms in India representing Indian and International clients ranging from small start-ups to Fortune 200 companies giving them the same experience across the board. K&K is known and recognized for its response time and accuracy in legal advise, which is driving the young and dynamic firm strongly ahead.

K&K has been consecutively ranked and recommended by premier magazines and organisations namely Managing IP, Chambers and Partners, IAM, Legal 500, Asia IP, Corp-INTL, Acquisition INTL, among others. K&K has also been awarded for “IP Law Firm of the Year Patents” by Corporate INTL magazine and “IP Valuation Firm of the Year by Acquisition INTL. K&K is a member of APAA (Asian Patent Attorneys Association), International Trademark Association (INTA), AIPPI (International Association for the Protection of Intellectual Property), American Intellectual Property Law Association AIPLA, and LES (Licensing Executives Society), among others.

IIPRD, on the other hand, has emerged as a premier IP/Patent Litigation and Licensing Support Firm with a diversified business practice providing services in the domain of Patent Prosecution, Search, Litigation, and Licensing/Commercialization, and Valuation.

Hyderabad Branch Office Address:

Regus Business Centre

Krishe Sapphire,Level 7,South Wing

Hitech City Main Road,Madhapur

Hyderabad – 500081

Tel No: 040 6717 2040/ Mob: +91 9666554433

Medicines Patent Pool’s Voluntary Licensing; Unique in its efforts to better treat the Infection

Efforts of Medicines Patent Pool (hereinafter referred to as “MPP”); a United Nations backed public health organisation, founded in July 2010, and based in Geneva, Switzerland are praiseworthy.

The lives of millions of people in poor developing countries depend on access to affordable medicines. However, unfortunately most of the world’s population does not receive the essential medicines in the extent they need and that too at critical times. According to World Health Organization (WHO), 37 million people (globally) require HIV treatment but only 15 million people living in low and middle income countries have access and out of the 3.3 million children, only 32% receives the therapy. Also, Hepatitis C is a major public health threat; with majority of them living in low, middle income developing countries.

With number of patients growing organically, any single manufacturer can’t meet the mandate. At the same time, demand for newer drugs/medicines keeps on increasing as HIV medicines gradually becomes less effective over time for patients developing resistance. Moreover, it is also difficult to develop tailor made medicine for specific population (like children) and to develop combination of multiple medicines in to one pill (FDC-Fixed Dose Combination) because of individual patents on different medicines.

MPP, a public health organisation funded by the United Nations offers a solution to all these problems. It negotiates with owner of the patented medicine (pharmaceutical company, research institute, government universities etc.) to voluntarily share their patents which let another party/producer to manufacture and sell generic versions of the medicine in poor developing countries or to develop adapted formulations. MPP also eases the development and production of FDCs. The pool also works for Patent owners as it ensures them fair royalty and provides them the way to contribute to global health. Most importantly, MPP works for people living with HIV/AIDS/Hepatitis/Tuberculosis by bringing prices to affordable levels and helping them to provide new medicines.

Things have come a long way from the earlier days of MNC’s fighting against generic production and national government who endorse them, to the new arrangement where big pharmaceutical companies eager to share their patents. All credit goes to the efforts of MPP; addition to their constant working to increase availability of medicines of HIV, Hepatitis C and Tuberculosis in poor developing countries, it has signed a sub-licensing agreement with six Indian pharmaceutical companies, Hetero Labs Ltd, Laurus Labs ltd, Lupin Ltd and Zydus Cadila or Cadila Healthcare Ltd to sell generic ARV (antriretrovirals) and Hepatitis C drug Daclatasvir.

This deal would all set to establish a new era of innovative production in the Indian pharmaceutical industry. It will help Indian companies to avoid the stress of seeking voluntary license from innovator firms, or apply for compulsory licenses in those markets where MPP would supply the drug. Most notably it will help battle the disease at our home as we are third in position with the highest number of HIV affected people.

About the Author: Dr.Komal Tomar, Sr. Licensing Associate at IIPRD and Khurana &Khurana, Advocates and IP Attorneys and can be reached at: commercialization@iiprd.com