Category Archives: Copyright

Freedom of Panorama

Freedom of panorama is a derived from German word Panoramafreiheit. It is the right of individual to publish photographs of the public buildings and the public structures which are attached to the public places permanently and is one of the exception of the Copyright law. “French-Italian model” and the “German-English model” are the two modular frameworks on which the freedom of panorama is based. On one hand, where the French-Italian model does not lay down the restrictions on the copyright law, the German-English model, on the other hand, states freedom of panorama as an exception to the copyright law. Indian Copyright Act has incorporated the German-English model with certain modifications to suit the Indian scenario.

Article 5 of the Berne Convention,1886 has laid down the “principle of assimilation” which means that countries who are the members of the convention enjoy the rights as laid down in the convention along with the national law of the State. Article 17 of the Convention has permitted the States to enact necessary legislation to prevent the infringement of any work thereby following one of the essential principles of the International Law. Article 9 of the Berne Convention mentions that audio and visual reproduction of copyrighted work amounts to the copyright infringement. Article 9 of the Berne Convention is contradictory to the Section 52 of the Copyright Act, 1957 as it follows the principle of assimilation and the basic principles of the International Law.Italian Copyright law follows the French-Italian model by recognizing the freedom of panorama and states that the photographs and video recording of sculptures, artistic work and architectural structures having public access, will not amount to copyright infringement if such a reproduction is used only for personal purpose but, if it such photographs or video recordings are used commercially, it will amount to the copyright infringement.

For example: – Photography of the Eiffel Tower at night amounts to copyright violation. However, photography during the daytime is rights-free and does not amount to infringement. The interesting explanation to such a law in France is that the in 1923 the creator and the owner of the copyright of the Eiffel Tower died and the Eiffel Tower entered public domain in the year 1993. Thus, in 1999 Las Vegas had its own Eiffel Tower. Although, the copyright expired in 1993 the lights in the Tower were installed in the year 1985, adding to the aesthetic beauty of the pre-existing structure and classifying the tower’s light display as an “art work” within the purview of Copyright Laws. Hence, the night-time photography of Eiffel Tower will amount to the copyright infringement, as it does not fall within the public domain till date.[1]

Looking into the Indian scenario, even though there is no provision explicitly defining the Freedom of Panorama, the Copyright Act, 1957 under Section 52 sub-clause (t) and sub-clause (u) has provided for the provision related to the Freedom of Panorama. Section 52(t) states that the making or publishing of a painting, drawing, engraving or photograph of a sculpture, or any other work of artistic craftsmanship, permanently situated in a public place or any premises to which the public has access, will not amount to copyright infringement. Section 52(u) has included the cinematographic films within the ambit of the freedom of panorama.According to sub-clause (u)the following inclusions in the cinematographic films does not amount to the copyright infringement:-

  • Any artistic work which is situated permanently in a place which can be accessed by the public.
  • Any other artistic work, if such inclusion is only by way of background or is otherwise incidental to the principal matters represented in the film.
  • Use of the author’s artistic work where the author is not the copyright owner or it was the author’s commissioned
  • Reconstruction of any structure or building in accordance with the architectural plans by which the building was constructed.

All in all, Section 52 of the Copyright Act, 1957 has resolved a potential conflict which could have arisen, if any architectural structure or any sculpture displayed in the public is photographed or used in a cinematographic film without the prior permission of the artist.In practice, Section 52 does conflict with certain aspects of the copyright law yet, it has been seen that Section 52 prevails over the other provisions.

Neelkant Darshan was a short feature film shot in the Akshardham Temple where photography and videography is prohibited. Section 14(c)(i)(A) of the Copyright Act, 1957 provides the architects and the author of an architectural work have the right to protect their work from being stored in any medium by electronic means. A tourist if photographs the Akshardham Temple by virtue of Section 14(c)(i)(A) will be deemed to infringe the copyright. However, by virtue of Section 52 of the Copyright Act, 1957, such photography and videography will not amount to infringement of copyright as the temple is situated permanently in an area easily assessable to the public.Therefore, it is quite evident that Copyright law is clear about the concept of Freedom of Panorama; however, conflict may arise if a building is trademarked and recorded in a video!

About the Author: Trishala Sanyal, intern AKK New Law Academy Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at  info@khuranaandkhurana.com

Reference:

[1] https://petapixel.com/2017/10/14/photos-eiffel-tower-night-illegal/

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Copyright Protection to Architectural Works

Issue of infringement of architectural works requires understanding of protection of works when they are reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner.

For example: if an architect uses a part of the architectural design of another architect in order to build his own building, without the prior permission of the architect who owns the copyright from which the other architect derives his work, it would amount to infringement. This permission may be obtained through an assignment or a license for the use of the same. However, not all inspiration amounts to infringement of copyright. Copyright law allows portions of a copyrighted work to be used without the author’s permission for specific purposes such as criticism, comment, news reporting, research, teaching etc. under the doctrine of fair use which is often used as a defense.

The protection of architectural works through Copyright against infringement and imitation is provided in the copyright act 1957. Therefore answer to the question of whether architects could protect their “Architectural works” from infringement? Is yes. Discussion on what is protected as part of Copyright of a building, needs clear understanding of what is a copyright, what is an architectural work, and is it an work of art or not?

Architectural works were not afforded legal protection or any form of copyright protection till the “Berne Convention” of 1908 was revised, after which it was included in the ambit of “literary and artistic” works protected at international level.

Despite architectural works being considered artistic works, some structures have been kept outside the scope of copyright protection, like bridges, dams, tents, boats are not considered “buildings”.

 Freedom of Panorama

“Freedom of Panorama” is an exception to the other provisions of the Copyright Act, 1957. The term has not been explicitly incorporated in the Act but Section 52 of the Copyright Act interprets similar meaning to the terminology and lays down certain acts which do not lead to copyright infringement. The section is explained by the following points:-

  • Any painting, engraving, drawing or the display of a work of architecture, photograph of a work of architecture can be made or published and has been incorporated under section 52 (1)(s).
  • The making and publishing of a drawing, painting, photograph of a sculpture, or other artistic work, engraving or any other work of artistic craftsmanship, if such work is situated in a public place permanently or any premises where the public has an access.
  • Any artistic work which is permanently situated in a public place or where the public has an access is included in a cinematograph film.
  • It is in this regard that the Indian Copyright Law can be appreciated, as against European and American copyright law which allows this freedom only if the copyrighted work is used for non-commercial or educational purposes, the Indian law is not subject to such demarcations.

Protection under the ambit of Copyright Act

“In general, any original work made by a person is eligible for copyright protection. Originality refers to the fact that an author must have created the work through the application of the author’s own creativity and labour. In addition, such work must have been reduced to a material form. Copyright comes into existence as soon as a work is created and no formality is required to be completed for acquiring copyright, although it is advised that the author/owner of the copyright gets their work registered to make sure they can enforce the rights conferred by the Copyright Law, should their copyright be infringed. Different countries have different laws pertaining to copyright of artistic works.

Indian law provides protection to the architectural works under the uniform copyright law. Section 13 of the Indian Copyright Act, 1957 numerates the types of artistic works that are eligible for copyright protection.

According to Copyright act 1957-

Section 2(b) “work of architecture” means any building or structure having an artistic character or design, or any model for such building or structure;

Section 2(c) “artistic work” means—

(i) 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;

(ii) a work of architecture; and

(iii) any other work of artistic craftsmanship.

In India architects can register their original works under the Copyright registration system. Also, being a signatory to Berne Convention as well as Universal Copyright Convention, works protected in other Berne signatory countries will automatically be protected in India without the need for registration. Architecture may be defined as the “art of designing and constructing buildings”, and therefore has both functional as well as artistic attributes. Section 57 of the Indian Copyright Act also takes into consideration the moral rights of the creator of the artistic work as well as the rights of integrity and attribution of the author. The Indian copyright law has also widened its scope to allow protection to the architectural design of commercial buildings. We, at Khurana & Khuranahadthe opportunity to register the copyright for architectural design of a commercial building for our client Riis Retail, a company based out of Denmark, vide diary no. 12158/2010/CO/Aon 10thof November, 2010!

 Protection under the ambit of Design Act

Section 2(d) of the Design Act, 2000 has defined the term design as “ the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, 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; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

The Design Act, 2000 provides for registration of Architectural works under Class 25-03 and 25-99. Due to multiple provisions conferring protection to architectural works, a conflict mayarise, whether Architectural works should be protected under the Copyright Act, 1957 or under the Design Act, 2000 or whether Section 15(2) of the Copyright Act, 1957 would come in play for determination of what works would be protected through Designs vs Copyrights.

Application of Mischief rule by the courts

Mischief rule pertains to the interpretation of the statutes and is applied by the Courts when there is a conflict between two laws or provisions of law on interpreting it by the words as stated in the particular law or is interpreted by the courts to resolve the confusion in its application. In the case of Microfibers Inc. vsGirdhar& Co. &Anr.,[1]the question was whether the design of an “artistic work” in fabrics should be protected under the Copyright Act or the Design Act. The court by applying the mischief rule stated that the “the mischief sought to be prevented is not the mischief of copying but of the larger monopoly claimed by the design proponent inspite of commercial production.[2] The court had held that if the design is registered under the designs act, the design would lose its copyright protection, and if the design has not been registered it would still continue to enjoy copyright protection as long as the threshold limit of its application through an industrial process does not go beyond 50 times, after which it shall lose its copyright protection. Delhi High Court by giving a reference to the particular case in Holland L.P. &Anr. vs A.D. Electro Stell Co. Pvt. Ltd[3]., where it was argued by the plaintiff that under section 2(c) read with section 13 of the Copyright Act he had the “right to convert a two dimensional artistic work into a three dimensional constructions”[4]and that the “drawings” are capable  of being copyrighted under Section 15(2) of the Copyright Act. Thus by the virtue of the two statements the copyright should stay with him. The court rejected the plaintiff’s contention and stated that the drawing was capable of being registered under the Design Act and it would lose its copyright if it is reproduced by the industrial process more than 50 times and would also fall under the public domain.

International Conventions protecting the architectural structures 

 Article 2(1) of the Berne Convention requires member countries to extend copyright protection to, among other things, “works of . . . architecture . . . and three-dimensional works relative to . . . architecture.”[5]However, the Berne Convention does not explicitly define what works constitute a “work of architecture” entitled to protection, except that such works may be “incorporated in a building or other structure.” The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) explicitly incorporates the Berne Convention’s mandate for architectural copyright protection without further defining what constitutes a work of architecture. Architectural works were not included in the Convention of 1886, except for the Article 4 which states “plans, sketches and artistic works relating to architecture were specified.

Thus, the protection of architectural works is an issue that has not been understood and discussed enough. A large number of architects or designers lack the knowledge to protect and enforce the IP rights in their building designs. Most of the countries have now modified their laws to meet the requirements of the Berne Convention with regard to the copyright protection for architectural works. Further, the basic use of spaces such as windows and doors, which are elementary to any building’s structure, are not themselves protected by copyright law. In such a scenario the Delhi High Court’s judgment and the harmonious construction of the Copyright Act and the Design Act has acted as a balancing beam to tackle the issue.

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About the Author: Trishala Sanyal, AKK New Law Academy and Aditya Sehgal, Symbiosis Law School Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at  info@khuranaandkhurana.com

[1] RFA (OS) NO.25/2006

[2] https://indiankanoon.org/doc/112937069/

[3] CS(COMM) 83/2017

[4] https://indiankanoon.org/doc/151057483/

[5] https://www.law.cornell.edu/treaties/berne/2.html

Copyright Protection for Architectural Works- Part II

Application of Mischief rule by Courts

Mischief rule is pertains to interpretation of statutes, and is applied by Courts when there is a conflict between two laws or provisions of law on interpreting it by the words as stated in the particular law or is interpreted by the courts to resolve the confusion in its application. Delhi High Court in Microfibers Inc. vs Girdhar& Co. &Anr.[1] where the “artistic work” in the fabrics was in question that if the design would be protected under the Copyright Act or the Design Act. The court by applying the mischief rule stated that the “the mischief sought to be prevented is not the mischief of copying but of the larger monopoly claimed by the design proponent inspite of commercial production.[2]  In other words it means that the copyright is protected in an article till 50 reproductions by the industrial process are made and beyond this limit the copyright ceases to exist. Delhi High Court by giving a reference to the particular case in  Holland L.P. &Anr vs A.D. Electro Stell Co. Pvt. Ltd[3]. , where it was argued by the plaintiff that under section 2(c) read with section 13 of the Copyright Act that he had the “right to convert a two dimensional artistic work into a three dimensional constructions”[4] and that the “drawings” are capable to be copyrighted under Section 15(2) of the Copyright Act thus by the virtue of the two statements the copyright should stay with him. The court rejected the plaintiff’s contention and stated that the drawing was capable to be registered under the Design Act and it would lose its copyright if it is reproduced by the industrial process more than 50 times and had also entered the public domain.

International Conventions protecting the architectural structures 

Article 2(1) of the Berne Convention requires member countries to extend copyright protection to, among other things, “works of . . . architecture . . . and three-dimensional works relative to . . . architecture.”[5] However, the Berne Convention does not explicitly define what works constitute a “work of architecture” entitled to protection, except that such works may be “incorporated in a building or other structure.” The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) explicitly incorporates the Berne Convention’s mandate for architectural copyright protection without further defining what constitutes a work of architecture. Architectural works was not included in the Convention of 1886, except for the Article 4 which states “plans, sketches and artistic works relating to architecture were specified.

Thus, the protection of architectural works is an issue that has not been understood and discussed enough. A large number of architects or designers lack the knowledge to protect their building designs intellectually. Most of the countries have now modified their laws to meet the requirements of the Berne Convention with regard to the copyright protection for architectural works. Certain structures are considered to be outside the protection of copyright law. For instance, certain structures such as bridges, dams, cloverleaf’s, tents, recreational vehicles, walkways, mobile homes, and boats cannot be considered “buildings”. Further, the basic use of spaces such as windows and doors, which are elements that can be found in the majority of buildings, are not in and of themselves protected by copyright law. In such a scenario the Delhi High Court’s judgement and the harmonious construction of the Copyright Act and the Design Act has acted as a balancing beam to tackle the issue.

[1]RFA (OS) NO.25/2006

[2]https://indiankanoon.org/doc/112937069/

[3]CS(COMM) 83/2017

[4]https://indiankanoon.org/doc/151057483/

[5]https://www.law.cornell.edu/treaties/berne/2.html

About the Author: Trishala Sanyal, AKK New Law Academy and Aditya Sehgal, Symbiosis Law School Intern at Khurana and Khurana Advocates and IP Attorneys and can be reached at  info@khuranaandkhurana.com

Sarine Technologies Ltd v. Divora Bhandari Corporation & Ors

When it comes to one of the most contentious aspects of copyright law in software, two things come to our mind:

  1. The idea-expression dichotomy and;
  2. Which part of software is copyrightable, and which part is patentable.

The present case of Sarine Technologies Ltd. v. Divora Bhandari Corporation &orsunfolds many perplexing facts of the copyright Law.

The Plaintiff is an Israeli company established in 1988 that is engaged with the business of providing diamond dealers/ merchants with the best in class equipment and services for mapping, processing, and trade of diamonds and other gemstones.They developed“Advisor” software that generates an optical planning and polishing plan so that maximum value can be derived from rough stone in furtherance of its business.

The plaintiff claimed their copyright ownership on the software “Advisor”, stating that computer program comes under the domain of copyright, and therefore the same is claimed under copyright ownership on the ‘sixth version of the Advisor software’ in the USA and Israel through registration and common law respectively. They claimed the same in India as well. Further, they asserted that Defendants illegally use their Advisor software, and have also ‘developed pirated software copy’ in the name of “Mandakini- Work Manager”, leading to their unjust enrichment, and hence the defendants are liable under section 51 of the Copyright act, 1957.

On the other hand, Defendants are engaged in the business for four years for providing scanning services to diamond merchant, and also provide such scanning machines for sale to its customers. For this purpose, they have developed software namely ‘Mandakini- Work Manager’ without any reference to the plaintiff’s software.

The suit was originally filed in the district court of Surat for infringement by the defendants under sections 51 r/w 55, 58,63 and 63B of Copyright Act, 1957, where the permanent injunction restraining the defendants to engage with the copyrighted software and damages prayed by the plaintiffs which were enhanced to INR 50 Crores due to which it was transferred to Commercial court in consonance with the pecuniary jurisdiction.Further, plaintiffs filed an “Interim Injunction Application” under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 seeking an ex parte ad interim injunction restraining the defendants from using, distributing, selling, offering for sale any inclusion scanning services which is claimed to have been infringed by the defendants.

There were few questions that were answered in the proceedings of the case:

  1. How has the plaintiff claimed its copyright protection in India when neither it is first published nor it is registered in India?

 Plaintiff  has copyright ownership on the ‘Avisor software version 6.0’ in Israel, as it was first published in the country and they claimed copyright in the USA through copyright registration according to Title 17 of US copyright Act.[1] Both these countries are party to the Berne Convention and so is India. By virtue of being signatory to the Berne Convention, the plaintiff can claim their copyright ownership on the said software.[2]In addition to this, section 40 of the Copyright Act, 1957 enables the plaintiff to copyright protection in India as it extends protection to the foreign works.

The defendants alleged that there is no evidence as to whether the software is being developed by the employees in ‘contract of service’ or ‘contract for service’. To this, the plaintiff put forth that where the work is developed in course of the author’s employment, under contract of service or apprenticeship, the employer shall be the first owner of the work of copyright, in absence of any agreement to the contrary.[3] Further, plaintiffs cleared that although they have copyright in version 6 of their software, due to this reason, they have copyright in all derivative works which include previous versions of the computer programme as well.[4]

  1. Whether the software is copyrightable or not?

Going by the statutory provisions, section 2 (o) of the copyright Act, 1957, computer program is included in the definition of ‘literary work’ but not software per se. Further, section 2 (ffc) defines computer programs as set of instructions expressed in words, codes, schemes or in any other form including machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result. This principle was also supported in SAS Institute Inc v World Programming Ltd[5], where the EU court of justice, by referring to the Software directives held that expression of ideas in form of source code/ object code is protected under the copyright law and not the ideas in form of functionality.In the present case, the plaintiff claimed that they have copyright over their software in the USA through its registration under statutory provisions[6] and in Israel through common law.

Consequently, another question arose pertained to where the functionality aspect of the software falls? The plaintiff claimed that their software was the only software that could scan the diamond for marking the edges to be cut by the diamond cutters in the diamond industries. Additionally, they stated that in order to provide inclusion scanning services, Defendants have ‘developed pirated software’ and prayed for injunction referring to Microsoft Corporation v. Vijay Kaushik, where the court granted an injunction on account that the defendants had pirated the plaintiffs software.The plaintiff had also submitted few evidences in sealed envelope under section 151 of CPC, 1908, requesting the court to not to disclose the same to the Defendants. This was refuted by the Defendants stating that this is against the natural justice not to show the evidences on which certain allegations are made out on the Defendants. It was further argued by the Defendants that development of software cannot be referred to as ‘piracy’ as Piracy pertains to use of an unlicensed software or use under an invalid license, and therefore reference to the term “developed a pirated software” is technically incorrect, and demonstrates Plaintiffs’ incorrect understanding of how software works and where Copyright subsists in the software. In the present case, the Defendant independently developed their own software by using their own intellect and therefore the source code of the Defendants’ software is completely different from that of the Plaintiff, which scans the diamonds as to show edges of diamond which are to be cut and polished. Therefore, although functionality of Gal Manager of Plaintiff may be overlapping with Work Manager of the Defendant, the implementation/source code/object code is completely different, which is a clear indicator of non-infringement on the copyright of the Defendant. Moreover, law of copyright does not protect ideas/functionality and instead only gives protection to the particular/specific expression of ideas.[7] Defendants also claimed that they used Advisor software (version 4.7) only by acquiring licence, and that the same was clearly stated in the report of the Local Commissioner. Thus, the defendants cannot be held liable for infringement of copyright.

Lastly, Plaintiffs claimed that results generated by the Defendant’s software are deceptively similar to theirs by relying on reports of Private Investigator appointed by them. The report stated that the output result of the scanned diamond through the Defendant’s software was the same as that of the plaintiff’s output result of Advisor software.The Defendants averred that this appointment of private investigator is flawed as no procedure of law was followed and thus, the veracity of the report cannot be relied upon. However, by looking at the plaintiff’s claim comprehensively, the Plaintiff only focussed on the output results/functionality of the defendant’s software, which does not determine copyright infringement. Neither did the Plaintiff disclose any source/object code that it claims to have been infringed by the Defendants, nor did it demonstrate any similarity in the source/object code by comparing it with the Work Manager software of the Defendants.  Moreover, source code can be written in different ways to perform similar function, which need not infringe any copyright of others. This is the rationale behind computer program coming under the ambit of ‘literary work’ for Copyright protection. Like so, the Defendant has independently developed software‘Mandakini- work manager’ that provides a similar file with different codes without any infringement.Defendants agreed that they are using advisor software version 4.7 but only licensed version of said software, which was clearly evidenced in the report of Local commissioner who was appointed by the High Court of Gujarat to investigate defendant’s premises on 28th June, 2017. This was initially prayed by the plaintiff under order XXVI Rule 9 and 10 of the Civil Procedure Code,1908, before the district court which was denied. However, it was successfully appealed in the High Court.

Further in support of their contention, Defendants referred to SAS Institute Inc v World Programming Ltd[8] where the Chancery court, by referring to the software directives, held that “only the expression of a computer program is protected and …ideas and principles which underlie any element of a computer program…are not protected by copyright.’[9]It was upheld by the Court of appeal. The applicability of this case was questioned by the plaintiff as the referred directive was repealed and also that the software directives are based on local European Laws. But in the present case the Hon’ble court confirmed that new directives[10] are in consonance with the Berne Convention and clearly mention the above held decision by the Chancery Court, hence affirmed the applicability of the said case.

The court raised its concern over the fact that the plaint was silent on comparison of the source code and object code of both the software- ‘Advisor’ and ‘Mandakini- work manager’. The plaint has only focussed on functional aspect of the software mentioning that the extension files generated by plaintiff’s as well as defendant’s software is same, which is subject matter of patent and not copyright. The court highlighted the principle that expression of idea is protected under the copyright law and not the ideas[11].Protection to ideas extends only to the protection granted by Patents. The court referred to Lotus Development Corporation v. Borland International Inc[12], where the United States Supreme Court had upheld that only the object code and source code is protected under copyright and not the operating and application software. The court tested the three step process called Abstraction-Filtration-Comparison Test which would determine the non literal elements of software that are protected by Software.[13]  The court did not find any incriminatory results that prove defendants wrong. Lastly, the court relied upon the reports of Local commissioner, who was appointed to inspect the defendant’s premises, where they did not find any infringing material. Hence on considering three issues, i.e. a) whether the matter is a prima- facie case of copyright infringement, b) where do the balance of convenience lie and; c) whether the plaintiff has suffered an irreparable loss. The court declared that the plaintiff could not proof the validity of the suit filed by them, hence no prima-facie case could be established and therefore, the Hon’ble court dismissed the petition.

Therefore, it is clear from the present case that the Court has firmly quoted that copyright does not protect ideas but only the expression of those ideas. The court made it clear in case of computer programs that only the expression of a computer program is protected, and ideas/principles that underlie any element of a computer program are not protected by copyright. Accordingly,  the court dismissed the petition.

[1] Section 101 : Definition of Computer Program; Section 102: subject matter of copyright.

[2]Article 1, Berne Convention For Protection Of Literary and Artistic Works: The countries to which this Convention applies constitute a Union for the protection of the rights of authors in their literary and artistic works.

[3]Section 17, proviso (c)

[4]Aspen Tech.,Inc. V. M3 Tech., Inc.

[5][2012] E.C.D.R. 22

[6]Title 17 of the United States Code

[7]Mishra BandhuKaryalay&Ors v. Shiv RatanlalKoshal, AIR 1970 MadhPra 261

[8][2012] E.C.D.R. 22

[9]SAS Institute Inc v World Programming Limited; [2013] EWCA Civ 1482

[10]Directives 2009/24/EC

[11]R.G Anand v. Delux Films &ors, AIR 1978 SC 1613)

[12] Lotus Dev. Corp. v. Borland Int’l, 49 F.3d 807, 1995 U.S. App.

[13]Computer Associates International, Inc. V. Altai, Inc. 982 F. 2d 693(2nd Circuit, 1992)

Curious Case of Corporate Viel in Revocation Petition

This case pertains to a suit filed by Galatea Ltd. & Anr (Petitioners), against Diyora & Bhanderi Corporation (Defendants) and thirteen other defendants, for infringing of its patent IN 271425 (suit patent) for a ‘device which eliminates presence of gas bubbles from the immersion medium”. Along with the suit, the plaintiffs filed an application under order 39 Rule 1 & 2 of Civil Procedure Code, seeking interim injunction restraining the latter from using, selling or offering to sell the patented device, which was denied by the district court Vadodra. Later, it was appealed by the Plaintiff in High Court that appointed a local commissioner to make a report on investigation held in the defendants’ premises and remanded the case back to the district court.

The defendants filed written statement denying all the allegations made by plaintiff, and also filed a counter claim under section 64 (1) (e) and (f) of Patent Act, 1970 for revocation of the patent in the High Court of Ahmedabad due to lack of  novelty[1] and inventive steps[2]. The proviso to section 104, Patent Act, 1970, necessitates the transfer of the case to the High Court.

The issue that the Plaintiff raised was that revocation by means of counter-claim filed by Defendant Nos. 4 & 5 before High Court is not maintainable as revocation petition has already been filed by Defendant no. 3 before the IPAB, being the same entity as Partners in Defendant no. 3 are directors in Defendant Nos. 4 and 5.

PLAINTIFF’S CONTENTION

Plaintiff relied on the case of Saurabh Exports v. Blaze Finance & Credits (P.) Ltd[3]where the Defendants entered into an agreement with the Plaintiff under which the Plaintiff made a deposit of 15 lakhs in the company, which the defendants failed to pay and all the defendants denied their liability to repay the same. Hence, the court lifted up the corporate veil on the basis that, theDefendants’companieswere a family arrangement made to defraud the Plaintiff under the cloak of a corporate entity. This makes the company and the directors liable. Referring to this case, the Plaintiff claimed that since partners and directors of Defendant Nos. 3, 4, and 5 are same, corporate veil of Defendant nos. 4 and 5 should be lifted and counterclaim should not be maintainable as it would lead to same relief of patent invalidation being asked through two judicial entities (IPAB and High Court). Thus, the Plaintiff argued that Defendant entities are not separate but are alter-egos of each other and that multiple entities of Defendants are created to conceal improper activities conducted by them. Where the corporate charter is employed for the purpose of committing illegality or for defrauding others, the court would ignore the corporate character and will look at the reality behind the corporate veil so as to enable it to pass appropriate orders to do justice between the parties concerned.[4]

Plaintiff referred to the case of Dr. Alloy Wobben & Ors. V. Yogesh Mehra & Ors,[5]where the court held that the use of the word or” in Section 64(1) demonstrates more than one remedies but that cannot be simultaneously used.Further, it was argued by the plaintiffs that since defendant no. 3 have already filed a revocation before IPAB, the revocation petition filed by Def. Nos. 4 and 5 are not sustainable as all of them are single entity. Hence, the subsequent revocation filed before the High Court must be stopped as the Defendants cannot avail dual remedy for the same cause of action, thereby making the counter-claim non-sustainable.

DEFENDANT’S CONTENTION

Defendants first highlighted a principle of Patent Law that if validity of a patent is challenged, i.e. revocation is pending for the patent suit, then no injunction can be granted.[6] Thus, plaintiff’s interim application under order 39 rule 1 & 2 of CPC, for seeking ex- parte injunction restraining the defendants from manufacturing, selling, offering for sale any infringed device must be rejected.

Defendants submitted their arguments on two grounds:

  1. Defendants asserted that Defendant nos. 3, 4, 5 are different entities.Defendant no. 4 and defendant no. 3 are completely different entities dealing with different line of business, although partners and directors are common. They explained,“Each company is a separate and distinct legal entity and the mere fact that two companies have common shareholders or common Board of Directors, will not make the two companies a single entity. Nor will existence of common shareholders or Directors lead to an inference that one company will be bound by the acts of the other.”[7] With regard to Defendant no. 5, it is totally a different entity as it is Private Ltd Co, incorporated under Company Act, 1956 comprising of different partners. The plaintiff has itself involved defendants 4 and 5 in the present suit, resulting them to have locus-standi in the case to file a revocation petition by means of a counter-claim according to section 64 of Patent Act, 1970.
  2. Corporate veil is applicable only in certain cases such as Tax evasion, fraud, enemy character, ultra vires Act, and act against public interest, negligent activities or company avoiding legal obligations. They further emphasized that corporate veil is a rule, and lifting of corporate veil is an exception that can be done only on limited circumstances. Corporate veil should be applied only in scenarios where it is evident that company was a mere camouflage or sham deliberately created by persons exercising control over the said company for the purpose of avoiding liability.[8]Thus, lifting of corporate veil is not valid in the present case as the defendant’s business is a bona fide company incorporated having a separate juristic entity.

JUDGEMENT:

Consequently, the District court of Vadodra, decided the whole case by discussing the following two issues.

Issue 1: Whether defendant no. 3, 4 and5 are different entities or not?

Defendant no. 3 is a partnership firm, and all partners of defendant no. 3 are the directors of defendant no. 4, which is a private Ltd. Company. Thus, these two entity are not independent of each other, rather they are an alter – ego of each other. Thus, the counter claim with regard to defendant no. 4 is not maintainable. However, defendant no.5 is a Private Limited Company incorporated under Company Act, 1956, having different directors. Hence, it is completely a separate entity from defendant 3 and 4.

Issue 2: Whether the ‘Lifting of corporate veil’ applicable on the present case?

The court held that corporate veil cannot be lifted and in case of defendant no. 5, no case has been raised by the plaintiff where defendant no. 5 falls under the scope ‘corporate veil’ as corporate veil can be lifted only in certain cases as mentioned by the defendants by referring to plethora of cases.[9]The plaintiff could not put the defendant company in fissures of those specific cases. The court listed out following six legal positions where the  corporate veil can be lifted:[10]

  • ownership and control of a company were out enough to justify piercing the corporate veil;
  • the Court cannot pierce the corporate veil, even in the absence of third party interests in the company, merely because it is thought to be necessary in the interests of justice;
  • the corporate veil can be pierced only if there is some impropriety;
  • the impropriety in question must be linked to the use of the company structure to avoid or conceal liability;
  • to justify piercing the corporate veil, there must be both control of the company by the wrongdoer (s) and impropriety, that is use or misuse of the company by them as a device or façade to conceal their wrongdoing; and
  • the company may be a ‘façade’ even though it was not originally incorporated with any deceptive intent, provided that it is being used for the purpose of deception at the time of the relevant transactions.

Thereby, on discussing the above issues, the Hon’ble Court dismissed the counter-claim of defendant no. 4 for the reason that it is the same entity as of defendant no.3. But the court accepted the counter-claim submitted by defendant no.5 taking it as a separate entity from Defendant nos. 3 and 4. Thus, the court ordered for transfer of the case to High Court of Gujarat according to Section 104 of Patent Act.

[1] Section 64 (1) (e) of the Patent Act : that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the, documents referred to in section 13:

[2]Section 64 (1) (e) of the Patent Act : that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim:

[3] [2006] 133 Comp. Cas. 495

[4]Singer India v. Chander Mohan Chadha[2004] 122 Comp. Cas. 468 (SC)

[5][(2014) 15 SCC 360]

[6] TVS Motor Company Limited v. Bajaj Auto Limited, 2009 (40) PTC 689 (Mad); Standipack Private Limited v. Oswal Trading Co. Ltd., 1999 (19) PTC 479.

[7]Indowind Energy Ltd vs. Wescare (I) Ltd.& Anr, AIR 2010 SC 1793

[8] Balwant Rai Salulja V/s. Air India Ltd., AIR 2015 SC 375

[9]Saurabh Exports V/s. Blaze Finlease and Credits Pvt. Ltd.  (supra); Chander Mohan Chadha and Ors.,(supra), Delhi Development Authority; Indowind Energy Ltd. V/s. Wescare; Balwant Rai Salulja V/s. Air India Ltd.(supra)

[10]Balwant Rai Salulja V/s. Air India Ltd.,AIR 2015 SC 375

TATTOOS AS INTELLECTUAL PROPERTY- AN INDIAN PERSPECTIVE

INTRODUCTION:

Tim Parks in his book[1] wrote “You will only have copyright in a society that places a very high value on the individual, the individual intellect, the products of individual intellect.” In an overtly aware society like ours, there is no doubt that we not only value but are also more aware of our rights. In addition to our awareness, there is something else that is more peculiar about present times – our curiosity and our need to keep evolving with time. With this constant need for metamorphosis, our technology and art forms also are changing at a rapid scale, leading to the foundation and formation of various industries emerging from them including the Tattoo industry. This body graphics phenomenon, while may seem to have gained popularity very recently, has its roots inked all the way back in CA. 8000 BP where a ‘moustache’ was found tattooed on the upper lip of the South American Chinchorro mummy[2]. With the tattoo industry growing to become a $1 Billion industry[3], the legal framework to regulate this industry seeks evolution as well. With tattoos, the questions that need to be put to rest seem quite fundamental, beginning with – Do we have adequate laws and the legal framework to regulate and enforce the rights relating to tattoos? Are tattoos artistic enough to be copyrightable at all? If yes, who owns the rights? What is the extent of these rights? How do we enforce them?

This article tries to explore the answers to these questions while making an attempt to understand tattoo related jurisprudence across the world in comparison with current legal framework in India and its possible interpretations.

TATTOO – A COPYRIGHTABLE WORK?

Since copyrights are rights granted to artistic forms of expression on tangible mediums, tattoos ought to qualify, for copyright protection. Unlike in U.S. where the applicable statute[4] requires the “pictorial, graphic and sculptural” copyrightable work to be “original works of authorship fixed on a tangible medium of expression”, Indian law does not explicitly specify the need for tangible medium of expression. However, owing to the permanent nature of the tattoos and the human body being the “tangible medium of expression”, the reservations against tattoo not being copyrightable work, by definition, should be ruled out.  As if to prove Indian Copyright Office’s validation of tattoos as copyrightable works, the Indian Copyright Office, in 2011, granted Shahrukh Khan a copyright registration for his tattoo[5]. While there has not been a copyright infringement case for tattoos as yet in India, the news of the Warner Bros. making use of an unauthorized tattoo in their movie Hangover 2 in 2011 and then, being sued by the tattoo artist from Missouri[6] made quite a stir and has had the legal community thinking of the ramification of making the tattoos a copyrightable commodity. Though the case was discreetly settled, the million dollar question is still being debated as to who shall reap the benefits of the tattoo and can the standard injunctive damages apply, as they apply for paintings, books or other works of art.

To understand the applicability of copyrights to tattoos, one must recognize that it is only original and custom made tattoos that are the subject of this discussion. Standard tattoo in catalogues or on the walls of parlours are not to be considered thereto. Of all the ingredients, originality is the principal ingredient, without which a copyright does not exist. Having said that, the efforts made by the tattoo artists in inculcating the imagination of the tattoo bearer are worth marvelling about, it must be understood that if the copyrights of a tattoo are to remain in the possession of the tattoo artist, the rights to exploit the copyrighted ‘piece of art’ also rests with them. Among the various other rights of the copyright holder mentioned in the Indian Copyright Act, 1957, Section 14(c) (ii) specifies that the copyright holder has the right to communicate the piece of work to the public. It must be noted that this provision relating to the communication of the artistic work to the public speaks of ‘artistic work’ only implying that tattoo artist is entitled rights only of the “artistic work” i.e. the tattoo bearer’s body that has been imprinted with the tattoo while allowing the artist to restrict the replications of the artistic work in any other medium under Section 14. Thus, one may imagine the way in which a copyright holder, in this case the tattoo artist may incorporate the above mentioned right, considering that the ‘work of art’ which is to be communicated to the public is actually on somebody else’s body, unless the tattoo artist has tattooed himself. In other words, it may mean that the tattoo artist has the right to control and regulate the tattoo bearer’s activities which, by all means, violates the very right to freedoms promised to us by Art.19 and Art.21 of the Indian Constitution, to say the least. Another argument in the favour of the tattoo bearers holding the authorship rights is that the tattoo artist is a hired employee, in which case, S.17(c) of the Indian Copyright Act, 1957 may be interpreted as the tattoo bearer being a quasi-employer of the tattoo artist, is the first owner of the copyright, in the absence of a contract between the two. In practice, most tattoo artists, too, believe that once the customer pays for the tattoo, he owns the tattoo and all the rights that come with it.

In the defence of the tattoo artists’ rights to obtain the copyright, it may be said that like painters, they, too, create art and have a right to copyright the same to retain their originality. Also, as in the case of art collectors, the tattoo bearer may merely own the piece of art and the copyrights of the designs may still rest with the tattoo artist and certain amount of royalty may be reimbursed to the artist for replication or incorporation of this piece of art on various mediums such as video games, as in case of THQ Inc.[7], where the gaming company was sued by Mr. Conduit’s tattoo artist for illegally and wrongfully using the mixed martial artist’s tattoo in the game. Taking a leaf from so many cases of tattoo artist’s suing gaming[8] and entertainment companies[9], and also having burnt its fingers once[10], EA Games played it safe by taking permission from the tattoo artists of the respective sportsmen before using their work in their new NFL 15[11].

TRADEMARKING TATTOOS :

Quintessentially, the function of a trademark is to distinguish one’s services or goods from the others selling or providing similar goods or services. So when one gets a trademark or logo tattooed on himself or herself, given the aforesaid logic, the chances of them intending to confuse any member of the public of being the originator of any particular goods or service are rare. However, in some organizations, employees are encouraged to get tattoos of the organization’s logos or taglines[12].

On the other hand, in some cases, one might end up welcoming a cease and desist notice for tattooing a trademark without prior permission, like in the case of a coffee shop owner in New York who was slapped with a cease and desist notice for infringing the trademark “I ♥ NY” for tattooing “I [coffee cup] NY” on his knuckles. [13] The coffee shop owner, in this case, to avoid litigation, settled and agreed to certain terms of the said rightful owner that included restrictions on having his tattooed knuckles photographed and censoring of the cafe’s logo, which happened to be the tattooed knuckle, from the window pane of his coffee shop. While it is essential to note here that not only was there no direct trademark infringement but also the coffee shop owner had not copied the design of the logo as it is. He had introduced the image of a coffee mug instead of the “♥” which could be proved as distinctive form of expression and could have stood his ground pointing the difference in the tattoo design from the allegedly infringed logo. Having said that, like the idiom “every coin has two sides”, every legal argument can be fought from both the sides as well, making this jurisprudence ever so interesting.

CONCLUSION:

There seems to be crystal clarity, with the Warner Bros. case[14] verdict and Shahrukh Khan’s tattoo[15] being granted copyright registration, that tattoos are indeed copyrightable property. The variable in the equation, however, is the extent of the rights that are to be granted to the parties and its enforceability. While the moral rights like endorsing the tattoos in the name of the tattoo artists and giving them their credits when they are due, are undoubtedly implicit, the debate that needs to be put to rest is the statutory rights that are to be bestowed on either party.

Another question that needs the legal community’s immediate attention is the enforceability of these rights once they are granted. In order to protect and execute these rights, we are in need of a strong precedent that will define the limit the extent of injunctive relief that may be sought by the copyright holders without violating the infringer’s fundamental rights. With a Catch-22 situation before us and no binding precedent to break this deadlock, one can see only two definite possibilities – either the tattoo artists are granted their much earned and awaited royalties for every picture, endorsement, and social media coverage given to their art, or the conscious tattoo bearers is to carry fresh, newly drafted contracts for their tattoo artists to have their rights assigned to them every time they enter a tattoo parlour!

Author: Amruta Mahuli, Legal Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at mumbai@khuranaandkhurana.com.

References :

[1] Where I’m Reading From: The Changing World of Books

[2] https://www.researchgate.net/profile/Aaron_Deter-Wolf/publication/275023614_The_Material_Culture_and_Middle_Stone_Age_Origins_of_Ancient_Tattooing/links/552ecd7f0cf2d495071a90b1/The-Material-Culture-and-Middle-Stone-Age-Origins-of-Ancient-Tattooing.pdf?origin=publication_detail

[3] https://www.ibisworld.com/industry-trends/specialized-market-research-reports/consumer-goods-services/personal/tattoo-artists.html

[4] 17 U.S. Code § 102

[5] http://archive.indianexpress.com/news/srk-registers-don-2-tattoo-in-his-name/817871/

[6]  S. Victor Whitmill Vs. Warner Bros., Civil Action No. 4:11-cv-752

[7]  Christopher Escobedo v. THQ Inc., Case No.: 2:12-cv- 02470-JAT, U.S. District Court, District of Arizona (Phoenix)

[8] Solid Oak Sketches, Llc V. 2k Games, Inc., U.S. District Southern District Of New York, No. 16-00724.; http://mitchellhamline.edu/wp-content/uploads/sites/37/2015/11/2-Copyrighting-Tattoos-Artist-vs.-Client-in-the-Battle-of-the-Wai.pdf

[9] Reed v. Nike, Inc, No. 05-CV-198 BR (D. Or. Feb. 10, 2005); http://www.brinksgilson.com/files/190.pdfl; Ibid. 5

[10]  Stephen Allen v. Electronic Arts Inc. et al., Case No.: 5:12-cv-03172, in the U.S. District Court for the Western District of Louisiana.

[11] http://www.barstoolsports.com/dmv/ea-sports-got-permission-from-colin-kaepernicks-tattoo-artists-to-use-his-ink-in-madden-15/;

[12] http://newsfeed.time.com/2013/05/02/employees-get-tattoo-of-company-logo-for-pay-raise/; http://www.bbc.com/news/business-28207945

[13] http://theconversation.com/who-owns-your-tattoo-maybe-not-you-56050

[14] Ibid. 4

[15] Ibid. 3

Legitimacy of IPRS and PPL

What is a Copyright Society?

The collective administration of copyright by a society is a concept where management and protection of copyright in several works are undertaken by the said society of authors and other owners of such works.

In India, a copyright society is registered under Section 33 of the Copyright Act, 1957. Such a society is formed by authors and other copyright owners which may include licensing entities by virtue of assignment from the original author. The business of issuing or granting license in respect of literary, dramatic, musical and artistic works incorporated in cinematograph films or sound recordings shall be carried out only through a copyright society duly registered under this Act. Ordinarily, only one society is registered to do business in respect of the same class of work.

The minimum membership required for the registration of a copyright society is seven. On registration, a copyright society stays in existence for 5 years[i], after which it must apply for renewal. The functions of a copyright society include prescribing a license fee in accordance to its “Scheme of Tariffs” as decided by the members of the society. Under the Copyright Rules, 2013, every society must publish its tariff scheme on a regular basis. The society also decides how the collected fees shall be distributed among the members of the society.

 

What are IPRS and PPL?

The Indian Performing Right Society (IPRS) and Phonographic Performance Limited (PPL) were Copyright societies registered under Section 33 of the Copyright Act, 1957.

IPRS came into existence on 23rd August, 1969 to administer and issue license for usage of all performing rights associated with composition and lyrics and got registered as a copyright society in 1996.

The Indian Phonographic Industry (IPI), the association of phonogram producers was established in 1936. Subsequently, it decided to form a specialised body to administer the public performance and broadcasting rights, and so Phonographic Performance Limited (PPL) came into being in 1941 and just like IPRS, it also got registered itself as a copyright society under the Copyright Act, 1957.

Controversy involving the legitimacy of IPRS and PPL

In 2012, the Copyright Act was amended and a series of changes were incorporated. Following the amendment, string of litigation, unfolding of facts and judgements came to the notice.

The said amendment was made in Section 33 of the Act wherein subsection 3A was inserted, the proviso to which stated “every copyright society already registered before the coming into force of the copyright (amendment) Act, 2012 shall get itself registered under this chapter within a period of one year from the date of commencement of the Copyright (Amendment) Act, 2012”, and came into force on the 21st of June, 2012.

Both IPRS and PPL applied for re-registration on 8th May, 2013 and 10th May, 2013 respectively which was only a month prior to the expiration of the granted period for re-registration. However, IPRS in a letter dated 2nd June, 2014 and PPL in a letter dated 20th May, 2014 expressed their intent to withdraw their application for re-registration. Thus, due to failure to re-register IPRS and PPL, the earlier copyright societies were automatically disqualified to operate as Copyright societies under Section 33 of the Indian Copyright Act.

Now, both the entities operate as Private Limited Companies, registered under the Companies Act.

Such aforesaid actions by IPRS and PPL could have ensued due to the amendments brought about in 2012. It may be pertinent to note that authors of copyrighted works usually assign their rights in favour of IPRS or PPL for the licensing of said rights. The amendment in 2012 resulted in the change whereby “owners of the right” in Section 33 was substituted by “authors and other owners of right”. Therefore, as per Sections 33(4) and 33(5), the Central Government by virtue of the amendment could intervene in the administration of the said copyright society if the affairs of such society were being conducted contrary to the interests of the authors of the copyrighted works.

Moreover, by virtue of the amendment, an author of a copyrighted work shall have the right to withdraw the exclusive authorisation given to the copyright society to administer any right in a work without prejudice to the rights of the said society under any contract. Further, Section 35 has been amended to provide that every copyright society shall have a governing body with such number of persons elected from among the members of the society consisting of equal number of authors and owners of work for the purpose of the administration of the society. Section 35(4) provides that all members of a copyright society shall enjoy equal membership rights and there shall be no discrimination between authors and owners of rights in the distribution of royalties.

IPRS v. Union of India and Ors. & Hasan Kamal v. Union of India

(Writ Petition no. 2384/2014 with 2236/2014)

There were several complaints keeping IPRS in limelight for irregularities which  ranged from non-distribution of royalties, illegal sub-licensing of royalties, illegal transfer of mechanical rights and ring-tones royalties to another copyright society- PPL and lastly, forging signatures and misrepresentation to the Ministry of HRD. All these acts were violative of Sections 33-35 of the Copyright Act, 1957. Taking cognizance of such complaints, the government proceeded to pass an order to appoint an Enquiry Officer to make necessary enquiries into alleged complaints and to give suggestions to improve the administration of IPRS, thereby Justice Shri Mukul Mudgal was appointed. Post that, IPRS moved the High Court of Bombay and argued that  Rule 50 of Copyright Rules, 2013 provides for the appointment of an office above the rank of Deputy Secretary to the Government of India for the purposes of this enquiry and contended that the appointment of a former Chief Justice of the Punjab and Haryana High Court was not in compliance with the provisions of the Act. However, later in September 2014, the Justice resigned from the post of Enquiry officer as he did not want his qualifications to be a subject matter of litigation.

It further contended that since it failed to re-register itself as a copyright society as per the amendment, the order was inapplicable since it was made on the assumption that IPRS was still functioning as a ‘copyright society’. The High Court dismissed IPRS’s contention and said that if such contentions were to be accepted, “it would be adding premium to dishonesty” since it was a registered society from 1996 to 2013. In this regard, the Court stated;

“We do not think that the Legislature intended such an absurd result. We are, therefore, clearly of the view that the Central Government had jurisdiction to form a prima facie opinion that an enquiry is required to be conducted into the affairs of the petitioner society in respect of the alleged violations of the Act and the Rules”

IPRS moved the Supreme Court of India by a Special Leave Petition which was dismissed.

Whether IPRS and PPL can be construed as Copyright Societies or not?

The question as to whether IPRS and PPL are to operate as copyright societies is important as Section 33 of Copyright Act permits only a registered copyright society or an authorised agent to carry out the business of issuing and granting licenses. Both IPRS and PPL have publicly stated that they are not registered copyright societies and even the Ludhiana High Court ruled that IPRS was not a registered society in 2013.

Interplay between Section 30 and Section 33

Section 30 of the Act provides that “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 licence in writing signed by him or by his duly authorised agent”

Thus, Section 30 provides for granting the license by agents on behalf of the owner. In the current scenario, the two entities, IPRS and PPL, claim to function as agents of their members and thus grant license in the name of the agent.

Section 33 of the Act provides “No person or association of persons shall carry on the business of issuing or granting licences in respect of any work in which copyright subsists or in respect of any other rights conferred by this Act except under or in accordance with the registration granted under sub-section (3)”

IPRS’ and PPL’s claim of functioning under Section 30 is overlapped by Section 33.  It needs to be reiterated that for the purpose of issuing or granting license, the entity needs to be a copyright society registered  under the Indian Copyright Act but IPRS and PPL maintain that they are not copyright societies and hence don’t come under the ambit of Copyright Act. Despite this, IPRS and PPL have repeatedly acted otherwise. In 2014, the IPRS filed a suit at the Delhi High Court where it verified that it was a copyright society, completely contradicting itself. In the same year, in other two cases — namely, IPRS v. Goodwin Jewellers and ors. – CS(OS)871/2014, and IPRS v. Black and White Media India and ors. – CS(OS)1274/2014, it approached the Delhi High Court as a copyright society, successfully managing to get the court to rule in its favour thereby digging its own grave.

Leopold Café Stores v. Novex Communications Pvt. Ltd.

Citation Order in Notice Motion No. 1451 of 2014 in Suit (L) NO. 603 OF 2014

In this case Hon’ble Bombay HC observed that “every agent also ‘carries on business’, but that is the business of agency, with the agent functioning as such, i.e., clearly indicating that it is acting on behalf of another, one who holds the copyright. This is the only manner in which both Section 33 and Section 30 can be harmonized. An absolute bar even on an agency, invoking Section 33, would undoubtedly run afoul of the plain language of Section 30 and render the words “or by his duly authorised agent” entirely otiose.”

“In order to qualify an agent, it is necessary for the agent to disclose that it is acting for and on behalf of the copyright owner in all the relevant documents.” Thus, license granted by IPRS and PPL can be only in the name of copyright holder and not itself.

On 14th August 2015, the Central Government announced the appointment of Y.P.C. Dangey, retired joint secretary and legal adviser of the Department of Legal Affairs in the Ministry of Law and Justice as Inquiry Officer to look into the inconsistencies and irregularities by IPRS and PPL all throughout its existence and submit a report. Further, IPRS was unsuccessfull in moving a writ petition regarding Dangey’s appointment against Union of India.

Chitra Jagjit Singh vs. The Indian Performing Rights Society 

Citation – MANU/DE/0917/2016)

In 2016, Delhi High Court restrained IPRS from granting any license in respect of the works of Jagjit Singh and also from recovering license fee from any third party in respect of the works, though it continued to collect license fee irrespective of the order. This case is landmark in the sense that for the first time court considered that IPRS is not competent in issuing license and collecting license fee, in furtherance of the decision of the court in the case of Novex Communications which was unclear on the standing of unregistered societies. The Hon’ble Court held that IPRS cannot claim to function as a company when it is issuing licenses in the capacity of a copyright society and hence, cannot issue licenses without being registered as such under the Copyright Act.

Recent Development

While Enquiry Commission’s report is still awaited, there has been a positive development as IPRS appointed Javed Akhtar – a noted poet, lyricist, scriptwriter as their chairman and Achille Foler – copyright administrator as a permanent advisor of the board.

Javed Akhtar on his appointment stated that it’s a “new chapter” and “writers, composers and publishers have risen above the past conflicts and have a taken a pledge to work together for the enhancement of Indian Music Industry’s reach and prosperity.”

Another positive step was taken by IPRS as it held the Extraordinary General Meeting on the 9th February 2017 which aimed to replace the Articles of Association. Moreover it was reported that the revamped IPRS has adopted a new working constitution which is fully in sync with the amended Copyright Act. The primary objective being, rightful royalty flow to the right’s owners, while simplifying the license procedure for the end users.

Authors- Himani Kohli and Pratik Das, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys and can be reached at info@khuranaandkhurana.com

 

[i] Section 33 (3A) of the Copyright Act, 1957, inserted by Copyright (Amendment) Act, 2012

IPOS chief chairs UN copyright committee

Mr. Daren Tang, Chief Executive, Intellectual Property Office of Singapore (IPOS), assumed the Chairmanship of the World Intellectual Property Organisation (WIPO)[1] Standing Committee on Copyright and Related Rights (SCCR), at its 34th Session in Geneva. As Chair, he will help steer the SCCR’s discussions on developments to the global copyright regime through his two-year stint.

The SCCR includes representatives from all 189 WIPO member states as well as the Berne Union. It is a platform for members to exchange insights and experiences on copyright matters, initiate international collaborations and facilitate international copyright agreements. An example of an outcome arising from SCCR discussions is the Marrakesh Treaty which facilitates access to published works for visually impaired or print disabled persons. WIPO, or the World Intellectual Property Organisation, is a specialised UN agency.[2]

Reportedly[3], the SCCR is currently discussing the scope of copyright protections (e.g. the limits and exceptions) with a focus on (i) educational activities, (ii) libraries and archives, and (iii) persons with disabilities (beyond Marrakesh Treaty). Another issue currently under review by the SCCR is the international protection of broadcasting organisations.

A 2014 WIPO[4] study found that copyright industries contributed an average 5.2 per cent to national gross domestic product (GDP) across 42 nations, and 5.3 per cent to national employment, the IPOS statement said. In Singapore, copyright industries contributed 6.2 per cent to both GDP and national employment, it added.

It is the first time a Singaporean has been elected to chair this Standing Committee at WIPO.

Chief Executive of IPOS, Mr. Daren Tang, said, “I am humbled and honoured to be supporting the SCCR’s work as its Chair. On behalf of the committee, we would like to thank the current Chair – Mr. Martin Moscoso Villacorta of Peru – for his contributions to the global copyright system. Together with all WIPO Member States, we will continue our efforts to help make a difference, and develop a vibrant and robust global copyright system that fosters creativity and drives economic growth.”[5]

Director General of WIPO, Dr. Francis Gurry, said, “WIPO welcomes the election of Singapore’s Daren Tang as Chair of WIPO’s Standing Committee on Copyright and Related Rights. Mr. Tang brings extensive experience in IP policy making, as a key player in developing Singapore to become a global IP hub in Asia. I am confident his leadership will advance the SCCR’s work during his tenure.”[6]

About the Author :Abin T. Sam, Jr. Patent Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at abhijeet@khuranaandkhurana.com

REFERENCES

[1] WIPO is a UN agency whose mission is to lead the development of a balanced and effective international IP system that enables innovation and creativity for the benefit for all. More information can be found from their website (www.wipo.int/about-wipo/en).

[2] IPOS. “Chief Executive of IPOS elected as Chairman of United Nations Committee on Copyright”. ipos.gov.sg. https://www.ipos.gov.sg/MediaEvents/Readnews/tabid/873/articleid/383/category/Press%20Releases/parentId/80/year/2017/Default.aspx. (accessed 18th May, 2017)

[3] Standing Committee on Copyright and Related Rights,Thirty Fourth Session. http://www.wipo.int/meetings/en/details.jsp?meeting_id=42296 (accessed 30th May 2017)

[4]  www.wipo.int/export/sites/www/copyright/en/performance/pdf/economic_contribution_analysis_2014.pdf

[5] Karekar, Rupali. “Ipos chief chairs UN copyright committee”. straitstimes.com. http://www.straitstimes.com/business/ipos-chief-chairs-un-copyright-committee. (accessed 18th May, 2017)

[6] Karekar, Rupali. “Ipos chief chairs UN copyright committee”. straitstimes.com. http://www.straitstimes.com/business/ipos-chief-chairs-un-copyright-committee. (accessed 18th May, 2017)

Digital Rights Management & Its Interaction with Net Neutrality

The online platform offers ample opportunity for infringement of copyrights and it is but natural for copyright holders to react apprehensively and clamor for absolute regulation of the digital copyright market. However, the virtual world is a whole different ball game where standard rules fail to achieve the desired objective. Therefore, a mechanism was developed to counter unauthorized use and give more control to the copyright holder over the categories accessible and the type of usage and modification allowed, called Digital Rights Management (DRM). It was proposed through the WIPO Internet treaties of WIPO Cooperation Treaty (WCT) and WIPO Performers and Phonograms Treaty (WPPT) to provide a flexible and globally enforceable mechanism of governing digital copyrights.

Functioning

DRM works on the format of a pre-existing contractual relationship where the copyright holder controls the usage of the work even after it has been accessed by the user. It controls the number of copies that can be made, specifies the modifications allowed and how much of the work can be accessed, after its sale to the user.[1] DRMs are a business management model based on a contractual relationship, and serve the interests of the creator or the facilitator of digital content.  They can range from mere content copy regulation to full-fledged management schemes regulating each action in the transaction, all in an encrypted fashion. The material to be accessed can be decrypted through special knowledge which may be acquired by performing certain authorized actions. Some mechanisms supervise and regulate the number of copies that can be made.[2] The machine readable information coded in Rights Expression Languages (REL) is used to control permissions which restrict access and use for certain periods and for certain users as well as influence the quality of the work accessible.[3] DRMs are widely used in e-books, video games, computer software, mobiles etc., and work quite well. However, this mechanism is not suitable for all digital platforms as will be delineated in the following pages.

DRM Provisions in Indian Copyright Act

The Copyright Amendment Act, 2012 incorporated certain DRM provisions in consonance with the WIPO Cooperation Treaty (WCT) and WIPO Performers and Phonograms Treaty (WPPT). India had consistently resisted becoming a contracting party to these TRIPS treaties, however, the incorporation of digital regulatory provisions indicates an alteration of position. Section 65A and 65B comprise the DRM provisions, the former dealing with protection against circumvention of technological measures and the latter with protection of rights management information. Clause 2(a) of section 65A also specifies that nothing in the provision shall prevent the doing of anything referred to therein for the purpose that is not expressly prohibited by the Copyright Act, 2012. Apart from this, the provision also exempts circumvention of technological measures for the purpose of certain activities like encryption research, lawful investigation, security testing of a computer system or a computer network with the authorization of the owner, protection of privacy and measures necessary in the interest of national security.[4] The Indian copyright law permits circumvention with the help of third parties provided certain procedural conditions are satisfied. However, section 65A provides for a criminal penalty of imprisonment for 2 years and a fine, for violation of this provision, which is a rather worrisome development.[5]

DRM and low Net Neutrality: the Unholy Alliance

An adverse impact on fair use is the least of the complications that DRM causes. In retrospect, analyzing the impact of its operation in the US and the EU is proof enough of its draconian and anti-progressive nature. Although the provisions in the Indian Copyright Act are not draconian in nature, DRM has the potential to turn the clock back on any society in which it operates. DRM makes generally legal things illegal, as a consequence of which innocent downloaders – who are free-loaders at best – are prosecuted under laws meant for pirates while the real threat continue to operate. Although India has not adopted such overly stringent enforcement mechanisms, the inclusion of DRM provisions in the Indian Copyright Act has not been founded on any rational basis.[6]Therefore, even a minimalist approach as adopted by India is not in our best interests. This discussion is intimately connected to the recent debates on net neutrality which is another regulatory initiative attempted at price differentiation among different classes of consumers using the internet for various different purposes. This would create inequality among consumers and only serve to benefit telecommunication companies who are lobbying for this initiative. The Free Basics initiative by Facebook which was aggressively advertised was actually against the principle of net neutrality as it sought to provide “certain basic internet services for free”. The problem with such differentiation is not only that there is no clarity as to what these basic services mean, whether they will be uniform across all service providers and is it appropriate for telecom companies to determine what will be available to whom, but there is also a danger of arbitrary decision-making which will ultimately adversely affect the users. This coupled with DRM would make fine potion for a user rights disaster, making a mockery out the whole system of IPR and competition law.

About the Author: Akriti Dhagga, Intern, at Khurana and Khurana Advocates and IP Attorneys

[1]Tarun Krishnakumar and Kaustav Saha, ‘India’s New Copyright Law: The Good, The Bad and the DRM’ 10 JIPR (December 2012).

[2] Arul George Scaria, ‘Does India Need Digital Rights Management Provisions or Better Digital Business Management Strategies?’ JIPR (September 2012) vol 17 pg 467.

[3]Sacha Wunsch-Vincent, ‘The economics of copyright and the internet: Moving to an empirical assessment relevant in the digital age’ Economic Research Working Paper No.9, WIPO Economics and Statistics Series, (July 2013).

[4]Indian Copyright Act, S 65A (2)(b) to 65A (2)(g)(1957).

[5] Arul George Scaria, ‘Does India Need Digital Rights Management Provisions or Better Digital Business Management Strategies?’17 JIPR 464, 463-477 (September 2012).

[6] Charles Bailey, ‘Strong Copyright + DRM + Weak Net Neutrality = Digital Dystopia’ Information Technology and Libraries 116-139 (September 2006).

Khurana & Khurana expands footprint in South East Asia

With business models over the world turning more idea-driven, Intellectual Property Rights (IPRs) are now one of the most valuable assets for any economy. With a significant increase in IPR related activities, South East Asia is developing as a key market for IP Protection and initiating Enforcement actions. Khurana & Khurana, Advocates and IP Attorneys (K&K) one of the leading IP and Commercial law firms in India is committed to provide high quality consistent End-to-End Legal Services in IP and Corporate Legal Matters, and with a belief that success comes only when one has a long-term perspective and high level of client orientation, we are expanding our footprints in South Asian countries (Bangladesh, Vietnam, Myanmar, Nepal) with our strong associations with an objective of being a single-point of contact for IP Prosecution Matters in South-East Asia.

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About K&K

Khurana & Khurana, Advocates and IP Attorneys (K&K) is more than a full-service Intellectual Property and Commercial Law firm.  K&K was formed with a very firm focus on providing end-to-end IP Prosecution/ Litigation and Commercial Law services in a manner that is Corporate Centric and follows stringent delivery practices that are consistent and are above-defined quality standards. K&K works closely with its sister concern IIPRD, both of which supplement each other in order to provide end-to-end IP Legal, Offshored IP Support, and Commercialization/Licensing services to over 3000 Corporates.

Our team of over 95 professionals spread across 6 Offices in India having high level of technical and legal competence, gives us the right competitive edge and positioning, as a law firm focused on creating immense IP value for our clients. K&K, through its experienced and qualified team of Attorneys/Practitioners, across Technology and Legal Domains, gives a rare synergy of legal opinion, out-of-box thinking for the protection of ideas/IP’s and entrepreneurial spirits to its client base. K&K is strongly ranked and recommended by Chambers and Partners, IAM, MIP, Legal 500, Asia IP, among other like agencies, and is an active member of INTA, APAA, AIPLA, LES, and AIPPI.