Category Archives: Copyright

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.

India’s time to delve into IP laws

Shireen Shukla, legal intern at Kkurana & Khurana, probes the recent International IP Index report, released by U.S. Chamber of Commerce, where India stood at 43rd position, out of 45 countries.

On 8th February, 2017 U.S. Chamber of Commerce released its 5th annual International IP Index, “The Roots of Innovation,” rating 45 world economies on patents, trademarks, copyright, trade secrets, enforcement, and international treaties with the aim to provide both, an IP report card for the world and a guidebook for policymakers seeking to bolster economic growth and innovation.

It is an undeniable fact that protection of intellectual property serves dual role in the economic growth of a country. Where on one hand it promotes innovation by providing legal protection of inventions, on the other it may retard catch-up and learning by restricting the diffusion of innovations. Therefore a sounder IPR protection in a country encourages technology development and technology transfer from developed to least developed countries. Countries that would demonstrate a commitment to IP laws will only reap rewards.

Often we have seen that major companies and brands invest their money or open their outlets in another country only after seeing the soundness of their IP laws. This proves the role of IP laws and enforceability on the GDP of a country.

GIPC is leading a worldwide effort to champion intellectual property rights as vital to creating jobs, saving lives, advancing global economic growth, and generating breakthrough solutions to global challenges  (Reddy, 2017). The Index ranked the IP systems of 45 countries. Where on one hand United States was ranked number 1, India and Pakistan were ranked 43 and 44 respectively.

Image Source: U.S. Chamber International IP Index: http://www.theglobalipcenter.com/ipindex2017-chart/#

 

Some major facts from the IP Index:

  • A pack of global IP leaders emerged among the 2017 Index rankings, with the U.S., UK, Japan, and EU economies, ranked more closely together than ever.
  • Canada signed the Comprehensive Economic and Trade Agreement (CETA), which raised the bar for life sciences IP protection.
  • Russia introduced new forced localization measures.
  • Japan’s score increased by 10% due to ratification of TPP and accession to the Index treaties.
  • South Korea passed amendments to the Patent Law.
  • Uncertainty around software patentability, Section 3(d) of the Patent Law, and High Court copyright decisions in India continue to present challenges.
  • Indonesia’s Patent Law included a heightened efficacy requirement and outlawed second use claims.
  • South Africa introduced new local procurement policies.
  • UAE created a specialized IPR Court.
  • Indian government issued the National Intellectual Property Rights Policy in 2016.

India announced the much-awaited National IPR Policy in May 2016. This act proved to be a positive attitude to foster the IP laws in India. The Policy is a boon for the IP industry as it provides constructive ways and methods to improve IP administration. The policy has enumerated the importance to educate Indian businesses about IP rights.

The Policy makers realizing the real issue in hand, addressed a number of important gaps in India’s national IP environment, which included the need for stronger enforcement of existing IP rights through the building of new state-level IP cells and investing more resources in existing enforcement agencies; reducing processing times for patent and trademark applications; as well as the need for introducing a legislative framework for the protection of trade secrets

Major developments and landmark judgments in Intellectual property laws since 2015:

  • The Delhi high court on 7 October 2015, barred Mumbai-based Glenmark Pharmaceuticals Ltd from selling, distributing, marketing or exporting its anti-diabetes drugs Zita and Zita-Met,as they tentatively infringed the patent of US-based pharmaceuticals company Merck Sharp and Dohme Corp.
  • In March, 2016, the Delhi High court in the case of Ericcson v. CCI for the first time ever, considered at how IP law interfaced with competition law. It allowed Competition Commission of India (CCI) to continue its investigation into anti-competitive practices by Ericsson regarding use of its SEP’s by other companies such as Micromax and Intex.
  • National IPR Policy in 2016, released last year is entirely compliant with the WTO’s agreement on TRIPS.
  • Examination time for trademarks has been reduced from 13 months to 8 months in the 2016 policy.
  • Bombay HC passed a series of judgments cases (Phantm Films pvt, Ltd. v. CBFC & Anr; Eros International Media Ltd. & Another v. Bharat Sanchar Nigam Ltd.) laid down a strict agenda for the grant of John Doe orders leading to path breaking shift in the John Doe jurisprudence in India. The above-mentioned judgments are focused on balancing the interests of not just copyright holders but also the Internet users and innocent third party providers.
  • The judgment by Bombay HC in Eros v. Telemax, is a pioneer that unwrapped the scope of arbitration of IP disputes arising out of licensing and other commercial transactions.
  • In December 2016, the Delhi High Court in the case of Agri Biotech v. Registrar of Plant Varieties declared section 24(5) of the Plant Varieties Act unconstitutional. The court giving a momentous judgment stated that the section violates Article 14 as it gives unchecked powers to the Registrar. The registrar is not required to be from a legal background in order to grant interim relief to a breeder against any abusive third party act during the period its registration application is pending.This lead to arbitrary use of powers by the registrar.

Beside the above-mentioned developments and progressions, PM Narendra Modi’s “Make in India” initiative also aims to promoting foreign direct investment and implementing intellectual property rights. In these initiatives, the government has decided to improve the intellectual property rights for the benefit of innovators and creators by modernizing infrastructure, and using state of the art technology.

One of the most recent and effective change brought in the trademark rules was on 6th march 2017, where the number of trademark forms have been reduced from 74 to 8 with an aim of simplifying the process of trade mark applications. The new rules promote e-filling of the trademark applications. The fee for online filing of the application is 10 per cent lower than that of the physical filing.

Steps India can take to strengthen its IPR laws:

  • India should implement speedy examination and registration procedures.
  • It should take effective steps to achieve the target of one month (as stated in IPR policy 2016).
  • The number of patent examiners and trademark offices should be increased to improve efficiency and disposal speed.
  • Section 3(d) of India’s Patent Act 1970, relating to restrictions on patenting incremental changes should be amended. Norms relating ever greening should also be revised.
  • A new and revised IPR laws and policies should be implemented so as to make it compatible with IPR laws of WIPO, TRIPS and other major dominant countries like US & UK

Every fiscal year, enormous time and money is being invested on R&D to improve the existing status of the Intellectual property laws in India, to bring it at par with the IP laws of US. We hope by following the above guidelines and following the National IPR Policy, India’s position improves in the next International IP Index 2017.

References :

  1. Prashant Reddy, The Press Release Journalism Around the GIPC IP Index, February 13, 2017, < https://spicyip.com/2017/02/the-press-release-journalism-around-the-gipc-ip-index.html&gt; Last accessed: 28th February 2017
  2. Merck Sharp And Dohme Corporation. v. Glenmark Pharmaceutical, FAO (OS) 190/2013, C.M. APPL. 5755/2013, 466/2014 & 467/2014, (Delhi High Court) (20.03.2015)
  3. Telefonaktiebolaget LM Ericsson v. Competition Commission of India, W.P.(C) 464/2014 & CM Nos.911/2014 & 915/2014, (Delhi High Court) (30.03.2016)
  4. Phantom Films Pvt. Ltd. v. The Central Board of Film Certification, W.P.(L) 1529 /2016, (Bombay High Court) (13.06.2016)
  5. Eros International Media Limited v. Bharat Sanchar Nigam Limited, C.S. No.620 /2016 & O.A.Nos.763 to 765/2016 (Madras High Court) (25.10.2016)
  6. Eros International Media Limited v. Telemax Links India Pvt. Ltd., Suit no. 331 /2013, (Bombay High Court) ((12.04.2016)
  7. Prabhat Agri Biotech Ltd. v. Registrar of Plant Varities, W.P.(C) 250/2009, (Delhi High Court) (02.12.2016)

 

The Mickey Mouse Debate

Mickey Mouse has always been synonymous with Disney, and has served as their ultimate mascot.Disney Corporation has always been protective of its creations and has ensured that their copyrights and their beloved mascot, Mickey Mouse, never fall into the public domain.  Every time the first Mickey Mouse copyright is set to expire, Disney springs into action to extend the copyright term.

The debate of copyright term duration is a long standing one. Initially, US copyright law provided for a copyright term which lasted for a period of fourteen years from the date of publication. This term could be renewed for an additional fourteen years if the author was still alive at the expiry of the first term. In 1831, the Copyright Act was amended and the term was extended from fourteen years to 28 years, which could be renewed for an additional 14 years.

In 1976 the copyright act went through major changes when the first Mickey Mouse copyright was set to expire. The amendment extended the term of copyright for works copyrighted before 1978 to life of the author plus fifty years after the author’s demise and 75 years for works of Corporate.

With only 5 years left on Mickey Mouse’s copyright term in 1998, Congress again changed the duration with the Copyright Term Extension Act, 1998 (CTEA) providing retroactive extension of the copyright term.It extended the term of protection to life of the author plus 70 years, and for works of corporate authorship to 120 years after creation or 95 years after publication, whichever endpoint is earlier. According to the Act works made in 1923 or afterward will not enter the public domain till 2019 or afterward, depending on the date of production. Disney’s Mickey Mouse is set to expire on 2023 and the debate on extension is set to begin again.

The Debate

So why is there so much debate about how long creative work can be protected by copyright? Copyright provides duality of purpose which is fundamentally at odds with each other. One purpose of copyright is to educate the public culturally by disseminating cultural knowledge. The other purpose is to foster creativity by allowing authors to reap benefits from works for a limited period thus encouraging them to create more works. It is in this battle that the debate for duration of copyright finds place.

The longest debate on duration of term with respect to copyright laws is in the US. Both proponents and opponents of extension have put put forth several arguments in favour of their stand, and this debate is set to resume soon, with the effect of the CTEA expiring at the end of 2018 and the first Mickey Mouse copyright entering the public domain in 2023.

Proponents of extension have maintained that the purpose of copyright is to promote creativity and art by allowing monopoly to the creators, thus giving them an incentive to create more. According to them, by giving exclusive rights to the creator for a limited time, both the author and the public benefit. The purpose of granting exclusive rights to authors isn’t so that they recoup their initial investment, but to let them earn substantial amounts so that they can create more works. In order to achieve this, copyright term must be for a considerable period.

Proponents of extension also argue that if works fall into the public domain they will go unused. If owners know that a particular copyright is going to lapse into the public domain, they would be unwilling to utilize it further, or create derivative works, and the public could lose out.

Another argument put forth by proponents of extension is that due to increase in life expectancy and longevity of business, copyright term must also be extended.Also, with better technology, the lifespan of a created work has become virtually infinite. This means that works can be exploited longer. Therefore, proponents of extension argue that unless copyright term is extended it to match the longevity of owners, and the longevity of the work itself, it no longer becomes an incentive for authors to create more work.

Copyright is as an extension of the creator’s persona. If it gets distorted or tarnished due to lack of protection, creators are discouraged from creating more works, potentially damaging their reputation. This also means that creators will be unwilling to disseminate quality copies of work if they are soon to fall in the public domain and risk being tarnished. This would mean that the public would lose out on culturally rich works.

Opponents of extension argue that authors have always known that their works would fall into the public domain, but this has never deterred them from creating new works. Further, extension of copyright stifles creativity as another person cannot build upon the works of the owner if it has not entered the public domain. Getting permission and licenses deters new creators from building on already existing works. This means the public would miss out on better works.

Opponents also argue that the increase in life expectancy argument is invalid as copyrights are protected for the lifetime of the author. Hence, if the life expectancy has increased it means that the copyright term will automatically increase as well.

When it comes to business entities owning copyrights, longevity of the creator is irrelevant. The opponents of extension have argued that copyrights are borrowed rights from the sovereign. Copyright is not an inherent, but a statutory, right given by the sovereign. However, irrespective of copyright being a statutory right, it needs to foster creativity. When business concerns know that copyright term is limited to a shorter duration, they are discouraged from investing further or creating derivative works. For example, when concerns like Disney know that their copyright over Mickey Mouse is set to expire soon, they would stop creating further derivative works, such as theme parks, products, animated works etc,.

In 2003, a study proved that the last two major copyright changes before CTEA, the Copyright Act of 1976 and the 1988 Berne Convention, had significant effects on copyright registrations.Yet another study, conducted in 2006, proved that countries that extended the terms of copyright from the author’s life plus fifty years to the author’s life plus seventy years anytime between 1991 and 2002, saw a significant increase in movie production.This clearly shows that copyright extension is in the best interest of creativity.

The Indian Scenario

The media and entertainment industry in India is still in its nascent stage. Copyright protection under the Indian Copyright Act is for a period of 60 years from death of the author. In 2008 Yash Raj and FICCI approached the HRD Ministry to extend the copyright term to 95 years like in the CTEA.The ministry welcomed film producers’ recommendations in extension of copyright term for the Copyright Amendment Act, 2010. While Parliament may not have agreed to extending the term of a copyright to 95 years like in the US, they did amend the law dealing with copyright term of films. The amendment has allowed joint authorship of the producer and the principal director for a film. Thanks to the amendment, a principal director will have a copyright protected for 70 years, as opposed to the producer who has only 60 years. This has effectively increased the term of protection for movies from 60 years to 70 years. The momentum for increasing copyright term is just starting and India will soon get to see similar debates as faced by CTEA in the US.

About the Author : Nadine Kolliyil, an intern at Khurana & Khurana, Advocates and IP Attorneys looks into the debate surrounding copyright extension in the US, and Bollywood’s attempt to extend copyright term.

References:

Simplified account of Copyright Registration in India

This article is intended with covering the basic FAQs about Copyright registration in India. For the sake of better focusing, format of questions and answers has been adopted.

  1. What is Copyright?

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. It is important to note that Copyright does not protect the ideas but protects the expression of the ideas.

  1. What kind of works can be protected by Copyright?

The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized uses.

  1. What kind of works cannot be protected by Copyright?

Ideas, procedures, methods of operation or mathematical concepts as such, titles, or names, short word combinations, slogans, short phrases, methods, plots or factual information are not protected by Copyright.

  1. Who can file for Copyright registration?

Any individual who is an author or rights owner or assignee or legal heir can file application for copyright of a work.

  1. Where can applications for Copyright be filed?

Applications can be filed both online and through Physical mode. Physical applications have to be directed to:

Copyright Division.

Department Of Industrial Policy & Promotion,

Ministry of Commerce and Industry;

G-30 Super Market August Kranti Bhawan

Bhikaji Kama Palace

New Delhi- 110066

For e-filing, instructions available at http://copyright.gov.in/UserRegistration/frmLoginPage.aspx may be referred.

  1. Can both the unpublished and published works be protected by Copyright?

Yes

  1. Is quality of work important for Copyright registration?

It is the originality of the work that is mandatory for the registration and not the quality of the work.

  1. What is the procedure for Copyright Registration in India?

After application has been filed and diary number has been allocated, applicant has to wait for a mandatory period of 30 days to check if any objection is filed in the Copyright office against applicant’s claim that particular work is created by him. If such objection is filed it may take another one month time to decide as to whether the work could be registered by the Registrar of Copyrights after giving an opportunity of hearing the matter from both the parties. If no objection is filed then application goes for scrutiny from the examiners. If any discrepancy is found the applicant is given 30 days time to remove the same. Therefore, it may take 2 to 3 months time for registration of any work in the normal course.

copyright_blog

Source: http://copyright.gov.in/ 

  1. What kind works of website can be protected through Copyright?

A web-site contains several works such as literary works, artistic works (photographs etc.), sound recordings, video clips, cinematograph films and broadcastings and computer software too. Separate applications have to be filed for registration of all these works.

  1. Whether computer Software or Computer Programme can be registered?

Yes. Computer Software or programme can be registered as a ‘literary work’. As per Section 2 (o) of the Copyright Act, 1957 “literary work” includes computer programmes, tables and compilations, including computer databases. ‘Source Code’ has also to be supplied along with the application for registration of copyright for software products.

  1. What kinds of right are granted to Copyright owner?

Copyright owner has two types of rights related to his work:

Economic Rights: Economic rights include for example right of reproduction, right of performance, right of broadcasting and right of communication which are derived from right of performance, rights of translation and adaptation.

Moral Rights: These are the rights that allow owner to maintain his image. These rights allow author to claim authorship of the work and to restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work which is done even after the expiration of the term of copyright if such distortion, mutilation, modification or other act would be prejudicial to his honour or reputation. It’s important to note that moral rights remain with original creator even after whole or in part assignment of the work.

  1. What is the term of Protection granted by Copyright?

Term of the protection depends on the type of work. Generally, it’s until the expiration of the 50th year after the author’s death. In case of anonymous work, it’s until 50th year after the work has been lawfully made available to the public. In case of pseudonymous work, it’s until 50th year after the work has been lawfully made available to the public, but if author leaves no doubt about the identity or reveals the identity of his or her work, the general rule applies. In case of Audiovisual (cinematographic) works, it’s 50 years after the making available of the work to the public (“release”) or if such event did not take place, then from the creation of the work. In case of applied art and photographic works, it’s 25 years from the creation of the work.

  1. Is India member of the international treaties related to Copyright?

Except, WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), India is a member of most of the important international conventions governing the area of copyright law, including the Berne Convention of 1886, the Universal Copyright Convention of 1951, the Rome Convention of 1961 and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).

  1. Which sections of the Act define what is and what is not infringement of Copyright?

Section 51 of the Act deals with the provisions related to infringement of the Copyright. Section 52 of the Act provides a detailed list of acts that do not constitute infringement. Owner of the copyright can seek criminal and civil remedies against accused infringer.

Reference:

copyright.gov.in/frmfaq.aspx

Amazon improves foothold in India: signs content licensing deal with T-series

E-commerce is growing widespread day by day in Indian market. It has become a current day reality from a buzzword, transformed the way business is done, transformed the way people transact and more specifically, has totally transformed the game for the Indian economy. Nowadays online market space is available for almost everything; you just think of something in your mind and can easily get without leaving your place. It has covered almost everything: tours, travels, entertainment, movies, hotel reservation, matrimonial services, recruitment services, banking services, electronic gadgets, fashion accessories, medicines, medical devices, groceries and the list goes on.

Indian retail sector has taken a great leap due to the growing popularity of e-commerce. Offering attractive and convenient shopping option has widened owing to acceptance and preference of only online shopping as a safe shopping medium. In more simple words it is now possible doing shopping for anything from anywhere at any time with online market space, that too, with ease of your own comfort and leisure. Be it your workstation or home or wherever, you can shop for the anything you want without even worrying about the closure or opening time of the market, and within the prescribed time period you will receive in your hands. Rising Internet access, increasing usage of smartphones and the preference of cashless transaction, being integral players, have facilitated e-commerce to propagate and flourish in each and every part of our country.

Growth and success emanates competition, which is getting intensified with major online retail players day by day. Over a year ago, Snapdeal and Flipkart were the two major players, and then Amazon India has overtaken Snapdeal’s market. Two horse race between Flipkart and Snapdeal, has now transformed in to two horse race again, but, between Flipkart and Amazon, replacing Snapdeal.

Reportedly, Snapdeal’s market share dropped to 14% from 19% a year ago while Amazon’s gained from 14% to 24% in the same period and Flipkart remains the leader despite a fall in market share to 37% from 43%.:

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Flipkart and Amazon are struggling high to win in the game of capturing Indian market share and to sustain that position.Both companies are developing various plans and strategies, like offering best discounted deals, announcing financial investments, acquiring major players in retail sectors, joining hands with big brands and signing licensing deal and agreements to have the batter coverage of the market. In the verge of the same Amazon has signed a long term content licensing deal with T-Series for its prime video services, which has not been launched yet, for pleasing the commitment of providing value added services to members . As a result of this deal, Amazon prime members would be able to enjoy the best of the Bollywood movies by T-Series within a few weeks of their theatrical release.Seventeen under production films by T-Series, which include Raabta, Chef, Tum Bin 2, Wajah Tum Hoetc. will be showcased to the members of prime video before their premier on TV. Previously Amazon has also signed almost similar type of pacts with Dharma Production, Vishesh Films and Excel Entertainment. Amazon is trying their level best to win their customers/members whole heartedly, fulfilling all of their need and interest. Indeed, Amazon is continuously improving its foothold in the Indian market to grab the position of leader in e-retail sector

But as we have seen historically, in internet business sector, there often remains single dominant leader like Facebook and Google in social networks and search engines respectively. Whereas, here it looks like oligopoly with two strong competitors Flipkart and Amazon; one is of home origin and another of American origin.

Battle is going on. Let’s wait and watch, who will takes all market? And we as customer enjoy their favours and offers.

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

References:

  1. http://economictimes.indiatimes.com/small-biz/startups/snapdeal-slips-against-its-two-main-rivals-flipkart-amazon-can-it-get-its-mojo-back/articleshow/54705032.cms
  2. http://economictimes.indiatimes.com/tech/internet/amazon-inks-content-licensing-deal-with-t-series/articleshow/54566544.cms
  3. http://tech.economictimes.indiatimes.com/news/internet/amazon-signs-up-dharma-productions-for-prime-video-push/54524365
  4. http://economictimes.indiatimes.com/small-biz/startups/amazon-signs-content-deal-with-vishesh-films/articleshow/54398306.cms
  5. http://economictimes.indiatimes.com/industry/media/entertainment/amazon-signs-up-excel-entertainment-to-ensure-enough-takers-for-prime-service-in-india/articleshow/53548913.cms

Wanna play Music commercially? Pay the Royalities first!

This may sound difficult given that commercial places in India have taken right to play the music as their inherent one. Situation may change soon after two recent judgements of Hon’ble Delhi HC. First one was delivered by JUSTICE S. MURALIDHAR on August 12, 2016 and second one was delivered by JUSTICE V. KAMESWAR RAO on September 30, 2016. Interestingly in both the cases, Indian Singers’ Rights Association (ISRA) was involved as plaintiff. In both the decisions, applicant court gave decision in favour of plaintiff and asked defendant to pay royalties to the plaintiff.

Basic information on ISRA, laws relating performance rights have been discussed below:

ISRA is the first Copyright Society to be registered by the Central Government after the 2012 amendments to the Copyright Act. According to its official website, M/s. Lata Mangeshkar, Usha Mangeshkar, Suresh Wadkar, Gurdaas Mann, Pankaj Udhas, Alka Yagnik, Kumar Sanu, Abhijeet Bhattacharya, Sonu Nigam & Sanjay Tandon with support from M/s. Asha Bhosle, Shaan, Kunal Ganjawala, Sunidhi Chauhan, Mahalaxmi Iyer and others formed the ISRA (Indian Singers’ Rights Association). ISRA was incorporated as a Company Limited by Guarantee under the Companies Act, 1956 on 3rd May, 2013. Thereafter, ISRA filed for Registration as a Copyright Society as per Section 33 of the Copyright Act and received its Certificate of Registration from the Central Government on 14th June, 2013. ISRA is independent of The Indian Performing Right Society (IPRS) and PPL (Phonographic Performance Ltd.). IPRS looks after the interests & Royalties of Composers/Lyricists. PPL looks after the interests & Royalties of Music Labels. ISRA looks after the interests & Royalties of Singers. The Copyright (amendment) Act, 2012 came into effect from 21st June, 2012. The amendments were historic in a way that they amended the provision regarding “Performers” to protect their interests in line with India’s international commitments. “Performer’s Right” in India after the amendment is in harmony with Article 14 of the TRIPS Agreement as also is compatible with Articles 5 to 10 of the WIPO Performances and Phonograms Treaty (WPPT). The Performers’ Rights subsist for 50 years from the beginning of the calendar year next following the year in which the performance is made. Section 38A and section 38B respectively provide for economic rights and moral rights over the performance.

According to section 38 A, the Performer’s Right are an exclusive right to do or authorize the doing of any of the following acts in respect of the performance or any substantial part thereof:

1) to make a sound recording or a visual recording of the performance;

2) to reproduce the performance in any material form including the storing of it in any medium by electronic or any other means;

3) to issue copies of the performance to the public not being copies already in circulation;

4) to communicate the performance to the public;

5) to sell or give the performance on commercial rental or offer for sale or for commercial rental any copy of the recording and;

6) to broadcast or communicate the performance to the public except where the performance is already a broadcast.

The “Performers Right” runs parallel to Rights of Composers/Songwriters, Producers & Music Companies. It’s interesting to note that Performer can assign his copyright but cannot assign or waive the right to receive royalties for the utilization of such performance in any form other than for the communication to the public of the performance along with the film in a cinema hall. The performer can assign the right to receive royalties to either his Legal Heir or a Copyright Society for collection and distribution. This cannot be even circumvented by contract to the contrary.

ISRA soon after its creation decided the amount of royalty that has to be paid to the performer. Different Tarrif schemes such as applicable to radio broadcasting, broadcasting over satellite/ TV channel can be accessed at http://isracopyright.com/tariff_scheme.php .

After these judgements, rights of singers are clearly established and commercial establishments will have to change long continued practices of playing the music without paying royalties to singers.

Kudos ISRA.

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

Movie Titles and their Protection in India

Ms. Shreya Shrivastava, an intern at Khurana & Khurana, Advocates and IP Attorneys looks into the aspect of protection of Movie titles in India along with the parameters to avail the same.

What’s in a name? That which we call a rose by any other name would smell as sweet.” Turns out this quote by William Shakespeare does not hold true for the Producers of motion pictures. A name is an identity for a person, product, company, books or movies.

When it comes to choosing a title for a movie, film makers are very particular about the uniqueness and suitability. A title that is catchy and distinctive finds a place in the minds of the audience instantly and thus lots of money and efforts are put into achieving the right one.

The conventional practice followed by the film producers is to get the plot or titles registered with the film industry associations like Indian Motion Picture Producers’ Association;Film Writers’ Association; Television Producers’ Guild of India; Association of Motion Pictures and Television Program Producers and Film and Western India Film Producers Association. These associations are working consistently to endorse and encourage the production of motion pictures and to protect the commercial interest of films produced in India. Before registering a title, the association usually verifies the registration of same or deceptively similar title with other associations. However such registration has no effect on any legal proceedings, it only establishes precedence in the adoption title.

Under Indian Copyright Act, protection is conferred on literary works, dramatic works, musical works, artistic works, cinematograph films and sound recording but not to titles alone. Thus copying of a title alone and not the plot of the movie, the characters, songs etc does not fall under the ambit of copyright protection. It is common, rather it is imperative, to give title to literary or entertainment works. The literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then that such work would be identified. The term ‘literary title’ is used to encompass the titles of books, periodicals, newspapers, plays, motion pictures, television series, songs, phonograph records, cartoon features and the like.[1]

Movie titles in India may be registered under Class 41 of the Trademarks Act 1999. Movie titles can be bifurcated into two heads, that is, titles of series of movies, like for instance ‘Munna bhai MBBS’ and ‘Lage raho munnabhai’ and title of a single movie. In case of a single movie title, it must be established that the title has acquired secondary meaning amongst the public at large. The test of secondary meaning for literary titles is basically to determine whether in the minds of a significant number of consumers, the title in question is allied with a single source of the literary work.

In Kanungo Media (P) Ltd. v. Rgv Film Factory And Ors.[2] Kanungo media had produced a Bengali documentary movie titled Nisshabd, which had won numerous awards in various significant film festivals but was not released commercially. The plaintiff challenged the use of their highly acclaimed film title Nisshabd by the defendant for its upcoming Bollywood movie. The Court held that while the title of a literary work could be protected under the trademark law, in order to prove likelihood of confusion, it would be vital to establish consumer recognition and secondary meaning. The Court denied the relief of injunction based on the fact that the plaintiff’s film has not acquired secondary meaning. Also plaintiff approached the court very late after huge expenses had been made by defendant in advertising, promoting the movie and other marketing strategies and thus there was delay in filing the suit.

In Biswaroop Roy Choudhary v. Karan Johar[3] , Producer Biswaroop Roy filed a suit in the High Court seeking permanent injunction to restrain Karan Johar from using the title “Kabhi Alvida Naa Kehna”. The title had been filed by Karan Johar with the Association of Motion Pictures and TV Program Producers and the Film and Television Producers Guild of India also. The court dismissed the petition on the grounds that where words or phrases in common parlance are sought to be used with exclusivity, the Court should take care to determine which of the parties has ended its journey or traversed appreciably longer way in the use of such words as a trademark or as a title.[4]

In the case of Warner Bros. Entertainment Inc. and Anr v. Harinder Kohli and Ors.[5], the plaintiffs of the registered Trademark ‘HARRY POTTER’ alleged infringement of Trademark and sought a permanent injunction from the use of the title ‘Hari Puttar’, which was registered with Indian Motion Picture Producers’ Association and the Guild and was ready for commercial release. The Court dismissed the case due to the fact that the Harry Potter films meet the entertainment needs of an exclusive audience who can distinguish between films based on a Harry Potter book and a film which is a Punjabi comedy. Confusion of Hari Puttar with the plaintiff’s popular trademark Harry Potter was unlikely and also on grounds of delay.

It is thus clear from the above case decisions of the court that by mere registering a movie title either with any of the independent trade associations or as a trademark with the Registry may not be enough of the protection in title rights. Even though registering it is advisable but in order to establish one’s right over the title it is imperative that consumer recognition and secondary meaning is adduced to it. In order to do that, one has to actually use the trademark. Even if the work has not been released, a sufficient amount of pre-release publicity of the title may cause a title to acquire recognition sufficient for protection. Relevant evidence from which secondary meaning for a literary title may be inferred as a question of fact include: (1) the length and continuity of use; (2) the extent of advertising and promotion and the amount of money spent; (3) the sales figures on purchases or admissions and the number of people who bought or viewed plaintiff’s work; and (4) the closeness of the geographical and product markets of plaintiff and defendant.[6] Also, delayed approach to the court to enforce one’s right in the titles can also be of loss to the plaintiff.

Any cinematographic work is identified by its title for decades. People conceptualize the idea behind the work by associating it with the title and hence it is becoming a perquisite to register it in order to protect and preserve the commercial interest in the film. The registration not only provides exclusive right over the title but also restrains the unauthorized use or adoption by another.

[1] McCarthy on Trademarks and Unfair Competition, Third Edition (1995) Vol. I

[2] 138 (2007) DLT 312

[3] 131 (2006) DLT 458, 2006 (33) PTC 381 Del

[4] Supra

[5] 2008(38)PTC185(Del)

[6] Kanungo Media (P) Ltd. vs Rgv Film Factory And Ors. 138 (2007) DLT 312