Tag Archives: copyright

Update on Recent Stakeholder Meeting Held On 03.08.2018 at IPO, Delhi

Few of the following issues with respect to various field of  Intellectual Property, were raised by the stakeholders :

I. Patents:

a) E-communication, websites and allied issues

  • FERs are not notified to the applicants leading to abandonment of application.
  • The Patent Office website do not provide for Sequence Listing uploading in txt. format and the inline module do not provide for uploading of formal drawing after the Indian Patent application has been filed. This website also do not provide for Foreign filing authorizations and do not facilitate the certified copy as well.

b) Processing Of Application , Hearing, Video-Conferencing

  • There is no clarification regarding what documents can be filed by a Foreign Entity for claiming Small Entity Status as per Patent Rules, Form-28.
  • Hearing notices are not received, thereby leading to abandonment of the application, in case the hearing is not attended.
  • Hearings are pending in respect of post grant matters and review petitions.

c) There is no mechanism to keep a check on the opposition filed against a patent/patent application, and also the same including Pre-grant opposition is not served to the Applicant.

 
d) Other Issues

  • IPOs should provide FAQs with regard to Start-up , NBA and TKDL and allied subject.
  • IPO must conduct user satisfaction survey on quality of examination.

The IPO considered these issues and is implementing the following change:

  1. IT Support Cell has been established to provide necessary help and resolve the problems relating electronic communication. This has helped IPO in the errors relating to e-communications to less than 1%.
  2. IPO will be implementing IPO2 version of patent database, which will make filing of patent application easy and efficient and would resolve other websites issues.
  3. IPO clarifies that a Foreign entity may submit the financial statement showing its annual turnover in order to claim Small Entity Status complying with the provisions stipulated under MSME Act 2006 of India
  4. IPO advices the applicant to ensure that none of the mails regarding IPO shall drop in the spam account.
  5. In order to settle the work load of IPO with respect to FER, amended cases and post-grant matters and for clearing the pendency of matters, the Controllers appoint hearings.
  6. IPO is under the process of developing a separate module for tracking and updating the proceedings related opposition.
  7. With regard to the FAQs faced by stakeholders from their clients, IPO welcomed to answer all the FAQs provided that the stakeholders shall submit a list of such FAQs.
  8. IPO is developing a separate window of the IPO website in order to facilitate user satisfaction survey on quality of examination.

 II. Trade Mark

a) Trade Mark Registry does not allow any amendment to user details defying to the directions given by Delhi HC through decision.

b) TMR do not exercise a uniform Practice in show cause hearings with regard to interpretation of law.

c) Video Conferencing in Trade Marks should be implemented.

d) Refusal orders are sent even after filing the required documents. TMR Chennai is not handling post-registration matters.

e) There is no up-gradation of records of TMR, which results in citing in the examination report, those marks that were registered but not renewed. The dead marks continue to remain in the records of Trade mark register.

f) Hearings in international matters are being held at Mumbai Trade Marks Registry only. However, Section 36C states that an international application shall be dealt with by the head office of the Trade Marks Registry or such branch office of the Registry, as the Central Government may, by notification in the Official Gazette, specify.

The steps taken by IPO with regard to the above raised issues:

  1. IPO clarified that Delhi high Court has directed to decide the amendment of user details on case to case basis and no other administrative directions can be issued in this regard. IPO confirms that the matters are refused only in case of insufficient supporting documents.
  2. Trade mark Registry is under the process of preparing a Module for the purpose of registered user.
  3. In order to bring consistency in the proceedings, All hearing officers are being provided with a regular basis training program.
  4. IPO is seriously considering to implement the use of Video Conferencing and thus, the same is under Trial in TMR.
  5. Appropriate action has been taken up for sorting any issues related to proceedings of the post registration matters.
  6. TMR has noted the concern regarding non-up-gradation of Trademark records and appropriate actions will be taken against it.
  7. TMR will be providing Video-conferencing facility in order to conduct the hearings of International matter at all branch office.

 III. DESIGNS

a) There are many technical issues regarding online filing of Designs application. Few of the problems are:

  • Application forms drafted using the online portal are non-editable, therefore, if any amendment has to be made, the whole application is to be drafted again.
  • The fee receipt issued for online applications do not show details regarding classification of articles.
  • The online portal of the Design Office do not provide any applications except certified copies.
  • The applications filed online sometimes are objected to submit original application form and representations, thereby, duplicating efforts and increasing timelines.
  • The online portal do not show any update regarding any amendments/assignments made in the design post registration.

The Indian Patent and Design office has noted the above issues and are in the process of updating the Module to resolve the issues relating to online filing of applications.

IV. COPYRIGHT

a) IPO do not have efficiency and transparency as the Copyright office does not timely acknowledge or respond to the applicant. In many cases, the copyright office asks the applicant to re-submit copyright work without providing any explanation for the same.

b) Copyright – Searchable data is not available

The steps taken by IPO with regard to the above raised issues:

  1. The Copyright office has taken various steps to reduce the pendency of applications, which has brought a positive change.
  2. The Copyright office website has started to display the application received on a monthly basis, in order to increase transparency and stakeholder’s participation and to make it easier for the applicant to keep a track on the status of the Application. This also helps in facilitating information to the stakeholders and thereby, providing them an opportunity to file an objection if any before the Registrar of Copyrights.
  3. Further, the communication regarding Discrepancy Letter and the Register of Copyrights (R.O.C) between the Copyright Office and the Applicants can be transmitted via emails registered on: http://www.copyright.gov.in.
  4. Copyright Office has also published the Practice and Procedure Manual for examination of Literary, Artistic, Musical, Sound Recording and Cinematograph Films.
  5. Preparation of database for past copyright register for search purpose is under consideration.
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Case summary of “Cabell v. Zorro Productions, Inc.”

BRIEF INSIGHT INTO THE DISPUTE:

Introduction:

This case is a result of copyright infringement of a musical based on the story of Zorro.The character of Zorro originally was developed by Johnst McCulley which was further adapted in stories. All of the stories are part of public domain. Cabell (hereinafter “the plaintiff) made a musical based on the story available in public domain and Zorro Productions (hereinafter “the defendant) is the assignee of the character Zorro. The Plaintiff produced a musical titled “Z – The Musical of Zorro” and got its scripts and audio with the U.S. Copyright for original, novel elements of his work but not the elements in the public domain as of 1996.

The Plaintiff met the Defendant for the production of the Musical but the agreement did not materialise and the defendant gave a legal threat to the Plaintiff not to publish their work without a license from them. Later, the Defendant licensed the use of the character Zorro to Allende in 2005 and separate musical in 2008.

Facts:

  • The Plaintiff filed an infringement suit claiming that the novel and the musical was infringing its musical and seeking a declaration that the Plaintiffs’ musical is not infringing the copyright of the Defendant.
  • The Defendant cross-moved an application claiming that the Plaintiff was infringing its copyright.

ARGUMENTS BEFORE THE COURT:

The arguments advanced by the Plaintiff are –

  • The Defendant had access to the script of the musical of Plaintiff due to their exchanges with respect to a licensing agreement in 1966 which did not materialize.
  • The Plaintiff contended that there was substantial similarity between both the works.
  • The Plaintiff further contended that three characters from its script were sufficiently developed and therefore, it should be granted protection.
  • The Plaintiff’s musical was based on public domain and therefore, does not infringe the copyright of the Defendant

 The arguments advanced by the Defendant are –

  • The Defendant contended that the Plaintiff’s musical is infringing its copyright.
  • The Defendant further contended that Statute of Limitations will be applicable because when both the parties met for the licensing agreement, the Defendant had informed the Plaintiff that its musical is infringing the copyright of the Defendant.

DECISION OF THE COURT:

The court thus decided;

  1. That the Plaintiff’s musical does not infringe the Defendant’s copyright over the character of Zorro.
  2. That the Defendant’s musical and novel does not infringe the Plaintiff’s musical and does not have similar theme and setting.

CONCLUSION:

The Court analyzed the plaintiff’s claims. It was not disputed that the Defendant had access to Plaintiff’s script as a licensor holds a supervisory authority and there was an agreement between the Plaintiff and the Defendant which did not materialize so the Court cannot rule out a possibility of the Defendant having an access to the script. The Court followed the extrinsic test to conclude if there is a substantial similarity between the two works. The extrinsic test focuses on “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events”. The Court determined that the plot of the novel was focused on the character Zorro’s childhood whereas the Plaintiff’s musical is based on Zorro when he is an adult. The Court found differences in the settings, theme, pace, mood and tone of the two works.  The Court concluded the claim of the Plaintiff by adjudicating that the claim of Plaintiff that three characters from the musical were sufficiently developed in the novel cannot stand as there is no substantial similarity between the two and the treatment given to them is also dissimilar.

Adjudicating on the claim of the Defendant that the Plaintiff is infringing its copyright, the Court concluded that a reasonable person will not find substantial similarity between the two musicals. The Court disagreed with the contention that Statute of Limitations will be applicable in the present dispute as the Defendant has the right to file an infringement claim whenever the Plaintiff produces its musical. The Court rested the dispute by applying the doctrine that a party abandons claims by not raising them in opposition to a summary judgment motion and held that the Defendant had abandoned its claims of copyright infringement by not raising it in opposition to a summary judgment motion and passed a declaratory judgment claim in favour of the Plaintiff in this regard.

Note: Several quotations from the judgement are included in this article. The complete judgment can be found here.

Author: Ankita Aseri, Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

Copyrighting Patents

The nature of Intellectual Property Rights is such that, like any other law, it has loopholes as well as overlaps. These overlaps arise due to the fact that IPR protects ideas by their expressions and expression can be in more ways than what can be imagined by one person. There are subject matters which are eligible for the protection of more than one kind of IP. The prime example is the overlap between design and copyrights which has been statutorily dealt with under the Copyrights Act.

However, the recent debate has been with regard to Copyrights and Patents. Now, both of these are as far apart as two IP protection sects can be. Copyright protects literary, dramatic, artistic, cinematographic, musical works whereas Patent grants rights to functional inventions which are novel, useful and non-obvious. However, these rights find a commonality in the patent applications. It is pertinent to disclose the information relating to the working of the invention in the patent application by way of specifications. These specifications also include certain drawings and sketches of working models of the invention. There has been a long standing question whether these applications, which consist of the originally authored specifications and drawings, are eligible to be granted a copyright. Or alternately, can the specifications in the patent application be infringing upon copyrights owned by other authors/scholars.

Countries have taken different stands in the matter. Germany, for instance, excludes patent documents from the copyright protection from the time they are published.[1] However it is necessary for a person to cite the source when using it in a scholarly or academic work. Switzerland as well exclusively exempts the patent documents from being copyrighted.[2] On the other hand the position in UK differs depending on when the patent was filed. All the applications filed prior to 1989 were protected by the Crown Copyright. However, after they enforced their 1988 Copyright Act all the applications prior to 1989 remained with the government  unless they had a copyright notice on them, and the copyright for all the applications filed after that date lies with the applicant and no use can be made unless with express license except for the purpose of ‘dissemination of information’.[3] USA holds a different position for copyrighting patent applications. It has been stated that all the information posted on the website of the USPTO is considered to be in the public domain but the government holds international copyright over it. However, the applicants are allowed to specify their copyright on the patent drawings or other materials.[4]

There have been very few cases which discuss the copyright ability of patent applications. The US case that accepted that copyright subsists in a patent application was In Re Yardley.[5] In more recent cases, it has been questioned whether patent applications can be challenged in court as infringing a copyright. In American Institute of Physics and John Wiley & Sons, Inc. v. Schwegman, Lundberg & Woessner P.A. [6], the University alleged that the firm infringed their copyright by attaching a scholarly article in their patent application. The firm on the other hand took the defense of ‘Fair Use’ and stated that the articles were taken from the USPTO website itself. In two other cases, American Institute of Physics and Blackwell Publishing, Ltd. v. Winstead PC[7]  and John Wiley & Sons, Ltd. and American Institute of Physics v. McDonnell Boehnen Hulbert & Berghoff LLP [8]—and again, after intervention by the PTO—the plaintiffs similarly amended their complaints to disclaim any allegation of infringement based on submission of copies of copyrighted articles to the PTO, or on retention of file copies of the works submitted to the PTO.[9] The defendants in all these cases stated that disclosure of prior art was necessary in order to secure a patent for their invention and thereby should be included under the exclusion of ‘Fair Use’. The court accepted this and said that as long as it proves to be of evidentiary value and is a requisite for disclosure for the government the use can be deemed to be fair.

Contrarily, the UK courts do not follow the same rationale. In Catnic Components Ltd. & Anr. v. Hill and Smith Ltd. the court held that the copyright in a patent ceases to exist once it is published. The court was of the opinion that the main underlying principle behind granting a patent is full disclosure. The idea is to bring the invention into public domain so as to boost innovation. Copyright on the other hand restricts the rights of other people by giving exclusive rights to the owner of the copyright. It is a conflict between the most basic objectives of the two rights. Furthermore, scholars have pointed out that granting copyright could in effect hamper the innovations further. The term of a patent is a maximum of twenty years but in case of copyrights the term is much longer and continues to be in effect 60 or 70 years after the death of the owner, depending on the domestic laws of the country. This creates a problem as to the fact that even after the invention is out in the public domain there would still be rights which will be otherwise attached and thereby will beat the purpose of being in public domain. These questions have not yet arisen in front of the Indian courts and the law is also silent on it, nothing has been stated explicitly. But the position of other countries gives us a fair idea as to how allowing copyright in patent applications or not can lead to different scenarios and raise different questions.

Author:  Yashvi Padhya, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.

References:

[1] https://www.dpma.de/english/patents/faq/index.html#a22

[2] https://www.admin.ch/opc/en/classified-compilation/19920251/index.html#a5

[3]http://webarchive.nationalarchives.gov.uk/20140603113132/http://www.ipo.gov.uk/types

/copy/c-other/c-other-faq/c-other-faq-type/c-other-faq-type-patspec.htm

[4] https://www.uspto.gov/terms-use-uspto-websites

[5] 493 F.2d 1389 (CCPA 1974)

[6] D. Minn. Civ. No. 12-528

[7] N.D. Tex. No. 3:12-CV-1230

[8] N.D. Ill. No. 12 C 1446

[9]http://www.mondaq.com/unitedstates/x/283736/Copyright/Can+a+Patent+Application+

Violate+the+Copyright+Laws

Diet Sabya – The New Call Out On Copyright And Fashion

The motifs on my jackets were hand-drawn and hand-embroidered. The collection is still selling, and one piece is sold for Rs. 40,000. However, one brand is re-creating the motifs as digital prints and selling it for Rs. 1,500.

          – Designer Rahul Mishra in an interview to Times of India on 13 May 2018.

‘Inspiration’, ‘Homage’ and ‘Dedication’ are few words that designers use shamelessly while ‘Copying’, ‘Infringing’ or ‘Plagiarising’ other’s design and fashion works. Earlier, clothing was necessity and hence seen in a utilitarian aspect. However, with changing times fashion has grown from utilitarian to artistic creations.With ever-increasing fashion industry, there are huge cries amongst the designer whose works are blatantly being ripped off.  Every Indian on the streets of Chandni Chowk, Delhi or Linking Road, Mumbai has been witness to knockouts and counterfeits of Sabyasachi’s lehengas and Manish Malhotra’s fashion week designer outfits. The reason being weak IP laws pertaining to fashion industry.

The lingering issue of Copyright protection in the Fashion industry has revived again due to internet sensation ‘Diet Sabya’. Diet Sabya is an anonymous Instagram page and desi-version of Diet Prada. The page calls out plagiarised fashion design works by comparing it on side-to-side basis. It has garnered attention of many in a short span of time with various celebrities appreciating the cause and various others fuming it.

Diet_sabya_blog1      diet_sabya_blog2

The relation of fashion and copyright has always been complicated. IP protection via trademark is limited in its scope. It will cover only those patters or marks which helps the brand in its attaining its distinctiveness. Famous examples include Christian Louboutin and its trademarked red sole on footwear. However, Copyright is an IP protection which can save the drowning boat of designers. However, it comes with a set of its own problems.

The Scope of Copyright Protection

Getting a copyright registration is not necessary. A copyright exists as soon as the work is created. The first question then arises is whether a design is a work under Section 13 of the Copyright Act, 1957? Artistic work under Section 2(c) includes drawings, among other things. The sketches of the designs are drawings and can be protected under the Act. Also, copyright in artistic work includes conversion of 2D work into 3D work. So, when a drawing or sketch of a dress is converted into an actual dress, it would still enjoy the protection of Copyright.

The problem starts with Section 15 of the Copyright Act which provides that there cannot be any dual protection of design. It means that one cannot protect his design under Copyright Act as well as Design Act. If an Applicant wants Copyright protection for his design, he needs to submit an affidavit stating that the design is not enjoying protection under the Designs Act. The clause 2 of the said section also states that a copyright in any design which has not been registered under the Designs Act will cease as soon as the Article is reproduced more than 50 times by an industrial process.

Hence, the dilemma starts. Whether the work of fashion should be protected under Copyright Act or Designs Act? There is no definite answer to this. Some may prefer Copyright registration as it gives protection for more years than what Designs Act could give. On the other hand, some feel that there could be no purpose of registering a fashion work under the Copyright Act if it cannot be reproduced more than 50 times.

Another pitfall with copyright registration is that fashion is all about trends. It phases out every season. Getting a copyright registration takes its own time and there is a possibility that by the time the creator gets the registration, the fashion trend phases out.

In the case of Tahiliani Design Pvt. Ltd. v. 2008 PTC (38) 251, Delhi High Court deliberated the engagement of the regime of copyright and design law to decide an infringement suit. It was India’s first full-fledged battle on creative integrity. The Court held that intent of the Legislature is clear from the words of the Act. There is a deliberate exclusion of ‘artistic work’ from the definition of ‘design’ under the Designs Act, 2000. Further the Court held that “uniqueness not only in conceptualization but also in creation and presentation are sine qua non of haute couture.”

The other case which deliberated on the same issue was Microfibres v. Girdhar & Co.2009 (40) PTC 519 where the Division Bench of Delhi High Court held that the Legislature has always treated commerce and art as different things. The activity which is commercial in nature has to be granted lesser period of protection and hence Section 15(2) of the Copyright Act exists.

France currently is the only country having strong copyright laws for protecting fashion works. The statutory protection comes in the form of Article L. 112-2.73 in the Code de la Propriete Intellectuelle. The Code lists “the creations of the seasonal industries of dress and articles of” as a protected subject matter, and “uniform protection is given to original fashion designs automatically on the date of creation, regardless of registration, unlike different protection schemes given to registered and unregistered designs under the European Union regulations.”

There is another theory in IP protection and fashion works. Some feel that the weak IP protection to fashion works are boon. It encourages people to be more creative and think out of the box. If there were strong protection, no one would have thought of coming out with aluminium or steel plated boots. To think of, replicating or creating counterfeits of such steel-plated boots would be impractical as the essence lies in the material itself. Reproducing in a cheaper material would make the fashion useless and hence is secured without IP protection. But the question remains standstill. What about other designers whose designs could still be counterfeited with cheaper materials? A slight change in the material or patterns are still enabling infringers get away easily from the legal hands.

Recently, Designer Sabyasachi Mukherjee was awarded the National Intellectual Property Award 2018 in the field of designs and commercialisation for holding the copyright on more than 700 of his designs. His was the first design house to receive the award. In an interview he said, “It is expensive to register every single design, but it helps us to break the notion that the fashion industry is frivolous and doesn’t understand such complexities.”

On the issue of Copyright and fashion works, FDCI President Sunil Sethi stated that the Nandi bull by Designer Rohit Bal cannot be copyrighted. But the interpretation of embroidery makes the difference. By copyrighting such works, there will be better awareness and signature recall which will make imitation difficult in the fashion industry.

Author:  – Esha Himadri, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnil@khuranaandkhurana.com.

References:

[1]https://timesofindia.indiatimes.com/city/delhi/rahul-mishra-accuses-indian-ethnic-wear-brand-and-a-french-label-of-plagiarism/articleshow/64137078.cms

[2]https://www.nytimes.com/2018/02/06/business/christian-louboutin-shoes-red-trademark.html

[3]http://www.thefashionlaw.com/learn/legal-protections-for-fashion-in-france

[4]Tahiliani Design Pvt. Ltd. v. Rajesh Masrani, 2008 PTC (38) 251 (Del.)

[5] Microfibres Inc. v. Girdhar & Co. &Anr., 2009 40 PTC 519 (Del)

[6] http://www.dailypioneer.com/vivacity/bal-protects-his-original-line.html

Ownership Of Third Party Content On A Website/ Social Media/ Blogs Etc.

We all know that the copyright of any literary/dramatic/artistic work lies with the author of the work even if the copyright is not registered provided, it is original. According to this, the creator of the website is the copyright owner of the same (subject to some exceptions) provided the text, photographs, videos etc., used in the website are not copied works. Now a question arises as to who owns the copyright of the content posted by third parties on a website/ social media/ blog etc. Because individually the owner of the website and the owner of the content posted by third party are different. The answer to this question lies in the terms of the medium one is using to post its content.

Any website has its own terms and conditions that the user must adhere with, without agreeing to those one cannot have access to their services. Generally, public do not take efforts to read these terms and conditions and blindly agree to them, therefore, leading to bunch of all the problems. The terms and conditions are usually drafted in legal language making it difficult for people of non-legal background to understand them. But it is said that one sided efforts are of no use because it is said that one sided efforts go in vain i.e. though efforts are being taken by the website owners to make them easy to understand, people are not taking any efforts to read and understand them before accepting.

In terms and conditions of most of the websites it is mentioned that the owner of the work that is posted through their medium is the author himself, but they give free licence to the owner of the website to use the content anywhere else or even sub licence it to others. This gives them permission to share the content with others also without giving you even a penny. This means that one cannot earn anything out of the efforts one puts in making the work uploaded on the website. Some of the ways to avoid this is reading and understanding the terms and conditions, getting a copyright registered, not relying on only one medium, having a blog of our own in short being aware and alert of one’s rights, terms and conditions of the website.

From the above discussion we may conclude that nobody can take away the ownership right of a work from the copyright owner (subject some to exceptions) i.e. the ownership of the copyright of the work created lies with the author himself even after uploading it on a third party website but by agreeing to their terms and conditions we give them free licence to use our work in a way they want to make use of it.

Author: M. Sai Krupa, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at anirudh@khuranaandkhurana.com.

References:

[1] https://www.socialmediatoday.com/content/who-owns-your-content-online

[2]https://www.out-law.com/page-381

[3]https://www.theguardian.com/money/2012/dec/20/who-owns-content-you-upload

[4] http://www.mondaq.com/india/x/607438/Copyright/Copyright+Protection+Of+Online+Content

 

Violation Of Moral Right In Light Of ‘Ghar Se Nikalte Hi’- Will This Be An Eye Opener For The Trend Of Remixes?

Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.” [1]

The foundation of this concept was laid in the case of Amarnath Sehgal v. Union of India[2]. This was a landmark judgement delivered by the Delhi High Court thereby setting precedent and contributed in increase in understand and scope of moral rights given under Section 57[3] of the Indian Copyright Act, 1957. Moral rights are generally meant for protecting the work of the author and maintaining its integrity which essentially means preventing it from getting mutilated or distorted or altered in any undesired manner which may result in hampering the image of the author or its use in such a way that it may hurt the sentiments of the author.

The latest Bollywood glitch between Javed Akhtar and Armaan & Amaal Malik has been with respect to the same. The renowned Bollywood lyricist Mr. Javed Akhtar has issued legal notice against Armaan & Amaal Malik and Super Cassettes Industries Pvt. Ltd., for violation of his moral rights by recreating the song ‘Ghar Se Nikalte Hi’. It is alleged by Mr. Akhtar that the newly created version has used the original “mukhda (first stanza)” of the song repetitively. Although it is combined and mixed with different composition and different lyrics, the essence of the song remains the same. Mr. Akhtar further claims that the new version infringes his “moral rights” under Section 57 of the 1957 Act and aggrieved by the fact that ‘Kunaal Verma’ has been credited as sole author for the recreated version denying Mr. Akhtar, his statutory right of authorship.

There is no doubt that ‘Mukhda’ is the soul& essence of a song to which we all shall agree and so Mr. Akhtar has every right to be identified and credited for the same, especially when the original track bears his name in bold. Further, the fact that his right to royalty (Section 18[4] and 19[5]of the 1957 Act) in respect of using of lyrics which were originally given by him, has been jeopardized as they will not be able to receive royalty without the recognition of authorship. Even the Apple’s Itunes does not recognize him as the original lyricist which has further aggravated the entire situation.

However, the anomaly which can be observed in this notice is that it has been issued to Armaan Malik, who merely is the performer and singer and had nothing to do with the authorship of the song and in my opinion,

it should have been issued to lyricist of the new version who has in fact distorted the entire song. Other shortcomings of the legal notice may be that-

  • There was no legal notice issued to Apple’s Itunes for having failed to mention Mr. Javed Akhtar as the lyricist of the song, although they have specifically violated Section 52-A[6].
  • Legal Representative of the author can exercise the rights conferred upon the author of a work, other than right to claim authorship of the work. The proper body to allege on the recreated version as trying to escape the payment of royalty is IPRS (Indian Performing Rights Society), to whom Mr. Akhtar has assigned his rights.
  • Notice issue to Armaan Malik for simply making a public comment on You Tube page in which he failed to acknowledge the original authors seems senseless and baseless.

There have been several cases with respect to moral right &recreated versions, but a penumbral area exists as nowhere the term ‘recreation’ has been defined in the 1957 Act per se, but if we go by the definition of the word ‘adaptation’, Section 2(a)includes in relation to any work, any use of that work involving in its alteration and rearrangement. Section 14 also confers such type of right to the owner of any literary, dramatic artistic or musical work. If we comply with these provisions, then T-Series, being the owner of the original work has the right to make an adaptation or recreated version. But the question arises that whether recreation of original work amounts to violation of moral rights of the original authors of that work?

Section 57[7]of the 1957 Act provides two rights to the author i.e., of paternity (right to claim authorship) and integrity (to claim damages for any mutilation, distortion, modification of the work prejudicial to his honor or reputation). These rights are also protected under Article 6bis[8] of the Berne Convention where under the right to Paternity, author can claim due credit for any of his work.

But the catch here is that Section 57 protects the right of authors only when it is established that the alteration or modification of the work is prejudicial to author’s reputation and also there is some relation between the original and recreated work. This view has been reiterated by the court in Manu Bhandari v. Kala Vikas Pictures.[9]

From Amarnath Sehgal’s case[10] the Indian Copyright legislation has moved further on broadening the scope of artist’s reputation and interest and the outcome of present matter will also add up to it.

With respect to integrity rights, I am of opinion that on comparing and reading the lyrics of original and recreated version there is nothing dishonorable or prejudicial which can damage the reputation of the original authors. If this is treated as violation of moral rights, it would send a signal of warning for music industry and the trend of making remixes. As nowadays with increase in number of remixes or recreated versions, this issue of moral right will be one of the major debates in India and even though it remains unsettled, it is essential to protect the interest of original writers so that their music does not wither away with the modern remixes.

Author: Prashant Arya, Intern at  Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1]Universal Declaration of Human Rights, Article 27(2)

[2]Amarnath Sehgal v. Union of India,2005 (30) PTC 253

[3] https://indiankanoon.org/doc/1710491/

[4] https://indiankanoon.org/doc/1703533/

[5] https://indiankanoon.org/doc/262036/

[6] https://indiankanoon.org/doc/588136/

[7]Supra, fn.4

[8] Independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.

[9]Manu Bhandari v. Kala Vikas Pictures,AIR 1987 Del 13

[10]Supra, fn.3

Are IP Disputes Arbitrable In India? And To What Extent?

The Alternative methods of dispute resolution have eventually acquired a huge popularity and utility in the commercial and business- commerce sector. One of the most utilised methods is the arbitration, most of the parties associated with the commercial transaction nowadays prefer to opt for arbitration for the settlement of any kind of dispute. Arbitration in particular works especially well in the areas of commercial and international disputes as a quasi-judicial system developed to counter the snags of litigation and an over burdened judiciary.[1]

Over the years, the law of arbitration in India from the 1940 Act to 2015 Amendment Act has developed a lot thereby lessening the involvement of courts and providing friendly and effective rules for better and independent arbitration. Though ‘arbitration’ is nascent, still evolving, and yet to gain a foothold in India.

Intellectual Property Disputes are principally commercial in nature and often have international dimensions because of people protecting their Intellectual Properties or licensing them in multiple jurisdictions. The question which this paper target is whether arbitration is possible in IP disputes? If yes, then in what kind of disputes is it possible? In the past, many legal systems did not allow the arbitration of IP disputes, simply because the rights had been granted by a sovereign power. It was argued that the nature of the rights was such that questions as to validity should only be decided by the authority which issued the right. However, it is now broadly accepted that disputes relating to IP rights are arbitrable, just like disputes relating to any other type of privately held rights like transfer of granted IP rights as in licensing or any other such commercial arrangements. The WIPO has also promoted ADR in IPR matters by setting up the WIPO Arbitration and Mediation Center, a neutral, international and non-profit dispute resolution provider that offers time- and cost-efficient alternative dispute resolution (ADR) options and enable private parties to efficiently settle their domestic or cross-border IP and technology disputes out of court.

The stand of India towards arbitrability of IP disputes is a little complicated but logical. The policy debate arises because of the distinction between rights in rem and right in personem, also between judgement in rem and judgement in personem. The scope of remedies that should be available to parties in intellectual property arbitration is a source of controversy.

The judgement in personem is in form, as well as substance, between the parties claiming the right; and that it is so inter partes appears by the record itself.[2] A judgment in rem is an adjudication, pronounced upon the status of some particular subject-matter, by a tribunal having competent authority for that purpose.[3] Disputes seeking judgement in rem are thus generally considered to be unsuitable for private arbitration, although this is not a rigid rule. The Apex Court in Booz Allen Case[4] has stated that subject matter of arbitration that involves only rights in personem are arbitrable in nature, but no matter involving right in rem, for example, with validity proceedings, where the effect of the award could potentially be to discontinue the existence or enforceability of the monopoly[5], can be put before any private arbitral tribunal for decisions.

However, the Supreme Court also recognized that this rule isn’t infallible and that subordinate rights in personem that arise from rights in rem might be subject to arbitration[6], for example, if the IP disputes arise from commercial arrangements for the use of Intellectual Property, they are arbitrable disputes. While dealing with the similar issue the bench of the Hon’ble High Court of Bombay headed by Justice G.S. Patel in the case of Eros International Media Limited v. Telemax Links India Pvt. Ltd. and Ors[7] held that IP Dispute arising out of a commercial contract, like between two claimants to a copyright or a trademark in either an infringement or passing off action, that action and that remedy can only ever be an action in personem and hence such IP disputes are arbitrable in nature. It was observed that the section 62(1) of The Copyright Act should not be read down to mean the ousting of the jurisdiction of an arbitral panel. But in the case of Indian Performing Right Society Limited (IPRS) v. Entertainment Network, the bench chaired by Justice Dhanuka of the Hon’ble High Court of Bombay has taken a different stand. Justice Dhanuka differentiated the IPRS case from Telemax on the basis of IPRS’ right to claim royalties while later dealing with a case of infringement. Relying on the judgement in the case of Mundipharma AG v. Wockhardt Limited[8] and interpreting Section 62(1) he held that in a case of infringement of copyright, the remedies of injunctions, damages and otherwise may only be conferred by a Court, and are hence not arbitrable.

In case of patents, arbitration is available as a means to resolve disputes but is not widely used. However, arbitration is not available to determine matters of invalidity, as the Patent Office does not recognise arbitral awards in this respect. Only the disputes arising out of contracts between parties, like patent licensing disputes, can be subject to arbitration.

Arbitration in a way is beneficial for more creative remedies in comparison to a court action if the arbitration agreement so specifies, but such remedies will be subject to the public policy concerns. Parties may nonetheless choose to give the arbitrator jurisdiction to award any remedy, but the enforceability of the award would be affected

The most selling point for arbitration in IP disputes is the ensured confidentiality of subject matter of dispute among the parties. But in a country like India, the difficulty arises in balancing the interests of the parties in maintaining confidentiality, and the interests of the public, thereby, preventing the arbitration of disputes involving rights in rem or third-party interests. The confidentiality conflicts with the public interest especially, in having the outcome of revocation proceedings be published. The answer to this criticism is that any award which is against the public policy of India can be challenged before the appropriate court of law, arbitral awards relating to patent infringement or validity could be denied as being against public policy or patently in violation of statutory provisions.[9] Challenges with respect to confidentiality of IP disputes which affect public at large can be addressed through legislation requiring that some or all of the proceeding be publicly disclosed. For example, USA laws explicitly allow arbitration of patent validity and infringement issues and arbitration of “any aspect” of patent interference disputes but a copy of any arbitral award must be given to the United States Patent and Trademark Office. The award is unenforceable until this notice is given.[10]  Similarly, Switzerland practices the registration of an arbitral award with the authority which issues and maintains patents. Also, awards rendered in connection with the validity of intellectual property rights are recognized as the basis for entries in the register, provided these awards are accompanied by a certificate of enforceability issued by the Swiss court at the seat of the arbitral tribunal in accordance with Article 193 para. 2 [Swiss Private International Law Act] [11] Such examples suggest that India can also increase and promote arbitration in IP disputes also ensuring balance between confidentiality and public interest with the help of  effective legislation.

Though there are various benefits of using arbitration as a method for resolving IP disputes there are also many criticisms against it. One of the biggest criticisms against arbitration in IP is that it is binding only between the parties and does not set a public precedent as regards its use as a deterrent to infringement and establishing a culture of integrity. Parties also do not actually resort to arbitration primarily on account of finding suitable arbitrators or because of jurisdictional issues in case of international contracts. One also needs to ponder on the effect of the counterclaim or defence of revocation in cases of infringement. As these remedies or reliefs are in rem, henceforth, the parties would have to turn to the relevant forum for resolution of that claim. So, whether such action would render the entire dispute non-arbitrable or the tribunal may stay its proceedings until the appropriate forum decides on the validity of the copyright/ trademark/ patent? This is, however, far from ideal as it would delay the arbitration and substantially increase costs.

The conclusion which can be drawn in relation to the arbitrability of IP disputes in India is that it is a budding scheme which needs legislative support and a proper mechanism for better implementation. Though court rulings are quite unclear in the present scenario still it can be inferred that IP disputes are arbiterable, but still there is a long way ahead.

Author: Umang Kapoor, ILS Law College, Pune, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com.

References:

[1]http://www.lexmantis.com/pdf/May-2013-LexMantis-Arbitration-And-IP.pdf

[2]https://thelawdictionary.org/judgment-in-rem/

[3]https://thelawdictionary.org/judgment-in-rem/

[4] AIR 2011 SC 2507

[5]https://www.lawteacher.net/free-law-essays/commercial-law/the-arbitrability-of-intellectual-property-disputes-commercial-law-essay.php#ftn5

[6] Booz Allen and Hamilton Inc. v. SBI Home Finance Ltd. &Ors, AIR 2011 SC 2507

[7] 2016 (6) ARBLR 121 (BOM)

[8] ILR 1991 Delhi 606

[9] ONGC Ltd. v. Saw Pipes Ltd., (2003) 5 SCC 705

[10]https://www.lawteacher.net/free-law-essays/commercial-law/the-arbitrability-of-intellectual-property-disputes-commercial-law-essay.php#ftn58

[11]https://www.lawteacher.net/free-law-essays/commercial-law/the-arbitrability-of-intellectual-property-disputes-commercial-law-essay.php#ftn67

Cyber Theft of Intellectual Property

With the growth in the use of internet these days the cyber crimes are also growing. Cyber theft of Intellectual Property(IP) is one of them. Cyber theft of IP means stealing of copyrights, trade secrets, patents etc., using internet and computers.

Copyrights and trade secrets are the two forms of IP that is frequently stolen. For example, stealing of software, a unique recipe of a well-known dish, business strategies etc. Generally, the stolen material is sold to the rivals or others for further sale of the product. This may result in the huge loss to the company who originally created it.

Earlier, a lot of physical labour, time and money was spent to steal a trade secret or make a pirated version of anything. The original copies had to be physically stolen which used to take lot of time and money. But in the present scenario these works can be done easily sitting at one place without shedding too much time and money on it without leaving any proof of it.

One of the major cyber theft of IP faced by India is piracy. These days one can get pirated version of movies, software etc. The piracy results in a huge loss of revenue to the copyright holder. It is difficult to find the cyber thieves and punish them because everything they do is over internet, so they erase the data immediately and disappear within fraction of a second. The country has started taking strict measures to curb this offence. Telangana Intellectual Property Crime Unit (TIPCU) is one of the first unit that has been launched to deal with the IP crime.

Some of the ways through which one can protect IP from cyber theft are:

  • Frequently updating the list of IPs’ that need to be secured.
  • The company can increase the security to access its trade secrets.
  • It can reduce the number of people who can access their trade secrets.
  • Company needs to be up to date with software systems.
  • Constantly checking for some unusual cyber activities.
  • Constantly educate their employees about cyber security.
  • Constructing some threat mitigating programmes.
  • Installing up-to date anti-virus software.
  • Allowing employees to reach only some classified data.

Even after taking all these steps to protect IP’s there is no guarantee that they cannot be stolen because human dependence on the internet is growing constantly and people come up with new ways to do even a small thing so even in this case these cyber thieves may come up with new ways to crack all these security systems.

Author: M.Sai Krupa, Intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at anirudh@khuranaandkhurana.com.

References:

[1] http://law.jrank.org/pages/11992/Cyber-Crime-Intellectual-property-theft.html

[2]http://stlouis.cbslocal.com/2017/05/12/trending-topics-intellectual-property-at-risk-from-cyberthreats/

[3] http://www.iiprd.com/indias-first-ip-crime-unit-launched-telangana-state/

Law On Internet Memes

Internet users in India spend half their time on social media every day. It is one of the most efficient platforms for communication yet the most exploited one. One such famous platform would be Facebook, an online networking site that mostly everyone is aware of. Similarly, internet ‘meme’ is also ubiquitous It is defined as “an idea, behaviour, style or usage that spreads from person to person within a culture.” These memes are a subset of the behaviour passed from one individual to another by imitation or other non-generic memes. In legal terms, it is a ‘derivative work’ and only the copyright owner has the legal right to create such work. Although, if the person claims to have made a “fair use” of the copyrighted work, it can be used as a defense under the provisions of the Copyright Act.

Now, lets come back to the debate as to whether memes shall be protected under the copyright and Trade Mark law or not. You may think that no one is the owner of such memes, rather it is just a creation of the internet but the Law may think differently as some memes do qualify for copyright protection and at some point, they were created by some person who could be the owner of the right. For instance, a meme called the “Grumpy cat” became so famous that it was turned into a business through selling books, posters, mugs, etc. in the name of “Grumpycats.com” and was granted a trademark for the same.

Even though a lot of memes are shared on the internet for the sole purpose of fun, there have been instances in the past that states otherwise. Just like in the case of Getty Images, an American agency which supplies images and illustrations that sent letters demanding license fees who exploited their copyrighted content was an image of “Awkward Penguin”, a photograph taken by George Moberly, a National Geographic photographer, for which Getty enjoys the licensing. Posting a meme on a personal blog (non-monetized) or a personal social network account might not be challenged. However, if it is for a commercial purpose, it might violate the copyright.

Assuming that these marks are registered in India, they will be governed by the Trade Marks Act. Now, if the image on a meme is being used on goods and services or for other commercial purposes, it would lead to infringement of the trademark under Section 29 of the Act which clearly states that a mark may be infringed by use of spoken words or their visual representation meaning that even a slight usage or any modification of that image on social media would result in infringement. However, this provision is only applied to registered marks and not unregistered.

Even though Copyright law in India does not specifically provide remedy in the case of parody, the owner of such artistic work can reach the Court for infringement of his right as any use of the Copyrighted work if,  it is  not a “fair use” can result to infringement leading to a lawsuit.

Even though its tempting to think that viral content is nothing but part of the web that is “owned by everyone”, there is still some source attached to the work and if such work amounts to copyright, the owner should be provided with the rights for the same. Memes are a rapid business and do not get immunity from the skirmishes of copyright and trademark, thus leading to more upcoming battles in court.

Author: Ms. Tushita Dogra, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at swapnils@khuranaandkhurana.com

References:

[1] https://www.plagiarismtoday.com/2013/05/07/copyright-memes-and-the-perils-of-viral-content/

[2]https://www.washingtonpost.com/news/the-intersect/wp/2015/09/08/how-copyright-is-killing-your-favorite-memes/?utm_term=.64b3b3aa2474

[3] http://www.abajournal.com/magazine/article/do_memes_violate_copyright_law

Does Publication of Bare Acts by Private Companies amount to Copyright Infringement?

Introduction

“[I]f ignorance of law is no excuse it presupposes that a citizen is able to know law. The elementary requirement in this country is that the citizen is able to obtain an authenticated copy of the Act, Rules and Regulations. If a citizen is not able to obtain these documents, the argument is that it would be difficult to implement the rule that ignorance of law is not an excuse.

A Public Interest Litigation [WP(C) 10941/2017] has recently been filed in the High Court of Delhi contending that ‘Right to Know’ being a fundamental right and obliges the Government to inform the citizens about law by publishing authenticating it and updating as well as providing  reasonably priced printed copies of Bare acts. Interestingly, the PIL also goes on to claim that Acts of Parliament are under copyright ownership of the Government and, therefore, these cannot be permitted to be published by private players for commercial gains.

Background

The present petition has highlighted the troubling issue of accessing legislative and judicial documents in India. This issue was previously brought to the forefront by Vansh Sharad in his writ petition, whereby the High Court of Delhi observed that the “RTI Act itself mandates the Government to place the texts of enactments in public domain”[1]. Even prior to this The Bombay High Court has on a number of occasions passed orders directing the Government to make available authentic and updated copies of the acts and legislation, the most recent one being in the case of Mumbai Grahak Panchayat and Another. Vs State of Maharashtra and Others[2].

On the basis of the status report filed on the last date of hearing in the case of Union of India v. Vansh Sharad Gupta (hereinafter referred to as ‘Vansh Sharad’)the Court took a prima facie view that the Cabinet Secretariat’s officials are making positive efforts in tackling the issue of digitisation of bare acts, rules, regulations and notifications. Visibly, the actions taken by the Government is evidenced in the New India Code web portal which is under development and provides for improved online access to Indian legislations[3].

However, access to legislation has re-surfaced again with the present PIL filed in the High Court of Delhi by Advocate Arpit Bhargava which claims that the failure of the Government in providing affordable and accurate hard bound copies of Central Enactments, Rules and Notifications is violative of the fundamental right guaranteed under Article 19(1)(a) of the Constitution. Advocate Bhargava has also alleged that apart from the high prices of the private publications, some were also inaccurate. A bench of Acting Chief Justice Gita Mittal and Justice C Hari Shankar on 08.12.2017 has thereby issued notice to the Ministry of Law as well as the Department of Publications under the Ministry of Housing and Urban Affairs and sought their stand on the issue raised in the petition. The matter is listed for 11th April, 2018.

The present PIL sheds light on two cardinal principles, the Right to Know and the principle of fair use which is given under Section 52 (1) q (ii) of the Copyright Act 1957 (hereinafter referred to as the ‘Act’). The said provision excludes the reproduction or publication of any Act of a Legislature from the scope of copyright infringement subject to the condition that such Act is reproduced or published together with any commentary thereon or any other original matter.

Analysis

While the importance of the right to know has been reemphasized, time and again as being co-related to the fundamental right of freedom of speech and expression guaranteed under Article 19 of the Constitution, the interpretation of Section 52 (1) q (ii) and the condition laid therein has never before come into question. One needs to analyse a number of issues to understand whether the publication of Bare Acts by private companies amounts to copyright infringement of the Government or not?

  • Whether there exists any Copyright over Statutes?

An interesting point to be evaluated while considering this issue is whether the State can assert any copyright over Statutes. In U.S.A. the position laid down in State of Georgia v. Harrison Co[4] is that, “the citizens are the authors of the law, and therefore its owners, regardless of who actually drafts the provisions, because the law derives its authority from the consent of the public, expressed through the democratic process”. Even the Bombay High Court in Vansh Sharad reaffirmed the observation made by the CCI that “[t]he law and enactments are in public domain and none can claim copyright in the law”. In light of these judgements, one could reasonably argue that there exists no copyright over Acts and Statutes and therefore, can be reproduced or published freely.

On the other hand, various provisions of the Act suggest otherwise. Section 52 which enumerates the acts that shall not amount to infringement necessarily implies the existence of a copyright. Moreover, Section 17 (d) of the Act lays down that Government shall be the first owner of all Government works, unless there is an agreement to the contrary. The definition of Government work as laid down under Section 2 (k) of the Act covers within its scope, all works which are made or published by or under the direction or control of the government, legislature, Court, tribunal or any other judicial authority in India. On reading these provisions together, the logical inference would be that the copyright over the Acts and statutes lies with the Government.

  • Whether such Copyright is infringed by publication of Bare Acts by private publishers?

If the argument of the Government being the copyright holder is accepted, one would then have to examine if there exists any exception which gives the private companies the right to publish Government work without infringing government’s copyright in them. This exception is given under Section 52 (1) q (ii) which lifts the prohibition on reproduction or publication of an Act or statute if it is knit together with any commentary thereon or any other original matter. This requirement has been confined to Acts of legislature alone and does not extend to other categories of Government work covered under Section 52 (1) (q).

The Petitioner in this regard claims that the term “Bare Act” itself implies law in its raw form and hence any reproduction of it by private publishers amounts to infringement of the copyright of the Government. Whether the comments and cases added by the private publishers to the Bare Acts published by them fulfil the condition set out Section 52 (1) q (ii) could be analysed on the touchstone of the judgement laid down in Eastern Book Company v. D.B. Modhak[5]. In the given case the Supreme Court of India rejected the ‘sweat of the brow’ doctrine(which conferred copyright on works on the basis that some amount of skill, labour and capital has been employed in the work), and held that the work must be original “in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author”. The present PIL therefore delivers a platform to interpret whether on account of the skill and judgment displayed in the combination and analysis of statutes with cases and other annotations, the private players of the market satisfy the requirement of commentary or original matter.

Apart from this, there are other concerns regarding publication of Bare Acts by private companies. In the Mumbai Grahak Panchayat case, it was observed, “[t]he Judges of this Court have repeatedly noticed that there are errors in the Bare Acts published by the private publications. …[I]n some publications, the amendments to the Enactments or to the Rules are not incorporated. In some cases, the amendments are not correctly reproduced.” This issue which has also been raised in the present petition is worrisome considering the wide use of such Bare acts, including by the Courts.

Conclusion

The present PIL seeks directions to the Government to take immediate steps to ensure availability of its own authentic, accurate and reasonably priced publications of all central acts, rules, notifications and their amendments and to immediately bar private publishers from doing the same. If this prayer of the petitioner is granted, one is left to wonder whether these directions could in fact result in an improvement in the accessibility of public domain materials or rather disincentivize the creation of new expressive works. It is no doubt the duty of the Government to provide for promulgating the statutes. However, in my opinion, allowing the Government (or anybody else) to monopolize publication and distribution of statutes is not a reasonable panacea. Alternatively, the Government could exercise its power to regulate the mode of promulgating these Acts, so as to ensure its accuracy and authority. Fair use provisions, must be interpreted so as to strike a balance between the rights and interests of the copyright holder, and the often-competing interest of the public in protecting the public domain. What remains to be seen is whether the Hon’ble Court takes such a balanced approach, or one more skewed toward either side.

Author: Ms. Prakriti Varshney, intern at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at anirudh@khuranaandkhurana.com.

 References: 

[1] Union of India v. Vansh Sharad Gupta, W.P.(C) 4761/2016 & CM APPL. 22914/2016

[2]2017 SCC OnLineBom 726

[3]See Order dated 15.12.2017 inUnion of India v. Vansh Sharad Gupta, W.P.(C) 4761/2016 & CM APPL. 22914/2016

[4]548 F.Supp 110, 114 (N.D. Ga 1982)

[5] 2008 (36) PTC 1 (SC)