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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

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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)

Sarine Technologies Ltd v. Divora Bhandari Corporation & Ors

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

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

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

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

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

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

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

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

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

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

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

  1. Whether the software is copyrightable or not?

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

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

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

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

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

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

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

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

[3]Section 17, proviso (c)

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

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

[6]Title 17 of the United States Code

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

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

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

[10]Directives 2009/24/EC

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

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

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

 

TATTOOS AS INTELLECTUAL PROPERTY- AN INDIAN PERSPECTIVE

INTRODUCTION:

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

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

TATTOO – A COPYRIGHTABLE WORK?

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

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

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

TRADEMARKING TATTOOS :

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

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

CONCLUSION:

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

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

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

References :

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

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

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

[4] 17 U.S. Code § 102

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

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

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

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

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

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

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

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

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

[14] Ibid. 4

[15] Ibid. 3

THE EXCLUSIVITY OF BRAND TAGLINES

Brand taglines are catch phrases which serve to draw a connection for consumers with the business’ products and services, and the concerned brand in general. A particular sequence of words repetitively used in the promotion of a brand or business in relation to its products and services often finds a place in the associative memory of the public. For example, when coming across the catch phrase “Finger lookin’ good”, one is instantly reminded of KFC’s sumptuous range of food products.Similarly, the tagline “Just Do It” is commonly associated with the brand NIKE and the phrase, “There are some things money can’t buy. For everything else, there’s MasterCard” connotes a connection with Mastercard.

Taglines are primarily used for advertising as they are memorable, differentiate the brand and impart certain emotions regarding the brand. The said exclusive association also flows from the mere mention of the brand, for example when one refers to Mc’donalds, the phrase “I’m Lovin’ It” automatically comes to mind, thereby indicating that some sort of intangible ownership of the particular phrase exists. This short note will attempt to elucidate upon whether and if so, what type of intellectual property protection is accorded to taglines or trade slogans with specific reference to the Indian context.

Scope of Brand Taglines as Trademarks

Section 2(m) of the Trademarks Act, 1999 defines “mark” as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. It is seen that the legislation provides for a tagline or combination of words to be included within the ambit of the definition of mark.

Trademark is defined under the Act as a mark capable of being represented graphically and of being able to distinguish the goods or services of one person from those of others in the course of trade.[1] Therefore, it is seen that a brand tagline is capable of being reduced to two-dimensional representation on paper. It is submitted that the distinctiveness criterion has a close nexus with Section 9(1) of the Trademarks Act under absolute grounds for refusal of registration.

In order for a brand tagline to qualify as a trademark, it must be distinctive,by acquiring secondary meaning and goodwill,and must not be descriptive of thefeatures of the products and services in respect of which it is used. The brand tagline by itself also must not indicate anything which has become customary in the established trade practices of that particular business.

Distinctiveness of the Generic

The Karnataka High Court in Reebok India Company v. Gomzi Active[2] has held that the person claiming the benefit of distinctive usage has to establish that over a period of time the concerned trade slogan has developed a secondary meaning and goodwill.[3] The Court accepted Reebok’s (Defendant) contention that the phrase “I AM WHAT I AM” is generic in nature and has not any acquired distinctive character in relation to the goods produced by Gomzi Active.[4]It was further held that both parties were operating under different and distinct trade names and by the mere use of the common phrase and expression “I AM WHAT I AM” it cannot be said that a customer with reasonable prudence would be misled to purchase the products manufactured by Reebok mistaking them for the products manufactured by Gomzi Active.[5] It is submitted that extensive advertisement through various modes and subsequent inherent association by consumers of the brand tagline with brand’s products and services would satisfy the test of distinctiveness even if concerned tagline is a common and generic phrase.

Descriptiveness and Commercial Features

The Hon’ble Supreme Court in a petition for special leave to appeal[6] upheld a Division Bench decision of the Delhi High Court in Procter & Gamble Manufacturing (Tianjin) Co. Ltd. &Ors. v. Anchor Health & Beauty Care Pvt. Ltd.[7], wherein the issue of distinctiveness and descriptiveness of brand taglines was discussed and elaborated.[8]The Court held that

  • The expression “ALLROUND PROTECTION” in Anchor’s advertisements and on its product is covered within the meaning of Section 2(m) & (zb) of the Act.

  • There is a difference between specific descriptiveness and generic descriptiveness.Forexample,a particular tagline may be descriptive of such features that are unique to the brand’s products but not generic features of the said products. (It is pertinent to note that Anchor was the first in the industry to use “ALLROUND PROTECTION”)

It is submitted that the Court in a way has interpreted a brand’s tagline or its“communicated commercial essence”tobe considered as a unique feature of its products and services, while deciding that is not a descriptive tagline.

Expressions of Customary Trade Practice

In Stokely Van Camp Inc v. Heinz India Pvt Ltd.[9], the Delhi High Court Division bench held that the trade slogan “Rehydrate Replenish Refuel” used in respect of Gatorade, even though a registered slogan mark, cannot be granted protection since in the energy drink market it has become customary and in fact necessary to describe products as such. Therefore, the Court held the defendant’s use of the expression “Rehydrates fluids, Replenishes vital salts, Recharges glucose” will fall within the ambit of Section 30 (2)(a) of the Trademarks Act, wherein a registered trademark is not infringed when the alleged infringing mark/expression is used to indicate features and characteristics of the products in respect of which it is used.

Therefore, it is seen that brand taglines have been recognised as trademarks in India provided they have acquired distinctiveness through goodwill and secondary meaning. It is also seen that trade slogans can be used to describe particular unique commercial features of the brand’s products and services.

Scope of Brand Taglines as Copyrights

Copyright subsists in original literary, dramatic, musical and artistic works, cinematographic films and sound recordings.[10]The Delhi High Court in Pepsi Co. Inc. and Anrv. Hindustan Coca Cola and Ors.,held that advertising slogans are not to be accorded protection under the Copyright Act and they may be protected under the law of passing off.[11] The Court also opined that although the task of devising advertising slogans often requires a high level of skill and judgment but they will usually not qualify as original literary works.Law of passing off is not limited to names but is wide enough to encompass other descriptive materials including slogans, as part of goodwill built by extensive advertisement.[12]

Further, in Godfrey Phillips India Ltd. v DharampalSatyapal Ltd. & Another[13], the Delhi High Court followed the ratio of Pepsi Co and held that the advertising slogan “ShauqBadiCheezHain” is a mere combination of common words and hence cannot be granted protection as a literary or artistic work under the Copyright Act since they are as such not an outcome of great skill, and at best can be given protection under the law of passing off provided the requisite case is made out for passing off.

It is submitted that the reason as to why advertising slogans or brand taglines are usually not granted copyright protection is due to the generic use of words in such taglines. Brand taglines are often arrived at after much deliberation and exercise of intellectual activity and hence it may be argued to come under the ambit of originality and creativity in order to be treated as literary or artistic works.

Conclusion

In conclusion, it is submitted that a particular brand tagline may be accorded protection as a trademark if it satisfies the distinctiveness and non-descriptiveness criteria. In case of Tagline comprising of common words or generic phrase, it is through extensive use, advertising and campaigning that a tagline or slogan acquires secondary meaning to the extent consumers and the general public start associating it exclusively with the concerned brand or business. Therefore, proper documentation and detailed records regarding the use and advertising of brand taglines are essential for the purpose of preventing the dilution of goodwill created with the public.

It is also to be noted that brand taglines are usually not granted copyright protection due to the use of generic common-place words and the Courts are reluctant in considering them to be original literary or artistic works.

About the Author: Pratik Das, Legal Intern at Khurana and Khurana, Advocates and IP Attorneys and can be reached at abhijeet@khuranaandkhurana.com.

References:

[1] Section 2(zb), Trademarks Act, 1999

[2] 2007 (34) PTC 164 (Karn)

[3]Ibid at paragraph 11

[4]Ibid at paragraph 12

[5]Ibid at paragraph 16

[6]C. Nos. 15928-15929/2014

[7]2014 (59) PTC 421 (Del)

[8]Ibid at paragraph 10

[9]MIPR 2010 (3) 273 at paragraph 9

[10] Section 13(1)(a), Copyright Act, 1957

[11] 94(2001)DLT 30 at paragraph 70

[12]Ibid at paragraph 68

[13] 2012 (51) PTC 251 (Del) at paragraph 14

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)

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