CLASS

NOTES
COPYRIGHT LAW

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(missed 6 hours)

29/3/16 – Tuesday – ‘Idea-Expression Dichotomy’ (Law of Copyright) – pg 71 of RM &

Doctrine of Merger – pg 78 of RM

In Baker v. Selden, the reproduction of the form was not considered a copyright violation. It
was considered an essential part of the art – i.e. the skill, which the book sought to impart. If
the form was different, the Court could have easily said that this is not a copyright violation.
Instead, it chose to address this issue from the point of view of the art of bookkeeping.

Ratio: The art of bookkeeping is not protected by copyright, and if you do want to protect it,
a patent protection might be more appropriate.

Donoghue v. Allied Newspapers:

This is the first case where the court expressly addressed the concept of an ‘idea-expression’
dichotomy [Baker v. Selden didn’t address this concept directly, it’s only been attributed to
this concept subsequently, by scholars].

The editing done by Mr. Donoghue in the margins in this case was seen as a mere
embellishment, and did not give him a copyright over the expression of Mr. Felstead. The
Court observed that Mr. Felstead was not taking a dictation from Donoghue – if that was the
case, it would be Donoghue’s expression and thus he would have copyright. But here, Mr.
Felstead was applying his own mind – hence it was Mr. F’s copyright. Thus, as the stories
recounted by Mr. Donoghue were merely ideas, he could not claim ideas over them. Thus, no
copyright violation.

But: Doesn’t an editor in a magazine also have copyright protection over an article he has
edited? What about a software developer, who improves upon the work of his programmer?
What about a person who provides technical assistance to a painter?

Najma Heptulla v. Orient Longman:

The issue that arose in this case was – ‘whose language was it’? Even though one party
dictated – Maulana Azad – and he also had other involvement – it was claimed by Prof Kabir
that he didn’t want to interrupt the idea of Azad and he wanted his thoughts to come out, but
at the same time Prof Kabir claimed it was his language that came out. Thus, the difference

3
from Donoghue is that this was a joint enterprise by both parties. Further, in Indian law, there
is also a provision for joint authorship – which was not there in Donoghue v. Allied.

MA and Kabir used to take walks – MA would dictate stories in Urdu – Kabir would go
home and write the story in English – then he would send the chapter to MA – MA would
edit the language and go over every word – he said 30 pages should not be published right
now, only after 30 years from his death. When Orient Longman tried to publish it at this date,
because Prof Kabir had assigned the copyright to them, the daughter of MA (Najma Heptulla)
challenged this publication, arguing that the copyright did not lie with Prof Kabir at all – that
it was MA’s copyright, because he authored it.

Court said that Donoghue had created the ‘whose language is it’ test. But this could lead to
absurd results – if a scientist comes up with a concept and takes someone’s help in framing
the idea, then the latter would get the copyright and not the scientist. Instead, the Court said
that this was a joint-authorship, and thus the copyright lay with both individuals, Kabir and
MA. Because Prof. Kabir had taken consent from plaintiff’s grandmother before assigning
copyright to Orient Longman, the assignment was considered legal, and thus there was no
copyright violation.

2 elements required for joint authorship: a) There must be common design; b) Both must
have contributed to the expression of the idea, to such an extent that you cannot differentiate
between which part of the expression belongs to which individual

Interesting issues that arise: Say you interview an individual, and you quote him extensively,
who has the copyright? What about scenarios when a person is interviewed by 15 people – do
each of them have copyrights? What about when one person writes a play, but while directing
it, the director makes changes to the script for final performance – who gets copyright over
the final performance? (Director can get copyright, because he has contributed majorly to the
authorship). What if the performer improvises while performing the play? Would he also get
a copyright?

Translations give the person translating the book a copyright – provided he has obtained
permission from the original author. However, if you haven’t got this permission, then the
translation is itself a copyright violation.

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There’s a difference between expression and fixation. When I’m dictating – it’s an
expression. A stenographer listening and writing it down is not expressing, but merely fixing
my expression in a permanent form.

Copyright protection in software does not protect code written to perform an essential
function – such as code written to make a pen drive compatible with the computer – code
written that is necessary for the hardware to be functional is not protected by copyright. It
may be capable of protection by patent.

If you create a database of different content, you have a copyright over the structure of the
database, but not over its content – the copyright of the content continues to lie with the
authors of the content.

Difference between co-authors and join-authors: Joint authors write an amalgamated work,
where you can’t differentiate between the work, they have a common design; co-authors’
work is differentiable, they need not have a common design, they could simply write separate
chapters or parts of the same book.

R.G. Anand v. Delux Films:

This case lays down a mixture of a subjective and objective test (the requirements are
cumulative). You have to look at whether the material arrangement and structure and scene
of the two works are largely identical (the objective test) as well as whether an observer
would get the impression that the work is copy of another (subjective test). But presumably,
you would apply a reasonable viewer test, which may itself be objective. Moreover, what is
the additional value of a reasonable viewer test? Should not the former test be sufficient?

These two tests are not checkboxes. They are merely indicators. There is no formula for what
happens if one test is satisfied, but another is not. It depends on the facts of each case – you
have to look at the overall impression from a work.

American Cases on Software and Copyright (not in reading material) -

Manufacturers Technology v. CAM: They identified certain unprotectable parts of a

computer programme – the programs internal method of navigating screen displays

5
Harbour Software v. Applied Systems: No Copyright protection over using windows to
display multiple images on a computer screen, or displaying icons of office equipment,
manipulation of icons to operate the computer etc.

ATC Distribution Group v. Whatever it takes transmission & parts: Structure of a

numbering system is the only way of expressing certain ideas, and therefore it is not
copyrightable under the doctrine of merger. Use of actual numbers does not show any
creativity at all.

These decisions reflect s.102 of the Copyright Act in India.

s.13(3&4), Copyright Act: If you create a cinematographic film, in which you literally copy a
book, but add your own music, give it visual direction, give it new character etc. – the
addition of new ideas does not mean that the portion which is copied is not a copyright
violation. The script would still be a copyright violation. This is because copyright protects
the expression of a work not only in the form in which it occurs first, but also in derivative
forms: a text would be protected in translations, a book would be protected in scripts or plays
framed on it as well etc. The right to create derivative works or to reproduce the initial work
only lies with the original author.

Anil Gupta v. Kunal Das Gupta:

Both a breach of copyright and a breach of confidentiality found.

The court emphasized the difference between the idea, and its expression into a concept
material. The concept material had been registered as a copyrighted literary work, under
s.2(1)(o) of the Copyright Act. The reason why this concept was protected here was because
it was a novel concept with details that had been fleshed out, where the woman was given a
choice over the man – in traditional swayamvara, it was just a show of strength, and the
woman had not choice. In addition, there were games planned and the concept of going on
dates with the man etc. were listed – the second show was substantially similar, because it
copied all of these details. All of these led to the conclusion that the copyright (over the
concept note, under s.2(1)(o)) had been violated.

Sir: The idea, by itself, would not be protected. The reason why the concept was actually
protected here was because it had been fleshed out with appropriate details into a concept

6
material – and the second TV show was substantially similar, and had the exact same details
noted in the concept material. Hence, it was a copyright violation.

Sir: The last paras of the judgement – which say that the show had to be produced in four
months, else the other party could proceed with their show – seems incorrect. Copyright
protection continues for life + 60 years. Hence, it shouldn’t matter whether they produce in
four months or not – the second show should still be banned, as it would be a copyright
violation.

Zee Telefilms v. Sundial Communication and Ors.:

Both a breach of copyright and a breach of confidentiality found.

Differences from Anil Gupta: there was a pilot episode here; there was no registration of the
concept material under 2(1)(o) – not material differences and would not affect the outcome.

The Court considered the degree of ‘personality’, or detailing, required to convert an idea into
an expression that was capable of copyright protection.

The idea of the Krishna show was fleshed out into a concept material, and also a pilot
episode. The difference in the second show: Krishna was a girl instead of a boy, and the
protagonist was the grandmother and not the mother. The Court applied the test of ‘material
and substantial similarity’, and held that the second show was substantially similar to the
original concept and pilot. Therefore copyright violation.

s.7(1)(c) – the first owner of a copyright is the author of the work.

Springboard doctrine (only for confidentiality and trade secret protection) – Cocoa case –
applied by the Court in this case - something that has been constructed from ideas solely in
the public domain (here: Krishna) may still gain a confidentiality protection, if skill and
ingenuity are applied to it to create something of novelty. The novelty must lie in the work as
a whole, and not in the individual components of the work.

See: Barbara Taylor Bradford v. Sahara Media Entertainment SC 2015 (Case relating to
Serial called Karishma, the miracle of destiny, which was supposed to be based on BTB’s
show. Sir wants us to read it)

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Doctrine of Merger

What happens if there is an expression for an idea, but it is the only expression of the idea
possible - then would it still get copyright protection? No – because that would amount to
protecting the idea itself, which is not permissible. This is popularly called the ‘doctrine of
merger’ in the USA. Not applied in India, here they just say that ideas cannot be protected.

Herbert Rosenthal Jewelry Corp v. Kalpakian

The idea of making a bejeweled bee pin, and its expression (by the actual making of it) was
not capable of copyright protection. The only extent of copyright protection would be to the
details of the idea – that is the number of bees, the types of jewels used etc. However, neither
the idea nor the expression of making a bejeweled bee pin could be copyrighted.

[Why did the Court not simply say that the ‘bee shape’ is merely an idea, not an expression,
and therefore not capable of protection under copyright? Sir: The gold pin of the bee shape is
definitely an expression, which has an underlying idea. It’s very difficult to draw a line
between what the idea is and what the expression is in such scenarios. And when someone
else makes a bee, are they imitating the expression of the first company, or are they only
using the same idea? Hence, doctrine of merger is a better answer. Only if the details of the
expression were copied – like number of jewels etc – could it be considered a copyright
violation. Similar example is the depiction of a voting man by holding a pen/pencil and
marking a ballot with x. The Court said that the idea of a voting man, and its expression, was
capable of being expressed in a very limited manner. Hence it was not capable of copyright
protection.]

Kay Berry v. Taylor Gifts Inc.

Again, because there were very few ways of expressing a particular type of sculpture, a very
similar sculpture would not be considered a copyright violation. Only if it was an exact
reproduction of the sculpture would it be considered a copyright violation, not mere
similarity.

Sir’s concluding remarks -

In Doctrine of Merger, you cannot get copyright protection because there is only one
way to express the idea. Thus a copyright would violate the idea-expression dichotomy.

8
In cases where there are very few ways to express the idea, you can get copyright
protection – but it is a limited copyright protection, and would only protect against
identical reproductions of the copyright.

Doctrine of Merger does not mean that there is no copyright granted – it just means
that the burden of proof to prove a copyright violation is higher – you can’t just show
similarity, but must prove an exact imitation.

1/4/2016 – Friday – ‘Originality’ – pg 80 of RM

All expressions are not protected. The expression must be original, i.e. it should not be copied
from somewhere else. But does this also apply to ideas? Does the idea also have to be novel
or original? Or is it just the expression that must be new?

Originality is only confined to the expression aspect, and not to the idea itself, when we deal
with copyright. You need not have an innovative idea to have copyright protection. Just an
original expression. All you need is an ‘imprintment of personality’. This is different from
patent law, where you have to prove novelty of the idea itself. The doctrine of independent
creation – anyone who has created a work independently is entitled to copyright protection
over that work. Even if there is similarity to other work, if the similarity is merely by choice
and you have come up with the work yourself, then its okay. In patent law, the test of novelty
is an absolute test – it doesn’t matter if you have subjectively come up with the idea yourself,
it is tested on the basis of whether anyone in the entire world has come up with that idea
before you.

Three tests to determine originality:

(1) Sweat of the Brow Test [not considered the established standard] – Walter v.
Lane
(2) Minimal Level of Creativity Test
(3) Skill & Judgement + More than mere mechanical exercise Test

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Walter v. Lane:

Sweat of the brow doctrine

Reports also mentioned discussions and contributions made by other speakers.

Book published by defendant had picked up, verbatim, the speeches that had been published
by The Times.

4-1 majority decision. Lord Davy’s opinion is the main opinion – deals with whether the
writing down of the speech by the reporter could be considered original? Davy says that the
reporter does have a copyright over his own report, as he prepares it through his own notes
and observations. It shouldn’t matter that the content of the report is part of the public sphere.

The Court laid down three requirements for the sweat of the brow test of originality:

-the work should be in a permanent Form

-it should not be a mere copy

-there should be a degree of independent skill, labour and judgement [most important]

Court said this was done. The reports were in a permanent form. It was also not a mere copy
of the speech – they’ve added punctuation marks, corrected grammatical errors, and added
quotes from other speakers’ speeches as well. There was also use of skill, labour and
judgement because they had to take down the speech in shorthand, and then prepared reports
from them. Because they had put in work and effort and their work was not an identical
copy, by virtue of the sweat of the brow test, they are entitled to a copyright and no man
should be allowed to take advantage of their effort.

Thus, the test of originality for this sweat of the brow test, is very very low. You don’t
have to prove creativity, just that you’ve put in effort and that your work is not a mere
copy.

But the subsequent book was copied identically from the report, and there was no use of skill
or labour. This was admitted by the author of the book. Thus this work would not qualify as
original, but would be a copyright violation.

Sir: Automatic journalism – algorithm where you enter certain data and the software
produces an entire report – who does the copyright lie with – person entering the date or the

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coder? How do you measure originality here? Can you keep applying the same tests of
copyright to these scenarios?

University of London Press v. University Tutorial Press:

Here, the exam setters had picked up ideas and text from the university textbooks to frame
questions for the exam. Issue – were these questions original?

Court- originality does not require novelty in the idea, or uniqueness. It merely requires
originality in the expression – that is, the work should not be copied from another work, but
that it should originate from the author himself. The examiners had drawn upon the common
knowledge of mathematics, but their expression had come from their own thought and was
not copied from anywhere. There was a degree of skill, labour and judgement in picking up
concepts and framing the questions. This Court applied the sweat of the brow test, here
too.

‘That which is worth copying, is prima facie worth protecting under copyright law’ – test of
what literary work means, and which types of work are to be protected – however this test has
been subsequently criticized in other jurisdictions.

Feist Publications v. Rural Telephone Service Company:

(NOTE – reasoning of decision in the RM is incomplete and misleading)

Rejected the sweat of the brow test

Feist didn’t have access to the information of contacts, so they contacted 11 phone companies
for the same. All companies gave this information, except for Rural. Feist then appointed
volunteers who went from house to house to collect information, but ultimately some had
copied contacts from Rural’s white pages. This was proven by showing that certain fictitious
names which were in Rural’s white pages were also present in Feist’s white pages. But Feist
had also added some information to Rural’s white pages, because they had appointed their
own investigators to verify certain things. But the basic information in both were the same.

Issue: Were these just facts or was this a compilation of facts, and hence copyrightable?

Rural – while facts are not copyrightable, when an author selects certain facts and compiles
them, it requires skill and judgement and is therefore an original work that is capable of
copyright protection.

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Court – no, only those compilations which show a minimum degree of creativity are capable
of being considered original, and therefore capable of copyright protection. A mere display of
effort is not enough to prove originality.

To establish originality, (a) your work has to be an independent creation and not copied; (b)
there must be a minimum degree of creativity.

The sweat of the brow test was rejected. While ‘collection and assembly’ only requires
skill and labour, ‘selection and arrangement’ requires creativity. It was found that the
making of an alphabetical list of contacts, while requiring effort, did not involve any
creativity as it did not involve selection and arrangement, but only collection and
assembly. Only when a compilation involves selection and arrangement will it be
considered original. Hence Rural’s white pages were not an original work and not
capable of copyright protection, hence Feist’s actions were not considered a copyright
violation.

Thus the minimum level of creativity test raises the threshold of originality for a
copyrightable work.

Sir: Doesn’t the sweat of the brow test also require some degree of creativity? It says skill,
labour and judgement. Doesn’t ‘judgement’ require some degree of creativity?

CCH Canadian Co v. Law Society of Upper Canada:

(NOTE – reasoning of decision in the RM is incomplete and misleading)

Rejected both the sweat of the brow test, and the minimum level of creativity test in
Feist. It considered both these tests to be two extremes. Said you don’t need creativity,
but merely that the work you’ve done is not mechanical, and that you’ve had to use
some degree of skill and judgement. Creativity, in the form of novelty in expression or
idea, is not required.

Allowing patrons to photocopy the judgement reports of CCH are an infringement of the
latter’s copyright.

Court – the reports of CCH were original. There was an exercise of skill and judgement. It
wasn’t a purely mechanical exercise.

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Skill – use of one’s knowledge and ability

Judgement – use of one’s discerning abilities by distinguishing between portions that were to
be kept and those to be removed

Ultimately, the photocopying was considered justified under fair dealing.

Are judgements copyrightable? YES - s.17 – Government Work, first owner will be the
government (not the judge). But there is also a provision which says that judgements are in
the public domain – s.52(1)(q)(iv) – and that a copying of the judgement is not a copyright
violation (it doesn’t say that there is no copyright at all, it merely says that its not a violation
of copyright).

Eastern Book Co. v. D.B. Modak and Anr:

EBC claimed copyright in the headnote, the introductory line, the paragraph structure and the
manner of arrangement and presentation.

High Court – formatting and copy-editing could only be done in so many ways, and hence
there cannot be a copyright over the edited judgement – there cannot be a monopoly over
something in the public domain – merely by putting footnotes, or correcting typographical
errors, there wasn’t sufficient change in the work, to grant it originality, hence not capable of
copyright protection. BUT headnotes were capable of copyright protection, if effort had been
put into it, if it wasn’t merely a quote or copy from the judgement, but had been prepared
through independent labour, skill and judgement, then it would be original.

Supreme Court – considered SCC’s work to be a derivative work. Framed two issues.

a) What is the level of originality required for a derivative work?

b) Would the entire judgement prepared by SCC have a copyright protection, because
the copy-editing was so integral to the final work produced?

Judgements are in the public domain – s.52.

Said that derivative works must have (i) some amount of originality, (ii) there must be
some degree of skill, labour and capital and (iii) it must not be a mere mechanical
copying exercise [Canada case test – don’t mention minimum level of creativity].

13
Defence argued that there wasn’t even a minimal level of creativity involved in the work by
SCC. It was merely an extension of what the SC had already prepared, and what was already
in the public domain.

SC – mere copy-editing (correcting typo errors, adding grammar, adding footnotes) does not
show enough skill for originality. There must be selection, coordination or arrangement of the
preexisting data in such a manner that a different work is created by the author, for the
originality requirement to be satisfied. But they were doing something that did entitle them to
copyright protection – headnotes, paragraph structuring, paragraph numbering, stating
whether the judgement was dissenting, concurring, partially concurring etc – because this
required a considerable amount of skill, and this gave the published judgement the character
of a different work.

Was the copyright granted to the entire judgement or only to the specific portions that were
original? The latter, based on the last para – only the para numbers, headnotes, phrases etc.
were copyrightable.

7/4/16 – Thursday – ‘Fixation’ (Law of Copyright) – pg 87 of RM; ‘Literary Works’ (Law of

Copyright) – pg 89 of RM

Is it an essential requirement for an expression to be fixed in a tangible medium?

You want the expression to be ‘seen’ in some way or the other. Thus, the expression must be
invariably ‘fixed’. What, then, is the difference between ‘expression’ and ‘fixation’?

We will draw a distinction between an expression, and the medium through which it is fixed.

Copyright is necessary for dissemination of the ideas – but to allow such dissemination you
need fixation of the expression, to allow others to perceive such expression, and build on it.

s.102(a) of the US Copyright Act – copyright is protected only if it is fixed in a tangible

medium

s.101 – says when a work is fixed

Art.2(1) – Berne Convention.

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Under the UK position, the work need not be fixed by or under the permission of the
author to receive copyright protection. On the other hand, in the US, when anyone fixes
the work, it becomes entitled to copyright protection.

Fullbrook case:

Could accessories, scenic effects, make up, stage business be considered copyrightable?

Could copyright only extend to something that could be printed and published, or to the
whole piece that is the outcome of the script. Defendant argued the former, plaintiff argued
the latter.

Court said former – old case, so it said that ‘printing and publishing’ is the essence of
fixation. Nonetheless, it is still the correct law on the position that an expression must be
‘fixed’ to have copyright protection.

Hemingway case:

To what extent could the conversations you have be given copyright protection, and when
does the copyright protection begin?

Speech v/s something that is written.

Court: Speech that is intended to be public is different from speech that is private. Does a
speech have to be written down or ordered to be written down by an author (in a private
conversation) to grant it copyright protection? Speech, in a conversation, involves both
individuals. The author’s response may have been triggered by the other speaker. Court
decided that conversational speech would not be protected, unless the author makes it clear –
through some way or the other – that his speech was to be copyright protected. Here, there
was no such indication, because some of the conversations had been published by the friend
even when Hemingway was alive.

Court also said that there is a presumption that private speech is not copyright protected.

Here, there wasn’t very clear fixation. Nonetheless, the Court was concerned with ‘common
law copyright’ which doesn’t require fixation, but protects an author’s right to first publish
his own ideas. However, this common law copyright isn’t really followed much anymore.
Which means that a private conversation would not get copyright protection unless there was
some form of fixation – either in a recording, or in writing.

15
Literary Works

Literary work is not confined to ‘literature’ - it refers to anything that is written, irrespective
of quality or style. Not just limited to the works of fancy authors.

University London Press Case – examination papers can be literary works as well.

Is literary expression limited to works that are comprised of words only? What about works
that have numericals or symbols? What about a programme code which ordinary people
cannot understand?

Sir - Hollinrake v. Truswell [1894] (not in RM): Laid down the test for when you consider a
symbol to be a literary work. Issue – whether a cardboard sleeve chart (sketch for the sleeve
of a woman’s dress) would be a literary work? Court said no, at most it could be an artistic
work because it was a drawing. Court said that the creation must afford either
information and instruction, or pleasure in the form of literary enjoyment, to qualify as
a literary work. When do you say that something provides information or instruction –
when it is capable of conveying any intelligible meaning or not. They accepted a very
low threshold of intelligible meaning. It need not communicate this meaning to everyone
in the world – even if just a few people understand, this is sufficient. Ex: Shorthand,
braille, telegraphic code – all can qualify for literary works. We cannot consider
something to be a literary work if it is totally meaningless and gibberish.

The second limb of the test – on pleasure – is a qualitative test that has largely been rejected
by Courts subsequently.

Agarwal Publishing House v. Board of High School:

(1) Does the question paper qualify as a ‘literary work’

(2) If so, could the copyright vest with the UP Education Board, and not with the original
authors?

1st issue – yes, as already discussed

2nd issue – Court looked into s.17 of the Copyright Act – which said that the copyright would
vest with the first author of the work - and also proviso (d) to s.17 which said that for
government works, the government would be the first author.

16
s.17 First owner of copyright:- Subject to the provisions of this Act, the author of a work shall be the first owner of the
copyright therein: Provided that—
(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of
a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a
newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the
first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper,
magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other
respects the author shall be the first owner of the copyright in the work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving
or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of
any agreement to the contrary, be the first owner of the copyright therein;
(c) in the case of a work made in the course of the author's employment under a contract of service or apprenticeship, to
which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first
owner of the copyright therein;
4
 [(cc) in the case of any address or speech delivered in public, the person who has delivered such address or speech or if
such person has delivered such address or speech on behalf of any other person, such other person shall be the first owner of
the copyright therein notwithstanding that the person who delivers such address or speech, or, as the case may be, the person
on whose behalf such address or speech is delivered, is employed by any other person who arranges such address or speech
or on whose behalf or premises such address or speech is delivered;]
(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner
of the copyright therein;
4
 [(dd) in the case of a work made or first published by or under the direction or control of any public undertaking, such
public undertaking shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
Explanation. —For the purposes of this clause and section 28A, “public undertaking” means—
(i) an undertaking owned or controlled by Government; or
(ii) a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956); or
(iii) a body corporate established by or under any Central, Provincial or State Act;]
(e) in the case of a work to which the provisions of section 41 apply, the international organisation concerned shall be the
first owner of the copyright therein.

So the issue became – whether the examination paper was a government work? Test – are the
papers prepared under the ‘direction and control’ of the Board? Court said no – the Board
only appointed the people, but it had no direction or control over these people in the setting of
the exam. The paper setters were independent contractors, who were using their own
expertise and knowledge in setting the paper. Thus, the copyright would vest with the author
and not the board (unless there was an agreement to another effect). Since there was no such
agreement, the copyright would vest with the authors of the paper.

Burlington Home Shopping Pvt Ltd v. Rajnish Chibber:

Issue - Whether a database of customers details (names, what they bought etc.) could be
considered a literary work? Yes, it communicates information.

Can these types of databases get protection anymore – because of the lack of originality –
following the Eastern Book Co. test? Court said there was some amount of judgement and
skill here, in selecting customers etc for the database.

[Trade secrets could have also been a strong ground for Burlington, because the database was
a confidential one]

Tech Plus Media v. Jyoti Nanda:

17
Here, too, a database of customers was created. However, because the plaintiff could not
show any skill or judgement in creating this database – because it simply copied the email
addresses of customers – to create the database, there was no copyright protection.

Sir: Are titles entitled to copyright protection? Movie titles, book titles? Is it a literary work?
Does it communicate information, as required by the Hollinrake test? Does it communicate
originality?

Initially, the Courts said that they cannot be literary works worth getting copyright protection.
But English jurisprudence have never given any pointed reason for this position. The
following reasons have been tried -

a) These titles and names are adequately protected under passing-off actions, and under
trademark law. Ex: When Indian film ‘Hari Puttar’ was produced, Harry Potter sued
them on the basis of trademark law.
b) Moreover, the title is not sufficiently creative to be granted copyright protection – as
opined by David Nimmer. But, if the author can display sufficient creativity in the
title, then it could be entitled to copyright protection. Headings of trade dictionaries
were considered eligible for copyright protection in the UK. Also, the title ‘Trial and
Triumph’. Can the headline of a newspaper report be entitled to copyright protection?
‘Bid to Save Center After Funding Cock Up’ – an example where a copyright was
claimed and upheld for a newspaper headine
c) It is not substantial enough to be entitled to copyright protection. Ex: ‘Lawyer’s diary’
– Court said there was too slight a degree of skill or labour, and hence it was not
entitled to copyright protection.

Wittenburg, ‘Law of Literary Property’ – says that titles should be entitled to copyright
protection – uses the same requirements of trademarks (brings in TM law into copyright
law) to lay down a ‘distinctiveness’ test to determine whether copyright should be
granted – should be arbitrary/fanciful, or must have acquired secondary significance; should
be continuously used; the use of title should not have been abandoned

Pandian Arivali v. Kamal Hassan

Pandian registered the title of a book ‘Magalir Mattum’ – Book yet to be published

18
Kamal Hassan advertised that they are launching production of a film with the same title

Author moved for an injunction. Trial Court declined. Division Bench – the title is not a part
of composition or work of author/composer, and the workmanship of the author is confined
to the work and not to the title [Problematic reasoning – can be questioned]. Hence, not
entitled to copyright protection. It said, there is no property in the name, which is a term of
description. It can be shown that the title is so associated with the work that the use of the
title would mislead the public about the work itself – Court said that this is a scenario in
which you can claim copyright protection for the title [But you could just have a passing off
suit in this scenario – why copyright protection].

Sir: Concluding remarks – a title which has sufficient creativity in it, would be entitled to
copyright protection. Otherwise, trademark and passing off protection would apply. [Same
test for advertisement slogans]

Can translation of a copyrighted work create a new copyright in the translated work?

Blackwood v. Parasuram:

“translation is the action/process of turning from one language into another, also, the product
of this, a version in a different language – the expression/rendering of something in another
medium/form transformation, alteration/change”

See summary in RM.

Two books (Thomas Hardy and Tagore) prescribed by University of Madras – defendants
came up with guides to these two books – did the guide infringe upon the copyright of the
publishers?

Rabindranath Tagore work – written in Bengali, copyright in Tagore. Defendant raised the
issue over whether Tagore would have copyright over the translated work in English. No
translation of T’s work occurred within 10 years of their original publication in Bengali –
thus his sole right of publishing this work expired (as per the relevant Act). So, T didn’t have
a sole right to publish the work in English which he could have translated to the plaintiff.
Unless a translation was published within the 10 years, T wouldn’t have a copyright in the
work.

19
Court disagreed. Said that the provision implied that it conferred a sole right of translation on
the author for 10 years. After that any other people could translate the work. After that, the
author couldn’t claim that his copyright had been violated by those who translate. But it
doesn’t mean that the person who does the translation doesn’t have a copyright in the
translated work – they do, because it is an original work. Thus the plaintiff’s translation of
T’s work, even after 10 years, would still qualify them for a copyright in the translated work,
and hence they could sue the defendant for infringement.

Should posters be granted copyright protection? Not the information in the poster (where the
event is happening, when it is happening – which are just facts) but could the aesthetics of the
poster be subject to copyright? Could the poster be an artistic work? Yes.

Case in which Q. before the Court was whether dancing statutes, made of china, which are
used as the bases of table-lamps should get copyright protection – argument against was that
it was a functional work, a thing of utility – something that is functional in nature should not
be given copyright protection – is it possible to separate the artistic feature from the
functional feature in this work?

Are masks entitled to copyright protection? (yes seems to be the answer – the case that Sakhi
had discussed in merger)

Are mannequins entitled to copyright protection? It’s just a functional device. But what if it is
designed in a unique way?

Case laid down the test for when artistic-functional works can get you copyright protection:

a) Separability – separating the artistic feature from the functional one (physically)
b) Conceptual separability – not just physicial separation, but conceptual separation of
the artistic feature from the functional one

So examples of artistic cups, or artistic mannequins, or artistic table bases can be

copyrightable because of conceptual separability.

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12/4/16 – Tuesday – Artistic Works + Dramatic Works (Law of Copyright) – pg 94 + 97 of
RM

Literary Work (contd.):

Can a letter be a literary work? Whether an official letter or a personal letter. Charles Dickens
case from the first lecture – bequeathed his property, including a manuscript, to his sister. She
only got the chattel right, but the IP in the manuscript went to someone else. Whatever you
write in your answer papers is your copyright, even though the chattel right over the answer
paper is with the college (unless you transfer it by assignment). Same with letters – though
the addressee may have have a chattel right over the letter, the author does have a copyright
over the letter.

In new editions of books, where a second person edits the original work (adds stuff,
rearranges it etc.) then the original author will have a copyright in the original work, and the
editor will have a copyright over the edited portions and the changes he has made.

Arrangement of broadcasting programs, school textbooks, trade advertisements, directories,

lists, peculiar collections of information, mining reports, list of stock exchange prices
presented in a particular manner, football coupons (imp. – find this case, he mentions it a lot):
these are all capable of copyright protection.

Names and addresses on visiting cards – can’t be copyrighted – they are just facts, no
originality. Same with cricket scoring sheets.

Legal forms, news and facts, blank books – cannot get copyright protection.

What about computer programmers – s.2(1)(o) – literary works include computer

programmes and databases under the Copyright Act.

3 parts of a computer’s code:

Microcode – can be copyrighted

OS – can be copyrighted

Application programmes – can be copyrighted

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Are only the literal parts of a computer programme copyrighted? No, literal elements are the
object code and source code. But the programme structure, sequence and organization are
also protected. What about screen displays (what is displayed on the screen when you run the
programme)? Are they also protected? In US, when you register your copyright, you can
deposit the screen display along with your code, and if you do, you get protection for both.
The screen display would be protected under audio-visual works, not under the literary
works. In India, we don’t make this distinction. You register the code alone, as a copyright,
and get protection over all of this together.

General flow charts, menu structures of a programme, programme interface – all non-literal
parts of a software which also get copyright protection.

These are not ideas – they are the non-literal parts of an expression – similar to the interplay
of characters and sequence of events in a work of fiction – though they are not literal parts of
the expression, they still get copyright protection.

Computer databases: the structure of a database can get copyright protection (see cases
above). For content, can you get copyright protection? Same norms apply – are they original,
are they entitled to copyright protection etc. But the absence of a copyright over content does
not take away the copyright over the structure of the database.

There are certain ‘ragas’ in the public domain – you cant get copyright protection over them,
but you can get copyright protection over a tune you compose by arranging these ragas in a
particular manner.

Artistic Works

s.3(1), US Copyright Act – work of ‘artistic craftsmanship’

George Hensher Ltd. Appellants v. Restawile Upholster:

Could the special sofa be copyrighted as an artistic work? The District Court asked expert
witnesses whether the work had any aesthetic appeal to it? The witnesses said yes, it had an
original design, and an ‘eye appeal’ to it. Therefore was protected.

Court of Appeals said no, this is not enough, you need more than a mere ‘eye appeal’ – you
need an artistic quality in the work.

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House of Lords – 5 opinions were given – all said it wasn’t ‘artistic work’ because witnesses
said it was vulgar, but they gave reasons

Lord Reed – the viewer’s opinion on what is artistic craftsmanship cannot always be trusted
because people have different opinions on this. This is why it is problematic for a judiciary to
decide what is ‘artistic’ – they are not experts in this area. You have to look at the intention of
the maker, and whether he considered it to be artistic – that is important, not conclusive. You
have to determine whether a substantial part of society considers the work to be aesthetically
pleasing, in order to determine if it has artistic value – even if the rest of society doesn’t like
it. However, because the witnesses said it does not have aesthetic appeal, and that some even
considered it ‘vulgar’, caused Lord Reed to consider the sofa to not be an artistic work.

[What the fuck. This is retarded. Why does art have to be aesthetically pleasing? Why does
art have to appeal to ‘a substantial part of society’? This hegemonizes art into the domain of
the masses.]

Lord Morris of Broth – there cannot be a bright line or a scientific objective test over what
constitutes artistic craftsmanship. Its not enough for the work to have design, skill, or visual
appeal to the consumers – it must have an artistic quality. We need to create an objective test
on what is artistic – we cant look at the intention of the maker and buyer – we have to
consider what is ‘artistic’, based on expert opinions.

Lord Viscounte Dilhorn – the object must be acquired for an aesthetic reason, not a functional
one. Ex: I should buy a sofa for its aesthetic value and not for its functional value, even if the
item has both functional and aesthetic value. Said that this should be determined through
witnesses who are experts on artistic craftsmanship – they have to determine if it has artistic
quality, and whether consumers would buy it for aesthetic purposes.

Lord Simon – works of artistic craftsmanship is very broad – it need not be handmade, can
include machine made products. The artistic merit of the work is irrelevant. What we have
to look at is whether these are works of artistic craftsmanship, and not whether these
are artistic works of craftsmanship (on this ground he disagrees with all the above lords
who treated the requirements of ‘artistic’ and ‘craftsmanship’ as separate requirements
to be proved separately). This was a very very broad definition. The work doesn’t have to
have an aesthetic appeal. Looked at the history of the ‘arts and crafts’ movement in the UK,
and how it has progressed from works of aesthetic appeal, to include functional appeal as

23
well. He also said that this determination is to be done by expert witnesses. But he said that
the “intent of the creator” is crucial.

Lord Kilbrandon – the product of an author who is consciously concerned with the
production of a work of art will be considered artistic craftsmanship. You cant just take the
word of the author, but also the circumstances in which he produced the work.

[The last two opinions seem to be the most sensible]

s.2(c) of the Indian Copyright Act – ‘whether or not the works possess an artistic quality’

Merlet and Anr. v. Mothercare Plc.:

Court applied the test of aesthetic appeal (Reed’s test). They say that all the Lords said the
same thing, and that the opinion came out most clearly in Reed’s opinion. They said you need
to make a hotch-potch of all these factors, that it was intended for art, it had appeal etc.

Reed’s test would not consider this a work of artistic craftsmanship, because there was no
aesthetic pleasure for a viewer.

Even the intention of the artist test would not be sufficient – she did not intend for this to be a
work of art – she only wanted to make a piece of clothing to cover her child.

(This issue becomes moot now, because we not have a design statute that allows you to
register your design for protection)

Woods v. ____ (Lebbeus chair case):

Look at slides.

12 Monkeys movie.

Associated Publishers Ltd. v. K. Bashyam alias “Arya”:

Look at slides.

Sir: Are tattoos artistic works? And, if so, who owns the copyright? The author, that is, the
person who drew it. As long as they aren’t copying it from someone else.

People who blows cigarrette smoke in an artistic fashion i.e. they blow smoke rings, and
someone takes a photo and fixes it – can this be a copyright?

24
Case of wildlife photographer who dropped his camera, and a monkey picked it up and took a
selfie, which later the photographer tried to sell – does he get copyright, or does no one have
a copyright over this photo (because monkeys cannot be granted copyrights)?

Dramatic Works

s.2(h) of the Copyright Act defines this

Green v. Broadcasting Corp of NZ:

Issue: whether the format of the tv show could be protected, and could the show be
considered a dramatic work?

There was no evidence of whether the script contained these specific concepts, and they were
not carried out consistently in each show – thus, the format of the show of the plaintiff was
merely one of a regular talent show – the special features were not proven enough for it to
obtain protection as a dramatic work – there was no unity in using the special features, that is,
they did not relate to each other in such a way that you could consider them a format, as
required for a dramatic work. There must be some kind of continuity in the show, in its
features. This was not present here. “A dramatic work must have sufficient unity to be
capable of performance. The features claimed as constituting the format of the show in
issue being unrelated to each other except as accessories ton be used in the presentation
of some other dramatic or musical performance, lacked that essential characteristic.”

Norowizian v. Arks:

‘jerky movements’ of dance achieved by editing – could this be copyrighted as a dramatic

work?

UK Law – a dramatic work is one that is ‘capable of being performed before an audience’ –
this was not the case here, because it is the technical part that has been copied, not the part
that is capable of performance – this part was not a dramatic work that is capable of copyright
protection.

25
19/4/16 – Tuesday – Authorship & Ownership – pg102 RM

s.2(d) of the Indian Copyright Act

Who is an author?

literary/dramatic work – writer

musical work – composer

artistic work – artists

photograph – photographer

cinematographic film or sound recording – the producer (because you cannot

conveniently identify one particular person who’s creative output the entire film is,
thus, because the initiative is taken by the producer who hires the director, the actors,
the scriptwriter, the technicians etc to bring the film together, he is granted the
copyright) – this issue came up in India, where it was considered whether a director
should be considered a joint author – because of the strong lobby of producers against
it, and because of an easy way to circumvent it (producers would now hire the director
as an ‘assistant director’ and make themselves director) it was not allowed – in Europe
and some other countries the director and the producer are both considered authors of
the film

who would be the author of a computer generated work? – the software is developed by one
person, but the system is operated or used by someone else to produce the work – Ans: the
person who causes the computer-generated work to be created, i.e. not the person creating the
software, but the person who uses the software to produce the output – the creator of the
software will have copyright in the software [Exs: Second life, MMRPG online, you make
your characters and they can be sold for money – who owns the characters created by the
user? – normally the end user’s licensing agreement provides the answer – it specifies in
whom the copyright would vest over such work; Automatic Journalism – it is the person
entering the input who has the copyright in the news report generated, not the person who
designed the program]

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s.2(ffa) – composer definition – doesn’t follow the rule on fixation (but also, if you reduced
the music to notations which had meaning it would become a literary work – so what would
be the musical work – the music itself)

s.2(uu) – producer definition

These are the authors. However, who is the owner? Statute of Anne, 1607 (?) - which is the
basis of modern copyright law – clearly provided that the author is the first owner of the
copyright.

Ownership – s.17 – the author – BUT there are exceptions:

 In the case of a literary, dramatic or artistic work made by the author in the course of
his employment by the proprietor of a newspaper, magazine or similar periodical
under a contract of service or apprenticeship, for the purpose of publication in a
newspaper, magazine or similar periodical, the said proprietor shall, in the absence
of any agreement to the contrary, be the first owner of the copyright in the work in
so far as the copyright relates to the publication of the work in any newspaper,
magazine or similar periodical, or to the reproduction of the work for the purpose of
its being so published, but in all other respects the author shall be the first owner of
the copyright in the work
R.K. Laxman example – the right to publish his cartoons in newspapers and
magazines would only lie with the proprietor such as TOI – but Laxman would still
have the copyright in the publication of a separate book of a collection of his cartoons
because such a book would not be a ‘newspaper, magazine or similar periodical’
 Subject tot the provisions of clause (a), in the case of a photograph taken, or a
painting or portrait drawn, or an engraving or a cinematograph film made, for
valuable consideration, at the instance of any person, such person shall, in the
absence of any agreement to the contrary, be the owner of the copyright therein
Ex: commissioned work, such as a photographer hired to take convocation
photographs
 In the case of a work made in the course of the author’s employment under a
contract of service or apprenticeship to which clause (a) or clause (b) does not
apply, the employer shall, in the absence of any agreement to the contrary, be the
first owner of the copyright

27
What is a contract of service (as opposed to contract for service) – moved away from
the ‘control’ or ‘power’ test, to one that looks at the totality of circumstances [see
slides]. Why was the control test discarded? In some professions, the employee has
certain skill and labour, which places him outside the control and direction of the
employer, but would still constitute a contract of service. Factors you look at:
independence in decisions, brings his own tools etc indicate a contract for service. On
the other hand, things like payment of regular wages, treatment as employee for tax
purposes etc. indicates a contract of service.
Noah v. Shuba: (see slides) PHLS had, by practice, permitted employees to write
books and retain their copyright. Hence it was found that this was an implied
condition of the employee’s employment agreement. Moreover, the book was not
written in the course of employment, but at home, in the evenings and the weekend.
Hence, the employee could retain the copyright in the book.
Nora Beloff v. Pressdam Ltd: (see slides): Issue was whether author was under a
contract of service with the observer, because otherwise the copyright would vest in
her. Held, that the contract was one of service, and thus the copyright in the
memorandum belonged to the Observer ltd. and not with the correspondent.
Moreover, the editor could not assign the copyright in this to the correspondent, only
the proprietor could. Finally, was this written in the course of employment? Test:
Whether the employee is employed as part of the business and whether the work done
is an essential part of the business.
Stevenson Jordan v. MacDonald: Accountant used his time at the office, and the
library at the office and the office resources, to write his lectures, which he delivered
on his own time to a college. Would the lectures be a work created in the course of
employment? Court said no, because it could not be proven that the employer would
have asked or ordered him to write these lectures.
Missing Link Software v. Magee: Programmer wrote certain programmes when he
was free at work. Co. claimed copyright over the programmes. Held, yes belongs to
the company. The programmes were written in the course of employment because the
nature of the programmes written by him were the type the Co. hired him for. Thus
the work he did was within the ‘scope of the task/employment’ he had been hired to.
Whether he wrote these programmes at work or at home would be irrelevant, it would
be in the course of employment.
s.101, US Copyright Act – “A work made for hire”

28
 s.201, US Copyright Act – Ownership of copyright – see works made for hire -
requires express agreement in written instrument to exclude employer’s copyright
– Noah v. Shuba’s decision would not be permitted under this provision
CCNV v. Reid: (see slides) Here, because Mr. Reid was hired for only a single
assignment, he was not treated as an employee for tax purposes, he brought his own
tools, worked in his own studio in a separate city, was only retained for two months,
he wasn’t paid for his work but only paid for the money he spent on hiring assistants –
R was an independent contractor, i.e. a contract for service and not of service (not a
“work made for hire”), therefore copyright retained by R for exhibitions in other
cities. Court, while deciding, rejected the control test, and laid down the ‘agency test’
which looks at a large number of factors to determine the nature of relationship
between hiring party and hired party – source of instrumentality, location of the work,
duration of the relationship between parties, method of payment, hired party’s role in
hiring and paying assistants, skills of the hiring party, hiring party’s right to control
the manner and means by which the work is done etc.
 In the case of a Government work, the Government shall, in the absence of any
agreement to the contrary, be the first owner of the copyright therein
 In the case of a work to which the provisions of s.41 apply (a work that has been
assigned by an international organization – WIPO, WTO etc. – such as assigning you
to prepare a report for them), the international organization concerned shall be the
first owner of the copyright therein
 In the case of a work made or first published by or under the direction or control of
any public undertaking, such public undertaking shall, in the absence of any
agreement to the contrary, be the first owner of the copyright therein
 Added in 2012: Provided that in the case of any work incorporated in a
cinematographic work, nothing contained in clauses (b) and (c) shall affect the
right of the author in the work referred to in clause (a) of sub-section (1) of
section 13
This allows the persons creating a set, writing a script, composing a movie’s
soundtrack etc. to continue to have copyrights in these underlying works.

Nationality Requirement – s.13(2), Copyright Act

29
s.13(2):

(2) Copyright shall not subsist in any work specified in sub-section (1), other than a work to
which the provisions of section 40 or section 41 apply, unless,—

(i) in the case of a published work, the work is first published in India, or where the work is
first published outside India, the author is at the date of such publication, or in a case where
the author was dead at that date, was at the time of his death, a citizen of India;

(ii) in the case of an unpublished work other than 2[work of architecture], the author is at the
date of the making of the work a citizen of India or domiciled in India; and 2[work of
architecture], the author is at the date of the making of the work a citizen of India or
domiciled in India; and"

(iii) in the case of 2[work of architecture], the work is located in India. 2[work of
architecture], the work is located in India." Explanation.—In the case of a work of joint
authorship, the conditions conferring copyright specified in this sub-section shall be satisfied
by all the authors of the work. [verify that this is the correct phrasing of the section]

V.T. Thomas v. Malayala Manorama Co. Ltd. (see slides):

Cartoon characters were created in 1957, before VT joined MM. In addition, although s.17(c)
can be interpreted in a broad fashion, it cannot be interpreted in such a broad manner that
once a person’s employment has been terminated they can prevent the cartoonist from ever
drawing those characters again in another publication house.

Court should have, but didn’t, address the issue of copyright in characters.

Duration of Copyright (see slides)

Published literary, dramatic, musical and artistic works: Life of author + sixty years (In US
and Europe its life + 70 years)

Anonymous and Pseudonymous works – 60 years from the date of publication unless identity
disclosed, in which case first rule would apply

Posthumous works – 60 years

Photographs – life + 60 years (slides are wrong I think)

30
Everything else – 60 years

Broadcast reproduction right: 25 years from date of broadcast

s.14, Indian Copyright Act:

14. Meaning of copyright.—For the purposes of this Act, “copyright” means the exclusive
right subject to the provisions of this Act, to do or authorise the doing of any of the following
acts in respect of a work or any substantial part thereof, namely\:—"

(a) in the case of a literary, dramatic or musical work, not being a computer programme,—

(i) to reproduce the work in any material form including the storing of it in any medium by
electronic means;

(ii) to issue copies of the work to the public not being copies already in circulation;

(iii) to perform the work in public, or communicate it to the public;

(iv) to make any cinematograph film or sound recording in respect of the work;

(v) to make any translation of the work;

(vi) to make any adaptation of the work;

(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in
relation to the work in sub-clauses (i) to (vi);

(b) in the case of a computer programme,—

(i) to do any of the acts specified in clause (a); 2[(ii) to sell or give on commercial rental or
offer for sale or for commercial rental any copy of the computer programme: 2[(ii) to sell or
give on commercial rental or offer for sale or for commercial rental any copy of the computer
programme\:" Provided that such commercial rental does not apply in respect of computer
programmes where the programme itself is not the essential object of the rental.]

(c) in the case of an artistic work,—

(i) to reproduce the work in any material form including depiction in three dimensions of a
two dimensional work or in two dimensions of a three dimensional work;

31
(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already in circulation;

(iv) to include the work in any cinematograph film;

(v) to make any adaptation of the work;

(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the
work in sub-clauses (i) to (iv);

(d) in the case of a cinematograph film,—

(i) to make a copy of the film including a photograph of any image forming part thereof;

(ii) to sell or give on hire or offer for sale or hire, any copy of the film, regardless of whether
such copy has been sold or given on hire on earlier occasions;

(iii) to communicate the film to the public;

(e) in the case of a sound recording,—

(i) to make any other sound recording embodying it;

(ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording, regardless
of whether such copy has been sold or given on hire on earlier occasions;

(iii) to communicate the sound recording to the public. Explanation.— For the purposes of
this section, a copy which has been sold once shall be deemed to be a copy already in
circulation.

Right of Reproduction

Issue of whether Google’s digitization of author’s work without their consent violates this? It
was held to be fair use.

Does the right of reproduction only prohibit exact reproductions, or imitations of the work as
well?

32
Does RAM reproduction (automatic reproduction of a website/sound clip you visit online on
your RAM or cache memory) count as a copy or a reproduction? Came up in MAI Systems
v. Peak Computers: MAI was selling computers with OS. Peak computers was repairing
computers. But to repair the computer they had to start the computer, for which they had an
unauthorized version of the OS software. It was not downloaded onto the CPU, only put on
the RAM, once the computer was working they would detect and repair the defect. Didn’t use
the OS for anything else. MAI said even that use of software on the cache memory would be
a copy. Held: RAM copy is also a copy because it can be perceived, reproduced,
communicated and because it stays for more than a transient period (this is the test for
what is a copy). Therefore, is a copy. This is now well settled – that RAM/cache copies are
copies. But a fair use defence was permitted later, for using OS to repair computers.
Cacheing is now (under ordinary circumstances) considered to be a ‘fair use’ – also well
settled.

Even reproducing a 2D work in a 3D form constitutes a reproduction.

Right of Distribution

The right to issue copies of a work to the public, being copies not already in circulation.

First Sale Doctrine and John Wiley Case: (see slides) right of distribution does not pertain
to copies already in circulation – i.e. the copyright holder has the right of first sale over
copies not in distribution, but that doesn’t take away the right of an owner of a particular
copy of the book to sell his book to another because that’s already in circulation. Thus, the K
person did not violate Wiley’s copyright because he wasn’t infringing on their right of
distribution. He was the owner of the books he purchased and can therefore sell that book as
he likes, in any jurisdiction. Decided based on s.109 of the US Copyright Act. The first sale
exhausts a copyright owners’ right of distribution.

Right of performance in public/communication to the public

33
What constitutes ‘communication to the public’? If you play a movie in college/hospital/club,
will it constitute ‘public’? No. But when a cable operator plays a movie will it count as
communication to the ‘public’? Yes. Garware Plastic case said that in such cases, even
though the viewers of cable TV are in separate locations, they still constitute ‘public’
collectively.

You have to keep in mind the following three tests for a whether a group constitutes
communication to the ‘public’:

-nature of audience (as seen in above case)

-financial consideration for communication

-author’s intended public: that is, when the author intended to communicate the work only to
a specific group of people, and if it is communicated to people outside this group, it
constitutes communication to the ‘public’.

(missed 2 hours on 22/4/16)

23/4/16 – Saturday

Trademark of Characters

2 tests discussed in last class – but in India, there’s only one case which ignores both these
tests and decided as follows:-

Raja Pocketbooks v. Rani Pocketbooks:

Character in the first book called Nagraj; in the second there was Nagesh who looked
substantially liked the first one (green coloured; snake-like belt) – the Court merely said that
the target audience was the same; the characters were substantially similar and a reasonable
person (with average intelligence and imperfect memory) was likely to be misled – hence
there was an infringement of copyright

Sir says there’s one more relevant case from India -

King Features v. Sunil Agnihotri

34
Hindi serial which SA wanted to telecast on doordarshan called ‘Betal’ – copied from
‘Phantom’ and several other characters – devil, horse, wife (Diana) were also copied – the
owners of ‘Phantom’ objected – the Del HC applying the test of ‘look and feel’ found that
any version of ‘Phantom’, irrespective of what you call it, would be misleading and would be
a copyright violation because it would give the same look and feel – hence not allowed.

Infringment of copyright

s.51, Indian Copyright Act (read the entire provision)

(ii) ‘Permits for profit any place to be used for the communication of the work to the public
where such communication constitutes an infringement of the copyright of the work, unless
he was not aware and had no reasonable ground for believing that such communication to the
public would be an infringement of copyright’

Sir: Is this a form of secondary liability? Does this ‘place’ have to be a physical place? Can it
not simply be a platform or an internet server?

Is the ‘awareness’ requirement under this provision to be constructive awareness or actual

awareness?

(b) – other ways in which a person can be liable for copyright infringement even if he hasn’t
made the infringing copy

How do you determine if a copyright has been violated?

1. Is the original work itself copyrightable?

2. Did the alleged infringer have ACCESS to the original work? (this is a necessary
requirement – doctrine of independent creation – if two people come up with the
same work separately, unlike in patent law, both will be entitled to protection – this is
why access becomes relevant) – there’s a case where a court applied ‘subconscious
copying’ – person heard the tune, forgot about it and then used it later himself – still
counts as copying
3. Is the alleged infringement SUBSTANTIALLY SIMILAR to the original? – different
tests applied
4. Was the infringement a FAIR USE – DEFENCES?

How do you determine substantial similarity? (see slides)

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Slight or trivial similarities are not substantial and therefore not infringing

Non literal similarity: Not just as to a particular line or paragraph or other minor segment but
where the fundamental essence or structure of one work is duplicated in another – not to be
limited to the text (at the same time, however, this doesn’t occur when only the abstract idea
has been borrowed)

3 Tests for Substantial Similarity (of decreasing narrowness):

a) Abstraction test – there must be substantial similarity in the expression, not in the
abstract ideas employed - “but there is a point in the series of abstractions where they
are no longer protected since otherwise the playwright could prevent the use of his
ideas to which apart from their expression his property is never extended” [Nichols v.
Universal Pictures Corp] – applied in the RG Anand case on play of provincialism –
what you have to protect is the particular expression of an idea, and as you keep
taking the expression to a more and more abstract form it eventually reaches a point
where you come to the idea itself – and that is not something capable of protection
b) Prof Zechariah Chafee (Pattern test brought in with abstraction test – not an exclusive
test but applied with abstraction test): “No doubt the line does lie somewhere between
the author’s idea and the precise form in which he wrote it down. I like to say that the
protection covers the patterns of the work…the sequence of events and the
development of the interplay of characters as well” + “The operative pattern for
purposes of determining substantial similarity is in some degree abstract but is
nevertheless sufficiently concrete so as to contain an expression of the sequence of
events and the interplay of major characters” [Ex: Romeo and Juliet + West Side
Story – see slides]
c) ‘Total Concept and Feel’ Test – coined in Roth Greeting Cards v. United Card Co and
further developed in Reyher v. Children’s Television Workshop – in addition to the
pattern and sequence of events, you may also consider whether the total concept and
feel of the works in question are similar – this test goes beyond the pattern test – two
elements – Extrinsic test: to determine similarity in general ideas – analytical
dissection and expert testimony are appropriate – Intrinsic test: to compare the
particular expression used – avoids experts and relies on the response of the ordinary
reasonable person

36
 d) Madras HC case (see slides) – ordinary listener test – does an ordinary listener have
an “opinion and gets an unmistakable impression” that there is substantial similarity
between the latter work he heard and the original work

You have to compare the (a) whole work to the whole work; and (b) part of the work to the
whole work

Do the following have copyright protection?

-version recording (covers of a song): will be covered under fair use

-remixing: Yes, if the work is created with permission of prior copyright holder and it is a
new work of a different character

-medley (music comprising of snippets of multiple songs): Yes, if the work is created with
permission of prior copyright holder and it is a new work of a different character

Copyright violations for computer programmes:

-Courts have discarded the look and feel test for these

-Created the AFC test – Abstraction, Filteration and Comparison test – Computer Associates
v. Altai – pg 117 of the reading material

-first, you abstract the expression of the program of its components as far as possible

-second, you filter out stuff that was in the public domain, or that was necessary for
efficiency or functionality

-finally, what you are left with is the ‘golden nugget’ and this is what you compare with each
other to determine substantial similarity

This test is considered very difficult to apply, and you end up protecting a very small portion
of the program – hence criticized in UK and US jurisprudence. There are lots of things which
are an essential part of a program but which aren’t written down expressly in the code, and
hence don’t form a part of the ‘golden nugget’ and don’t get protected.

37
The AFC test has been modified by the US and UK courts. They do apply the abstraction
part, but they also compare the non-literal parts of the program at times, not just the golden
nugget.

s.51(2)

What is secondary liability?

In case of contributory infringement, there must be (i) knowledge of the infringing activity
and (ii) material contribution to the infringing activity

In case of vicarious infringement, a person has (i) the right and ability to prevent the
infringement, which he does not use, and (ii) there is a financial gain he makes from this

Both these forms of infringement are considered ‘secondary liability’

Four factors for determining fair use (inexhaustive) – created in US, applied everywhere:

 Purpose and nature of use: why are you using it? In what manner are you using it?
 Nature of the copyrighted material: Is it highly creative or highly descriptive – the
former is less likely to permit fair use, the latter is more likely
 Amount: How much have you taken?
 Effect of copying on the market of the original work: does it substitute the original
work?

In India, s.50 provides specific instances of fair dealing

Sony Corporation case:

Betamax service (VCRs) created by Sony to allow them to record the programmes being
shown on TV to watch at their own convenience – Sony was sued by Universal Studios
saying that customers were recording their programmes – Sony materially contributed to this
infringement, and that Sony knew that their technology was likely to be used for such
infringement.

38
A substantial number of copyright holders who allow their shows to be aired on TV did
not object to a time-shifting of their shows for the customers. In addition, Universal
Studios failed to show that the harm caused to them was anything more than de minimis
– that is, the harm was minimal and did not cause any economic harm to Universal.
Finally, Betamax was also used for other legitimate, non-infringement purposes as well.
Hence, Sony was not held liable.

The Court also said that you need actual, specific knowledge for infringement, not just
constructive knowledge that someone could use it for infringement.

‘Staple article of commerce test’: there are several products released in the market, which are
capable of being used for good and bad purposes – just because someone made a knife that is
used for killing does not mean a person is abetting the killing by manufacturing the knife and
should not be liable –you have to see if the product has SNIU (substantial non-infringing
uses) – if it does, then no secondary liability.

Court said: first, time shifting is fair use. In any event, even if there is infringement,
there would not be secondary liability if the product is a staple article of commerce, i.e.
it has SNIU (the second is called the ‘Sony doctrine’).

But no one considered whether people could save the tapes of these movies and TV shows,
and store them for latter viewing (this was more than mere time shifting) – could this have an
effect on the market? [However the SNIU principle would still apply even here, so there
would still not be secondary liability]

ANM Records v. Napster:

People could take mp3 files from other users - defendant had a central server which had an
index of other people’s computers and the files they had – basically a searchable list of
music. Regarding fair use: the work was not transformative, it was being used for the same
purpose in the exact same form; there was also an effect on the market, it was jeopardizing
the music industry’s entry into the digital market. Moreover, Napster was substantially
contributing and, because it had the actual list of music on their central server, and had
received complaints specifically about songs, thus they had actual and constructive
knowledge of the infringement because they knew which specific songs were being shared,

39
and they didn’t control it – that is, they didn’t take down the songs from the lists. Hence,
napster was held liable (secondary liability – direct infringement by the users uploading and
downloading the songs).

Grokster case:

Tried to circumvent the napster case decision by removing the central platform with a list, but
through a P2P network, whereby the software was downloaded by users and they directly
interacted with one another. Court said no: what was the object of distributing this software?
To allow users to infringe copyrights by sharing such files. The court created the concept of
liability for ‘material inducement to infringe’ – here, Grokster’s advertisement said: Don’t
worry that you don’t have napster, what you do on napster you can do on Grokster etc. So
clearly their intention was to allow people to illegally share copyrighted material. Hence, held
liable (for secondary liability) for their technology.

Sir: Does the Sony doctrine survive Grokster or not?

26/4/16 – Tuesday

TODAY IS WORLD IP DAY! 

Fair use cases (contd.)

Campbell v. Acuff-Rose Music:

Lyrics were mostly changed, except for the chorus. Melody was identical. It was a parody of
the original song. Pretty woman – Roy Orbison (original); Live Crew (parody) [‘Big Hairy
Woman’, ‘Bald Headed Woman’, ‘Two timing woman’].

Was this fair use? Court applied the four conditions:

 Purpose and nature of use: why are you using it? In what manner are you using it?

40
  Nature of the copyrighted material: Is it highly creative or highly descriptive – the
former is less likely to permit fair use, the latter is more likely
 Amount: How much have you taken?
 Effect of copying on the market of the original work: does it substitute the original
work?

1st question: under the purpose and nature of the use, the Court considered whether the
defendant’s use was transformative – are you adding something new to the work, changing
its character? Court said that the defendant’s use of the work is transformative – they’ve
made substantial changes to the lyrics, their song is a rap song that caters to an entirely
different market than the original song. The Court said that the song was a parody, and it is
impossible to have a parody without some reference to the original work, to draw a link to it
in the public’s mind. But they only used a small amount of original work – the minimum
necessary to draw this link. Further, it catered to a different market.

Court made two observations

- You are not to judge whether the work was in good taste while determining if it was
fair use
- Just because a work is created for commercial benefit does not mean it cannot be fair
use
- All four factors need not weigh in favour of fair use, to permit the work – even if most
of them do, or if the overall impression falls in favour of the respondent, the work will
be permitted. The four factors are not exhaustive, they are merely indicative. Depends
from case to case.

Kelly v. Aribba Soft Corp:

Was use of Kelly’s photos by Aribba’s search engine, as thumbnails, fair use?

Court – use of a thumbnail is transformative, because the purpose is different. It is not to

display photos, but to enable access to the photos. It’s a new way of using the image. Thus,
because the function was different in the use of the photos, the thumbnails were considered
transformative. The thumbnail was functionally transformative. If you take the thumbnail and
blow it up, it would not look like Kelly’s original work, and would thus not affect the market

41
for the original work. The Court said that there was no market for thumbnail images that had
been proven at all.

Perfect10 v. Amazon:

Perfect10 marketed images of nude models. They had a subscription. Some websites would
steal these images, and google would automatically index these images and they would turn
up on google images. So Perfect10 sued google, saying that the search engine was infringing
on their copyright.

Was Google’s use ‘fair use’?

Court: Google’s use of thumbnails was transformative. Moreover, even though Google had a
commercial use, it was using the image for a different purpose, and there was a great public
benefit served because Google was increasing access to images. Perfect 10 had been unable
to show any harm caused to their market in the full-sized images because of the thumbnail.
Hence fair use.

Perfect10 also sued for secondary liability – contributory infringement and vicarious
infringement. But, relying on the Betamax case, for contributory infringement, the Court said
you need actual knowledge – and there was no evidence adduced on this point. Hence, the
Court remanded the Case back to the lower court on this point, to be heard again. For
vicarious liability – Google had no control over the third parties putting up the images, and so
it cannot be vicariously liable.

Sir: Can pop-ups be liable for copyright infringement? U-haul case [USA] said no, because
the user chooses to click on the pop-up. If there is no physical integration between the
original window and the pop-up window, then there would be no copyright infringement.
People could still access the original website if they wanted to. (Also see: netdisaster.com –
no harm caused, hence must be fair use)

s.52, of Indian Copyright Act – fair dealing – ‘Acts not constituting infringement’

42
(see provision)

Right of reproduction of two-dimensional works into three dimension, for functional

purposes in industrial application, is permissible – exception to s.14.

Just because something falls within s.52 does not mean that it will be ‘fair use’ – you still
have to see whether the four conditions have been met because the provision starts with ‘fair
dealing’ under any of these categories. Moreover, because this is an exhaustive list, you have
to show that a particular fair use you claim falls within one of these categories, otherwise you
cannot claim the defence in India.

For peoples with disability – this only applies when the work is not available already (i.e. the
author hasn’t made a braille/audiobook version) and thus the work is being made to increase
availability, is not for profit and does not affect the market of the original work.

43
LAW OF PATENTS

44
Law of Patents (Overview) – see slides

s.6, Statute of Monopolies – historical basis of patent protection – provided inventor with 14
years of exclusive manufacture of his creation

In India, Act of 1856 was the first patent act

Pankha pulling machine – first patent granted in India

1970 Act was passed based on recommendation by J. Rajagopal Aiyangar – he proposed a

patent regime where only process patent would be granted for medicine and pharma – this
was the German patent system – no product patent for pharma – we have done that through
s.5 of the Patent Act – this allowed our generic pharma companies to survive in the market –
they reverse engineered the outcome of other pharma companies, to circumvent their process
patent, in order to produce the same product

1970 Act amended thrice, to make India comply with TRIPS.

1st amendment because WTO’s dispute settlement body instructed India to change its law
asap

Last amendment in 2005 – initially done through an ordinance, and then passed by parliament

What constitutes a patent? What are the criteria for a patent? (see slides)

-must be patentable subject matter (Art.27, TRIPS – any product or process which is new,
capable of industrial application, and having an inventive step is patentable; US – s.101 – any
new process, machine, manufacture or composition of matter is patentable – the problem is
because some countries have elaborately detailed exceptions while other countries have
general exceptions. Ex: US – Abstract ideas, physical phenomena, natural occurrences are not
patentable – general exception – India, on the other hand, has detailed exceptions)

-novelty

-useful/capable of industrial application/utility

-non-obvious and having an inventive step

-the patentable subject matter must be capable of written description in words (you have to
describe your invention in words, and then make a claim based on that written submission, to

45
get a patent. It is this written claim that is compared with other products/processes when a
patent violation is being considered)

There is nothing like an ‘international patent’. A patent has to be registered in each

jurisdiction. No international organization offers you a patent for the entire world. However,
PCT provides for international application of patents – you get 30 months to claim patents in
each jurisdiction across the world

29/4/16 – Patentable Subject Matter

(see slides)

Art.27, TRIPS – says what constitutes patentable subject matter (read). Same definition is
found in the UK, Indian and other nations legislation.

-invention

-product or process

-new

-inventive step (non-obviousness)

-capable of industrial application (utility)

Patents shall be made available without discrimination to the jurisdiction where the invention
is made, or whether the products are made locally or not

Is a compulsory license (i.e. if you do not use your patent, the State will issue a compulsory
license to someone else for the same product/process) compatible with Art.27?

Art.27(2): grounds on which you can exclude patent protection – public, morality,
human/animal/plant life, environment

Art.27(3): members may also exclude from patentability, diagnostic, therapeutic or surgical
methods of treating humans, animals etc. and essentially biological processes of producing
plants (except microorganisms) – read provisions!

46
Indian position on Plant varieties: s.3(j) of Indian Patent Act (excludes plants from patent
protection) + Protection of Plant Varieties and Farmers Rights Act

Indian provides effective sui generis protection for plant varieties, instead of patent protection

UK and European Patent Convention have the same definition on patentable subject matter

US has retained the same definition it had under s.101 of the Act: Any new and useful
product, machine, manufacture or composition of matter shall be patentable

Art.52, European Patent Convention

See slides for “What is excluded” from patentable subject matter in each jurisdiction

US has general exclusions for patentable subject matter: abstact ideas, physical processes,
laws of nature

Other jurisdictions have specific exclusions

There is a difference between an invention and a discovery

(see slides for this)

Definition of Process

A process is a mode of treatment of certain materials to produce a given result it is an act or a

series of acts, performed upon the subject matter to be transformed and reduced to a different
state or thing

Transformation and reduction of an article to a different state or thing is essential to the

patentability of a process

Definition of Machine

Definition of manufacture

Definition of composition of matter (composition of matter is patentable subject matter – but

you have to check if it meets all the other requirements)

Funk Bros. Seed Co. Case v. Kalo Inoculant Co.:

47
Qualities of these bacteria are manifestations of the law of nature, free to all men, and not
reservable by any. He who discovers a law of nature has not right to claim a monopoly over
such a law.

Despite the fact that the patent act uses the word ‘discover’ the patent office distinguishes
between a mere discovery (which is not patentable) and discoveries with invention. The
former, as seen in the case above, are not patentable.

Diamond v. Chakraborty:

Bacterium capable of breaking down crude oil – could be used in oil spills. Patent for method
for producing the bacteria, for applying to it to oil, and for the bacteria itself. The patent
office was fine with granting a patent for the first two. But for the third, they said no – living
organisms are not ‘manufactured’ they are grown, they aren’t ‘compositions of matter’ etc.
So they aren’t covered by s.101. Chakraborty said no, my bacteria are not naturally occurring
– they are created by adding four plasmoids to the bacteria which makes them capable of
performing this function. SC agreed – this was a creation of human ingenuity and was not
naturally occurring – not a product of nature. Hence, it can be patentable.

Question before the SC – does s.101 exclude living matter?

CJ Warren – s.101 has to be read in a broad manner – anything that is not expressly excluded
cannot be read in as excluded – the words ‘manufacture’ and ‘composition of matter’ have
been used to give s.101 a broad scope – there is nothing in the provision that indicates an
intention to exclude living organisms – any manufacture or composition of matter is
patentable subject matter. They said – Congress had expressly excluded certain things like
nature, atomic bombs – BUT they didn’t say the same thing for living organisms and hence
they are not excluded.

Dissenting opinion – in the presence of these two legislations, Congress could not have
intended to give patents to living organisms - it clearly intended that they were not covered
under s.101, otherwise these other legislations would not have been necessary to protect
certain living organisms

After D v. C, there were a series of patent applications for bacteria and organisms –
polyploidy pacific oyster, unique lymphocytes, oncomouse (Harvard mouse), dolly, polly,
transgenic rabbit [used for experiments] – these were all granted patents

48
[see someone else’s notes for second hour]

Diamond v. Dire:

Process patent for curing rubber

Benson case: You cannot grant a patent on a formula alone – it is simply an abstract idea –
something can be patented if it is tied to a particular machine or apparatus, or if it can
transform something [MT Test] – says this is not the exclusive test

Parker v. Flook:

Three step process, one of which included a mathematical formula – only this was the new
step.

Alice v. CLS:

Has been criticized severely, nonetheless, because of it lower courts have been rejecting
patents for computer software, and for business processes

Yahoo Case:

Indian case – says business methods cannot be patented in India, because of s.3(k)

30/4/16 – Saturday – Patentable Subject Matter

Computer related invention, and business method related cases were gone into to determine
when an abstract idea is patentable.

We also looked into the position in US for patent eligibility of living organisms.

Can isolated DNA sequences, parts of cells, lymphocytes, extracts of protein etc be
patentable?

EU Law does not prohibit patenting parts of a DNA Sequence. In 2001, US patent office
came out with ‘Utility Guidelines’ for examining the utility of genetic material for which

49
patent was claimed. They laid down guidelines – a patent application must satisfy the well
established utility test:

a) Whether it is satisfying the substantial utility requirement - can it be put to real

world use?
b) Whether the gene satisfies the specific utility requirement (i.e. the specific purpose
for which it is to be used must be established – it is useful as a market etc.)
c) Credible Utility – the peers acknowledge that that particular use can be done by the
DNA

Myriad Patents Case (pg 142):

Each human gene is encoded as DNA – double helix with cross-bars between the helix which
have neuclotides that contain the necessary information to create amino acids that are
necessary to create proteins. Either you can extract DNA from the cell, or work with the
compressed DNA.

Respondents discovered the precise location and sequence of BRCA1 and BRCA2 genes.
They came to the conclusion that if there is a mutation in these two genes there can be an
enhancement of chances in breast or ovarian cancer. Hence they claimed a patent over these
genes, their location and sequence. Based on these genes, they created medical tests that help
patients discover if they have a higher chance of breast/ovarian cancer due to a mutation in
their BRCA1 and BRCA2 genes.

Petitioner said – you cant give them a patent over an idea – that would block out the entire
realm of knowledge (if ideas were allowed to be patented) – you cant allow them to patent
the location and sequence of the BRCA1 and BRCA2 genes.

cDNA (compressed DNA) – amino acids create proteins by the bifurcation of exons from
endrons – Myriad created cDNA which could also perform this. They also claimed a patent
over this process of splitting exons and endrons through cDNA.

The Court said that you can’t claim a patent over BRCA1 and BRCA2 – this is just a
discovery – there is nothing new, there is no invention by the human mind, there is no
addition – you’ve merely found something that is naturally occurring. No patent over these.
However, cDNA process is an invention, hence you can get a patent over this.

50
Simple difference between an isolate DNA and cDNA – every DNA will have an expressive
part and a non-expressive part – the expressive part is more functional in nature – when
someone creates a complementary DNA (cDNA) there is a new sequence you create which
exons and no endrons – this helps you identify the particular mutations that are going to
happen in the body. In isolated DNA you have both exons and endrons. Hence, isolated DNA
is not patentable, but cDNA is patentable because while the former is a product of nature the
latter is not.

However, the Australian court which also decided an identical case followed different
reasoning. They didn’t follow the product of nature test. They don’t start with a presumption
that products of nature are not patent eligible. They allow everything to be patented. Then
they tested whether an invention constitutes a ‘manner of manufacture’:

-results in an artificial state of affairs (cDNA is artificial whereas isolated sequences are not)

-provides a new and useful effect that is of economic significance

-whether patentability of the invention would be consistent with the purpose of the act

-would allowing patent enhance or detract from the coherence of the law of patents

-does it require law-making that should be done by the legislature

[seems pretty much the same test as the American test. Sir says that it differs because
Australia doesn’t consider products of nature to be automatically ineligible]

You have to first determine patent eligibility, and then determine novelty, inventive step and
utility. But often, courts have confused these steps and brought in the second and third steps
of the test into the first one.

Indian position:

s.3 has a long list of items that are not patentable:

-inventions that are frivolous or which claims anything obviously contrary to well established
natural laws

51
-an invention that is contrary to public order, morality, environment, public health, animal or
plant health

No cases on this provision in India. BUT the EPO Guidelines have interpreted what these
words mean. (see colourful slides)

Public order includes refusing inventions for security reasons, because it leads to criminal or
offensive conduct, protection of environment, riot or disorder

Morality depends on the particular culture of a country/region – to establish that the invention
is so abhorrent for the public that its patenting would be inconceivable

Oncomouse case:

Whether the patent is hit by these exclusions: Court – you have to balance the suffering to
animals and threat to environment on the one hand, and the usefulness to mankind on the
other hand and determine which weighs more, in order to decide whether or not the patent is
to be granted. The medical benefits outweighed the suffering of the animals, hence patent
allowed. Here used for cure of breast cancer.

Upjohn case (1992):

Mouse with a gene to cure hair loss (note the difference in use from Oncomouse) – same
balancing test applied – held to not be patentable because the benefit to mankind did not
outweigh the harm caused to animals

Plant Genetic Systems case (1993):

Genetically engineered plants that makes them resistant to herbicide – Greenpeace objected,
it is inherently immoral and threat to mankind – cost benefits test has to be applied – Court:
no, you have to look at whether the invention is obviously or manifestly abhorrent – you cant
subject it to each individual’s morality, but have to see if it is a grossly incorrect outcome –
hence, patent allowed.

-(continuing excluded subject matter) the mere discovery of a scientific principle of the
formulation of an abstract theory, or discovery of any living thing or non-living substance
occurring in nature

52
-most important – 3(d) – the mere discovery of a new form of a known substance which does
not result in the enhancement of of the known efficacy of that substance or the mere
discovery of any new property or new use for a known substance or of the mere use of a
known process, machine or apparatus unless such known process results in a new product or
employs at least one new reactant

Explanation – for the purpose of this clause, salts, esters, ethers, polymorphs, metabolites etc
shall be considered to be the same substance unless they differ significantly in properties
with regard to efficacy

Novartis case (pg 181 of RM):

In 1997, Novartis, a Swiss company, filed a patent for a beta-crystalline methylate in Chennai
– because it had anti-tumor properties. In 2005, when the law was amended to comply with
TRIPS, Novartis had obtained exclusive marketing rights for the drug – Gleevec. This
prevented generic manufacturers from selling the same drug at a lower price in India. From
2005, there was opposition to Novartis’ application for the drug, because the invention lacked
novelty and was obvious to anyone skilled in the field, and that it was merely a new form of a
known substance and did not enhance the substance’s efficacy. The present application only
concerned a crystalline/salt form of a substance that had already been patented.

Was this an invention under s.2(1)(j)?

Was the invention hit by s.3(d)?

The Madras patent office refused to grant a patent – upheld by Madras HC – then IPAB held
that it satisfied the test of novelty and non-obviousness but still his by s.3(d) – then went up
to the SC: see reading material for reasoning – said it was not a new product hence no patent
– further, it was also hit by s.3 – efficacy means therapeutic efficacy for a pharmaceutical
product in s.3(d) – there were no enhancements in therapeutic efficacy therefore also hit by
s.3. The court distinguished between clinical efficacy and therapeutic efficacy, and said that
the efficacy in s.3 only means the latter.

The purpose of s.3, and the reason why the Court decided in this manner, was to avoid the
threat of ‘evergreening’.

Evergreening refers to a variety of legal, business and technological strategies by which

producers extend their patents over products that are about to expire, in order to retain

53
royalties from them, by either taking out new patents (for example over associated delivery
systems, or new pharmaceutical mixtures), or by buying out or frustrating competitors, for
longer periods of time than would normally be permissible under the law

-read s.3(e), (f)

Ex: shoes with lights that switch on when each step is taken – not hit by 3(f) because the
devices did not function independently, when you took a step with the left shoe, the right
shoe’s torch came on until the left shoe landed on the ground, and then the left light would
switch on when the right show was lifted etc.

- read s.3(h), (i)

Why do you differentiate between medical products and medical processes?

Because processes are not capable of industrial application, and that’s the main difference
why they aren’t patented – you cannot manufacture other doctors to use the process

-read s.3(j)

“essentially biological processes”

-read s.3(k), (l), (m), (n), (o), (p)

www.TKDL.res.in (go to website)

3/5/2016 – Tuesday

s.4 – Inventions relating to atomic energy not patentable

Chennai HC Case – application was filed and a claim was made [1608/CHENP/2008] – a
method of treating leukemia by administrating to a human about 90 mg of a chemical
compound – the drug is well known – they are claiming a patent for the method of
administering the drug (not the drug itself) – however this is a process of medical treatment,
so it cannot get patent protection as per s.3 – then they amend the claim – say that the patent
is being claimed for a ‘composition of treating leukemia, consisting of x, y, z (the medicine)
and a pharmaceutically acceptable carrier’ – patent still rejected – though it is worded as a

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‘composition’, it actually relates to a method of treating leukemia only, hence cannot be
granted patent protection

US Decisions on Abstract Ideas

-A system and method involving computerized training and planning of diet behavior
(remember, that which is done as a mental process cannot gain patent protection simply
because it is converted into a computer programme) – the abstract idea was that of meal
planning which can be performed by human thought alone – hence the patent invalidated

-method of notification and response to a personal communication device – asking someone

whether they want to perform a task, waiting for them to complete it or asking someone else
to do it, using generalized software components – invalidated, because this is an abstract idea
(Alice test – same as above reasons)

- method of determining possible physical, medical or emotional impairment of an equipment

operator – idea that can be carried out by doctors, police officers and others which does not
use any new or improved computer technology – invalidated – abstract idea

-method of interfacing an object oriented software application to access data stored in a

relational database – patent is directed at solving a problem that specifically arises in the
realm of computing. Indeed, OOP exist only in the realm of computers and relational
databases are utilized primarily, if not exclusively, on computers. Hence, patent held valid.

- in AT&T case, where one type of date was being converted into another – you can have
protection for an abstract idea without physicality – so would AI get patent protection? No,
by the Godsa (?) case test, because you aren’t transforming the mental process but simply
reducing it to code – that case where there were certain problems in the waveform, so the
inventor came up with a program that measured the pixel density and fixed the alliancing
problem so that you get a smooth waveform on the screen – because of this transformation,
this useful, concrete and tangible result the program was capable of patent protection –
simply reducing human intelligence to a program does not count as a similar ‘transformation’
hence no patent protection for AI

-method of determining a nucleotide sequence of BRCA1 gene – idea of comparing BRCA

sequence and determining the sequence of alterations is found in nature. Where primers

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utilize the innate ability of DNA to bind to itself – patent invalidated – abstract idea – law of
nature

-a device profile describing color and spatial information of digital image processing – idea
of mathematical correlations, which do not require a specific structure or machine –
invalidated because it is just an abstract idea

After Alice, majority of cases involving computer programs had patents invalidated.

Industrial Applicability

Capable of being used in an industry

Its use must not be vague and speculative – Ex: useful while navigating in a galazy

“not useful meaning that the invenition will not work, either in the sense that it will not
operate at all or more broadly that it will not do what the specification promises that it will do
if the invention will give the result promised at all, the objection on the ground of want of
utility must fail” [Bombay HC]

USA – “A patent is not a hunting license, it is not a reward for the search, but compensation
for its successful completion” – Brenner v. Menson case

Brenner v. Menson (pg 148 of RM):

Menson’s claim was that he invented a steroid that was a ‘homologue’ (almost similar
chemical structure, but they have different properties and they perform different functions –
Ex: Alkanes, Alkenes, Alkines) to the already known steroid used for cancer treatment –
patent office denied the application, saying he could not prove the utility aspect – Journal
article said that the steroid Menson was claiming a patent on was currently undergoing a
screening process (i.e. regarding its utility) – however Menson claimed that it had already
been successful in treating tumors in the market – Court of Appeals said you don’t have to
prove specific utility, just that it doesn’t do any harm – US Supreme Court reversed this
decision – you cant get a patent simply because you’ve worked on a chemical for a while –
you have to undergo the process of testing to prove the utility of the steroid before you can
claim a patent – Menson did not prove that his steroid could be put to a particular use.

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US Patent office insists on current utility – can this invention be used at present? Only for
biotechnological inventions do they allow future utility to be considered and relax the
requirement of current utility

This is the US position – the test of utility or usefulness. In India and UK, instead, the test of
‘capable of industrial application’ is applied.

Eli Lilly case (pg 148 of RM – THIS IS THE HC OPINION, WE ARE DISCUSSING
THE SC OPINION):

Art.52(1) - Invention must be ‘susceptible to industrial application’

Art.57 – Means that it must be capable of being produced in an industry

Human Genome Sciences owned a European patent for describing the amino-acid sequence
of a protein called neutroprime alpha, along with the nucleotide sequence and some anti-
bodies. In this case, it belonged to a TNF Family, and there was one area in which all TNF
members had a 100% use – in the immune system process. They also had specific benefits,
but for neutroprime alpha it was only potentially useful for several specific diseases. Question
was, does this satisfy the requirement of industrial application?

HC said that the specification coming from the organization is very general and broad in
nature – there is no immediate, concrete use – to claim patent protection, the substance must
be capable of current beneficial use

UK SC – there are two approaches – the wet lab approach (older approach) – if a Co. wants
to create a protein, it selects it and identifies its amino acid sequence and once this is done
there is also a template for a neuclotide sequence as well – but HGS did not do that here, they
used the bioinformatics approach – it was new – further HGS had created a protein that
belonged to the TNF Family which definitely has use in the immune system – hence we can
presume that it has utility

J. Walker talked about the chilling effect – he said that there should be clarity in this area for
the biotech companies, so that they know the exact time to file the patent – if you go early,
you warn your competitors, but if you delay you may never get the patent at all because
someone could beat you to it. Hence, we should not focus on the immediacy of the use, but
merely the concreteness of the utility.

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This case said that if an invention is a ‘potential research tool’ it can still be entitled to patent
protection.

The difference between the UK and the US test is that the UK test does not have an
immediacy requirement because it says ‘susceptible’ to industrial application –
implying future utility would also be sufficient. India, the position on this is not clear, but
the Indian patent office has not insisted on an immediacy requirement so far.

Novelty/Non-Obviousness

You have to look at ‘prior art’. What is ‘prior art’? You have filed an application today. The
state of the technology as of that date (the date of priority) is called the ‘state of the art’ and
the state of technology prior to that date is called ‘prior art’. You can find out what prior art is
from the patents that have already been granted, from industrial practice, from scientific
journals, from other prior publications in that field (theses, research statements, books etc.).
You also have to look at whether the product/process is being used by someone else already,
even though it hasn’t been patented/published/used in industrial application.

When something fails the test of novelty: All elements must have been disclosed either
expressly or under principle of inherency, in a single prior art reference or a single prior art
device.

Document 1 discloses A, B, C elements

Document 2 discloses F, G, H elements

Document 3 discloses X, Y, Z elements

The invention claims A, B, C, G, Y, H elements. The invention is novel – because all

elements have not been disclosed in a single prior art reference. A, B, C, G, Y and H are not
all found in a single prior document. Only parts of it are found in prior references.

‘Principle of inherency’ – leads to complications

‘New invention’ (Definition under the Indian Patent Act) – any invention or technology
which has not been anticipated by publication in any document or used in the country or
elsewhere in the world before the date of filing of patent application.

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NOTE: It doesn’t matter if you, yourself, were the author of the prior publication. The
fact that the information is in the public domain already means that it is a part of prior
art, and hence you cannot claim a patent because of lack of novelty. However, if
someone publishes your work without permission – then the patent act gives you a
reasonable period to still claim the patent, where it will not be denied for novelty.
Further, if your invention has been displayed in an exhibition, you are given 12 months
to claim a patent. If you are expected to conduct a trial of the invention in the public
before claiming patent protection, from the date of testing you have 12 months to file
the application during which the prior testing will not prevent you from gaining patent
protection.

1st test: Novelty is determined when the elements are not part of the prior art

Prior art should have been made available to the public. How is something made available to
the public? Where is it made available? What is the extent of dissemination? Is there
sufficiency of documents? What is the nature of publication? Has prior art been made
available to the public by use? What are the statutory exceptions to prior art?

There are some jurisdictions that apply absolute novelty – if the publication is made
anywhere in the world, or the use is there in any part of the world, that destroys novelty.

Others apply territorial novelty (at present, no country follows this to the full extent) - if the
publication is made within your jurisdiction, or the use is there within your jurisdiction, that
destroys novelty

Others apply mixed novelty (followed by USA till recently, which created lots of problems
for India for turmeric) - if the publication is made anywhere in the world, or the use is there
within your jurisdiction, that destroys novelty

What is the extent of dissemination required? How many persons should be informed? To
how many should the prior art have been communicated?

Placing the document in a single hand without any confidentiality agreement is sufficient to
amount to dissemination. In a case, only two scientists were informed of the invention, and
that was considered enough.

Sufficiency of the documents: the information in the prior documents must be enough to lead
you to the invention, i.e. there must be identity of the invention (see the example of Doc 1,2,3

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and Invention above – there was no identity there, but if it had had A, B, C elements there
would have been identity)

General Tire and Rubber Co. v. Firestone:

Process of mixing synthetic rubber with oil (a compound) was patented – this oil extended
rubber was used for making tires – the prior art was synthetic rubber – was ‘oil-extended
synthetic rubber’ novel? Has this claim been anticipated by the prior art? You have to look at
the date, the relevant circumstances, the opinion that a fully informed reader skilled in the art
would have had on reading the prior publication. To anticipate the patentee’s claim, the prior
publication must contain clear and unmistakable instructions to do what the patentee has
invented. A mere signpost on the road to the patentee’s invention is not enough – he must
have planted a flag on the destination reached by the patentee.

5/5//16 – Thursday

In the US, in In Re Hall case, the patent claim was disclosed in a PhD thesis submitted to the
University of Freigburg, which was then placed in their library where it was indexed,
catalogued and shelved. The librarian testified to this effect. Is this disclosure of the
invention? Court says that it has been made available to people skilled in the art, hence it
counts as prior art.

The work must be indexed in a meaningful way for it to be considered prior art – Re
Crannyon

Disclosure to the PhD examiners does not count as prior art

If the work is present in a dedicated library (i.e., library dedicated to that subject) and the
work can be found with reasonable diligence (even if not properly indexed or catalogued),
even then it counts as prior art.

Prior art through use:-

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Bristol Myers case: Ampicillin was claimed for patent protection. Beechum company
opposes the application, saying that while we were manufacturing penicillin, we had
mistakenly manufactured ampicillin, but we had not disclosed this to the public. Would this
accidental manufacture of ampicillint by Beechum count as ‘prior art’, and destroy the
novelty of Bristol Myers case. The Court says that their patent is anticipated by
uninformative use – though there is no communication, though it is a secret use, it is still
prior art and anticipated BM’s application.

Two tests – right to use test – ‘if we were using ampicillin before, we should have a right to
continue to use ampicillin, and you cannot grant a patent or monopoly over this’ and reverse
infringement test – you assume that the patent has been granted in the application, and
examine whether the prior user’s use would count as an infringement of the patent if done
subsequent to the granting of such patent – if it would count as an infringement, then the prior
work must be considered as prior art, as it anticipates the latter work. What is infringement if
done subsequently will be counted as anticipation if done prior. The court applied both these
tests.

Merrel Dow Pharma v. Norton: Patent was obtained over terfanadine, and in the
application they explained how it works in the human body, how it would interact with an
acid metabolite produced in the liver etc. But they didn’t know which acid metabolite – they
just knew it was produced with terfanadine. They claimed a patent over the acid metabolite
also, and it was granted to them. The terfanadine patent expires. The respondent uses
terfanadine, and incidentally end up producing and using the same acid metabolite. Would
this be considered infringement?

Would the patent granted to MD be invalid because the acid metabolite was already in use by
individuals who had it in their liver on using terganadine. If you go by the Bristol Myers test,
this would count as prior art because it is secret use. However, the relevant Statute says that
the use must be communicated to the public – so wouldn’t it implicitly exclude secret use,
because the public would not be informed of this. The patients were not informed about the
acid metabolite – all they knew was that terfanadine would treat them.

Hence, the Court finds that it was not anticipated by prior use – they reject the reverse
infringement test.

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However, they say that the patent application for the acid metabolite was anticipated by the
patent application of MD for terfanadine – thus there was anticipate by disclosure and not by
use – it was prior art, hence Norton’s use was not an infringement.

In India, s.25(5) of the Patent Act says that secret use and secret trials are not to be
considered as prior art.

Examples:

-Patent claimed relates to a composition for enhancing corneal healing comprising vitamin A
and a sterile buffer. Prior art had vitamin A, sterile buffer and other elements used for eye-
drops to renew contact lenses. The claim lacks novelty, because prior art contains all
elements of the claimed invention, and others.

-claim relate to an extract of Withania plant comprising of Withania alkaloids such as

Withania glycosites etc for the management of stress. The prior art discloses use of W roots
and not W plant extracts for the treatment of stress related disorders in Ayurveda and Unani.
The prior art had already disclosed that the plant, and by inference its extracts, would be
beneficial in treatment of stress. Hence the claim lacks novelty.

-process of manufacture of an ancient and well known medical commodity ‘banslochan’ –

powder manufacture by a calcining process from the interior of a bamboo – baking or
calcining by heating, and then its use in combination with earthenware vessel. It had
invigorating and rejuvenating qualities. Prior art – process carried out in iron pot, which
produced rapid and intense heat and fumes of acid used to be carried away through the
chimney, the material was of brownish state and contained iron matter (the applicant’s
process overcame all these disadvantages by replacing iron with earthen ware) – Court said
that the process is novel, as it is different from the prior use

-claim was for a process for making printed picture films to be used in a film strip viewer –
medially cut strips of 35mm films – plurality of pictures for use in the viewers – pictures
specially designed for half-strips to give a virtual image of the full one-frame. Prior art –
medical photographers were already doing this – they used a small frame off 24mmx35mm,
put them in an enlarger and take pictures of 1cm x 1cm, thereby preparing slides from the
film strips which were projected as a bigger picture. Court said, the process is novel – you are

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cutting the negatives into strips, using their halves etc. This is different from the prior art
claimed. Pieces of prior publications cannot be combined to prove anticipation of the
invention. Mosaicing of prior art cannot be used to determine novelty.

-Apparatus for producing a laminate by the wet process – prior art: sophisticated machine for
producing the same laminate – held, no novelty

-pouch for storage and dispensing of a liquid – such pouches were known and already in use
by the Indian Oil Corporation – already in use therefore no novelty.

s.102, America Invents Act:

for a long time, America followed the ‘first to invent’ test, whereas the rest of the world
followed ‘first to file’ test. How did USA decide who was the first to invent? By checking for
‘conception and reduction to practice’ – if an inventor came out with a definite idea of a
product or process (i.e. he knows that if he does steps 1 to 10 he can create the product) – he
puts this idea into writing and then begins to put the idea into practice, even though this may
take a long time – this would make him the first inventor, even if someone else makes the
product before him.

In this context, what would count as prior art? s.102 – prior art – (1) if the claimed invention
was already patented, described in a printed publication, or in public use, on sale, or
otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an
application for patent published or deemed published under s.122(b) in which the patent or
application names another inventor and was effectively filed before the effective filing date
of the claimed invention

(b) Exceptions – (1) Disclosures made 1 year or less before the effective filing date of the
claimed invention – A disclosure made 1 year or less before the effective filing date shall not
be the prior art to the claimed invention if the disclosure was made by the inventor, joint
inventor, or by another who obtained the subject matter disclosed directly or indirectly from
the inventor/joint inventor; or the subject matter disclosed had, before such disclosure, been
publicly disclosed by the inventor or a join inventor or another who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint inventor

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What happens if the author publishes it within 12 months prior to his filing, and then
someone else publishes it within this period as well – would this not circumvent the
exception, which only provides for publication by the inventor, and hence be considered prior
art? No. The second half of the exception covers this, because the prior disclosure by the
inventor would prevent the subsequent publication by another from becoming prior art for the
patentee.

(C) Exception (for prior art) – the subject matter disclosed and the claimed invention, not
later than the effective filing date of the claimed invention, were owned by the same person
or subject to an obligation of assignment to the same person. [Read the section]

Inventive Step/Non-obviousness

An issue that arises is whether the norms we have for this requirement can be considered, or
if they suffer from hindsight bias.

India: Technical advance or economic significance and not obvious to a person skilled in the
art in the light of prior art [requirement for inventive step]

-Haberman case: milk bottle for baby with two chambers to prevent spillage by a mother –
issue: was a change this simple be sufficient to be considered an inventive step? – Court: the
simplicity of the change does not mean it is obvious – all other manufacturers were aware of
this problem of spillage, but they didn’t create a bottle with two chambers to solve it – this
means that the change made by the mother was non-obvious – hence her patent was valid –
merely because a step is simple does not mean it is not inventive

Factors to determine inventive step: distance between the prior art and your claimed
invention (i.e. how big a step has your product taken in terms of innovation), surprising
effect, long felt need, failure by others to find the same solution, cheaper and more
economical, how far was the invention motivated by prior art

Who is a ‘skilled person’? (also called POSITAR – Person having ordinary skill in the Art)

this hypothetical person is presumed to know all the prior arts as on that date, even non-
patent prior art in theory available to public; he has knowledge of the technical advancement

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as on that date, and the skill to perform experiments with the knowledge of state of the art; he
is not a dullard and had certain modicum of creativity

Viewed without any knowledge of the alleged invention as claimed, do those differences
(between prior art and the invention) constitute steps which would have been obvious to the
person skilled in the art or do they require any degree of inventive ingenuity?

Graham v. John Deer (IMP case):

Patent for a plough-share – problem faced by the industry: whenever the chisel hit a hard
object there was a shock, which was absorbed by the shank, but it had an impact on the
hinge-plate causing it to break frequently – the same company came out with an improve
version of the plough-share – the shank’s position and the hinge-plate’s position is changed –
shank goes below the hinge plate now, and a stirrup (a spring plank) is given so that there is
space for the shank to be flexible and bend, they also bolted the hinge-plate instead of
riveting it

1st question: Is this patentable subject matter? Yes, not excluded under any exception

2nd question: Is it useful? Yes

3rd question: Is this novel? Yes – all the elements contained in the invention were not present
in the prior art

4th question: Is it obvious or non-obvious? The only novel thing was that the location of the
hinge-plate and the shank were reversed from a prior patent (Glancore patent), even though
they produced the exact same effect. It was very obvious.

Graham Test (to be applied before you apply s.103):

-determining the scope and content of the prior art, giving the broadest interpretation to the
claim possible

-ascertaining the differences between the claimed invention and the prior art

-resolving the level of skill in making this change, using the POSITAR test

-secondary considerations to determine inventive step: commercial success (only if this was
not because of an effective market strategy or better distribution channels), long felt but
unresolved need, failure of others etc.

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s.103, US Act – non-obviousness in American law – READ

Post-it notes: was it patented? Yes. Sheet of paper + Glue – each of these elements exist
beforehand – what is not known is their combination – and the subject matter as a whole (and
not its individual elements) was not obvious to a POSITAR – hence it is novel and non-
obvious

7/9/16 - Saturday

KSR v. Teleflex (V.IMP case):

KSR and Teleflex were competitors in design of acceleration pedals for motor vehicles
(remember video)

Teleflex had an exclusive patent – the Engelgu Patent – for combining an electronic sensor
with an adjustable automobile pedal, so that the pedal’s position can be transmitted to a
computer that controlled the vehicle’s engine. Claim 4 of the patent required that the sensor
be placed in a fixed position. The patent had been filed in 1999, and Teleflex had been using
it since 1970. In 1970 there was an Asano patent, which also had a fixed pivot system.
Regarding the electronic sensor at the pivot point, there was another patent filed in 1991.

Teleflex filed a suit against KSR for infringing its patent, particularly claim 4. KSR used this
for Ford’s cars. The district court applies the ‘TSM’ model – the teaching, suggestion and
motivation model – you look at the prior art, and see what led to the teaching, suggestion or
motivation to design the alleged invention to determine whether the creation has an inventive
step.

Supreme Court applies the Graham test – instead of applying a rigid TSM approach, you
should apply a flexible approach and look at other factors – the scope and content of the prior
art; the level of ordinary skill in the art; the difference between the prior art and the claimed
invention; the extent of any objective inditia of non-obviousness. The Court also looked at
other factors – the market demand, the predictability, the technique required to create the new
technology. It thus expanded the meaning of ‘obvious’.

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Sir – After Graham, Courts started applying the TSM test – whether the prior art were
proving teaching, suggestion or motivation to the inventor – if any of these circumstances
was met, then considered obvious. They started applying TSM very rigidly. SC said Courts
are not only supposed to look at the problem that the patentee was trying to solve. Any need
or problem known in the field and addressed by the patent can provide a reason for
combining the elements in the manner claimed. Lower court erred in assuming that a
POSITAR attempting to solve will be led only to those prior art elements designed already to
solve the problem – “Familiar items may have obvious uses beyond their primary purposes
and POSITAR will be able to fit the teachings of multiple patents together like pieces of
puzzle”. Cannot be proved obvious merely by showing that the combination of elements was
obvious to try – “If there was design need and market pressure, if finite predictable solutions
are available, altenatives will be tried by POSITAR – leads to obviousness”.

SC says – proper question to ask: Whether a pedal designer of ordinary skill in the art, facing
the wide range of needs created by developments in the field would have seen an obvious
benefit to upgrading with a sensor?

Prior art references -

Asano Patent – support structure housing pedal – pedal’s pivot points fixed – force used to
push pedal is same

936 Patent – taught that it is preferable to detect pedal’s position in pedal assembly and not
engine – disclosed pedal + electronic sensor should be at pivot point

Smith patent – sensor should be put at a fixed point, not a movable one such as the pedal
footpad

Rixon patent – discloses using an adjustable patent assembly with electronic sensor – sensor
in pedal footpad – wire chafing problems and teaching that pedal assemblies must not
precipitate any motion in the connecting wires

Court: Teleflex failed to show anything in the prior art that taught away from Asano, nor any
secondary factors to dislodge the determination that claim 4 is obvious. Hence, teleflex’s
patent was obvious.

KSR case rejected the rigid application of the TSM test. Said that TSM is merely one useful
tool in determining non-obviousness, but not a rigid rule for the same. It is the graham test

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factors that are to be applied for determining non-obviousness. You look at the collection of
prior art references, look at the difference, and determine the extent of innovation required to
make that difference.

KSR was criticized because it added so many factors – such as market forces – that it made it
difficult to satisfy the non-obviousness.

Position in UK and India:-

Windsurfing and Pozzoli case

Windsurfing International v. Tabur Marine:

Plaintiff held patent for a windsurfer – claimed combination of following features:

-an unstayed spar i.e. a mast without lines to hold it in position seated in a universal joint
(allowing it to move in all directions above the board)

-a Bermuda rig (i.e. triangular sail) hand taut between a pair of accurate booms, themselves
mounted on the spar, so as to be able to move laterally around it and fixed together at the
other end

Prior art: Dee - an article on sailboarding where they used a square rig instead of a Bermuda
rig; also a sailboat built by a 12 year old boy which he used on vacation and visible to anyone
– its booms were straight but apart from that it was exactly the same as the patent

Court talked about hindsight bias - you have to look at whether this patent would have been
obvious before the application, not now that you have seen the patent already.

Windsurfing factors (test laid down by the Court):

-first identify the inventive concept in the patent

-impute to the normally skilled but unimaginative person the common general knowledge
of the art at the priority date – he is also assumed to have access to all knowledge about the
prior art

-see the difference between the patent in question and prior art

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-see whether these differences would be obvious to the positar

Court also talks about prior use – as long as it was exposed to public view and technically
accessible, it would be considered prior use, even if not used for commercial purposes (12
year old boy’s boat)

Hence, patent here was obvious.

Pozzoli case:

Earlier forms of packaging were not CD’s overlapping, but on top of each other – so the
height would be great of the stack – this was a problem. Pozzoli created a way of packaging
them while overlapping, reducing this stack’s height.

Important factor – here, there was technical prejudice against the invention – the industry
thought it was not possible to do this without damaging the CD’s. The patentee said this
should be considered to make their invention non-obvious. Court also agreed (in principle) –
if industry thinks something is a lion in their path, and patentee shows that it is merely a
paper tiger then this will indicate the non-obviousness of his invention. However, on facts, it
later found that there was no such prejudice.

Pozzoli said that you don’t apply the windsurfing test in the order specified in that case.
First you identify the person skilled in the art. Then, from this person’s perspective, you
determine what the inventive concept is. After this, you compare it to the prior art and
determine the extent of innovation, to determine if its obvious.

Court said the idea of overlapping CD’s was already existing and obvious to a skilled person
– all you had to figure out a way of physically separating the CD’s which was very obvious.
Moreover, there was no prejudice in the industry against your idea – there was simply no
demand in the market for the idea. Thus, overcoming this cannot make your invention non-
obvious.

J. Mitra v. Kesar Medicaments:

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Patent for device that detects antibodies to hepatitis C virus (HCV). Defendant came up with
the same device. Plaintiff said this was a violation of their patent. Plaintiff also said their
device was a fourth generation device, which had an improvement over prior devices – which
allowed it to produce a result in 10-15 days – much faster than other devices. Plaintiff had
also got a patent in other States. Defendant said their product was based on a device already
in the market – something called Aqueducts USA – which was already in the public domain,
and that we had got a license to use this in 1997, whereas the plaintiff only started
manufacturing the device afterwards. The Defendant also argued that plaintiff’s patent was
invalid because all its components already existed in the prior art references – it did not have
any inventive step. It was obvious to anyone skilled in the area.

The prior art in the USA, however, had not specified the ratio in which the components had
to be combined. This was only determined by the plaintiff in their fourth generation device,
which made it much faster. Thus there was a clear improvement in performance in plaintiff’s
product over the prior art.

Court said that patent’s device was thus non-obvious, and hence defendant was violating the
plaintiff’s patent.

Rights conferred on the patentee and Infringement

What is the date of patent?

Is it from the date of grant or the date of application? s.45 – the date on which the application
was filed. From this date, you have 20 years time.

Can you sue someone for violating your patent before you were granted the patent (i.e. when
your patent was pending, after application, but before its grant)?

s.45(3) – no, you cannot have a suit for an infringement committed before the date of
publication of the application.

s.48 - rights granted to patentee. READ.

Tests for infringement:

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-Pith and marrow test (no longer applied) – you look at the patent claim and distinguish
between what is an essential ingredient and was is not an essential ingredient for the patent
application (ex: the components may not be essential, but their combination in a particular
manner may be essential). Then look at whether the allegedly infringing creation has copied
the essential ingredients of the invention – if that is copied then it is an infringement.

-Purposive construction test

-Literal infringement: If your product has A, B, C elements and all three elements are found
in anothers patent, then it is an infringement. Very narrow test. Even if you have more than
these three elements, it is still an infringement. (NOTE: My patent has A, B and C.
Another person has A, B, C, D, E and F. Does that person’s invention infringe my
patent? YES. We aren’t looking at novelty/non-obviousness here. The fact that he has
all the elements that I’m using in my patent makes it an infringement – even though it
may satisfy the tests of novelty/non-obviousness.)

I have A, B, C, D in my patented device. Respondent uses A, B, C, and adds a new element

E. This is not a literal infringement. But then you have to look at whether D and E are
equivalent by applying the triple identity test:

-substantially the same function

-in substantially the same way

-giving the same result

Established based on expert testimony. If this is established, then there is infringement of my

patent by equivalence (and not a literal infringement).

What happens if, after my patent application is rejected, I narrow down my claim – I drop A
and B, leaving only C, D and E. Can I, then, later claim doctrine of equivalence against
someone else who I think infringes my patent because he also uses A and B (along with C, D
and E). Courts say no – principle of estoppel – s.115 of Indian Evidence Act. Those elements
that you gave up during the narrowing of your patent application cannot be re-claimed by you
under doctrine of equivalence. Hence this will not be infringement.

Van Der Lely v. Bamforts:

UK case applied the pith and marrow test.

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Patent was for a device that was used for raking crops, called the hair-raking machine. The
device had the feature of allowing hind wheels to be dismounted and be used in another
direction, and to bring them to the foremost position. Respondent made a device that did the
exact reverse – it dismounted the front wheels instead of the hind wheels. Court said: you
have to look at whether the essential integers of the device have been copied to determine
infringement. Court said here that the hind wheels are not the same as front wheels. The
essential integer of the patent holder’s claim was for hind wheels, hence respondent’s device
was not an infringement.

Catnic Components v. Hill and Smith (pg 157 of RM):

Case about lintel, for providing support over a doot or window opening. Original patent
provided for support that “extends vertically” (in opposition to the upper and lower members
of the device where he used the words “substantially horizontal”). Respondent made the
support inclined at 6 degrees specifically to avoid the patent. Whether this would be an
infringement?

HOL said this inclination at 6 degrees made minimal difference in terms of the performance
of the device. L. Diplock said that while you should use the pith and marrow test, that should
not be the sole test. You should apply a purposive interpretation (apply it like a flow chart):

-first you look at whether the variation has a material effect on how the device works – if yes
– no infringement. If no – go to next level

-even if no variation in effect, would the variant have been obvious to a POSITAR – if no –
no infringement. If yes – go to next level

-would a reader skilled in the art have understood from the language of the claim that the
patetee intended strict compliance with such words (i.e. vertical meant only vertical and not
at the slightest degree left or right)

Court said, for the present case: 1st level – answer no. 2nd level – answer yes. 3rd level – no,
patentee did not intend strict compliance. Hence there was an infringement here.

This is the purposive construction test.

L. Diplock’s purposive construction test was perfected by Hoffman J. subsequently-

Markman v. Westview Instruments:

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Applied literal infringement

Invention was a method to prevent clothing loss at the cleaners. Computerized inventory
system, where a barcode was attached to each piece of clothing, and a system to track each
garment. Westview came up with another invention that assigned each batch of clothing an
invoice number, and it was this batch which was tracked, but not each individual piece. Court
applied literal infringement and said there was no infringement – because the latter tracks a
batch and the former invention tracks individual pieces.

To determine what claim language is, you look at:

-the claim

-the specifications

-the prosecution history of the claim

-the prior art

-extrinsic evidence (expert testimony)

You have to always apply the literal infringement test first, in a case for infringement. For the
literal infringement test, you look at all the above factors to interpret the claim language.

10/5/16 – Tuesday

One of the limitations on doctrine of equivalence – prosecution history estoppel

Exceptions to right of patent holder:

1. Experimental use
2. Use by Government
3. Use for Regulatory Approval (Use to get the patent approval)
4. Compulsory Licensing
5. Parallel Imports (Import of patented product without patentee’s approval)

Graver Tank & Mfg. v. Linda Air Products Co.:

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Patent for a flux – an electric weaving machine used to fuse two metals – made of
magnesium and calcium fluoride - Defendant made a flux of manganese and not magnesium
– was it an infringement? Court applied doctrine of equivalence: when the product performs
substantially the same function, in substantially the same way, to achieve the same result,
then there will be an infringement by the doctrine of equivalence. Here, the change was
minor - experts testified that Mg and Mn were interchangeable in the welding arts – you
apply POSITAR test to determine if there is known interchangeability - hence infringement
by doctrine of equivalence.

This extension of literal infringement is necessary, otherwise you would defeat the purpose of
the patent by allowing insignificant changes to qualify a device as non-infringing. The public
notice doctrine of a patent (i.e. by patenting a device ‘x’, you have notified the public that
you have a monopoly over x and only x) is not inconsistent with the doctrine of equivalence,
because the monopoly is over x and also devices identical to x with only insignificant
changes. If it was anything else, patent protection would be meaningless.

Warner Jenkins Case (in RM):

-patent covered a process for removing impurities from dyes – the dye is filtered through a
porous membrane at certain pressures and ph levels – the claim at issue stated that it purified
dye by a) subjecting an aqueous solution to ultrafiltration; b) through a membrane having a
porous diameter of 5-15 angstroms; c) under a hydrostatic pressure of 200-400 psig; d) at a
pH between 6 and 9. Initially (d) had never been mentioned in the patent claim. Then the
Patent office told the claimant about the Booth Patent which disclosed an ultra filtration
process operating at a ph of greater than 9. Hence the applicant had modified their claim and
added (d) to avoid the Booth Patent.

The alleged infringer’s invention satisfied all elements except D (pH of 5). The infringer’s
process operated at 5.

The Court analyzed doctrine of equivalence and the doctrine of prosecution history estoppel
(which is a limitation/defence to the first doctrine) – when a patentee amends his patent to get
the patent, then he is estopped from using the doctrine of equivalence and expanding his
claim to cover the very items that he had amended to get the patent

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SC said that when we’re looking at the doctrine of equivalence, we are only looking at certain
elements, and not the patent as a whole. The difference between ingredients has to be seen
from the perspective of a POSITAR.

Court said that there was a reason to have an upper limit of 9, but no similar reason to
have a lower limit of 6. You have to determine the reason why they amended their
claim. If they amended their claim to avoid prior art, or to make the claim patentable
(i.e. to make it non-obvious, to make it novel etc) then that is the only scenario where
the doctrine of PHE will be applicable. But if they amended their claim to do something
else (such as a cosmetic change) then PHE will not be applicable. Here, because it was
the former, PHE is applicable and equivalence could not be claimed by the patentee.

Court also said: There is a presumption that is raised that a change made during patent
prosecution was to avoid prior art, and that PHE would apply. However, it is a
rebuttable presumption. The burden is on the patentee to prove that the change was for
some other reason and hence PHE is not applicable.

ALSO: DOE would only not apply wrt the amended element, and it could still be used
for all other elements which were not amended to avoid prior art.

Festo Corp v. Shoketsu Kinzoku Kogyo Kabushiki (IMP case – see RM and see slides):

Patents for improved magnetic rod-less cylinder, used to move objects at a distance. First
patent – Stole patent – was rejected because initially the exact method of operation was not
clear. Later, Carol patent was filed by the same applicant where they added a pair of ceiling
rings each having lip on one side and a sleeve (this was the same patent application, only the
name was changed). The respondent SMC also made a similar device but it used a single
ceiling ring, and had a non-magnetized alloy. Suit for patent infringement. Would PHE apply,
or would DOE apply?

Federal circuit puts an absolute bar for DOE, saying PHE would mean that once you narrow
down your claim, you can never claim DOE wrt those elements. Supreme Court rejected this
absolute bar, and says that the bar depends on the reason why you make the amendment –
PHE is limited to amendments made to avoid prior art or enable the patentability of the
application. Hence, here PHE is applicable.

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Court says that once you’ve narrowed down your claim to satisfy s.112, PHE is applicable.
But its not an absolute bar – the burden is on the patentee to show that change was for some
other reason (TA said that patent was not foreseeable or capable of anticipation – wtf? This
makes no sense) – the subject matter of the patent is very important.

Here, Carol patent specifically used the word ‘aluminium substratum’ – if someone used a
different substratum, would it count as infringement or not? No, because US SC has said that
when you disclose something but don’t claim patent over it, then others are free to use it.

Examples where presumption of complete bar of PHE can be rebutted (by proof through the
patentee):

-equivalent unforeseeable at the time of the application

-may have no more than a tangential relationship to the rationale behind the amendment

-for any other reason the applicant could not have reasonably expected to have described the
particular insubstantial substitute

PHE is a flexible bar.

Indian cases:

CTR Manufacturing v. Sergi Transformer (pg 160 of RM):

Bucollz relay and differential relay – CTR was the first manufacturer to combine the same
and make them work in an interdependent manner – the respondent said they added a
pressure release wall in addition to these two features.

Court applied doctrine of pith and marrow (also seems to apply the doctrine of equivalence
although the latter isn’t explicitly mentioned – TA says they basically do the same thing here
– the difference between the two is only between UK and USA – Warning: this is according
to a TA) – they said literal infringement cant be the sole test because it could be unjust – if
you make an insubstantial change, it would still be an infringement – because Sergi was also
using Bucollz and Diff relay – and the addition of PR wall was irrelevant – the essence of

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CTR was the two relays, those are their essential integers – by copying this there was an
infringement, the addition of PRW was not relevant.

Ravi Kamal Bali v. Kala Tech and Ors.:

Pg 166 of RM

Applied doctrine of equivalence

The respondent had added a ‘lock ring’ to the plaintiff’s patent – ‘a tamper proof seal for
directly locking the container’.

Court considered that the changes by the respondent were insubstantial – applied the doctrine
of equivalence to find an infringement. See pg 167 for the changes made by the respondent
and why they were irrelevant.

Defences to Infringement

Roche Products v. Bolar Pharmaceuticals (not good law, because the statute has been
amended subsequent to this decision):

Pg 173 of RM

In the 19th year, the defendant obtained the material patented by the patentee to conduct
experiments so he could apply for his own patent after 20 years. The trial court said that the
defendant’s actions were de minimis, and they were only using them for experimental use so
they could get regulatory approval. However the appellate court overturned this decision, and
said that Bolar intended to eventually use the product for commercial purposes – hence they
couldn’t use the exception of experimental purposes. If it is done out of curiosity or for
research it is acceptable as experimental use, but if done to allow commercial sale, then not
protected by experimental use.

BUT this creates a ‘back end distortion’ – by applying experimental use so strictly, not
allowing other companies to work on the patented subject matter till 20 years have elapsed,
you end up extending patent protection beyond the 20 years

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Hence, the law was amended to resolve this distortion, and create a Bolar exception – that is
to allow companies such as Bolar to carry out experimental use prior to the expiry of patent
so that they could commercially produce the same product subsequent to the completion of
the period of the prior patent. SEE s.271(e)(1) of US Patent law: “it shall not be an act of
infringement to make, use, offer, to sell, or sell within the US or import into the US a
patented invention…solely for uses reasonably related to the development and submission of
information under a Federal law which regulates the manufacture, use, or sale of drugs or
veterinary biological products” (i.e. if you do tests that are necessary for FDA approval of
drugs prior to the expiry of patent on those drugs, its cool)

This law also covers medical devices (by interpretation)

But does it only cover uses for clinical trials or also pre-clinical trials, animal trials etc? U/ntil
what stage do you consider it to be ‘reasonably related to….’

This was answered in the US SC case of Merc v. Integra Licenses, which is the current law
on experimental use.

Equivalent protection in India: s.107A(a):

“Any act of making, constructing, using or selling a patented invention solely for uses
reasonably related to the development and submission of information required under any law
for the time being” … shall not be considered an infringement

13/5/16 – Friday

The Indian provision is much broader in scope because it can related to any product, it can be
in respect of any law, of any country.

Merck v. Integra:

Looked at how s.271(e)(1) should be interpreted.

In the US, you have to do pre-clinical testing, then you have to file a document to prove why
its justified and safe for you to then conduct clinical testing (on humans).

Integra owned 5 patents relating to RGE peptides, a biological compound. Merck sponsored
research at the Scripts Institute, by Dr. David Cherish. They were working on a drug for
angiogenesis – to prevent the growth of cancer. Dr. C realized that the RGE peptide was the

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most promising one, so they asked for perm to conduct clinical testing. Integra found out and
filed a suit against all three parties for infringement. Merck said this was covered by s.271(e)
(1) and so it was not infringement. Integra said that the tests don’t fall under the provision,
but even if they do, not all the tests conducted by Merck were necessary for getting FDA
approval – some of the tests had been done just to determine things like the efficiency of the
drug.

District Court – if Merck believed that there was a decent prospect that the activities would
generate information that was relevant for approval, it would be covered (broad
interpretation)

Federal Appeal – gave a narrow interpretation – doesn’t cover all new medicines being
created – only those that are already in existence but need one or two tests for clinical
approval

Supreme Court – They said that if you do pre-clinical research, and it wasn’t successful, you
cannot be sued. Drug testing is based on trial and error. The only scenario in which you can
have a suit for infringement, and that s.271 will not cover such use, is if you don’t have a
reasonable basis that your drug will be successful or the tests will produce information
relevant to the FDA approval, or if you are just using the tests for experimental use only, and
not for trying to get FDA approval. Broad test laid down.

Sir: Thus pre-clinical trials are also covered under the Bolar exception.

Compulsory Licensing

Art.31, TRIPS – doesn’t use the words ‘compulsory licensing’ – instead, titled ‘Other Use
Without Authorization of the Right Holder’ – asks countries to keep in mind the provisions of
Art.31 while permitting such use:

Where the law of a Member allows for other use (7) of the subject matter of
a patent without the authorization of the right holder, including use by the
government or third parties authorized by the government, the following
provisions shall be respected:
(a)    authorization of such use shall be considered on its individual merits;
 
(b)    such use may only be permitted if, prior to such use, the proposed user
has made efforts to obtain authorization from the right holder on reasonable

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commercial terms and conditions and that such efforts have not been
successful within a reasonable period of time. This requirement may be
waived by a Member in the case of a national emergency or other
circumstances of extreme urgency or in cases of public non-commercial use.
In situations of national emergency or other circumstances of extreme
urgency, the right holder shall, nevertheless, be notified as soon as
reasonably practicable. In the case of public non-commercial use, where the
government or contractor, without making a patent search, knows or has
demonstrable grounds to know that a valid patent is or will be used by or for
the government, the right holder shall be informed promptly;
 
(c)    the scope and duration of such use shall be limited to the purpose for
which it was authorized, and in the case of semi-conductor technology shall
only be for public non-commercial use or to remedy a practice determined
after judicial or administrative process to be anti-competitive;
 
(d)    such use shall be non-exclusive;
 
(e)    such use shall be non-assignable, except with that part of the
enterprise or goodwill which enjoys such use;
 
(f)    any such use shall be authorized predominantly for the supply of the
domestic market of the Member authorizing such use; [This was done away
with in the Doha Conference, because if a Country didn’t have the capability
to produce such a drug through compulsory licenses, other Countries are
permitted to produce it and export it to this Country]
 
 (g)    authorization for such use shall be liable, subject to adequate
protection of the legitimate interests of the persons so authorized, to be
terminated if and when the circumstances which led to it cease to exist and
are unlikely to recur. The competent authority shall have the authority to
review, upon motivated request, the continued existence of these
circumstances;
 
(h)    the right holder shall be paid adequate remuneration in the
circumstances of each case, taking into account the economic value of the
authorization;
 
(i)    the legal validity of any decision relating to the authorization of such
use shall be subject to judicial review or other independent review by a
distinct higher authority in that Member;
 
(j)    any decision relating to the remuneration provided in respect of such
use shall be subject to judicial review or other independent review by a
distinct higher authority in that Member;
 

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(k)    Members are not obliged to apply the conditions set forth in
subparagraphs (b) and (f) where such use is permitted to remedy a practice
determined after judicial or administrative process to be anti-competitive.
The need to correct anti-competitive practices may be taken into account in
determining the amount of remuneration in such cases. Competent
authorities shall have the authority to refuse termination of authorization if
and when the conditions which led to such authorization are likely to recur;
 
(l)    where such use is authorized to permit the exploitation of a patent
(“the second patent”) which cannot be exploited without infringing another
patent (“the first patent”), the following additional conditions shall apply:
 
(i)    the invention claimed in the second patent shall involve an important
technical advance of considerable economic significance in relation to the
invention claimed in the first patent;
 
(ii)   the owner of the first patent shall be entitled to a cross-licence on
reasonable terms to use the invention claimed in the second patent; and
 
(iii)  the use authorized in respect of the first patent shall be non-assignable
except with the assignment of the second patent.

CL has been invoked in many countries – Thailand, Malaysia, Indonesia, Canada, Germany,
Korea, Brazil etc.

s.84 of the Indian Patent Act – READ.

Natco Pharma v. Bayer (pg 190 of RM):

READ RM – explained there.

It was found that it was also not available at a reasonable affordable price, in addition to
failing the first and third test under s.84. Hence compulsory license was granted.

Worked in India – means manufacture and import in India, not just import to India. This is a
ground on which the judgement has been criticized – for its interpretation of the word
‘worked’ in s.84.

Sir: Does not the requirement of ‘worked in India’ violate Art.27 of TRIPS – non-
discrimination policies? You cannot make the patent subject to different rights based on
whether is manufactured in one country or another, or if they are imported or locally

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produced. But, effectively, Natco’s decision means that if you don’t manufacture your goods
in India, then you can be subject to a compulsory license. Doesn’t this violate Art.27?

Art.27: “…patents shall be available and patent rights enjoyable without discrimination as to
the place of invention, the field of technology and whether products are imported or locally
produced.”

Art.28, 31, 8 TRIPS – read. Art.8 justifies s.84. As does Art.2, TRIPS read with Art.5,
Paris Convention also applicable. READ.

Non-discrimination clause under Art.27 does not prevent differentiation done under Art.31 –
another argument that can be made – differentiation is different from discrimination – you
aren’t completely denying the rights of the person, just differentiating the rights of the person.
However, this argument cannot stand if ‘worked in India’ is interpreted so narrowly as to
only mean manufacture in India, and not import into India as Natco Pharma’s case did. This
is an act of protectionism and violates 27.

s.107A(b), Indian Patent Act: “importation of patented products by any person from a person
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[who is duly authorised under the law to produce and sell or distribute the product]”

TRIPS does not provide for any system of ‘exhaustion of rights’ – each Country can provide
for its own system. Exhaustion of rights – when your rights, such as right over sale or
distribution of patented product, end (Ex: exhaustion of right of distribution under a copyright
after first sale).

When do a patentee’s rights get exhausted?

National exhaustion:

Country A, B and C.

‘A’ follows national exhaustion – this means an IP good has to be sold within A (i.e. within
the Country) for patentee’s rights to be exhausted – if sold outside the country, in B or C,
then the right of the patent holder is not exhausted. Thus importing a patented product that
has been sold outside A without the patent-holder’s consent (to import) will count as an
infringement.

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In case of assignment – all rights over patent are transferred to assignee by patentee

In case of licensing – only a non-exclusive right to use/manufacture product is transferred to

another for a limited time

Exhaustion does not happen when assignment/licensing is done. Exhaustion occurs when the
product in question, over which the patent exists, is sold.

In case of regional exhaustion – If A, B and C are part of a customs union like the EU and
are following the regional exhaustion principle – suppose X has a patent in A, B and C – the
product is sold in the territory of B, but X’s right over the product is exhausted in A and C as
well, and this product can be imported in A and C’s territory without X’s consent.

Territoriality principle – a patent granted in one jurisdiction is only valid for that jurisdiction

International exhaustion – if the product is sold in any territory, the patentee’s right over
the product is exhausted and the product can then be imported into the jurisdiction following
international exhaustion without the patentee’s consent.

Exhaustion is relevant while determining whether a patented product whose first sale has
taken place outside a Country can then be imported into that Country without the patentee’s
consent. What you will be concerned with is determining the system of exhaustion followed
by the importing country. Exporting country’s system is irrelevant for this.

India follows international exhaustion – most 3rd world countries do. See s.107A(b).

International exhaustion is closely tied to ‘parallel imports’ or ‘grey sales’. You buy the
product legally in the US, from an authorized dealer, and then import it into India without the
consent of the patent holder for sale. In this scenario, the patent holder will have his own
dealers in India, who will be importing and selling the product as well, officially, with the
consent of the patent holder. Thus, you create a system of parallel imports.

Ex: Products are manufactured sold in Thailand, under a license from the patentee. Y, a Co.
in India, imports it from X, who has purchased the product in Thailand. The product is
patented in India, but not in Thailand. However, the marketing of the product in Thailand has
been authorized. Is 107A(b) applicable here?

s.107A only makes sense if “patented products” in the section means patented in both
countries. Earlier the provision read “duly authorized by the patentee”, but now it has been

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amended to “duly authorized by law” (so now it can include imports from compulsory
licenses as well). But now, the question that arises is whose law will apply? Does law refer to
Indian law, or also Thai law? Shamnad Basheer says it means law of Thailand (i.e. the law of
the exporting country), because the person you are talking about is buying and selling from
Thailand, and you’re talking about his right to do so there. Hence, you must mean whether he
has been duly authorized in Thailand, in accordance with its law. However, there is a second
set of scholars who say it must mean law of India.

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 LAW OF
TRADEMARKS

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What are the uses of a trademark?

-allows for identification of the product

-allows the company to use its goodwill, to differentiate itself from other products

-indicates the consistency in quality of a product

-also serves as an advertising symbol, or for marketing purposes (it isn’t the core product
being sold, but the ‘actual product’ i.e. the core product + the brand name + the packaging –
hence it is the attractiveness of the design that also plays a role in the purchase, and not just
the core product itself. You can also sell it as an ‘augmented product’ – that is, tied up with
additional services like free installation, free delivery, free servicing and warrant etc. Here,
along with trademark, you also communicate a lot of information about these augmented
services. Ex: Apple products – you know they come with applecare)

14/5/16 – Saturday

Justice Frankfurter in Mishawaka Rubber and Wollen Mf Co v. SS Kresge Co:

“A trade mark is a merchandising short-cut which induces a purchaser to select what he

wants or what he has been led to believe he wants. The owner of a mark exploits the human
propensity by making every effort to imegrenate the atmosphere of the market with the
drawing power of a congenial symbol. It serves a psychological function”

4 Functions: Identify, Advertising, Quality, Source

TM should be answering the question “who are you”? (showing their distinctiveness) [and
not “what are you”? (which would be descriptive)]

A descriptive mark may, over time, acquire a secondary meaning and become distinctive. At
the same time, a distinctive mark may lose its uniqueness and become descriptive over time.

Procedure for Registration

Is there a need for registration? Are unregistered trademarks protected? Yes they are – tort of
passing off. So registration of a trademark is not mandatory, but registration certificate is

86
conclusive evidence of the validity of the mark – otherwise you would have to prove the use
and reputation of the mark in a suit for passing off from scratch.

Before you apply to register your TM, you look at prior TM’s to make sure it isn’t similar:

www.uspto.go

www.ipindia.nic.in

www.oami.europa.eu

www.ipaustralia.gov.au

A general search can also be done on google.

Procedure:

 Application for Registration

 Acceptance and Advertisement
 Opposition (if any)
 Registration

Schedule I – specifies forms and fees for registration

Application: each application for one trademark – separate fees in respect of each class of
goods or services – that is, if you wish to use your trademark on different types of goods
you’ll have to pay extra fees but you’ll only have one form

India has 5 trademark offices where you can file: Delhi, Chennai, Mumbai, Calcutta,
Ahmedabad. Where you file depends on the principal place of business. You can do the filing
online, both nationally and internationally (Madrid Protocol – it will be filed with all
registered countries as well, and they have 18 months to exercise their right of refusal, but if
they don’t do so, then it will be registered in those countries as well).

Who can file for trademark?

The person claiming to be the proprietor of the trademark – natural persons, body corporate,
partnership firm etc.

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Conventional application: You can make your application a conventional application – under
Paris Convention – gives you priority in registering that TM in other countries that have
signed the convention for 6 months.

SEE SLIDES for information that is required on the application form.

Opposition to the application can be done for 3 months after application is made but prior to
its registration (+1 month extension, by request). If no opposition, then automatically
registered. [see flowchart in slides]

Registration of TM is valid for 10 years from the date of application – can be renewed.

Rights of a TM holder:

 To exclusive use
 To license
 To assign
 Remedial right – for passing off and for misleading use

Spectrum of Distinctiveness

Two Pesos v. Taco cabana:

Approved the spectrum of distinctiveness test first laid down in Abercrombie & Fitch v.
Hunting World.

SEE RM for the spectrum and the test.

3 Classes:

 Inherently distinctive: presumed to be distinctive; no secondary meaning required to

be proved
 Non-inherently distinctive: you have to prove that distinctiveness has been acquired
through a second meaning
 No distinctiveness

5 Categories:

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  Arbitrary (inherently distinctive)
 Fanciful (inherently distinctive)
 Suggestive (inherently distinctive)
 Descriptive Marks (non-inherently distinctive)
 Generic Marks (no distinctiveness)

Distinctiveness – whether the mark allows the consumers to relate the product to a specific
producer, or to the source of the product.

Fanciful mark – Kodak, Polaroid, Xerox etc – any mark that is specifically created for the
TM protection – it isn’t found in the dictionary, nor is it used in ordinary parleyance by
people – it is the strongest mark for getting TM protection. The word may be an archaic word
– that it isn’t in general use (even if used by lexicographers and the lovers of antiques, it isn’t
used by ordinary customers)

Event of Genericide – transition from fanciful mark into a generic name – Ex: Xerox started
out as fanciful, but then people started associating it with the product so much so that all
photocopies started being called xeroxes – same with Aspirin (TM of Bayer, but was declared
generic and TM was invalidated), Cellophane (for tapes), Escalator, Cello-tape, Walkman,
Jacuzzi, Zipper. Creates problems in renewal of TM.

That’s why you have to be careful when you advertise your product. Xerox actually had an
advertising campaign, telling people not to use Xerox synonymously with photocopy because
it gives them headaches (just like when you use Aspirin for all headache pills)

Arbitrary Marks – the mark is a part of the dictionary, but there is no direct relation
between the mark and the product. Ex: Apple laptops, Camel cigarettes, Shell gasoline. It has
a psychological effect – allows customers to remember the product and brand name more
easily, specifically because of the arbitrariness of the name.

Suggestive Marks – For the above two, trademark protection will always be given. But this
isn’t necessarily true for suggestive marks, even though they fall within inherently distinctive
– why? Because there can be an overlap between a suggestive mark and a descriptive mark.
A suggestive mark is one that hints at the features of a product, but not very directly. Ex: 360
degree shoes, action slacks for pants, at a glance for calenders, habitat for home furnishing.

Tests

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 a) Degree of imagination test – the more the imagination required to connect the mark to
the product, the lesser the chances that it will be suggestive and not descriptive. If
people see the connection immediately, it is likely to be descriptive. If they have to
think about it, and imagine, then it is more likely to be suggestive.
b) Competitor’s need test – why would someone like to have this type of symbol –
because they don’t want to add an entirely new word in the customer’s lexicon – they
want people to easily relate to it – if it can be proved that competitors would not want
this kind of a name, it indicates that it is suggestive and not descriptive.

If you prove that your mark is suggestive, you don’t have to prove distinctiveness or a
secondary meaning – it is presumed to be distinctive. BUT if your mark is found to be
descriptive, you have to prove this secondary meaning and distinctiveness.

Ex: Hush Puppies origin story – doughballs used to quiet the barking dogs – ‘barking dogs’
also used for sore feet – hence shoes called hush puppies

Descriptive Marks: It indicates or conveys the intended purpose, function or use of the
goods, the size of the goods, the class of the users of the goods, a desirable characteristic of
the goods, the nature of the goods, or the end effect upon the user. You have to prove that the
mark has acquired a secondary meaning or not, to register it. This is a question of fact, and
not question of law – you have to furnish evidence for this. You look at ‘time’ – how long has
he been using it? – you look at ‘exclusivity’ – only he has been using it? – you look at
advertising – this is called the TEA test. If, using these three, you can prove that the
customers identify the word with your company, and not with its literal meaning or with all
products, it will qualify as having acquired a secondary meaning, and thereby becoming
distinctiveness. Ex: Bed, baths and beyond

Generic Term: It gives an indication to the product, in its entirety. Ex: Pencil for makers of
pencils. Also see: genericide.

-NOTE: tomapple for tomato apple juice is descriptive and not fanciful

-Eastmond photographic company – ‘solio’ – sun + io – people said this was descriptive –
Court said no, its fanciful, the whole word need not be new, its cool if it uses parts of existing

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words. This is different from tomapple where their portmanteau is simply descriptive, and
does not lead to the invention of a word. To be considered inventive, the word must not have
an obviously inferable meaning as per the HOL in Eastmond.

Invented words:

Bovril (for food substances), Whisquer (for liquors - how? This is the same as tomapple),
Metmas (spices meat preparation), Dustik (for industrial purposes), Solio (for photographic
material)

Not inventive:

Livron (for tonic preparations), Pussikin (for cat food), Instea (instant tea)

Descriptive words:

Safo (for cleaning powder), Satinine (laundry starch)

The nature of distinctiveness of a word is determined by the relevant market – a French word
may be considered descriptive in France, and may be ineligible for registration as TM there,
but when used in India it may be distinctive and capable of registration as a TM

Definition of a trademark, Indian Act:

 A mark capable of being represented graphically

 And capable of distinguishing the goods or services of one person from those of
others
 And may include shape of goods, their packaging, their combination of colours

We’ve discussed the second requirement.

But, what is a ‘mark’?

It’s a device –

It can be a pictorial representation, but it should not be descriptive – however if it is a

composite mark with a symbol and a word, then it is less likely to be considered descriptive,
it can be a label, it can be a name, it can even be a signature (such as Sachin Tendulkar’s
signature), it can be a word, it can be a letter (M for McDonalds, BP, BBC, MTV, KFC, MRF

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etc.), it can be a numeral (555 Cigarettes), it can include the shape of goods, packaging,
combination of colours, etc.

Grounds of Refusal of Trademark:

Absolute Grounds

s.9 – Non distinctiveness, descriptive, common to trade (unless they have acquired
distinctiveness), deceptive, confusing, hurting religious sentiments, scandalous, prohibited
marks, shape in certain circumstances

Relative Grounds

For geographical names – if they are foreign (like Karachi, Paris etc.) for generic products
like shoes then they can, possibly, be registered as TM’s in India, but not local names for
such products (Ex: Simla for manufactured tobacco denied, even though there was no
agriculture there, because it tobacco could be processed there by someone else there in the
future)

SEE slide which lists examples where TM can be denied (slide in blue text)

17/5/16 – Tuesday – Guest Lecture – Dr. Murthy

Standards Setting Organizations and Patent Law

(see someone else’s notes for these two hours – mine are very iffy)

Developments of Standards in Telecomm (DOSTI) – operated for a while, but it didn’t take
off because it was dominated by operators like Vodafone, Airtel etc.

Now we have TSDI (Telecom Society and Development)

ETSI in Europe, IEEE as well – these are all private organizations for standards setting

When a conventional patent that becomes a standard essential patent by one of these
organizations, then anybody manufacturing goods or providing services in that field would
have to use my patent – all of a sudden, huge demand for my patent – everyone wants a
license.

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We call such standard essential patents a ‘Special Group of Patents’.

In a conventional patent, when a patent holder doesn’t give me a license I have other options
– I can carry out R&D and make my own tech, I can go to a competitor and get a license for
similar technology from them.

However, for a Standard Essential Patent, even though other options exist, they are no longer
feasible in the market place – no other technology will be considered acceptable – this will
give the SEP a dominant position in the market (there is a lot of scope for abuse by the patent
holder in these scenarios).

Standard setting organizations are aware of this scope for abuse – so they have created a
frank obligation – if I submit my patent for a standard, I have to promise that I will license it
to anyone who comes to me on fair and non-discriminatory terms.

You determine reasonable royalty for a patent by seeing the extent of contribution of the
patent in the product - determinate that as a percentage – this is the rate of royalty. The extent
of contribution is not determined solely by the cost of producing the patented tech in relation
to the cost of the product – you also have to see how the patent works with other parts of the
product, enhances their performance, changes their use etc. while determining the extent of
contribution.

For standard essential patents – the royalty has to be very low, very fair – not set by standard
setting organization itself but by Courts (the royalty)

31/5/16 – Tuesday

domain name, and what constitutes domain name?

Can domain name be equated to a trademark, and can the law of passing off under trademarks
be applied to domain names?

Panavision v. Toeppen: Toeppen, a student, knew there was going to be a huge demand for
domain names when they were released, and he knew there were no regulations on the same,
he got 240 domain names registered which were the names of big companies. He then sold
these to the companies at a premium. This is called cyber squatting. You take the domain
name and prevent the genuine person, who has the domain name as a trademark or as the

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name of his business, from registering the same. In such a scenario, you have to evict the
person from cyber space. US Court, in this case, applied the dilution principle to evict
toeppen.

There is a uniform domain name dispute resolution policy (UDRP) – provides for remedy if
your trademark has been registered as a domain name – you can get cancellation or transfer
of registration, but you cannot get damages under the UDRP. However, courts in the UK
have said using a domain name for cyber-squatting is an instrument of fraud.

Yahoo v. Akash Arora:

Pg 228 of RM

Plaintiff owned “Yahoo!” and had a domain name: yahoo.com

Defendant opened a domain name: yahooindia.com

Plaintiff claimed that the defendant was passing off, and that the domain name should be
protected like a trademark. The defendant’s website was offering identical services as the
plaintiff.

Defendant argued that the marks act of 1956 only applied to marks for goods, and not
services. So the plaintiff could not relied on it.

However, the Court said that it could apply the tort of passing off - which was a common law
remedy and not based on the 1956 Act – and that it covered services. Hence, they could apply
the principle here. They find that the use of the domain constitutes passing off. They also
found that a disclaimer on AA’s website would also be insufficient to absolve any liability.

USE peta case – passing off for domain names is not concerned with the content of the two
websites, but the test of initial interest confusion – i.e., whether the domain name, at the time
you type it in, and not the content of the page, is likely to be misleading. Even though anyone
going to peta.com would know that it is a parody of peta.org, however when they type or
click on peta.com there has already been confusion – passing off has taken place.

SEE Slides for three requirements to invalidate registration of domain name, and for the
meaning of bad faith registration and use under UDRP

How do you determine whether someone has a legitimate interest in using the domain name?

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-If you have been selling goods or services under the name

-If your business used that name, even though it had not amounted to a trademark yet

Satyam Infowave v. Siffynet:

Satyam had a domain name: sify

Defendant used a very similar name: siffynet

Satyam applied for an injunction. The SC allowed it. However, this was not a case of bad
faith. Siffynet had used the word because the letters were the initials of their company’s
founders. This was why the HC did not grant an injunction.

SC said a domain name has all the characteristics of a trademark; it is not just an address on
the internet; it serves as a business identifier – it said it reflects a proprietor’s business
interests and thereby identifies the company. The SC finds that passing off, therefore, is
applicable to domain names.

The SC found that sify was identified with the plaintiff, because they had been in the market
much longer and that customers identified the word with the plaintiff. Because ‘siffy’ was
phonetically similar, customers would identify this word with the plaintiff as well. Therefore,
the balance of convenience test fell in favour of the plaintiff, to warrant granting an
injunction.

Does India have any special system to deal with domain names?

Nixy.in; .ac.in; .gov. in etc.

We also have a separate ‘.in’ dispute resolution policy.

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 DESIGNS

Art.25 & 26 of TRIPS imposes obligations on members to protect new or original industrial
designs.

This does not extend to designs essentially dictated by function. However, it applies to both
sales and to imports.

Statutory right – Designs Act 2000.

See examples of designs in the slides

You can have a design for food stuffs, musical instruments as well.

A design is different from a patent – the former protects the external, aesthetic appearance,
whereas the latter protects the creation/innovation itself and its utility

What is design?

a) Features of shape – the external form of the article

b) Configuration – arrangement by which the shape of a composite article (made up of
different parts) is arrived at
c) Pattern
d) Ornamentation
e) Composition of Lines or Colours

It is only these features that constitute ‘design’ and that are protected by ‘design’.

The design has to be ‘novel’ or ‘original’, and has to be applied to an ‘article’. How is it
applied to an article? By an industrial process or means – manual, mechanical or chemical,
separately or by combined process. It must appeal to or be judge solely by the eye.

In the US, design protection is done under the patent regime itself, through design patents –
you still have the tests of originality, non-obviousness etc. but you do not have the
requirement of utility.

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Cannot be registered as a Design (in India)

-something that is merely a mechanical device

-something already protected as a trademark

-any property mark (like milestones)

-any artistic work as defined in the Copyright Act 1957

Design must be novel or original

Novelty means that the design has never existed before

Originality means that the design exists, but it is being applied in a new way

Ex: Eiffel tower design exists, but its application to a pen is original

In re Read and Greswell’s Design: Lampshade made of paper shaped like a chrysanthemum
which was registered and a similar design for a lamp shade of the same shape was expunged
from the register (facts not very relevant). Chitty J said “to be capable of being registered
as a design must be new or original in fact, and not, as is suggested new or original as to
some particular class of goods, it cannot be said to be new and original if it is only so for
a particular class of goods”

In the UK, a design must be “new and have individual character”

NEW – if no identical design or no design whose features differ only in immaterial details
has been made available to the public before the relevant date

INDIVIDUAL CHARACTER – if the overall impression it produces on the informed user

differs from the overall impression produced on such a user by any design which has been
made available to the public before the relevant date

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Informed user stands somewhere between an average consumer under trademark law and a
sectoral expert. He is a particularly observant man because of personal experience or
extensive knowledge in the area.

s.1C – design freedom – the degree of freedom of the author in creating the design shall be
taken into consideration while determining individual character – the more designer’s
freedom in developing the design is restricted, the more likely the minor differences between
the design in issue will be sufficient to produce a different overall impression on the informed
used. If an artist has maximum freedom to generate a design v/s the artist is restricted by the
proprietor’s instructions, or by the nature of the product he is designing (ex – he has to design
a bottle of a particular volume and size, composed of a specific material). If your freedom is
restricted, even minor changes are sufficient to establish individual character. ]

Dyson v. Vax: Dyson produced a vacuum cleaner, Vax produced a similar looking vacuum
cleaner. Suit for infringement. Whether Vax’s cleaner produced the same overall impression
was examined. Dyson’s cleaner was smooth, curved and elegant whereas Vax’s cleaner was
rugged, angular and industrial. Hence, Court held that the informed user would be able to
distinguish between the two. Hence not an infringement.

Gardeco Limited v. La Hacienda Ltd.: Stainless steel chimney – invalidation action –

action failed – Court said that the product produced a different overall impression from the
earlier design

Croissant sofa by Filipino designer Kenneth Cobonpue – he changed the materal later and
tried to get it registered as another design – that is not sufficient. Texture and material is not
relevant for design, hence if you only change these features it will amount to an infringement.

“Applied to an Article”

-means any article of manufacture and any substance partly artificial, partly natural

-includes any part of article capable of being made and sold separately (finished article,
buildings and structures are not considered articles, but models of buildings and structures are
considered articles)

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-a piece of paper with a pattern is not an article

-a piece of paper with 3D representation of a design is an article

Ford Motor Co Ltd Design Application [HOL]: Design protection was sought for door
panels, bonner, seats, steering wheel etc. for a car. Assuming that the shape of the car has
already got protection, should there be additional protection for each of these separate
elements of the car? Court says features such as wing mirrors, wheels, seats and the steering
wheel were subsidiary (and not primary) to its essential shape, and they were made and sold
separately. Hence, they were registrable. HOWEVER, spare parts like bonnet and side frame
forming part of and contributing to the overall shape and appearance of the vehicle
were not registrable because they were primary to the essential shape of the car – which
already had design protection – and so separate protection for these features could not be
granted. Design must be applied to an article that has an independent life as an article of
commerce and not merely an adjunct of some larger article of which it forms a part.

What happens if the features are not fully visible at the time of purchase – are they still
entitled to design protection? Does it still have an ‘eye appeal’?

K K Suwa Seikosha’s Design Appeal: digital watch whose interface design was not visible
when the watch was purchased but only when it was connected to circuitry – Court said that
such a design was entitled to protection too.

Ferro and CSPA’s Application/l Design for a chocolate egg that was not visible at the time of
purchase – Court said that it was inevitable that the peel would be removed and the egg
would be seen, hence it did have an eye appeal and it was entitled to design protection.

Functional Feature:

To exclude a process or operation by which the shape is produced, as opposed to the shape
itself.

Cow & Co. v. Cannon Rubber Manufacturer: Diagonal arrangement of ribs on a hot water
bottle – arrangement was not solely functional, hence entitled to design protection.

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Smithkline Beecham v. Hindustan Lever: the design of a tooth brush consisting of a
distinctive handle, and head shape. Although it had some aesthetic value, these features were
primarily utilitarian. Issue: could they be entitled to design protection? Court applied the
dominant purpose test – here, the dominant purpose in the features was functional and not
aesthetic, hence not capable of design protection.

“Immoral Design”

In Mastermann’s Design: the test for immoral design is not whether a majority or large
section of the public finds it immoral, but whether right-thinking members of society would
find it to be so.

There’s no scope for opposition to the application of a design (unlike in TM and patent).
However, one can go for cancellation after registration has been granted. Protection is
granted for 10 years, but it can be extended by another 5 years.

Rights of the proprietor

-copyright in the design – defined as the exclusive right to apply a design to any article in a
any class in which the design is registered s.2(c) of Designs Act – don’t confuse this with
copyright under copyright act

-exclusive use of the design

s.15 of Copyright Act – copyright shall not subsist if any design is registered under Designs
Act. Copyright in any design will cease if the article is reproduced more than 50 times. That’s
why you have to register your design.

s.2(d) of Designs Act – artistic works are excluded from the ambit of this Act

Microfibers v. Giridhar:

Discusses the interplay between the above two sections.

Upholstery fabrics. Appellant was a manufacturer. Design was developed from an original
artistic work, which was intended to applied industrially. Issue was whether the respondent’s
design was a reproduction of the appellant’s design. Question was, what is artistic work, what
is design, and how do they related?

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Court said artistic work does not mean artistic quality, it can be 2D or 3D etc. Capable of
copyright protection. However a design protection is only available if you register it. The
latter in is only for 15 years and not life + 60 years, because designs are being used for
commercial purposes, and as a policy, you don’t want to restrict competition in the business.

In Microfibers, they held that when you have a design based on an artistic work, it will be
entitled to copyright protection but not design protection if not registered. However, once you
produce it 50 times, the copyright also expires. In such a scenario, you basically have no IP
protection. But you are entitled to apply for protection of the design even subsequent to this
date – but by this stage, the design could have become a part of public knowledge. Some
people argue why have artistic protection at all for copyrights – why not just have design
protection? Should there also be some protection for unregistered designs?

1/6/2016 – Wednesday

Unregistered Design Right – UK and EU has provided protection for this as well under the
CDPA 1988 (Copyright, Design and Patent Act)

Design right does not subsist unless and until design has been recorded in a design document
or an article has been made to the design (design doc is any record of a design, whether in
the form of a drawing, written description, photograph, or data stored in a computer or
otherwise)

Originality - it should not be a part of the common knowledge within the common place –
i.e., the design should not be a part of the common knowledge of people or the market within
a certain geographical area (normally, just the jurisdiction within which the design occurs).
Common knowledge is determined at the time at which the article is made and introduced
into the market, not subsequently when the right is claimed.

The design document is not required to be a public document – this is problematic, because
the public then cannot be aware that it may be infringing on the right and that it should avoid
such infringement.

Importantly, unregistered design only protects ‘shape and configuration’, but NOT other
features covered by registered designs such as pattern, ornamentation, colour and lines etc.

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Several exclusions for unregistered designs:

-surface decoration excluded

Markwikinson v. Woodcraft Design: Whether a modular kitchen could get a design

protection? Painted finish, v grooves and cockbeadings are excluded as surface decorations
BUT cornice, quadrant corners and recessed panels in fitted kitchen were not excluded

-methods or principles of construction are excluded

A Fulton v. Grant Barnett: The stitched seams of umbrella were held to be significant
aspects of shape or configuration of the umbrella, and should not be considered a process of
making the umbrella – therefore they should be entitled to design protection

Arrangement of zippers and piping for expanded section of suitcase design is a principle of
construction and therefore excluded [see slides for case name]

-must fit exclusion

excludes shape/config which enables article to be connected or placed in around or against

another article so that either article may perform its function

In the Ocular Sciences case – they considered the human body to also be an article within the
meaning of this exception – dealt with design right over contact lenses – Court said that the
design only enabled the lense to fit on the eyeball, to remain stable on the eyeball and make
the eyeball work in the manner intended hence this is a MUST FIT situation, and cannot get
design protection

Trulife case – breast prostheses in a bra for masectomy patients is not excluded from design
protection – there must be a closer relationship between the design and the article – a plug
and socket relationship – for it to fall under the ‘must fit’ exception

-must match exclusion

Excludes shapes/config which are dependent upon the appearance of another article of which
the article is intended by the designer to form an integral part

-Not original, and in common place

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C&H Engineering v. F. Klucznik & Sons: Pig Fender - Structure on a farm to prevent
piglets from getting out of their enclosure. Whether someone who has the same design, but
reduces the length of the tube (from 2 inches to 0.8 inches) would be considered as infringing
on the right. The case explains what is originality and what falls within the common place. A
question that arose was whether the fender was original and entitled to design protection –
court found that while the concept of a pig shed was known, the concept of a fender with a
tube to prevent piglets from getting out, was not part of common knowledge. Held to be
infringement.

Note: Functionality is not an exception to unregistered design rights unlike registered

design rights [Only the aforementioned exceptions are exceptions to Unreg. Design rights]

Duration: 15 years from the next calendar year of when design was first recorded in a design
document or article was made to design. But even the 15 years is not an absolute right – in
the last 5 years, anyone can apply for a license and use the design after paying a certain
compensation as royalty – if the owner of designer doesn’t agree to terms, you can approach
the comptroller of PDT and he will decide the royalty to be paid.

Rights

Designer is the first owner – Exceptions: commission, course of employment, computer

generated designs

Infringement

Reproduction for commercial purpose by making articles to the design, by making a design
document rewarding the design for the purpose of enabling such articles to be made

Comparison – SEE the table in the slides

Unr – aspect of shape or configuration of whole or part of article – must not be a surface
decoration

Reg – appearance of the whole or a part of a product

Unreg – exclusions – method or principle of construction, must fit, must match

Reg – exclusions – solely dictated by technical function

Unreg – requirements to get protection are different from requirements for Reg des

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Unreg – only protects from commercial use, secondary protection

Reg – total protection except for secondary infringement – even using/making for non
commercial purposes is prohibited

Unreg – duration 10 years + 5 years of limited right

Reg – can be up to 25 years

GEOGRAPHICAL INDICATIONS

What is GI and how does it differ from TM?

In both, you have an indication – there is a feature that identifies goods which distinguishes it
from other goods.

But TM identifies a manufacturer, GI identifies a region of production. TM uses quality and

reputation of an individual producer, GI uses reputation of the region and all its
manufacturers. TM refers to goods or services, GI only extends to goods. You cannot have a
GI for ‘thai massage’. TM creates an individual, exclusive right. GI is a collective right, it is
granted to everyone in the geographical region for all producers of the good. An individual
can apply and get TM, but not for GI. An association of producers can file for a GI, including
a government undertaking which represents the interests of the producers. TM rights can be
alienated, mortgaged, licensed etc but GI rights cannot. GI Act expressly says that GI rights
cannot be transferred. GI can be used by the person who registers it (registered proprietor)
along with other authorized users [producers from that area], but TM can only be used by the
person who registers it.

Exs: Nagpur oranges, Darjeeling tea (agricultural products), Cuban cigar, champagne (for
sparkling wine), scotch (for whiskey) [manufactured products], mysore silk, kashmir
pashmina shawl (handicrafts), tirupathi laddu, parma ham (foodstuff)

Who can sue for infringement of a GI? - any authorized user

You file an application, a specification, a geographical map, evidence of the distinct quality
of the product from a common good, proof that this is linked to the geographical region

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(because all the artisans are from an area, because of its tradition, its method of production,
its soil, climate, conditions etc).

Mysore Agarbattis – does it refer to the modern city or the historical State of Mysore? It is
the latter, because the producers are spread out all over the erstwhile State, even outside the
modern city.

No litigation has been initiated for GIs in India yet – though notices have been issued, such as
in the Darjeeling tea case.

International Agreements that cover GIs: Paris Convention 1883, Madrid Agreement
(repression of False Indication), Lisbon Agreement, TRIPS Agreement

Who is the ‘producer’? see definition in GI Act

Parma Ham case (ECJ) – whether parma ham imported from Italy which is sliced up in UK
and repackaged can still be called parma ham? No – only packaged products received from
Italy can use Parma Ham GI, because the quality of the product may be changed when I alter
it and repackage it – possibility of the quality may be diluted by this process of opening the
package, slicing it into pieces and repackaging it.

However, if the good’s quality doesn’t change by repackaging, don’t know if this logic would
apply – perhaps use of the GI would not be prohibited.

Under GI Act, traders of a product are also included within ‘authorized user’ – it is not
restricted to just the producer

Quality of good must be ‘essentially attributable to the geographical region’ but not
exclusively attributable to the geographical region.

Art.22 & 23 of TRIPS: 23 gives absolute protection for GIs relating to wines and spirits
(arrangement between US and EU) but in all other cases of GIs protection is given based on
whether it is likely to mislead the consumer (art.22)

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