1.

INTRODUCTION

Intellectual Property Rights are the legal rights that are granted to a person for any creative
and artistic work, for any invention or discovery, or for any literary work or words, phrases
and symbols or designs for a stipulated period of time. The owners of Intellectual Property
are granted certain exclusive rights through which they use their property without any
disturbance and can prevent the misuse of their property. Intellectual property is any
innovation, commercial or artistic, or any unique name, symbol, logo or design used
commercially. In India, Intellectual Property is governed under the Patents Act, 1970;
Trademarks Act, 1999; Indian Copyright Act, 1957; Designs Act, 2001, etc.

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic
works and producers of cinematograph films and sound recordings. It is a bundle of rights
including, inter alia, rights of reproduction, communication to the public, adaptation and
translation of the work. The only criterion to determine whether a person is entitled to
copyright protection is originality in expression.

The term “copyright” is not defined under the Indian Copyright Act, 1957 (hereinafter
referred to as “Copyright Act”). The general connotation of the term copyright refers to the
“right to copy” which is available only to the author or the creator, as the case may be. Thus,
any other person who copies the original work would be amount to infringement under the
Copyright Act. Copyright ensures certain minimum safeguards of the rights of authors over
their creations. Creativity being the keystone of progress, no civilized society can afford to
ignore the basic requirement of encouraging the same. Economic and social development of
a society is dependent on creativity. The protection provided by copyright to the efforts of
writers, artists, designers, dramatists, musicians, architects and producers of sound
recordings, cinematograph films and computer software, creates an atmosphere conducive
to creativity, which induces them to create more and motivates others to create.

On the other hand, what is created by him/her cannot be claimed ownership for generations
all together as it might harm the social justice. Therefore, a term of life plus sixty years is
being adopted in India for the purpose of determining the period of copyright. This period
may vary from country to country. If copyright protection is applied rigidly, it can hamper
progress of the society. Therefore, copyright laws are enacted with necessary exceptions
and limitations to ensure that a balance is maintained between the interests of the creators
and of the community.
Many types of exploitation of work which are for various social purposes such as education,
religious ceremonies, and so on are exempted from the operation of the rights granted in the
Act. Copyright in a work is considered as infringed only if a substantial part is used
unauthorized. What is ‘substantial’ varies from case to case. More often than not, it is a matter
of quality rather than quantity. For example, if a lyricist copy a very catching phrase from
another lyricist’s song, there is likely to be infringement even if that phrase is very short. The
best example would be “Oh, Pretty women” dealt in the case of Campbell Vs Acuff Ross Music
Inc.1,

The copyright law therefore, to strike a balance between promoting innovativeness amongst
the creators and the interest of the general public has excluded a fair deal of works that is
permitted without specific permission of the copyright owners. In order to protect the interests
of users, some exemptions have been prescribed in respect of specific uses of works enjoying
copyright such as research or private study, criticism or review, reporting of events, judicial
proceeding, performance made before a non-paying audience etc.

Copyright may be acquired for almost all the visible things like script, photo, book, essay, films,
videos, architecture etc and also intangible things such as music. The most important criteria to
determine whether the said article is copyrightable or not, is based on its originality. Also
copyright can be only for things that are worth copying and not otherwise. For example, a baby
scribing in a pad cannot be copyrighted.

Copyright protects the expression and not the content or substance per se. For example, an
author writes about making of an aircraft. Here, the idea of making of the plane is not
protected but the only the way of expressing is protected. The idea is protected under the
Patent law and not under Copyright Act.

Copyright also does not protect the titles per se or the names, word or a set of words. But there
can be exceptions based on the facts and circumstances of each case. For example, the actor
Shah Rukh Khan has copyrights his name (SRK) and the music composer A.R.Rahman
copyrighted the title “Jai Ho” for the Oscar song which is currently under litigation. It is
noteworthy to mention here that the defendant can always take a stand of cancellation of
copyright in any suit unless he is estopped by any implied or express acceptance.

Copyright may also be granted for things that would come under patents, trademarks or
designs. As copyright protects only the expression and nothing more, it is not much preferred in
practice except in case of film industry. This will be dealt elaborately in forth coming topics.

1
510 U.S. 569 (1994)
Copyright is a right given by the law to creators of literary, dramatic, musical and artistic
works and producers of cinematograph films and sound recordings. In fact, it is a bundle of
rights including, inter alia, rights of reproduction, communication to the public, adaptation
and translation of the work. There could be slight variations in the composition of the rights
depending upon the nature of work.

1.1 Work in which copyright subsists (Chapter III, Section 13 of Copyright Act)

 Literary works (including computer programmes, tables and compilations

including computer literary data bases)

 Dramatic works

 Musical works

 Artistic works

 Cinematograph films

 Sound recordings

1.2 Registration of Copyright

Copyright is automatic once the original work is created and it does not require any
formality. However, certificate of registration of copyright and the entries made therein
serve as prima facie evidence in a court of law with reference to dispute relating to
ownership of copyright.

Procedure for registration:

Chapter VI of the Copyright Rules, 1956 sets out the procedure for the registration under
the Copyright Act. The procedure for registration is as follows:

a. Application for registration is to be made on Form IV ( Including Statement of

Particulars and Statement of Further Particulars) as prescribed in the first schedule
to the Rules ;

b. Separate applications should be made for registration of each work;

c. Each application should be accompanied by the requisite fee prescribed in the

second schedule to the Rules ; and

d. The applications should be signed by the applicant or the advocate in whose favour a
Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed
by the party and accepted by the advocate should also be enclosed.

Each and every column of the Statement of Particulars and Statement of Further Particulars
should be replied specifically.
Both published and unpublished works can be registered. Copyright in works published before
21stJanuary, 1958, i.e., before the Copyright Act, 1957 came in force, can also be registered,
provided the works still enjoy copyright. Three copies of published work may be sent along with
the application.

If the work to be registered is unpublished, a copy of the manuscript has to be sent along with
the application for affixing the stamp of the Copyright Office in proof of the work having been
registered. In case two copies of the manuscript are sent, one copy of the same duly stamped
will be returned, while the other will be retained, as far as possible, in the Copyright Office for
record and will be kept confidential.

Also it would also be open to the applicant to send only extracts from the unpublished work
instead of the whole manuscript and ask for the return of the extracts after being stamped with
the seal of the Copyright Office.

When a work has been registered as unpublished and subsequently it is published, the
applicant may apply for changes in particulars entered in the Register of Copyright in Form V
with prescribed fee.

1.3 Some of the advantage of Registration are:

 Registration establishes a public record of the copyright claim.

 Before an infringement suit may be filed in court, registration is necessary for works.

 Registration establishes sufficient evidence in court concerning the validity of the

copyright and the facts stated in the copyright certificate.

 If registration is made, statutory damages and attorney's fees will be available to the
copyright owner in court actions. Otherwise, only an award of actual damages and
profits is available to the copyright owner.

 Registration allows the owner of the copyright to record the registration with the Indian
Customs for protection against the importation of infringing copies.
 2. Ownership

Generally, the creator or the author of the work is the owner of the work and therefore entitled
to get the copyright for the work. Where the author of the work is employed by another
person, the work belongs to the employer of the author. And where creation of the works is
incidental, but not the purpose, the work belongs to the authors. But in practice, out of the
contractual agreement between the employer and the employee, the creation during the
course of employment would be belonging to the employer.

There may be a situation where a particular final work involves many copyrightable sub-
divisions such as film wherein many works such as music, lyrics, dramatic works etc are
copyrightable. The authors in the creation of such work are many such as:

a. In the case of a musical work, the composer.

b. In the case of a cinematograph film, the producer.

c. In the case of a sound recording, the producer.

d. In the case of a photograph, the photographer.

e. In the case of a computer generated work, the person who causes the work to
be created.

f. In the case of Script, the writer. Etc.

Where the work is made by the author in the course of his employment under a contract of
service or apprenticeship, for the purpose, the said employer 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, 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. For example, where the composer of the music copyrights his
creation and later provides the same to the film for some consideration, the work is still owned
by the author only.
 2.1 Concept of Originality

As per Section 13 of the Indian Copyright Act, copyright subsists in dramatic, artistic, musical
works as well as cinematographic films and sound recordings. The Copyright Act as such does
not define the term “originality” but the Indian courts have relied on various doctrines laid
down by the foreign courts.

The Privy Council, in the case Macmillan & Company Ltd. v. Cooper2, approved the principle
laid down in University of London Press v. University Tutorial Press 3 , which laid down that
copyright over a work arises and subsists in that work due to the skill and labour spent on that
work, rather than due to inventive thought. This is more popularly known as the ‘sweat of the
brow’ theory. It has been held that originality derives merely from the fact that sufficient
labour, skill, capital and effort (whether physical or otherwise) has been applied in the work.
This “sweat of the brow” theory was adopted in India, as evidenced from the Delhi High Court
judgment in the case of Burlington Home Shopping v. Rajnish Chibber 4, wherein it was held
that a compilation may be considered a copyrightable work by virtue of the fact that the there
was devotion of time, labour and skill in creating the said compilation from many available
works.

In the case of Feists Publication Vs Rural Telephone Services5, the court introduced another
concept for determining originality namely minimum modicum of creativity wherein it has
been held that it must be independently created by the author and that it possesses at least
some minimal degree of creativity in it to make it eligible for attaining originality. As per the
judgment any independent creation with certain degree of creativity would be considered as
original.

The Indian Supreme Court, in its landmark judgment of Eastern Book Company v. D.B. Modak6,
departed from both these approaches and established the standard of originality that fell
midway between ‘sweat of the brow’ and ‘minimum modicum of creativity’. In doing so, the
Indian Supreme Court was followed the reasoning given by the Canadian Supreme Court in CCH
Canadian Ltd. v. Law Society of Upper Canada7. But in practice, this midway standard is
2
Macmillan Company v. J.K. Cooper, (1924) 26 BOMLR 292

3
University of London Press Ltd. v. University Tutorial Press Ltd.,[1916] 2 Ch. 601

4
61 (1995) DLT 6

5
499 U.S. 340 (1991)

6
Eastern Book Company v. D. B. Modak,AIR 2008 SC 809

7
[2004] 1 SCR 339, 2004 SCC 13
extremely difficult to practice and implement. According to this midway standard, an ‘original’
must be a “product of an exercise of skill and judgment”, where ‘skill’ is “the use of one's
knowledge, developed aptitude or practised ability in producing the work” and ‘judgment’ is
“the use of one's capacity for discernment or ability to form an opinion or evaluation by
comparing different possible options in producing the work”. As per the Canadian Supreme
Court, this exercise of skill and judgment must not be “so trivial that it could be characterized as
a purely mechanical exercise” and must be “more than a mere copy of another work.” At the
same time, “creativity is not required” to make the work ‘original’. It is thus evident that a great
deal of ambiguity exists around the practical implementation of this standard.

2.2 Ownership Rights

The owner of the Copyright has the following rights under the Act:

2.2.1 REPRODUCTION

The Copyright confers upon the assessee the sole right to reproduce the authored work.
In other words, no other person except the author shall make copies (one or many) of the work
or copy the substantial part of the work in any form including sound and film recording etc
without the permission of the copyright owner. For example, a person buys a film CD and the
person makes multiple copies of it and sells it to others. This would amount to copyright
infringement.

2.2.2 COMMUNICATION

Communication to the public means making any work available to general public for the
purpose of being seen or heard or otherwise enjoyed by the public directly or by any means of
display or diffusion. It is not necessary that any member of the public actually sees, hears or
otherwise enjoys the work so made available. For example, a cable operator may transmit a
cinematograph film, which no member of the public might have seen. Still it is a communication
to the public. The fact that the work in question is accessible to the public is enough to say that
the work is communicated to the public.

2.2.3 ADAPTATION

Adaptation involves the preparation of a new work in the same or different form based upon an
already existing work. The Copyright Act defines the following acts as adaptations:

a. Conversion of a dramatic work into a non-dramatic work

b. Conversion of a literary or artistic work into a dramatic work

 c. Re-arrangement of a literary or dramatic work

d. Depiction in a comic form or through pictures of a literary or dramatic work

e. Transcription of a musical work or any act involving re-arrangement or alteration of an

existing work.

For example, the book “Five Point Someone” written by Chetan Bhagat was made as a film
named “3 Idiots” in Hindi. It is noted that the concept of the film alone was taken and not
the whole of its expression. Again, the remake of the film “3 idiots” was done in Tamil in
the name of “Nanban”. Again here some alterations were made to suit the targeted
audience and therefore, only amounted to copying of idea and not the expression.

2.2.4 TRANSLATION

Similarly, the owner has the full and sole authority to translate the work done by him in
one language to one or many other languages. Any other person interested in doing so must
get the prior permission of the owner. For example, a film taken in English can be dubbed or
remade only by the owner or any other person with the consent of the owner.

2.3 Life of Right

Generally copyright lasts for Life + 60 years in India.

Work Life

Original literary, dramatic, musical and artistic 60-year from the year following the death of
works the author. In case of joint authorship, the date
has reference to author who dies last.

Posthumous Work 60 years from the date of demise of the owner

Anonymous and pseudonymous publications 60 years from beginning of the calendar year
following the year of publication.

Photographs 60 years from the beginning of the calendar

year next following the year in which the
photograph is published

Work of Government, Public undertaking and 60 years from the year next to the year of
 International Organisation publication

Cinematographic film 60 year from the post calendar year of the

release of the Film
4.Licensing

The copyright owner may grant a license and transfer some or all of his rights to others to
exploit his work for monetary benefits. A license is different from an assignment as licensee
gets certain rights subject to the conditions specified in the license agreement but the
ownership of those rights is not vested with him while in case of an assignment the assignee
becomes the owner of the interest assigned to him. A license may be exclusive or of non-
exclusive type.

2.4 Voluntary Licensing

The owner of the Copyright in any existing or future work may grant any interest in the work by
way of license. As regards the future works the license shall take effect only when the works
comes into existence. For a license to be valid it must be in writing and signed by either the
owner or his duly authorized agent. And where a person to whom a license relating to copyright
in any future work dies before the work comes into existence, his legal representative shall be
entitled to the benefit of the license.

A License Agreement generally contains the following particulars:

 Identification of the work licensed

 Duration of the license

 Territorial extent of the license

 Amount of royalty payable

 Conditions relating to revision, extension and/or termination of license

  Any dispute in respect of the license shall be settled by the Copyright Board or by way of
Arbitration.

 Allowability of sub-licensing etc.

2.5 Compulsory Licensing

Compulsory Licensing can be invoked under certain circumstances with respect to both
published works and unpublished works. Compulsory licenses can also be obtained for the
purposes of production and publication or translation of the work. The procedure for obtaining
compulsory licensing with respect to the Indian works and foreign works is different.

2.5.1 Compulsory licensing on Published Works

With respect to the Indian works published or performed in public, compulsory licenses can be
obtained by making a complaint to the Copyright Board on the ground that the owner has:

• Refused to re-publish or allow the republication of the work or has refused to allow the
performance of the work in public and by reason of such refusal the work is withheld
from the public.

• Refused to allow the communication of the work to the public by broadcast of the work
or work in the sound recording on such terms, which the complainant considers
reasonable.

• · Refused to allow the performance of the work in pubic and by reason of such refusal
work is withheld from public;

2.5.2 Compulsory licensing on Published Works

Compulsory licenses can also be obtained with respect to the unpublished works by making an
application to the Copyright board in the following circumstances:

• Author is dead

• Author is unknown

• Author cannot be traced

• Author cannot be found

Before making an application in respect of an unpublished work the applicant is required to
publish his proposal in one issue of a daily newspaper in the English language having circulation
in major part of the country and also in one issue of any daily newspaper in that language.

Compulsory licensing with regard to copyright is mostly paper realism as books or films
are seldom licensed compulsorily. Recently, the compulsory licensing was enforced in the field
of Patents which were not welcomed by the foreign counterparts as this would reduce their
income. This law supported by conventions such as Vienna Conventions and TRIPS has to be
taken advantage to include the foreign works and the foreign books must be made available to
the general public at a lesser cost.

2.6 Cancellation of License

The Copyright Board can cancel the license granted on any of the following grounds:

• The licensee has failed to produce and publish the translation of the work within the
specified period or the extended period.

• The license was obtained by fraud or misrepresentation as to any essential fact.

• The licensee has contravened any of the terms and conditions of the license.

3. Assignment

The owner of the copyright in an existing work or the prospective owner of the copyright in a
future work may assign to any person the copyright either wholly or partially and either
generally or subject to limitations and either for the whole term of the copyright or any part
thereof.

A right to assign work under the Copyright Act 1957 arises naturally when the work comes into
existence. However, certain rights are specific to certain types of subject matter/work. Further
an author/owner is entitled to multiple rights broadly categorised as Economic rights and
Moral rights. The owner of a copyright may grant an interest in the copyright by a License.

The Act prescribes that a prospective owner of a copyright in future work may assign the
copyright, to any person, either wholly or partially, although the assignment shall take effect
only when the work comes into existence.
 3.1 The requirements for a valid assignment

a. It must be in writing.

b. It should be signed by the Assignor.

c. The copyrighted work must be identified and must specify the rights assigned.

d. It should have the terms regarding revision, royalty and termination.

e. It should specify the amount of royalty payable, if any, to the author or his legal heirs.

f. In the event the Assignee does not exercise the rights assigned to him within a period of
one year, the assignment in respect of such rights is deemed to have lapsed unless
otherwise specified in the Agreement.

g. If the period of assignment is not stated, it is deemed to be five years from the date of
assignment, and if no geographical limits are specified, it shall be presumed to extend
within India.

h. If the territorial extent of assignment of the rights is not specified, it shall be presumed
to extend within the whole of India.

The above provisions apply both to registered and unregistered copyright. Apart from the
above requirements, in case of registered copyright, the following additional steps also have to
be taken.

In case of Registered Copyright the Assignee has to make an application for registration of
changes in the particulars of copyright entered in the Register of Copyrights in Form V under
Rule 16 of Copyright Rules, 1958 to be delivered by hand or registered post. Attested copies of
the deeds of assignments should be enclosed with the application.

3.2 Difference between Assignment and License

a. Assignment of copy right and copyright license are two forms of contract involved in the
exploitation of copyright work by a third party. License is an authorization of an act
without which authorization would be an infringement. Licensing usually involves
licensing of some of the rights and not the whole. Licenses can be exclusive or non
exclusive. An assignment involves the disposal of the copyright. The author (assigner)
 assigns the copyright to another person (assignee) or transfers the ownership of the
copyright8.

b. Assignee will be the owner of the copyright as regard rights so assigned. The owner will
be the owner of the copyright of remaining rights. The assignment could be for whole
duration of the copyright or for a short duration. In case of Licensing, the ownership
shall always vest with the owner (Licensor).

c. The licensee can join with the owner of the copyright and as a party to the infringement,
and take an action for infringement against third party9 but a bonafide purchaser in
good faith and for consideration of the proprietors interest without notice of previous
licensee is unaffected by it10. On the other hand, in case of assignment, where the
ownership is transferred, the assignee himself can take action against the third party.

d. The licensee can however, sue the licensor for damages for breach of contract if the
latter does not protect his interest. A licensee has a right to make alterations except in
so far as his license expressly or impliedly restricts the right. A failure to pay royalties
enables the licensor to revoke the license. But in the case of assignment it is not
possible11. But if there is any harsh terms which affects the author’s right, it can lead to
revocation if a complaint is made to the copyright Board. Where the assignee of a
copyright becomes entitled to any right comprised in the copyright, the assignee as
respects to the rights so assigned, and the assignor as respects the rights not assigned,
shall be treated for the purposes of this Act as the owner of copyright and the provisions
of this Act shall have effect accordingly.

e. Under Section 30 of the Copyright Act, if the licensee in the case of future work dies
before the work comes in to existence his legal representatives shall be entitled to such
works, in the absence of any provision to the contrary. The expression "assignee" as
respects the assignment of the copyright in any future work includes the legal
representatives of the assignee, if the assignee dies before the work comes into
existence. The owner of the copyright has the power to assign his entire rights or assign
only some of the rights. In case the rights are split up there is only partial assignment.

8
Brad Sherman and Lionel Bently,Intellectual Property Laws, oxford university press,Ist edition.

9
Bharat Law House Vs. Wadhwa AIR 1988,Del 6

10
Coopinger.Intellectual property laws

11
Gramophone Co of India Ltd v. Shanti Films Corpn AIR 1997 Cal 63
 3.3 Mode of assignment

No assignment of the copyright in any work shall be valid unless it is in writing signed by the
assignor or by his duly authorized agent. It shall identify the work, specify the rights assigned,
duration, territorial extent of such assignment, amount of royalty payable to the author. If the
period is not stated it shall be deemed to be five years and territorial extend shall be presumed
to extend within India. If the assignee does not exercise such rights within one year from the
date of such assignment it shall be deemed to have lapsed unless otherwise specified in the
assignment. The assignor can file a complaint to the copyright board if the assignee fails to
make sufficient exercise of the rights assigned, failure not attributable to the act or omission,
then copyright. board after such enquiry as it deem necessary may revoke the assignment, this
provision may be used for u/s 31 as a ground for compulsory licensing.

Also regarding any dispute to assignment it follows the same procedure including an order for
recovery of any royalty payable. If the terms of the assignment is harsh to the assignor (owner),
it can be revoked, but after five years from the date of assignment. In the case of unpublished
work the author must be a citizen of India or domiciled in India at the time of the creation of
the work. Copyright in an architectural work will subsist only if the work is located in India
irrespective of the nationality of the author.

4. Infringement

In dealing with copyright, we should bear in the mind that copyright does not protect novelty
but only originality. Copyright protects only the expression and not the idea. Therefore, if it is
the only method of expressing the work, it cannot be protected. Best example would be the
Telephone Directory wherein the Name, Address, Phone No. are given and also given in
alphabetical order. There can be no other way of expressing the same. Therefore, this would
not amount to copyright infringement. This is popularly referred to as Idea-Expression
Dicothomy.

4.1 The key factors required for initiating any infringement case are:

 Prove ownership of Copyright

 Infringer has copied (Substantially Similar)

Once the rights of the owner have been established, the next step is to prove that that there is
an actual infringement. If the defendant makes copies of a copyrighted work and commercially
exploits such copies or any blatant infringement, nothing further needs to be proved to
establish infringement apart from what has been discussed above. However, more complicated
questions arise when the defendant the alleged infringing work involved relates to something,
which is similar, but not identical with the plaintiff’s work. In such cases, in order to prove
infringement, the plaintiff must show the following:12

a. The defendant copied directly from the plaintiff’s work, and

b. The elements copied, when taken together, amounts to an improper appropriation.

Realizing that direct evidence of copying will be rarely available, courts have universally allowed
copyright owners to prove copying on the basis of circumstantial evidence, specifically through
inferences from the defendant’s access to the plaintiff’s work and from any similarities
between two works13.

In the case of Super Cassette Industries Vs Nodules Co. Ltd ., the defendant played cassette in
Hotel amounts to copyright infringement. This was clearly held to be act of infringement of
author’s right over copyright.

Copying can, therefore, be proved by inference. It can be inferred that the defendant has in fact
copied the plaintiff’s work from the fact that the defendant had access to the plaintiff’s work
and from the similarities between his work and that of the plaintiff’s. The rationale behind this
is that given the sufficient opportunity that the defendant had to copy the plaintiff’s work in
addition to the striking similarity between the two works, the evidence in hand is indicative of
copyright infringement.

In the case of Roma Mitra Vs State of Bihar 14, the Plaintiff, a student gave the work to the
guide. The guide published the work as her own. The published article was substantially similar
and therefore, amounted to copyright infringement.

In the case of Ty Ink Vs GMA Accessories 15, it was held that Similarity between works is highly
unlikely to have been in accident of independent creation. This is an evidence of access.

Therefore, there is a reciprocal relationship between proof of access and similarity and this
relationship is subject to two important limitations16:

12
Arnstein v. Porter, 154 F.2d 464

13
Paul Goldstein’s Goldstein on Copyright, Vol. II 3rd edn., Aspen Publishers, p.no. 9.6. Urmi Juvekar v. CNN-IBN

14
Criminal Miscellaneous no. 31757 OF 2000

15
959 F.Supp. 936 (1997), 132 F.3d 1167 (7th Cir. 1997)

16
Arnsteinv. Porter, 154 F.2d 464
 In the case of S.K. Dutt vs Law Book Co. And Ors. 17, the court determined the amount of
substantiality should be more than half of the total work. It has also held that where the half
of the work is copied and the remaining being original work, it does not constitute
infringement.

a. “If there are no similarities, no amount of evidence of access will suffice to

prove copying”.

b. “If evidence of access is absent, the similarities must be so striking as to preclude

the possibility that plaintiff and the defendant arrived at the same result.”

Therefore, to summarise the Condition to prove infringement can be summarized as follows:

a. Closely Similarity

b. Unlawful

c. Some connection

d. Access to original work

4.2 Acts which may not amount to Infringement

The act/ copying by defendant may not always amount to infringement. Some examples of acts
which do not constitute Infringement under the Copyright Act are as follows:
 Fair dealing such as criticisms, personal use, newspaper report, review etc.
 Adaptation of Computer Program
 Judicial Proceedings
 Exclusive work of member of House of Legislature
 Non-Corporate matter for institution purpose
 Question Papers
 With Consent
 Non-paying Audience
 Issue being Current Topic such as economic, social, political Etc.
 Made less than 3 copies
 Research or Private study
 Available in Official Gazette.
 Report of committee or Commission
 After the expiry of Copyright.
 4.3 Fair Use

For the purpose of deciding fair use of the work, the following factors has to be taken into
consideration before determining it to be an copyright Infringement.

a. the purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes;

b. the nature of the copyrighted work;

c. the amount and substantiality of the portion used in relation to the copyrighted work as
a whole; and

d. the effect of the use upon the potential market for or value of the copyrighted work.

At the outset, it should be mentioned that the “Fair Use” of the work depends upon facts and
circumstances of each case. In a copyright infringement case dealing with fair use, the duty of the
court is to first determine whether the defendant has use the copyrighted information in a natural or
justifiable manner or has taken advantage of already existing work of the plaintiff. In deciding that,
the court has to deal with the above mentioned factors before coming to any conclusion.

The purpose and character of the use plays a major role in determining the copyright
infringement. If the defendant has used it for a purpose which is justifiable or excusable under
the Copyright Act, it may not constitute infringement. It is important that the each fact is
weighted properly in deciding fair use.

For example, if a person writes a book on topic “Mother’s care” and gets his book copyrighted
and subsequently, another person with title “Mother’s care” writes a article on mother’s care
on child. Under ordinary circumstances, it may be an infringement, but here it is just an article
on care of mother towards the child to an non-paying audience with no commercial element
involved in it. Therefore, it would be come under fair use not amounting to infringement.

In the case of Harper & Row v. Nation Enterprises 23, Former President Gerald Ford had written
a memoir including an account of his decision to pardon Richard Nixon. Ford had licensed his
publication rights to Harper & Row, which had contracted for excerpts of the memoir to be
printed in Time. Instead, The Nation magazine published 300 to 400 words of verbatim quotes
from the 500-page book without the permission of Ford, Harper & Row, or Time magazine. The
Nation asserted as a defense that Ford was a public figure, and his reasons for pardoning Nixon
were of vital interest, and that appropriation in such circumstances should qualify as a fair use.
The court ruled that fair use is not a defense to the appropriation of work by a famous political
figure simply because of the public interest in learning of that political figure's account of an
historic event.
As stated before, the concept of fair use come into play once the act of the defendant is
justifiable or is excusable under the law. In the case of Eastern Book Company Vs D.B.Modak24,
the plaintiff reported the judgments of the courts along with a head notes giving synopsis of the
judgment. Question arose as to whether judgment can be given copyright to an individual who
reported the judgment. The court held negatively and held that head notes alone were eligible
for copyright and not the judgment.

Secondly, the nature of use by the defendant is very crucial in determining the liability of the
defendant. If the defendant uses the subject matter of the copyright that exploitative of the
plaintiff work, it would be infringement. Also if the defendant uses the copyrighted work in a
manner that defame or derogates the author or his work, it would amount to infringement.

In Phoolan Devi v. Shekhar Kapoor25, (1995-PTC Del), the plaintiff claimed that the basis of the
film, being a novel dictated by the illiterate plaintiff herself had been considerably mutilated by
the film producer. The plaintiff sought a restraint order against the defendant, from exhibiting
publicly or privately, selling, entering into film festivals, promoting, advertising, producing in
any format or medium, wholly or partially, the film “Bandit Queen” in India or else where.
Granting an injunction, held that “the defendant had no right to exhibit the film as produced
violating the privacy of plaintiff’s body and person. The balance of convenience is also in favour
of restraining the defendants from exhibiting the film any further as it would cause further
injury to the plaintiff. No amount of money can compensate the indignities, torture, and feeling
of guilt and shame which has been ascribed to the plaintiff in the film. Therefore, the
defendants were refrained from exhibiting the film in its censored version till the final decision
of the suit.”

In Smt. Mannu Bhandari, Appellant v. Kala Vikas Pictures Pvt. Ltd. and another 26, AIR 1987
Delhi 13, the court observed that “section 57 lifts the author’s status beyond the material gains
of copyright and gives it a special status. An author’s right to restrain distortion etc. of his work
is not limited to a case of literary reproduction of his work. The restraint order in the nature of
injunction under section 57 can be passed even in cases where a film is produced based on the
author’s novel. The language of section 57 is of the widest amplitude and cannot be restricted
to ‘literary’ expression only. Visual and audio manifestations are directly covered. The court
observed that by reading the contract with section 57, it is obvious that modifications, which
are permissible, are such modifications, which do not convert the film into an entirely new
version from the original novel. The modifications should also not distort or mutilate the
original novel. The fact that Mannu Bhandari is the author of the story will be published in all
the credits. This is for giving due recognition to the author’s reputation.” The court therefore,
directed certain modifications and deletions to the film before screening it.
In cases of factual matters, there cannot be much of infringement except where they are
literally copied as the facts per se cannot be copyrighted and copying the same is justifiable act.
For example, News cannot be said to have been copied by another. The case is also applicable
to factual matter or scheme or the scene of an individual. One must bear in mind that copyright
does not protect idea but only the expression. For example, a person writes a story and another
person copies the story with same number of persons, their characters, situation etc but in his
own words. This would not amount to infringement as the expression is not copied here.

The Supreme Court’s decision in R.G.Anand v. Delux Films27 would show that infringement in
India is normally established through comparison of the two works from a holistic perspective.
Although the said decision does specifically state, for instance, that ideas per se are not
protectable, the similarity in the ideas between the two works involved in that case seems to
have been a factor that the Court considered. Therefore, the law in India prescribes more of a
total “look and feel” or the “Lay Observer Test” of the work involved, as seen from the
perspective of a layman.

Again, if the subject matter is copied by the defendant making substantial changes to the
original work or modifies the original work to suit the targeted audience, it may not be an act of
infringement. For example, the book ‘Five point someone’ was transformed into a Hindi movie
named ‘Three Idiots’. Again the same was translated to Tamil by the name ‘Nanban’. All of
these does not constitute infringement as some changes were made to suit the interest of the
targeted audience by the copier and therefore, this work becomes a original work.

If the author creates any fictional stories and it is copied by the defendant, it may be a blatant
copying of the author’s work leading to infringement. But, if the copying is of the kind that may
naturally occur in the course, it may not be an infringement. For example, hero or heroine of
the film introduced with the song cannot be copyrighted. This is called as scenes affair Doctrine.

Also, it is of utmost important that the act of the defend causes some effect upon the author. If
the act of the defendant deteriorates the reputation of the author or the defendant by copying
the authors work becomes the competitor of the author covering the targeted audience or by
any other way affects the rights available under the Copyright Act, the act of the defendant
would constitute infringement under the Copyright Act. Some of the defenses available for the
defendant are as follows:

27
1978 AIR 1613, 1979 SCR (1) 218
 Not Copyrightable
 Consent

 Public Interest

 Permitted acts

 Fair Dealings

 Education

 Libraries and Archieves

 Computer programs

 Adaptation

 Statutory License etc.

In the case of Hubbard v. Vosper28, the court held as under

“It is impossible to define what is ‘fair dealing.’ It must be a question of degree. You must
consider first the number and extent of the quotations and extracts. Are they altogether too
many and too long to be fair? Then you must consider the use made of them. If they are used as
a basis for comment, criticism or review, that may be a fair dealing. If they are used to convey
the same information as the author, for a rival purpose, that may be unfair. Next, you must
consider the proportions…. Other considerations may come to mind also. After all is said and
done, it must be a matter of impression….”

Therefore, there cannot be straight line jacket in determining infringement or fair use by the
defendant. It is must be decided on case to case basis only based on facts and circumstances of
each cases before the court.

5. Remedies

5.1 CIVIL REMEDIES :

The most importance civil remedy is the grant of interlocutory injunction since most actions
start with an application for some interlocutory relief and in most cases the matter never goes
beyond the interlocutory stage. The other civil remedies include damages - actual and
conversion; attorney’s fees, rendition of accounts of profits and delivery up.
 5.1.1 INTERLOCUTORY INJUCTIONS

The principles on which interlocutory injunctions should be granted were discussed in detail
in the English case of American Cyanamid v Ethicon Ltd31. [1975] AC 368 (HL(E)]. After this
case, it was believed that the classic requirements for the grant of interim injunction are:

 Prima facie case

 Balance of Convenience; and

 Irreparable injury

In the case of Series 5 Software Ltd. v Philip Clarke & Others32, Laddie J re-examined the
principles and took a fresh look at what Cyanamid had actually decided. The learned judge held
:

 The grant of an interlocutory injunction was a matter of discretion and depended on all
the facts of the case;

 there were no fixed rules;

 the court should rarely attempt to resolve complex issues of disputed fact or law;

 major factors the court should bear in mind were (i) the extent to which damages were
likely to be an adequate remedy and the ability of the other party to pay (ii) the balance
of convenience (iii) the maintenance of the status quo, and (iv) any clear view the court
may reach as to the relative strength of the parties' case.

Thus, this case places emphasis on the merits and the effect may well be to obtain a non-
binding view by a judge on the merits. This may lengthen the hearing of application for
interlocutory injunction as parties may lead evidence on the merits but it may have the overall
effect of putting an early end to the main action.

5.1.2 PECUNIARY REMEDIES

Under the Copyright laws of some countries like the United Kingdom, it is essential for the
plaintiff to elect between damages and an account of profits although in the two recent cases,

31
[1975] AC 396]

32
[1996]FSR 273
namely Baldock v Addison [1994] FSR 665 and Island Records v Tring International Plc [1995]
FSR 560, the Court held that there could be a split trial and a procedure could be adopted by
which the trial could be divided so that once liability has been established, thereafter the
plaintiff would be able to seek discovery in order for him to make an informed decision on
which of the two of the remedies to elect, namely damages or account of profits. In Cala
Homes (South) Ltd. v Alfred McAlpine Homes East Ltd [I995] FSR 818, Laddie J held that
additional statutory damages could be granted even where the plaintiff elected for account of
profits.

Under Sections 55 and 58 of the Indian Copyright Act, 1957, the plaintiff can seek the following
three remedies, namely

 account of profits

 compensatory damages and

 conversion damages which are assessed on the basis of value of the article converted.

5.1.3 ANTON PILLOR ORDER

The Anton Piller Order derives its name from a Court of Appeal decision in Anton Piller AG vs
Manufacturing Processes33. An Anton Piller Order has the following elements:

 An injunction restraining the defendant from dealing in the infringing goods or

destroying, them;

 An order that the plaintiffs solicitors be permitted to enter the premises of the
defendants, search the same and take goods in their safe custody; and

 An order that defendant be directed to disclose the names and addresses of suppliers
and customers and also to file an affidavit will a specified time giving this information.

5.1.4 MAREVA INJUNCTION

Mareva Injunction is an order which temporarily freezes assets of a defendant thus preventing
the defendant from frustrating the judgment by disposal of such assets.

33
[1976] Ch 55
 5.1.5 Copyright Board

There are no special courts for the purpose of dealing with copyright cases. The regular
courts try these cases which basically lack knowledge and expertise in the field of copyright.
There is a Copyright Board to adjudicate certain cases pertaining to copyright. The
government has set up a Copyright Enforcement Advisory Council (CEAC) to adjudicate
certain matters relating to copyright.

Powers of Copyright Board

The Copyright Act provides for a quasi-judicial body called the Copyright Board consisting of
a Chairman and two or more, but not exceeding fourteen, other members for adjudicating

certain kinds of copyright cases. The Chairman of the Board is of the level of a judge of a High
Court. The Board has the power to:
i. hear appeals against the orders of the Registrar of Copyright;

ii. hear applications for rectification of entries in the Register of Copyrights;

iii. adjudicate upon disputes on assignment of copyright;

iv. grant compulsory licences to publish or republish works (in certain

circumstances);
v. grant compulsory licence to produce and publish a translation of a literary or
dramatic work in any language after a period of seven years from the first
publication of the work;
vi. hear and decide disputes as to whether a work has been published or about the
date of publication or about the term of copyright of a work in another country;
vii. fix rates of royalties in respect of sound recordings under the cover-version
provision; and
viii. fix the resale share right in original copies of a painting, a sculpture or a drawing
and of original manuscripts of a literary or dramatic or musical work.
The Registrar of Copyrights has the powers of a civil court when trying a suit under the Code of
Civil Procedure in respect of the following matters, namely,
a. summoning and enforcing the attendance of any person and examining him on oath;

b. requiring the discovery and production of any document;

c. receiving evidence on affidavit;

d. issuing commissions for the examination of witnesses or documents;

e. requisitioning any public record or copy thereof from any court or office;

f. any other matters which may be prescribed.