UNIT-I: The Copyrights (Indian Copyright Act, 1957)

a. Introduction to Copyright Law

b. Brief Introduction to related International Treaties and Conventions

c. Subject Matter of Copyright, Economic and Moral Rights (ss2,13,14,15,16, 57)

d. Authorship and Ownership (s17), Term of Copyright and Assignment-Licensing (ss18-31)

e. Infringement and Remedies (ss50-61)

f. Exceptions: Fair Dealing

g. International Copyright Order (ss40-41)

h. Issues in Digital Copyrights

SUBJECT MATTER OF COPYRIGHT

The subject matter of copyright is enumerated in section 13 of the Copyright Act, of 1957.

SEC 16. No copyright except as provided in this Act.— No person shall be entitled to
copyright or any similar right in any work, whether published or unpublished, otherwise than
under and in accordance with the provisions of this Act or of any other law for the time being
in force, but nothing in this section shall be construed as abrogating any right or jurisdiction
to restrain a breach of trust or confidence.

According to Section 13 of The Copyright Act 1957, it may be subjected to the following
works:

1. Primary Works – original works

1. Original Literary Work,
2. Original Dramatic work,
3. Original Musical work,
4. Original Artistic Work,

2. Secondary Works (derivative works – commercial manifestation of original works)

1. Cinematography films, and
2. Sound recordings.

What is originality?
The work doesn't need to be an expression of an original or inventive idea. The copyright act
is only concerned with original expression of thought. Copy right subsists in expression,
ideas are not a subject matter of copyright.

ORIGINAL LITERARY WORK

Section 2(o) of the Copyright Act, 1957 provides an inclusive definition of word literary
works according to which the literary work includes

- computer programming
- tablets, and compilations including computer databases.

This cover published works including books, articles, journals, and periodicals, as well as
manuscripts. Even adaptations, translations, and abridgements are taken as original works and
are protected under copyright law.

Now the scope of original literary works are expanded to include road books, guidebooks,
directories, football coupons, trade statistics, a compilation of a list of clients and law firms

For the originality of literary works

1. must not be copied from another work

2. Original expression of thought through print or writing
3. The labour, skill and capital of a man must not be copied (not necessary that the
elements are)

Can compilation come within original literary works?

Originality depends on the amount of skill, judgement or labour that has been involved in
making the compilation.

Originality requires that the author makes the selection or arrangement independently and
that it displays some level of creativity

Section 13 also lays down that – copyright shall not subsist (unless the work is on to which
provisions of section 40 and 41 apply) unless
 1. In published works – 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;

2. In unpublished works (other than work of architecture) - the author is at the date of
the making of the work a citizen of India or domiciled in India

SECTION 5: When work deemed to be first published in India.— For the purposes of this
Act, a work published in India shall be deemed to be first published in India, notwithstanding
that it has been published simultaneously in some other country, unless such other country
provides a shorter term of copyright for such work; and a work shall be deemed to be
published simultaneously in India and in another country if the time between the publication
in India and the publication in such other country does not exceed thirty days or such other
period as the Central Government may, in relation to any specified country, determine.

Case: Zee Telefilms v. Sundial Communications

Facts: A had prepared concept notes for the purpose of television film which consists of
characters, plots, notes and sketches etc.

Issues: Whether A is entitled to the copyright of those concept notes?

Held: Yes, since A invests labour and skill in preparing the concept paper. Such a person is
entitled to copyright

ORIGINAL DRAMATICS WORKS:

According to section 2(h) of the Copyright Act, 1957, the dramatic work includes any piece
for

- Recitation
- choreographic work or entertainment in dumb shows,
- the scenic arrangement or acting form which is fixed in writing or otherwise
- but does not include a cinematographic film.
When someone does acts mentioned in sec 2(h) physically and live and is not a photographic
imprint thereof, it means a dramatic work

imp case: Tate v. Fullbrook

Necessary that in order to secure
court held that mere scenic effects by themselves copyright protection, the scenic
are not subject to copyright. But once there is dialogue, effects or stage situations have
scenic effects become accessory to the dramatic work and
the whole becomes subject of copyright. If the scenic been reduced in some permanent
effects are fitted to a different dialogue, it is no form
infringement

SECTION 4 : When work not deemed to be published or performed in public.—

Except in relation to infringement of copyright, a work shall not be deemed to be published
or performed in public, if published, or performed in public, without the licence of the owner
of the copyright.

ORIGINAL MUSICAL WORKS

According to section 2(p) of the Copyright Act, 1957, musical work means any work
consisting of music and includes

- any graphical notion of such work,

- but does not include any words or any action intended to be sung, spoken or
performed with the music.

The words in a song and the music have separate rights and the rights cannot be merged. The
copy right of lyrics lies with the lyricist and the musical composition with the composer. To
qualify for copyright protection, a musical work must be original.
 ORIGINAL ARTISTIC WORKS

Section 2(c) of the Copyright Act, 1957, the artistic work includes

1. any painting, sculpture, drawing (including diagrams, maps, charts or plan), engraving
photograph, whether or not any such work possesses artistic qualities.
2. A work of architecture
3. Any other work of artistic craftsmanship
Etchings, lithographs, woodcuts,
prints and other similar works not
Product of art of representing or
being photographs
depicting by colours on a surface.
MUST BE ORIGINAL

Also included engineering and

Produced by any process mechanical drawings. ORIGINAL
analogous to photography but not SKILL AND LABOUR MUST
cinematography. HAVE BEEN SPENT IN
CREATING IT

Work of architecture - copyright extends only to the artistic design and character and shall not
extend to processes or methods of construction

Copyright shall not subsist in the work of architecture uncles if the work is located in India,
provided it is not a work to which sections 40 and 41 apply.

Copyrights subsist in original artistic works irrespective of their quality.

DERIVATIVE WORKS

CINEMATOGRAPH FILMS

These did not have protection before the copyright act, 1911.

Section 2(f) of the Copyright Act, 1957 defines cinematographic films which include any
work of visual recording and a sound recording accompanying such visual recording and the
expression cinematograph shall be construed as including any work produced by any process
analogous to cinematographic including video films.

Visual recording means recording in any medium, by any method including the storing of it
by any electronic means.

ARE CINEMATOGRAPH FILMS REQUIRED TO BE ORIGINAL?

Not necessary according to the copyright act.

SOUND RECORDING

Sound recording means a recording of sounds from which sounds may be produced
regardless of the medium on which such recording is made or the method by which the
sounds are produced.

Copyright shall not subsist—

1. in any cinematograph film if a substantial part of the film is an infringement of the

copyright in any other work;
2. in any 'sound recording made in respect of a literary, dramatic or musical work, if in
making the 'sound recording, copyright in such work has been infringed.

The copyright in a cinematograph film or a 'sound recording shall not affect the separate
copyright in any work in respect of which or a substantial part of which, the film, or, as the
case may be, the 'sound recording is made.

Gramophone Co. India v. Super Cassette Industries

Facts: ‘G.co’, Plaintiff, produced audio records titled ‘Hum Aapke Hain Kaun’ by Rajashree
production ltd, who were the owners of cinematographic work. They had already sold 55
lakhs audio cassettes and 40,000 compact discs titled ‘Hum Aapke Hain Kaun’. The
defendants too launched an audio cassette by adopting the same title with its design, color
scheme, get up and layout deceptively similar. Permanent Injunction was sought.

Held: Injunction varied by stipulating not to use the same title, design colour scheme etc with
bold letters the record is a version of different artists.
 ECONOMIC AND MORAL RIGHTS

The right enjoyed by copyright owner is a negative one – the right to prevent others from
using his work in certain ways and to claim compensation for the usurpation of that right.

Rights are of two types:

1. exclusive rights – economic rights

2. moral rights

the copyright conferred under section 14 consists of bundle of rights. The owner of a
copyright is entitled to assign and license each of those rights separately or in bundles.

ECONOMIC RIGHTS

Section 14 - states that different types of work come with different types of rights.

1. Literary, dramatic and musical work – section 14(a)

The owner has the exclusive right, subject to provision of this act, to do or authorise the
doing of any of the following acts or any substantial part thereof

1. Reproduction of work in any material form including the storing of it in any medium
by electronic means: The right of reproduction commonly means that no person shall
make one or more copies of a work or of a substantial part of it in any material form
including sound and film recording without the permission of the copyright owner.

2. to issue copies of the work to the public not being copies already in circulation: once
copies of work have been validly issued to the public, the subsequent circulation of
those copies shall not infringe the rights of the owner.

3. to perform the work in public, or communicate it to the public:

Communication to the public – section 2(ff) - “communication to the public”
means making any work or performance available for being seen or heard or
otherwise enjoyed by the public directly or by any means of display or diffusion other
than by issuing physical copies of it, whether simultaneously or at places and times
chosen individually, regardless of whether any member of the public sees, hears or
otherwise enjoys the work or performance so made available.
 Performance: “performance”, in relation to performer’s right, means any
visual or acoustic presentation made live by one or more performers

4. to make any cinematograph film or sound recording in respect of the work;

5. to make any translation of the work;
6. to make any adaptation of the work;
section 2(a) “adaptation” means,-
(i) in relation to a dramatic work, the conversion of the work into a non-
dramatic work;
(ii) in relation to a literary work or an artistic work, the conversion of the
work into a dramatic work by way of performance in public or
otherwise;
(iii) in relation to a literary or dramatic work, any abridgement of the work
or any version of the work in which the story or action is conveyed
wholly or mainly by means of pictures in a form suitable for
reproduction in a book, or in a newspaper, magazine or similar
periodical;3[***]
(iv) in relation to a musical work, any arrangement or transcription of the
work;
(v) in relation to any work, any use of such work involving its
rearrangement or alteration

7. 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)
2. in the case of a computer programme (section 14(b))
i. to do any of the acts specified in clause (a)
ii. to sell or give on commercial rental or offer for sale or for commercial rental any
copy of the computer program - Provided that such commercial rental does not apply
in respect of computer programs where the program itself is not the essential object
of the rental.

Commercial rental does not

The reason for giving rental rights – to enable the owners include the rental, lease, or

of copyright in such works to prevent legitimate copies of lending of a lawfully acquired

the works being rented out and then duplicated in copy of a computer program for

circumstances beyond the owner’s control. non-profit purposes by a non-

profit library or a non-profit
educational institution

3. in the case of an artistic work (section 14(c))

(i) to reproduce the work in any material form including—

(A) the storing of it in any medium by electronic or other means
(B) depiction in three-dimensions of a two-dimensional work Copyright does not subsist in
(C) depiction in two-dimensions of a three-dimensional work idea. If a person copies the
idea and does not appropriate
(ii) to communicate the work to the public; the owner’s labour in putting
(iii) to issue copies of the work to the public not being copies already that idea into practice there is
in circulation; no infringement.
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to adaptation of the work any of the acts specified in relation to the work
in sub-clauses (i) to (iv)

Test to see whether the work has been reproduced – to see if the reader, spectator, or viewer
after seeing, and reading both works could clearly be of the opinion and get an unmistakable
impression that the subsequent work appears to be the copy of the first
4. in the case of a cinematograph film section 14(d)

(i) to make a copy of the film, including—

(A) a photograph of any image forming part thereof; or
(B) storing of it in any medium by electronic or other means
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of the
film.

5. in the case of a sound recording,—

(i) to make any other sound recording embodying it 1[including storing of it in any
medium by electronic or other means]
(ii) to sell or give on commercial rental or offer for sale or for such rental, any copy of
the sound recording
(iii) to communicate the sound recording to the public.
AUTHORSHIP AND OWNERSHIP OF COPYRIGHT

Section 13 (2) outlines several crucial requirements that must be completed before copyright
can be established.

Section 17 of the Copyright Act of 1957 addresses the acquisition of copyright ownership.
The Ownership right is only available to persons who meet the provisions of the Copyright
Act of 1957.

Copyright act distinguishes between authorship and ownership. The person who actually
employs their imagination, creativity, and intellectual faculties to write, compose, or produce
the work is the author. Even if a copyrighted work was not produced under the author’s
supervision or while they were working for another company, they may still be its owner.

Section 2(d) “author” means, —

(i) in relation to a literary or dramatic work, the author of the work;

(ii) in relation to a musical work, the composer;

(iii) in relation to an artistic work other than a photograph, the artist;

(iv) in relation to a photograph, the person taking the photograph;

(v) in relation to a cinematograph film or sound recording, the producer; and

(vi) in relation to any literary, dramatic, musical or artistic work which is computer-
generated, the person who causes the work to be created

WHO IS OWNER?

GENERAL RULE: the author is the first owner of the copyright.

However, the Copyright Act, 1957 specifies certain exceptions to this general rule.

Section 17 lays down the statutory exceptions: This section simply lays down that a person
who pays a consideration for the work to be done shall become the first owner of the
copyright.
Section 17(a) – regarding literary, dramatic and artistic works

whenever such a work is made by an author during the course of his employment or service
to the owner of a newspaper, magazine, book etc under a contract for publishing such work,
then subject to an agreement in contrary, the owner of such newspaper or magazine shall
become the first owner of the copyright.

Section 17(b) – regarding paintings, photos or cinematography films

when an artist is hired for creating a painting, or when a photographer is hired for clicking
images, or a cinematographer is hired to shoot a cinematographic film then the person
causing such work to be created shall become the first owner of the copyright. However, this
rule shall apply only if there’s no agreement to the contrary between the parties.

Section 17(c) – work during course of employment

when a work is made by a person in the course of his employment under a contract of service
or apprenticeship to which clause a doesn’t apply, then the employer shall become the first
owner of all the work created during such employment unless there’s an agreement in
contrary between the parties.

Important – work is created during course of employment

Difference between contract of service and contract for services: not every contract under
which one works for another or provides services for another is a contract of service.

Distinction (to determine whether there is a contract of service) - existence of direct control
by the employer, the degree of independence on the part of the person who renders services
and the place where service is rendered. – whether person is an employee or an independent
contractor (example a professor publishes his own research paper while being employed as a
professor under XYZ university)

Section 17 (cc), Copyright Act, 1957 : lectures delivered in public on behalf of another

As per this clause, if a person is delivering a speech on behalf of another then, the person on
behalf of whom the lecture is given in the public is the first owner of such copyright.
However, if a person gives a lecture in public by himself and not representing anyone else
then, he becomes the author and first owner of such copyright.

If ‘A’ the spokesperson of ‘B’ a political leader delivers a speech in public, then although ‘A’
is delivering the speech in public, ‘B’ shall be the first owner of the copyright of such speech.

Section 17 (d) of Copyright Act, 1957 : work assigned by Government

Suppose if a copyrightable work is created on being tendered by the government, then such
government shall be the first owner of the copyright arising and accruing from such works
unless there’s an agreement to the contrary between the parties.

Section 2(k) - “Government work” means a work which is made or published by or under the
direction or control of—

(i) the Government or any department of the Government;

(ii) any Legislature in India
(iii) any court, tribunal or other judicial authority in India;

Section 17 (dd) of Copyright Act, 1957 : copyrightable work made on behalf of a public
undertaking

When a copyrightable work is created as per the direction of the public undertaking, then
such public undertaking shall be the first owner of the copyright.

Section 17 (dd) and Section 41 of Copyright Act, 1957 : copyrightable works created for
certain international organization

Suppose if an international organisation assigns a person to create a copyrightable work for

them then, that international organization shall become the first owner of such copyrightable
work.

OWNERSHIP IN CINEMATOGRAPHIC FILMS

According to section 2(d)(v) – author in relation of a cinematographic film is its producer.

Section 2 (uu) – a producer in relation to a cinematographic film is a person who takes the
initiative and responsibility for making the work.

However according to proviso (b) to section 17 – where a cinematography film is 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.
2012 amendment – provides that the right of the authors of original literary, dramatic, musical
or artistic works, which are incorporated in cinematograph film, shall not be affected.

INFRINGEMENT OF COPYRIGHTS AND ITS REMEDIES

Infringement, in the context of copyright law, refers to any unauthorized use or exploitation
of a copyrighted work. It can include reproducing, distributing, performing, or adapting the
work without the permission of the copyright owner.

Infringement is a trespass on a private domain owned and occupied by the owner of the
copyright.

Reproduction: Reproduction infringement occurs when someone makes a copy of all or a

substantial part of a copyrighted work without authorization. This can include photocopying,
scanning, printing, or duplicating digital files. Ex: Scanning and uploading chapters from a
book to a website without the permission of the copyright holder would constitute
reproduction infringement.

Distribution: Distribution infringement occurs when someone distributes copies of a

copyrighted work to the public without authorization. This can involve selling, renting,
lending, or otherwise making the work available to others. Ex: Selling counterfeit DVDs or
distributing pirated copies of software without the permission of the copyright owner would
constitute distribution infringement.

Public Performance: Public performance infringement occurs when someone publicly

performs a copyrighted work, such as playing music or screening a film, without
authorization. This can include performances in venues such as theaters, concert halls, or
public spaces. Ex: Playing copyrighted songs at a public event or screening a movie in a
theater without obtaining the necessary licenses from the copyright holders would constitute
public performance infringement.

Adaptation: Adaptation infringement occurs when someone creates a derivative work based
on a copyrighted work without authorization. This can involve modifying, translating, or
otherwise transforming the original work into a new form. Ex: Creating a sequel to a novel or
making a film adaptation of a book without obtaining the necessary rights from the original
author would constitute adaptation infringement.
SECTION 51 – ACTS DEEMED TO INFRINGE COPYRIGHT

It outlines several scenarios where unauthorized use of copyrighted material becomes a

violation of the copyright owner’s rights:

Copyright infringement occurs when a person, without the proper license from the copyright
owner or the Registrar of Copyrights, or in violation of the license conditions, does any of the
following:

i. Engages in an activity that exclusively belongs to the copyright owner as per the
Act.

ii. Permits, for profit, a place to be used for public communication of the work, which
would infringe the copyright, unless they were unaware and had no reasonable
grounds to believe that it would constitute infringement.

Copyright infringement also takes place when a person:

i. Creates copies of the work for sale, hire, or trade, or sells or rents such copies.

ii. Distributes the work to an extent that harms the interests of the copyright owner,
especially for commercial purposes.

iii. Exhibits the work in public as part of a trade.

iv. Imports infringing copies of the work into India, with an exception for the private
and domestic use of the importer, which doesn’t constitute infringement.

The reproduction of a literary, dramatic, musical, or artistic work in the form of a

cinematograph film is also considered an “infringing copy” under this section.

Microsoft Corporation v. Yogesh Papat, a well-known software company, Microsoft, sued

defendants who illegally copied and distributed their operating system software. The Delhi
High Court found this to be piracy and issued a permanent injunction against the defendants,
ordering them to pay Rs. 19.75 lakhs in damages. The court stated that software piracy is a
copyright infringement under Section 51 of the Copyright Act, 1957, and the copyright owner
has remedies under Section 55.

CERTAIN ACTS WHICH DO NOT CONSTITUTE INFRINGEMENT OF COPYRIGHT

[SECTION 52]

bare act mein almost 35 – 36 exception hai. Syllabus mei bs fair dealing dala hua h
FAIR DEALING

It is a very thin line between a legitimate and bona fide fair use of a work from a mala fide
and blatant copy of the work. The term fair use has not been defined in the act.

It is a legal doctrine which permits a person to use any work which is protected under the Act
with limited usage of such work so as to maintain the sanctity and originality of such work as
well as the registered proprietor of the work.

In India, the Court applies basic common sense so that they can determine as to what can be
constituted as Fair Dealing on the case- to- case basis.

The fair nature of the dealing depends on the following four factors:

1. the purpose of use;

2. the nature of the work;
3. the amount of the work used, and
4. the effect of use of the work on the original.

FAIR DEALING UNDER COPYRIGHT ACT

section 52 lays down certain acts or works that cannot be considered as an infringement of
copyright namely fair dealing with a literary, dramatic, musical or artistic work not being a
computer program for the purposes of-

1. fair dealing with any work, not being a computer programme, for the purposes of—

(i) “private or personal use, including research;

(ii) criticism or review, whether of that work or of any other work;

(iii) the reporting of current events and current affairs, including the reporting of a lecture
delivered in public.

2.the transient or incidental storage of a work or performance purely in the technical process
of electronic transmission or communication to the public;

3.transient or incidental storage of a work or performance for the purpose of providing

electronic links, access or integration, where such links, access or integration has not been
expressly prohibited by the right holder, unless the person responsible is aware or has
reasonable grounds for believing that such storage is of an infringing copy:
4.the reproduction of any work for the purpose of a judicial proceeding or for the purpose of a
report of a judicial proceeding;

REMEDIES AGAINST THE INFRINGEMENT OF COPYRIGHT

WHO MAY CLAIM?

the owner of the copyright.

Remedies are available to the owner of the copyright.

According to section 54, the owner of copyright shall include

1. an exclusive licensee;
2. in cases where a literary, dramatic, musical, or artistic work is anonymous
(the author’s identity is unknown) or pseudonymous (the author uses a false
name), the “publisher” of the work is regarded as the owner of copyright
until the author’s identity is publicly disclosed or established to the
satisfaction of the Commercial Court.

One special situation has been provided under section 56

SAFEGUARDING OF SPECIAL RIGHTS OWNED BY VARIOUS PERSONS

[SECTION 56]

When multiple individuals or entities hold distinct rights within a single copyright,
each of them has the legal authority to protect and enforce their specific rights
independently. This means that any person who possesses a separate right within a
copyright can take legal action, such as filing a lawsuit or initiating other legal
proceedings, to safeguard their rights without requiring the participation of others
who may own different rights within the same copyright.

Two types:

1. Civil Remedy [Section 54-62]: A civil remedy is a legal solution or action

sought by an individual or entity through civil litigation to resolve a dispute
or seek compensation for harm or damages caused by another party. These
remedies typically include injunctions, damages, and other legal actions
aimed at resolving civil disputes rather than criminal matters.
 2. Criminal Remedy [Section 63-70]: The criminal remedy, in context of
copyright infringement, involves legal actions and penalties pursued by
authorities or copyright owners against individuals or entities engaged in
deliberate and unlawful violations of copyright laws. This can result in
criminal charges, fines, and even imprisonment for the infringing parties.

CIVIL REMEDY AGAINST INFRINGEMENT

SECTION 55 – CIVIL REMEDIES AGAINST THE COPYRIGHT INFRINGEMENT

These remedies includes:

a. Injunction (Judicial process by which one who is threatening the legal rights of
someone is restrained to continue his acts or is ordered to restore the matter to the
position in which they stood before the action.);

b. Damages (monetary compensation for the losses suffered due to infringement);

c. Accounts (requesting an account of the profits made by the infringing party), and;

d. any other remedies provided by law for copyright infringement.

Various factors determine the amount of damages to be paid to the copyright holder.
Generally, the damages are awarded for the amount that the copyright holder would
have got if the person had obtained the license from him. However, there are various
other factors as well, that determines the amount of damages like the loss of profit to
the copyright holder, loss of reputation, decrease in the sale of the copyright holder’s
work etc

KIND OF A DEFENCE: if the defendant proves that at the date of the infringement
he was not aware and had no reasonable ground for believing that copyright
subsisted in the work, the plaintiff shall not be entitled to any remedy other than an
injunction in respect of the infringement and a decree for the whole or part of the
profits made by the defendant by the sale of the infringing copies as the court may in
the circumstances deem reasonable.

RESTRICTION ON REMEDY OF INJUCTION IN CASE OF ARCHITECTURE

WORK [SECTION 59]

Section 59 specifies that when it comes to the copyright owner of an architectural

work, they cannot seek an injunction to halt or demand the demolition of a building
or structure if construction has already started.
SPECIAL RIGHT OF AUTHOR [SECTION 57]

Section 57 of the Copyright Act grants special rights to the author of a work, which
they can exercise independently of their copyright, even if they have partially or
fully assigned that copyright to someone else. These special rights include:

1. Claiming Authorship: The author has the right to claim authorship of the
work. This means they can insist on being recognized as the creator of the
work.
2. Protection Against Harm to Reputation: The author also has the right to
prevent or seek damages for any actions related to the work that could harm
their honor or reputation. This includes actions like distortion, mutilation, or
modification of the work that would negatively impact how the author is
perceived.

However, not displaying the work or not displaying it to the author’s satisfaction is
not considered a violation of the rights granted in this section.

Furthermore, if the author is no longer alive, their legal representatives can exercise
these rights on their behalf. In essence, this section ensures that authors retain
control over their reputation and the integrity of their work, even if they’ve assigned
their copyright to others.

Amarnath Sehgal v. Union of India[10], the renowned sculptor Amarnath Sehgal was
commissioned by the Indian Government to create a mural for Vigyan Bhavan. After
its completion, the government decided to remove and store the mural during
building renovations without informing or obtaining authorization from Amarnath.
The mural also suffered damage due to mishandling.

Amarnath sued the government, asserting that this mistreatment of his mural
violated his moral rights as an artist

The court ruled in favor of Amarnath. The destruction and mutilation of the work
were deemed an infringement of the author’s moral rights, highlighting that the
damage to the mural harmed the artist’s reputation, regardless of ownership.

RIGHT OF COPYRIGHT OWNER TO RECOVER POSSESSION OF INFRINGING

COPIES [SECTION 58] – (remedy for recovery)

Section 58 of the Copyright Act addresses the recovery of infringing copies and
related matters.

Copies of a work in which copyright exists and all plates used or intended for
producing such infringing copies are considered the property of the copyright
owner. Consequently, the copyright owner has the legal authority to initiate
proceedings to recover these infringing copies as per Section 58 of the Copyright Act,
1957.

Additionally, the copyright owner can seek the remedy of converting these
infringing copies.

However, it’s important to note that the remedy of conversion may be denied if the
opposing party can prove two key points:

i. They were unaware and had no reasonable grounds to believe that copyright
existed in the work from which these copies were allegedly created.

ii. They had reasonable grounds to believe that these copies or plates used for
reproduction did not constitute copyright infringement.

LEGAL RECOURSE FOR UNWARRANTED COPYRIGHT THREAT BY THE

COPYRIGHT OWNER [SECTION 60]

Section 60 of the Copyright Act addresses situations where an individual, claiming

to be the copyright owner, threatens legal action against another person for alleged
copyright infringement. These threats can be conveyed through circulars,
advertisements, or any other means. If someone receives such groundless threats
and feels aggrieved, they have legal recourse under this section.

- The aggrieved person can seek an injunction to stop the continuation of these
threats.
- Additionally, they have the right to claim damages for any losses they may
have incurred as a result of these groundless threats.

COPYRIGHT OWNERS MUST BE INVOLVED IN LEGAL PROCEEDINGS

[SECTION 61]

Section 61 of the Copyright Act allows an exclusive licensee of a copyright to initiate

a civil suit or legal proceedings related to copyright infringement. However, in such
cases, the owner of the copyright becomes the defendant in the proceedings. This
means that the copyright owner has the opportunity to challenge the claims made by
the exclusive licensee. It’s essential to note that if the exclusive licensee prevails in
the lawsuit, the copyright owner cannot file a new lawsuit based on the same cause
of action. This provision ensures that disputes over copyright infringement
involving exclusive licensees are resolved efficiently and prevent multiple lawsuits
on the same issue.

Trademark infringement occurs when a person uses a trademark identical or deceptively

similar to another party’s registered trademark. It could be a unique symbol, logo, word,
phrase, design or combining these elements to represent the goods and services offered by the
company. This unauthorised use can confuse consumers and take advantage of the reputation
of the registered trademark. With the proper evidence and guidance of a legal professional,
the company can protect their trademark.

In India, the Trade Marks Act 1999 offers the legal protection for trademarks. This Act
outlines the framework for trademark registration with the guidelines for examination,
registration, and renewal process. In case of infringement, it provides remedies for
trademarks like injunctions, damages, and accounts of profits.

Types of Trademark Infringement

You can find two types of trademark infringement in India: 1. Direct Infringement and 2.
Indirect Infringement.

1. Direct Infringement

 Unauthorized Use: The infringement of a trademark only occurs when a person uses
the trademark without the owner’s permission. If it is used with the owner’s
knowledge, then it is not a violation.
 Identical or Deceptively Similar: If the used trademark is the same as the registered
trademark or consumers are confused between the marks and think they are the
same.
 Registered Trademark: The Act only protects the trademark registered under India’s
trademark registry. If there is an unauthorised use of an unregistered trademark, the
passing off law will be employed. A claimant must demonstrate goodwill,
misrepresentation, and damage to their reputation to establish a case.
 Class of Goods or Services: Unauthorized use of the trademark for the propagation
of goods or services must come under the same class of unregistered trademark.

2. Indirect Infringement

 Vicarious Infringement: When a person controls the infringement done by the direct
infringer, it comes under vicarious infringement.
 Contributory Infringement: When a person knowingly provides assistance, support,
or contributes to the infringing activities of the direct infringer, it is a contributory
infringement.

What are the Grounds of Infringement?

As per Section 29 of the Trade Marks Act, 1999, trademark infringement in India can be
accounted for in the following scenarios:

 Identity with a Registered Mark: Infringement occurs if an unregistered mark is

identical to a registered one for the same class of goods and services.
 Likelihood of Confusion: If an unregistered mark is similar to the infringed mark,
causing confusion among consumers.
  Similarity to a Mark with Reputation: Infringement is established if the
unregistered mark resembles a registered trademark with a recognised reputation in
the market.
 Unauthorized Use on Labeling or Packaging: If the registered trademark is used on
labelling or packaging without proper authorization, it is an infringement.
 Unfair Advantage in Advertising: If the registered trademark is used in advertising
to gain an advantage detrimental to or against the trademark’s reputation.

Also read: Trademark infringement cases in India

What does not come under Trademark Infringement?

Section 30 of the Trademarks Act 1999 outlines certain conditions where the registered
trademark is not infringed. The alleged infringer can use it to defend themselves from the suit
for infringement.

A registered trademark is not considered infringed in the following situations:

 Using Indicating Characteristics: When the use of the trademark in relation to

goods or services merely indicates their kind, quality, quantity, intended purpose,
value, geographical origin, time of production, or other characteristics.

 Limitations on Registration: If the trademark is registered subject to certain

conditions or restrictions, its use in a manner that falls outside the scope of those
conditions or limitations is not considered an infringement.

 Authorized Use by Proprietor or Registered User: When a person uses the

trademark for goods or services connected with the trademark owner or a registered
user.

 Adaptation of Goods or Services: If a person adapts the trademark of the goods or

services to be part of or accessory to other goods or services, and if the use is
reasonably necessary.

 Use of Identical or Similar Trademarks: When a registered trademark, which is

identical or closely resembles another registered trademark, is used by its rightful
owner under the rights granted by registration.

Defences against trademark infringement?

The following defences can be used against trademark infringement.

 Fair Use: The accused can claim “fair use” as a defense when accused of trademark
infringement. This means they either had permission from the trademark owner or
didn’t intend to deceive customers. There are two types of fair use,
 o Descriptive Fair Use: This defense applies when a trademark is used for a
description purpose rather than targeted on a specific mark on goods and
services.
o Nominative Fair Use: This defense applies when a trademark is used to refer
specifically to the products or services.
 Prior Use: If someone has been using a trademark before it was registered by
someone else, they have rights over it, even if the later user registered it. This defence
is valid if the defendant has used the mark longer and has built a reputation.
 Non-use by the Registered Owner: If the trademark owner hasn’t been using the
trademark for a long time, the defendant can use it, provided they can prove they have
a legitimate reason to do so.
 Delay and Acquiescence: If the trademark owner delays taking action against
infringement, their rights might be seen as waived, allowing others to use the
trademark.
 Generic Use: If the trademark has become generic for the type of goods/services, it
loses its distinctiveness and cannot be protected. For example, aspirin and elevator.

Remedies and Penalties against trademark infringement:

Remedies against trademark infringement are categorised into civil and criminal remedies.
Choosing the appropriate path depends on the specific circumstances and desired outcome.

Civil Remedies:

 Injunctions:

o Temporary Injunction: A court order immediately stopping the infringer

from using the trademark until the lawsuit concludes.

o Permanent Injunction: A long-term court order prohibits the infringer from

using your trademark.

 Damages: Compensation for financial losses or reputational damage suffered due to

the infringement. This can include:

o Actual Damages: Reimbursement for quantifiable losses, like lost sales or

profits.

o Additional Damages: Compensation for intangible harm, like goodwill or

brand reputation damage.

 Account of Profits: An order requiring the infringer to disclose and surrender all
profits earned through the infringing use of your trademark.

Criminal Remedies:

 Imprisonment: The infringer can be jailed for at least 6 months, extendable to 3

years.
  Fine: The infringer can be fined a minimum of Rs. 50,000 and up to Rs. 2,00,000.

Conclusion

In conclusion, trademark infringement in India poses significant challenges for companies

seeking to protect their brand identities. The unauthorised use of trademarks confuses
consumers and undermines the value and reputation built by the trademark owner.
Understanding the types, penalties, and defences against infringement is crucial for
safeguarding one’s place in the marketplace.

Unconventional Trade Mark

An unconventional trademark is a classification distinct from conventional or traditional

trademarks. Such a trademark can manifest as visible signs like colors, shapes, motion, or
holograms, as well as non-visible signs such as sounds, scents, tastes, or textures. For an
unconventional mark to be effective, it must possess the communicative capacity to
distinguish the goods and services of one entity from those of another. It is essential for the
mark to demonstrate distinctiveness, indicating its origin and thereby setting apart the goods
or services from others.

Some Known Unconventional Trade Marks

 Design of a Carlsberg beer bottle (Shape)

 Google doodle (fluid)
 Amul girl (fluid)
 red and yellow combination of McDonald's (color)
 Yahoo's yodel, a man yodelling “Yahoo” (sound mark)
 Cadbury- shape of purple, Pantone 2685C on their chocolate wrappers (color)
 Nokia's Connecting Hands (Motion/device mark)

Landmark Cases: Unconventional Trade Mark

 Carlsberg Breweries v. Som Distilleries and Breweries Ltd [2017 SCC OnLine
Del 8125]:

In the case of Carlsberg Breweries v. Som Distilleries and Breweries Ltd., the Delhi High
Court ruled that the design of a Carlsberg beer bottle, encompassing elements such as the
shape, pull caps, and labels, did not constitute a novel concept. The court emphasized that
there was a discernible distinction between the designs in question. Carlsberg had asserted
that Som was replicating its unique trademark-registered bottle design and trade dress with
the intent to market Hunter beer.

Patentability criteria

Every invention has to pass various tests and fall under the category of inventions that can be
patented in India. The 3 main tests are novelty, non-obviousness and utility. There are certain
requirements that need to be fulfilled in order to get a patent for an invention.
Requirements or principles of Patent Law

To get a product patented, it has to fulfil the following requirements, which also serve as the
principles of patent law in India. These are:

 An invention must be new.

 It must involve an inventive step.
 Capable of being used in industries i.e. industrial application.
 It must not fall into the category of exceptions or subjects that are not patentable.
The following criteria determine what can be patented in India:

Novelty or newness

The invention must be new and not similar to any other inventions or existing products.
According to Section 2(l) of the Patents (Amendment) Act, 2005 ‘new invention’ means an
invention that has not been anticipated by prior publication and does not fall into the public
domain. There must be no prior publication of the invention. However, a mere discovery does
not amount to an invention. The two criteria for granting patents, i.e., novelty and utility,
were recognized as important in the case of Bishwanath Prasad Radhey Shyam v. Hindustan
Metal Industries (1979). It was observed in the case of Gopal Glass Works Ltd. v. Assistant
Controller of Patents (2005), that for an invention to be patented it must be new and original.
Novelty in itself is not a complete criterion. The product or invention must be sufficiently
original as well.

Non-obviousness or inventive step

According to Section 2(1)(j) of the Indian Patents Act, 1970, any product or process that
involves an inventive step and is capable of being used in the industry is called an invention.
This definition makes it clear that the invention must have an inventive step and it must not
be known to any skilled person in that particular field. Section 2(1) (ja) of the Act defines
‘inventive step’. The concept of inventive step was introduced in India in the case
of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979). It also reiterated
the four tests of obviousness. These are:

 A skilled person must identify the inventive step in the form of prior use, art or
knowledge.
 He must be able to tell the difference between the subject matter and the invention.
 Consideration must be given to observing the differences.
 There must be a degree of invention.
Usefulness or utility

This is another important criterion for granting patents. An invention must be useful and have
an industrial application besides being new and non-obvious. In the case of Cipla Ltd. v. F
Hoffmann-La Roche Ltd. (2015), the Court observed that according to the definitions of
‘invention’ and ‘capable of industrial application’ under the Act, an invention must have a
commercial use so that it can be utilized in the industries. In the case of Indian Vacuum
Brake Co. Ltd. E.S. Luard (1925), the Court observed that the term ‘utility’ has not been used
in an abstract sense in the Act. In order to qualify for a patent, an invention must have some
utility. Mere usefulness is not enough.

Rights of Patentee

 Right to exploit patent: A patentee has the exclusive right to make use, exercise,
sell or distribute the patented article or substance in India, or to use or exercise the
method or process if the patent is for a person. This right can be exercised either
by the patentee himself or by his agent or licensees. The patentee’s rights are
exercisable only during the term of the patent.
 Right to grant license: The patentee has the discretion to transfer rights or grant
licenses or enter into some other arrangement for a consideration. A license or an
assignment must be in writing and registered with the Controller of Patents, for it
to be legitimate and valid. The document assigning a patent is not admitted as
evidence of title of any person to a patent unless registered and this is applicable to
assignee not to the assignor.
 Right to Surrender: A patentee has the right to surrender his patent, but before
accepting the offer of surrender, a notice of surrender is given to persons whose
name is entered in the register as having an interest in the patent and their
objections, if any, considered. The application for surrender is also published in the
Official Gazette to enable interested persons to oppose.
 Right to sue for infringement: The patentee has a right to institute proceedings for
infringement of the patent in a District Court having jurisdiction to try the suit.

Obligations of patentee

 Government use of patents: A patented invention may be used or even acquired by

the Government, for its use only; it is to be understood that the Government may
also restrict or prohibit the usage of the patent under specific circumstances. In
case of a patent in respect of any medicine or drug, it may be imported by the
Government for its own use or for distribution in any dispensary, hospital or other
medical institution run by or on behalf of the Government. The aforesaid use can
be made without the consent of the patentee or payment of any royalties. Apart
from this, the Government may also sell the article manufactured by patented
process on royalties or may also require a patent on paying suitable compensation.
  Compulsory licenses: If the patent is not worked satisfactorily to meet the
reasonable requirements of the public, at a reasonable price, the Controller may
grant compulsory licenses to any applicant to work the patent. A compulsory
license is a provision under the Indian Patent Act which grants power to the
Government to mandate a generic drug maker to manufacture inexpensive
medicine in public interest even as a patent in the product is valid. Compulsory
licenses may also be obtained in respect of related patents where one patent cannot
be worked without using the related patent.
 Revocation of patent: A patent may be revoked in cases where there has been no
work or unsatisfactory result to the demand of the public in respect of the patented
invention.
 Invention for defence purposes: Such patents may be subject to certain secrecy
provisions, i.e. publication of the Invention may be restricted or prohibited by
directions of Controller. Upon continuance of such order or prohibition of
publication or communication of patented Invention, the application is debarred
for using it, and the Central Government might use it on payment of royalties to
the applicant.
 Restored Patents: Once lapsed, a patent may be restored, provided that few
limitations are imposed on the right of the patentee. When the infringement was
made between the period of the date of infringement and the date of the
advertisement of the application for reinstatement, the patent has no authority to
take action for infringement.

International treaty copyright

Berne Convention: One of the oldest and most important treaties, the Berne Convention for the
Protection of Literary and Artistic Works sets minimum standards for copyright protection among
its member countries. It establishes the principle of "national treatment," meaning that each
member country must provide the same level of protection to works of authors from other
member countries as it provides to its own authors.

WIPO Copyright Treaty (WCT): The World Intellectual Property Organization (WIPO)
Copyright Treaty is an international treaty administered by WIPO. It addresses copyright
protection in the digital environment, emphasizing the protection of digital works and the rights
of authors and creators in the digital era. It complements the provisions of the Berne Convention.

WIPO Performances and Phonograms Treaty (WPPT): Another treaty administered by WIPO, the
WPPT focuses specifically on the protection of the rights of performers and producers of
phonograms (sound recordings). It grants performers certain rights regarding their performances
and producers certain rights regarding their phonograms.

TRIPS Agreement: The Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS) is an international treaty administered by the World Trade Organization (WTO). It sets
down minimum standards for the regulation of various forms of intellectual property, including
copyright, among member countries.

Rome Convention: The International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations, commonly known as the Rome Convention,
provides protection for the rights of performers, producers of phonograms, and broadcasting
organizations. It complements the Berne Convention and primarily focuses on related rights
rather than copyright itself.

Marrakesh Treaty: The Marrakesh Treaty to Facilitate Access to Published Works for Persons
Who Are Blind, Visually Impaired, or Otherwise Print Disabled addresses the issue of access to
copyrighted works for persons with print disabilities. It aims to make published works more
accessible to this community by allowing for the creation and distribution of accessible format
copies without requiring permission from copyright holders.

INTERNATIONAL TREATIES AND CONVENTIONS (T.M)

PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY (1883)

This convention, administered by the World Intellectual Property Organization (WIPO),

provides for the mutual recognition of trademarks among member countries. It establishes
basic principles for the protection of industrial property, including trademarks, across
borders.

MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF

MARKS (1891)

This treaty allows trademark owners to register their marks in multiple countries by filing a
single application with the International Bureau of WIPO. The Madrid System simplifies the
process of obtaining international trademark protection.

TRADEMARK LAW TREATY (1994)

This treaty harmonizes and simplifies administrative procedures related to the registration
and maintenance of trademarks. It aims to make trademark registration systems more
accessible, efficient, and user-friendly.

TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS

AGREEMENT) UNDER THE WORLD TRADE ORGANIZATION (WTO) (1994)
TRIPS set minimum standards for intellectual property protection, including trademarks,
among WTO member countries. It requires members to provide effective means of enforcing
trademark rights and combating counterfeiting and piracy.

International treaties and conventions (PATENT)

Paris Convention for the Protection of Industrial Property (1883)

One of the oldest and most significant treaties in the field of intellectual property. Provides
for national treatment, meaning that each member country must grant the same protection to
nationals of other member countries as it does to its own nationals. Establishes the right of
priority, allowing an applicant to claim priority based on an earlier application filed in
another member country.

Patent Cooperation Treaty (PCT) (1970)

Facilitates the filing of patent applications for the same invention in multiple countries by
providing a centralized application process. Simplifies the procedure for obtaining patents
internationally by allowing applicants to file a single international patent application with the
World Intellectual Property Organization (WIPO).

Enables applicants to delay the decision to file separate national or regional patent
applications for up to 30 months from the priority date.

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (1994):

Part of the World Trade Organization (WTO) agreements. Sets minimum standards for
intellectual property protection, including patents, and enforcement for WTO member
countries. Requires member countries to provide a minimum 20-year term of protection for
patents and to make patents available for any inventions, whether products or processes, in all
fields of technology.

Patent Law Treaty (PLT) (2000):

Seeks to harmonize and streamline formal procedures in national and regional patent offices.
Aims to simplify and standardize formal requirements, such as application filing and
processing, fees, and publication of applications. Enhances efficiency and reduces
administrative burdens for both patent offices and applicants.