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Copyrights, Patents, Trademarks as a part of

Intellectual Property Rights with reference to


some clauses of TRIPs.

ROLL NO. CLASS B - GROUP 3


3 Anagha Landge
6 Anuj Sharma
7 Ashvij Vaidya
13 Julious Macqueen
30 Rahul Shetty
32 Rucha Shirudkar
36 Siebert Philip
38 Utkarsh Dwivedi
TABLE OF CONTENTS

INTRODUCTION 4

OVERVIEW OF PATENTS IN INDIA 6

PATENT LAWS IN INDIA 6

THE PATENTS ACT 1970 OVERVIEW 7


MEANING OF PATENT 7
OBJECTIVE OF PATENT LAW 7
NON PATENTABLE INVENTIONS 7
PROCEDURE FOR OBTAINING PATENT 8
TYPES OF PATENTS 9
INFRINGEMENT 11
CRITICISM ON PATENTS (AMENDMENT) ACT, 2005 12

INTRODUCTION TO TRIPS AGREEMENT 14

PRINCIPLES OF TRIPS AGREEMENT 14


Important Terms 14

MAIN FEATURES OF THE AGREEMENT 15


DISPUTE SETTLEMENT 15
NATIONAL TREATMENT 16
MOST FAVOURED NATION TREATMENT 18

MODIFICATIONS IN INDIAN PATENT ACT, 1970 DUE TO TRIPS


AGREEMENT 20
Important Terms 20

EXCLUSIVE MARKETING RIGHTS (1999) 21

AMENDING DEFINITION OF INVENTION 22

APPLICATION REQUIREMENTS 22

COMPULSORY LICENSING 23

RIGHT TO IMPORT AND PARALLEL IMPORT 24

PRE AND POST GRANT OPPOSTION 25

CONCLUSION 28

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COPYRIGHTS AND RELATED RIGHTS UNDER TRIPS 29

INTRODUCTION 29

DEFINITION OF COPYRIGHT 31

OBJECTIVE 31

COPYRIGHT AND NATIONAL ECONOMY 32

TERMS USED IN INDIAN COPYRIGHT ACT, 1957 35

TRIPS AND COPYRIGHT 39

INDIA AND COPYRIGHT LAW 40


RIGHTS IN ARTISTIC WORKS, CINEMATOGRAPH FILMS, AND SOUND RECORDINGS 42
Streamlining Business Practices 44
Strengthening Enforcement and Protecting Against Internet Piracy 46
Protection of Technological Measures 47
Digital Rights Management Information 49

CONCLUSION 51

TRADEMARK 52

DEFINITION OF TRADEMARK 52

PROCESS OF TRADEMARK APPLICATION 52

INDIAN TRADEMARK ACT IN COMPLIANCE WITH TRIPS 53

TRADEMARK INFRINGEMENT CASELETS 54

CASE STUDIES 55

GOOGLE v/s ORACLE 55

HALO v/s PULSE 59

BIBLIOGRAPHY 61

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INTRODUCTION
For nearly last two decades, the two major factors of production- labour and capital
have been dominating the world economy. But know information and knowledge are
replacing the above two mentioned factors as the wealth creating assets. Past few
years have seen majority of wealth creating work transform from being physically
based to being knowledge based. Technology and knowledge are now key factors of
production. Thus, the only comparative advantage a company will have is its
innovation led technology and their ability to derive value from this information. IPR
specifically provide guidance on the ownership rights, financial risks, and rewards
associated with commercialization of any technology. Hence it becomes mandatory
for the organizations to create a IPRs impelled regime. It has also been conclusively
established that the intellectual labour associated with the innovation should be
given due importance so that public good emanates from it. The previous few
decades have seen a quantum jump in research and development (R&D) costs
along with a proportionate jump in investments required for putting a new technology
in the market place. The stakes of the developers of technology have become very
high, and hence, the need to protect the knowledge from unlawful use has become
expedient, at least for a period, that would ensure recovery of the R&D and other
associated costs and adequate profits for continuous investments in R&D.

Another aspect of IPR deals with protecting the work of creators. Intellectual property
rights (IPR) also refers to the legal rights given to the inventor or creator to protect
his invention or creation for a certain period of time. Here the creation could be of
any of the human intellect forms such as artistic, literary, technical, or scientific
creations. These legal rights confer an exclusive right to the inventor/creator or his
assignee to fully utilize his invention/creation for a given period of time. An institution
can also use its facultys (Creators) work for commercialization as a source of
revenue which may help the institute to advance its research capabilities and
increase the funding sources. Having an intellectual property policy also aids an
institution to attract and retain leading faculties and researchers.

On a broader view, IPR aids the economic development of a country by promoting


healthy competition and encouraging industrial development and economic growth. It
can also be said that IPR is a strong tool, to protect investments, time, money, effort

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invested by the inventor/creator of an IP, since it grants the inventor/creator an
exclusive right for a certain period of time for use of his invention/creation.

The roots of laws and administrative procedures relating to IPR can be traced back
to Europe. The trend of granting patents started in the fourteenth century. In
comparison to other European countries, in some matters England was
technologically advanced and used to attract artisans from elsewhere, on special
terms. The first known copyrights appeared in Italy. Venice can be considered the
cradle of IP system as most legal thinking in this area was done here; laws and
systems were made here for the first time in the world, and other countries followed
in due course. Patent act in India is more than 150 years old. The inaugural one is
the 1856 Act, which is based on the British patent system and it has provided the
patent term of 14 years followed by numerous acts and amendments.

The importance of intellectual property in India is well established at all levels-


statutory, administrative, and judicial. India ratified the agreement establishing the
World Trade Organization (WTO). This Agreement, inter-alia, contains an agreement
on Trade Related Aspect of Intellectual Property Rights (TRIPS) which came into
force from 1st January 1995. It lays down minimum standards for protection and
enforcement of intellectual property rights in member countries which are required to
promote adequate and effective protection of intellectual property rights with a view
of reducing distortions and impediments to international trade. The obligations under
the TRIPS agreement relate to provision of minimum standard of protection within
their member countries legal systems and practices.

The agreement provides norms and standards in respect to the following areas of
intellectual property:

Patents

Copyrights and related rights

Trademarks

Geographical Indications

Industrial Designs

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Layout Designs of Integrated Circuits

Protection of Undisclosed Information (Trade Secrets)

Plant Varieties

The report majorly comprises of Copyrights and Patents. It talks about TRIPS- its
objectives, principles followed by conclusion. The report talks about Dispute
Settlement, National Treatment, and Most Favoured Nations Treatment before
talking about Copyrights and Related Issues. The report concludes with Patents and
articles related to it. The report follows a typical pattern of first introducing the reader
to an article, followed by a brief interpretation of the article. The report also gives
definition of important terms wherever necessary.

OVERVIEW OF PATENTS IN INDIA


India is fast emerging as a global R&D hub. Around 30 per cent of the top 1,000
global R&D spending organisations have centres in India. Indias R&D investment
growth is likely to outpace overall Gross Domestic Product (GDP) growth.
Governments R&D spending is expected to increase from the current 0.9 per cent of
GDP to 2 per cent by 2017.

The Government of India plans to involve the private sector in R&D mainly for
sectors like vaccines, drugs and pharmaceuticals, supercomputing, solar energy and
electronic hardware. The government has announced to create a US$ 16 million
fund for setting up R&D units with the help of industries.

India is increasingly seen as a product development destination. Companies are now


offshoring complete product responsibility, including complex services such as
product management. Contract research is a fast-growing segment in the Indian
healthcare industry.

PATENT LAWS IN INDIA


The history of Patent law in India starts from 1911 when the Indian Patents and
Designs Act, 1911 was enacted. The present Patents Act, 1970 came into force in
the year 1972, amending and consolidating the existing law relating to Patents in
India. The Patents Act, 1970 was again amended by the Patents (Amendment) Act,

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2005, wherein product patent was extended to all fields of technology including food,
drugs, chemicals and micro-organisms. After the amendment, the provisions relating
to Exclusive Marketing Rights (EMRs) have been repealed, and a provision for
enabling grant of compulsory license has been introduced. The provisions relating to
pre-grant and post-grant opposition have been also introduced.

An invention relating to a product or a process that is new, involving inventive step


and capable of industrial application can be patented in India. However, it must not
fall into the category of inventions that are non-patentable as provided under Section
3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be filed,
either alone or jointly, by true and first inventor or his assignee.

THE PATENTS ACT 1970 OVERVIEW

MEANING OF PATENT
Patent is an exclusive right which is given to a person for a product or process which
he/she has invented and has a unique functional use.

What is granted as patent is a privilege of making, manufacturing, selling or using


the invention and also a right to authorise other to do so. Those who copy the patent
are liable to pay a penalty. They will be liable to compensate the inventor by paying
damages ascertained in terms of the loss suffered by the investor or the profits
gained by the infringer and not both.

OBJECTIVE OF PATENT LAW


The objective is to encourage new scientific research and industrial progress with the
grant of exclusive privilege for a limited period of time. After the expiry of the period
of monopoly, the patent can be passed to the public domain.

The fundamental principle of patent law is that patent is granted only for an invention
which must be new and useful. This is to say that it must have novelty and utility.

NON PATENTABLE INVENTIONS


1. A method which does not add any significant value

2. A method that is against the law of India or morality or injurious to public


health

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3. A method for agriculture or horticulture

4. A method for medical, surgical or other treatment of human being or animals

5. Invention related to Atomic Energy

PROCEDURE FOR OBTAINING PATENT

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TYPES OF PATENTS
1. Product and process patent

The patent law in India makes distinction between the product patent and process
patent. Where the invention relates to the manufacture of machine, article or
substance which is new and useful and the patent asked for is for the product, such
patent is called product patent where by a new and useful process a new better
cheaper multi-active article or substance is made available the patent asked for is for
the process, such patent is called process patent.

The process patents are granted only for following substances:

Substances which can be used as medicine or drug

Substances produced by chemical processes, patent shall be granted for


the process and methods and not for the substances which are produced
out of it

While the procedure for obtaining patent and all other matter are the same for both
product and process patents, the only difference between them is that while the
terms of the patent in all matters is 14 years, the term of patent for process patent in
respect of substances intended to be used as food or medicine or drug is 7 years
from the date of patent and 5 years from the date of sealing whichever is earlier.

2. Patent of addition

Patent of addition is granted to the applicant who was granted already a patent or
whose application for patent is pending. Such patent may be for improvement over
the original patent or may be a modification of the invention. The patent of addition
cannot be sealed unless the original patent is sealed.

3. Combination patent

When known integers placed together by an inventive step into a working


interrelationship producing a new article or a better or cheaper article, then there is a
patentable subject matter. Mere collection of more than one integer not involving any
inventive step is not patentable. Even where the change is very slight but the result

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of combination is significant or significant improvement then there exists a patentable
substance to be considered as a combination patent.

4. Selection Patent

When the selected members chosen out of patented substance and they are
selected for their special characteristic and the inventive step results in a new
substance, the patent that will be granted is selection patent. There are three
characteristics which determine whether the patent asked for is a selection patent or
a combination patent, they are:

Selection from members of the substance already patented must be based on


some substantial advantage. The whole of selected members must possess
the advantage. The selected members must have quality of special character
which may be peculiar to the selected group.

The inventive step in selection patent consists in the exercise of intellectual


faculty in choosing some of the advantages of the patented substances and
bringing out a substance which is new and having special advantage.

The principle involved in combination patent and selection patent are


applicable to mechanical patents also.

5. Convention patent( National treatment- TRIPS agreement)

With a view to fulfil the treaty obligation incurred with the convention countries, the
Government by a notification specifies the names of countries which give to Indian
citizen the same facilities in relation to patents as they give to other nationals and
offers to the nationals of those convention countries facilities in relation to patents.
Such notification may cover the whole field occupied by the Indian patent Act or only
the part which the conventional countries feel is to be granted to Indian citizens. The
application which is made in line with the said notification b any national of a
convention country in India for patent or license of an Indian patent either by himself
or in association with Indian citizens, is called convention application.

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6. Sealed Box Patent

This is an expression which was used for application of patents for medicines and
drugs regarding the way they were treated from January 1995-2005 within which the
patents were kept in a sealed box until and unless the applicant makes a request to
grant him Exclusive Marketing Rights for the product for which he/she made
application for product patent. He will be given a permission to sell his product in
India for a period of five years.

INDIA IS ONE OF THE COUNTRIES WHICH ONLY GRANT PROCESS PATENTS


IN PHARMACEUTICALS

Due to this there arose a need to of making temporary law to enable the controller to
receive application for even product patents in medicines and drugs and also to
grant Exclusive Marketing Rights.

INFRINGEMENT
Rights of the patent holder are the rights of monopoly exclusive to him in the patent.
He, who breaches the monopoly, is said to infringe the rights of the patent holder.
The rights of monopoly granted to the patent holder consists in his exclusive right, to
make, use, exercise, sell or distribute the articles manufactured in accordance with
the patent or manufactured in accordance with the patent process. Nobody else can
use patented invention or patented process for manufacturing the articles or
substances.

A person who uses the patented invention or a patented process or the person who
produces the articles and substances, for which there exists a patent, commits
infringement. A person or institution which uses the patented invention for research
purposes does not commit any infringement. Infringement of patent is not a criminal
offence.

WTOs Agreement

The WTOs Agreement on TRIPS makes it mandatory for all countries to establish
standards for intellectual property protection. This Agreement came into effect on
1995 of all developing nations including India, needed to fulfil the above
requirements by 2005. While the developed countries were to implement this

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requirement by 1996, the schedule for the least developed ones gave then time till
2016(now further extended).

CRITICISM ON PATENTS (AMENDMENT) ACT, 2005


As the Patent Act 1970 only gave access to grant process patents for drugs,
this gave small scale industries to make copy of drugs produced in America
and abroad which they could export and sell at cheaper rate. This cheaper
rate was due to the fact that the material cost of production for the drug wasnt
too high as they knew the final product and the process applied was different
than the one patented, but as the composition was known there wasnt much
cost involved in infrastructure and research and development.

At present, there is enormous scope for investment of capital, both indigenous


and foreign for manufacturing within India. Whats more, Indias vast scientific
manpower can be harnessed to make the industry an innovator of new drugs
at low cost. This will help the Indian drug industry take advantage of product
patents, instead of making it dependent on the development of drugs abroad
for producing copies. The latter option, encouraged by 1970 Act is economic
tailism, which a nation can embrace only at the risk of undermining its own
technological potential.

.The major objection taken by India over not adapting to the product patent
was because the big multi-nationals use to exploit the price of their patents in
the monopolistic market due to limited monopoly. Thus, the patent monopoly
granted by the Intellectual Property right (IPRs) system is not only different
from but also in a sense a counterweight to the power of big firms, especially
in a developing country. Also, if the cost of research and development is
exaggerated as well develop new drugs at non-exaggerated costs and
capture markets.

However, one valid objection to the reform of the Indian Patent Law is the
introduction of Exclusive Marketing Rights (EMRs) in the period of transition
(10years from 1995 to the product patent regime) in tune with the TRIPs
agreement.

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The new patent ordinance expands the patentability criteria from drugs and
agro-chemicals to other fields of technology, such as embedded software.
One of the major provisions introduced was regarding grant of compulsory
licence, which means that Indian manufacturers will be able to manufacture
and export patented medicines to countries, which have insufficient or no
manufacturing capacity. The introduction of a provision to enable grant of
compulsory licence for export of medicines to the countries that have
insufficient or no manufacturing capacity to meet emergent public health
situations, is in accordance with the Doha Declarations on Trade Related
Intellectual Property rights(TRIPs) and public health

The time limit for giving requests for examination has been reduced to 36
months from 48 months earlier. Another important provision made in the Act,
is that the patent will be available from the day when the patent is granted and
not when it is published. This means that many Indian Companies will be
saved from infringement cases by the multinational majors, who might get
patents for drugs which Indian companies are selling.

Another important provision relates to the extension of patents in case of


incremental innovations. It means that the companies, which come up with
new usage of the same product may not get patent for the new usage.

Software would continue to be copyright-protected, embedded software that


has technical applications can now be patented.

Patent applications for all inventions made by anybody resident in India (by
Indians or otherwise) have to be now filed in India, first, before filling
elsewhere in the world.

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INTRODUCTION TO TRIPS AGREEMENT
The TRIPS Agreement went into effect from 1 January 1995; it was formed by the
member nations of the WTO in order to have common comprehensive standards for
protection of rights of Intellectual Properties. The areas which are covered by TRIPS
are:

1. Copyright

2. Patents

3. Trademarks

4. Geographical designs

5. Industrial designs

6. Patents including that for new varieties of plants

7. Undisclosed information including trade secrets(under contract law for India)

PRINCIPLES OF TRIPS AGREEMENT


The members while formulating or amending their laws for IP have right to adopt
appropriate measures so as to protect the public interest. The
formulations/amendments should be in line with the social, economic, and
technological development. In formulating or amending their national laws and
regulations on IPRs, Parties have the right to adopt appropriate measures to protect
public morality, national security, public health and nutrition, or to promote public
interest in sectors of vital importance to their socio-economic and technological
development.

Important Terms
Consultation: To meet a professional or a set of professional people to gain
information as they possess knowledge for the field you are looking to have
information for.

Nullified: of no use or value.

Consensus: a unanimous decision achieved through negotiations.

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Intellectual property: An intangible property which is the result of some
creativity.

Disguised restriction on trade: The restriction or dumping duties which is put


by a member on other member simply because they want to secure the
interest of products within their own boundaries without giving substantial or
true facts of putting up the barriers of restriction and dumping.

MAIN FEATURES OF THE AGREEMENT

DISPUTE SETTLEMENT
In case of a situation of dispute both the parties have to give each other adequate
amount of consideration for consultation in which each party can consult any
contacting party or parties for the matter affecting the operation of their agreement. If
a contracting party feels that certain benefits which it had to gain from the agreement
were getting nullified due to improper participation of the other party, or the other
party not doing its share of work properly or any other reason, they can make written
proposals to the other contracting party/parties which will have to be considered by
these other parties as friendly and highly important to change their ways of doing
things. The laws mentioned shall hold for all situations except for the ones for whom
some specific instructions are provided to deal with their situations.

However a party which feels its benefits are getting nullified cannot send proposals
to another party in the contract for reasons like application of the product/process
done by the other party in the contract up to some extent or any other reason. Until
the situation is at least 5 year old from the date of entry of the contracting parties in
the WTO agreement, or else the above mentioned situations wont apply for as a
reason to send considerations to the other party.

The period of 5 years would be used by the council of TRIPS to examine the
complains by the party which feels its benefits are getting nullified due to other party
in the contract doing application of the product/process done by the other party in
the contract up to some extent which was being worked on by both the contracting
parties or any other reason. The TRIPS council shall send their recommendations
to the Ministerial Conference and any decision of whether to approve the
recommendations made by the party which feels its benefits are getting nullified or

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not to approve would be taken up by a consensus. The final recommendations which
get approved through consensus by the Ministerial Conference shall be effective for
all the members without any further formal acceptance process.

Caselet: Pakistans Dispute Settlement Case on Combed Cotton Yarn Exports


to the United States.

On 24 December 1998 the government of Pakistan received a Call Notice from the
US government for consultation regarding the establishment of quantitative restraints
on Pakistani exports of combed cotton yarn (Category 301). The basis of this was
the allegation on the part of the United States that the exports of Pakistan were
causing verifiable harm to the US textile sector. The legal grounds employed by the
United States were the transitional safeguard measures sanctioned under Article 6 of
the Agreement on Textiles and Clothing (ATC) of the WTO. This was the first time in
the trade history of Pakistan that a case went through all the stages of the WTO
dispute settlement mechanism.

After the failure of bilateral consultations as the first stage of the case, Pakistan had
to take the case to the Textile Monitoring Board (TMB) and finally to the Dispute
Settlement Board (DSB) of the WTO. Although the eventual outcome was in
Pakistans favour, the pursuit of a positive decision was a challenging task
manifested by an array of problems relating to co-ordination and co-operation
between the public and the private sectors. The objective of this case study therefore
is not just to narrate the events which occurred in this case but also to highlight the
various obstacles faced by the government and the business players in contesting
the case at each stage of the dispute settlement process. This is done so as to
underline the lessons that Pakistan learned about both its trade policy administration
and the role and value of the WTO in the management of an important dispute.

NATIONAL TREATMENT
All the members shall grant equal access to members of other nationals as they
would to the people of their own nationals when it comes to the protection of
intellectual property. These grants will be in exceptions to the ones already provided
in Paris Convention(1967), the Berne Convention(1971), the Rome Convention or
the Treaty on Intellectual Property in Respect of Integrated Circuits. In respect of the
performers, producers of the phonograms and broadcasting organisations, these

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rules only apply for the rights which are given to them under the TRIPS agreement. If
a member chooses to avail himself of the rights which are specified in Article 6 of the
Berne Convention (1971) regarding protection of the IPR in the country of their
citizenship or Paragraph 1(b) Article 16 of the Rome Convention regarding the
broadcasting on television against the payment rights in a free public zone then they
will have to give proper clarification of the notifications which are provided in those
resolutions to the Council of TRIPS to avail their advantages

The members can avail themselves of the advantages of the exceptions which
are related to judicial or administrative procedures. These exceptions can also
include the designation of the address or their service along with the exception of
appointing an agent for themselves into the jurisdiction of a member. However it has
to be taken care that these exceptions can only be availed for places where it is in
line with their laws and does not make this agreement inconsistent in that place. It
needs to be also taken care that these exceptions are exercised in a way that they
do not end up being a reason for constituting disguised restriction on trade

Caselet: NAFTA trucking case

The NAFTA Trucking decision is the first major case decided under NAFTA's
Chapter Twelve (on services). Cross-border trucking is not just any service - it is
perhaps the essential service in functionally establishing the North American market
NAFTA seeks to create. The Trucking panel found itself in rather untested waters as
it confronted NAFTA's National Treatment principle in the context of services. It
succeeded, more or less well, in transporting notions established in GATT and
NAFTA trade-in-goods jurisprudence to the relatively unexplored service regime.
That said - it is not clear how well some of these principles transfer. The concept of
National Treatment is well developed in the treatment of goods. Applying National
Treatment principles to services, such as cross-border trucking, is problematic, at
least on first impression. The NAFTA treaty language tests whether the treatment
accorded to Foreign Service providers is "no less favourable" than the treatment
accorded national service providers in "like circumstances." This language is meant
to be a functional analogue to the well-worn GATT test used to analyse whether
imported and domestic goods are being treated alike under national regulation.

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The express commitments made by the United States to phase-out the restrictions
on access for Mexican trucking firms were difficult for the Trucking panel to ignore.
The challenged U.S. measure (a categorical denial of access to all Mexican trucks)
was so beyond the pale that the panel did not have to reach in finding the United
States to be in noncompliance with its NAFTA obligations. But the panel used the
occasion of the Trucking decision to provide some useful guidance as to the nature
of NAFTA's service obligations. The three observations about the operation of the
National Treatment principle as it is developed in the Trucking decision:

A NAFTA Party's National Treatment obligation with respect to services may


be "harder" than is the case with respect to goods. Pacta sunt servanda
applies with more force where the operation of the National Treatment
principle is precisely negotiated with respect to a specific service sector.

In testing host country regulation of a Foreign Service provider for National


Treatment, the design and efficacy of the regulatory scheme of the home
country of the service provider is relevant.

A perception of protectionist intent will doom arguments seeking to justify


departures from National Treatment. Nothing is new under the sun here.

MOST FAVOURED NATION TREATMENT


For protection of intellectual property, any advantage or favour, privilege or immunity
which is given by a Member to the nationals of any other country, those favours,
immunities, privileges will be granted to all the nationals of all other Members
unconditionally. The advantages, favour, privileges which shall not be considered
under this obligation to be granted by a Member if they are as follows:

I. If the advantage that a Member has asked for has nothing to do with the
protection of intellectual property but is something which shall gain them
advantage through law enforcement of a general nature.

II. If the advantage that the member has asked for is as a provision in Berne
Convention (1971) or the Rome Convention which states that the treatment
which is asked for is not the function of the national treatment but is a part of
treatment granted in another country.

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III. If the advantage that the member has asked for is in respect of the rights of
performers, producers of phonograms and broadcasting organisations which
are not a part of this agreement.

IV. If the advantage that the member has asked for is from the international
agreement and is in line with the protection of intellectual property, which was
entered into force before the WTO agreement entered into force. Provided
that such an agreement was notified to the Council of TRIPS and does not
cause any discrimination towards the nationals of other Members.

Caselet: Emilio Augustn Maffezini v. Kingdom of Spain

The Argentine claimant in Maffezini sought to avoid the requirement in the Argentina-
Spain BIT that disputes first be submitted to a Spanish court and that the claimant
wait 18 months after that lawsuit was filed to submit the dispute to arbitration. The
claimant argued that the Chile-Spain BIT contained no such requirement and,
therefore, Chilean investors in Spain received more favorable treatment to which the
claimant was entitled under the MFN clause in the Argentina-Spain BIT. Spain
argued that, in extending MFN privileges with respect to all matters subject to this
agreement, the treaty parties intended to refer only to substantive investment
protections, not to dispute resolution procedures provided in the BIT. Based on the
broad MFN language in the Argentina-Spain BIT and relying on Ambatielos, the
Maffezini tribunal concluded that there are good reasons to conclude that today
dispute settlement arrangements are inextricably related to the protection of foreign
investors, as they are also related to the protection of rights of traders under treaties
of commerce, and therefore that dispute resolution procedures from one BIT could
be imported into another BIT through its MFN clause.

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MODIFICATIONS IN INDIAN PATENT ACT, 1970 DUE TO
TRIPS AGREEMENT

Important Terms
"assignee": includes an assignee of the assignee and the legal representative
of a deceased assignee and references to the assignee of any person include
references to the assignee of the legal representative or assignee of that
person .

"capable of industrial application": in relation to an invention, means that the


invention is capable of being made or used in an industry.

"Controller": Controller General of Patents, Designs and Trade Marks.

"convention country": Any country, which is a signatory or party or a group of


countries, union of countries or intergovernmental organisations which are
signatories or parties to an international, regional or bi-lateral treaty, convention
or arrangement to which India is also a signatory or party and which affords to
the applicants for patents in India or to citizens of India similar privileges as are
granted to their own citizens or citizens to their member countries in respect of
the grant of patents and protection of patent rights shall be a convention country
or convention countries for the purposes of this Act.

"international application": means an application for patent made in accordance


with the Patent Cooperation Treaty.

"invention": means a new product or process involving an inventive step and


capable of industrial application.

"inventive step": means a feature of an invention that involves technical


advance as compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious to a person
skilled in the art.

"new invention": means any invention or technology which has not been
anticipated by publication in any document or used in the country or elsewhere
in the world before the date of filing of patent application with complete

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specification, i.e., the subject matter has not fallen in public domain or that it
does not form part of the state of the art.

"patent": means a patent for any invention granted under this Act.

"patented article" and "patented process": means respectively an article or


process in respect of which a patent is in force.

"patentee": means the person for the time being entered on the register as the
grantee or proprietor of the patent.

"pharmaceutical substance": means any new entity involving one or more


inventive steps.

EXCLUSIVE MARKETING RIGHTS (1999)


Inclusion of Chapter IV A dealing with exclusive marketing rights: First of all an
application needs to be examined by the controller if it is an invention under section
3 and 4, only then a controller can proceed to grant and EMR. Section 24(1)(b)
authorises the grant of an EMR for a period of 5 years for any invention made in
India on or after January 1, 1995. This was initially taken to be contrary to the
National Treatment clause of the TRIPS agreement as its on the basis of place of
invention. This was argued by the fact that as India only has process patents (as
product patents were not yet in place) and so it could be disadvantageous to the
applicant.

However in this case for substances which are used as medicines and drugs,
Section 24B(2) says that if they are being used before filing the claim for a patent
then these substances wont be regarded as EMR infringement, i.e. they can still be
claimed for EMR even if they have been used before without claiming for their
patents. This prior use of the substances should exclude use by third party.

Caselet: Ajanta Pharma vs Cialis

The Calcutta High Court's order in late August came following a petition filed by
Ajanta Pharma, ordering that Eli Lilly should not be granted an EMR. Cialis is the
brand name under which Eli Lilly, the original patent holder, markets the erectile
dysfunction drug tadalafil. Half a dozen Indian pharmaceutical companies have

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already launched their versions of the drug. Eli Lilly is planning to initiate legal action
to prevent Indian drug makers from marketing the drug. In addition to Ajanta, local
producers of the drug include Ranbaxy, Cipla, Zydus Cadila and Unichem. Novartis
was the first company in India to be granted an EMR by the Indian Patent Office for
its blood cancer drug Glivec. But the Patent Office's decision had domestic drug
companies up in arms, as several generic makers produced chemical equivalents of
the same drug at lower prices. Natco, one of the manufacturers of the drug,
challenged the patent office's decision and filed a case in the New Delhi High Court.

AMENDING DEFINITION OF INVENTION


The Second Amendment Bill amends the definition of invention in Section 2(j).
Under the IPA, an invention, has to be a new and useful art, process, method or
manner of manufacture, machine, apparatus or other article or substances produced
by manufacture. The courts, however, had already defined the terms new and
useful. The Supreme Court, in 1982, summarized the requirements of a patentable
invention as follows:

It has to qualify under the test for new and useful, which is to say utility and
novelty;

It must be the inventors own invention as opposed to a mere verification of


what was already known before the date of the patent; and

An inquiry into whether a particular process of manufacture involves novelty and


an inventive step to qualify as an invention is a mixed question of law and fact
dependent upon the circumstances of each case. On the other hand, the
definition introduced in the second amendment requires that an invention should
have an inventive step and is capable of industrial application which are
synonymous with non-obvious and useful, respectively (This was in line with
Article 27.1 of TRIPS Agreement).

APPLICATION REQUIREMENTS
Section 8(d) of the proposed bill amends Section 10 of the IPA (relating to the
specification) and requires an abstract of the technical information of the patents.
However, there is neither a definition of the term abstract nor is there any criterion
for the kind of technical information that is required. Regardless of much the IPA is

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amended to suit TRIPS, unless the law and the rules relating to claims and
specifications including drafting, interpretation, etc. are harmonized or, at least
clarified, the grant of a patent will always rest on very subjective factors. Section 8
also requires identification of the source and origin of the biological material in the
specification. Although such a requirement is not envisioned under TRIPS, it does
not specifically prohibit Members from seeking the source and origin of biological
material. This provision will go a long way in avoiding the turmeric and neem type
disputes for India.

COMPULSORY LICENSING
Chapter XVI of the IPA provides for compulsory licensing - as a necessary safeguard
for protecting the public interest. Three years after a patent is sealed, any interested
party can allege that the invention is not reasonably available to the public and can
request the grant of a compulsory license. The bill also amends Section 90 which
deemed that reasonable requirements of the public are not satisfied if the invention
is not manufactured in India or the patentee refuses to grant a license, thereby
removing a presumption that requirements of the public are satisfied based on local
manufacture. Under Section 84, a specific inclusion has been made enabling third
parties to seek for a compulsory license on the ground that the invention is not
manufactured in India. Similarly, in Section 89, the bill introduces non-working in
India as a specific criterion for the revocation of the patent. The bill also introduced a
checking mechanism that requires an applicant for a compulsory license to prove
that she approached the patentee with reasonable terms for a license. Similarly,
where the patent holder imposes a condition for a grant back, prevention of
challenges to the validity of the patent is deemed to be against public interest. This is
a very welcome provision and is absolutely required considering that the bargaining
power of an individual or company, compared with a patent holder, is always less.
The bill provides for an appeal before an Appellate Board, on decisions of the
Controller, including a grant of a compulsory license. Section 95A, as introduced in
the bill, also provides for revocation of the compulsory by the Controller himself if the
circumstances that gave raise to it ceases to exist.

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Caselet: Natco vs Bayer

India joined TRIPs and the deadline for complying with TRIPs obligation was 1st
January, 2005. The Patents (Amendment) Bill, 2005, introduced in the Parliament in
March, 2005 with the objective of making the Patents Act compatible with India's
international obligations, particularly under the Agreement on Trade Related Aspects
of Intellectual Property Rights (TRIPS Agreement). Article 27.1 of the TRIPs
Agreement requires WTO members to make patents available for any inventions,
whether product or process, in all fields of technology w, which includes patents for
pharmaceutical products or processes. At the same time, TRIPs provides a
reasonable fetter on the rights of the Patentee in Article 30 and 31 allowing member
countries to enact provisions for granting compulsory license to prevent the abuse of
patent right. Hence, under the present amendment, the need for access of affordable
medicines to Indian people at large, encouraging innovation by Indian industry, its
current capabilities in R&D, and balancing of India's obligations under international
agreements with the wider public interest was given primary importance. Further,
every effort was made to prevent the grant of frivolous patents and 'ever-greening' of
patents. In March 2012, India's controller of patents granted the country's first
compulsory licence in the case of Natco Pharma Limited vs Bayer Corporatio to
Natco Pharma Limited.

RIGHT TO IMPORT AND PARALLEL IMPORT


Under the regime of the Indian Patent Act the patentee or licence holder was not
given a right to import their product in India so as to encourage local manufacturing.
But to comply with TRIPS Agreement now the bill introduced in Section 107A (b)
suggests that imports can be done in India by patent holder or by the person who
holds the licence and it wont be regarded as infringement. This favours the licensee
to reproduce the product and sell it in some other international market at lower cost
(parallel import). Section 48 vests the right to import only in the hands of the patent
holder. That is why section 107A (a) (b) extensively talk about who can be given the
right to import a patented product/process so that the basic objective of TRIPS
agreement is not violated through parallel import.

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Caselet: Kodak v/s Jumbo-Markt

The Supreme Court stated more recently that under the Swiss Patent Act, a patent
holder has the right to oppose parallel imports based on his patent right (Kodak v
Jumbo-Markt, BGE 126 III 129). Reversing the Commercial Court of Zurich's first
instance judgment, the Supreme Court held that the principle of national exhaustion
applies to Swiss patent law. Therefore, the parallel import of patented Kodak
cameras and patented Kodak films from the United Kingdom to Switzerland
constituted an infringement of Kodak's Swiss patent rights.

PRE AND POST GRANT OPPOSTION


Pre-grant opposition: Section 25(1) of the Patent (Amendment) Act 2005 provides
provisions for pre grant opposition of Patent. Under this provision any person or any
third party or Government may challenge the application of grant of patent and
inform to the controller of Patents for opposition, in writing against the grant of a
patent after the application for a patent has been published but before the grant of a
patent a patent. Pre-grant opposition acts as a defensive shield to confirm the
validity of the patent applications before patents are granted to them. Furthermore
pre grant opposition proceeds as a business approach, where opponents take it as a
golden opportunity for opposing the unlawful protective rights.

Pre-grant opposition can be made on the grounds listed under section 25(1)(a) to (k)
of the Patent Amendment Act, 2005:

Wrongfully obtaining the invention.

Anticipation by prior publication.

Anticipation by prior date, prior claiming in India.

Prior public knowledge or public use in India.

Obviousness and lack of inventive step.

Non patentable subject matter.

Insufficiency of description of the invention.

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Non-disclosure of information as per the requirement or providing materially
false information by an applicant.

Patent application not filed within 12 months of filing the first application in a
convention country.

Nondisclosure/ wrong mention of source of biological material.

Invention anticipated with regard to traditional knowledge of any community,


anywhere in the world.

Post-grant opposition:

Post grant opposition may be filed at any time after the grant of patent but before the
expiry of a period of one year from the date of publication of grant of the patent.
Under this provision any person interested may give notice of opposition to the
Controller in the prescribed manner on any of the grounds mentioned in section 25 of
the Patent (Amendment) Act 2005. Section 2(1)(t) of Indian patent act defines
"person interested" as including a person engaged in, or in promoting, research in
the same filed as that to which the invention relates. In addition, interested person
may also include any organization that has a manufacturing or trading/ financial
interest in the goods related to the patented product.

Similar to the pre-grant opposition, a post-grant opposition may be filed on a number


of grounds as specified under section 25(2) of the Act. It is notable that many of the
grounds are similar to the grounds required for filing pre-grant opposition.

Caselet 1: Novartis AG vs. Natco Pharma Ltd

An application for patent was filed in India on 17th July, 1998 by Novartis AG,
Switzerland, claiming Switzerland priority date of 18th July, 1997. Upon publication,
the grant of patent was opposed by Natco Pharma Ltd., India on 26th May, 2005.
The grounds for opposition were:

Anticipation by prior publication.


Lack of inventive step.
Non-patentability under section 3(d).
Wrongfully claiming the priority.

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The title compound was already known in a US patent (filed in 1993).The US patent
claimed a pharmaceutically acceptable salt of the base compound. Another
Document, "Nature Medicine" (5th May, 1996) also described the title compound.
Also, the claimed salt inherently existed in the most stable form of the salt. Hence,
the claims of the application for the product and process in respect of the title
compound stood anticipated by prior publications. Additionally, based on section 3(d)
the product claim amounted to a mere discovery of the new form of the known
substance. Further, the application had claimed Swiss priority, but Switzerland was
not a convention country on the date of filing in Switzerland. Hence, no priority of
Swiss application could be claimed in respect of the Indian application.

In view of the above findings and arguments the Controller ruled that the above
patent application cannot proceed for grant of patent.

Caselet 2: Hindustan Lever Ltd. vs. Godrej Soaps

In another landmark case a patent filed by Hindustan Lever Ltd. on 14th Oct., 1992
in India was opposed by Godrej Soaps Ltd. The patent had two priorities of UK dated
14th Oct, 1991 and 14th July, 1992 and was granted on 18th May, 1996 in India. The
grounds of opposition were:

Prior publication

Prior public use and prior public knowledge

Obviousness and lack of inventive step

Non-patentability

Insufficiency and clarity of description

The applicant has failed to disclose to the Controller the information required by
section 8 or has furnished the information which in any material particular was false
to his knowledge. After the hearing it was concluded that the teachings of the cited
exhibits were insufficient to prove the grounds of opposition mentioned above. The
applicant amended the claims and specifications to make their point clear and to
overcome the opponent's allegations. After considering notice of opposition,
statements and evidences from both of the parties and hearing, the opposition was
dismissed.

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CONCLUSION
Monopolists may have much less incentive to innovate than they would if they had to
compete. Modern research has shown that the great economist Joseph Schumpeter
was wrong in thinking that competition in innovation leads to a succession of firms. In
fact, a monopolist, once established, may be hard to dislodge, as monopoly can use
its market power to squelch competitors. Such abuses of market power discourage
innovation. Moreover, so-called patent thickets, the fear that some advance will
tread on pre-existing patent, of which the innovator may not even be, aware- may
also discourage innovation. The need to prevent excessive monopoly power has led
anti-trust authorities to require compulsory licensing. Unfortunately, the trade
negotiators who framed the intellectual-property agreement of the Uruguay trade
round of the early 90s (TRIPS) were either unaware of all of this, or more likely,
uninterested. Intellectual property is important, but the appropriate intellectual
property regime for a developing country is different from that for an advanced
industrial country. The TRIPs scheme failed to recognize this. In fact, intellectual
property should never have been included in a trade agreement in the first place, at
least partly because its regulation is demonstrably beyond the competency of trade
negotiators. Besides, an international organization already exists to protect
intellectual property, Hopefully, in WIPOs reconsideration of intellectual property
regimes, the voices of the developing world will be heard more clearly than it was in
the WTO negotiations; hopefully, WIPO will succeed in outlining what a pro-
developing intellectual property regime implies; and hopefully, WTO will listen; the
aim of trade liberalization is to boost development, not hinder it.

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COPYRIGHTS AND RELATED RIGHTS UNDER TRIPS

INTRODUCTION
The origin of copyright had a link with the invention of printing press by
Gutenberg in the fifteenth century.

With the easy multiplying facility made possible by the printing press, there was
voluminous increase in the printing and distribution of books which, in turn, led to
adoption of unfair practices such as unauthorised printing by competing printers.

Though piracy was born by the end of the fifteenth century, it was only in 1710
the first law on copyright in the modern sense of the term came into existence in
England.

The law which was known as `Queen Anne's Statute' provided authors with the
right to reprint their books for a certain number of years. The 1710 law was
confined to the rights of authors of books only, and more particularly the right to
reprint. It did not include other creative works such as paintings, drawings etc.
which also by that time became targets of piracy, in addition to other aspects
relating to books (e.g. translation, dramatization etc.).

To overcome this problem a new enactment namely `Engravers Act' came into
existence in 1735.

There followed a few more enactments in the subsequent periods and ultimately
Copyright Act 1911 saw the light of the day.

Developments in this regard also took place in many other advanced countries,
notably among them being France, Germany, and the USA. In France, a
copyright decree was adopted in 1791 which sanctioned the performing right
and another decree of 1793 established authors exclusive right of reproduction.
In Germany authors rights were recognised by a Saxon Order dated Feb 27,
1686. In America the first federal law on copyright, the Copyright Law 1790
provided protection to books, maps, and charts.

The Berne Convention for the Protection of Literary and Artistic Works, 1886
marked the era of protection of copyrighted works of the nationals of its member

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States internationally, which not only recognized but also regulated the rights of
the copyright owner. This was the first international convention on copyrights.
The Berne Convention recognized certain principles that still find place in the
TRIPS Agreement, a multilateral agreement dealing with the Intellectual property
rights and adopted by all the WTO member nations.

The establishment of international bureau contributed a lot to carry out


administrative works. In 1893, on its merger with the international bureau
established under the Paris Convention and formation of a United International
Bureaux for the Protection of Intellectual Property, called BIRPI, a predecessor
of the World Intellectual Property Organization, the importance of intellectual
property grew.

A major landmark in the international economic relations was achieved with the
signing of the Trade Related Aspects of Intellectual Property Rights (TRIPS)
administered by the World Trade Organization (WTO).

India is a signatory to the WTO and therefore, bound to amend its Intellectual
Property (IP) enactments in conformity with the WTO Agreements, including the
TRIPS Agreement of the WTO.

India has amended its various such laws including laws on Copyrights in
consonance with the TRIPS Agreement.

The Copyright Act 1957 has been amended five times in 1983, 1984, 1992,
1994 and 1999 to bring it in conformity with the TRIPS.

The Copyright Act has further been amended in 2012 for the sixth time where
certain efforts have been made to enlarge the ambit of the copyright by
conferring copyright to those who were earlier not included in the definition of the
author of literary works that shall now include lyricists, scriptwriters, music
composers, etc., as well.

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DEFINITION OF COPYRIGHT
Copyright is a right given by the law to creators of literary, dramatic, musical,
and artistic works and producers of films and sound recordings.

It includes rights of reproduction, communication to the public, adaptation, and


translation of the work.

OBJECTIVE
Copyright ensures certain minimum safeguards of the rights of authors over their
creations, thereby protecting and rewarding creativity.

Creativity being the keystone of progress, no civilized society can afford to


ignore the basic requirement of encouraging the same as 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, films and
computer software, creates an atmosphere conducive to creativity, which
induces them to create more and motivates others to create.

The Berne Convention protected literary and artistic works as the copyright
works. It is not a single right but a bundle of rights enjoyed by the owner of such
right by which he can oust all others from copying his work, or doing any other
acts such as reproduction, sale, adaptation, etc., which according to copyright
law could be done exclusively by him.

However, that doesnt mean that absolute monopoly exists, but protection to the
work subsists for a limited period after which it passes into the public domain.

The copyright law does not protect the idea of a person as such but protection is
given to original expression of such idea, thought, concept, theme or plot in
some concrete form.

If copyright protection is applied rigidly, it can hamper progress of the society.

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However, 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.

To strike an appropriate and viable balance between the rights of the copyright
owners and the interests of the society, there are exceptions in the law.

Many types of exploitation of work which are for 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 made


use of unauthorized.

What is substantial varies from case to case. Often, it is a matter of quality


rather than quantity.

For example, if a lyricist copies a very catching phrase from another lyricists
song, there is likely to be infringement even if that phrase is very short.

COPYRIGHT AND NATIONAL ECONOMY


Besides protecting creative potential of the society, copyright contributes to a
nation on economic-front as well. The copyright based industries together
generate huge employment in the country of its origin.

The national exchequer benefit from the contribution made by these industries in
the form of excise duty, sales tax, income tax etc. from the production and sale
of copyrighted products.

Given the natural demand for such products from across the national boundaries
exports help consolidate country's foreign exchange reserves position.

While there are no two views on the economic importance of copyright, it is not
easy to assess it properly.

The first and the foremost difficulty arise in defining the copyright based
industries. In simplistic term copyright industries include all those activities which

32 | P a g e
directly or indirectly depend on copyrighted materials for their commercial
success.

But the range of activities that come under the subject of copyright is so wide
that the task of defining the copyright industry becomes difficult. These
industries are drawn from many different industry classifications and they are
also not readily identified as an industry in the usual sense. This makes the
issue more complicated.

However, there is a consensus on the activities that come under copyright


industries. It includes printing and publishing of books, newspapers, journals &
other periodicals, production, and sale of audio products (Cassettes/CDs),
production & distribution of cinemas, videos and cables, creation of computer
software & databases and their distribution, radio and television broadcasting,
advertising, photography, dramatic and musical performances etc.

In India, no estimates are available to ascertain contribution of copyright based


industries to the national economy. However, given the rich cultural background
and huge population of the country, it is believed that copyright industries
collectively contribute enormously to the economy.

India is the largest audio cassette market in the world by having sold more than
350 million audio cassettes & CDs and the industry's sales turnover stood at Rs.
105,605 million.

India's software industry is showing a phenomenal growth as the software


industry in India with its size of Rs. 63,100 million achieved a remarkable growth
rate of above 50% over its previous year's performance.

During the same period India could export software worth Rs. 39,000 million and
the software industry provided employment to more than 160,000 people.

The publishing industry is also quite large in the country. About 11,000
publishers are engaged in producing more than 57,000 new titles every year, of
which about 22% is published in English language.

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India exported Rs.1120 million worth of books and other printed material. A
sizeable portion of this (about 29.1 per cent) went to advanced countries in the
Europe.

The print media in India comprising daily newspapers and numerous other
periodicals e.g. weekly, monthly, and annual journals/magazines is huge.

With a total circulation of 10,57,08,191, the turnover from print media is


estimated to be as high as Rs. 8000 crores.

The other core copyright industry namely film and video, also occupies an
important place in the country.

Film is considered as one of the best means of entertainment for the common
people. India annually produces more than 600 films in major languages such as
Hindi, Telugu, Tamil, Malayalam and Kannada. The demand for cable & satellite.

TVs are also on the rise. It is estimated that during 1996 cable connection in the
country had reached about 20 million houses covering approximately 10 per
cent of the total households in the country.

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TERMS USED IN INDIAN COPYRIGHT ACT, 1957
I. In this Act, unless the context otherwise requires

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;

(iv) in relation to a musical work, any arrangement or transcription of the work; and

(v) in relation to any work, any use of such work involving its re-arrangement or
alteration;

b) work of architecture means any building or structure having an artistic character


or design, or any model for such building or structure;

c) artistic work means,

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an


engraving or a photograph, whether or not any such work possesses artistic
quality;

(ii) a work of architecture; and

(iii) any other work of artistic craftsmanship;

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) 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;

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e) broadcast means communication to the public

(i) by any means of wireless diffusion, whether in any one or more of the forms of
signs, sounds or visual images; or

(ii) by wire,

and includes a re-broadcast;

f) cinematograph film means any work of visual recording and includes a sound
recording accompanying such visual recording and cinematograph shall be
construed as including any work produced by any process analogous to
cinematography including video films;

g) "commercial rental" does not include the rental, lease, or lending of a lawfully
acquired copy of a computer programme, sound recording, visual recording, or
cinematograph film for non-profit purposes by a non-profit library or non-profit
educational institution. Explanation - For the purposes of this clause, a "non-profit
library or non-profit educational institution" means a library or educational
institution which receives grants from the Government or exempted from payment
of tax under the Income-tax Act, 1961 (43 of 1961)

h) "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. Explanation - For the purposes of this clause,
communication through satellite or cable or any other means of simultaneous
communication to more than one household or place of residence including
residential rooms of any hotel or hostel shall be deemed to be communication to
the public;

i) composer, in relation to a musical work, means the person who composes the
music regardless of whether he records it in any form of graphical notation;

j) computer includes any electronic or similar device having information-processing


capabilities

k) computer programme means a set of instructions expressed in words, codes,


schemes or in any other form, including a machine-readable medium, capable of
causing a computer to perform a particular task or achieve a particular result

l) delivery, in relation to a lecture, includes delivery by means of any mechanical


instrument or by broadcast

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m) dramatic work includes any piece for recitation, choreographic work or
entertainment in dumb show, the scenic arrangement or acting form of which is
fixed in writing or otherwise but does not include a cinematograph film

n) exclusive licence means a licence which confers on the licensee or on the


licensee and persons authorised by him, to the exclusion of all other persons
(including the owner of the copyright), any right comprised in the copyright in a
work, and exclusive licensee shall be construed accordingly

o) 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;

p) Indian work means a literary, dramatic or musical work,

(i) the author of which is a citizen of India; or

(ii) which is first published in India; or

(iii) the author of which, in the case of an unpublished work, is, at the time of the
making of the work, a citizen of India

q) infringing copy means,

(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof


otherwise than in the form of a cinematographic film;

(ii) in relation to a cinematographic film, a copy of the film made on any medium by
any means;

(iii) in relation to a sound recording, any other recording embodying the same
sound recording, made by any means;

(iv) in relation to a programme or performance in which such a broadcast


reproduction right or a performers right subsists under the provisions of this Act,
the sound recording or a cinematographic film of such programme or
performance,

r) literary work includes computer programmes, tables and compilations including


computer databases

s) musical work means a work consisting of music and includes any graphical
notation of such work but does not include any words or any action intended to be
sung, spoken, or performed with the music

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t) performance, in relation to performers right, means any visual or acoustic
presentation made live by one or more performers

u) performer includes an actor, singer, musician, dancer, acrobat, juggler, conjurer,


snake charmer, a person delivering a lecture or any other person who makes a
performance

v) photograph includes photo-lithograph and any work produced by any process


analogous to photography but does not include any part of a cinematograph film

w) producer, in relation to a cinematograph film or sound recording, means a


person who takes the initiative and responsibility for making the work

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

y) "visual recording" means the recording in any medium, by any method including
the storing of it by any electronic means, of moving images or of the
representations thereof, from which they can be perceived, reproduced, or
communicated by any method

z) work means any of the following works, namely:

(i) a literary, dramatic, musical, or artistic work;

(ii) a cinematograph film;

(iii) a sound recording

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TRIPS AND COPYRIGHT
The TRIPS Agreement establishes international minimum standards for the
protection of intellectual property. In copyright, TRIPS set forth the minimum
standards for their substantive protection and enforcement, often called the
Berne-plus standards

Copyright and Related Rights under TRIPS Article 9 through 14 of the TRIPS
Agreement contained in Section I of Part II deals with the copyright and related
rights

The provisions on copyright relating to creators of literary and artistic works are
based upon the Berne Convention, the substantive provisions of which are
incorporated into the TRIPS Agreement

Specifically, Article 9-13 of TRIPS Agreement specifies the minimum standards


for the protection of copyright

Article 14 relates to the rights of performers, producers of phonograms and


broadcasting organizations

The 1980s and 1990s saw the digital revolution sweeping the world and the
advent of Internet over the world wide web. The global community responded
to the challenges posed to the copyright system by the Internet through two
treaties framed in 1996, called WIPO Copyright Treaty (WCT) and WIPO
Performances and Phonograms Treaty (WPPT), together known as Internet
Treaties

The WCT deals with the protection for the authors of literary and artistic works

The WPPT extends copyright like protection to performers and producers of


phonograms. Many provisions in these treaties like right of communication to
the public have been available in the Indian copyright law since the 1994
amendment

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The Copyright (Amendment) Act, 2012 introduced amendments to harmonise
the Copyright Act, 1957 with WCT and WPPT. The Amendment Act goes
much beyond the Internet treaties and has introduced many changes in the
Copyright Act, 1957. The amendments can be categorised into:

I. Amendments to rights in artistic works, cinematograph films and sound


recordings

II. WCT and WPPT related amendments to rights

III. Author friendly amendments on mode of assignment and licenses to


streamline business practices

IV. Amendments to facilitate access to works further sub-classified into:

a) Grant of compulsory licences

b) Grant of statutory licences

c) Administration of copyright societies

d) Access to copyrighted works by the disabled

e) Relinquishment of copyright

V. Strengthening enforcement and protecting against Internet piracy including


WCT and WPPT related provisions

VI. Reform of Copyright Board and other minor amendments

INDIA AND COPYRIGHT LAW


The Copyright Act, 1957 that repealed earlier copyright laws applicable in India
dealt with the subject matter of copyright to include original literary, dramatic,
musical, and artistic works; cinematograph films and sound recordings

India ratified the Berne Convention, as revised at Paris in 1971, on 7 October


1974 except for Articles 1 to 21 and the Appendix

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By the Berne Convention, protection to works published in India could be
enjoyed in several countries, even without applying for registration of the work
under the Indian Copyright law

However, Article 9.1 of the TRIPS establishes that the WTO members must
comply with Articles 1 to 21 of the Berne Convention, 1971, including the
Appendix thereto

Conversely, Articles 1 to 21 of the Berne Convention, revised by Paris Act of


1971, were adopted and ratified by India in 1984. The TRIPS has incorporated
almost the entire Berne Convention for achieving harmonization and uniformity

The Copyright Act of 1957 is in conformity with the international treaties and
conventions about copyright

However, the Act of 1957 has been amended from time to time to make it
compliant with the international standards

Yet, even before TRIPS, it was in accordance with the well accepted
international principles for copyright protection; the definition of literary works
was amended in 1994 to include computer programs and was amended for the
fifth time in 1999 to incorporate provisions making it TRIPS compliant by
encompassing neighbouring rights including performers rights and protection of
rights of broadcasting organizations

Under the copyright Act 1957 in India no copyright can exist in any work except
as provided in Section 16 which reads as under: 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 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 breach of trust or confidence.

The Copyright (Amendment) Act, 1994 substituted Section 37 to incorporate


broadcast reproduction rights, whereby every broadcasting organization shall
have a special right in respect of its broadcasts

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Additionally, in conformity with Article 14 of the TRIPS Agreement, rights of the
performers were also given protection by 1994 Amendment. Prior to that, they
did not have protection against copying of their art. The term of protection of the
performers was also brought in line with the TRIPS Agreement in the year 1999

RIGHTS IN ARTISTIC WORKS, CINEMATOGRAPH FILMS, AND SOUND


RECORDINGS
The amendments have made some changes that clarify the rights in artistic
works, cinematograph films and sound recordings. These amendments address
technological issues like storing and thus address some of the digital era
challenges though not mandated by WCT or WPPT

Section 14 (c) relates to the exclusive rights of the author of an artistic work.
Clause (i) of this sub-section grants the right to reproduce the work in any
material form. This clause is amended to provide that the right to reproduce the
work in any material form includes the storing of it in any medium by electronic or
other means. The clause has been redrafted, numbering as sub-clauses the
existing right of depiction in three dimensions of a two-dimensional work or in two
dimensions of a three-dimensional work. The net effect of the amendment is the
addition of the right of storing of the work in any medium by electronic or other
means

Section 14 (d) relates to the exclusive rights in a cinematograph film. The existing
sub-clause (i) provides the right to make a copy of the film, including a
photograph of any image forming part thereof. This sub-clause has been
amended to extend the rights of the author to include the storing of the work in
any medium by electronics or other means. Similar amendments have been
made to the rights in sound recording [Section 14 (e) (i)] to clarify that right to
make copies include the storing of the work in any medium by electronic or other
means

The inclusive language used in the amendments clarify that the right of
reproduction extends to storage in the case of artistic works, cinematograph films
and sound recordings. In the case of literary, dramatic, and musical works, the
existing clause (a) (i) of Section 14 clarifies that the right to reproduce includes

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storing of the work in any medium by electronic means. The present amendment
extends this inclusive language on right of reproduction to artistic works,
cinematograph films and sound recordings. The right to store the work is of
importance in a digital environment due to the special nature of transmission of
digitized works over the Internet where transient copies get created at multiple
locations, including over the transmitting network and in the users computer. In a
manner of speaking it can be stated that copyright has been extended to the
right to storing of works. It also creates liability for the Internet service providers.
While adding this clarification to rights, the Act also treats as fair use, the
transient or incidental storage and safe harbor provisions to service providers

The words any medium by electronic or other means have been introduced
considering the possibility of evolution of technologies, for example, depiction of a
work using laser images. While looking at the words electronic or other means,
one wonders why the drafters did not simply use any means in place of
electronic and other means. In the case of literary, dramatic and musical works,
the language in Section 14 (a) (i) remains the same, viz., storing of the work in
any medium by electronic means. It would have been appropriate if similar
language of electronic or other means was introduced in this section as well

The Act has also amended the definition of cinematograph film (Section 2 (f)).
The amended definition reads: cinematograph film means any work of visual
recording on any medium. The Act introduces a definition of visual recording in
Clause (xxa) to mean recording in any medium, by any method including storing
of it by electronic means, of moving images or representations thereof, from
which they can be perceived, reproduced or communicated by any method

Another change introduced in the definition clause is in communication to the


public [clause 2 (ff)] to add performance to the work being communicated. This
is consequential to the grant of the new rights to performers. The right of
communication to public is essential to protect the work on the Internet and such
protection hitherto available for works now extends to performances

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Streamlining Business Practices
Assignment of Rights

Section 18 (1) provides that the owner of a copyright in any work or prospective
owner of a future work may assign the copyright. The proviso to this sub-section
clarifies that in the case of future work, assignment will come into force only when
the work comes into existence. A second proviso has been inserted in this
section by providing that no such assignment shall apply to any mode of
exploitation that did not exist or was not known in commercial use when the
assignment was made. Another proviso provides that the author of a literary or
musical work incorporated in a cinematograph film or sound recording shall not
assign the right to receive royalties in any form other than as a part of the film or
sound recording

The above amendments strengthen the position of the author if new modes of
exploitation of the work come to exist. It may be recalled that in the eighties, there
were mostly video cassette recorders which were played in closed environments,
but with the advent of the Internet, new models of exploitation of the works came
into existence. It is possible that with the advent of high speed bandwidths and
Internet telephony, new modes of exploitation of the work not contemplated at the
time of assigning of works, may yet arise

Section 19 of the Act relates to the mode of assignment. The sub-section (3) has
been amended to provide that the assignment shall specify the other
considerations, besides royalty, if any, payable. Therefore, it is not necessary
that only monetary compensation by way of royalty could lead to assignment. The
amendment has inserted a new sub-section (8) to provide that any assignment of
copyright in any work contrary to that of the terms and conditions of the rights
already assigned to a copyright society in which the author of the work is a
member, shall be deemed to be void. A new sub-section (9) provides that no
assignment of copyright in any work to make a cinematograph film or sound
recording shall affect the right of the author of the work to claim royalties in case
of utilization of the work in any form other than as part of cinematograph film or
sound recording

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Section 19A relates to disputes with respect to assignment of copyright. This
section provides that on receipt of a complaint from an aggrieved party, the
Copyright Board may hold inquiry and pass orders as it may deem fit, including
an order for the recovery of any royalty payable. Second proviso is amended to
provide that pending disposal of an application for revocation of assignment, the
Copyright Board may pass any order as it deems fit regarding implementation of
the terms and conditions of assignment

Caselet 1: IPRS v. Eastern Indian Motion Pictures Association

The Supreme Court held that the producer of a cinematographic film are the first
owners of the copyright in the musical and lyrical works and no copyright subsists in
the composer of the lyrics or music so composed, unless there is a contract to the
contrary between the composer of the lyrics or music and the producer of the
cinematograph film. The Copyright (Amendment) Act, 2012 protects the interests of
the authors, whereby the amendment states that in Section 17 of the 1957 Act, in
clause (e), the following proviso shall be inserted at the end, namely: Provided that
in case of any work incorporated in a cinematograph work, nothing contained in
clauses (b) and (c) shall affect the right of the author in the work referred to in clause
(a) of sub-section (1) of Section 13 thereby enabling the original authors to be
considered as the first owners of the literary, dramatic, musical and artistic works
incorporated in the cinematograph film.

Caselet 2: Gramophone Company of India Ltd. v. Shanti Films Corporation

The Calcutta High Court held that the copyright to be a beneficial interest in movable
property capable of being transferred by way of assignment. Moreover, Section 18 of
Copyright Act, 1957 also provides that the owner of the copyright of a work may
assign any of the rights comprised in the copyright of his work to any other person.
However, 2012 amendment inserts in sub-section (1) of Section 18, after the proviso,
the following provisos, namely: ..Provided also that the author of the literary or
musical work included in a cinematograph film shall not assign or waive the right to
receive royalties to be shared on an equal basis with the assignee of copyright for
the utilization of such work in any form other than for the communication to the public
of the work along with the cinematograph film in a cinema hall, except to the legal
heirs of the authors or to a copy right society for collection and distribution and any
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agreement to contrary shall be void: Provided also that the author of the literary or
musical work included in the sound recording but not forming part of any
cinematograph film shall not assign or waive the right to receive royalties to be
shared on an equal basis with the assignee of copyright for any utilization of such
work except to the legal heirs of the authors or to a collecting society for collection
and distribution and any assignment to the contrary shall be void. These provisions
further confirm the rights of original owners to receive royalties in case of assignment
of the work by the producer in relation to the cinematograph film or the sound
recording.

Strengthening Enforcement and Protecting Against Internet Piracy


a) Strengthening of Border Measures

Section 53 of the Act dealing with importation of infringing copies has been
substituted with a new section providing detailed border measures to strengthen
enforcement of rights by making provision to control import of infringing copies by
the Customs Department, disposal of infringing copies and presumption of
authorship under civil remedies

The section provides that the owner of copyright of any work or any performance
embodied in such work, or his duly authorized agent, may give notice in writing to
the Commissioner of Customs, or to any other officer authorized in this behalf by
the Central Board of Excise and Customs requesting the Commissioner for a
period specified in the notice, not exceeding one year, to treat infringing copies of
the work as prohibited goods, and that infringing copies of the work are expected
to arrive in India at a time and a place specified in the notice. After examination of
evidence so furnished, the Commissioner may pass an order treating the
infringing goods as prohibited goods. When any such goods are detained, the
Customs officer shall inform the importer as well as the person who gave notice
of the detention of such goods within forty- eight hours of their detention. The
Customs officer shall release the goods, and they shall no longer be treated as
prohibited goods, if the person who gave notice does not produce any order from
a court having authority as to the temporary or permanent disposal of such goods
within fourteen days from the date of their detention

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Caselet: Eros International Media Ltd and other vs Bharat Sanchar Nigam Ltd
and other

The petitioners sought a John Doe order to protect rights of the movie dhishoom
from being uploaded online. A list of 135 URLs and web links were presented before
the Bombay high court, and the plaintiffs requested the court to grant an injunction
directing Internet service provider to block the access to the 135 URLs/web links.
Procedurally, the defendants on receiving such links form the plaintiffs, would first
restrict access to those URLS or web links as required by section 52(1)(c) of
copyright act, 1957 for the 21 days as mentioned in the section. John Doe also came
to the rescue of Udta Punjab which was leaked two days before its release. The
Bombay high court had ordered for torrent links to be removed or rendered
inaccessible.

Protection of Technological Measures


A new Section 65A has been introduced to provide for protection of technological
measures used by a copyright owner to protect his rights on the work. Any
person who circumvents an effective technological measure applied for the
protecting any of the rights, with the intention of infringing such rights, shall be
punishable with imprisonment which may extend to two years and shall also be
liable to fine.

Sub-section 2 provides for some exceptions. The prohibition shall not prevent
doing anything for a purpose not expressly prohibited by the Act (thus enabling
enjoyment of fair use provisions). However, any person facilitating circumvention
by another person of a technological measure for such a purpose shall maintain a
complete record of such other person including his name, address, and all
relevant necessary to identify him and the purpose for which he has been
facilitated. Exception is available for doing anything necessary to conduct
encryption research or conducting any lawful investigation; or doing anything
necessary for testing the security of a computer system or a computer network
with the authorization of its owner or operator; or doing anything necessary to
circumvent technological measures intended for identification or surveillance of a
user; or taking measures necessary in the interest of national security.

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The above provision emanates from Article 11 of WCT and Article 18 of WPPT.
The rationale is to prevent the possibility of high rate of infringement (digital
piracy) in the digital media. Digital locks (technological protection measures -
popularly known as TPMs) were invented to prevent infringement of works. At the
same time, circumvention technologies to overcome the TPMs were also
developed to unlock the digital locks used by owners of copyright to prevent
infringement. Sub-section (1) makes such circumvention a criminal offence
punishable with imprisonment. The use of TPM had a significant impact on users
since the freedom to use the work (fair use of works) permitted by law was
considerably regulated through these measures. In the absence of the owner of
the works providing the key to enjoy fair use, the only option was to circumvent
the technology to enjoy fair use of works. The major problem of use of law in
preventing circumvention was the impact on public interest on access to work
facilitated by the copyright laws. This is the logic of sub-section (2) permitting
circumvention for the specified uses. The Standing Committee of the Parliament
which examined the legislation in its report stated that many terms in this section
have been consciously left undefined, given the complexities faced in defining
these terms in the laws of developed countries. It also stated that the approach
enshrined in Section 65 A is to give limited legislative guidelines and allow the
judiciary to evolve the law based on practical situations, keeping in mind the
larger public interest of facilitating access to work by the public.

Caselet: Sony Computer Entertainment Europe Ltd. Vs. Harmeet Singh & Ors.

In wake of the new Copyright Amendment Act, 2012[4], the Delhi High Court on 31st
May 2012 passed a landmark Order in Sony Computer Entertainment Europe Ltd.
Vs. Harmeet Singh & Ors. MIPR 2013 (1) 0101 for grant of an Ex-Parte injunction
against the Defendants from inter alia circumventing the technological protection
measuresbuilt in the PlayStation gaming consolesto enable them to sell
counterfeit/unlicensed gaming software, or alter the consoles in such a manner that
may amount to infringement of Sonys trademarks.[5]

The Defendants in the case had beenfor a minor additional costselling/offering


for sale Sonys PlayStation 3 gaming consoles after physically tampering with the
internal machinery of the gaming consoles to modify the original equipment of the

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Plaintiff so that infringing gaming software could be run on them. This was possible
with the Jailbreak software that would break through the internal security features
of the console and enable it to use unlicensed versions of gaming software.

The Court arrived at its decision by determining that:

The original machines were modified without the Plaintiffs consent; and

The Defendants infringed the Plaintiffs copyright by commercially making


available pirated gaming software without acquiring a license or consent of
the Plaintiff.

In addition to the ex-parte order, the Court found it fit to appoint 3 local
commissioners to visit the premises of the Defendants and inspect the computers,
CDs and any other storage media with technical experts and representatives of the
Plaintiff to make an inventory of the Plaintiffs software or the Jailbraking software
itself. The Local Commissioners had the right to seize and seal every such
computer, hard disk, CD or other storage media found to contain unlicensed
software programs.

Digital Rights Management Information


A new Section 65B has been introduced to provide protection of rights
management information. Sub-section (1) provides, Any person, who knowingly
(i) removes or alters any rights management information without authority, or (ii)
distributes, imports for distribution, broadcasts or communicates to the public,
without authority, copies of any work, or performance knowing that electronic
rights management information has been removed or altered without authority,
shall be punishable with imprisonment which may extend to two years and shall
also be liable to fine. The proviso to the clause states that if the rights
management information has been tampered with in any work, the owner of
copyright in such work may also avail of civil remedies against the persons
indulging in such acts.

This amendment conforms to Article 12 of WCT and Article 19 of the WPPT


relating to rights management information. The rationale of the protection
emanates from the practice in the digital world to manage the rights through
online contracts governing the terms and conditions of use. However, these can

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be removed. The amendment is intended to prevent the removal of the rights
management information without authority and distributing any work, fixed
performance, or phonogram, after removal of rights management information. It
provides for punishment for such acts.

The protection of technological measures and rights management information


were introduced in WCT and WPPT as effective measures to prevent
infringement of copyright in digital environment. The introduction of Sections 65 A
and 65 B is expected to help the film, music, and publishing industry in fighting
piracy.

Caselet: Vernor v. Autodesk, Inc.

This case illustrates the tension between copyright holders desire to protect their
works and the consumers belief and desire to have full rights in the product theyve
paid for, including the right to exercise the First-Sale Doctrine. Timothy Vernor
purchased a copy of Autodesks software at a yard sale, and subsequently listed the
software for sale on eBay. Autodesk requested that the listing be removed, which
prompted this suit.

Autodesk premised their argument on the claim that the software itself was never
actually sold to consumers, only a license to use the software. Vernor countered with
the argument that he had never actually installed the software itself or purchased the
software from Autodesk, and therefore was not subject to any licensing agreements
or restrictions.

The court sided with Autodesk, despite the above argument. The opinion states that
Autodesk only sells a license to use the work, and that the original owner of the work
was not entitled to sell that license to Vernor in the first place, meaning that there
had not been a transfer of title. Vernor, therefore, was not entitled to sell what he did
not rightly own, and was precluded from listing the software for sale on eBay.

The court premised its ruling on the holding that a software user is a licensee rather
than an owner of a copy where the copyright owner:
specifies that the user is granted a license
significantly restricts the users ability to transfer the software
imposes notable use restrictions

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CONCLUSION
Broadly the amendments strengthen the rights of the authors, streamline the
process of assignment and grant of license, facilitate better access to works, and
extend fair use provisions, in general and to the Internet

The changes made in the provisions of assignment and licensing and in copyright
societies are expected to streamline business practices but has an underlying
concern about protecting authors interests

There are also welcome reforms to administration of copyright societies and the
Copyright Board. Overall the amendments have the signature of a reformist
approach

One issue which was much discussed but was left unresolved is the issue of
parallel imports

The Amendment Bill as originally introduced had a provision of international


exhaustion which enabled parallel imports

However, a fair use provision has been introduced to facilitate the parallel import
provisions contained in the Patent Act, 1970 and the Trademarks Act, 1999.

Though WCT and WPPT were concluded in 1996, the adoption of these treaties
as national legislation had taken some time. Each treaty had to be ratified by 30
countries before their come into effect. The WCT came into effect on 6 March
2002, and the WPPT, on 20 May 2002 (ref. 5). The United States had
implemented these provisions through Digital Millennium Copyright Act in 2000
and European Union Directive adopted its provisions in Europe. There was
intense debate on the impact of extending digital protection on fair use.

Overall the amendments introduced by The Copyright (Amendment) Act, 2012


are forward looking, which will enable Copyright Act, 1957 to retain its claim to be
one of the best copyright legislations in the world.

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TRADEMARK

DEFINITION OF TRADEMARK
A trademark is a sign or mark that is used to distinguish the goods or services of one
enterprise from those of another enterprise. It can be any distinctive word, letter,
numeral, drawing, picture, shape, colour, sound, smell, logotypes, or any
combination of these that may be used for distinguishing goods and services, of any
given business. A trademark is used extensively by an enterprise to reach customers
by enabling customers to identify and locate the product. A trademark is issued by a
national office and is granted for a period of 10 years and may be renewed
indefinitely.

PROCESS OF TRADEMARK APPLICATION

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INDIAN TRADEMARK ACT IN COMPLIANCE WITH TRIPS
The Trade and Merchandise Marks Act 1958 has been replaced by a TRIPS
compliant Trade Marks Act 1999. The Trade Marks Act, 1999 came in force from 15th
September, 2003. New features of the Trade Marks Act 1999 are as follows:

The inclusion on Service Marks

provision for the registration of Collective Marks for the first time in India

prohibition of registration of certain marks which are mere reproductions of or


imitations of well known marks

provisions for filing a single application for registration in more than one class
of goods and/or services

increasing the term of registration of trade from 7 to 10 years and providing a


grace period of six months for payment of renewal fees

amplification of circumstances in which validity of registration can be


contested

Vesting the final authority in the Registrar for disposing of applications for
registration of Certification Trade Marks

Harmonizing penal provisions of the Trade Marks law with Copyright Law, and
the provision for establishment of an Appellate Board.

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TRADEMARK INFRINGEMENT CASELETS

Caselet 1: 3M vs 3N

A lawsuit by the 3M Company against Changzhou Huawei Advanced Material Co.


Ltd. for the use of 3N resulted in a win for 3M and "significant damages" for 3M. It
was ultimately ruled that, despite some dissimilarities in products and pricing, the
notoriety of the 3M mark and the fact that 3N had managed to acquire clients and
market share by use of the similar mark, constituted infringement.

Caselet 2: Apple Corps vs. Apple Inc.

Who has the right to trademark the word apple, the Beatles or Apple Inc.?

The Beatles came first, with their music company Apple Corps, and then eight years
later Steve Jobs introduced Apple Inc. to the world. The two mega-corporations have
battled it out in court over the years. After the first round, Apple Inc. agreed to pay
Apple Corps a cash settlement and to stay out of the music business. But with the
advent of iTunes, the legal wrangling between the two giants heated up again. They
reached an apparent settlement after Apple Inc. agreed to purchase Apple Corps
trademark rights and then license them back to the music company.

Caselet 3: Louis Vuitton vs Louis Vuitton Dak

A South Korean fried chicken restaurant recently lost a trademark battle with
designer Louis Vuitton. The court ruled in the designer's favour after determining that
the restaurant's name of Louis Vuiton Dak was too similar to Louis Vuitton. In
addition to the name infringement, the restaurant's logo and packaging closely
mirrored the designer's iconic imagery. The restaurant was ultimately imposed
another 14.5 million fine for non-compliance after changing their name immediately
after the first ruling to LOUISVUI TONDAK.

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CASE STUDIES

GOOGLE v/s ORACLE


Parties:

Google is an American multinational technology company specializing in Internet-


related services and products. These include online advertising technologies,
search, cloud computing, software, and hardware.

Oracle offers a comprehensive and fully integrated stack of cloud applications,


platform services, and engineered systems.

Issues and Technical Points:

Judge: William Alsup

Trial: 12 member jury.

The dispute is related to Oracle's copyright and patent claims on Google's Android
operating system.

API stands for Application Programming Interface. Its not an interface like buttons
and scrollbars and menus that were used to seeing on a screen: rather, its a list of
publicly-accessible functions in a software program or an operating system that
programmers can use to build things. Programmers use APIs to handle things like
providing windows, dialogs, menus, and buttons, but they also do things like
communicate over the Internet, draw things on the screen, let developers know
about hardware status (say somethings been clicked or tapped), and many other
functions.

Although the case started off as mainly a patent case, Judge Alsup convinced the
parties to set aside most of the patent claims. As a result, the copyright portion of the
trial is widely seen as the most significant.

The legal dispute is whether Google needed a license to reverse engineer Suns
Java Technology for Android. Oracle had accused Google of infringement of overall
structure, sequence and organization of 37 Java APIs. There were no legal
precedents that APIs were eligible for copyright protection. However, Oracle having

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pushed for a jury trial, the judge had told the jury to assume that APIs were
copyrightable as a way to conduct the trial more efficiently. But this key issue of
whether the APIs are copyrightable or no; the judge had kept it aside to be
determined at his sole discretion later.

The judge had divided the trial into three phases:

1. Copyright issues between Google and Oracle.

2. Patent Infringement claims Oracle is making against Google.

3. (if needed) Assessing damage claims resulting from first two parts.

The jury was essentially asked to rule on four questions:

1. Did Google infringe on the overall structure, sequence, and organization of


the 37 Java APIs in the case? If so, was it fair use?

2. Did Google infringe on documentation for those 37 Java API packages? If so,
was it fair use?

3. Did Google infringe on copyright by copying some comments and code,


including a nine-line rangeCheck function?

4. Finally, if Google did infringe on the overall structure, sequence, and


organization of the Java APIs, did Oracle or Sun lead Google to believe it did
not need a license to do so?

Arguments:

By Oracle:

Oracle claims that the Java APIs are the specific expression of an idea, and can
therefore be copyrighted just like any other specific work. Oracle argues the Java
API is a specific expression of the idea of an application programming interface for
an operating system. The company agrees that Java is a free language and anyone
can use it, but it contends that if people want to assert that their applications are
Java-compatible, they need to license a certification suite. (eg: Anyone can use
Java, but to use a Java coffee-cup logo, you need to pay Oracle). Oracle insists the
Java API is copyrightable as a specific expression of an idea.

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By Google:

Google argues that the APIs are an idea, i.e. just a concept for how to communicate
with a type of software program, and therefore not eligible for copyright protection.
Programmers do not have to purchase Java in order to use it since its a free
language. Hence, Google states that it is not depriving Oracle of any revenue by
integrating those 37 Java APIs with Android and Oracle doesnt make any money
from the Java language anyway.

Also, Google puts up a second argument that it gives its Android operating system
away for free i.e. it is not selling Android, so its not unjustly enriching itself by
essentially redistributing copyrighted material.

Judgement:

The jurys judgement was based on answering those four questions asked by the
judge.

It went as follows:

1. Did Google infringe on the overall structure, sequence, and organization of


the 37 Java APIs in the case? If so, was it fair use?

Ans: Yes, but we cant decide if it was a fair use.

2. Did Google infringe on documentation for those 37 Java API packages? If so,
was it fair use?

Ans: No, Google didnt infringe on the documentation.

3. Did Google infringe on copyright by copying some comments and code,


including a nine-line rangeCheck function?

Ans: Yes, Google infringed when it outright copied a nine-line function, but on
nothing else.

4. Finally, if Google did infringe on the overall structure, sequence, and


organization of the Java APIs, did Oracle or Sun lead Google to believe it did
not need a license to do so?

Ans: Oracle and/or Sun did lead Google to believe it wouldnt need a license, but
Google didnt actually rely on that when it decided to roll out its own Java.

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The only copyright claim the jury upheld was that Google copied that nine-line
rangeCheck function and Google outright admitted to it as a mistake. The jury
could not unanimously decide whether Googles actions constitute fair use under
copyright law. Since fair use is an affirmative defence, Google would have to prove
to the court that its use of a copyrighted API was legitimate.

In May 2012, the jury found that Google did not infringe on Oracle's patents, and the
trial judge ruled that the structure of the Java APIs used by Google was not
copyrightable. The parties agreed to zero dollars in statutory damages for a small
amount of copied code. On May 9, 2014, the Federal Circuit partially reversed the
district court ruling, ruling in Oracle's favour on the copyrightability issue, and
remanding the issue of fair use to the district court. A petition for certiorari was
denied by the United States Supreme Court on June 29, 2015. A second trial began
May 9, 2016, in which Oracle sought US$8.8 billion in damages. On May 26, 2016,
the trial jury sided in favour of Google, ruling the action to be fair use.

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HALO v/s PULSE
Parties:

Halo Electronics, Inc. (Halo) and Pulse Electronics, Inc.(Pulse) are both suppliers of
electronic components.

HALO Electronics, Inc., a privately held company was incorporated on September


19th, 1991. HALO designs and manufactures a broad line of communication and
power magnetics. HALOs product applications include networking and telecom
equipment, industrial control, medical systems, automotive, security, and many
more.

Pulse Electronics is a worldwide leader in electronic component design and


manufacturing. Pulse has a long operating history of innovation in magnetics,
antennas and connectors, as well as the ability to ramp quickly into high-quality,
high-volume production. The Company serves the wireless and wire line
communications, power management, military/aerospace and automotive industries.

Halo owns three patents regarding surface Mount electronic packages. In 2002, Halo
unsuccessfully attempted to license their patents to Pulse

Issues and Technical points:

Halo claimed that Pulse Electronics infringed its patents for electronic packages
containing transformers designed to be mounted to the circuit of boards. The district
court held that Pulse infringed on Halos patents with products shipped into the US,
had induced others to infringe on products delivered outside US but ultimately
imported into the US as finished products, and found that it was highly probable hat
Pulses infringement was wilful. The court late found that Pulses infringement was
not wilful. The US Court of Appeals for the Federal Circuit affirmed and held that
there was no wilful infringement. In determining that there was no wilful infringement,
the appellate court applied a rigid two part test established in In re Seagate that
required that wilfulness be proven on both an objective and subjective basis. In this
case, the appellate court held that the objective prong was not met.

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In 2007, the Federal Circuit decided Seagate. Under Seagate, a plaintiff seeking
enhanced damages must show that the infringement of his patent was wilful. The
Federal Circuit announced a two part test to establish such wilfulness:

1. A patentee must show by clear and convincing evidence that the infringer acted
despite an objectively high likelihood that its actions constituted infringement of a
valid patent, without regard to the state of mind of the accused infringer. This
objectively defined risk is to be determined by the record developed in the
infringement proceedings. Objective recklessness will not be found at this first
step if the accused infringer, during the infringement proceedings, raises a
substantial question as to the validity or non-infringement of the patent.

2. the secondsubjective knowledgefor substantial evidence; and the ultimate


decisionwhether to award enhanced damages for abuse of discretion

Arguments:

In 2007, Halo sued Pulse. The jury found that Pulse had infringed Halos patents,
and that there was a high probability it had done so willfully. The District Court,
however, declined to award enhanced damages under 284, after determining that
Pulse had at trial presented a defense that was not objectively baseless, or a
sham. Thus, the court concluded, Halo had failed to show objective recklessness
under the first step of Seagate.

Conclusion:

The rigid two-part test is not necessary for determining whether a patentee is eligible
for enhanced damages under 35 U.S.C 284. Chief Justice John G. Roberts, Jr.
delivered the opinion for the unanimous Court. The plain language of Section 284
simply stated that courts may increase the damages up to three times the amount
found or assessed. There is no language that creates the kind of test that the U.S.
Court of Appeals for the Federal Circuit applied, and precedent had established that
the word may connotes judicial discretion. While its true that the award is typically
only granted in extreme cases, the two-part test was overly rigid and could insulate
some of worst patent infringers from liability for enhanced damages. Because the
language of the section is discretionary, courts should take into account a variety of
factors and should not be limited by a rigid test.

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