Professional Documents
Culture Documents
INTRODUCTION 4
APPLICATION REQUIREMENTS 22
COMPULSORY LICENSING 23
CONCLUSION 28
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COPYRIGHTS AND RELATED RIGHTS UNDER TRIPS 29
INTRODUCTION 29
DEFINITION OF COPYRIGHT 31
OBJECTIVE 31
CONCLUSION 51
TRADEMARK 52
DEFINITION OF TRADEMARK 52
CASE STUDIES 55
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.
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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 agreement provides norms and standards in respect to the following areas of
intellectual property:
Patents
Trademarks
Geographical Indications
Industrial Designs
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Layout Designs of Integrated Circuits
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.
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.
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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.
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.
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.
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3. A method for agriculture or horticulture
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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.
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
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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:
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.
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).
.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.
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
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.
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Intellectual property: An intangible property which is the result of some
creativity.
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.
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
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:
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.
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 .
"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.
"patentee": means the person for the time being entered on the register as the
grantee or proprietor of the patent.
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.
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.
It has to qualify under the test for new and useful, which is to say utility and
novelty;
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.
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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-grant opposition can be made on the grounds listed under section 25(1)(a) to (k)
of the Patent Amendment Act, 2005:
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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.
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.
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:
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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.
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
Non-patentability
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.
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.
OBJECTIVE
Copyright ensures certain minimum safeguards of the rights of authors over their
creations, thereby protecting and rewarding creativity.
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.
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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.
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.
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
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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.
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.
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.
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;
d) author means,
(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,
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)
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;
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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
(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
(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;
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
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
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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
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
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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:
e) Relinquishment of copyright
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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
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.
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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
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
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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
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.
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.
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.
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]
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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 original machines were modified without the Plaintiffs consent; and
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.
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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.
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
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.
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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.
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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:
provision for the registration of Collective Marks for the first time in India
provisions for filing a single application for registration in more than one class
of goods and/or services
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
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.
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
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.
3. (if needed) Assessing damage claims resulting from first two parts.
2. Did Google infringe on documentation for those 37 Java API packages? If so,
was it fair use?
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:
2. Did Google infringe on documentation for those 37 Java API packages? If so,
was it fair use?
Ans: Yes, Google infringed when it outright copied a nine-line function, but on
nothing else.
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 owns three patents regarding surface Mount electronic packages. In 2002, Halo
unsuccessfully attempted to license their patents to Pulse
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.
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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BIBLIOGRAPHY
https://www.hud.ac.uk/library/help/copyright/
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https://corecopyright.org/2009/12/03/copyright_ip/
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