Chapter II- LAW OF COPYRIGHT

1. CRITERIA OF COPYRIGHT PROTECTION

A. IDEA EXPRESSION DICHOTOMY

Copyright law distinguishes between a work‘s protectable expression and its
unprotectable ideas. Idea and expression are terms of art. They are also
opposing concepts. A work‘s idea consist of elements that Congress and Courts
consider to be too fundamental to be surrounded by property rights, while a
work‘s expression consists of those elements that elaborate and build upon the
underlying ideas. Idea refers to a concept or to be more precise, a work‘s
animated concept. While an expression is the precise words in which the idea is
put into place say in terms of a drama or play or otherwise. To reiterate,
copyright does not attach to the idea of creating a particular work, but the actual
work itself. Therefore, for instance, in literary works, unprotectable ideas may
take the form of theme, plot and stock characters.
The end logic being that such ideas are relatively few and not worth the
social cost of monopoly protection. On the contrary, the expression of those
ideas is particular enough and varied enough to allow for protection. Thus,
copyright protects idea in a tangible form.

1. Baker v. Selden (101 U.S. 99)

This is the first US Supreme Court case which dealt with the idea- expression
dichotomy.
The facts of the case are that Selden devised a new method of financial
accounting for his business. His new scheme made it possible to record the entire
operations of the business for a given period of time on either a single page on two
facing pages. He published a short book explaining his new system, along with
accompanying forms that would be used in putting the system into operation.
Baker subsequently prepared forms that were not identical to Selden‘s but were
similar to them and were tailored using Selden‘s system. Selden sued Baker for
infringement.
The Supreme Court rejected the infringement argument. The court held that the
Plaintiff‘s copyright in a book describing a new system of bookkeeping extended
only to his verbal description of the system, and not the system itself. Therefore,
Selden‘s copyright did not give him exclusive right in the system of accounting he
had developed. Thus, according to the court, since the defendant had used the idea
and the bookkeeping method of the plaintiff with slight variations, he had
expressed the idea by way of a different expression and therefore his work did not
amount to copyright infringement.
Responding to the fact that the Defendant had used diagrams used by the
Plaintiff in his work, the court stated that, ―the very object of publishing a book
on science or the useful arts is to communicate to the world the useful knowledge
which it contains. But this object would be frustrated if the knowledge could not be
used without incurring the guilt of piracy of the book. And where the art it teaches
cannot be used without employing the methods and diagrams used to illustrate the
book, or such as are similar to them, such methods and diagrams are to be
considered as necessary incidents to the art, and given therewith to the public; not
given for the purpose of publication in other works explanatory of the art, but for

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 the purpose of practical application.‖ Thus, if a diagram is the practical use of the
idea, it cannot be protected.
It is pertinent to note that this statement of the Court also becomes relevant
in case of the merger doctrine – which will be dealt with later.

2. Donoghue v. Allied Newspapers Ltd., (1937) 3 All. E.R. 503

In this case there were a series of articles entitled ―Steve Donoghue's Racing
Secrets‖ which were published in a newspaper. Donoghue, who was a well-known
jockey, communicated to Mr. Felstead, a freelance journalist, his various
adventures. Felstead made notes as the conversations went on and he then wrote
the articles. The manuscript was then taken to Donoghue who read it over and
when he thought that some alterations were necessary or desirable, they would be
noted in the margin by Mr. Felstead and were subsequently, at times, recorded.
Articles based on the original series of articles were later published in another
publication and entitled ―my Racing Secrets. By Steve Donoghue‖ This
publication took place at the instance of Mr. Felstead. The plaintiff then sought an
injunction restraining the publication of the aforesaid work alleging that there had
been an infringement of his copyright. Justice Farwell held that the plaintiff did not
have any copyright.
It was observed as follows:
“In the present case, apart altogether from what one may call merely the
embellishments, which were undoubtedly supplied wholly by Mr. Felstead, the
ideas of all these stories, and, in fact, the stories themselves, were supplied by the
plaintiff; but, in my judgment, upon the evidence, it is plain that the particular form
of language by which those stories were conveyed was the language of Mr.
Felstead and not that of the plaintiff. Although many of the stories were told in the
form of dialogue, and to some extent Mr. Felstead no doubt tried to reproduce the
story as it was told to him by the plaintiff, nevertheless the particular form of
language in which those adventures of stories were conveyed to the public was the
language of Mr. Felstead, and not the language of Mr. Donoghue.”
Thus, though the ideas were of Mr. Donoghue, it was Mr. Felstead who
expressed them. Consequently, the latter would be considered to be the author of
the work in whom the copyright of the work vests.
As regards the idea – expression dichotomy, the court opined that, ―This at any
rate, is clear, and one can start with this beyond all question that there is no
copyright in an idea, or in ideas.... If the idea, however brilliant and however clever
it may be, is nothing more than an idea, and is not put into any form of words, or
any form of expression such as a picture or a play, then there is no such thing as
copyright at all. It is not until it is (If I may put it in that way) reduced into writing,
or into some tangible form, that you get any right to copyright at all, and the
copyright exists in the particular form of language in which, or, in the case of a
picture, in the particular form of the picture by which, the information or the idea is
conveyed to those who are intended to read it or look at it.‖
3. Najma Heptulla v. Orient Longman Ltd. & Ors. AIR 1989 Delhi 63.
Judge: B.N. Kirpal J.
The facts of the case: This case concerned publication of 30 pages (erstwhile
undisclosed) of the book, India wins Freedom, written by Maulana Azad. While
writing the book, Maulana Azad was aided by Prof. Humayun Kabir. The process
by which the book was written by the two was that Maulana Azad had, during his
life time, dictated and given certain notes to Prof. Humayun and out of that

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material Prof. Humayun had composed the book which had been approved by the
late Maulana Azad.
The manuscript of this book was ready for publication sometimes in November,
1957. Given the personal nature of certain incidents, the Maulana did not want a
part of the book (30 pages) to be published in the present (1958), but wished that it
should be published 30 years after his death. Maulana Azad died on 22nd
February, 1958. Given this arrangement, the National Archives and National
Linrary, Calcutta acted as trustees for copies of the complete manuscript, including
30 pages which have not been published till today but were required to be
published after 30 years of Maulana Azad‘s death i.e. after 22nd February, 1988.
Close to 22nd February, 1988, the publishers, Orient Longman Ltd., dispatched
letters to the legal heirs of Maulana Azad informing them that they would be
publishing the 30 pages as soon as possible after the stipulated date and as per the
earlier arrangement, the legal heirs would continue to get royalty from the sale of
the book.
Najma Heptulla, the legal heir of Maulana Azad, stated that Orient Longman
had no right/ authority to publish the concerned pages and that Maulana Azad
being the sole author of the book, any agreement entered into by Prof. Humayun
relating to publication of the book and the undisclosed material with Orient
Longman was invalid and unenforceable, as Prof. Humayun had no right to enter
into such an agreement. Also, given this situation the copyright in the said work
rests in the legal heirs, who ought to decide when to publish the concerned
material. Consequently, the Plaintiff prayed for an injunction under Order 39 Rules
I and 2 restraining the defendants from breaking the seals of the covers in which
the complete book India Wins Freedom.
The defendants argued, using the Donoghue case that Prof Humayun was the
author of the book, or in the alternative, Azad and Prof. Humayun were joint
authors of the book. Consequently, the agreements and arrangements entered into
by Prof. Humayun in relation to the book were valid and enforceable. Thus, given
the agreement entered into by Prof. Humayun and Orient Longman, the latter has
the right to publish the book and the undisclosed material.
While deciding, the Court considered the definition of an author and came to the
conclusion, that Azad and Prof. Humayun were joint authors of the work as
between the two of them there was joint labouring in furtherance of a common
design…‖ Borrowing from the dicta of a leading English case on the point, the
Court further explained the concept of joint authorship‖ by stating that, If two
persons undertake jointly to write a play, agreeing in the general outline and
design, and sharing the labour of working it out, each would be contributing to the
whole production, and they might be said to be joint authors of it. But, to constitute
joint authorship, there must be a common design. However, it is not necessary that
each of the two should put in the same amount of work or labour.‖ Thus, applying
the dicta to the facts of the case, the Court concluded that, it is clear that there was
active and close intellectual collaboration and cooperation, between Maulana Azad
and Prof. Humayun which resulted in the book India Wins Freedom. There was a
reconverted joint design between the two in the writing of the book. The material
for the book was supplied by Maulana Azad with a clear understanding that Prof.
Kabir will describe those thoughts and conversation and write the same in English
language. It is not as if Maulana Azad did not know English. The preface itself
shows that Maulana Azad, along with Prof. Kabir, read every word of the
manuscript and made alterations, additions, omissions and corrections.

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 Thus, the court held that Prof. Kabir should have consulted the legal
heirs/representatives of Azad before entering into an agreement with Orient
Longman. A letter/document to this effect was examined by the court, whereby the
Grandmother of the Plaintiff had agreed to the arrangement between Prof. Kabir
and Orient Longman, being entitled to receive a share of royalty from the sale of
the book. The court used this document as the basis of stating that the consent of
the legal heirs/representatives of Azad had been validly obtained. Consequently,
the agreement entered between Prof. Kabir and Orient Longman was valid and the
Plaintiff‘s application for injunction was dismissed.
4. R.G. Anand v. Delux Films & Ors. AIR 1978 SC 1613
Judges:Jaswant Singh, R.S. Pathak and S. Murtaza Fazal Ali, JJ. Judgment
delivered by Fazal Ali J.
The facts of the case are as follows:
The Plaintiff was a playwriter and had written, directed and produced the play
―Hum Hindustani‖ in Delhi in 1954. The story of the play revolved around the
love story of a Madrasi boy and a Punjabi girl and the opposition to any union
between them by their parents due to provincialism and parochialism. At the end of
the play, on finding the suicide notes left by the children, the parents realise their
mistake and that the happiness of their children is more important than the petty
beliefs of provincialism. This play was well received in the theatre and literary
circles. Subsequently, the one of the Defendants (Mr. Mohan Sehgal) got in touch
with the Plaintiff asking him for the copy of the play for the purposes of seeing the
viability of converting the play into a movie. However, the project never went
beyond preliminary negotiations. Subsequently, the Defendants produced a movie
titled ―New Delhi‖. The Plaintiff was informed that the movie was similar to the
play ―Hum Hindustani.‖ When the Plaintiff saw the movie himself he found that
the movie was based on similar themes as that of the play and was in fact an
imitation of the play. The movie had the Punjabi boy and a madrasi girl falling in
love. It is pertinent to note that the detailed facts of the movie were different from
that of the play apart from the problem of provincialism in regard to marriage and
in regard to renting out accommodation, other evils of a caste ridden society, and
the evils of dowry were also explored. However, on the alleged similarity between
the film and the play the Plaintiff sued the Defendants for copyright infringement.
The Defendants argued that though the movie and the play made use of the
common idea of provincialism, and the Plaintiff cannot be said to enjoy copyright
over the concept of provincialism in general. Moreover, the development of
themes, characters, sequences etc., was different in the movie as compared to the
play. On these grounds the Defendant stated that they were not liable for copyright
infringement.
The idea – expression dichotomy becomes important in such infringement cases
because there cannot be any infringement of ideas, however, there can be
infringement (literal or substantial) of the tangible expression of the idea. Thus, if
the similarities in two works stem due to the existence of similar ideas behind the
works, then there is no copyright infringement. However, as opposed to such
unintentional similarities, if there is literal or substantial copying by the alleged
infringer, proven by similarity in details, then a case of infringement would
possibly hold good. For instance in the instant case, while determining the question
of copyright violation, the Apex Court held that, the fundamental fact which has
to be determined where a charge of violation of the copyright is made by the
plaintiff against the defendant is to determine whether or not the defendant

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not only adopted the idea of the copyrighted work but has also adopted the
manner, arrangement, situation to situation, scene to scene with minor
changes or super additions or embellishment here and there.
While attempting to answer the abovementioned question, the Apex Court
reiterated and summarized the law on the idea-expression dichotomy and copyright
infringement by stating the following points:
1. There can be no copyright in an idea, subject matter, themes, plots or
historical or legendary facts and violation of the copyright in such cases is confined
to the form, manner and arrangement and expression of the idea by the author of
the copyrighted work.
2. Where the same idea is being developed in a different manner, it is manifest
that the source being common, similarities are bound to occur. In such a case the
courts should determine whether or not the similarities are on fundamental or
substantial aspects of the mode of expression adopted in the copyrighted work. If
the defendant's work is nothing but a literal limitation of the copy-righted work
with some variations here and there it would amount to violation of the copyright.
In other words, in order to be actionable the copy must be a substantial and
material one which at once leads to the conclusion that the defendants are guilty of
an act of piracy.
3. One of the surest and the safest test of determine whether or not there has
been a violation of copyright is to see if the reader, spectator or the viewer after
having read or seen both the works is clearly of the opinion and gets an
unmistakable impression that the subsequent work appears to be a copy of the
original.
4. Where the theme is the same but is presented and treated differently so that
the subsequent work becomes a completely new work, no question of violation of
copyright arises.
5. Where however apart from the similarities appearing the two works there are
also material and broad dissimilarities which negative the intention to copy the
original and the coincidences appearing in the two works are clearly incidental no
infringement of the copyright comes into existence.
6. As a violation of copyright amounts to an act of piracy it must be proved by
clear and cogent evidence after applying the various tests laid down by the case-
law discussed above.
7. Where however the question is of the violation of the copyright of stage play
by a film producer or a director the task of the plaintiff becomes more difficult to
prove piracy. It is manifest that unlike a stage play a film has a much broader
prospective, wider field and a bigger background where the defendants can be
introducing a variety of incidents give a colour and complexion different from the
manner in which the copyrighted work has expressed the idea. Even so, if the
viewer after seeing the film gets a totality of impression that the film is by and
large a copy of the original play, violation of the copyright may be said to be
proved.
Applying these points to the facts at hand the Apex Court concluded that the
movie and the play explored the similar idea and problem of provincialism.
However, the movie also explored other themes. Moreover, the details of the
movie relating to the manner, arrangement, situation to situation, scene to scene
with minor changes or super additions or embellishment here and there, made the
movie a different expression of the similar idea in comparison to the play.
Consequently, any overlap stemmed from the fact of similar ideas and thus the

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 movie could not amount to literal or substantial copying of the play. Based on this
decision, the Apex Court confirmed the dicta of the lower courts and dismissed the
appeal.
5. Anil Gupta v. Kunal Das Gupta & Ors., AIR 2002 Delhi 379.
The facts of the case as basically that the plaintiff had discussed the concept of
the reality television show for matchmaking titled as ‘Swayamvar’, which was
conceived by the plaintiff with the result of using his brain with the Defendants
(Broadcasters: Sony Entertainment Channel). Though there was a lot of
communication, exchange of concept, detailed concept and discussions on the
serial, the negotiations failed. Subsequently, the Plaintiff sealed a deal with
Doordarshan for production and broadcasting of the show. In the meanwhile, the
defendants decided to launch a television programme titled ‘Shubh Vivah’, which
was based on the concept of ‘Swaymvar’ conceived by the plaintiff. Seeing the
advertisements in this regard, the Plaintiff sued the Defendants for breach of
confidentiality (claiming that the Defendants had breached confidentiality by using
the concept material shown to them by the Plaintiff to produce their own show).
Also, given the fact that the concept of the show had been registered by the
Plaintiff as a literary work under the Copyright Act, the use of such confidential
original copyright work also amounted to a violation of the copyright held by the
Plaintiff.
Focusing on the second argument, the defendants argued that the concept was
merely an idea of a traditional method of marriages well known in the public
domain. Thus, Shubh Vivah used this idea of the traditional method of marriages
and in expression it varied from the show proposed by the Plaintiffs. Moreover, the
Defendants also argued, that given the sketchy nature of the concept put forth by
the Plaintiffs, they expressed merely an idea and there was no expression, thus, the
Plaintiffs were not entitled to any copyright protection.
The Delhi High Court considered these arguments and stated that, ―an idea
per se has no copyright. But if the idea is developed into a concept fledged
with adequate details, then the same is capable of registration under the
Copyright Act. The novelty and innovation of the concept of the plaintiff resides
in combing of a reality TV show with a subject like match making for the purpose
of marriage. The Swayamvar quoted in Indian mythology was not a routine
practice. In mythology, we have come across broadly understood only two
swayamvars, one in Mahabharat where the choice was not left on the bride but on
the act of chivalry to be performed by any prince and whosoever succeeded in such
performance got the hand of Draupdi. Similarly, in Ramayana choice was not left
to the bride but again on performance of chivalrous act by a prince who could
break the mighty Dhanusha (bow). Therefore, originality lies in the concept of
plaintiff by conceiving a reality TV programme of match making and spouse
selection by transposing mythological swayamvar to give prerogative to woman to
select a groom from variety of suitors and making it presentable to audience and to
explore it from commercial marketing. Therefore, the very concept of
matchmaking in view of concept of the plaintiff giving choice to the bride was a
novel concept in original thought capable of being protected.
Moreover, as regards infringement, the court referred to the parameters
laid down by the Supreme Court in R.G. Anand case, and quoted that, Where
the same idea is being developed in a different manner, it is manifest that the
source being common, similarities are bound to occur. In such a case the
courts should determine whether or not the similarities are on fundamental or

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 substantial aspects of the mode of expression adopted in the copyrighted
work. If the defendant's work is nothing but a literal imitation of the copy-
righted work with some variations here and there it would amount to
violation of the copyright. In other words, in order to be actionable the copy
must be a substantial and material one which at once leads to the conclusion
that the defendant is guilty of an act of piracy. Applying this criterion the
court decided that there was substantial and material similarity in the show
being proposed by the Defendants to that of the Plaintiff. Consequently, the
court used this finding of infringement as a basis for the conclusion that it would
be unfair competition if the Defendants were allowed to telecast their show before
the Plaintiff, and ordered an injunction in favour of the Plaintiff, restraining the
defendants, theirs agents from transmitting or enabling the transmission by
television of the programme entitled ‗Shubh Vivah‘ or any other programme or
transmission whatsoever having its subject or theme of match making for a period
of four months from the date of the order. It was further held that if the plaintiffs
are not in a position to transmit on television its programme entitled 'Swayamvar'
within a period of four months, defendants shall be at liberty to transmit its
programme Shubh Vivah after expiry of four months. In case the plaintiff launches
its programme 'Swayamvar' within a period of four months from the date of the
order, the defendants are further restrained from transmitting or showing or
exhibiting or televising its programme 'Shubh Vivah' or any other programme
having its subject or theme of match making for a further period of two months.
6. Zee Telefilms v. Sundial Communications & Ors., (Bombay High Court 2003)
Hon'ble Judges: A.P. Shah and D.K. Deshmukh, JJ.
The facts of this case are similar to the facts of the Anil Gupta case. The claims
in this case are also in relation to copyright infringement and misuse of
confidential information. This case is important in terms of understanding the
degree of development an idea needs to have to in order to be considered an
expression and be protected by copyright. This summary will focus on the aspect
of the alleged copyright violation.
The facts of the case are as follows: the Plaintiff Co. had prepared the details of
a serial called 'Kanhaiyya'. The concept, as registered, was based on a family
where 'Kanhaiyya' who is an avatar of Lord Krishna, appears as a child and is a
succor to them and helps them. He plays with them, performs small miracles for
them. If they behave badly or fight, he goes back. He adds joy and happiness to the
entire family.
The Plaintiff prepared a pilot of the film and showed it to the Defendants for the
purposes of producing and broadcasting the show. The Plaintiff provided the
Defendants with a detailed concept of the serial and also provided them with a
pilot. There was a lot of interaction between the parties relating to the show, also
the name of the show was altered to ‘Krish Kanhaiyy’. Subsequent negotiations
between the parties did not work out. Later, the Plaintiff was informed that the
Defendants are airing a show called ‘Krish Kanhaiyya’. On inquiry it was found
that the defendant's show is also based around a dysfunctional large family with
internal fights and ‘Kanhaiyya’ coming down, weaves magic around the family
and gets them to come together with their troubles going away. The only
differences being that in the Plaintiff‘s work, the role of Kanhaiyya was being
played by a boy, while the Defendant‘s serial had a girl playing the role. Further,
the main female protagonist in the Plaintiff‘s show was the mother in the
household. The Defendant‘s serial had the dadima as the main female protagonist.

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 Considering these similarities and differences, the Bombay High Court applied the
R.G. Anand dicta and came to the conclusion that the ideas of a dysfunctional
family, Lord Krishna or gods helping such family etc. were very common and
qualified as mere ideas not entitled to copyright protection. The court disagreed in
that it concluded that in the instant case the idea had been developed into a concept
fledged with adequate details, sequences etc., a pilot of the serial had also been
shot, firmly placing the same in the realm of an expression. Thus, the Plaintiff‘s
work was entitled to copyright protection.
The Court next examined the claim of copyright infringement and stated that
since the Defendant‘s serial was substantially similar to the Plaintiff‘s copyrighted
work, with only cosmetic changes in place, the Defendant was liable for copyright
infringement and could not broadcast his serial.

B. FUNCTIONALITY
7. Mazer v. Stein, 347 U.S. 201.
The question in this case is whether an ornamental object which also has utility
can be subject to copyright protection. The Plaintiffs in this case had obtained
copyright protection for certain statuettes depicting male and female dancing
figures. These figures were used as bases for table lamps. The defendants in the
case made copies of the figures to use their own, competing lamps. In the resulting
infringement suit, the defendants argued that where a work of art or artistic
craftsmanship is ultimately incorporated into a useful object., the work should not
be copyrightable because the exclusive form of protection should be a design
patent. The Court rejected the argument, concluding that, ―We find nothing in the
copyright statute to support the argument that the intended use or use in industry of
an article eligible for copyright bars or invalidates its registration. We do not read
such a limitation into the copyright law.
Consequently the Court concluded that, “owners of copyrighted statuette of
human figures, used in table lamps, could not exclude others from using statuettes
of human figures in table lamps, but could only prevent others from using copies of
the copyrighted statuette as such or as incorporated in some other article.”
Thus, the decision in this case clarifies that in the event that a work has both
aesthetic and utility factors, applying the doctrine of separability, only the
aesthetic aspect of the work will be entitled to copyright protection. Consequently,
in cases where the aesthetic aspects cannot be divorced from utilitarian aspect of
the work, the work is not entitled to copyright protection.

C. DOCTRINE OF MERGER
The doctrine of merger states that when the ‗idea‘ and its ‗expression‘ are
inseparable, copyrighting the expression in such circumstances would confer a
monopoly of the idea on the copyright owner, taking the idea itself out of the
public domain. Thus, such instances where there is only or one of the few
forms of expression of an idea, the idea cannot be protected under copyright
law.
8. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 379 F.2d 675 (1st Cir.
1967)
In this case the Plaintiff alleged that the Defendant‘s product infringed his
copyright registration of a pin in the shape of a bee formed of gold, encrusted with
jewels. The Defendant alleged that they manufactured and sold a line of jeweled
bee pins which they had designed themselves after a study of bees in nature and in

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 published works and did not copy plaintiff's copyrighted bee. It is pertinent to note
that the Plaintiff‘s bee had nineteen small white jewels on its back, while
defendants' entire line of a score or more jeweled bees was in three sizes decorated
with from nine to thirty jewels of various sizes, kinds, and colors. Thus, the
Plaintiff argued that in spite of the differences, the Defendant‘s work was
substantially similar to that of the Plaintiff, and therefore infringed the Plaintiff‘s
copyright.
While addressing these arguments, the court referred to the doctrine of merger.
The court held that with regard to details, the Defendant‘s pin was substantially
different from the Plaintiff‘s design. Moreover, the court also opined that in its
arguments the Plaintiff had attempted to give a very broad interpretation to his
copyright so as to cover largely every kind of jeweled pin. In spite of these
observations, the court felt that the problem of subconscious copying, which would
also amount to infringement was not addressed. Thus, the court reasoned that there
are only a limited number of ways to make a jeweled pin that looks like a bee, and
that any subsequent design of such a pin would bear a close resemblance to the
Plaintiff‘s pin. If everyone else‘s pins were found to infringe the Plaintiff‘s, the
Plaintiff would be the only person allowed to make pins in the shape of a bee.
Thus, the court held that, When the ‘idea’ and its ‘expression’ are thus
inseparable, copying the ‘expression’ will not be barred, since protecting the
‘expression’ in such circumstances would confer a monopoly of the ‘idea’
upon the copyright owner free of the conditions and limitations imposed by
the patent law.”
As regards Burden of Proof the Court held that “when there is only a limited
number of ways to express an idea the burden of proof is heavy on the plaintiff
who may have to show 'near identity' between the works at issue.”

9. Kay Berry v. Taylor Gifts Inc., 421 F.3d 199

The Plaintiff, Kay Berry, manufactured and produced "Garden Accent
Rocks," which it describes as decorative, cement-cast, outdoor sculptures
typically resembling rocks or stones, inscribed with writings. Subsequently,
Kay Berry applied for a copyright registration for its entire line of Garden
Accent Rocks. The Garden Accent Rock Catalog was the document
specimen for the registration. The Catalog identified each sculpture by
number and featured a description and photograph of each individual work. The
United States Copyright Office issued Kay Berry a Copyright Registration
Certificate with an effective date of July 1, 1997. The Certificate identified the
scope of the Certificate's subject matter as simply [s]culptural works with
design and text.
One of these several copyrighted structures was a rectangular object
having a stone-like appearance and a verse inscribed on the face. The verse
appears in five lines, inscribed in a right-leaning font with the first letter of
each word capitalized: If Tears Could Build A Stairway, And Memories A
Lane, I'd Walk Right Up To Heaven And Bring You Home Again.
Subsequently, the Defendant also started selling a structure similar to the
Plaintiff‘s structure and it was known as the memory stone. The Memory
Stone's verse was also laid out in the same five-line format, each word also
began with a capital letter, and the entire verse also appeared in a right-leaning
font.

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 According to the court, a sculptural work‘s creativity derives from the
combination of texture, color, size, and shape, as well as the particular verse
inscribed and the way the verse is presented. In situations where an author
combines these elements and adds his or her own imaginative spark, creation
occurs, and the author is entitled to protection for the result. It means nothing
that these elements may not be individually entitled to protection; ―all creative
works draw on the common wellspring that is the public domain. In this pool
are not only elemental 'raw materials,' like colors, letters, descriptive facts, and
the catalogue of standard geometric forms, but also earlier works of art that, due
to the passage of time or for other reasons, are no longer copyright protected.‖
Thus, the court concluded that the structure of the Plaintiff‘s was entitled to
copyright protection.
As regards infringement, the Defendants argued that the similarities of ideas
behind the concept had led to similarity in expression, thus, they were not liable
for copyright infringement.
(BURDEN OF PROOF) The court referred to several decisions on the point
and stated that in situations where there are very few ways to express a certain
idea, the burden of proof on the Plaintiff alleging infringement is very high. To
quote, . when there is only a limited number of ways to express an idea the
burden of proof is heavy on the plaintiff who may have to show 'near identity'
between the works at issue. Based on this reasoning the court went on to state
that they would remand the matter to the District Court, wherein the District
Court would have to decide the infringement suit accounting for the fact that
Kay Berry claims that Appellants infringed its copyright not by using the same
public domain poem, or inscribing a rock with text, but by copying the specific
combination of elements it employed to give Sculpture No. 646 its unique look
and also for the fact that the evidentiary burden upon the Plaintiff is high and in
order to prove infringement the Plaintiff ought to demonstrate that the Memory
Stone is neither a unique creation, nor the unavoidable expression of a common
idea, but rather an impermissible copy of Sculpture No. 646.

D. ORIGINALITY
The idea behind the concept of originality basically is that he work in question
must be an independent creative product of the author. Section 102 of the U.S.
Copyright Act, 1976 provides a general definition of the subject matter of
copyright. The first part of the Section reads as follows:
“Copyright `protection subsists.. in the original works of the authorship, fixed
in any tangible medium of expression, now known or later developed, from which
they can be perceived reproduced or otherwise communicated, either directly or
with the aid of a machine or device.”

10. Walter v. Lane, (1900) AC 539.

The facts of the case are that: the Earl of Rosebery on five occasions in 1896
and 1898 delivered to the public audience speeches on subjects of public interest.
The Reporters of ‗The Times‘ took down the speeches in shorthand, wrote out
their notes, corrected, revised and punctuated them and the reports were published
in ‗The Times‘, the speeches being given verbatim as delivered by Lord Rosebery.
The reporters were employed under the terms that the copyright in all reports and
articles composed by ‗The Time‘ magazine should belong to the proprietors.

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 In the year 1899, the respondent published a book called Appreciations and
Addresses: Lord Rosebery, which contained the reports of the above speeches of
Lord Rosebery and it was admitted that these reports were taken from the reports
in ‘The Times’.
Lord Rosebery made no claim. The appellants brought an action against the
respondent claiming a declaration that a copyright of the articles and reports was
vested in the proprietors of 'The Times'.
The issue involved in the case was whether a person who makes notes of a
speech delivered in public, transcribes them and publishes in the newspaper a
verbatim report of the speech, is the author of the report within the meaning of the
Copyright Act, 1842, and is entitled to the copyright in the report.
The House of Lords held that each reporter is entitled to report and each
undoubtedly would have a copyright in his own published report. It was of course
open to any other reporter to compose his own report of Lord Rosebery's speech,
and to any other newspaper and book to publish that report; but it is a sound
principle that a man shall not avail himself of another's skill, labour and expense by
copying the written product thereof; and copyright has nothing to do with the
literary merits of the author or composer. It may exist in the information given by a
street dictionary. If a person chooses to compose and write a volume devoid of the
faintest spark of literary or any other merit, there is no legal reason why he should
not, if he desires, become the first publisher of it and register his copyright,
worthless and insignificant as it would be.

11. University of London Press, Limited v. University Tutorial Press,

Limited, [1916] 2 Ch. 601.
This is an English case decided by the Chancery Division in United Kingdom.
The case involved the question whether papers set by examiners are ―original
literary work‖ within the meaning of the Copyright Act, 1911. The case was an
infringement suit filed by the University of London Press against the
Defendants for publishing a series of question papers, for which the copyright
had been assigned from the University of London to the Plaintiff.
The facts of the case are as follows: Certain persons were appointed as
examiners for matriculation examination of the University of London on a
condition that any copyright in the examination papers should belong to the
University. The University assigned the copyright to the plaintiff company. After
the examination, the defendant company brought out a publication containing a
number of the examination papers, including three which had been set by two
examiners appointed by the University. The plaintiff company brought a case of
copyright infringement against the defendant company. It was argued that since the
setting of the papers entailed the exercise of brainwork, memory, and trained
judgment, and even the selection of passages from other author's work involved
careful consideration, discretion and choice they constituted original literary work.
On the other and, the defendants claimed that what they had done was fair dealing
for the purposes of private study which was permissible under the law.
The court agreed that the material under consideration was a literary work.
According to the court, The words 'literary work' cover work which is expressed in
print or writing, irrespective of the question whether the quality or style is high.
The word 'literary' seems to be used in a sense somewhat similar to the use of the
word 'literature' in political or electioneering literature and refers to written or
printed matter.‖ The court noted that the definition of literary work is not

81
restricted to novels or other great works of literature but also extends to
maps, charts, tables and compilations. Thus, there isn‘t any need for any
literary style for the purposes of attaining copyright protection. Consequently,
the court concluded that literary work‖ covers work which is expressed in
print or writing, irrespective of the question whether the quality or style is
high and papers set by examiners are, in the court‘s opinion, "literary work"
within the meaning of the Copyright Act.
With respect to the originality issue, the Court held that the term 'original' under
the Act does not imply original or novel form of ideas or inventive thought, but
the work must not be copied from another work - that it should originate
from the author.
The next question which followed was whether question papers satisfied the
requirement of originality. In this regard the court held that, The word original‖
does not in this connection mean that the work must be the expression of original
or inventive thought. Copyright Acts are not concerned with the originality of
ideas, but with the expression of thought, and, in the case of literary work, with the
expression of thought in print or writing. The originality which is required
relates to the expression of the thought. But the Act does not require that the
expression must be in an original or novel form, but that the work must not be
copied from another work - that it should originate from the author. In the
present case it was not suggested that any of the papers were copied. The
professors who set the papers proved that they had thought out the questions which
they set, and that they made notes or memoranda for future questions and drew on
those notes for the purposes of the questions which they set. Thus, the papers
which they prepared originated from themselves, and were, within the meaning of
the act, original and could be subject matter of copyright. – Thus the work
originated from the author.

12. Feist Publications, Inc., v. Rural Telephone Service Company, Inc., 499
U.S. 340.
The facts of this case are as follows: Rural TS provided telephone services in
the District and as per the State law brought out a telephone directory of the area,
which it distributed free of charge. The Directory consisted of white pages and
yellow pages. The white pages listed in alphabetical order the names of Rural's
subscribers, together with their towns and telephone numbers. The yellow pages
list Rural's business subscribers alphabetically by category and feature
classified advertisements of various sizes. Rural distributes its directory free of
charge to its subscribers, but earns revenue by selling yellow pages advertisements.
Similar to this Directory the Appellants (defendants originally), a publishing house
released a directory. This directory also has white and yellow pages and the
division of details was also similar. Prior to publishing its directory Feist
approached each of the 11 telephone companies operating in northwest Kansas and
offered to pay for the right to use its white pages listings. However, Rural refused
to license its listings to Feist. Rural's refusal created a problem for Feist, as
omitting these listings would have left a gaping hole in its area-wide directory,
rendering it less attractive to potential yellow pages advertisers. Given this
situation, Feist used the listings without Rural's consent. The court also noted that
though Feist had added details to these entries, the basics about the contacts were
identical to the entries in Rural‘s directory. The Defendants argued that they are

82
not liable for copyright infringement as a directory cannot enjoy copyright
protection as it does not qualify as an original work.
The court addressed this contention of the by dividing it into two factions, one
that facts themselves are not copyrightable. However, compilations of data or facts
generally are. Working these two ideas in a consistent manner is quite difficult.
Given this problem, the court interpreted originality as ―the term is used in
copyright, means only that the work was independently created by the author (as
opposed to copied from other works), and that it possesses at least some minimal
degree of creativity.‖ It is pertinent to note that the level of creativity required is
extremely low. Thus the court went on to say that, ―Originality does not signify
novelty; a work may be original even though it closely resembles other works so
long as the similarity is fortuitous, not the result of copying.‖
Thus, facts in the directory cannot be subject of copyright. However, the
Directory as a compilation of facts can be the subject matter of copyright because,
―The compilation author typically chooses which facts to include, in what order
to place them, and how to arrange the collected data so that they may be used
effectively by readers. These choices as to selection and arrangement, so long as
they are made independently by the compiler and entail a minimal degree of
creativity, are sufficiently original that Congress may protect such compilations
through the copyright laws. Thus, minimal degree of creativity evidenced by
selection and arrangement of facts is required for such compilations to be protected
by copyright.

13. Law Society of Upper Canada v. CCH Canadian Co, 2004 FSR 871/
[2004] 1 S.C.R. 339.
In this case the Defendant, a law society, provided a request based photocopy
service for its members, the judiciary and other authorised researchers.
The Plaintiff, a body of law publishers, sued the society for infringement,
especially for copyright infringement of 11 specific works. The charge being that
the defendant had infringed copyright by authorising its patrons to make
photocopies of their copyrighted material.
The Defendant claimed that there can be no infringement when such a ―single‖
copy made of a decision, statute, case summary etc. for the purpose of research
(this defence falls within the category of fair dealing). Also, it was argued that
certain works (like judgments and case summaries published by the Plaintiff) were
already in the public domain and were not original enough to be the subject matter
of copyright. The Court addressing the argument of originality stated that for a
work to be original it has to be more than a mere copy, there needs to be exercise
of skill and judgment by the author. The requirement of skill and labour aims to
ensure that the work produced is not completely a mechanical copy and that there
is minimal creativity.
On this basis the Canadian Supreme Court concluded that the making of
headnotes involve skill and labour and therefore can be subject matter of copyright.
Similarly, topical indices can be subject matter of copyright.
Lastly, the court held that as afar as judicial decisions are concerned, one should
take the work as a whole and accordingly an infringement action. Such a decision
should not be made on the basis of individual factors. Overall form represented by
the compilation is also protected, if it reflects application of skill and labour and
the skill and labour applied is more than being merely mechanical in nature.

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 14. Eastern Book Company and Others v. D.B. Modak and Anr., 2008 (1)
SCC 1
Bench: B. N. Agarwal & P. P. Naolekar, (2007 INDLAW SC 1341)
(INDEPENDENT CREATIVE EFFORT + MINIMAL CREATIVITY)
In the case before the High Court, the Plaintiff had sued the Defendant for
copyright infringement. Plaintiffs (Appellants) were involved in publishing
businewess of printing and publishing of various books relating to the field of law.
The plaintiffs publish the SCC, journals and also are proprietors of the SCC online
database. In these works the Plaintiffs claimed copyright in the headnotes, in
the selection, manner of arrangement and in the manner of presentation of the
judgments in both printing and electronic form in the introductory line
appended by them before each judgment which reads "The judgment of the
Court was delivered by", in the paragraph numbering introduced by the
editorial staff, in the copy-edited portions judgment of the Supreme Court
and in the style and form of printing adopted by them for publication of the
judgments of Supreme Court of India in the law reports.
The Defendants have developed a software package called "THE LAWS",
published in two CD ROMs and also a software package called "GRAND JURIX"
published in three CD-ROMs. It is alleged by the plaintiff that the short notes
and head notes of the defendants' software in both the cases were identical to
the short notes and headnotes published in the plaintiffs S.C.C. and the
defendants had not only slavishly copied the head notes, but had also copied
the entire text of the copy-edited judgments verbatim as published in the
plaintiffs' law report SCC alongwith and including the style and formatting,
the copy editing, the paragraph numbers, footnote numbers, the cross
references etc.
The defendants argued that the judgments of courts are in public domain and
were not capable of exclusive appropriation by any one party. Moreover, the
format and style of presentation of the defendants is also stated to be completely
different from that of the plaintiffs. It is also stated that there could not be any
copyright in mere typographical arrangement and standard formats.
The court stated that, ―there cannot be any monopoly in the subject matter
which the author has borrowed from public domain. Others are at liberty to use the
same material. Material in which no one has a copyright is available to all. Every
man can take what is useful from them, improve, add and give to the public the
whole comprising the original work with his additions and improvements. Under
the guise of the copyright, the plaintiffs cannot ask the Court to restrain the
defendants from making this material available to public. Therefore, of the
judgments/orders published by the plaintiffs in their law reports "Supreme
Court Cases" is not their original literary work but has been composed of,
compiled and prepared from and reproduction of the judgments of the
Supreme Court of India, open to all. Thus, merely by correcting certain
typographical or grammatical mistakes in the raw source and by adding
commas, full stops and by giving paragraph numbers to the judgment will not
their work as the original literary work entitled to protection under the
Copyright Act. Plaintiffs, therefore, have no copyright in the judgments
published in their law reports.
More specifically with regard to head notes - S.K. Mahajan, J. held that, ―A
genuine abridgment of judgments of the Court is an original work and can be the
subject-matter of infringement of a copyright even if the amount of originality is

84
very small. However, in case the head-notes are verbatim extracts from the
judgments of the Courts, there is no amount of skill or labour involved in preparing
the head-notes and no person can claim a copyright therein. I have not gone
through the head-notes of each and every judgment published in the journal of the
plaintiffs nor I have gone through each and every head note of the judgments in the
data base of the defendants and I am, therefore, not in a position at this stage to
comment as to whether or not these head-notes are verbatim extracts from the
judgments of the Court or whether any labour or skill of the plaintiffs is involved
in preparing the head-notes. But, in case, the head-notes have been prepared by the
plaintiffs with their own labour and skill and there is originality and creativity in
the preparation of head-notes, there cannot be any dispute that the party which has
produced the head-notes will have a copyright therein. Re-production of either a
few sentences from the judgments of the Court or the entire paragraph or the
joining together of some of the sentences of the judgment in the head-note, in my
opinion, cannot be said to be either the creative or the original work or the
abridgment of the judgment of the Court.‖
In the appeal before the Apex Court, the Court held that the questions which
require determination by the Court are: (1) What shall be the standard of originality
in the copy-edited judgments of the Supreme Court which is a derivative work and
what would be required in a derivative work to treat it the original work of an
author and thereby giving a protected right under the Copyright Act, 1957 to the
author of the derivative work? and (2) Whether the entire version of the copy-
edited text of the judgments published in the appellants law report SCC would be
entitled for a copyright as an original literary work, the copy-edited judgments
having been claimed as a result of inextricable and inseparable admixture of the
copy-editing inputs and the raw text, taken together, as a result of insertion of all
SCC copy-editing inputs into the raw text, or whether the appellants would be
entitled to the copyright in some of the inputs which have been put in the raw text ?
The Apex Court went on to define ‗derivative works‘ as works that are based
on existing subject-matter. With regard to copyright in judgments in general, the
court held that in light of Section 2(k) of the Copyright Act, the judgments
delivered by the Supreme Court would be a government work and the government
is the first owner of the copyrighted material. The court went on to state that,
―Section 52(1) expressly provides that certain acts enumerated therein shall not
constitute an infringement of copyright and sub-clause (iv) of clause (q) excludes
the reproduction or publication of any judgment or order of a Court, Tribunal or
other judicial authority, unless the reproduction or publication of such judgment or
order is prohibited by the Court, the Tribunal or other judicial authority from
copyright. Thus, the judicial pronouncements of the Apex Court would be in the
public domain and its reproduction or publication would not infringe the copyright.
Given this legal set up, it is clear that no one else can claim copyright over the
judgment itself in the course of publishing the judgment. The question then is
whether the publishing companies enjoy any degree of copyright over the material.
It is pertinent to note that the Court treated the judgments published by the
Plaintiffs as derivative works and went on to state that such works in order to
be copyrightable should exhibit originality and there should the required
exercise of independent skill, labour and capital in its creation by the author
to qualify the work for the copyright protection. Moreover, the court also held
that such skill, labour and capital so spent on creating the derivative work
should not be negligible. – Not merely mechanical.

85
 Based on this legal position, the respondents argued that in introducing
corrections, punctuations, paragraph numbers, cross citations and head notes, etc.
the Plaintiffs have exercised sufficient independent skill, labour and capital to
bring forth a derivative work which is original in comparison to the primary work.
On the other hand the Defendants argued that, ―the judgments published in the
Supreme Court Cases is nothing but merely a derivative work based upon the
judgments of the court, which lacks originality as it does not depict independent
creation even a modicum of creativity.‖ It is pertinent to note that the Defendants
refuted the application of the ―sweat of the brow‖ theory propounded by the
Plaintiff, according to which if the work was had minimal creativity and was not a
mere copy of the primary work, and in making such work the author had put in
skill and effort, the author was entitled to copyright protection. The Defendants
argued there was lack of originality in the said derivative works. Moreover, they
also stated that, the inputs put by the appellants were nothing but expressing
an idea which can be expressed in a limited way and as such there cannot be a
copyright. Filling the blanks or gaps by providing names of the parties or
citations of the judgments, both of which are well known and unchangeable
parts of that idea, are not original work. These are not creative at all to
warrant copyright protection, either singly or in combination. The additions
made in the reported judgment by the editors of the Supreme Court Cases are
only the well known extensions of the reported decision. These extensions lack
even the minimal degree of author's creativity or originality or intellectual
labour. These additions do not create additional knowledge, the protection of
which is the very basis of the copyright protection.‖ Thus, we see that the
Defendants have brought forth shades of the idea–expression dichotomy and
merger doctrine. Moreover, they claim the requirement of minimal degree of
creativity in a derivative work, in the absence of which the same is not original and
is a mere copy of the primary work. Given these arguments, the Defendants
stated that, ―the copy-editing inputs of the appellants are only
discoveries/facts and there are limited ways/unique of expressing the various
copy-editing inputs and thus no copyright can subsist in such limited/unique
expressions. The facts which are discovered could be expressed in limited
ways and as such ways adopted cannot give copyright protection to the inputs
or the judgments as a whole. Also that, while creating derivative works, ―he
exercise of skill and judgment required to produce the work must not be so
trivial that it could be characterized a purely mechanical exercise. The work
should be independently created by the author as opposed to copied from the
other works and that it possesses at least some minimal degree of creativity.”
In the light of these arguments the Apex Court held that, ―the judicial
pronouncements of the Apex Court would be in the public domain and its
reproduction or publication would not infringe the copyright. That being the
position, the copy-edited judgments would not satisfy the copyright merely by
establishing amount of skill, labour and capital put in the inputs of the copy-edited
judgments and the original or innovative thoughts for the creativity are completely
excluded. Accordingly, original or innovative thoughts are necessary to establish
copyright in the author's work. The principle where there is common source the
person relying on it must prove that he actually went to the common source from
where he borrowed the material, employing his own skill, labour and brain and he
did not copy, would not apply to the judgments of the courts because there is no
copyright in the judgments of the court, unless so made by the court itself. To

86
secure a copyright for the judgments delivered by the court, it is necessary that the
labour, skill and capital invested should be sufficient to communicate or impart to
the judgment printed in SCC some quality or character which the original
judgment does not possess and which differentiates the original judgment from the
printed one. The Copyright Act is not concerned with the original idea but with the
expression of thought. Copyright has nothing to do with originality or literary
merit. Copyrighted material is that what is created by the author by his own
skill, labour and investment of capital, maybe it is a derivative work which
gives a flavour of creativity. The copyright work which comes into being
should be original in the sense that by virtue of selection, co-ordination or
arrangement of pre-existing data contained in the work, a work somewhat
different in character is produced by the author.
To claim copyright in a compilation, the author must produce the material
with exercise of his skill and judgment which may not be creativity in the
sense that it is novel or non- obvious, but at the same time it is not a product
of merely labour and capital. The derivative work produced by the author
must have some distinguishable features and flavour to raw text of the
judgments delivered by the court. The trivial variation or inputs put in the
judgment would not satisfy the test of copyright of an author.
Applying this law to the facts the Apex Court concluded that, ―Arrangement of
the facts or data or the case law is already included in the judgment of the court.
Therefore, creativity of SCC would only be addition of certain facts or material
already published, case law published in another law report and its own
arrangement and presentation of the judgment of the court in its own style to make
it more user- friendly. The selection and arrangement can be viewed as typical and
at best result of the labour, skill and investment of capital lacking even minimal
creativity. It does not as a whole display sufficient originality so as to amount to an
original work of the author. However, as regards paragraph numbering and other
such details, the court held that, ―However, the inputs put in the original text by
the appellants in (i) segregating the existing paragraphs in the original text by
breaking them into separate paragraphs; (ii) adding internal paragraph numbering
within a judgment after providing uniform paragraph numbering to the multiple
judgments; and (iii) indicating in the judgment the Judges who have dissented or
concurred by introducing the phrases like 'concurring', 'partly concurring', 'partly
dissenting', 'dissenting', 'supplementing', 'majority expressing no opinion', etc.,
have to be viewed in a different light. The task of paragraph numbering and
internal referencing requires skill and judgment in great measure. In these inputs
put in by the appellants in the judgments reported in SCC, the appellants have a
copyright and nobody is permitted to utilize the same.
Consequently, the Apex Court concluded that, ―For the reasons stated in the
aforesaid discussion, the appeals are partly allowed. The High Court has already
granted interim relief to the plaintiff- appellants by directing that though the
respondent- defendants shall be entitled to sell their CD-ROMS with the text of the
judgments of the Supreme Court along with their own head notes, editorial notes, if
any, they should not in any way copy the head notes of the plaintiff-appellants; and
that the defendant-respondents shall also not copy the footnotes and editorial notes
appearing in the journal of the plaintiff-appellants. It is further directed by us that
the defendant-respondents shall not use the paragraphs made by the appellants in
their copy-edited version for internal references and their editor's judgment
regarding the opinions expressed by the Judges by using phrases like 'concurring',

87
 'partly dissenting', etc. on the basis of reported judgments in SCC. The judgment of
the High Court is modified to the extent that in addition to the interim relief
already granted by the High Court, we have granted the above-mentioned
additional relief to the appellants.”

E. FIXATION
The Copyright Act protects original works of authorship only if and when
they are ―fixed in nay tangible medium of expression, now known or later
developed, from which they can be perceived, reproduced, or otherwise
communicated, either directly or indirectly with the aid of a machine of
device.

15. Tate v. Fullbrook, [1908] 1 KB 821.

This case dealt with the definition of dramatic works under the Dramatic
Copyright Act, 1833 and the Copyright Act, 1842. The facts of the case are as
follows: An infringement action was brought for an injunction and damages, in
respect of an alleged infringement by the defendant of the plaintiff's copyright
in a ―dramatic piece,‖ the title of which was ―Motoring or the Motorist. The
alleged infringement consisted in the representation by the defendant of a
dramatic piece called ―Astronomy.‖ The controversy was whether the
copyright over the dramatic piece of the Plaintiff was inclusive of the scenic
effects, comic ―business,‖ and physical accessories of a performance, such as
are the common features of the harlequinade in a pantomime. The Defendants
argued that under the Dramatic Copyright Act, 1833, what is considered to be
the subject matter of copyright is something which can be printed and
published, since the details of scenic effects, comic ―business,‖ and physical
accessories of a performance etc cannot be so published and printed, the same
cannot be subject matter of copyright protection. On the other hand the
Plaintiffs argued that copyright protection under the Act covers not only the
words of the piece, but the whole piece, including the dramatic action, the
scenic effects, the make-up of the actors, and other accessories.
The Court while answering this question examined the preamble and other
provisions of the Dramatic Copyright Act and held that, ―the Acts relating to
dramatic copyright contemplate, as the subject of protection under them,
something which can be printed and published. Therefore, where a dramatic
piece in which there is copyright is, as regards the verbal composition, in
substance entirely different from another dramatic piece alleged to constitute an
infringement of that copyright, the mere fact that accessorial matters, such as
scenic effects, make-up of actors, or stage ―business,‖ in the latter piece, as
performed, are similar to those employed in the performance of the former will
not constitute an infringement of the copyright therein, such matters, taken by
themselves, not being the subject of protection under the Acts relating to
dramatic copyright, though in cases where the verbal composition of the pieces
more or less similar such matters may be regarded as throwing light on the
question whether there has been an infringement.
Thus, we see that the decision and interpretation of the Act is such that for
copyright protection under the Act one needs fixation of the work (work which
can be published and printed) and there cannot be protection of accessorial
matters, such as scenic effects, make-up of actors, or stage ―business, which
are not capable of such fixation.

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16. Estate of Hemingway v Random House, 23 N.Y.2d 341. (COPYRIGHT IN
SPEECH)
In this case, the court was called upon to decide a copyright infringement
action brought by the estate of the late Ernest Hemingway and his widow
against the publisher and author of a book, entitled ―Papa Hemingway. The
primary question in the case was whether conversations of Ernest Hemingway
may become the subject of common-law copyright, even though the speaker
himself has not reduced his words to writing.
The brief facts are that the Respondent author and Hemingway were very
good friends and often the respondent author would record the conversations
and often use them as material for his work. It is pertinent to note that
Hemingway approved of such usage by the Respondent author. Post the death of
the Hemingway, the Respondent author and publication house wanted to publish
a collection of these anecdotes, stories and opinions of Hemingway, titled
―Papa Hemingway. The case of copyright infringement was filed against this
publication. The Plaintiffs alleged that Hemingway was entitled to a common-
law copyright on the theory that his directly quoted comment, anecdote and
opinion were his ―literary creations, his ―literary property, and that the
Respondent Authors note-taking only performed the mechanics of recordation.
And, the plaintiffs also argued that ― [w]hat for Hemingway was oral one day
would be or could become his written manuscript the next day, that his speech,
constituting not just a statement of his ideas but the very form in which he
conceived and expressed them, was as much the subject of common-law
copyright as what he might himself have committed to paper. On these grounds
they claimed that the book ―Papa Hemingway‖ violated their copyright. On the
other hand the Defendants argued that since ‘fixation’ of the spoken word or
speech was not possible in any tangible form as required by Copyright law,
speech or spoken words are not entitled for copyright protection.
The concept of common-law property right is as follows: ―Common-law
copyright is the term applied to an author's proprietary interest in his literary or
artistic creations before they have been made generally available to the public. It
enables the author to exercise control over the first publication of his work or to
prevent publication entirely -- hence, its other name, the ―right of first
publication. It is pertinent to note that this right extinguishes on the first
publication of the work. The question then to be addressed is whether such
copyright exists in the spoken word.
The course of the case is as follows: The plaintiffs moved for a preliminary
injunction. The motion was denied and the book was thereafter published. After
its publication, the defendants sought and were granted summary judgment
dismissing all four causes of action. The Appellate Division unanimously
affirmed the resulting orders and granted the plaintiffs leave to appeal to this
court.
As regards the law relating to copyright over speech the court left the
question open ended while making the following observations:
1) There are two problems in recognizing copyright in speech: these
problems are:
One is that of avoiding undue restraints on the freedoms of speech and
press by granting such copyright.

89
 The indispensable rights of the press to report on what people have done, or
on what has happened to them or on what they have said in public would need
to be balanced.
However, the court went on to state that such freedom of speech does not
necessarily imply an unbounded freedom to publish whatever they may have
said in private conversation, any more than it implies a freedom to copy and
publish what people may have put down in private writings.
Second is the difficulty of measuring the relative self-sufficiency of any
one party's contributions to a conversation, although it may be, in the case of
some kinds of dialogue or interview, that the difficulty would not be greater
than in deciding other questions of degree, such as plagiarism. The question of
contribution is mandatory to decide the extent of copyright that a person would
enjoy over the speech.
2) Observing the possible problems in the area of copyrighting free speech,
the court also observed that, ―the rules of common-law copyright assure
protection in the case of written material. However, speech is now easily
captured by electronic devices and, consequently, we should be wary about
excluding all possibility of protecting a speaker's right to decide when his
words, uttered in private dialogue, may or may not be published at large.
Conceivably, there may be limited and special situations in which an
interlocutor brings forth oral statements from another party which both
understand to be the unique intellectual product of the principal speaker, a
product which would qualify for common-law copyright if such statements were
in writing.”
3) the court thus went on to say that, assuming, without deciding, that in a
proper case a common-law copyright in certain limited kinds of spoken dialogue
might be recognized, it would, at the very least, be required that the speaker
indicate that he intended to mark off the utterance in question from the
ordinary stream of speech, that he meant to adopt it as a unique statement
and that he wished to exercise control over its publication. In the absence of
there being such a mark or indication one can assume the existence of implied
license to publish the work, thus negativing the reservation of any common-law
copyright.”

2. SUBJECT MATTER OF COPYRIGHT PROTECTION

A. LITERARY WORKS
17. University of London Press, Limited v. University Tutorial Press,
Limited, [1916] 2 Ch. 601.
The facts of this case have already been discussed in the ‘Idea – Expression’
case summaries document. The Defendants challenged the infringement action
filed against them by the Plaintiff on several grounds, inter alia, that the
examination papers do not satisfy the criteria of ‘originality’ and consequently
are not entitled to copyright. Second, the examination papers do not qualify as
literary works as contemplated by the Copyright Act. Consequently, it falls
outside the subject matter which is granted copyright protection under the
statute and is not protected by copyright.
The first argument has been addressed in the summary of cases dealing with
the idea –expression dichotomy. In this section the second argument relating to

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 original literary work will be addressed. In relation to the second argument the
court stated that, ―the Papers set by examiners are "literary work" within the
meaning of the Copyright Act, 1911. As per the Act, 'Literary work' includes
maps, charts, plans, tables, and compilations. Hence, it may be difficult to
define "literary work" as used in this Act, but it seems to be plain that it is not
confined to "literary work" in the sense in which that phrase is applied, for
instance, to Meredith's novels and the writings of Robert Louis Stevenson.
Consequently, the words "literary work" cover work which is expressed in print
or writing, irrespective of the question whether the quality or style is high. The
word "literary" seems to be used in a sense somewhat similar to the use of the
word "literature" in political or electioneering literature and refers to written or
printed matter. Papers set by examiners are, in my opinion, "literary work"
within the meaning of the present Act.
18. Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber, 61 (1995) DLT
6.
Bench: R.C. Lahoti, J., – The facts of the case are as follows: The Plaintiff
were a mail order service company, which published mail order catalogues
dealing with several consumer items which are posted to the select list of the
plaintiff's clients. By this method the plaintiff did substantial business. For the
purposes of this business, a major was the compilation of a list of
clientele/customers database. The plaintiff alleged that he had developed this
database over a period of three years prior to the institution of the suit by
investing considerable amount of money and time. The Plaintiff also alleged
that the defendant was at one time an employee of the plaintiff, and while the
nature of his duties had nothing to do with the compilation and development of
the database, on severing relationship with the plaintiff, the defendant
established himself as a competitor by entering into mail order shopping
business. It was further contended that the Defendant had managed to get a copy
of the database, an otherwise guarded secret of the plaintiff and has started
making use of the same for the purpose of establishing relationship with the
plaintiff's customers. Subsequently, the Plaintiff contended that his database is
an original `literary work' wherein the plaintiff has the copyright and the
defendant has infringed the same by his illegal act of copying the work.
The question which arose for consideration was whether a database
consisting of compilation of mailing addresses of customers can be subject
matter of a copyright and whether the defendant can be said to have committed
infringement of the plaintiff's copyright.
The Delhi High Court referred to several sources. One such source was
Copinger‘s book, wherein it was stated that as per the US Copyright Law,
"Trade catalogues are generally compilations, and as such are capable of
protection as literary works. On similar principles, a computer database, stored
on tape, disk or by other electronic means, would also generally be a
compilation and capable of protection as a literary work"
The Court also referred to the Ladbroke case, which held that the coupon
(which was a compilation of information in the form of several lists) could be
the subject to copyright protection.
Further, the court also noted that a compilation or database need not be ever
actually written in order to be printed. Quoting to David Bainbridge has in
Software Copyright Law, the court stated that, ―the simplest way of looking at
a computer database is to consider the work it represents, for example, a printed

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 listing of names and addresses, a printed set of documents or a drawing of a
building. Those works are protected by copyright as literary or artistic works. It
does not matter if the work is never produced on paper and only ever exists on
computer storage media.”
Subsequently, referring to an Allahbad High Court decision, the Court
summarized the law on compilations on the following lines:
(1)A compilation which may be derived from a common source falls within
the ambit of literary work.
(2)A work of compilation of a nature similar to that of another will not by
itself constitute an infringement of the copyright of another person's work
written on the same pattern.
(3)The question whether an impugned work is a colourable imitation of
another persons' work is always a question of fact and has to be determined
from the circumstances in each case.
(4)The determining factor in finding whether another person's copyright has
been infringed is to see whether the impugned work is a slavish imitation and
copy of another person's work or it bears the impress of the author's own labours
and exertions.
The aforesaid principles are by no means exhaustive.
Thus, based on these principles the Court concluded that the Plaintiff‘s
compilation of customers, addresses etc can be protected by copyright.
Moreover, on examining the two works, the court concluded that, ―The
striking similarities noticed in the two databases could not have existed but for
the fact of the defendant having made use of plaintiff's database. A strong prima
facie case of infringement by the defendant of the plaintiff's copyright has been
made out to the satisfaction of the court.‖ Thus, the court granted an interim
injunction in favour of the Plaintiff and stated that the defendant shall remain
restrained during pendency of the suit from carrying on any business including
mail order business by utilising the list of clientele/customers included in the
database exclusively owned by the plaintiff.

19. Agarwal Publishing House v. Board of High School, AIR 1967 All 91.
In this case the Plaintiff‘s challenged the action of the Defendant, who
exercising its powers under the Uttar Pradesh Intermediate Education Act, 1921
sought to vest copyright of question papers conducted by Board of High School
and Intermediate Education, U. P. in the Board exclusively. Moreover, the
notification stated that no person allowed publishing question papers without
the permission of the board and payment of certain amount of royalty. Further,
even after publishing the papers with due permission the publishers were not
allowed to publish answers to the same.
The Plaintiff‘s, a publishing house, argued that the notification was ultra
vires the powers of the board as stipulated under the Uttar Pradesh Intermediate
Education Act, 1921. Further, the Plaintiff‘s also alleged that copyright cannot
exist in question papers. Lastly, the Plaintiff‘s contended that the copyright can
only belong to authors of the work and not to the Board, thus the notification of
the board which seeks to transfer the ownership without accounting for the
author‘s rights, is invalid.
Focusing on the second contention, with respect to copyright in question
papers, the Allahbad High Court referred to the University of London Press Ltd.
case and the decision of the Patna High Court in Jagdish Prasad Gupta v.

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 Parmeshwar Prasad Singh, AIR 1966 Pat 33, to conclude that similar to
English law, Indian law also recognizes question papers as literary works, given
the fact that the criteria of minimal creativity and application of labour and skill
are satisfied. Also the court held that prima facie question papers are not
Government Works, since question papers are not ‘under the direction or
control, of the board.’
20. Blackwood and Sons Ltd. and Ors. v. A.N. Parasuraman and Ors., AIR
1959 Mad 410.
Bench: Rajagopala Ayyangar, J.
The present case involves two independent fact situations relating to
infringement actions brought by the Plaintiffs against the Defendants.
In the first instance of infringement, the plaintiffs are M/s. Macmillan and
Co. Ltd. while the defendants are a firm of publishers carrying on business in
Madras under the name and style of "The Little Flower and Co." Madras. The
plaintiffs claimed that they were entitled to the copyright by assignment in
respect of
(1) The Return of the Native by Thomas Hardy, and
in the second instance the Plaintiffs alleged infringement of
(2) A collection of stories by Rabindranath Tagore published under the style
of "Stories from Tagore".
The Return of the Native was prescribed by the University of Madras for the
B. A. degree examination 1956, Part I English. The defendants published in
1954 in Madras without the consent of the plaintiffs a "Guide to the Study of
Hardy's Return of the Native." The other work "Stories from Tagore" published
by M/s. Macmillan and Co. was prescribed as a text book for the Intermediate
Examination of the University of Madras also of 1956 for Part I English. In
regard to this work also the defendants published a guide in 1954. The
complaint of the plaintiffs was that these two "guides" reproduced substantial
parts of the two original works and that though called "guide" they were in
reality copies of the original works which competed with their, sales of these
latter and therefore prejudicially affected the plaintiffs.
The Defendants raised several defenses against the alleged infringement. The
contention which is relevant for our purposes is the argument raised in relation
to copyright in translated works (the works being considered here are the
English translations of Tagore‘s works that had been published by the
Plaintiffs). The Defendants argued, given the fact that the translation of the
Tagore‘s stories were not made within ten years from the date of publication,
the exclusive right of the author to translate had expired and others can also
translate the work.
The court did not accept this argument of the Defendant‘s argument and
disagreed with the Defendant‘s interpretation of section 4 of the 1914 Act which
dealt with copyright protection.
The court held that under Section 4 of the Act, the author or his assignees get
the exclusive right to translate a copyrighted work for a period of ten years.
After this period the exclusive right is lost. However, this does not mean that
any chance of getting copyright in the translations is lost as the person who then
translates the work after the period of ten years gets copyright in the translation.
Thus, to reiterate, if the translation is done within ten years by the author
exercising his exclusive right then he copyright in the work vests in him or in
the person who has translated the work with the permission of the author. If the

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 work is translated by someone after the stipulated period, the permission of the
author is not required to translate the work. Moreover, the translator would get
copyright protection in the translation as an ‘original literary work’ and would
be entitled to enforce his copyright (for the normal term of copyright protection)
against others in an action for infringement.
21. Nag Book House and Anr. v. State of West Bengal and Ors., AIR 1982
Cal 245.
In this case the circulars issued by the West Bengal government under which
West Bengal Board of Secondary Education was to exclusively undertake to
publish and sell text books in Mathematics for Class VII was challenged by
other private publishers on the ground that the circular was violative of Article
19 (1) (g). In defending the circular one of the arguments put forth by the
counsel for the State was that, the preparation and publication of the syllabus
requires skill, capital and labour, it is the product of all these and as such no
publisher including the petitioner have any right to write, print and publish text
books following the said syllabus.‖ While examining this argument the court
considered the parameters of an original literary work and stated that, originality
of a work depends on whether it involved any skill, labour and knowledge of
author.” Applying these parameters to the syllabus, the court held that, the
syllabi is merely prescribing the guidelines which are to be followed by the text
books writers cannot be termed as an original work having some quality or
character of its own different from the raw material used. Therefore, the syllabi
that has been prescribed by the Board being not a product of labour, skill and
capital and not having an independent character and quality of its own the
question of any copyright does not arise from this. The submission of the
learned Standing Counsel that in accordance with the syllabi the text books
prepared by the petitioners is an infringement of the copyright is without any
merit and hence the same is overruled.”
22. Krishika Lulla v. Shyam Devkatta, decided by Supreme Court on
15/10/2015
The respondent wrote a synopsis of a story named ‘Desi Boys’, which was
circulated through email to two other persons. The respondent then saw
promos of a film named ‘Desi Boyz’ which was subsequently released
throughout India on 25. 11. 2011. The respondent now claims that the
appellants had infringed upon his copyright in the title ‘Desi Boys’ through
their film. It must be noted that the respondent has neither viewed nor made
any claims with respect to the film infringing upon his copyright in the story
‘Desi Boys’.
The issue for determination was whether copyright subsists in the title of a
literary work, ‘Desi Boys’ in this instance. The Court noted that S. 13 of the
Copyright Act, 1957 provides protection for original literary works. The Court
stated that a mere title cannot be considered a ‘work’ as it was incomplete in
nature. The term ‘work’ refers to the main content and not the title. Moreover,
it noted that there was nothing literary about or original in the title ‘Desi Boys’
which is composed of two commonly used words in India. Therefore, the
Court held that the title ‘Desi Boys’ cannot be considered a literary work and
that no copyright would subsist in it under S. 13, Copyright Act, 1957.
Moreover, the Court referred to precedent from the Madras and Delhi High
Courts as well as foreign Courts which evidenced the well- settled position
that there can be no copyright in the title of a work. The Supreme Court

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 therefore, held thus: “We are thus, of the view, that no copyright subsists in
the title of a literary work and a plaintiff or a complainant is not entitled to
relief on such basis except in an action for passing off or in respect of a
registered trademark comprising such titles. This does not mean that in no
case can a title be a proper subject of protection against being copied as held
in Dicks v Yates where Jessel M.R said “there might be copyright in a title as
for instance a whole page of title or something of that kind requiring
invention” or as observed by Copinger (supra). In the present case we find
that there is no copyright in the title “Desi Boys” and thus no question of its
infringement arises.” Therefore, the Supreme Court has now definitively held
that there can be no copyright protection for titles of works under normal
circumstances. 

23. Tech Plus Media v. Jyoti Nanda, decided by Delhi HC on 29/09/2014

The plaintiff was a publication house in the field of IT, having both a print
media publication and an online news portal. The plaintiff also had a
collection of  customer details, including email addresses as well as of those
entities that can be contacted for subscription later. The plaintiff claims
protection for this database on the basis that it is a literary work and is the
expression of the immense original skill, thought, process and imagination of
the plaintiff. The defendant had been formerly employed at the plaintiff
company and had access to the plaintiff's database.  

The Court did not agree with the reasoning of the plaintiff and held that the
database was nothing but a collection of e-mail addresses  of the visitors to the
website/ news portal of the plaintiff.  The Court also held that " The plaintiff
cannot be said to be the author or composer or having any contribution in the
same." Therefore, the Court refused to grant copyright protection for databases
in this case

B. ARTISTIC WORKS
24. George Hensher Ltd. Appellants v. Restawile Upholstery (Lancs.) Ltd., [1974] 2
All E.R.

In 1966 the appellants produced the prototype of a popular suite of furniture,

consisting of a settee and two chairs, which was of a distinctly original design
described as 'boat-shaped.' Subsequently the respondents manufactured a suite of
furniture which was markedly similar in shape to the appellants'. The appellants
brought an action, inter alia, for infringement of copyright in their prototype which,
they alleged, was a work of artistic craftsmanship within the meaning of section 3 (1)
(c) of the Copyright Act 1956. The Lower court held that the appellants’ suite was an
artistic work and gave judgment for the appellants on that claim. On appeal by the
respondents, the Court of Appeal reversed that decision. The appellants appealed to the
House of Lords.

The House of Lords while deciding the case attempted to understand what was
meant by the word ‘artistic’.

LORD REID while defining the term ‘artistic’ stated that it meant that, ―a
thing has an artistic character if a person gets pleasure or satisfaction or may be
uplifted from contemplating it. No doubt it is necessary to beware of those who

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get pleasure from looking at something which has cost them a great deal of
money. But if unsophisticated people get pleasure from seeing something which
they admire I do not see why we must say that it is not artistic because those
who profess to be art experts think differently. After all there are great
differences of opinion among those who can properly be called experts.‖ Thus,
we see that there isn‘t any quality or standard requirement to be met in deciding
whether or not a work is artistic. Thus, a work of artistic craftsmanship is not to
be equated with a work of art in order to decide whether the former is “artistic.”
Thus, summing up his concept of ‘artistic’ Lord Reid stated that, ―If any
substantial section of the public genuinely admires and values a thing for its
appearance and gets pleasure or satisfaction, whether emotional or intellectual,
from looking at it, I would accept that it is artistic although many others may
think it meaningless or common or vulgar.
Applying these parameters to the facts at hand, Lord Reid concluded that, In
the present case I find no evidence at all that anyone regarded the appellants'
furniture as artistic. The appellants' object was to produce something which
would sell. It was, as one witness said, 'a winner' and they succeeded in their
object. No doubt many customers bought the furniture because they thought it
looked nice as well as being comfortable. But looking nice appears to me to fall
considerably short of having artistic appeal. I can find no evidence that anyone
felt or thought that the furniture was artistic in the sense which I have tried to
explain. I am therefore of opinion that this appeal should be dismissed.
LORD MORRIS OF /BORTH-Y-GEST was the next Law Lord to address
the question of interpretation of the words ‘works of artistic craftsmanship’. He
accepted that the prototype in question was a work of craftsmanship. However,
as regards ‘artistic craftsmanship’ he stated that in order to decide whether
something is artistic one must consider the object under consideration and the
same must be judged as a thing in itself. Does it have the character or virtue of
being artistic? In deciding as to this some persons may take something from
their ideas as to what constitutes beauty or as to what satisfies their notions of
taste or as to what yields pleasure or as to what constitute aesthetic appeal.
As regards the question, how does a court reach a decision as to whether the
character of being artistic was possessed? Lord Morris relied on expert opinion,
stating that ―As to the second question, I consider that as in all situations
where a decision is required upon a question of fact the court must pay heed to
the evidence that is adduced. Though it is a matter of individual opinion
whether a work is or is not artistic there are many people who have special
capabilities and qualifications for forming an opinion and whose testimony
will command respect. In practice a court will not have difficulty in
weighing their evidence and in deciding whether it clearly points to some
conclusion. In cases where the court is able to see the work which is in question
that will not warrant a decision on the basis of a spot opinion formed by the
court itself but it will be a valuable aid to an appreciation of the evidence.‖
Thus, in practice Lord Morris‘s judgment indicates that what will be ‘artistic’
is essentially dependant on what experts in the area of art consider to be artistic.
Applying these parameters to the facts, the court concluded that, In the
present case the evidence fell short of establishing that the knock-up qualified to
be characterised as a work of artistic craftsmanship. That a buyer for a retailing
company approved of a design and shape and considered that the product would
be a 'winner' only established that it would be likely to attract purchasers.

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 Purchasers might be induced to buy for a variety of reasons which would not
include the attraction of possessing a work of artistic craftsmanship.‖
VISCOUNT DILHORNE - As regards, the term ‘work of artistic
craftsmanship’, Viscount Dilhorne stated that, it is simply a question of fact
whether a work is one of artistic craftsmanship. Questions of fact are often
difficult to decide but juries have to decide them. In many cases it will be easy
to decide whether a work is or is not such a work, but there may be many
borderline cases and I do not think that a clear line can be drawn between works
which are and those which are not artistic.‖ As regards the problem of deciding
whether or not a work was artistic, the Law Lord stated that such a question
would have to be answered by expert witnesses, and on the basis of their
evidence the court can come to the conclusion as to whether a particular work is
artistic or not.
On applying these dicta to the facts of the case, the Law Lord concluded that
the prototype suite did not qualify as a work of artistic craftsmanship.
LORD SIMON OF GLAISDALE stated that in order to determine whether
a work was of ‘artistic craftsmanship’ it is more pertinent to ask, whether the
person who has created the work is an artist-craftsman? Thus, it is 'the intent of
the creator and its result' - which will determine that the work is one of artistic
craftsmanship.
It follows that the artistic merit of the work is irrelevant. (It is no doubt,
because section 3 (1) (c) of the Act of 1956 is concerned with works of artistic
craftsmanship, and not with artistic works of craftsmanship, that it was
unnecessary to repeat the words that appear in section 3 (1) (a), 'irrespective of
artistic quality,' which, as comparison with the words 'artistic character' in the
Act of 1911 demonstrates, refer to artistic merit.)
For the purposes of evidence, it follows, again, that whether the subject
matter is or is not a work of artistic craftsmanship is a matter of evidence; and
the most cogent evidence is likely to be from those who are either
themselves acknowledged artist-craftsmen or concerned with the training
of artist-craftsmen - in other words, expert evidence.
LORD KILBRANDON gives an opinion similar to Lord Simon, wherein he
says that in determining whether a work is of artistic craftsmanship, the opinion
of the critics and the public does not really matter. What matters is whether the
author wanted the creation to be an artistic creation. He states that, ―In my
opinion, the first essential of a work of art (which I think an artistic work
must be) if it is to be distinguished from a work of craftsmanship - is that it
shall have come into existence as the product of an author who is
consciously concerned to produce a work of art. The work either is or is not a
work of art before anyone except the author has seen it; it does not depend for
its artistic character upon the criticism, whether favourable or unfavourable, of
other people who may make value judgments about it. It must be possible to
deduce the conscious purpose of artistic creation from the work itself or
from the circumstances of its creation, but this act arises only when the
question whether it is a work of art becomes one for discussion or decision by
others than the author. Merit is another matter altogether.’
25. Merlet and Another v. Mothercare Plc., [1986] R.P.C. 115.
The First Plaintiff was a clothes designer who also made clothes. She made a
prototype baby‘s cape (The Raincosy) for her own child which was later
manufactured for sale by the second Plaintiff. The Defendants, a substantial

97
 enterprise selling a large range of baby‘s clothes and equipment, having seen the
plaintiff‘s garment, obtained such a garment, caused it to be copied and began to
sell a baby‘s cape made in accordance with the copy.
The plaintiffs commenced proceedings for copyright infringement, basing
their claim both on the allegation that the handmade prototype garment was a
work of artistic craftsmanship and so were the two drawings made after the
creation of the prototype by the first plaintiff. These drawings related to a
method of cutting panels for the garment and to the hood for it. The evidence
showed that the drawings were used in the production of the plaintiffs’
garments.
The defendants produced in evidence the cutting plan which they used to
make the garment in issue. It was computer generated and looked quite different
to either of the concerned drawings. Also, the defendants denied that the
prototype garment was a work of artistic craftsmanship.
Walton J., dismissing the action, held that in approaching the question of
whether the prototype garment was a work of artistic craftsmanship, the
garment had to be considered by itself and neither as worn nor as containing a
baby. The test under section 3(1)(c) of the Act was whether the work in question
was a work of art. On this question the court concluded that though the
prototype Raincosy was a work of craftsmanship, it was not a work of artistic
craftsmanship, as the onlooker derived no aesthetic satisfaction from
contemplating the garment itself; if any such satisfaction was derived, it was
from the contemplation of the ensemble, mother, child and garment, in which
the garment played only a very small part.
Also, in any event, in creating the garment, the first plaintiff was concerned
not with the creation of a work of art but with protecting her child from the
assumed rigours of a Highland summer.
26. Bonz Group v. Cooke (1994) 3 NZLR 216.
Tipping J held that “if two or more people combine to design and make the
ultimate product, I cannot see why that ultimate product should not be
regarded as a work of artistic craftsmanship.” What is important is that there
most be common design to create that work, only in such circumstances will
joint copyright exist.

C. DRAMATIC WORKS
27. Green v Broadcasting Corp of New Zealand [1989] 2 All E.R. 1056 (PC
(NZ))
In this case, the Appellant, Hughie Green, who was the compere of a
television show in the United Kingdom entitled "Opportunity Knocks", tried
to prevent the Broadcasting Corporation of New Zealand from using and
broadcasting an adaptation of the talent show by claiming that copyright
existed in the dramatic format of the show. In particular, the show included a
number of elements such as "make your mind up time" (when votes were cast)
and the "Clapometer" that gauged audience reactions to performances.
The action was dismissed by the trial judge whose decision was affirmed by
the Court of Appeal of New Zealand. The appellant appealed to the Privy
Council only on the issue of copyright infringement. The Privy Council held
that as follows:

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 1. In the absence of precise evidence as to what the scripts of the show
contained, it appeared that these did no more than express a general idea or
concept for a talent contest. They were thus not the subject of copyright.
2. The format of the talent show was not capable of copyright protection,
even though some elements were repeated in each show, as the separate
elements did not sufficiently combine together to form a unified dramatic
work which was capable of protection.

28. Norowizian v. Arks, [2000] F.S.R. 363.

The claimant was a director of advertising films. In 1992 he directed a short
film called Joy, consisting of a man dancing to music. The striking feature of
the visual impact of the film was the apparent sudden changes of position of
the man which could never have been performed as successive movements in
reality. This effect was produced by the use of an editing technique known as
"jump cutting". The first defendant was the advertising agent for Guinness, the
second defendant. The claimant claimed that a Guinness advertisement
entitled Anticipation infringed his copyright in Joy. Anticipationused a similar
jump cutting technique.
The Court held that the expression "dramatic work" should be given its
ordinary and natural meaning, which was a work of action, with or without
words or music, which was capable of being performed before an audience. A
film would often, although not always, be a work of action which was capable
of being performed before an audience and could therefore fall within the
expression "dramatic work" in section 1(1)(a) of the Copyright, Designs and
Patents Act 1988.
As regards the movie Joy, the Court held that unlike some films, Joy is not a
recording of a dramatic work, because, as a result of the drastic editing process
adopted by Mr Norowzian, it is not a recording of anything that was, or could
be, performed or danced by anyone ... It may well be, in the case of Joy, that
the original unedited film of the actor's performance, what I believe are called
"the rushes", was a recording of a dramatic work, but Mr Norowzian's claim is
not in respect of copyright in them or their subject matter. His claim is in
respect of the finished film. However, the court held that, Joy, just like many
cartoon films, being a work of action capable of being performed before an
audience, is, without being a recording of one, a dramatic work in itself.
As regards infringement, the court held that Anticipation was not a copy of a
substantial part of Joy. Similarity in the works stemmed from the striking
similarity between the filming and editing styles and techniques used by the
respective directors of the two films. No copyright subsists in mere style or
technique of editing. Hence, the copyright infringement claim does not hold.

D. MUSICAL WORKS
29. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569.
The Plaintiff in that case owned the copyright to the popular tune Oh Pretty
Woman. Defendants, the rap Group 2 Live Crew, without securing the
permission of the Plaintiff, prepared an alleged parody version of the song,
entitled Pretty Woman. Defendant‘s version, unlike the original, was a rap song,
and had substantially different words from the plaintiff‘s ― sweet, not to say

99
 syrupy original, but plainly used much of the Plaintiff‘s original melody and
some of the original words.
While deciding the case the US Supreme Court referred to the Fair use
doctrine enunciated in Section 107 of the US Copyright Act, and listed the four
factors which help in determining a ‘fair use’. These four factors are as follows:
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes; (2) the nature of
the copyrighted work; (3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and (4) the effect of the use upon
the potential market for or value of the copyrighted work. While explaining the
methodology of applying these factors to any given fact situation, the Supreme
Court stated that, the four statutory factors may not be treated in isolation, one
from another. All are to be explored, and the results weighed together, in light
of the purposes of copyright.
Thus, the court interpreted the Purpose and character of the use parameter
under the fair use doctrine, and stated that, ―the central purpose of this
investigation is to see ... whether the new work merely supersedes the objects of
the original creation, or instead adds something new, with a further purpose or
different character, altering the first with new expression, meaning, or message;
it asks, in other words, whether and to what extent the new work is
transformative.‖ If the work is found to be transformative, it would go on to
satisfy the doctrine of fair use. On this basis the court concluded that the work
of the Defendant‘s was clearly transformative, as Live Crew added substantially
new words to the original tune and changed the format from ballet to rap. Given
the transformative nature of the Defendant‘s work, the same was not a copyright
infringement of the Plaintiff‘s work. Also, addressing another factor in the
application of the fair use defence, the court stated that the commercial nature of
the parody did not make it unfair or an infringement of the Plaintiff‘s work.
30. Bright tunes v. Harrison, 420 F.Supp 177.
This case pertains to the issue of subconscious copying. The courts have held
that the Defendant will still be considered as an infringer even if the
Defendant‘s copying is merely subconscious. Hence, intention is unnecessary
for the purposes of infringement.
In this case the Plaintiff held copyright on the song He‟s So Fine. The late
George Harrision composed a song entitled My Sweet Lord which was alleged
to infringe on He‟s So Fine. The court concluded that Harrison did not
deliberately copy the Plaintiff‘s work, but still held him liable for infringement
because it found that he had subconsciously had the Plaintiff‘s tune in his mind
when he created his own.

E.Copyright in ‘Characters’ :

31. Nichols v. Universal Pictures Corporation (1930, US)

The plaintiff wrote a play based on a marriage between a Jewish boy and an
Irish-Catholic girl and the defendant made a movie revolving round the same
theme. It was held in that case that neither the plot nor the characters of the
original were infringed. Judge Hand must be credited with the initial
development of the law on the matter of copyright protection of fictional
characters. He opined that the protection of characters independent of plot,
while never considered before, could be a possible option. He went on to say

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 that the extent of development of the character is a crucial factor in deciding
whether that character can be copyrighted. …the less developed the character
the less they can be copyrighted; that is a penalty an author must bear for
marking them too indistinctly.
Judge Hand‘s decision gave rise to the distinct delineation test, which was
the first test that provided the Courts with a framework within which cases
involving characters could be decided.
This test works on the idea-expression dichotomy and proposes that as a
character is developed further and further, there is a more distinct, definite and
protectible image or expression he embodies as opposed to being merely an
idea. Therefore, in cases involving infringement of characters, the initial test
was used to primarily determine if a character is even worthy of constituting an
expression. The test required an examination of whether or not the character is
sufficiently developed to merit such treatment and protection. Since then, this
position of distinctiveness has been in place – a character must be sufficiently
well developed in order to constitute an expression.
32. Warner Bros. Pictures Inc. v. Columbia Broadcasting System (1954, US)
The second test to determine whether characters are copyrightable or not
became clear in this case. A book called the ‘Maltese Falcon’ was written by
Dashiel Hammet based on a detective character named Sam Spade. The
exclusive rights in this book were granted to Warner Bros to be used in movies,
radio and television. The author wrote new works, with new plots using the old
character Sam Spade. The contention of Warner Bros. was that the rights to the
work included individual characters, their names and title. The Court analyzed
this basic question of whether the rights included individual characters. The
author contended that the rights transferred are only those specifically
mentioned in the instruments and not any exclusive right to the use of the
characters.
The Court based its decision on the fact that detective writers do continually
use lead characters in successive works and if the intention was to stop this
profitable practice, it would have been specifically mentioned. This was felt
strongly because even the price agreed to be not in consonance with the
complete surrender of characters. Most importantly, legislative intent was
analyzed. This case forwarded the characters as a vehicle of the story test.
Characters are built through the hard work of the authors and come alive
because of the author‘s imagination and creative talent. If characters were
assumed to be transferred along with the rest of the work, that would make for a
restriction far too unreasonable. The characters were vehicles for the story told,
and the vehicles did not go with the sale of the story. This case helped
immensely in establishing the identity of characters but still tied them to the
story in which they appeared.
33. Walt Disney Productions v. Air Pirates (1978, US)
Here, Walt Disney‘s cartoon characters were used in comic books of the
defendants. The difference between the character depiction of Disney and Air
Pirates was that while the former portrayed them as delightful cartoon
characters meant for kids, the latter portrayed them as active members of a free
thinking, promiscuous, drug ingesting counterculture.
In this case, it was held that characters such as Mickey Mouse were
protectible apart from the story in which they appeared. This case certainly
puts in question the vehicles of the story benchmark and seems to suggest

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 that characters have the potential of developing an independent, protectable
identity.
34. Raja Pocket Books v. Radha Pocket Books (1997, India)
The Indian courts have analyzed this issue is the case of Raja Pocket Books
v. Radha Pocket Books. The plaintiff claimed that his comic series was based on
the character Nagaraj. This character was dressed in green and wore a belt
designed like a snake. The series was substantially revolving around the
character itself. Moreover the plaintiff claimed that he is entitled to the
copyright in the character.
The character in the defendant‘s comic series was Nagesh‖ and was said to be
extremely similar to the earlier character in appearance, character and origin.
Among other reasons, the Indian court said that if one were to use the standard
of customer of reasonable intelligence, both characters would be considered
substantially similar in content and appearance.
35. Leslie S. Klinger V. Conan Doyle Estate, Ltd 1:2013cv01226 decided on
Feb 14,2013, Illinois Northern District Court
Sir Arthur Conan Doyle wrote four novels and fifty-six short stories
featuring the fictional characters Sherlock Holmes and his friend and
chronicler Dr. John H. Watson. The first story, “A Study in Scarlet,” was first
published in 1887 (in the United States in 1890). Forty-five further stories and
the four novels were published in the U.S. before January 1, 1923. All of these
works are in the public domain.The remaining ten stories, published after
1922, are still protected by copyright, and owned by a company whose
principals are relatives of Conan Doyle.
The plaintiff of Leslie S. Klinger v. Conan Doyle Estate, Ltd. is, among
other things, an anthologist of new Sherlock Holmes stories. He co-edited an
anthology of such works published by Random House, which had entered into
a licensing agreement with Conan Doyle Estate, Ltd. to use the characters of
Holmes and Watson, notwithstanding Klinger’s belief that no license was
required by law. More recently, however, when Klinger sought to have a
second anthology published by a different house—and Conan Doyle Estate,
Ltd. again demanded that a licensing agreement be entered into (and
threatened to pressure retailers not to sell the new book absent such a license)
—the second publisher balked, prompting Klinger to sue Conan Doyle Estate,
Ltd.
Klinger sued in the United States District Court for the Northern District of
Illinois for a determination of the “copyright status of a list of specific
characters, character traits, dialogue, settings, artifacts, and other story
elements in the [Sherlock Holmes canon; the ‘Canon’].” After some
procedural missteps—including a failure of Conan Doyle Estate, Ltd. to
appear!—Klinger was permitted to move for summary judgment (which the
Estate was permitted to oppose, despite its default). Klinger sought a
determination that the “Sherlock Holmes Story Elements”—defined as those
things listed above as appearing in the pre-1923 Holmes canon—“are free for
public use because the stories in which they were first introduced have entered
the public domain.” This makes sense. (Klinger, the court noted, “abandoned
the argument that the [post-1922 stories] are in the public domain.”] The
Estate, on the other hand, “argue[d] that because Sherlock Holmes and Dr.
Watson were continually developed throughout the entire Canon” (which
includes the post-1922 stories), “the copyright protecting the [post-1922

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stories] should extend to the Sherlock Holmes and Dr. Watson characters and
the story elements pertaining to those characters.” This also makes some
sense. Good thing there was a judge—Chief Judge Rubén Castillo—to decide
which makes more sense.
Klinger’s argument was the one that we’d have expected: When the story
that introduced a Holmesian element entered the public domain, the element
went with it. The Estate countered with the “novel legal argument that the
characters of [Holmes] and [Watson] continued to be developed throughout
the copyrighted [post-1922 stories] and therefore remain under copyright
protection until the final copyrighted story enters the public domain in 2022.”
That is, broadly speaking, as long as some part of a fictional character is still
under copyright, the whole character is. An interesting, dangerous proposition
indeed—and one wonders why there was no discussion of the fact that, by the
Estate’s logic, Holmes and Watson would enter the public domain in 2022 at
the earliest. 2022 is when the last of Conan Doyle’s Holmes stories will be
free for all to copy. But what of licensed stories that further develop the
characters? Why wouldn’t Holmes and Watson remain protected by copyright
until the stories in Klinger’s own first anthology of new Holmes stories enters
the public domain, since the characters of the detective and his friend were
certainly only further developed in those new stories? Alas, there is no answer
to this question. Fortunately, the question is moot because Judge Castillo was
not persuaded by the Estate’s argument.
The court concluded that the pre-1923 Sherlock Holmes story elements—
which evidently includes the characters of Holmes and Watson—“are free for
public use.” The Estate argued that such a holding “[would] dismantle Sir
Arthur Conan Doyle’s characters into a public domain version and a
copyrighted version,” and the court note that that is “precisely what prior
courts have done,” which makes it okay.
The second large part of the decision deals with whether any story elements
introduced in any Conan Doyle-authored post-1922 stories are fee for public
use, notwithstanding that the ten stories themselves are still protected by
copyright. Here some examples of “elements” might be helpful: Dr. Watson’s
second wife was first described in a 1924 story; the doctor’s background as an
athlete was first mentioned in another 1924 story; and Holmes’s retirement
was first recounted in a story published in 1926. Klinger argued that these
character elements and others do not “complete” the characters of Holmes and
Watson and therefore do not qualify for copyright protection. But courts, the
court said, do not distinguish between elements that “complete” a character
and elements that don’t; rather, the law instructs that the “increments of
expression” contained in copyrighted works warrant copyright protection.
Judge Castillo noted that, to date, the cases in the Seventh Circuit had
applied the incremental expression test only to derivative works—and the
Estate argued that because Conan Doyle had developed his characters
throughout the entire canon, no single work was derivative of a previous one
—but the court applied the principles of derivative works to literary sequels
nevertheless. “The subsequent works in the Canon, including the [post-1922
stories], thereby meet the definition of derivative works,” the court held.
Accordingly, the court would apply the increments of expression test… and
would find that Klinger had not provided any evidence that the post-1922

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 story elements are not protectable, and therefore protected, by copyright. Thus
Klinger won big and lost small.
Whether characters are protectable under copyright law is a question
that has a different answer in different jurisdictions; also, it is a question
to which the answer is generally vague all over the world.

3. OWNERSHIP, RIGHTS & INFRINGEMENT OF THE RIGHTS OF THE

COPYRIGHT OWNER

A. AUTHORSHIP – OWNERSHIP

36. VT Thomas v. Malyalam Manorama, AIR 1989 Ker 49.

Mr. Thomas was a cartoonist who worked for Malyalam Manorama. He was
treated as a journalist and paid accordingly. In the course of his employment he
made some famous cartoons. Later he started working for another paper.
Malyalam Manorama wanted to stop him from making similar cartoons for that
newspaper.
Thus, the question which arose was whether the employer can have control
of the employee and his creations post the termination of employment. Related
to this question, another issue was whether Malyalam Manorama continued to
enjoy ownership of copyright over the cartoons post the termination of
employment of the author.
The court held that with respect to particular strips made by Thomas during
his tenure with Malyalam Manorama, even post termination of employment, the
copyright still vests with Malyalam Manorama. However, with regard to the
cartoons made by Thomas post termination of his employment, the ownership
vests with the author and Malyalam Manorama has no right over the same.
37. Bharati Dutta v. Dr. Saradindu, 2008 (37) PTC 178 (CB) Cal:

This case concerned the assignment of the works of D.D. Basu in favour of the
Petitioner, who was the eldest daughter of the author. The son and another
daughter of the author challenged the assignment on the ground that it was
invalid. Amongst other things, the court looked at the usage of the term
“devolve upon” in the assignment, and arrived at the conclusion that this term
indicates, in plain view, the transfer of the rights of the author to his daughter.
The terms assignment, transfer, devolution all hold the same meaning, and
therefore the usage of specific terms such as these is an indication of a
complete transfer. This case highlights a subjective approach that may be
taken by the court to evaluate individual terms of the contracts in question to
arrive at a determination of whether the contract is an assignment or not.

38. Noah v. Shuba, [1991] F.S.R. 14.

In this case, the Plaintiff was a consultant with the Public Health Lab
Services wrote a Guidebook on Hygienic Piercing. The Defendant produced a
similar book on hygiene and substantially copied from the Plaintiff‘s book. The
Defendant argued that the Plaintiff did not have any locus to sue for
infringement as the employer, i.e., the Public Health Lab Services, was the
employer is the owner of the copyright of the book and not the author.

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 On the other hand, the Plaintiff argued that although he was employed by the
Public Health Lab Services, he had not written the book in the course of
employment. Therefore, the copyright does not vest in the employer but with
the author.
On the basis of facts and circumstances specific to the case, the court
concluded that the ownership of the copyright of the guide book rests with the
author. While reaching its decision the court examined the practice of the Public
Health Lab Services, wherein the employees were allowed to retain copyright
over works created by them since PHLS had not claimed copyright over the
same, basically meaning that, PHLS has acquiesced to the practice where
necessary the copyright was to be assigned to them specifically. Thus, in the
absence of such assignment, the copyright continued to be enjoyed by the
author, as in the present case.

39. Community for Creative Non-Violence v. Reid, 490 US 730

In this case, Reid a sculptor in Baltimore was asked by the Community of
Creative Non-Violence (CCNV), a Washington based charitable organization,
to prepare a sculpture that would depict ―the modern day nativity scene‖ of a
homeless family on a steam grate. There were numerous consultations between
the parties as the work progressed, CCNV supplied plans and sketches to Mr.
Reid and also supplied him with the base of the pedestal on which the statute
was to be mounted. Eventually Reid and CCNV had a falling out when CCNV
wanted to take the sculpture on a fund raising tour, and Reid objected. Thus, the
parties went to court litigating on the issue of ownership of copyright in the
statute.
CCNV argued that Reid was an employee, and that the work was thus a work
made for hire because they had actually exercised such control as the work
progressed. The Supreme Court disagreed. It criticized the actual control test by
stating that, ―it turns on whether the hiring party has closely monitored the
production process, the parties would not know until late in the process, if not
until the work is completed, whether the work was made for hire. It held that
employee status should be determined by application of the law of agency.
Further, the court stated that to assist in application of this test, several factors
relevant under the agency law should be accounted for while classifying a party
as an employee. These factors are as follows:
The hiring party‘s right to control the manner and means in which a product
is accomplished (including such factors as) the skill required, the source of the
instrumentalities and tools; the location of the work; the duration of the
relationship between the parties, whether the hiring party has the right to assign
additional projects; the hired party‘s discretion over when, wher and how long
to work; the method of payment; the hired party‘s role in hiring and paying
assistants; whether the work is a part of the regular business of the hiring party;
whether the hiring party is in business; the provision for employee benefits; and
the tax treatment of the hired party.
It is pertinent to note that Reid had established that he had independence in
all the forms stated above, for instance, he worked in his own studio, CCNV did
not pay him social security nor did it give him any employee benefits.
Moreover, he hired his own assistants and paid them.

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 Given these factors the US Supreme Court concluded that Reid was not an
employee of CCNV and therefore the work could only possibly be classified as
a work for hire. In this regard, the court concluded that in the absence of a
specific written agreement stipulating the work as a work of hire, the work
could not be treated as a commissioned work. Consequently, since the work was
not made by Reid in the course of employment nor did it qualify for work made
for hire, Reid, as the individual author, was the owner of the work.

40. Saregama India Ltd. V. Suresh Jindal, AIR 2006 Cal 340:

The case in question dealt with selling of cassettes, videos and other
recordings of films, which the plaintiff claimed were under the copyright of
the plaintiff. The case was decided in relation to various agreements between
the producers of the movies in question, and whether they amounted to
assignments or not. The argument of the defendants was that the agreements
were not assignments, and therefore there could be transfer of ownership in
the hands of the plaintiffs. Amongst other things, the court held that when an
assignment of copyright takes place, the ownership with respect to that right
transfers wholly to the assignee, and the first owner of the copyright does not
hold any rights to the extent of the assignment agreement. Non-payment of
royalty does not defeat the assignment of copyright. Additionally, this case is
also relevant as it identified the prevalent market practice in the
cinematograph film industry, namely that of the producer entering into
assignment contracts with the various artists and holding the ultimate
copyright in the film.

41. See also Najma Heptulla v. Orient Longman Ltd. & Ors. AIR 1989 Delhi
63. (Joint Authorship and Ownership)

42. Zee Entertainment Enterprises Ltd v. Gajendra Singh and ors., 2008 (53)
PTC (36) Bom:

In this case, the plaintiff (Zee TV) alleged that the defendant employee has
been asked to create a concept note for the television programme
“Antakshari”, and that he had been under a contract of service while doing so.
Therefore, when the concept note was create and reduced into writing, the
plaintiff would be entitled to copyright over the same. On a perusal of the
contract, the court found that some of the terms of the contract were indicative
of contract of service, while others were indicative of contract for service. The
court looked at individual components, such as the inclusion of a TDS clause,
use of the word “salary” etc. to arrive at the determination that the contract
was one of service.

B. MORAL RIGHTS
43. Mannu Bhandari v. Kala Vikas Pictures Pvt. Ltd. and Anr., AIR 1987
Delhi 13.
The facts of the case are as follows: Kala Vikas has produced motion picture
'Samay Ki Dhara' under assignment of filming rights of the Plaintiff‘s novel

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 'Aap ka Bunty'. The Plaintiff complained that the movie is a mutilation and
distortion of the novel. Consequently she pleaded for permanent injunction
against its screening and exhibition. The Defendants argued that there was no
such violation of the moral rights of the author and that she while in the contract
of assignment had agreed to allow the Defendants to make modifications to the
novel so as to make the same suitable for a successful film.
The Trial Court had refused an ad-interim restraint order on the ground that
there was no violation of moral rights of the author as stated in Section 57 of the
Copyright Acy. Hence, the appeal is against that order.
While addressing the facts of the case, the court explained the scope of
Section 57 of the Copyright Act as follows, Section 57 confers additional rights
on the author of a literary work as compared to the owner of a general
copyright. The special protection of the intellectual property is emphasised by
the fact that the remedies of a restraint order or damages can be claimed "even
after the assignment either wholly or partially of the said copynght". Section 57
thus clearly over-rides the terms of the Contract of assignment of the copyright.
To put it differently, the contract of assignment would be read subject to the
provisions of Section 57 and the terms of contract cannot negate the special
rights and remedies guaranteed by Section 57. The Contract of Assignment will
have to be so construed as to be consistent with Section 57. The assignee of a
copyright cannot claim any rights or immunities based on the contract which are
inconsistent with the provisions of Section 57.‖ The Court also went on note that
the modification of the work under Section 57 meant ―the perversion of the
original, may amount to distortion or mutilation, and not a change in the work
which may result in the creation of a new work, in interpreting the terms under
Section 57 the rule of ejusdem generis applies.”
Thus, according to the court, a clause allowing for modification of the
literary work so as to make a successful film did not include the right to mutilate
the work such that it is perverse to the original. The said 'certain modifications'
should also not distort or mutilate the original novel.
The Court did not give any decision in the case as the parties had already
arrived at a settlement.
44. Amar Nath Sehgal v. Union of India & Anr., 117 (2005) DLT 717
On the request of the Government of India, the Plaintiff, Mr. Amar nath
Saigal, in 196,2 created a bronze mural sculpture - manifesting itself having 140
ft. span and 40 ft. sweep on walls of the lobby of Vigyan Bhawan i.e. the
entrance. According to the Delhi High court, the mural was a delicate balance
between cultural and material aspects in national perspective and science of
rural and modern India being its theme. Also, the court noted that the mural was
appreciated by everyone who visited the Vigyan Bhawan. In 1979 the
Government of India pulled down and consigned to the store room of the Union
of India. All of this was done without the permission, consent or authorization
of the Plaintiff. The Plaintiff alleged that such removal of the mural amounted
to a violation of his moral rights under Section 57 of the Copyright Act and
prayed fro damages and an injunction restraining any further distortion.
The Union of India contested the suit on the grounds of the suit being barred
by limitation and destruction of the work or it being taken off display not falling
within the contours of moral rights of the Plaintiff.

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 The court stated that the suit was not barred by limitation because till as late
as 1991, the Plaintiff kept getting reassurances from the Government of India
that his work would be restored.
Then the High Court went on to address the issue of moral rights.
First, the court defined moral rights to include the following rights: The first
and foremost right which comes to one's mind is the ''Paternity Right'' in the
work, i.e. the right to have his name on the work. It may also be called the
'identification right' or 'attribution right'. The second right which one thinks of is
the right to disseminate his work i.e. the 'divulgation or dissemination right'.
It would embrace the economic right to sell the work or valuable consideration.
Linked to the paternity right, a third right, being the right to maintain purity in
the work can be thought of. There can be no purity without integrity. It may be a
matter of opinion, but certainly, treatment of a work which is derogatory to the
reputation of the author, or in some way degrades the work as conceived by the
author can be objected to by the author. This would be the moral right of
''integrity''. Lastly, one can conceive of a right to withdraw from publication
ones work, if author feels that due to passage of time and changed opinion it is
advisable to withdraw the work. This would be the authors right to
''retraction''.
As regards the facts in the present case, the court stated that Section 57 of the
Copyright Act was to be read and understood in light of Article 6bis of the
Berne Convention. Thus, on this basis (reading Section 57 in light of the Berne
Convention) the court went on to state that the right to integrity under Section
57 includes the right to integrity of a work of cultural heritage. Further, the
court stated that the phrase ‗other act in relation to the work‘ in Section 57(1)
(b) of the Copyright Act was to be interpreted broadly to include the view that,
given that destruction of a work can prejudice an author's reputation by reducing
the volume of his creative corpus, for the purposes of Section 57, destruction
was to be understood as an extreme form of mutilation of the work and included
within the ambit of the Section as being a violation of the moral rights of the
author.
To reiterate, the court stated as follows: There would therefore be urgent
need to interpret Section 57 of the Copyright Act, 1957 in its wider amplitude to
include destruction of a work of art, being the extreme form of mutilation, since
by reducing the volume of the authors creative corpus it affects his reputation
prejudicially as being actionable under said section. Further, in relation to the
work of an author, subject to the work attaining the status of a modern national
treasure, the right would include an action to protect the integrity of the work in
relation to the cultural heritage of the nation.
Applying these findings to the facts of the case the court concluded that
Amar Nath Seghal‘s mural was a part of the cultural heritage of India.
Therefore, the author enjoyed the right under Section 57 of the Copyright Act to
the integrity of such work. Destruction of such work would be a violation of the
right to integrity enjoyed by the author under Section 57 of the Act.
A committee appointed by the Court found that the mural had in fact been
damaged and parts of the same were missing such that restoration of the same
was not possible. Given these findings the court concluded that the plaintiff has
a cause to maintain an action under Section 57 of the Copyright Act, 1957
notwithstanding that the copyright in the mural stands vested in the defendants.
It is further held that the defendants have not only violated the plaintiff's moral

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 right of integrity in the mural but have also violated the integrity of the work in
relation to the cultural heritage of the nation.
Thus, the Court directed the Defendants to return to the plaintiff the
remanents of the mural with further declaration that the defendants would have
no right in the same as also a declaration that the plaintiff would have a right to
recreate the mural at any other place anywhere in the world including the right
to sell the same. Further, the Plaintiff was also entitled to be compensated for
loss of reputation, honour and mental injury due to the offending acts of the
defendants.

45. Theberge v. Galerie D’Art du Petit Champlain, [2002] 2 S.C.R. 336

The respondent was a reputed painter who had assigned his rights to a
publisher to reproduce his work, publish it in the form of cards, stationery, etc.
However, in making such cards, the publisher used to lift the ink from the
canvas leaving the canvas empty. Respondent thus claimed copyright
infringement and violation of his moral rights. The Supreme Court held that
here that even though this was a reproduction, it was without the consent of the
respondent and only for that reason infringement. However, the court noted in
another leg of the argument that the respondent was trying to re-claim his
assigned economic rights by claiming moral rights. It is in this context that this
case became the first case wherein Canada recognised the balance that needs to
be struck between the owner’s rights and the need for dissemination of the work
and thus the need to place restrictions on the owner’s rights.

C. ECONOMIC RIGHTS

46. Religious Technology Centre v. Netcom Online Communication Services

Inc., 907 F.Supp. 1361
In this case, a man named Dennis Erlich was engaged in a dispute with the
Church of Scientology. As a part of the controversy, he posted on an internet
newsgroup called alt religion scientology lengthy excerpts from various
copyrighted works belonging to the scientology movement. He did this by
posting material on a BBS operated by Mr. K, who in turn put the material on
the internet by using the facilities provided by Netcom, large ISP. In an action
for infringement the court exonerated both the BBS and the ISP, noting that
one cannot be liable for infringement unless the infringer has undertaken the
allegedly infringing acts volitionally. In other words, the defendant must at
least do the copying, even if he does not know that the material is protected.
The court found this element missing in a situation where the BBS and the ISP
are passive and the copies of the offending material are being placed on its
computers by its subscribers.

47. UMG Recordings v. MP3, 92 F.Supp.2d 349

Mp3.com allowed access to copyrighted musical works by way of instant
listening or beam it services. The technology known as ―MP3‖ permits rapid
and efficient conversion of compact disc recordings (―CDs‖) to computer files
easily accessed over the Internet. Utilizing this technology, defendant MP3.com,
on or around January 12, 2000, launched its ―My.MP3.com‖ service, which is

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 advertised as permitting subscribers to store, customize and listen to the
recordings contained on their CDs from any place where they have an Internet
connection. To make good on this offer, defendant purchased tens of thousands
of popular CDs in which plaintiffs held the copyrights, and, without
authorization, copied their recordings onto its computer servers so as to be able
to replay the recordings for its subscribers. The Plaintiff contended that the
actions of the Defendant amounted to the copyright infringement and violated
its right to reproduction.
The Court held that there was a prima facie case of direct infringement.
Subsequently, Mp3.com paid $20 million to each company whose copyright it
had violated. Since, UMG recordings had continued claims; the matter was
settled for $53 million.

D. SECONDARY LIABILITY
48. Sony Corp of America v. Universal City Studios, 464 US 417
The petitioner Sony Corp. manufactured home video tape recorders (VCR's),
and marketed them through retail establishments. The Respondents own the
copyrights on some of the television programs that are broadcast on the public
airwaves. The respondents brought an action against petitioners in Federal
District Court, alleging that VCR consumers had been recording some of
respondents' copyrighted works that had been exhibited on commercially
sponsored television and thereby infringed respondents' copyrights, and further
that petitioners were liable for such copyright infringement because of their
marketing of the VCR's. Respondents sought money damages, an equitable
accounting of profits, and an injunction against the manufacture and marketing
of the VCR's. The District Court denied respondents all relief, holding that
noncommercial home use recording of material broadcast over the public
airwaves was a fair use of copyrighted works and did not constitute copyright
infringement, and that petitioners could not be held liable as contributory
infringers even if the home use of a VCR was considered an infringing use. The
Court of Appeals reversed, holding petitioners liable for contributory
infringement and ordering the District Court to fashion appropriate relief. The
petitioners appealed to the Apex Court.
The US Supreme Court, reversing the judgment of the lower court, held that
the sale of the VTR's to the general public did not constitute contributory
infringement of respondents' copyrights.
Justice Stevens reasoned that the manufacturers of home videotape recorders
demonstrated that the defence of ‘fair use’ applied to their case and hence, the
same did not amount to infringement. The first factor required to be considered
to establish ‘Fair Use’ was to see whether the allegedly infringing activity was
―commercial or non profit in nature. Use for commercial or profit making
purposes would make the infringing use presumptively unfair. However, in the
instant case the court held that the use was time shifting for private home use,
and such use must be characterized as a non- commercial, non-infringing
activity. The fact that the entire work is recorded and reproduced does not take
away from the finding of non-commercial use.
The next factor which the court considered was the effect of the infringing
work on the potential market or the value of the copyrighted work. According to

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 the court, ―A use that has no demonstrable effect on the market or potential
market or the value of the work need not be prohibited to protect the author‘s
incentive to create.‖ Thus, use which does not affect the value or potential
market of the work would be presumed to be fair. Applying the law to the
present case the court held that, owners of copyrights on television programs
failed to demonstrate that time shifting would cause any likelihood of non-
minimal harm to the potential market for, or the value of, their copyrighted
works. Furthermore, the court accounted for the fact that the audience benefits
from the time shifting capability and yields social benefits. On this basis the
Supreme Court concluded that Sony had committed no direct infringement as
their activities fell within the domain of fair use.
As regards contributory infringement, the Court contributory infringement
the court held that the sales of the VCRs were not contributorily infringing
because ―the VCR was capable of commercially significant non infringing
use.‖ In other words, there are many functions for VCRs other than
impermissibly taping copyrighted material. For instance, they can be used to
watch lawfully rented tapes. With such use it becomes impossible to say that the
VCR manufacturer has knowledge that any particular machine will be used to
violate the law. Thus, on this basis the court concluded that Sony was not liable
for contributory infringement. Therefore, the court concluded that the home
videotape recorder was capable of substantial non-infringing uses; thus,
manufacturers' sale of such equipment to general public did not constitute
contributory infringement of respondents' copyrights.
Justice Blackmun filed dissenting opinion in which Justice Marshall, Justice
Powell and Justice Rehnquist joined.

49. A&M Records, Inc. v. Napster, Inc, 239 F.3d 1004 (9th Cir. 2001).
The facts are as follows: Napster was a programme, which allowed its users
to exchange music files through P2P networks. A group of copyright owners
sued Napster alleging contributory copyright infringement.
As regards an action for infringement the court held that in order to prove
infringement the Plaintiffs must satisfy two requirements to present a prima
facie case of direct copyright infringement: (1) they must show ownership of the
allegedly infringed material, and (2) they must demonstrate that the alleged
infringers violate at least one exclusive right granted to copyright holders.
Applying these criteria to the facts of the present case the court held that the
Plaintiffs established prima facie case of direct copyright infringement by users
of service, based on Napsters users ‘activities of downloading and uploading
copyrighted music, in violation of copyright holders‘ exclusive rights of
reproduction and distribution. Given the fact that direct infringement by the
users of Napster Inc. had been proven, the court went on to address the issue of
contributory infringement on behalf of Napster Inc., stating that, ―secondary
liability for copyright infringement does not exist in the absence of direct
infringement by a third party.
In ascertaining secondary (contributory) liability, the Court stated that in
order to be liable for secondary infringement, a service had to have actual
knowledge that specific infringing material was available using its system, and
also having the ability to block access to system by suppliers of infringing
material, it should have failed to remove infringing material. Such service
would materially contribute to the infringing activity by providing site and

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 facilities for direct infringement and would be liable for contributory
infringement.
Applying this standard for secondary infringement, the court interpreted the
Sony judgment, focussing on the level of knowledge, it held that in cases where
a product was capable of substantial non-infringing uses, the presence of actual,
specific knowledge and not constructive knowledge of infringement, would
justify imposing contributory liability. Based on this and given the fact that
Napster was capable of non-infringing uses was clear from the fact that a
number of public domain works were shared and many copyright holders had
authorised the sharing of their files, the Court held that in this particular case the
Plaintiff‘s had to show that Napster had actual specific knowledge of the direct
infringement to be liable for secondary infringement. On facts the court
concluded that, it is apparent from the record that Napster has knowledge, both
actual and constructive, of direct infringement.
The Court also held that Napster had materially contributed to infringement,
as it had provided the site and facilities for infringement by maintaining an
indexed central server and giving technical support to its users. On the basis of
this reasoning the Court held Napster liable for contributory infringement.
Furthermore, the Court disagreed with the District Court‘s interpretation on
Sony, and the Court stated that in interpreting Sony, the focus should not be on
the proportion of current infringing use to non-infringing use, but should rather
be on the product‘s capability for non-infringing use.

50. In re: Aimster Copyright Litigation, 334 F.3d 643 (7th Cir. 2003).
This case was decided by the Court of Appeals, Seventh Circuit. The facts
of the case are similar to the Napster case, in this case owners of copyrighted
popular music filed a number of closely related suits, which were consolidated
and transferred to the Northern District of Illinois by the Multidistrict
Litigation Panel, against John Deep and corporations that are controlled by
him and need not be discussed separately. The numerous plaintiffs, who
among them appear to own most subsisting copyrights on American popular
music, claim that Deep's Aimster Internet service (recently renamed Madster)
is a contributory and vicarious infringer of these copyrights.
The court defined Aimster as one of the various enterprises (the former
Napster is the best known) that have been sued for facilitating the swapping of
digital copies of popular music, most of it copyrighted, over the Internet.
The Court held that for a product which was capable of both infringing and
non-infringing uses, it would be necessary to examine the magnitude of both,
in order to determine whether the product had substantial‖ non-infringing use.
The Court justified its stance by stating that every product is capable in some
way of non-infringing use, and if this view were not taken then the Sony
doctrine would be taken to an extreme. Accordingly, the Court held that in the
particular case, the substantial use was not shown and hence the Sony doctrine
would not apply. Moreover, the court found that there was a material
contribution by Aimster to the infringement as there was a high degree of
facilitation, including maintaining a server and a tutorial explaining how to
share copyrighted music. The Court also held that Aimster‘s wilful blindness‖
of infringement could be deemed to be knowledge, even if there was no
evidence that it had knowledge of specific instances of infringement. In fact,
here the Court disagreed with Napster and stated that, We therefore agree with

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 Professor Goldstein that the Ninth Circuit erred in A & M Records, Inc. v.
Napster, Inc., in suggesting that actual knowledge of specific infringing uses is
a sufficient condition for deeming a facilitator a contributory infringer. As per
the Court, Willful blindness is knowledge, in copyright law (where indeed it
may be enough that the defendant should have known of the direct
infringement), as it is in the law generally, because a deliberate effort to avoid
guilty knowledge is all that the law requires to establish a guilty state of mind.
Thus on the basis of such reasoning and the finding that Aimster had not
satisfied the substantial non infringement use, the court held Aimster liable for
contributory infringement.

51. MGM Studios, Inc. v. Grokster, Ltd., 125 S. Ct. 2764 (2005).
The facts which led to the case were similar to the other two, apart from
one crucial difference i.e. the technology in question. Grokster and
StreamCast, the defendant companies, in contrast to Napster and Aimster,
operated through a decentralized P2P network.
In this case the Ninth Circuit Court again reiterated the parameters of
contributory and vicarious infringement by stating that, one infringes a
copyright contributorily by intentionally inducing or encouraging direct
infringement and infringes vicariously by profiting from direct infringement
while declining to exercise a right to stop or limit it.”
The Court recognized that since the software was capable of being used for
infringing and non-infringing uses, the Sony doctrine, would apply even if a
majority of the use were infringing, as under the doctrine, the product had to
merely be capable of non-infringing use. (This is a clear change from the
position in Aimster). The Sony doctrine, as interpreted in Napster, required
actual knowledge of infringement, if the product was capable of both uses.
Relying on that, the Court held that since the defendants operated through a
decentralised network and that the defendants lacked any means to stop the
infringement once the programme was installed; the knowledge requirement
was not met and hence the defendants were not liable. Moreover, there was no
material contribution either, as there was no provision of any sites or facilities
for infringement.
This decision of the Ninth Circuit was appealed to the Supreme Court and
the court gave a unanimous verdict against the defendants. SOUTER, J.,
delivering the opinion of the Court, held the defendants liable on the basis of
the ―inducement theory‖ of contributory copyright liability. Accordingly, as
per the theory, one who distributes a device with the object of promoting its
use to infringe copyright, as shown by clear expression or other affirmative
steps taken to foster infringement, is liable for the resulting acts of
infringement by third parties.
The Court clarified that mere knowledge of infringing potential or of actual
infringing uses or ordinary acts incidental to product distribution like offering
technical support, updates, etc., would not be enough to bring about liability.
As regards liability under the inducement theory, the court stated that,
―Where evidence goes beyond characteristics of product that may be used to
infringe copyrights or knowledge that such product may be put to infringing
uses, and shows statements or actions directed to promoting infringement, the
staple-article rule set forth in Sony Corp. of America v. Universal City Studios,
Inc., limiting the imputing of culpable intent as a matter of law from the

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 characteristics or uses of a distributed product, will not preclude liability for
inducing copyright infringement.‖ Thus, based on this doctrine, the Court cited
three reasons to hold the companies liable. First, there was evidence to prove
that the defendants positioned themselves as the ―next Napster‖ and thereby
aimed to satisfy a known source of demand for copyright infringement.
Second, neither company attempted to develop filtering tools or other
mechanisms to diminish the infringing activity of the software. Third, the
business model of the two companies was such that the companies, by selling
advertising space, would gain more revenue the more the software was used,
and high volume use of the software would tend to be infringing use.
The Court clarified that the last two reasons added weight to the inference
of unlawful intent, but would not be enough if considered in isolation. With
respect to the Sony doctrine, the Court held that the doctrine was still good
law, however, it would not apply in cases where the object of promoting
infringement was manifest. Ginsburg, J., wrote a concurring judgment with
respect to the extent of the Sony doctrine. She considered a survey
commissioned by the plaintiffs according to which the overwhelming use of
the software was for infringing copyright, and held that the Court of Appeals
erred in not taking it into account while deciding whether the software was
capable of substantial non-infringing uses. Breyer, J., wrote a concurring
opinion, agreeing with Souter, J., while disagreeing with Ginsburg, J. He
emphasised on the potential of non-infringing uses of a product, and according
to him, Sony didn‘t mandate a high number of non-infringing uses to be
shown. Thus, we see that the Court was divided with respect to the
interpretation of Sony as Breyer, J., favoured the stand taken in Napster and
Grokster-1, while Ginsburg, J., favoured the stand taken in Aimster.

52. Devonshire Pine v Day &anr., [2013] EWHC 2619 (Ch)]

Devonshire Pine was an English furniture company.Mr Day was a director
of anotherfurniture company (the second defendants) which had previously
acted on behalf of Devonshire Pine. Among other things it was claimed by
Devonshire Pine that Mr. Day and his company was responsible for copyright
infringement and reverse passing off. Devonshire Pine claimed that Mr. Day
and his company had lifted photographs from their website and published
them on their own website. Secondly a case for reverse passing off was made
out as Mr. Day and his company had pretended that the furniture in the
original photographs on the website belonged to Mr. Day and his company.
There was an application for summary judgment by Devonshire Pine. The
Court however refused to grant a summary judgment clearly stating that while
it was clear that a claim for copyright infringement could be made out,
however a claim for reverse passing off was complex and would necessarily
require further examination during the course of trial. The Court reasoned that
given that there was a clear factual overlap between the copyright
infringement claim and that for reverse passing off it was obvious that there
was a compelling reason for the case to go to trial.

53. M/S Young Achievers v. IMS Learning Resources, (2013) 10 SCC 535.
IMS claimed that Young Achievers were liable of copyright infringement.
Previously IMS Learning Resources entered into a contract with M/S Young
Achievers in 2011. This contract had superseded previous contracts, between

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 IMS and Young Achievers, entered into in the years 2007 and 2010. The
question before the Supreme Court was whether an arbitration clause in the
previous contracts would survive [basically force IMS to go to an arbitrator]
given the new contract had superseded the previous contract entered into by
IMS and Young Achievers [as the contract dated 2011 did not have an
arbitration clause].
The Supreme Court was categorical in pointing out that “An arbitration
clause in an agreement cannot survive if the agreement containing arbitration
clause has been superseded/ novated by a later agreement”.Given it was clear
that the contract (mutually agreed upon) dated 2011 did not have an arbitration
clause, IMS was not bound by the dispute resolution clauses in the previous
contracts.

54. Football Association Premier League Limited v. BSB & Ors., [2013]
EWHC 2058 (Ch)
FAPL asked the Court for an injunction which would require the
defendants to take measures to block or at least impede access by their
customers to a website known as FirstRow Sports. FAPL owned copyright in
various works associated with the English Premier League. FirstRow was a
website which allowed its users to live stream matches. Basically FirstRow
hosted a number of streams which did not originate legally from a broadcaster
licensed by FAPL (usually someone would digitally captureand host the
broadcast of live sports event on his or her computer).
Obviously FirstRow did not have the permission of FAPL to host streams
which broadcasted events on which FAPL had a copyright on.
The threshold for granting an injunction is to firstly examine:
1. If the Defendants service providers?
2. If the operators and users of FirstRow infringe FAPL
copyrights?
3. If the users and/or operators used the defendants services
to infringe copyright?
4. Did the defendants have actual knowledge of the alleged
infringement?
5. If the order of the Court was proportional?
So it was clear to the judge that users and operators of FirstRow were using
the services of the defendants, who clearly were ISP’s,to infringe the
copyright of FAPL. The defendants had also been notified by FAPL about the
instances of copyright infringement. Hence, having satisfied the threshold,
Justice Arnold passed an order directing the ISP’s to block access to the
website which essentially acted as a portal for unauthorised streamed
broadcasts of sporting events by third-party streamers.

55. Magmatic Ltd. v. PMS International Ltd., [2013] EWHC 1925 (Pat)-
Note: In this judgment the Court rules in favour of Magmatic, however the
Court of Appeal on 28th February, 2014 decided to overrule the decision of the
High Court and ruled in favour of PMS International.
A suit was filed by Magmatic Ltd.(founder-Robert Law) which sold a child's
ride-on suitcase under the trade mark ‘Trunki’ [Trunki had been based on a
previous design called Rodeo. The Rodeo was displayed by Mr. Law in a
competition that he participated and won]. The defendant sold a similar product

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 under the name ‘Kiddee Case’ whose design was admittedly inspired by that of
the Trunki. Magmatic claimed that PMS had infringed the following intellectual
property rights of Magmatic: (i) Community Registered Design ("the CRD");
(ii) design rights in a number of designs relating to the Trunki; (iii) the
copyright in the artwork for the packaging of the Trunki; and (iv). the copyright
in a safety notice which appears on the packaging.
In re: infringement of the CRD the Court remarked that the claim of PMS
that the design of ‘Trunki’ had already been disclosed to the public[as Rodeo]
was under the ‘obscure disclosure’ exception. On examination of the CRD
(Trunki), Kiddee Case and the Rodeo design the Court arrived at the conclusion
that PMS International had in-fact infringed the CRD.
The Court also examined various differences in design between Trunki and
Kiddee Case and concluded that PMS International was also responsible for a
infringing the design rights of Magmatic with respect to certain parts of the
product.

56. Public Relations Consultants Association Ltd v The Newspaper Licensing

Agency Ltd and others [2013] UKSC 18.
The question before the Supreme Court was whether copies temporarily
retained on the computer screen or the internet cache, during browsing, are
infringing copies, unless licensed by the rights owner.
The appellants monitored news coverage on behalf of clients. Meltwater
Group of Companies used software to create an index of words which could
generate a list of news articles in which the client was interested in. “For each
search hit, the monitoring report would present the opening words of the article,
the keyword together with several words on either side of it, and a hyperlink (in
the form of a reproduction of the headline) which enabled the user to access the
article on the relevant source website. It should, however, be noted that if that
website has a paywall, the link will not enable the user to avoid it. He will have
to pay for access to the material behind the paywall on the same terms as
anyone else. Meltwater sends the monitoring report to the customer by email or
the customer accesses it on the Meltwater website”. Basically a précis of sort of
the news articles was displayed by the software.
The Court firstly clearly stated that Art 5(1) of the Infosoc Directive would
apply under which “Temporary acts of reproduction…  which are transient or
incidental [and] anintegral and essential part of a technological process and
whose sole purpose is to enable....lawful use....andwhich have  no independent
economic significance” are allowed.
Further it remarked that “It has never been an infringement, in either English
or EU law, for a person merely to view or read an infringing article in physical
form. This state of affairs, which is recognised in the enumeration of the
copyright owner’s rights in articles 2, 3 and 4 of the Directive, has never been
thought inconsistent with a high level of protection for intellectual property.”

57. ITV Broadcasting Ltd v TV Catchup Ltd

TV Catchup Ltd. made available to the public all the free-to-air UK channels
over its website.When a subscriber signed up for the TV Catchup website they
were required to confirm that they were from the UK and had a valid TV
license. Essentially only the people who could anyway watch these free to air
channels on their TV’s were able to access TVCatchup's online service.

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 ITV claimed that TV Catchup was infringing their copyright by broadcasting
a ‘communication of works to the public’. Following the reference of this
question from the High Court, the CJEU concluded that, making available of
works through the retransmission of a television broadcast over the internet
using a specific technical means different from that of the original
communication must qualify as a "communication". Consequently, that
retransmission cannot be exempted from the need for authorisation and hence
TV Catchup was responsible. The CJEU concluded that the subscriber base of
TVC did constitute ‘public’, which refers to an "indeterminate number of
potential recipients and implies, moreover, a fairly large number of persons".
One of the very basic questions was whether there was a need for ‘new
public’ given that TVC subscribers were essentially people who could in any
case access these free to air channels. The CJEU held that present case was
unique as there were two separate transmissions, using two technical conditions,
i.e. a terrestrial broadcast and then a second transmission over the internet.The
CJEU held that since there were two separate transmissions, using two technical
conditions, each must be authorised individually and separately by the authors
concerned and there was no need for the satisfaction of the ‘new public’
threshold. 
After clarity was provided by CJEU, the High Court restrained TVC from
transmitting a number of ITV and Channel 4 and Channel 5 channels.

58. EMI Records Ltd v British Sky Broadcasting Ltd, [2013] Bus LR 884
The claimants filed this suit against the defendants (ISP’s) seeking an order
which would require them to take measures to block or at least impede access
by their customers to three peer-to-peer ("P2P") file-sharing websites.
While deciding the question of whether an injunction should be granted, the
Court examined the following questions:
1. If the Defendants were internet service providers?
2. If users and operators of the peer-to-peer websites infringe
copyright?
3. If the users and/or operators of the websites used the defendant
ISP’s services to infringe?
4. Did the defendants have actual knowledge of the alleged
infringement?
5. If the order of the Court was proportional?
It was clear to the Court that the defendants were service providers under the
relevant English statute.The Court while examining the evidence on record
came to the conclusion that it was clear that the users and operators of the
websites had infringed the copyrights of the claimants by copying and by
communication to the public. It was also clear that the service provided by the
ISP’s was being used for the said infringement as the copies made by the users
of the website were neither transient nor incidental. Further the claimants had
regularly informed the ISP’s regarding instances of infringement.
Hence the Court granted an injunction directing the ISP’s to block and
impede access to those three peer to peer websites.

59. SAS Institute Inc v World Programming Ltd, [2013] EWHC 69 (Ch)

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 The claimant was a developer of analytical software which enabled users to
carry out a wide range of data processing and analysis tasks, in particular
statistical analysis.
One of the questions before the Court was whether “in essence, whether
Article 1(2) of [the Software Directive] must be interpreted as meaning that the
functionality of a computer program and the programming language and the
format of data files used in a computer program in order to exploit certain of its
functions constitute a form of expression of that program and may, as such, be
protected by copyright in computer programs for the purposes of that
directive”.
The CJEU decided that neither the functionality of a computer program nor
the programming language and the format of data files used in a computer
program, in order to exploit certain of its functions, constitute a form of
expression. Hence they were not capable of attracting copyright protection. It
must be pointed out that the Court was of the opinion that functionality format
etc. were simply ideas rather than expression of ideas.
The Court rejected SAS’s claim of infringement by WPL given the
protectable code had not been reproduced by WPLand only functionality was
not given copyright protection. Basically it is not a chef's cake (or the
functionality of a computer program) that is the expression of an intellectual
creation, but rather the recipe itself (or source code). Further the licensing
agreement clause stipulating non production purpose was invalid under law.

E. TESTS FOR INFRINGEMENT

60. Nichols v. Universal Pictures, 45 F.2d 119

In this case the court looked at the abstraction test to determine infringement. The
test largely uses the idea-expression dichotomy to determine infringement.

In the case, the plaintiff alleged that the motion picture play produced by the
Defendant substantially infringed her copyright in her play. While determining the
case, as regards the abstraction test for infringement, the court stated as follows:

Protection of literary property extends to protect the work both against literal and
substantial copying. However, complications arise when the plagiarist does not take out
a block in suit, but an abstract of the whole. Upon any work, and especially upon a
play, a great number of patterns of increasing generality will fit equally well, as more
and more of the incident is left out. The last may perhaps be no more than the most
general statement of what the play is about, and at times might consist only of its title;
but there is a point in this series of abstractions where they are no longer protected,
since otherwise the playwright could prevent the use of his ‘ideas’, to which, apart from
their expression, his property is never extended. In such cases we are rather concerned
with the line between expression and what is expressed. But we do not doubt that two
plays may correspond in plot closely enough for infringement. How far that
correspondence must go is another matter.

As regards copyright in the characters, quite independently of the ‘plot’ proper, it

follows that the less developed the characters, the less they can be copyrighted; that is
the penalty an author must bear for marking them too indistinctly.

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 Applying these parameters to the facts of the case the court stated that, in the
two plays at bar we think both as to incident and character, the defendant took
no more – assuming that it took anything at all- than the law allowed. The
theme of the Plaintiff‘s play was too generalized, it was only a part of her
‘ideas’. Nor does she fare better as to her characters. It is indeed scarcely
credible that she should not have been aware of those stock figures, the low
comedy Jew and Irishman. Thus, the defendant has not taken from her more
than their prototypes have contained for many decades. Even though we take it
that she devised her figures out of her brain de novo, still the defendant was
within its rights. The stories are quite different. Hence, the Defendant is not
liable for infringement.

61. Roth Greeting Cards v. United & Co., 429 F.2d 1106.
Total concept and feel test: This case was an action for infringement of
copyrighted greeting cards. The case came before the United States Court of
Appeals as an appeal from a judgment of the United States District Court,
California. In its decision, the Court of Appeals, Hamley, Circuit Judge, held,
inter alia, that evidence including showing of defendant's access to plaintiff's
copyrighted greeting cards and that it was defendant's practice to look at cards
produced by other companies and make similar cards for sale under defendant's
label, together with marked similarity between the cards on which
infringement action was brought established that defendant's cards
considered as combined compositions of art and text infringed plaintiff's
cards. On this basis the decision of the case was reversed and the case was
remanded back for decision.
As regards the tests for infringement the court stated that infringement takes
place when To there is substantial similarity between the infringing work and
the work copyrighted, and that similarity is caused by defendant's having copied
copyright holder's creation; the protection is thus against copying-not against
any possible infringement caused when an independently created work
coincidentally duplicates copyrighted material. The question then arises is on
what basis one is to determine the existence of substantial similarity.
As regards determination of substantial similarity the court referred to the
look and feel test, applying the test to the facts of the present case the court
stated that, ―It appears to us that in total concept and feel the cards of United
are the same as the copyrighted cards of Roth. With the possible exception of
one United card (exhibit 6), the characters depicted in the art work, the mood
they portrayed, the combination of art work conveying a particular mood with a
particular message, and the arrangement of the words on the greeting card are
substantially the same as in Roth's cards. In several instances the lettering is also
very similar.”
Thus, we see that the finding of infringement stemmed from the finding of
similarity of works. In turn, the finding of similarity was based on the similarity
in terms of the total concept and feel of the cards.
62. Computer Associates v. Altai, 982 F.2d 693 (2d Cir. 1992).
The facts of this case are as follows: Computer Associates had task
scheduling software “SCHEDULER”. A Component of the software for
interoperability was “ADAPTER”. “SCHEDULER” very successful. Altai had
developed similar Software called “ZEKE”. In its

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 Altai wanted to develop interoperability component similar to “ADAPTER”,
this compotent was to be known as “OSCAR”. Altai approached Claude Arney,
an employee of Computer Associates to design OSCAR. Arney who was
intimately familiar with ADAPTER, ultimately developed OSCAR 3.4 and it
was released into market. Computer Associates found that OSCAR 3.4 had 30%
code same as ADAPTER. A suit was filed for copyright infringement. The
Court held Altai liable for literal Copying.
However, Altai continued its tryst and developed OSCAR 3.5. The
development of the involved a ―Blind Rewrite‖ by 8 Programmers and 6
Months OSCAR 3.5 was created. It is pertinent to note that while developing
this software, the programmers had purged Code that literally infringed
ADAPTER. Altai was again sued for copyright infringement. The issue was
whether there is any non-literal infringement.
The court while addressing this question stated that ―Infringement cannot
be restricted to the literal text, otherwise the plagiarist would escape by
immaterial variations.‖ Thus, in order to determine infringement the court laid
down the Abstraction, Filteration and Comparison Test (AFC test). The AFC to
be applied on the allegedly ―infringed‖ program:
In that, for abstraction, one is to dissect the structure and isolate each level of
abstraction in increasing levels of generality. Every Program has “structure” at
each level of abstraction, the ―Code‖ being the “Ultimate Function.” Such
structures are not to be protected since they are ideas, what is protected is the
expression of these ideas.
Abstraction involves filtration, through successive Filteration (Prof Nimmer)
one would have to ask, ―At each level of abstraction whether particular
inclusion is an idea or a necessary incident to an idea?‖ thus, one is to filter out
three elements:
1. Elements dictated by Efficiency
2. Elements dictated by External Considerations
3. Elements in Public Domain
After the process of Filteration the element left is the ―Golden Nugget. This
Golden Nugget is the Core of Protectable Expression. It is from this Golden
Nugget that one has to determine whether anything copied? Second, one is also
to determine whether there is substantial similarity in the context of ―the
relative importance of copied portion with regard to the plaintiff‘s program‘s
overall importance.”
63. Warner Bros. Entertainment Inc. and Others v. Mr. Santosh V.G., Delhi
High Court
Facts: Santosh, is a proprietor of ‘Cinema Paradiso’ company, had
commenced in 2004, the business of renting out DVDs of films. Warner Bros
alleged that Santosh had stocked and rented the DVDs which are licensed for
sale in USA only, has no rental licenses in his favour and thus has committed an
infringement of copyright under Section 51 of the Copyright Act.
Contentions of Warner Bros
(1) It is contended that infringement is not restricted to the act of “making” a
copy but also extends to ‘importation’, in view of Section 2(m) of the Act which
specifically defines ‘infringing copy’.
(2) A conjoint reading of Section 14(d)(i) and Section 17, s. 2(d) and s. 2(uu)
affirms that the ‘making’ of a cinematographic film includes the exclusive right
to make or authorize the making of a film, and the producer can authorize the

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 making of a film in a specific territory. Thus, copies rented out by the defendant
in India under a license granted for distribution in the USA, is not authorized by
the producer and thus constitutes infringement of copyright.
Decision of the Court
Court upheld that the unauthorized circulation of copies in India either by
way of hiring or offering for hire by Santosh, would constitute infringement
under Section 51(a)(i) of the Copyright Act.
(1) Firstly, reference was made to Section 14 (a) which enables the copyright
owner to issue copies of work to the public not being copies in circulation. The
phrase not being copies in circulation‘ would not apply to owners of copyrights
in cinematographic films or sound recordings.
(2) The exclusive right of the copyright owner, in case of cinematographic
films, to sell or to give on hires or to offer for sale any copy of the film, as
specified in Section 14(d) is also emphasized upon.
(3) The argument of Santosh that the moment the licensees get the copies, the
rights of copyright owners would get exhausted was rejected since it could
create a situation where the licensee can gain copies and commercially exploit
the same in a manner which is detrimental to the interest of the copyright owner.
(4) The court referred to the term import‘ under Section 53 and it was held
that this clarifies the question of what is not to be imported, and copies made
outside of India, if made in India would infringe copyright. The court held that
the object of the Act to prevent unauthorized commercial reproduction of work
in India, and thus Section 51(b)(iv) provided for an exception by permitting the
import of one copy of any work for the private and domestic use of the
importer. In the present case, the copies let out for hire by the defendant are not
made in India, but are made in the USA and imported to India without
authorization. Importation of DVDs for any other purposes other than the
exception provided under Section 51 of the Act is in contravention of the Act.
64. Super Cassettes Industries v. People Infocom & Anr., Delhi High Court
Facts/Issue(s)
The second defendant was the producer of the film entitled ‘Aashiq Banaya
Aaapne’ and was the owner of the copyright in various works including literary,
dramatic and musical works of the film. It entered into an assignment deed on
24 June 2005 with the plaintiff and agreed to assign the literary, dramatic,
musical and artistic works of the film, including the sound recording rights in
the film, to the plaintiff.
The second defendant subsequently entered into an agreement with the first
defendant on 18 August 2005 to assign the “telecom rights” in the movie to the
first defendant. This would include the rights to market content such as
wallpapers, themes, tones, games, videos and mobile applications derived from
the film. The second defendant subsequently realized its mistake and on 31
August 2005, informed the first defendant that the assignment was ineffective
and returned the consideration for the assignment to the first defendant.
However, the first defendant persisted in exercising its “rights” under the
August 2005 assignment, despite warnings issued by the plaintiff, and when the
defendant did not stop its infringing activities and the infringing materials were
discovered to be used on its website, the plaintiff commenced the current suit,
seeking an injunction against the first defendant. An interim ex parte injunction
was granted, and the first defendant challenged the order. The issue before the
court was whether the plaintiff should be entitled to an injunction against the

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 first defendant to stop the defendant’s infringing activities and its infringing use
of the plaintiff’s works.
Ruling & Reasoning: The court upheld the application for the injunction and
confirmed the interim protection granted to the plaintiff. When granting an
interim injunction, the court was required to consider the plaintiff’s prima facie
case, the balance of convenience to the parties and the irreparable loss to the
other parties to the action. The court held that the plaintiff was able to establish
a prima facie case based entirely on the written assignment of 24 June 2005
between the parties, and that the first defendant’s rights were derived from the
assignment of 18 August 2005 which had, according to the second defendant,
been terminated. The plaintiff would suffer an irreparable loss if the injunction
was not granted as it was difficult to compute the exact loss which the plaintiff
would otherwise suffer if the first defendant was not restrained. Equitable
considerations also favoured the plaintiff as it had paid consideration to the
second defendant for the assignment and had exploited its rights under the
agreement. The court further held that it was in the interest of justice that the
rights and obligations of the parties were not interjected by any further
assignments to third parties and by the continued acts of infringement by the
first defendant.

LIMITATIONS & EXCEPTIONS ON THE RIGHTS

a. FAIR USE
65. Kelly v. Aribba Soft Corp, 336 F.3d 811
The facts of the case are as follows: The plaintiff, Leslie Kelly, is a
professional photographer who has copyrighted many of his images of the
American West. Some of these images are located on Kelly's web site or other
web sites with which Kelly has a license agreement. The defendant, Arriba Soft
Corp., operates an internet search engine that displays its results in the form of
small pictures rather than the more usual form of text. Arriba obtained its
database of pictures by copying images from other web sites. By clicking on
one of these small pictures, called thumbnails, the user can then view a large
version of that same picture within the context of the Arriba web page. When
Kelly discovered that his photographs were part of Arriba's search engine
database, he brought a claim against Arriba for copyright infringement on the
ground that Arriba's use of the thumbnail images violated his display,
communication, reproduction, and distribution rights. The District Court held
that Arriba‘s use, both in terms of reproducing, using and displaying the
thumbnail images and the larger size images fell within the domain of fair use.
The present case was an appeal from the decision of the District Court.
The Ninth Circuit court noted that ―fair use‖ was a defence to copyright
infringement. It went on to set out the four statutory parameters which are to be
used to arrive at a conclusion of fair use. The four parameters are: The four
factors are: (1) the purpose and character of the use, including whether such use
is of a commercial nature or is for nonprofit educational purposes; (2) the nature
of the copyrighted work; (3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and (4) the effect of the use upon
the potential market for or value of the copyrighted work. While applying these
four parameters to the facts of the case, the court opined that, ―there was no
dispute that Arriba operates its web site for commercial purposes and that

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 Kelly's images were part of Arriba's search engine database, however, the use of
the images was largely incidental as opposed to exploitative.”
Moreover, as regards transformative nature of the work, the court concluded
that the thumbnails were much smaller, lower-resolution images that served an
entirely different function than Kelly's original images. Arriba's use of Kelly's
images in the thumbnails is unrelated to any aesthetic purpose and mainly
served as a tool to help index and improve access to images on the internet and
their related web sites. On these grounds the Court concluded that Arriba's
thumbnails were transformative works. On the basis of these conclusions, the
court stated that the use of Kelly's images made by Arriba's thumbnails fell
within the domain of fair use. As regards, the larger, full sized images the court
concluded that the district court should not have reached the issue because
neither party moved for summary judgment as to the full-size images and
Arriba's response to Kelly's summary judgment motion did not concede the
prima facie case for infringement as to those images.
66. Dr. Yogesh Bhardwaj v. Himachal Pradesh State University,
MANU/HP/0034/2013

A case for copyright infringement and violation of moral rights of was

brought when the work i.e. an index called PROTOCOL published by a doctor
who served as a guide for a dissertation student was infringed in the
dissertation. It was found that the defense of fair dealing was available to the
defendant as the work was highly transformative in nature and he had merely
utilised the index in writing an entire dissertation. Therefore, the court held that
research and study could not be stifled under the guise of copyright.

67. Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701

Perfect 10 markets and sells copyrighted images of nude models. Among
other enterprises, it operates a subscription website on the Internet. Subscribers
pay a monthly fee to view Perfect 10 images in a ―members' area‖ of the site.
Subscribers must use a password to log into the members' area. Perfect 10 has
also licensed Fonestarz Media Limited to sell and distribute Perfect 10's
reduced-size copyrighted images for download and use on cell phones. Some
website publishers republish Perfect 10's images on the Internet without
authorization. Once this occurs, Google's search engine may automatically
index the webpages containing these images and provide thumbnail versions of
images in response to user inquiries. When a user clicks on the thumbnail image
returned by Google's search engine, the user's browser accesses the third-party
webpage and in-line links to the full-sized infringing image stored on the
website publisher's computer. This image appears, in its original context, on the
lower portion of the window on the user's computer screen framed by
information from Google's webpage. Perfect 10 claimed that Google's search
engine program directly infringes two exclusive rights granted to copyright
holders: its display rights and its distribution rights. The Court was satisfied
only as regards violation of the Display right and analyzed whether Google
would be liable (contributorily liable) for violation of copyright.
The court subsequently addressed the issue of fair use and the four
parameters which determine the existence of fair use. The court held that
Google is operating a comprehensive search engine that only incidentally

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indexes infringing websites. This incidental impact does not amount to an abuse
of the good faith and fair dealing underpinnings of the fair use doctrine.
Accordingly, we conclude that Google's inclusion of thumbnail images derived
from infringing websites in its Internet-wide search engine activities does not
preclude Google from raising a fair use defense.
Moreover, it stated that Google's use of thumbnails is highly transformative.
A search engine provides social benefit by incorporating an original work into a
new work, namely, an electronic reference tool. Indeed, a search engine may be
more transformative than a parody because a search engine provides an entirely
new use for the original work, while a parody typically has the same
entertainment purpose as the original work. As regards the commercial nature of
the use and the revenue made by Google, the court stated that, ―We conclude
that the significantly transformative nature of Google's search engine,
particularly in light of its public benefit, outweighs Google's superseding
and commercial uses of the thumbnails in this case. In reaching this
conclusion, we note the importance of analyzing fair use flexibly in light of
new circumstances. The next factor being nature of the copyrighted work, was
held to be slightly in favour of Perfect 10 as the court held that Perfect 10 had
already substantially exhausted the value of its copyright when it sold the
pictures for the first time for the same to be placed on the internet. The court
went on to hold that the factor, The amount and substantiality of the portion
used did not hold in favour of any party. As regards the effect on market factor,
the court concluded that, ―because market harm cannot be presumed, and
because Perfect 10 has not introduced evidence that Google's thumbnails would
harm Perfect 10's existing or potential market for full-size images, we reject this
argument and make a finding in favour of neither party.‖ Thus, the court decided
the fair use argument in favour of Google for the purposes of liability for any
direct infringement.
Next, addressing the issue of secondary liability the court held that , “we are
guided by the Supreme Court's recent interpretation of secondary liability,
namely: “[o]ne infringes contributorily by intentionally inducing or
encouraging direct infringement, and infringes vicariously by profiting
from direct infringement while declining to exercise a right to stop or limit
it.”
The court concluded that under secondary liability they have to examine
Google‘s in light of the direct infringement that is undisputed by the parties:
third-party websites' reproducing, displaying, and distributing unauthorized
copies of Perfect 10's images on the Internet.
While determining contributory liability, the court applied the Grokster
decision and stated that, within the general rule that [o]ne infringes
contributorily by intentionally inducing or encouraging direct infringement,‖ the
Court has defined two categories of contributory liability: Liability under our
jurisprudence may be predicated on actively encouraging (or inducing)
infringement through specific acts (as the Court's opinion develops) or on
distributing a product distributees use to infringe copyrights, if the product is
not capable of ‘substantial’ or ‘commercially significant’ noninfringing uses.”
Moreover, reading cases of Netcom and Napster consistently with the Grokster
decision the court stated that, when a service provider knowingly fails to
prevent infringing actions, such action could be the basis for imposing
contributory liability. Under such circumstances, intent (as required by

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 Grokster) may be imputed. Accordingly, a computer system operator can be
held contributorily liable if it has actual knowledge that specific infringing
material is available using its system, and yet continues to provide access to
infringing works when it can take simple measures to prevent further damage to
copyrighted works.
Applying the test to the facts at hand, it was held that Google could be held
contributorily liable if it had knowledge that infringing Perfect 10 images were
available using its search engine, could take simple measures to prevent further
damage to Perfect 10's copyrighted works, and failed to take such steps. With
these findings the court remanded the case back for decision.
As regards vicarious infringement the court held that vicarious infringement
takes place when one “infringes vicariously by profiting from direct
infringement while declining to exercise a right to stop or limit it” Thus, there is
a ‘control‖ element of the vicarious liability test as the defendant's right and
ability to supervise the direct infringer.’
On facts the court found that, Perfect 10 has not demonstrated a likelihood of
showing that Google has the legal right to stop or limit the direct infringement
of third-party websites. Moreover, Perfect 10 has not shown that Google has
contracts with third-party websites that empower Google to stop or limit them
from reproducing, displaying, and distributing infringing copies of Perfect 10's
images on the Internet. Further, Google's right to terminate an AdSense
partnership does not give Google the right to stop direct infringement by third-
party websites. An infringing third-party website can continue to reproduce,
display, and distribute its infringing copies of Perfect 10 images after its
participation in the AdSense program has ended. On these grounds the court
held that Google could not be held liable for vicarious infringement.

68. Hyde Park Residence Ltd v. Yelland, [2000] EWCA Civ 37

Copyright infringement was claimed by appellant company over photographs

taken of Princess Diana and Al Fayed by a security camera that had been
installed by them but had been given to the Sun Newspaper by an employee.
Here, under fair dealing a defence of public interest in context of current
reporting was argued and upheld by the Court of first instance but reversed by
the court of appeal which in turn looked at the ulterior motive of the newspaper
and also the fact that the work was unpublished. Therefore, the defence of
public interest did go into oblivion for a certain amount of time.

69. The Right Honourable Paddy Ashdown v. Telelgraph Group Ltd, [2001]
EWCA Civ 1142

Paddy Ashdown was a minister who in a meeting with the prime-minister

had taken down a minute which happened to be leaked to the The Telegraph. In
a suit for copyright infringement and the applicability of the fair dealing
defense, the court of Appeal took note of the public interest involved in light of
the implementation of the Human Rights Act, 1988 which incorporated Article
10(2) of the European Charter of Human Rights and thus emphasised the weigh

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 that had to be given to freedom of expression and decided in favour of the
newspaper.

70. U-Haul Intern., Inc. v. WhenU.com, Inc., 279 F.Supp.2d 723

This case involves pop-up advertising. The Plaintiff, U-Haul, claims that
Defendant WhenU‘s pop-up advertising infringes upon its trademark,
constitutes copyright infringement, and amounts to unfair competition. U-Haul
complained that WhenU‘s pop-up advertisements, which crowd the computer
user's screen and block out U-Haul's website display, in effect, infringe on U-
Haul‘s registered trademark and alter U-Haul‘s copyrighted advertisements.
Thus, the issue was whether WhenU's computer software, which presents pop-
up advertising when the individual computer user searches for goods and
services on the Internet, is a form of trademark or copyright infringement or
unfair competition.
While examining the claim the court stated that Pop-up advertising scheme,
which caused ad to appear when copyright holder's web page was accessed, did
not interfere with holder's right to display its copyrighted works; pop-up
window did not alter holder's web page, and creator of scheme did not show
users the holder's website through its program. Furthermore, the court also
stated that Pop-up advertising scheme, which caused ad to appear when
copyright holder's web page was accessed, did not create derivative work under
the Copyright Act; pop-up window was a distinct occurrence from the holder's
web page, appearance of pop-up ad on the user's computer screen at the same
time as holder's web page was a transitory occurrence, and was merely another
window on the user's computer desktop. Thus, on these grounds the court held
that the Defendant‘s When U‘s pop-up advertisement did not amount to
infringement of the Plaintiff‘s work.

E. CONSTITUTIONAL PRESCRIPTIONS AND COPYRIGHT

71. Eldred v. Ashcroft, 123 S.Ct. 769

In this case an action was brought challenging the constitutionality of the
Copyright Term Extension Act of 1998 (CTEA). The Plaintiff‘s argued that
the extension of duration copyrights by 20 years under the CTEA resulting in
most copyrights running from creation until 70 years after the author's death
violated the ―limited times‖ stipulation in the American Constitution and also
the First Amendment Right to Free Speech.
The United States District Court, Columbia, dismissed the action and
plaintiffs appealed. The United States Court of Appeals, Columbia, affirmed
the decision of the District Court. A Certiorari was granted. The Supreme
Court, Justice Ginsburg, held that:
(1) CTEA did not violate constitutional requirement that copyrights endure
only for “limited times”, and
(2) CTEA did not violate plaintiffs’ First Amendment rights.
As regards the argument relating to the limited times‖ stipulation, the Apex
Court held that, In placing existing and future copyrights in parity in the
CTEA, Congress acted within its authority and did not transgress
constitutional limitations.” The Court emphatically refuted the Petitioner‘s
interpretation of limited times such that the limited times stipulation created a

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 bar for the Congress to extend the copyright protection of existing copyrighted
works by stating that, The word limited, however, does not convey a meaning
so constricted. At the time of the Framing, limited meant what it means today:
confined within certain bounds, restrained, or circumscribed. The Court
accepted that this power of extension is not unlimited and to be permissible
such extension would need to meet the rationality basis. As regards the CTEA,
the court held that the CTEA is a rational exercise of the legislative authority
conferred by the Copyright Clause. A key factor in the CTEA's passage was a
1993 European Union (EU) directive instructing EU members to establish a
baseline copyright term of life plus 70 years and to deny this longer term to
the works of any non-EU country whose laws did not secure the same
extended term. By extending the baseline United States copyright term,
Congress sought to ensure that American authors would receive the same
copyright protection in Europe as their European counterparts.
The next point was in relation to the First Amendment. The court held that
the CTEA‘s extension of existing and future copyrights does not violate the
First Amendment as there is no free speech right in the works of others.
Moreover, copyright (especially the copyright extension given under the
CTEA) accounts for accommodations of ‘fair use’ and ‘idea and expression’
dichotomy, thereby allowing considerable latitude for scholarship and
comment. Given these factors, the CTEA does not alter the ―traditional
contours of copyright protection. Therefore, it was not struck down by the
First Amendment.

72. Kahle v. Gonzales, 487 F.3d 697

In this case the Plaintiffs argued that the change from an ‘opt-in’ to an ‘opt-
out’ copyright system altered a traditional contour of copyright and therefore
requires First Amendment review under Eldred v. Ashcroft. They also alleged
that the current copyright term violates the Copyright Clause's ―limited
Times‖ prescription.
The Farris J. affirmed the decision of the Supreme Court in the Eldred case
and stated that the CTEA and the Copyright Renewal Act, 1992, passed
muster of the limited times provisions and reiterated the Eldred dicta that, the
outer boundary of ‘Limited Times’ is determined by weighing the impetus
provided to authors by longer terms against the benefit provided to the public
by shorter terms. That weighing is left to Congress, subject to rationality
review.
As regards the First Amendment argument, the Court held that both the
CRA and the CTEA had incorporated the built-in First Amendment
accommodations of fair use and idea-expression. Thus, with such
accommodations in place one could not reach the conclusion that the CRA
(creating an opt-out system) and the CTEA (extending the term of copyright
protection from life+50 years to life+70 years) altered the traditional contours
of copyright protection‖ so as to make it liable for a First Amendment review.

73. Golan v. Gonzales, 501 F.3d 1179

The facts of this case are as follows: artists and purveyors of art material
brought action challenging constitutionality of Copyright Term Extension Act
(CTEA) and Uruguay Round Agreements Act (URAA) on the grounds that the
former violated the constitutional stipulation of ‘limited times’ and the latter

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 violated the First Amendment, i.e., Freedom of Speech by placing works
previously in the public domain in the realm of copyright and such an act was
ultra vires the powers of the Congress.
The United States District Court for the District of Colorado, Lewis T.
Babcock, J., dismissed CTEA claim, and granted summary judgment for
government on URAA challenges. The Plaintiffs appealed. The Court of
Appeals, Henry, Circuit Judge, held that:
a. CTEA provision extending term of copyright protection
did not violate Copyright and Patent Clause, but
b. URAA provision restoring copyright protection to certain
foreign works that had fallen into public domain was
subject to First Amendment scrutiny.
It is pertinent to note that prior to this case the United States Supreme Court
had already decided the Eldred case, and had upheld the constitutionality of
the CTEA in light of the ‘limited times’ stipulation. Thus, the court referred to
the Eldred decision and reiterated the dicta of the Apex Court, stating that,
―We cannot conclude that the CTEA-which continues the unbroken
congressional practice of treating future and existing copyrights in parity for
term extension purposes-is an impermissible exercise of Congress' power
under the Copyright Clause.
Moreover, the Court also stated that such extension would be permissible in
the future provided that it met the rationality basis. Instance of rationality
review would be the validity of thee extension in the instant case to meet the
international standards prescribed under the Berne Convention.
As regards the URAA, the court held that the Act was within the legislative
competence of the Congress. As regards the First Amendment argument, the
Court held that a basic tenant of copyright law is that once a work enters the
public domain, no individual- (not even the creator) -may copyright it. Thus,
since the Act resulted in placing the works present in public domain within the
realm of copyright, it had altered the ―traditional contours of copyright
protection‖ in a manner that implicates plaintiffs’ right to free expression, and
such a result makes it liable for a First Amendment review.

F. Relationship between copyright law and design law

74. Standard Corporation India v. Tractors and Farm Equipment Ltd.

This case is an appeal on an order passed in 2012 in a civil suit that dealt with
copyright and design law. The respondent (plaintiff in the original civil suit)
had contended that the appellant was slavishly imitating the tractors
manufactured by it, thereby infringing on their copyright in the artistic work in
the drawing for its tractors. The appellant had filed an application praying for
the dismissal of the civil suit on the grounds that  it was not maintainable
under S. 15(2), Copyright Act. The appellant contended that under S. 15(2),
the copyright in any work capable of being registered as a design and which
had not been registered, would cease as soon as any article to which it applies
has been reproduced more than 50 times. In this case, the drawings in which
the copyright was claimed had been used more than 100 times prior to the
filing of this suit. In this regard, the appellant cited the case
of MICROFIBRES INC. Vs. GIRDHAR &  CO., (2009 (40) PTC 519 (Del.)
(DB) which had held that “…In the original work of art, copyright would exist

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and the author/holder would continue enjoying the longer protection granted
under the Copyright Act in  respect of the original artistic work.” If a design is
created from such original work and if it “ is registered under the Designs
Act, the design would lose its copyright protection under the Copyright Act
but not the original work If it is a design registrable under the Designs
Act  but has not so been registered, the Design would continue to enjoy
copyright protection under the Act so long as the threshold limit of
its application on an article by an industrial process for more than 50 times is
reached. But once that limit is crossed, it would lose its copyright protection
under the Copyright Act. This interpretation, in our view, would
harmonize the Copyright and the Designs Act in accordance with the
legislative intent.”
The respondent, on the other hand, while agreeing with the ruling
in Microfibres  argued that it was inapplicable in the instant case as the
drawings could not be registered as a design. They argued that there was no
doubt that “a design, which is functional in nature and has certain functional
features” could not be registered as a design. S. 2(d), Designs Act, 2000 also
specifically excludes any artistic work as defined in S.2(c), Copyright Act
from being registered as a design.
The Division Bench ruled that the appellant had not shown sufficient cause or
reason to interfere with the findings of the learned single judge that the suit
could not be dismissed as it was not barred by law and as there were triable
issues existing for the consideration of the Court. The Division Bench stated
“A right existing in a person or an entity to seek certain reliefs before a Court
of law, when disputes had arisen, cannot be curbed, at the outset, without
having proper reasons to do so. As there are triable issues, which are to be
decided in the civil suit, in C.S.No.602 of 2007, we are of the considered view
that the present original side appeal is liable to fail.” Consequently, the
Division Bench dismissed the appeal.

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