INTELLECTUAL PROPERTY RIGHTS LAW

Section 13 of Copyright Act, 1957 lays down the works in which copyright subsists i.e.,
original,literary, dramatic, musical and artistic works, cinematograph films and sound recording.

EBC v DB Modak
● Sweat of the brow- creation of work which has resulted from little bit of skill, capital, and
labor are sufficient for copyright in derivative work of an author.
● Court held that the principle laid down by the Canadian Court in CCH Canadian Ltd. v
Law Society of Upper Canada which held that in order to claim copyright over a
compilation author must produce material with exercise of skill and judgment which may
not be novel/non-obvious but its not a product of merely product of merely labor and
capital at the same time. Derivative work must have distinguishable features and flavor to
the raw text of the judgements. Court applied this principle in the present case. The
Supreme Court preferred a higher threshold than the doctrine of sweat of the brow but not
as high as the modicum of creativity.
Pre- Modak
● Burlington Home Shopping v Rajnish Chibber- Compilation may be considered
copyrightable as there was devotion of time,labor, and skill in creating the said
compilation.
Post Modak
● Dr. Reckeweg Co. v Adven Biotech Ltd.- Court took into note what Modak laid down
i.e the scale of copying is to be determined on a case by case basis. Not every industry or
effort results in copyrightable work but only those which create works somewhat
different in character.
● Emergent Genetics India Pvt Ltd v Shailendra Shivam- Mere labor (sweat of the
brow doctrine) is not a substitute for originality. Sequences obtained from nature cannot
per se be original as scientists involved in gene sequencing discover facts.
Idea and Expression Dichotomy
● Generally only the expression will get the protection under copyright law. Article 9(2) of
TRIPS Agreement provides that idea is not protectable under copyright. There exists no
copyright in ideas and it subsists only in the material form to which they are published.
● RG Anand v Deluxe Films-There was a conflict between author of the novel and
cinematograph in relation to idea and expression. Name of the book was Hum Hindustani
and the author claimed that cinematograph created movie titled New Delhi based on the
book written by him. Though the cinematographer took the idea of the author but the
expression of the idea was different. Court laid down that if there is common idea it
would not lead to infringement of copyright as long as expression of idea is different.
● This case Laid down the tests to determine whether there is plagiarism and violation of
copyright i.e.,
 1. Copyright violation is confined to the form, manner, arrangement, and expression
of idea by author of the copyrighted work.
2. If source of idea is common then the Court should determine whether or not the
similarities are on fundamental or substantial aspects of mode of expression
adopted in copyrighted work.
3. See if the reader/viewer after reviewing both the works gets the impression that
the subsequent work is a copy of the original.
4. Theme is same but presented differently then no question of copyright violation
arises.
5. Where there is material and broad dissimilarities no question of copyright
violation arises.
● Bharat Matrimony v People Interactive Pvt. Ltd- There was an assured phone
verification system where they give the direction that if you press 1 we will lead you to
X. There was another company which also made provision for creating similar facility for
their customers. Held that the interactive voice system was rather an idea and not an
expression which could be protected.
● Kenrick v Lawrence- Person who was contesting the elections created a mark i.e., a
hand holding a pencil. Another person created a similar kind of mark but it was
contended that even though in both the pics the hand i s holding the pencil, there is a
difference in expression. Court held that hand holding is only an idea and when it comes
to expression both parties have differently represented such hand holding.
● Donoghue v Allied Newspaper- Question was raised with regard to copyright over idea
and expression. Donoghue was a jockey and he gave an interview to share information
about his past races and victories with the reporter. He converted all the facts and
information and reported in the newspaper. Court held that Donoghue would not be able
to claim protection as he only gave ideas or information but the publication of the
reporter was an expression of ideas warranting protection under copyright.
● Indian Express Newspapers v Dr Jagmohan- There was a journalist who wanted to
expose the flesh trade going on in MP and for this he bought a lady through flesh trade.
He observed this activity on the basis of which he wrote a research paper which got
published in the newspaper. Thereafter a cinematographer made a movie based on flesh
trade. Court took into note that flesh trade is a thing happening in the public domain and
everyone has the right to report on it. Court held that the maker of the film violated the
right of the journalist as the journalist expanded something existing in the public domain
and if anyone makes a copy of such elaborated work it would be a violation of copyright.
● Barbara Taylor v Sahara Media Entertainment- Plaintiff was the author of the literary
work titled Women of Substance and defendant produced and created a film titled
Karishma: Miracle of Destiny. Plaintiff contended that there was a violation of copyright
of the plaintiff by the defendant. Court held that both the works had similar theme i.e.,
rags to riches and since the idea was common no copyright protection could be given.
Doctrine of Scenes a Faire
 ●
De Minimus Theory
● When expressions are trivial there is no kind of protection for them de minimus non curat
lex.
● Exxon Corporation v Exxon Insurance- One company sought copyright over the word
Exxon. The Court held that the expression was trivial so no copyright protection could be
granted.
● Tabinal v Tressa Palm- They contended protection over the word khojan. The Court
held that the expression was trivial so no copyright protection could be granted.
● PepsiCo.v Coca Private Ltd.- The caption Dil Mange More was not provided copyright
protection as the expression was trivial. Court held that but you would get utilization
under passing off if it gets popularity and people start associating it with the brand.
● Rose v Information Service- Failing on the point of originality, the title “The Lawyers
Diary” was refused copyright protection as skill, knowledge, and creative labour were not
met.
Subject Matter of Copyright Protection
1. Dramatic Work
● Fortune Films International v Dev Anand- The definition of dramatic work under
Section 2(h) Copyright Act is an inclusive one. It includes any piece for recitation,
entertainment and excludes cinematograph film. Court held two things i.e., definition
only protects the film and the sound tract married to the film proper and if the
performance is covered by the definition of work in Section 2(y) then it will get copyright
protection. Court after looking at the definition of artistic work, dramatic work, and
cinematograph film took the view that performance of actor is not recognised as work.
● Academy of General Education Manipal v B. Malini Mallya- Copyright in respect of
dance performance does not come under the purview of dramatic work but it comes under
the purview of literary work. Both dramatic and literary work are produced with the
imaginative skill of the author.(doubt)
● Institute for Inner Studies v Charlotte Anderson- Court after looking at the
prerequisites to be called dramatic work held that though acts and exercises like Yoga
appear to be choreographic but as a matter of fact they are not. Court referred to English
authorities which laid down that in order to be called dramatic work two things must be
proved i.e., one that is capable of physically performed and fixation of the matter in
writing. Sport games, aerobics, Yoga are of doubtful nature and hence they do not fall
within the ambit of dramatic work.
2. Fictional Characters
● In order to determine whether fictional characters have copyright or not there are 2 tests:
● Delineation Test- Elaborated in Nicholas v Universal Pictures which lays down that if
the character in question is distinct and unique from other characters then it warrants
copyright protection.
 ● Story Being Told- This relates to when you are conveying a specific story and you have
not emphasized on a specific character.
● Walt Disney v Air Pilots- Plaintiff contended that the defendant portrayed the Disney
character without authority violating copyright. Court laid down a two step test to be
carried out to determine whether copyright infringement has taken place or not.
1. Visual similarities of the characters.
2. Personality of the characters.
● Hill v Whalen Mortell- Characters were copied by the defendant by simply changing the
name. Court held as there was visual and character similarity there was copyright
infringement.
● VT Thomas v Manorama- Whether the employer could claim protection over the
cartoon? Observed that the cartoonist even after leaving employment continued to sketch
the cartoon. Court held that cartoons came into existence due to the intellectual effort of
Thomas by application of original skills and labor, hence entitled to protection.
Concept Note
● It is an elaboration of an idea or description of an idea. You are eligible for protection
upon describing the idea under copyright law.
● Anil Gupta v Kunal Das Gupta- Idea of syamvar was conceptualized by the plaintiff
and this particular idea was elaborated further by the plaintiff by conceptulasing what
will happen in the first, second episodes and so on. He conveyed this idea to another
person that he wanted to create a serial titled Syamvar. Later the defendant started his
own show on the basis of this idea. Court held that the idea of syamvar was more than an
idea as the communication was more than an idea so the plaintiff is entitled to copyright
protection.
● Tele Films v Sundial Communications- Person wanted to create a film titled Krishan
Kanhaiya. He elaborated the plot and told the story to V Channel. However V Channel
refused to take it up so the plaintiff went to Sony. Upon this V Channel broadcasted the
programme named Kanhaiya. Court held that it was more than an idea as it was
elaborated upon and there was a plot/storyline which had been created which was
communicated to V Channel.
Acquisition of Copyright/Registration/Foreign Copyright Protection
● Inception Media v Star India Pvt Ltd.- Section 48 is not an acknowledgement of actual
authorship being proved, but only of copyright having been applied for and granted.
Purpose of Section 48 is not to conclude proof of authorship but as a matter of evidence
allow into evidence sealed copies without requiring proof. In case of work made in
course of author’s employment under contract of employment, the employer is the first
owner of that copyright.
● Sanjay Soya v Narayani Trading- Court disagreed with the decision of Dhiraj Dewani
i.e., that copyright registration is mandatory. Court observed that trademark registration
requires registration to sustain a suit for infringement but not copyright. Hence, the Court
held that registration of copyright is not mandatory.
 ● Navigators Logistics Ltd. v Kashif Quereshi- Court observed that if there is a list of
contact numbers of its clients compiled were to qualify as original literary dramatic
musical and artistic works copyright will not vest unless it has been published or if
unpublished authorized by a person who is a domicile of India. Court observed that the
plaintiff did not publish the said list and that the plaintiff did not disclose the name of the
author employed with the plaintiff. The plaintiff which is a company cannot be an author.
Court referred to Rupendra Kashypa and Tech Plus Media cases which held that a
juristic person is incapable of being an author in which copyright exists. Court held that it
was essential on part of plaintiff to disclose the identity of the author to claim ownership
of copyright and as he did not do so he cannot claim copyright.
● VT Thomas v Malayam Manorama- It is impossible to imagine that in relation to any
artistic work the same person would be the author and employer simultaneously. Artistic
work made by the author as an employee passes on to the employer but as soon as
employment is terminated then the author is free to draw and present his works in such
media he prefers.
Ownership of Work
● Section 17 defines the owner of copyright and Chapter VI talks about ownership of a
work and their rights.
● General perception is that the author is to be the first owner of the work and their rights
but this is limited by Section 17(1)(a) where it is emphasized that if you are a worker or
employee of a newspaper or magazine then you may be the author of the work but the
ownership will belong to the proprietor of the newspaper or magazine. This also applies
to artistic and dramatic work.
● Hence, the economic rights with respect to publication mostly lies with the employer.
● The phrase “in all other respects” economic rights to the exclusion of publication rights,
remains with the author of the work.
● For determining the ownership of work, two factors are to be taken into consideration:
● Contract for Service- When you are working independently without any direction from
the other person you are the author as well as the owner of the work. However there is an
exception under Section 17(1)(b) that if you are a photographer, painter but at the
instance of payment of certain consideration the ownership will lie with the person giving
consideration of payment.
● Contract of Service- Here you work under an employer. If you are the employee you
would be the author and employer would be the owner. In Stephenson Jordan and
Harrison v McDonald Ltd. , the following was laid down: when you are under the
direct control of the employer, the employer would be the control of work, degree of
independence of person rendering the service, place where the service is rendered,
command of employer over employee, work is integral part of the business, intention of
parties to conclude if contract of service existed or not.
● Chiranjeet Singh v Dua Brothers- There was a firm where the partner created the
painting. Question was whether the painting was entitled to copyright protection. Held
 that since the painting was created outside the scope of employment, the partner would be
the owner of the painting.
● University of London v University of Tutorial Press- Question was if the professor
who created the question paper for the university could claim ownership over it. Court
held that the professor was not under the direction of the university to create the question
paper so the university cannot claim ownership over it.
● Byne v Statis- There was a person who was an employee in The Financial Times and the
proprietor asked the employee to make translation of the work. Court held that the work
was outside the scope of the employment and the newspaper company cannot claim
ownership over it.
● Section 17(cc)- Refers to speeches delivered in public. If someone delivers a speech on
behalf of another person then such person will have ownership over the work.
● Section 17d- In case of government work, the government shall be the first owner of the
copyright.
Assignment v Licensing
● Assignment- Total transfer of interest and implies that copyright comprises a bundle of
rights.
● Licensing- In case of licensing if a license is given with respect to the right to
reproduction then it may be granted to more than one person at a time.
● Section 18- The right to assignment can be granted only by an owner and it can be
granted only in prospective/existing work. The words “either wholly/partially” provide
for the right of a copyright owner to divide his copyright as to the mode of his
reproduction.
● Section 19 provides for the mode of assignment.
● Section 31 refers to compulsory licensing and such licensing is granted for work that has
already been published and performed in front of the public at large.
● Section 31A deals with compulsory license in unpublished works or where the author is
dead.
● Section 31B is about compulsory license for benefit of persons with disabilities.
● Joginder Nath v State- Author assigned a specific right to the publisher to publish but
the publisher instead of exercising his own right transferred it to the son which the author
objected to. Court held that publisher has got the right of publication and this right is
owned by him which he could exercise independently or with the help of another.
● PHI Learning Pvt Ltd v P Meenakshi- Author assigned the rig hot publication and
reproduction to the publisher and was subsequently prohibited. Court held that after the
transfer of complete interest the author could not exercise any interest in such a right.
● AA Associates v Prem Goyal- Plaintiff had sole right in distribution and exhibition of a
cinema titled Mazdoor in UP. Another party was telecasting the film and a question arose
if there was copyright violation by the plaintiff. Court had to decide if the power to
distribute was different from that of broadcasting. Court concluded that the person had
the right to show the film in the theater but this was different from broadcasting right.
Section 52 Copyright Act vis-a-vis Section 107 of US Copyright Act, 1961
● Section 51 identifies the situations where the copyright may be infringed namely when a
person without authorization or consent of owner of copyright uses or reproduces the
work of another.
● Section 52 provides the exceptions to the infringement of copyright.
● Section 107 of US Copyright Act, 1961 lays down 4 parameters to judge the
infringement of copyright:
1. Purpose for which work was copied.
2. Nature of copyright work(published/original/non publishable)
3. Amount of work copied and if substantial part of work had been copied,
4. Effect of use of copyrighted work in the potential market.
● D. Narayana Rao v V Prasad- Person delivered speech for 3 hours . Another person did
not copy the whole speech but 3 minutes of the whole speech. Court held that this would
be a violation of copyright as the 3 minutes were a substantial part of the speech.
● Wilkinson Corporation v US- Defendant made a photocopy of an article in the
plaintiff’s medical journal. Court held that if distribution is made from medical journal
then there is no copyright.
● Hubbard v Vosper- Author wrote a book critiquing the work of another author by taking
the precepts of the book. Question was whether it violates copyright. It was held that
citing work for criticism was allowed and would not infringe copyright.
● Ram Sampath v Rajesh Roshan- Plaintiff composed a music with a specific tune and
defendant created the cinematograph krazy4 where it was argued the tune had been
substantially copied. Two tests were applied i.e., lay hear/untrained ear test and recall the
amount of copying. Held that though the tune was not imitated but a substantial part had
been copied there has been copyright violation.
● Hobes and Sons v Paramount- Plaintiff had played a 4 mins music and the defendant
copied 20 seconds of it. Court held this amounts to copyright infringement.
Section 57: Special Rights of the Author
● Authorship remains with the person who creates the work and such creator has two rights
under Section 57 i.e., Right to Integrity and Right to Paternity.
● Right to Paternity- It implies the right to claim ownership over the work created by you.
You have the right to be named and acknowledged for your work.
● Right to Integrity- No one can change or amend the work of the author without their
permission. If you create a work and someone makes changes to it that destroys the work
which leads to the harm of the reputation of the author then it amounts to violation of
your own integrity.
● Mannu Bhandari v Kala Vikas Pvt Ltd.- The plaintiff was the author of the novel Aap
Ka Bunty and the defendant produced a movie based upon the novel. The defendant
included elements of vulgarity and changed the dialogues and ending of the movie. Court
concluded that the right of the author was violated and ordered the defendant to change
the movie as per the novel.
 ● Amarnath Segal v UOI- The person created and gifted a bronze mural to Vigyan
Bhawan in 1957 but the Bhawan was under renovation and it was not kept in a proper
condition. It was held that by neglecting to keep the mural in proper condition, there was
violation of the right of integrity of the author.
Computer Programming
● Section 13 of the Copyright Act mentions areas where copyright protection is available.
Section 2(o) defines literary work.
● Computer programme can be copied in 2 ways i.e.,
Literal Copying- You create the reproduction of work line to line and word to word.
Non-Literal Copying- It is not an imitation of previous work and substance or
substantial part is taken of any particular work.
● Computer Associates International v Altei- To decide copying Court gave a three step
test to decide violation of copyright:
1. Observe the abstraction- You abstract what is idea and what is expression and
separate these two. Court said you have to observe structure, algorithm, source
code and object code to abstract idea and expression.
2. Filtration- In the 2nd step, move to filtration where the copyright protected
expressions are filtered as not all expressions are copyright protected. Elements
are dictated by efficiency, external facts, and public domain are identified to filter
expressions.
3. Comparison- You compare the similarities and differences to decide as to
whether there has been violation of copyright.
● Wellen Associates v Juslok Dental Labs- Court examined the SSO test (structure,
sequence, and organisation). Here a person developed software for keeping data of dental
lab. He left the office and joined another office where he developed similar software but
this software had different language options.Held that as the SSO was similar, there was
copyright violation and there was non-literal copying.
● Apple Computer v Frankline Computers- Franklin computers created a specific
computer in 1982 by copying from Apple computer. The defendant accepted that they
copied from Apple but it was not violation of copyright as it copied just the object code
and not source code. Court held that object code is literal work and there was violation of
copyright.
● Apple Computer v Computer Edge Ltd.- Question was if object code could be
protected under copyright. Observed that object code is translation of source code written
by engineers in specific computer language. Court held even if you copy object code it is
a violation of copyright.
Section 14- Economic Rights
● Section 14 confers economic rights over different kinds of work i.e.,
literary,dramatic,and musical works, computer programme, artistic work, cinematograph,
and sound recordings.
 ● Though the economic rights lie with the owner of the copyright, non-economic rights are
granted to the author of the work who is not the owner of its copyright.
● Ram Sampath v Rajesh Roshan- Plaintiff composed a music with a specific tune and
defendant created the cinematograph krazy4 where it was argued the tune had been
substantially copied. Two tests were applied i.e., lay hear/untrained ear test and recall the
amount of copying. Held that though the tune was not imitated but a substantial part had
been copied there has been copyright violation.
● Brad Curry v Zinc- Plaintiff had copyright over the cartoon and the defendant played
the cartoon on stage. As the characters were similar it was held that there was copyright
violation.
● John Wiley and Sons v Prabhat Kumar Jain- Plaintiff was a publisher who wanted to
expand his operation into India. For this he gave license to the publisher and the
defendant was the one who purchased the book from the licensee. Plaintiff raised the
question that this violated their right to issue to the public and the defendant raised that
once the book has been sold your right has been exhausted. Court refused to recognise the
first sale doctrine and the online sale was a violation of the right of the plaintiff.
● Hems v Martins- There was a musical work of the plaintiff which was performed before
audience in a club. Question was whether the performance of the defendant violated the
right of the plaintiff. Held that it was a public performance since it was open to all at
large provided that the entry fee has been paid.
● Gardners Plastics v Telefilms- Specific programmes were communicated through
television. Court held that even if specific programmes are being viewed from home it
would amount to copyright.
● Earnest Turner v Performers Rights Industry- 3 factors to be seen if the
communication is public or not.
1. Character of the audience.
2. Relation between audience and owner of the copyright.
3. Effect of performance on the value of the copyright.
Authorship
● Section 2(d) of the Copyright Act lays down that whoever is creating the work is termed
as the author.
● Joint Author- Section 2(s) lays down that the work produced by collaboration of two or
more authors in which the contribution of one author is not distinct from the contribution
of the other author.
● It is a work of joint authorship if each of the authors contributed to the making of the
work and work is produced through collaboration.
● Cala Homes v Alfred Max Alpine Homes Ltd- the draftsmen created a specific
drawing and another person specified a design inside the specific design. Question was
whether the 2nd person was a joint author. Court held that as he suggested something to
be included in a prospective work such person would be considered a joint author.
● Flyde Micro Systems v Key Radio Systems- Software was written by the plaintiff and
defendant was the one who suggested to incorporate a particular thing in the software.
Court held there was no joint authorship as the second test for JA not met.
● Najma Hapdulla v Orient Longman- There was an autobiography in which Maulana
Azad and Prof Kabir worked together. Azad provided the information and Kabir wrote
the book. Held that there was joint authorship as there was intellectual collaboration in
producing the work.
● Levy v Ruthlay- Person was employed to write a play on specific themes. However
further suggestions were provided by the employer. Held that there was neither any
common design nor any intellectual collaboration.