Introduction to IPR

Intellectual property is all about human creativity, ingenuity and innovation. It is the result of
application of mind in the execution of creative and innovative thoughts. It is considered as
reward for creative and skillful work in execution of ideas. Intellectual property rights
constitute the legal means to protect results and outcomes of intellectual activity such as
inventions, literary and artistic works, as well as innovative symbols, names, expressions,
indications and designs used in trade.

Kinds of Properties - In general property is classified into two different kinds, corporeal
property and incorporeal property. Corporeal property is a property which has got physical or
corporeal existence and which could be possessed in physical form. Incorporeal property is a
property which has got no corpus or physical existence and cannot be held in physical form.
Corporal Property - Examples for this type of property could be land, building and chattel.
Incorporeal property - This type of property is again classified into two kinds: Property in
encumbrances like leases, mortgages and Property over immaterial things like patents,
trademarks, copyrights, designs etc.

In fact, there is another parallel classification of property as tangible and intangible property.
Property which can be seen through eyes, is classified as tangible property. Examples for
tangible property include; land, buildings, chattels, etc. Property cannot be seen through eyes
is classified as intangible property. Examples for intangible property include; lease,
mortgages, and intellectual property rights such as patents, copyrights, trademarks etc.

Justification and Jurisprudence of IPR

Jurisprudentially speaking One deserves rights over his labor, irrespective of whether it is
physical labor or mental labor. When it comes to intellectual property, it is always the result
of mental labor. Theories for justifications for the protection of intellectual property are as
follows-

1. John Locks Labour theory - According to John Lock whoever labors deserves reward in
the form of proprietary rights. Originally labor theory does not specifically talk about
physical or mental labor. The opponents of intellectual property contend that at the time when
Lock propounded this theory he might not have thought of mental labor. The proponents of
intellectual property protection however contend that his theory in general applicable to
property and proprietary rights and therefore it need not be restricted only to physical labor.
According to the pro intellectual property thinkers; conceiving and executing ideas involves
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mental work, which could be considered as mental labor. Therefore, protection of intellectual
property rights which are result of mental labor, could be justified under the Locks Labor
theory.

2. Hegel's Personality theory - The theory states that; property is an extension of once
personality and it is personality which blooms through the protection of one's proprietary
rights. These proprietary rights could be either physical property rights or non-physical
property rights such as intellectual property3 rights. There may not be anything specific and
particular about protection of intellectual property rights under the theory, but there is nothing
against intellectual property rights.

3. Jeremy Bentham's Utilitarian theory - Utilitarian theory states that maximum benefit of
the maximum members of the society should be guaranteed by the law in force. Intellectual
property rights serve as encouragement for innovative or creative work, which ultimately
benefit the society. The owner of the intellectual property is supposed to work on the subject
of intellectual property and make it and its proceeds available to the public. Hence, the
proceeds of mental labor or intellectual property rights ultimately reach the public. Besides,
Intellectual property rights are granted to the owner for a particular period of time after which
the intellectual work falls into the public domain and there could be no restrictions on public
usage of such work thereafter. Further, intellectual property rights are protected only when
are capable of industrial application. The purpose of industrial application of any innovative
work is to exploit the work commercially, market it and make it available to the public. In
this way intellectual property rights serve the purpose of maximum benefit of the maximum
members of the society. Therefore, utilitarian theory also justifies the intellectual property
rights and their protection.

IPR and Monopoly - IPR is said to promote monopolistic commerce. The only right that you
obtain from patent is the right to exclude other from production, whereas it does not let you
the market access.

Monopoly is a behavioural issue and patent law is not an accessory to it. Though a person
shall decides to use IPR as a means, he/she can be injuncted by internal structure of law
(S.140 of Patent Act and Using Competition Act).

Suppose company having IPR push to have on right where he not have right so four outcome
true positive, negative, false positive and negative. False negative - when court says that
inspite of having right, you don’t have right. False positive - When you don’t have a right but

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court grants right. Monopoly exists when person abuses supply to control demand. But if law
grants anyone to come up with prod and consumer decides who to purchase it adds as to
competition and no monopoly exists.

Eg – Two companies with medicine to relieve patient. So now patent law will enhance
competition in market. Hence, it is a fight to make better their prod continuously. However, if
someone exhibits monopolistic behavior, one can argue and rely on externalities of
competition law as anti-competitive practice or internalities of law like patent law.

Law of Trademark

Definition

Goods and services in the market are sold and purchased not only on the basis of need and
requirement, but also on the basis of quality and reputation. The quality and reputation of the
goods and services are represented through some marks and indications. These marks and
indications are used in the market to indicate and represent exclusive goods and services
originating from a definite trader. A trademark performs the role of identifying the goods of a
particular manufacturer and gives an indication of its origin or establishes a connection in the
course of trade. It assures quality of the product and acts as a symbol representing the
goodwill of the business. Also a trademark advertises the product and protects the user and/or
purchaser from confusion and deception by identifying the source or origin of particular
goods and services and distinguishes them from other similar products.

The Trade Marks Act, 1999 defines trademark [S. 2(1)(zb)] to mean: a mark capable of being
represented graphically and which is capable of distinguishing the goods or services of one
person from those of others. The Act defines mark [S. (2)(1)(m)] to include a device, brand,
heading, label, ticket, name signature, word, letter, numeral, shape of goods, packaging or
combination of colors or any combination thereof.

Difference with Patent and Copyright

Copyright and patents are unique unconventional subjective matters of IPR, whereas
trademark promotes conventionality. It majorly aims to cajole the consumers. Trademark is
not about creativity, whereas the former two is solely dedicated to unique and creative subject
matters.

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Why Trademarks?

Marginalises the research burden on consumers on the origin/source of products and at the
same time protecting the investment and t

Example: If the trademark law is abolished and assuming the case of apple selling its
products. There will be 3 consequences:

1. Perspective of Consumer: Will have the burden of researching. He will not be able to
find real apple easily.
2. Perspective of Apple (Owner): Shift of profits from apple to apple to counterfeit
products. It might also tarnish the image of market leaders. Incentive of good quality
products will also be diminished.
3. Perspective of Counterfeit (person copying the trademark): Counterfeit will be
harmed in a free market as he himself will have to strive to attain a better position.

Spectrum of Trade Marks

The function or capability of distinguishing is referred to as ‘distinctiveness’ of a trade mark.

The capability may be some inherent distinctiveness in the mark itself or perhaps acquired
distinctiveness through use of the mark over a period of time. Higher the distinct the
trademark, stronger it would be. This paves way to the concept of spectrum of trademarks,
which is devised on the degree of distinctiveness.

Justice Hand of US Supreme Court has laid down a spectrum which measures distinctiveness
on the following categories (In increasing order of their strength):

 Generic—does not qualify for protection.

 Descriptive—sometimes qualifies for protection.
 Suggestive—qualifies for protection.
 Arbitrary or fanciful—qualifies for protection
 Invented – affords strongest protection

The determination of whether a mark qualifies for protection is based, in part, on the category
to which the mark belongs to:

 Generic: By their nature, generic marks are not distinctive. They do not warrant
protection because if one seller could trademark a generic name, other sellers would
be unable to describe their products and would thus be ata great disadvantage. For
example, it is not permissible to use a word mark "Milk" to brand the product milk or

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 the words "Hiking Boots" to brand boots. Such words which have become publici
juris or generic cannot be appropriated as they belong to the public at large.
 Descriptive: Descriptive terms and symbols generally identify attributes of the
product, such as the purpose, size, colour, ingredients, origin, and so forth. Merely
descriptive, general marks do not qualify for protection. To qualify for protection, a
mark must acquire a ‘secondary meaning.’ To acquire a secondary meaning, the
public must associate the mark with the manufacturer or seller rather than the
underlying product itself. Examples include McDonald’s and Hilton Hotels.
 Suggestive: A suggestive mark does not describe the product; it suggests its nature or
characteristics. Although an inference must be made about the product, the product
must still bear some relationship to the mark. For example, a Pathfinder suggests
something that is at home off-road, but it has no inherent relationship to a four-wheel-
drive SUV made by Nissan.
 Arbitrary or Fanciful: Marks that are arbitrary and fanciful do not describe or
suggest any characteristic of the product. When the meaning of the symbol used in the
mark is not inherently related to the product, the product is more likely to be
associated with the symbol, ensuring that the consumer recalls the arbitrary
association drawn by use of the unrelated symbol for identifying a product. Examples
include Apple for computers, Yamaha for motorcycles, Chevron for gasoline and
Maytag for appliances.
 Invented/Coined: these marks are not even in existence as a word, these are invented
for the sake for marketing only. (For Instance Kodak). These marks are the strongest.
If term is coined it might turn into generic mark. For eg- Aspirin, Escalator and
Xerox. In order to avoid this, We need to effectively police it. For eg- Xerox as a
trademark and not a generic term and people rushing courts.

Genericide of a mark

It refers to the death of mark. When a trademark becomes generic, the right over the mark
passes into the public domain (eg. Thermos, elevator). These are prevalent in cases where the
goods are innovative and new to the consumer. Also, if the manufacturer does not police
enough, it might lead to genericide.

 Ways to avoid Genericide: It can be avoided by communicating to the consumers

the distinction between the product and the manufacturer marks. Second, to constantly

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 police and let the perosn who breach know that the trade-mark is being breached.
Litigation, advertising, notices are helpful with this.

Registration of Trade Mark

A trademark is protected by the common law. The remedy of an unregistered TM could be by

means of passing off (Tort, i.e., someone is riding upon someone else’s TM for passing off
their commodity). Registration will provide for a statutory remedy in addition to the common
law remedy. If a party loses the case of passing off he can still prove for infringement of right
under the TM act and vice versa. Also, registration provides for a wider spectrum of remedy
which are provided in the act.

The advantages of registering a trademark are as follows:

1. It confers on the proprietor certain exclusive rights to use a particular mark in relation
to specified commercial activities.
2. In contrast to passing off, it enables the traders to protect their marks before they are
introduced onto the market.
3. Once a mark is registered, there is a presumption, not guarantee although, that the
registration is valid.
4. Registration reduces the possibility of disputes. This is because, it confers on the
trademark proprietor increased certainty as it determines the scope of the property
protected as trademark.

The Trade Marks Act, 1999 has adopted the expression ‘distinctive character’ in the mark
which refers to the ‘capability of distinguishing’. By that, words such as ‘best’, ‘superior’
etcetera (used for instance to signify the quality of transport services such as ‘Best Bus’
services) are not distinctive of the goods/services but merely descriptive of the qualitative
aspects of the good/service, hence it cannot constitute a distinctive trade mark.

Section 9 – Bar against registration – Absolute grounds for refusal

S. 9 deals with absolute ground for refusal. As per S. 9(1), registration can be denied
absolutely in cases where:

a) Trade mark which are devoid of any distinctive character, i.e. not capable of being
distinguished from similar goods.
b) Consists exclusively of marks or indication which serves to designate its
characteristics such as its kind, quality, intended purpose, geographical origin.

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 c) Consists of marks or indications which have become customary in the current
language or in bona fide and established practice of trade.

The proviso to this section states that even a descriptive trade-mark may be registered if
before the date of application of registration, the mark acquires a distinctive character on
account of the use or has become a well-known trade mark. Such descriptive trade-mark may
be registrable owing to the mark having acquired a ‘secondary meaning’ in the minds of the
consumers. In order to assess if a mark has attained secondary meaning, customer’s
perception displaced primary meaning, exclusivity of use, manner of use, duration of use,
volume of goods marketed, advertisement, consumer surveys have to be factored in.

Second part of proviso states that well known trademark also should not be refused
registration. There are several factors and consideration to undertaken to decide if a thing is
well-known:

1. Psychological function of a mark is so strong that consumer can correlate to goods

and services associated with mark.
2. It must be known- knowledge as to product among relevant section of society and
reputation in the market. It is proved by showing that it is known among relevant
section of society and has a well-established reputation in market. ‘Society’ means
relevant section of society those who are potential consumers, business circle.
3. Duration and extent of geographical use - Longer duration, longer area covered then it
can be a well known trademark.
4. Promotion of market and in trade fair etc and all publicity attached to it , if it is of
substantial amount then indicative of well known trade mark.
5. Which area it has been registered and used.
6. How successful the proprietor of person having trademark has been, i.e. if has positive
response from trademark office or court of law.

Case - Zatarains' Inc. v. Oak Grove (1983, USA)

Zatarain’s (Plaintiff) manufactured and distributed food products. It registered the terms
“Fish-Fri” and “Chicken-Fri” as trademarks for its batter mixes used to fry foods. Oak Grove
Smokehouse, Inc. (Defendant) began marketing a “Fish-Fri” and “Chicken-Fri” in packages
similar to those used by Plaintiff. Plaintiff brought suit for trademark infringement and unfair
competition. The question before the court was the descriptive terms protected by trademark
without a showing of secondary meaning in the minds of the public?

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Held - No. Descriptive terms are not protected by trademark without a showing of secondary
meaning in the minds of the public. “Fish-Fri” had acquired secondary meaning owing to all
factors but not “Chicken-Fri” since had little use and market share low and not consumer
survey held that chick fry was distinct. The Court applied the four prevailing tests of
descriptiveness:

1) Test of dictionary meaning: The TM is descriptive if the TM’s meaning seen in

reference with word in dictionary.
2) Imaginary Test: If with import of imagination, the TM conveys the distinctiveness or
origin, then the TM will be suggestive trademark. If it doesn’t it will end up being a
descriptive mark.
3) Usefulness of the term to competitors: Whether or not the competitors consider the
TM to be useful in describing their product? If yes, it is descriptive product.
4) Actual use of the term by other merchants

Proof of secondary meaning is an issue only with respect to descriptive marks, and the burden
of proof rests at all times with the person trying to establish such a meaning. The court
decided that the plaintiff has no legal claim to an exclusive right in the original, descriptive
sense of the term. Therefore, Defendant is still free to use the words “fish fry” in the ordinary,
descriptive sense, so long as such use will not tend to confuse customers as to the source of
the goods.

Evidence to prove ‘secondary meaning’

Evidence to prove ‘secondary meaning’ can be either direct or circumstantial.

1. Direct - This is the direct response of consumers as to what they think of the trade
marks. A consumer survey showcasing the consumer’s perspective, if the TM
showcases origin or not.
2. Circumstantial
a. The amount and manner of advertising that’s been done. If substantial
resource has been spent on proving that the TM has a particular source, then
such TM is likely to be accepted and this is circumstantial evidence.
b. The substantial market share of the commodity under descriptive indicate that
the TM no more describe, but has become an indicator of source.
c. The time period of use of the trade mark, act as a circumstantial evidence.

S. 9(2) deals with public policy grounds for refusal. A mark shall be denied if:

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 a) Of such nature so as to deceive public or cause confusion.
b) Likely to hurt religious sentiments of any class of citizen
c) Contains scandalous obscene matter
d) Prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.

S. 9(3) – A registration of trade mark shall be rejected if it contains:

a) The shape of goods which result from the nature of good themselves.
b) The shape of goods which is necessary to obtain a technical result.
c) The shape which gives substantial value to the goods.

S. 13 - Prohibition of registration of names of chemical elements or international non-

proprietary names. (like chemical names or WHO list).

S. 14 - Use of names and representations of living persons or persons recently dead (if want
take permission of it). (Nestle vs Maggi)- Maggi was real estate company and not food
products. Here commercial activity of both are different. And had bonafide justification to
use it. So if without bonafide use then permission required.

Functionality Doctrine: The Trademark Act, 1999 draws influence from both US trademark
law as well as UK. The doctrine of functionality which is an essential part of US law finds
place in Indian trademark law as well. The doctrine prevents trademark law, which seeks to
promote competition by protecting a firm's reputation, from instead inhibiting legitimate
competition by allowing a producer to control a useful product feature.

If an object is in a function, IPR will not cover within it functionality of that object. For e.g.
Harley Davidson wanted trademark on voice of their bike, due to crank pin of their v2 engine.
But honda opposed it and they withdrew its application. If Harley had been allowed
trademark, then by virtue of it harley can have as much they want, but the engine which was
functional part of it is sub matter of patent right. Patent rights in not perpetual right and only
for 20 years and after that comes in public domain. So, if one become public domain it came
and if had trademark been granted on sound than again would have been covered by ipr law
owing to trademark.

Suppose you brought pen. It has functionality. Parker cannot claim functionality of pen.
Parker by virtue of trademark cannot extend it on functionality. Harley did so, it was not
allowed as such grant would have defeat purpose of trademark to establish convention.

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 Section 11 – Relative ground for refusal

S. 11 deals with the relative grounds for refusal of registration. The absolute grounds of
refusal prevent registration prima facie, whereas relative grounds for refusal deal with the
mark in connection to other earlier marks. For example, the trademark for a spare-parts
manufacturer being deceptively similar to an earlier trademark for an automobile
manufacturer may mislead or confuse the consumer as being associated with each other
owing to the common trade connection. Consumers remember mark as a whole and they
don’t analyse its nitty-gritties. (Take BMW logo for instance).

The Section provides that a mark can be refused because of its identity and association with
an earlier trademark and similarity of goods or services covered by the trademark or, its
similarity to an earlier trademark and the identity or similarity of the goods or services
covered by the trademark.

Illustration - HP and hp - are they identical or similar or dissimilar – they are identical
because that’s how consumer remember. They don’t remember they have just an general
impression of trademark they don’t remember in detail; LADY and FIRST LADY – If lady is
existing trademark and first lady new entrant. First lady is connotation to wife of head of
state. So if even lady has been used in entirety. Use of lady and first lady may be different.
These are dissimilar marks. addition of first changed meaning of the lady; American tourister
and American Tourister luggage – is identical because luggage is just a description.

When marks are identical, then one need not look into similarity. Whereas, for similarity, it is
necessary to look into its identity.

How to assess similarity between goods and services u/s 11

Assessment of goods and services can be made by taking regard of:

i. do they serve same purpose - Would you consider umbrella and raincoat same –
they serve same purpose that is to keep u dry
ii. Proximity in the market – consumer see things at macro level and not micro
level- for eg though pencil and eraser are not similar things (at micro level) the
consumer would consider it as a one unit or similar good.
iii. Whether they are perfect substitute of one another or not – are umbrella or
raincoat can be substitute from one another, no ? Umbrella no use on bike,
raincoat no use on sunny day.

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 iv. Who is the target consumer – car A and car B – they serve the same purpose,
they are perfect substitute but they make be created a particualar section of
society. For eg honda and royal royce are not for same type of consumers.
v. degree of similarity in marks - e.g.- two software’s. And both employed same
name albert. One was to facilitate internet access of lotus comp and another for to
facilitate cataloguing . and trademark albert identical. Ques- are these dissimilar,
similar or identical? ANS- if we look purpose- no not same purpose hence
dissimilar. At macro level identical or similar(proximity in market place)?-
unlikely proximity that if one for internet taking software he want for cataloguing
also. Hence dissimilar goods. Are they substitute? No they are not. Are target
consumer different? Yes since consumers base different and also there is no
interference in one another.

In case of pencil and eraser, are they similar and identical? The above three does not fulfil,
but they are in close proximity such that they go together. This proximity makes both pencil
and eraser identical goods. So proximate goods.

Sabel v Puma (1998 – EU Court)

In this case Puma had objected to a trade-mark application made by Sabel in Germany on the
grounds that the mark, which depicted a running cat, was similar to its own mark and was
likely to confuse the public. The issue to be decided was whether a mere likelihood of
association which the public might make between the marks as a result of their resemblance
was sufficient to satisfy the requirement for a likelihood of confusion.

Held - The test of whether a sign is confusing is how the use of the sign would be perceived
by the average consumer of the type of goods in question. The average consumer normally
perceives a mark as a whole and does not proceed to analyse its various details. It is therefore
not impossible that the conceptual similarity resulting from the fact that two marks use
images with analogous semantic content may give rise to a likelihood of confusion where the
earlier mark has a particularly distinctive character, either per se or because of the reputation
it enjoys with the public.’ The court stated that for global assessment, following factors must
be assessed:

(1) Visual similarity - Where the public confuses the sign and the mark in question
(likelihood of direct confusion);

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 (2) Conceptual similarity - where the public makes a connection between the proprietors
of the sign and those of the mark and confuses them (likelihood of indirect confusion
or association);
(3) Oral similarity - where the public considers the sign to be similar to the mark and
perception of the sign calls to mind the memory of the mark, although the two are not
confused (likelihood of association in the strict sense).’

Similarity of Mark - A trade-mark should be assessed from the point of view of a well-
informed consumer. The similarity depends from the point of view of a consumer. The
yardstick is hypothetical i.e. a reasonable well informed person, a relevant customer. Who is
a relevant customer? Consumer of that product, neither more nor less attentive. How much
consumer attentive? Depend on Varity factor; Price - More attentive if buying expensive
product. If professional purchaser say builder, plumber – they would be more aware because
they are professional, the level of reasonableness required is higher.

Likelihood of confusion include likelihood of association. Association such that confusion

emerges as to origin of good. Association focus when marks so similar. Mere resemblance
may not confuse consumer only there may be other factors. Hence likelihood of association
easy to prove than confusion. When likelihood of confusion we start enquiry with degree of
resemblance. Likelihood of association itself not only lead to likelihood of confusion. Though
likelihood of association lies at heart of confusion but other factors must be seen.

Eg. Mark 12939 and PEPSI are they similar. If we see this number in mirror image of initials.
So if we look at reasonable consumer he would not go into enquiry. For him there may be
similarity but it is hidden and not patent. As consumer not look trademark in that manner.

Polaroid Factors - When determining likelihood of confusion u/s 11, courts use several
factors derived from a 1961 case - Polaroid Corp. v. Polarad Elecs. Corp (1961). These
factors, sometimes known as the “Polaroid factors” are intended as a guide, and not all
factors may be particularly helpful in any given case.

1) Strength of mark- it talks of distinctiveness of mark i.e. ability to distinguish

between source of service. Arbitrary marks are highly distinct. So when strength of marks
increase ie greater distinctness probability of consumer to increase confusion as to source
origin increases. E.g.- apple logo used by different company on pendrive. Since apple is
arbitrary mark and if used on software and pendirve more likelihood of consumer confusion
as to come from same enterprise.

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2) Degree of similarity between the marks- identity and similarty are identical things.
So if more similar than will consumer be confused- yes. When move from more/lesss similar
to identical then likelihood as to confusion of consumer as to source of origin increases.
3) Proximity of products- if goods and services goes to identical marks then too
consumer confused.
4) Sophistication of consumer- how much attentive consumer is when purchasing. If
purchasing expensive prod more attentive. Greater the sophistication less likelihood to be be
confused. Eg- if consumer purchase a medicine, how much sophistication he has? He will
check if not take counterfeit product. Even if u purchase a product importance be seen. If eg
purchasing pencil, needle one will not behave sophisticated. But for medicine level of
sophistication will be higher, even if good not expensive but its importance is relevant he
may be same sophisticated as purchasing expensive item. Eg- person A choice to purchase
cigarette will be patron of product and will be aware of brand and if something else given
will realize it product not same and not confused.

In Cedilla Pharmaceutical Case ques as to brand used by company? Argument used since
medicine person more sophisticate. Court said owing to nature consumer more attentive as to
origin. But court held sophistication not matter.

5) Bridging the gap - eg enterprise a dealing with particular goods and services and
likelihood to enter deal new services. Eg bank earlier business only for banking services uses
mark. But when later someone used trademark for insurance services. In realms of consumer,
they believe that that bank providing insurance services. So likelihood of confusion.
6) Good faith of the defendant- in case of registering trademark intent also important.
If intent to create confusion in market place then can be denied. But if applicant takes prior
bona fide ryt irrespective of a mark than can be granted. But if good faith in favour of
applicant it cant be say conclusively that there is likelihood of resemblance. The burden of
proof lies on him to prove bona fide. Eg- a family named Maggie carrying financial services
and nestle brought suit on him so it was bona fide as was not enrolled in food industry as
nestle.
7) Evidence of actual confusion - if someone can prove that consumers have been
confused then it is finding of likelihood of confusion and law also req likelihood of
confusion. But if proved that gone beyond likelihood that is evidence of actual confusion and
a credible one. Such evidence must be procured. But how it can happen when applicant
applies for trademark- cant happen. But if mark was there in market and now seeking

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registration despite pre-existing ryt of another then for time period he used mark, evidence
can be shown before trademark office seeking cancellation. Eg- if consumer surbey credible
conducted and it demonstrates tht consumer confused in believing applicant prod coming
from client enterprise or client receiving complains of product not being provided by them.
Suppoe if deal with spare parts and defect arose and consumer send client email inplace of
applicant. So these emails evidence.
8) How product reaching marketplace - eg- if goods sold in same market place and if
target same in advertising. So how this reach consumer is akin and like. Then there is
likelihood consumer will be confused. Eg- if energy drink promotes product in f1 race and
applicant product also similar and he also chooses to promote their product. So when they
reach market and available is same shelf and confuse consumer.

S. 11(2)

The section speaks about the similarity and confusion in trade-marks. If the marks are similar,
but if the products are dissimilar, even then the TM cannot be registered. This is because the
earlier trade mark is well known trade mark in India and if use of later mark without due
cause would take unfair advantage of or detrimental to character or repute of earlier mark.
This is not based on fairness, but is based on the precepts of fairness in market. A candy
maker using Mercedes as brand name might not per se confuse the consumers, but is likely is
to result in unfairness towards the Mercedes.

There are Four possible relative grounds out of S. 11(2). All are interconnected.

1. One gaining adv. out of distinctiveness of a mark - to take unfair adtvg to capture that
mark without justification. It can be derived out of two things like riding off earlier
marks or deriving profit out of earlier mark. (For instance, “SBI medicine” will result
in unfair advantage
2. Unfair adv. out of repute - if some capture repute it automatically captures goodwill
and revenue will be lost of former one if later mark registered. Eg- apple trademark
stand and has a repute. Suppose if another person sells dissimilar good with same
mark he will convey same meaning to consumer and this way he will monetize his
mark and monetize at repute of apple.
3. Detriment to distinctiveness and repute – It means that one is benefitting and causing
harm to another person. If good services dissimilar then prob less as not interfering in
economic activity yet cause harm. Eg- if Mercedes shoes come than distinctive

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 character to differentiate from automobile reduced (Mercedes Chocolate is the apt
example, wherein the Mercedes brand will be looked down upon.)
4. The former must be well known trademark and the later use is with no due cause.

In order to keep distinctiveness, it takes number of years and investment to build and if
someone allowed to do harm then prior investment would be destroyed. It can also cause
harm to repute. Eg- If later trademark (apple) comes with dissimilar products of inferior
quality then image of apple would reduce. Eg-apple alcoholic products. Here people will not
associate apple with these products. So this can cause damage to its repute.

Distinction between reputation, repute, Goodwill

1. Reputation – knowledge of the existence of a trademark. (Reputation can exist even

when the product is not in circulation)

2. Repute – What the trademark stands for from the consumer’s perspective. (For
instance, Rolls Royce stands for Luxury)

3. Goodwill is the economic consequence of the repute. (The product must be in

circulation for goodwill to exist)

Reverse Confusion: Normally confusion is caused by the latter use trying to divert the TM
of the former. This is a case wherein the consumer base confuses the origin of the former
product to that of a latter, owing to the reputation of latter. For instance, there exist, if IPhone
brand was used earlier and Apple later comes up with a product as iPhone, now the former is
very likely to profit due to the reputation and this is actionable under law.

Let’s say, A offer’s bike service as its product and as a part of service he gives free Castrol.
Now A advertises his service with Castrol, resulting in A riding upon the goodwill of Castrol.
This is actionable.

Exceptions to reverse confusion: If the senior mark is a well-known mark. When applicant is
making a bona fide (Not a valid due cause) claim while registering, the burden of proof shifts
to the person holding the well-known senior mark to prove it. [S. 11(2)]

If the senior mark is not a well-known mark and if it happens to hinder the latter TM on the
relative grounds, then the latter mark is deemed to have swallowed the senior and the latter
hence has ultimate rights over it.

11(1&2) deals with pre-exsisting mark but 11(3) talks when rights exist as not to registered
trademark. For eg. I am cartoonist and created character and I have a copyright on it and
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some one use that image as character for trademark of candies. Therefore, here conflict as to
pre-existing right. Even when work protected by copyright, a later entrant cant do so as
conflict to copyright. 11(3) - A trade mark shall not be registered if, or to the extend that, its
use in India is liable to be prevented-

(a) by virtue of any law in particular the law of passing off protecting an unregistered
trade mark used in the course of trade
(b) by virtue of law of copyright.

Eg- logos are artistic mark so one must be owner of mark.

11(4)- where consent given by original mark holder as to new right in writing. Mere oral not
enough and enforceable.

11(5) - when case about matter of right but it is not statutory right but a common law right.
Rejection under subsection 2&3 exist only when objection raise by proprietor of early
trademark. But conflict as talk of trademark and not includes copyright mentions in 11(3).
But unless opposition raise registration, they cannot be refused. Suppose when application for
registration is field, then trademark office makes public notice, and if anyone has objection,
he/she can file in the stipulated days. So, if earlier right owner not takes account of it then
trademark office cannot refuse.

11(6) of the TM Act talks about the relevant facts to constitute a well-known marks. The list
is not exhaustive, meaning, the registrar can take into consideration other facts. Ex. - If a
chemical oil company supplies its products to industries. In this case a common person might
not know the TM, but the TM of the oil co. might be well known among industries [11(6)(i)].
A mere fact that a TM is registered and is known to public at large is not enough under s.11
(6)(iv) for TM to be well known.

S. 11(9) provides for categories which are not relevant for concluding the TM as a well
known mark. If the TM is not registered, the only available right is the common law right
against passing off.

Sec 12 is about honest concurrent usage- when many use same trademark. For e.g.- polo- it
has US Polo(fashion), POLO (Volkswagen automobile), POLO (owned by nestle as mint).
Registration in such case be allowed if honest concurrent usage or sub to condition and
limitation if registrar deems fit. For eg- Suresh pakodewala famous in Jaipur and if I start it in
lucknow then it is distant usage. So here registrar can’t forbid me. As here honest concurrent

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use. Mere registrar can lay limitation as to not enter into market of other. It must be bonafide
and not malafide

Effect of registration and Passing Off

The registration of a trademark shall, if valid, give the exclusive right to the registered
proprietor to the use of trademarks in respect of goods and services of which the trademark is
registered, and also to obtain relief in respect of the infringement of the trademark.

S. 27 of Act states that no infringement will lie with respect to an unregistered trademark, but
recognises the common law rights of the trademark owner to take action against any person
for passing off goods as the goods of another person as services provided by another person
or the remedies thereof. Passing off is common legislation of tort, which can be used to put in
force for unregistered trademark rights. The regulation of passing off prevents one man or
woman from misrepresenting other items or services. The fundamental question on this tort
turns upon whether the defendant’s conduct is such as deceive or mislead the general public
to the confusion between the industry activities of the two.

It means that passing off is a remedy which remain irrespective or mark registered or not but
action of infringement only can sought when trademark is registered. So if registered u have
both common law and statutory right and in absence only common law right exists. S. 27
gives exclusive right as to mark for goods and services.

S. 29 – Infringement of Trade Mark

When an unauthorized person uses a trademark that is 'identical' or 'deceptively similar' to a

registered trademark, it is known as infringement. The definition of Infringement of a
registered trademark is given in Indian Trademarks Act of 1999, section 29 whereby, a
registered trademark is said to be infringed by any person, who not being the registered
proprietor of the Mark or being a person authorized by the owner for its use (registered user),
uses in the course of trade, a mark which is identical with, or deceptively similar to the mark
in relation to goods and services in respect of which the trademark is registered.

It is to be noted that infringement suit can be filed only for the violation of a registered
trademark. And it can be filed against any person not being the registered proprietor himself
or the registered user of the said Mark.

The constituent elements of infringement of trademark:

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 1. Unauthorized person – This means a person who is not the owner or the licensee
of the registered trademark.

2. 'Identical' or 'Deceptively similar' – The ground mentioned herein is similar to

that u/s 11 and if the latter trademark (the person against whom the case is filed for
infringement) falls in any of the following categories, it will liable to struck down.

a) the mark in dispute is identical with or deceptively similar to the registered

trademark and is in relation to the same or similar goods or services;
b) If the identical or similar mark can cause confusion in the minds of general
public to have an association with the registered trademark
c) If the registered trademark is used as a part of trade name or business concern
for goods and services in respect of which the trademark is registered
d) If the trademark is advertised and as a result it takes unfair advantage or is
contrary to the honest practices or is detrimental to the distinctive character
and reputation of the registered trademark.
e) If the registered trademark is used in the material meant for packaging or
labelling of other goods or as a business paper without due authorization of the
registered user.

3. Registered Trademark – Infringement takes place of a registered trademark. For

an unregistered Trademark, the common law concept of passing off will apply.

4. Goods/ Services – In order to establish infringement even the goods/ services of

the infringer must be identical with or similar to the goods that the registered Trademark
represents.

Any unauthorized use of the exclusive statutory rights of a registered trademark constitutes
infringement. The court may presume confusion but rebuttal has to come from side of person
who using that mark. Assessment of identical or similar done via global assessment as to
visual, aural similarity in respect to dominant or distinct. As per S. 29(4)(c), in case of
infringement trademark owner not required to establish that his mark his well known one but
in case of refusal he has to demonstrate that it is well known mark, if use of trademark is
without due cause. As per S. 29(6)(d), a person uses a registered mark, if he – (d) imports or
exports goods under the mark. Thus, it is clear from S. 29(1) r/w S. 29(6)(c) that any
unauthorized import or export of goods would be considered as infringement of the owner’s
trademark.

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 Paralle Import and Doctrine of Exhaustion

Parallel imports is a trade practice wherein genuine goods are legitimately acquired from the
rights holder and subsequently sold at lower prices through unauthorised trade channels in the
same or a different market. Doctrine of Exhaustion basically means that an owner of a
particular good ceases to have control over further sale of his goods once he has made a valid
transaction of sale. In India, parallel importation is intricately linked to the principle of
exhaustion of rights under the Trademarks Act, 1999. Hence, this doctrine is also called as
the doctrine of first sale. There are different modes of exhaustion as well, they are:

1. Doctrine of International exhaustion works on the assumption that the whole world
is one market or one country and thus goods once sold in any part of such market or
country operates as exhaustion of rights of the trademark owner over such goods.
2. Doctrine of Regional exhaustion is when goods bearing a trademark are first sold by
or with the consent of the owner in any Country, which is a part of any specific
region, then the owner cannot prevent subsequent sale in his own Country or in any
other Country which also is a part of that specific region. The European Union has
adopted regional exhaustion.
3. Doctrine of National exhaustion stipulates that once a product has been sold in the
domestic market for the first time by or with the consent of the owner, for which he
has received a consideration, he then ceases to have control over any subsequent sale
of the same in the domestic market, in the sense, he can neither prevent subsequent
sale of the said product nor can he claim any profit arising from a subsequent sale nor
can he sue for infringement of his trademark.

Two major issues that are often discussed in the context of parallel importation and
trademarks in India are, whether parallel importation constitutes infringement under Section
29(6) of the Trademarks Act and whether India recognizes the principle of international
exhaustion of rights under Section 30 of the Trademarks Act.

The principle of exhaustion of rights is been dealt in the case of Samsung Electronics
Company Limited & Anr. Vs. Kapil Wadhwa (2012). In this case, Samsung had sued
Kapil Wadhwa (a former authorized dealer of Samsung products), for unauthorized import of
genuine Samsung printers from a foreign market into India and subsequent sale thereof. The
said printers as sold by Kapil Wadhwa were cheaper than the one sold by Samsung in India.

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The single judge bench of the Delhi High Court held that India adheres to National
Exhaustion, the import of goods into India without the permission of the registered proprietor
would amount to infringement. After that, an appeal was made to the Division bench of the
same High Court. It held that the term ‘the market’ contemplated by Section 30(3) of the
Trade Marks Act, 1999 means the international market and in holding so they relied upon the
Statement of Objects and Reasons of the Trade Mark Act. Accordingly, it was held that the
trademark legislation in India adopts the Doctrine of International Exhaustion of Rights.
Further, Samsung will not be entitled to prevent the parallel import of its products in India.

S. 29(7) applies when person know or had actual or constructive notice that he was having
knowledge about it. A registered trademark is infringed by a person who applies such
registered trade mark to a material intended to be used for labelling or packaging goods, as a
business paper, or for advertising goods or services, provided such person, when he applied
the mark, knew or had reason to believe that the application of the mark was not duly
authorised by the proprietor or a licensee.

S. 29(8) talks of disparaging content. Like if someone says Samsung goods bad. For eg if
airline service provider and tell my flight that my flight will save money of your than other so
it will be honest usage but if usage such outright without basis so it is infringement.

Comparative Advertisement & Generic Disparagement

Comparative Advertising is a marketing strategy in which a company’s product or service is

presented as superior when compared to the competitor’s. It is a strategy wherein the
advertising company provides reasons for their product or services to be superior as
compared to their competitor’s products or services. Disparagement, on the other hand,
means, using false claims or statements about the competitor. Disparagement is, therefore,
not allowed in Indian law. Thus, the moment comparative advertisement claims false
information about the competitor’s product, it amounts to disparagement and is a violation of
the competitor’s trademark S. 29(8) deals with comparative advertisement and further S.
30(1) creates a limitation for using comparative advertisement.

In the case of British Airways v Ryanair Ltd (2000) the claimant alleged that disparaging
adverts by the defendant infringed its trade-mark and amounted to the tort of malicious
falsehood. Held: There was no dispute that the mark had been used. The Act could not be
used to prevent any use of another’s trade mark in comparitive advertising. In this case the
advertisement, though possibly ambiguous was not misleading: ‘the use was honest

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comparative advertising. I suspect the real reason BA do not like it is precisely because it is
true.’

Example - Don’t eat with clown eat with king - it is an infringement. Statement is not
problematic but what matters is that the statement said with what intention. Comparison not
required.

In comparison, name need not always be mentioned. Disparagement and defamation are
different as truth is a defence u/s 499 of IPC. Similarly disparagement means false statement
about another in commercial speech. If there is an honest comparison, then no disparagement.

“Nike out runs every show brand” – This still could be infringement under 29(8). It is not
necessary to refer the competitor, even a generic comparison is enough. The Indian law is
silent on Humble advertisement. For instance, “We are good, but not better than Rolex” – this
still could be detrimental, as the advertiser is likely to grab the consumer attention and ride on
Rolex’s brand, which in long run is likely to harm the consumer base of Rolex (or may even
drain the consumer base which seeks to buy cheap Rolex watches). If every person does this,
it is very likely to disparage Rolex’s brand.

Colgate-Palmolive (India) Limited vs. Anchor Health & Beauty Care Private Ltd 2009
(Mad.) dealt in comparative advertisements. Colgate-Palmolive approached the court
aggrieved by the use of the words "ONLY" and "FIRST" in the advertisement of the Anchor
Health. The objection regarding the advertisement was the claim by Anchor that theirs was
the "ONLY" toothpaste containing all the 3 ingredients Viz., calcium, Fluoride, Triclosan.
The Second objection was the use of the word "FIRST" all round protection toothpaste. The
applicants contented that even their products all the 3 ingredients and were prevalent even
before Colgate had established itself as a pioneer in the world of dental care. The court after
detailed analysis of various case law and provision came to the final conclusion that the
reasons behind the use of the words "ONLY" and "FIRST" are not satisfactory. The
advertisement usually gives out an impression that Anchor is the only toothpaste containing
all the three ingredients. Similarly, the use of word "FIRST" is not in relation to the slogan
"all round protection" as it is intented to project. In this light, Anchor was restrained from
using the offending words in the advertisement.

In the case of Pepsi Co. v. Hindustan Coca Cola Ltd., it was held that in order to decide a
case of disparagement the following factors are to be kept in mind:

 The intent of the commercial

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  The manner of the commercial
 The storyline of the commercial and the message sought to be conveyed by the
commercial.

Therefore, the advertisement has to be seen as a whole. The true intention of the
advertisement can be seen only when it is seen as a whole.

Law of Copyright
Copyright is defined as a bundle of exclusive rights granted to the owner, devoid of others to
do or authorize others to do some acts in respect of literary, dramatic, musical, artistic works,
including cinematograph film and sound recordings. It is a negative right, which prevents
copying of its subject matter. It represents "multiple rights" of its owner like - right to use, to
reproduce, to transfer (through license or otherwise), to translate, to adopt, etc.

In LB (Plastics) Ltd v Swish Products Ltd, (1979, UK), it was held that copyright is
concerned only with the expression of ideas and copying of physical material but not with the
reproduction of ideas. Copyright is not about the idea, but about the way in which they are
expressed in material form.

The Copyright Act, 1958, mentions the following as requirements of a copyright.

1. The work shall be original - Originality is the core requirement and the basic
yardstick of copyright protection. The word "original" in copyright statutes has been a
contentious issue all over the world. In the UK, copyright law has been used to protect
"industrious creation". In the US, the courts have spoken about the need for a minimum
amount of creativity. Through originality doctrine, copyright is safeguarding the public
domain so that a person cannot claim for an expression. Section 13(1) of the Indian Copyright
Act 1957 states that copyright subsists in “original literary, dramatic, musical and artistic
works”. However, the Act fails to give any definition or test to determine originality of a
work. Originality mean exercise of skill and judgement in forming an expression. Plagiarism
of any sort is not allowed.

2. The person claiming protection is the original owner of the work - Typing story
on software can owner of software say as his work? No he cannot. It has to be seen as owner
of work. Author is never the owner. Owner is person who can exercise rights.

3. The work has a human authorship – Human authorship is a must and it should be
person and NOT an AI (artificial intelligence). The work must be created by a human being.

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If work is created by animal, no matter how much aritistic it may be, copyright cannot be
claimed. But if donkey paint a painting whom I have trained, I cannot have copyright on it as
not a human expression.

4. Idea of fixation - If idea is in the head and not fixed on tangible thing then it
cannot be considered. Fixation means that the idea must be in black and white. For it, the
story must be penned, music must be recorded.

Idea-Expression Dichotomy
For copyright work must be original whether it is not new. If I made an animated movie on
Ramayana, is it copyrightable? Yes, as I have exercised my skill and judgement hence I have
copyright on work I have made and not on ramayan. But if someone copies a story identical
to something else, then it would be theft. If taken idea is free for everyone then there is no
issues. Idea are not Copyrightable but expression are. I may share same idea but if is
expression also same then problem arises. For Instance, A gives an idea for B’s book. Now A
cannot claim infringement. Ideas of any sort is not protected by copyright law. Ex. How to
make a song memorable is an idea not an expression and this is not copyrightable. There are
two theories with regard to this:

1. Doctrine of Merger – It provides that when an expression is an idea and vice-versa,

and there is only one way to express the underlying idea, the idea will merge with the
expression as to make them inseparable. Consequently, the expression becomes non-
copyrightable.
2. Doctrine of Scene a faire – It is a French term which means “scene that must be
done”. It is a concept in which holds that certain works of a creative work are held to
be not protectable because they are mandated by or are customary to a particular
genre. Here, the only way to present an idea is by using certain fixed elements then
those elements are identified by the term “scene a faire”. Illustration – Movie on war,
it cant be situation where everyone is happy, there has to be war, bloodshed, people
have to die, that commonality is because of idea. This copyright not exist as idea is
common and anyone can use it.

The earliest case regarding the idea-expression dichotomy is the U.S. Supreme Court decision
of Baker v. Selden (1880), which concerned the copyright over an account book. Selden had
written a book which described an improved system of book-keeping by a particular
arrangement of columns and headings which made the ledger book easier to read. Baker

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accomplished a similar result, but using a different means of arrangement of columns and
headings. The court held that while a copyright may exist over the publishing and sale of a
book, it does not extend to the ideas and “art” illustrated in the book. The U.S. Supreme
Court created a clear description between an idea and its expression, the primary reason being
that otherwise, it would result in providing an undue scope of monopoly to the copyright
holder and would amount to anti-competitive practice.

R.G. Anand v. Deluxe Films (1978 SC) the case dealt with the alleged infringement of the
script of a play, arising from the adaption of the same into a cinematograph film. The main
theme of the play was provincialism, where the plot involved persons belonging to different
provinces (Punjab and Tamil Nadu). The film retained the same theme, simply reversing the
gender of the person originating of the above provinces. The Court first compared the play
and the movie from abroad perspective and opined that the film’s theme was broader in
scope, covering both provincialism and dowry. In concluding that infringement was no
established, the Court held that copyright cannot be acquired over an idea (the idea being
provincialism in this case), and factually held that the dissimilarities between the two works
was substantial enough for one to conclude that there was no colourable imitation of his
play’s script.

EBC v DB Modak (2008 SC) – EBC was engaged in the work dealing with raw judgments
of courts which are copy-edited by a team of assistant staff and various inputs are put in the
judgments and orders to make them user friendly. These include an addition of cross-
references, standardization or formatting of the text, paragraph numbering, verification and
by putting other inputs. The appellants also prepare the headnotes comprising of these tools.
The court held that for a derivative work to have copyright protection it should show that the
derivative work should be more than a just mere copy of the original work and it should have
authors own independent skill, labour and capital. The court stated that copyright has nothing
to do with literary merit of the work. The court just need to evaluate whether the skill
employed is not of trivial or negligible but substantial.

The court came to this conclusion after taking into account whether the derivative work is
original work of the author and whether he has spent independent skill, labour and judgement
in preparing it and that it is just not a mere copy of the original work. Secondly the judges
have also taken into account that the changes made by the author in the derivative work are of
substantial work and is not of trivial nature. Thirdly the judges have applied the principal of

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"Sweat of the brow" which means that the author deserves to be reward for the skill. Fourthly
the court referred to the principle of minimal degree of creativity that states that there should
be a minimal level of creativity in the derivative work in deciding the issue whether the copy
edited judgement would qualify as original work or not.

Authorship v Ownership

Authorship and ownership are different thing. Copyright belongs to owner of work. Author
may be owner but occurs seldom. If I write book I may be author but not owner as owner will
be publisher as I assigned my copyright to him. hence ownership can be exercised in law and
not authorship. Ques: If I work as photo journalist of newspaper and I clicked photograph
who is owner for it? Copyright owner will be newspaper and not me. I was mere hired for
that thing. I was author and newspaper agency owner.

E.g.- I am a photo journalist and I forgot my camera at the studio. So I snatched camera from
passer-by and clicked it. So whose copyright on it - me, newspaper or passer-by? Copyright
belongs to newspaper but ownership belongs to person whose camera it was. Hence cant
publish unless his permission taken. He owns the tangible property.

Plagiarism - Some regard as theft on another’s work. But real def when you present work of
another as your own. All those acts however are not necessarily infringement of right. Some
kind of plagiarism is permitted. Copyright not protects valuable part of it(idea)/ though
contrary to purpose of copyright. Ex - If I paraphrase someone else article? So will be
copyright violation? If I reproduce same then problematic but if it is extension of work then I
am safe.

Cost Benefit Analysis

If ideas are included in copyright then cost can be three kinds - 1. transaction cost –
negotiated value of work. 2. The wit cost. 3. Dilvate cost (where potential of work is not
realized owing to increased cost and transaction cost).

Author of work is also user of work. So any work is based upon usage of someone’s work. If
such idea of usage is reduced then expression usage is also lost. Hence idea are not protected.
Cost is too higher when law tries to protect benefits derived out of other. So balance must b/w
benefits and costs.

Paul Goldstein states that an idea may be concept, solutions, building blocks. eg. Concept of
game – KBC, India’s Got Talent, it is concept, it is an idea not expression. Rule of game is

25
solution, not copyrightable otherwise no one will be able to play game say chess. Eg- rhythm
or notes of music. By calling them unprotected law not wants to monopolize them as author
would have capture on it. For eg if allowed then on rap if allowed as copyright then further
rap sogns cant come if and unless license granted.

Idea and expression are not distinguishable. But there is a thin line difference. Justice
Learned Hand of the US Supreme Court gave a test to approach such things –

Abstraction test – The abstractions test guides both infringement and

copyrightability. First, to test copyrightability, the abstractions test tries to abstract
ideas from the "expression" embodied in the full copyrighted work. If the expression
is merely an idea, the work is uncopyrightable. If not, the work is copyrightable and
"cannot be limited literally to the text. ". Second, to test infringement, one can
compare the abstraction against an accused work. After a series of abstractions, the
test potentially reaches uncopyrightable ideas of "what is expressed" in the
copyrighted work which can no longer be infringed.

Education Testing Service (ETS) v Katzmen (US, 1971) - ETS comes up with MCQ guide
and Princeton review copied one of ques from their MCQs with certain changes. Princeton
also asked same ques with same option in jumbled way. So is it copy? Can ETS say it has
copyright as to it and asking antonym reprobate? ETS copyright not extend to asking question
of antonyms. They have a copyright on expression. Princeton has copied expression.
Princeton was free to use the words of a language and ask synonym and antonym but it also
copied the expression itself, i.e. it copied all five option (expression) in jumbled way. ETS
copyright is not on word or asking but extends to particular expression. Hence one cannot
have copyright on 2+2=4. Person can use fruits for same thing and can present in multiple
alternative way. Suppose I have coaching and in vocabulary sheet so I used multiple words
from a book. If I teach it in class then it is fair usage so also protected, but if selling or
commercial usage then such is not allowed.

The question arises now as to what considerations have to be taken into account apart from
abstraction test in creative and factual work.

1. For creative work - it can be photograph, painting. E.g. play, movie. So how
abstraction approach applies. When we apply this approach, how to deal with creative
analogy. Nichols v Universal Pictures (1930, US) - The defendant produced publicly a
motion picture play, "The Cohens and The Kellys" which the plaintiff alleges was taken from

26
it. Plaintiff alleged that the copyright in her play, concerning a marriage between a Jewish
man and an Irish woman and the resulting difficulties between both families, was infringed
by defendant's movie about the marriage of an Irish man and a Jewish woman, also focusing
on differences between their families. The court affirmed the judgment for defendant, finding
the two stories were different as to incident and character, and thus there was no
infringement. As for plots, the only matter common to the two was a quarrel between a
Jewish father and an Irish father, the marriage of their children, the birth of grandchildren,
and a reconciliation. The court found such theme was only a part of plaintiff's ideas, and
therefore was not copyrightable.

The originality of the first work also has a considerable impact (If the work wasn’t original
enough, then one cannot subsist copyright over it).

The creativity of the work also plays a major role. Characters like superman and harry porter.
Can someone else use it? We have to look into delineation concept. In every work there is
main character and stock character (protagonist friend). No protection given to stock
character as other will never have opportunity to use it. There can be multiple superheroes as
it is idea while ironman superman are expression which are protected. The creative element
added to idea is protected. E.g. vigilantism is idea so I can create any character and not
amounts to copy of creative work. Copy of creative work when u copy of plot or how story
unfolds.

2. For factual work – In the case of factual works, the scope of protection is bleak in
such cases. Ex 2 book of history must be factual, hence a lesser level of protection, whereas a
comic novel will have a thick line of protection. Similarly, a biography is likely to have lesser
protection. It must be understood that only the factual part could be copied, whereas copying
of creative element will result in infringement).

Protection given in copyright depends on originality of work. History book can be copied
easily then book of fiction. A comic novel will receive greater protection than Biography of
person are factual. Reason - there must be a balancing role of idea and expression dichotomy.
Other authors writing biography etc have to rely on earlier work to propagate a theory which
absent in case of fictional work. When speak of factual work one has to rely on old work to
come up with his own work. Without relying work cannot be completed. Hence more
copying is allowed in factual work than fictional works.

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Elements which follow from unprotected idea are unprotected – Copyright protects
expression and not idea, and if something is not protected in the first place, any element
following from it will not be protected at all. If I set a play in lko with 1950 setting. So setting
sets what dress will be, manner of speaking will be and so on. If another author decided to
write a play on same setting so these specific elements as to dress, language, he will be
allowed to use. If second person also draws same map of lko of 1950, I cannot complain.
Illustration - Once person movie with planet EARTH without zero water. Another director
wirtes same story about other planet JUPITER. So inner works will be about to be similar as
to water shortage. These elements come out o unprotected work. Elements like hero saving
water, people helping him will be unprotected for both. The doctrine which govern it scenes a
faire. Element of work unprotected if find in work of genre. Eg- stok characters which are
unimaginative.

Concept Note is expression and not Copyrightable

Urmi Juvekar Chiang v. Global Broadcast News (2007 Bombay High Court). Here, the
plaintiff conceived an idea of a reality television programme, tilted “Work in Progress” which
would follow citizens from different parts of the country as they took the initiative and set out
to solve a civic problem of their choice in the locality. The plaintiff transformed her idea into
a concept and prepared a concept note sharing it with the defendants. The defendants showed
interest and after various meeting with the plaintiff, the matter was not concluded. Later, the
plaintiff came across a promotion of the reality show, “Summer Showdown” having the same
concept, launched by the defendants clearly indicating the infringement of the plaintiff’s
rights. The Court restrained the defendants from exploiting the plaintiff’s work without her
consent.

Zee Entertainment v Gajendra Singh (2008 Bom) - TV reality show producer Gajendra
Singh (defendant) during his employment with Zee Entertainment originated the format of a
television game show titled ‘Antakshari Saregama’ and reduced the same to writing in the
format of a concept note which was supposed to be a departure from the traditional
Antakshari game. The defendant was alleged of copying the plaintiff’s game show in all
material respects without any license or valid authorization. The Court noted that,

 Firstly, there was no record regarding the creation of the concept note.
 Secondly the concept was not referred to anywhere on record.

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  Thirdly despite the serious allegations made by the first defendant regarding the
concept note, the plaintiff has not adduced any evidence which led to the concept note
being stored in the plaintiff’s computer.

So, the court came to the conclusion that the concept note has not been established by the
plaintiff, therefore it is not necessary for the court to consider whether the material contained
therein constituted literary work and is entitled to protection under Copyright Act.

“Ownership”
Copyright not necessarily belong to author of work. Author not necessarily be owner. In legal
circumstance author might not be owner of work. The first person who had the ownership at
the incipient stages is the owner. S.17 of the act provides for first owner of copyright. In
absence of any agreement to indicate ownership, the author shall be the owner of the subject
matter.

Person who can exercise an economic right over the copyright is an owner. The author of the
book merely has moral right over the publication. If there is nothing against the law, by
means of the contract the ownership automatically transfers. Eg - I am photo journalist of
TOI so know whatever pic I click copyright will be of TOI. But if freelancer journalist then in
such case it will depend on nature of contract entered into particular newspaper.

If for example, I am photo journalist of TOI and gone out and saw accident involved celebrity
and it can be good news. So I snatched a person camera and click it. So is it photograph of
person whose camera I snatched or mine? So, copyright now belongs to TOI as I was clicking
photo during course of employment. In order to exercise copyright, one must have
proprietary rights over it. Tangible asset of pic with camera phone man. Hence different in
contract of service (one under control of other) and contract for service. Ques paper made in
RML by teacher. Teacher not have copyright but RMLNLU has it as teacher in course of
employment as contract of service.

But if any teacher writes a poem, college cannot ask copyright on this as not in contract of
service. Hence copyright depends on control and service exercised. In contract for service,
control not with person who have employed you. If I am working as scientist in lab, so
research funding and equipment’s given me by employer so result belong to him. Hence for
copyright ques to be asked is who is the owner

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In photograph or portrait or engraving or cinefilming, there must be valuable consideration at
instance of it. Section 17 proviso (b) in the case of a photograph taken, or a painting or
portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at
the instance of any person, such person shall, in the absence of any agreement to the contrary,
be the first owner of the copyright therein. Merely having clicked pic not becomes owner.

Requirement of originality is not expressly mentioned but is referred in sec 13 of The

Copyrights Act. Sec 2(y) does not use word “expression” but use word “work”. Hence,
copyright exist in original creative expression.

So what is originality?

Originality may mean a unique or such work that is new in entirety or not obvious to other
authors, has of criterion of creativity. Any work in tangible form garners copyright if there
exists certain originality in it.

Feist Publications v Rural Telephone Service Co. (1991 US) - Plaintiff provides telephone
service to several communities. Due to a state regulation, it must issue an annual telephone
directory, so it published a directory consisting of white and yellow pages. The yellow pages
have advertisements that generate revenue. Feist Publications, Inc. (Defendant) is a
publishing company whose directory covers a larger range than a typical directory. Defendant
distributes their telephone books free of charge, and they also generate revenue through the
advertising in the yellow pages. Plaintiff refused to give a license to Defendant for the phone
numbers in the area, so Defendant used them without Plaintiff’s consent. Rural sued for
copyright infringement. Issue. Are the names, addresses, and phone numbers in a telephone
directory able to be copyrighted? Held Alphabetical listings of names, accompanied by towns
and telephone numbers, in telephone book white pages are not copyrightable, because there is
no "original creativity". To establish copyright infringement, two elements must be proven:
(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that
are original.

The Court further stated that the test of ‘Sweat of Brow’ is not the standard but work should
be result of labour of author i.e work must be independently created having involved skill and
judgement.

Acuff-Rose Music v. Jostens (1998, US) - Plaintiff contends that Jostens (defendant) has
violated its copyright. Defendant denies that it copied the song and argues that the lyric in

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question is derived from an unprotectable cliche. The court stated that finding a reasonable
opportunity of access by the defendant due to evidence that the plaintiff’s song was ranked as
a top five country hit at the time the defendant composed the song, showing that the
defendant had “ample opportunity” to view the plaintiff’s lyrics. Further, in a case a person
said phrase from song copied into somewhere else. Court help no infringement as that phrase
appeared in multiple places and used in by different person. In light of widespread use of
phrase plaintiff cannot prove that he has originated the phrase.

Matthew Bender & Co. v. W. Publ'g Co. (1998, US) - The court held that plaintiffs,
publishers of CD-Rom products containing US Supreme Court and Federal Court’s decisions,
were free to copy such decisions from materials published by defendant. It laid down the rule
that the "originality" standard requires that the work result from independent creation and that
the author demonstrate that such creation entails a modicum of creativity. Simply stated,
original means not copied, and exhibiting a minimal amount of creativity.

EBC v DB Modak (2008, SC) [facts discussed few pages above] - The Court held that
every author should show that the particular derivative work should be more than just a mere
copy of the original work. Moreover, it should have independent labour, skill, and capital of
the author for getting copyright protection of such derivative work under the Copyright Act,
1957. it was also stated by the Court that the literary part of the work has nothing to do with
the copyright as the part which is evaluated is the skills employed which should be
substantial and not trivial.

The court came to this conclusion after taking into account whether the derivative work is
original work of the author and whether he has spent independent skill, labour and judgement
in preparing it and that it is just not a mere copy of the original work. Secondly the judges
have also taken into account that the changes made by the author in the derivative work are of
substantial work and is not of trivial nature. Thirdly the judges have applied the principal of
"Sweat of the brow" which means that the author deserves to be reward for the skill. Fourthly
the court referred to the principle of minimal degree of creativity that states that there should
be a minimal level of creativity in the derivative work in deciding the issue whether the copy
edited judgement would qualify as original work or not.

Copyright Estoppel - When work is original and author present them in factual manner, it
will not be copyrightable. Author concocted a story and presented a fact so whatever events
he described as facts will not be protected by copyright law. Example – A person makes

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Mona Lisa painting. Suppose work old enough and no one can claim copyright so no
copyright infringement as manifestation borrowed. What to be seen if work independently
created. Latter work must qualify as creative enough in it owns right. But if part free should
not be used. If I click pic of Mona Lisa, so I will not have copyright on the painting and I
cannot prevent someone else. What is to be seen is if unprotected elements are taken for eg -
colours can be common.

Minimal degree of creativity - Feist case demonstrates how uncreative author has to be.
Rural prepared telephone list but lacked creativity. But if directory of Feist say something
personal attribute as it shows distinction. Creativity can also be via accident. For e.g. painter
as conception of final stroke and stroke happens wrong and result in something different. So
now creativity different, though it is creative.

Fixation: In order for a work to be protectable, it must be fixed in a tangible medium of

expression. A work is considered fixed when it is stored on some medium in which it can be
perceived, reproduced, or otherwise communicated. For example, a song can be fixed by
writing it down on a piece of paper. (Must be produced in a tangible form)
The fixation must not be transient and should be in a permanent form.
The copyright law would be extended only over the intangible aspect not on the
material/medium (CD, Paper, USB etc.) through which the intangible idea is presented.
“Work” – Work in which copyright subsists

Under the Copyright Act, 1957 the term "work" u/s 2(y) includes an artistic work, literary
work (including computer programmes, tables, compilations and computer databases),
musical work (including music as well as graphical notations), sound recording and
cinematographic film. Literary work is defined u/s 2(o) and is not exhaustive but rather
illustrative. Literary work includes computer programmes, tables and compilations including
computer databases. S. 2(ffb) defines “computer” and S. 2(ffc) defines computer programme.
Suppose a computer program does not perform any function, so will it be a computer
program? No, hence not computer program as per definition. So will it be a work? Yes, it can
be literary work. So should be copyrightable. Yes, they can be as copyright law not looks into
performance of something.

Microsoft Corp v Deepak Rawal (2006, Del) – Microsoft claimed that it had suffered
incalculable damage to its IP rights and business as a result of deliberately misleading the
purchasers into believing that the product they were buying genuine software. The software

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developed and marketed by it was held to be a computer programs within the meaning of S.
2(o) of the same act as literary works and upheld the violation.

Artistic works u/s S. 2(c) includes work comprising of a painting, a sculpture, a drawing
(including a diagram, a map, a chart or plan), a photograph, a work of architecture or artistic
craftsmanship, dramatic work.

There is a difference between Dramatic work, artistic work and cinematic work

Sec 2(h) - “dramatic work” includes any piece for recitation, choreographic work or
entertainment in dumb show, the scenic arrangement or acting form of which is fixed in
writing or otherwise but does not include a cinematograph film.

Fortune Films v Dev Anand- The question was whether acting is an artistic work or
dramatic work. It held that copyright protection is available only to film including the
soundtrack. The cine artists who act in the film are not protected by copyright law for their
acting. Acting is not drama as not even artistic work. Artistic work is defined as conclusive.
Work defined in sec 2(c) only suffice and nothing else.

S. 2(f) - “cinematograph film” as any work of visual recording on any medium produced
through a process from which a moving image may be produced by any means and includes a
sound recording accompanying such visual recording and 'cinematograph' shall be
constructed as including any work produced by any process analogous to cinematograph
including video films. Cinefilm is important as many rights are involved therein. After the
2013 Amendment, a producer can no longer control right of people behind it. Sec 17 proviso
added in 2012 amendment which came in effect in 2013. So, now, producer of film cannot
become the owner automatically. Script owned by producer, music, lyric, sound and all
owned by producer but by virtue of 2012 act it not automatically with producer and contract
needs to exists stating that the author has assigned all his copyright to him. For this, contract
for transfer can take place in two ways:

1. License - The owner of copyright may grant a license to do any of the act in respect
of which he has an exclusive right to do. As per S. 30 of the Copyright Act 1957, the
owner of the copyright in a work may grant any interest in his copyright to any person
by license in writing, which is to be signed by him or by his duly authorised agent. It
can be exclusive, non-exclusive, co-exclusive, sole licence, implied licence.

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 2. Assignment - The effect of assignment is that the assignee becomes entitled to all the
rights related to the copyright to the assigned work. The assignee shall be treated as
the owner of the of the copyright after transfer is executed. As per section 19,
assignment of copyright is valid only if it is in writing and signed by the assignor or
his duly authorized agent.

Sound recording- S 2 (xx) means a recording of sounds from which such sounds may be
produced regardless of the medium on which such recording is made or the method by which
the sounds are reproduced. The right of sound recording is different from the subject matter
recorded as they are the subject of independent copyrights. The author of a sound recording is
the producer. Therefore, online classes via net may be recording of sound.

S 2 (p) “musical work” means a work consisting of music and includes any graphical
notation of such work but does not include any words or any action intended to be sung,
spoken or performed with the music. It is different from sound recording. Sound recording
acquires higher pedestal and if comes in cinefilm, then it belongs to cinefilm only. Intention
can never be pre-determined. It has to be determined via mens rea and actus reus.

Author – U/s 2(d) - “author” means, —

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

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

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

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

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

(vi) in relation to any literary, dramatic, musical or artistic work which is

computer-generated, the person who causes the work to be created;]

Creation is something different from originality so in computer generated works like AI or

software, it has to be seen if it is created or not.

Rights of the author

The three rights of the author under Copyright Act:

1. Economic Rights - Economic rights are those rights which help the author reap
economic benefits. As per Section 14 of the Copyright Act,1957, different rights are
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 recognized for the worksconsidering its nature. The section provides that it isthe
exclusive right of the author to do or authorize the doing of the acts provided there
under. The importantrights generally recognized by all types of worksunder the Indian
statute that attracted much judicialinterpretation includes reproduction rights, right
ofdistribution and right to communicate work to thepublic.
2. Moral Rights - Moral rights finds expression in Section 57 of the Copyright Act,
1957 which is in accordance with Article 6b of the Berne Convention. They are the
author's or creator's special right which includes the right to paternity and the right to
integrity. The right to paternity is the right of the author to claim authorship over his
work and have it attributed to him. On the other hand, the right to integrity permits the
author to restrain or claim damages in the event of any distortion, mutilation,
modification or any other untoward act done to his work. However, it is essential that
such act in question should prejudice the honor and reputation of the creator or author
and such act should be done before the expiry of the term of copyright in the work.
Amarnath Sehgal v Union of India (2005, Del) – The plaintiff was a renowned
sculptor given the task to sculpt one such mural in the Vigyaan Bhawan of New
Delhi. acquired the status of a national treasure, representing the essential part of
Indian art heritage. Unfortunately, the sculpture was arbitrarily taken down in the year
1979 and was no longer available for viewing by the public.
The court observed that moral rights of the author are the soul of his works. The
author had a right to preserve, protect and nurture his creations through his moral
rights. The court held that (1) Section 57 of the Copyright Act, 1957 protects the
author’s Right of Paternity as also the Right of Integrity and (2) any distortion,
mutilation or modification if established that it is prejudicial to the author’s reputation
or honour would be actionable.
Further, the court held that Section 57 includes the right of integrity in relation to
cultural heritage and that through the moral rights of an artist in Section 57 it was
possible to protect the cultural heritage of India. The court’s finding was based on its
observation that knowledge about authorship identified the creator, identified his
contribution to national culture and also helped to understand the course of cultural
development of a country
Now, after 42nd amendment, owner does not have more rights than author. So, if a
building is built by an architect and if has to be demolished, can architect of that
building prohibit from destruction of his own property. For this, we have to see if
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 constitutional right prevails over statutory right as property not fundamental right and
mere constitutional right and yet constitutional rights has precedence over statutory
right.
3. Neighbouring Rights – These protect the legal interests of certain persons and legal
entities that contribute to making works available to the public or that produce subject
matter which, while not qualifying as works under the copyright systems of all
countries, contains sufficient creativity or technical and organizational skill to justify
recognition of a copyright-like property right. Traditionally, the beneficiaries of this
includes performers, producers of sound recording and broadcasting organizations.

Infringement of Copyright
Copyright infringement refers to the unauthorized use of someone’s copyrighted work. Thus,
it is the use of someone’s copyrighted work without permission thereby infringing certain
rights of the copyright holder, such as the right to reproduce, distribute, display or perform
the protected work. Example - If a person uses someone’s song as background music in
his/her music video then he could be made liable for copyright infringement; If a person
downloads movies or songs from an unauthorized source then it will amount to copyright
infringement.

Section 51 of the Copyright Act provides an exhaustive list of activities that constitute
infringement of copyright. The statute does not specify a distinction between primary and
secondary infringement per se. However, it can be divided into two types. S. 51(a)(i) talks
about the primary infringement. S. 51(b) and S. 51(a)(ii) talks about secondary infringement.

1. Primary Infringement - Primary infringement refers to the real act of copying the
work of the copyright holder. It can happen in:
a. Substantial Taking - A copyright is infringed only when an unauthorized
person copies a substantial part of the work. For example, copying a catchy
phrase of a lyricist. While deciding the case, the court also tries to conceive,
how an ordinary person will perceive the work. If an ordinary person will
perceive that the work is copied from a different source then it will be
considered infringement.
b. Causal Connection - The copyright holder must prove that there is a
similarity in the works of the copyright holder and the infringer. However, this
may be because of several other reasons like both of them have used the same

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 source for the research. In such a case, the copyright holder cannot claim for
infringement.
2. Secondary Infringement - Secondary Infringement refers to the infringement of
copyright work without actually copying it. This can happen in the following ways:
a. Providing assistance to primary infringement - If a person provides the
place or permits the place (for profit) to be used for communicating of the
work the public and such work amounts to copyright infringement then such
person can be made liable for the offence of copyright imprisonment.
b. Selling, Distributing and Importing - If a person sells, distributes or imports
the copies that infringe the right of the copyright holder then it will amount to
copyright infringement. S. 51(b)(4) prevents importation.

Parallel Importation

Parallel Imports occurs when authentic products are imported cheaply, without the consent of
the producer who has a Trade mark, Copyright, Patent or other intellectual property right in
these products, with the aim to compete with the producer’s own products, which he himself
had originally marketed abroad at a lower price.

Importation is a problem because of the different pricing in different market segments. A

book might be in cheaper in US and expensive in Malaysia. Now if a person imports from the
US (as a parallel importer) and sells it amounts to parallel importation. Principle of
exhaustion says that once the sale is affected properly, it would not amount to infringement
and distribution cannot be further regulated. S.40 grants equal protection to foreign works.

Now parallel importation is very likely to create an issue, wherein the cheaper products can
pose a competition to the very person who holds the copyright. TRIPS doesn't prescribe for
any measure of exhaustion. It is a fight between two groups, one who argues for national
exhaustion and another arguing for International exhaustion. The third group might be
reasonable exhaustion.

Warner Bros v. Santosh - Defendants were renting out DVDs which were imported from
US and Canada. He rented them at a higher price. Warner bros claimed infringement under
14(b)(2) and s.40. Santosh argued on the basis that he purchased it and hence distributed it as
per first sale doctrine. Warner bros argued that Cine films are not covered under first sale
doctrine/principle of exhaustion and the second ground is that, if exhaustion is applied, the

37
licensee will go beyond borders and causing the detrimental effect. HELD Defendant’s
actions amount to infringement of copyright.

S. 52 - Exceptions to S. 51

S. 52 of the Copyrights Act, 1957 provides for certain exceptions to infringement of

copyright and the said provision allows limited use of copyrighted works without the
permission of the copyright holder. Such use of the copyrighted works is usually termed as
fair use or fair dealing of such works and this does not amount to infringement.

The exception of "fair dealing" initially originated and emanated as a doctrine of equity
which allows the use of certain copyrightable works, which would otherwise have been
prohibited and would have amounted to infringement of copyright. The main idea behind this
doctrine is to prevent the stagnation of the growth of creativity for whose progress the law
has been designed.

Fair use and fair dealing can be understood as a matter of right. So if someone is trespassing
into territory of someone else, he must have reason for it and if he has fair reason then he will
be saved. We look into:

1) Nature and Purpose of use - We have to check whether the use is for commercial purpose
or for non-commercial purpose.
2) Nature of copyrighted work - Here a distinction has to be made out between the factual
work and creative work. While reviewing the online legal resources, you are not using
the content of the copyrighted material for your own benefit but to create awareness
amongst people so as to make a proper choice while choosing a particular online legal
database.
3) Quantitative and Qualitative Test – It connects itself with the amount and substantiality
of the portion used in relation to the copyrighted work as a whole.
4) Effect of the use - deals with the effect of the use upon the potential market for or value
of the copyrighted work. Here, in this case we need to determine whether the alleged
work causes any potential threat of loss of market for the copyright holder.

Therefore, in order to claim the defence of fair use, all the four factors must be satisfied.
However, Indian law does not have any provision for factors testing it.

In Sony Corporation v. Universal Studios (1984), popularly known as the Betamax case,
the U.S. Supreme Court held that the manufacturers of home video recording devices would

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not be liable to copyright owners for secondary infringement since the technology was
capable of substantially non-infringing and legitimate purposes. The U.S. Supreme Court
even observed that such time-shifting devices would actually enhance television viewership
and therefore find favour with a majority of copyright holders as well.

Harper v Nation Enterprises (1985) – In 1977, Harper & Row negotiated a prepublication
agreement with Time Magazine for the right to excerpt of the pardon of former US President
Richard Nixon. Before Time released its article, an unauthorized source provided The Nation
Magazine with the unpublished Ford manuscript. Subsequently, The Nation, using
approximately 300 words from the manuscript, scooped Time. Harper & Row sued The
Nation, alleging violations of the copyright. The Court held that The Nation's use of verbatim
excerpts from the unpublished manuscript was not a fair use. The Court reasoned that the
unpublished nature of a work is a key, though not necessarily determinative, factor tending to
negate a defense of fair use. Accordingly, the Court concluded that the four statutory factors
relevant to determining whether the use was fair were not satisfied.

Chancellor, Masters and Scholars of the University of Oxford v. Rameshwari

Photocopy Services (DU Copyright Case, 2016, Delhi HC) – Plaintiff filed a suit against
RAMESHWARI PHOTOCOPY and UNIVERSITY OF DELHI for infringing the copyright
of the plaintiffs in their publications by photocopying, reproduction and distribution of copies
of plaintiffs' publications on a large scale and circulating the same and by sale of
unauthorised compilations of substantial extracts from the plaintiffs' publications by
compiling them into course packs/anthologies for sale. Amongst other arguments, defendant
replied with claiming that their activities fall under section 52 of the Copyright Act, 1962 and
hence do not constitute infringement.

The court held that the four-factor test used in other jurisdictions such as the US to make a
fair use determination does not apply under the Indian law. The court clarified that the
fairness of use under section 52 is to be determined only by the wordings of the provisions
and the limitations specified therein.

Further, there was an elaborate exposition on what falls under the educational exception
(section 52(1)(i)) and how the exception is to be understood within the larger context of the
goal it seeks to achieve. section 52(1)(i) permits reproduction of any work by a teacher or
pupil in the course of instruction (among other purposes). In determining the permissibility of
use of copyrighted work under this exception, the Court held that the extent or quantity of the

39
material used does not matter as long as it is reasonably necessary to use the same for the
purpose of educational instruction. And the scope of words ‘in the course of instruction’ isn’t
merely limited to classroom lectures but includes any activity that falls within the ambit of
providing educational instruction, both prior and post the actual act of lecturing.

Fair Use and Incidental storage of works

The new clause (c) of Section 52, while providing for fair use exemption for transient or
incidental storage of works, also provides for the internet service provider’s liability when
read with the additions of rights of storage and definition of infringement.

A proviso has been added to this clause to provide a safe harbour as per international norms
to internet service providers, as they are merely carriers of information provided by others.
This is generally referred to as ‘notice and take down procedure’. If the person responsible
for the storage of the copy has received a written complaint from the owner of copyright in
the work, that the transient or incidental storage is an infringement, such persons responsible
for the storage shall refrain from facilitating such access for a period of twenty-one days or
till he receives an order from the competent court refraining from facilitating access. In case
no such order is received before the expiry of such period of twenty-one days, he may
continue to provide the facility of such access.

Special Provision for access to the disabled

The new clause (zb) added to section 52(1) providing for fair use of the work for the benefit
of the disabled, facilitates adaptation, reproduction, issue of copies or communication to the
public of any work in any accessible format, for persons with disability to access works
including sharing with any person with disability for private or personal use, educational
purposes or research.

These rights are available to any person or organization working for the benefit of the persons
with disabilities. This is the result of the Marrakesh Agreement that ensures visually impaired
people to have easier access to books, unanimously adopted by member state of the UN's
World Intellectual Property Organization (WIPO). After this treaty, books would be available
in all sorts of formats such as Braille, for the print disabled/visually impaired, in order to
enable them to read, learn and participate in the society.

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