DR.

RAM MANOHAR LOHIYA NATIONAL LAW

SUBJECT: INTELLECTUAL PROPERTY RIGHTS

Project topic:
ORIGINAL AND FAIR DEALING UNDER COPYRIGHT ACT

SUBMITTED TO: SUBMITTED BY:

Contents
INTRODUCTION ........................................................................................................................................ 3
FAIR DEALING........................................................................................................................................... 4
ISSUE OF FAIR DEALING AND ORIGINALITY .................................................................................... 7
CONCLUSION- ......................................................................................................................................... 15
BIBLOGRAPHY ............................................................................................................................................. 16
 INTRODUCTION

The principle of conditional grants to proprietary rights in any intellectual property is to promote
public interest. This is universally recognized and incorporated in intellectual property system.
Protection and enforcement of intellectual property rights must: be conducive to social and
economic welfare; safeguard an individual’s fundamental rights; and Promote commerce,
competition and innovation.

In Copyright Laws exceptions and limitations are provisions which in public interest permit the
use of copyrighted works without prior authorization or a license from its owner. Generally,
exceptions and limitations to copyright are subject to a three-step test set out in the Berne
Convention for the Protection of Literary and Artistic Works. Briefly stated, the Berne
Convention provides that an exception or limitation to copyright is permissible only if: it covers
special cases, it does not conflict with the normal exploitation of the work; and, it does not
unreasonably prejudice the legitimate interests of the author.

Standard exceptions and limitations vary from country to country in their number and scope. In
India the provisions of Section 52 of the Copyright Act, 1957 provide for certain acts, which
would not constitute an infringement of copyright namely fair dealing with a literary, dramatic,
musical or artistic work not being a computer program.
 FAIR DEALING

Fair dealing is a limitation and exception to the exclusive right granted by copyright law to the
author of a creative work. It permits reproduction or use of copyrighted work in a manner,
which, but for the exception carved out would have amounted to infringement of copyright. It
has thus been kept out of the mischief of copyright law.1 The defense 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.

This doctrine is one of the most important aspects of Copyright Law, which draws a line between
a legitimate, bonafide fair use of a work from a malafide blatant copy of the work. This is the
reason why this doctrine was explicitly enshrined in Article 13 of the TRIPS (Trade Related
Aspects of Intellectual Property Rights) which runs as follows- "Members shall confine
limitations or exceptions to exclusive rights to certain special cases which do not conflict with a
normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the
right holder". As we all know, all the member countries of WTO are obliged to comply with the
Berne Convention on Copyright as well as the articles of TRIPS. Consequently, this doctrine has
been given place in almost all the Territorial Copyright legislations of the member countries.

Fair dealing laws in India –

The laws relating to fair dealing have been incorporated in Section 52 of The Copyrights Act,
1957. As the Indian Copyright Act does not defines the term "fair dealing" , the courts have on
various occasions referred to the authority English case Hubbard v Vosper2 on the subject
matter. The words of Lord Denning in this case lay down a much descriptive outline of fair
dealing-

1
SK DUTT v. LAW BOOK CO. & Ors. AIR 1954 ALL 750.

2
(1972) 1 All ER 1023 p. 1027.
"It is impossible to define what is "fair dealing". It must be a question of degree. You must first
consider the number and extent of the quotations and extracts... then you must consider the use
made of them… Next, you must consider the proportions...other considerations may come into
mind also. But, after all is said and done, it is a matter of impression."3

The Indian laws related to "fair dealing" is always considered rigid and conventional as it
provides an exhaustive list and any use falling out of the statutory list is considered as an act of
infringement. Unlike this, the US doctrine of "fair use" keeps its doors open for any new
exception, which constitutes fair and bonafide use of a copyright work. As the Indian courts have
explored and unveiled the various facets of fair dealing, they have said that there cannot be a
definite or exhaustible list of uses which can come within the purview of fair dealing but it has to
be decided depending upon the facts and circumstances of each case. Apparently, such
conclusions have been drawn more from the US and UK approaches and less from the Indian
statutory laws.

But apparently, the Indian courts have also started paying attention to the same. The best
example of this development is the case of (INDIA TV) INDEPENDENT NEWS SERVICES
Pvt. Ltd vs YASHRAJ FILMS PRIVATE LIMITED & SUPER CASSETTES LTD VS.4, where
one of the various grounds of dispute was that the defendants "India TV" broadcasted a TV show
wherein a documentary is shown on the life of singers and they perform their own songs. While
the singer sings, clips of scenes from the movies are shown in the background. The plaintiffs
claimed that such acts of the defendants amounted to infringement of their copyright.

However, the defendants claimed that such use of the plaintiff's copyrighted material constituted
fair dealing within the meanings of section 52 of The Copyrights Act. The Delhi High Court in
its judgment restrained the defendants from distributing, broadcasting or otherwise publishing or
in any other way exploiting any cinematograph film, sound recordings or part thereof that is
owned by the plaintiff. However, if we look at the present case from a slightly different

3
www.lexology.com/

4
FAO (OS) 583/2011.
perspective, there are certain questions which still remain unanswered. This judgment indicates
that the courts also have started feeling that there is still much left to look upon, to consider to
keep the legislations hand in hand with the technological and scientific developments going
across the world.
 ISSUE OF FAIR DEALING AND ORIGINALITY

In a recent judgment in Chancellor Masters of Oxford v. Narendra Publishing House, Justice

The recent judgment of the Delhi High Court in The Chancellor Masters and Scholars of the
University of Oxford v. Narendra Publishing House and Ors is another evidence of the approach
of the judiciary to evolve with the times. The facts of this case are as follows. The plaintiff,
following the course structure prescribed by the Jammu and Kashmir State Board of School
Education, published textbooks for class XI. The plaintiff and the Board entered into an
agreement and by virtue of this the copyright in the said textbooks vested with the former. The
plaintiff, in their textbooks, had given answers to the questions in the exercises, but did not
provide detailed step-by-step method to arrive at the answers. The defendants, Narendra
Publishing House and Others came up with guide books which independently contained the steps
for solving those problems. The plaintiff contended that this amounted to substantial copying of
questions by the defendant and sought an order restraining the defendants from such act.

The issues in this case are the following:

· Whether the questions given in the exercises, which the defendants have reproduced, prima
facie merits copyright protection?

· If it does, does the defence of “fair dealing” apply?

i) The issue of originality

A fundamental element of copyright law is that it does not grant the author of a literary work
protection for ideas and facts. Protection is granted to creative expression of such ideas and facts
by conferring an exclusive privilege to exploit such expression for a limited time. Law does not
protect every such expression. The law affords protection to expressions that are fixed in a
medium and are “original”. Under Section 13 of the Copyright Act only “original” literary,
artistic, dramatic and musical works can be subject matters of copyright. The concept of
“originality” has undergone a paradigm shift from the “sweat of the brow” doctrine to the
“modicum of creativity” standard put forth in Feist Publication Inc. v. Rural Telephone
Service by the United States Supreme Court.5

In India, the Supreme Court judgment in Eastern Book Company v. D.B. Modak marked the
distancing of judiciary from the common law doctrine of “sweat of the brow”. The judgment set
a higher threshold level for extending copyright protectionThis was a paradigm shift in the
jurisprudence surrounding the concept of “originality” in Indian Copyright law. The Supreme
Court endorsed the standard enunciated in the Canadian Supreme Court case (CCH Canadian
Ltd. v. Law Society of Upper Canada, 2004 (1) SCR 339) which is a mid-way between the two
doctrines. The Court noted that the two positions i.e. the “sweat of the brow” and “modicum of
creativity” were extreme positions. The Court preferred a higher threshold than the doctrine of
“sweat of the brow” but not as high as “modicum of creativity”. The stand taken by the Supreme
Court is a welcome shift as this will help in limiting copyright protection to intellectual labour
which promotes creativity.

Interestingly, the plaintiff relied on cases prior to EBC case for claiming copyright over
arrangement of questions and exercises. It must be noted that pre-EBC cases were more inclined
towards “sweat of the brow” doctrine. Accordingly, the plaintiff did not show how its effort is
“original” to conform to the minimum degree of creativity mandated by the Indian law post-
EBC case. On the other hand, the plaintiff asserted the work put in by the author, and the effort
involved in arrangement of questions. For instance, the plaintiff averred the research and hard
work involved in preparation of text books. They argued that the preparation of text book
involved application of substantial skill, judgment, labour and investment of time and money.
Interestingly, they did not try to show the uniqueness of their work i.e how “original” their work
is from others. They also did not show how it evolved a scheme/arrangement which is
independent of the dictates of the Board. Since there was no attempt to show “creativity”, High
Court held that the plaintiff’s claim of copyright is not maintainable. Further, the Court clarified
that the involvement of the Board in the creation of syllabus did not suggest that there could not
be any creativity in the schematic arrangement of chapters. In the instant case, the Court cited the
lack of material in support of such creativity in the arrangement. The Court observed that the

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plaintiff had not made any attempt to show creativity apart from placing the text books on the
record. This observation as such may appear to be a little confusing considering the fact that this
case is heard at a prima facie level and the placement of text books might be enough in such
circumstances. (Note that in a suit for temporary injunction, the plaintiff needs to show his case
only at a prima facie level.) But it should be considered in the light of the fact that the plaintiff
relied on cases prior to EBC case for contending “originality” and did not try to show
the uniqueness of their work when compared to text books of other Boards or other books
dealing with the subject. The outcome of the case might have been different if the plaintiff had
placed text books of other boards and treatises on the subject and shown the uniqueness of their
work.

The judgment of the High Court is in consonance with the standard of “originality” laid down in
the EBC case. However, this elevated standard is not conducive in all circumstances. Consider
the case of protection for “unoriginal” databases. Digital databases such as Manupatra and
Westlaw have enabled the production of facilities which enable easy access to vast collections of
information. The value of these facilities is the comprehensive nature of information that they
contain and the ease of access rather than the way that information is ordered. But these
databases are easily copied. Thus they are ideal candidates for IP Protection even though they do
not meet the “originality” standards as laid down in EBC case. The EC Database Directive shall
be viewed in this context. The Database Directive required member states to introduce a two-tier
system of protection for databases. The first tier involves retaining copyright protection for
databases that are original. The Directive also requires member states to provide a second tier of
protection by way of sui generis rights known as the database rights. Such rights arise in relation
to databases which fail to reach the “originality” threshold in the copyright law. These rights are
in addition to any copyright protection that may exist in relation to a database.

The issue of copyright for remote sensing images is another area which warrants discussion in
the light of elevated standard of originality. The data collected from remote sensing images can
be classified into three – primary data, processed data and analyzed data. The processed data and
the analyzed data come under the realm of copyright protection as they involve “originality”. But
copyright protection as such cannot be extended to primary data as it does not involve “human
skill” or “originality” i.e. involvement of intellectual effort is very less in such cases. Even then,
primary data warrants protection as it is the product of substantial investment in terms of both
money and time. Such investments will be highly unsecured if there is no legal tool for
protecting them. Hence the solution is to grant sui generis rights for such images. The necessity
for a sui generis regime is all the more relevant in the light of rapid growth in commercialization
of space activities of ISRO.

The High Court compared the instant case with section 3 (k) of the Patents Act, 1970 which
denies any form of patent protection to a mathematical method or algorithms. The Court
reasoned that the Parliament could not have intended copyright protection for mathematical
questions which is of wider duration when the same is not given patent protection which is of
lesser duration. This approach of the Court is confusing for the following reasons: The subject of
protection of copyright and patents are different. Copyright protects expressions and not ideas.
Again, it does not protect expressions which are closely interlinked with ideas as extension of
protection for such expressions will in fact protect the ideas. Patent law protects inventions
which can be considered as the materialization/manifestation of ideas provided they satisfy the
criteria for patentability. Further, copyright law does not prohibit the use of copyrighted work but
the patent law does. Once a product is patented, it can be used only under a license. Hence both
offer different levels of protection. For the above-mentioned reasons, the comparison drawn by
the Court so as to deduce the intention of the legislature is confusing.6

The doctrine of “merger” was used for deciding the issue of copyright over questions. This
doctrine posits that where the idea and expression are intrinsically connected, and that the
expression is indistinguishable from the idea, copyright protection cannot be granted. Applying
this doctrine courts have refused to protect the expression of an idea that can be expressed only
in one manner, or in a very restricted manner, because doing so would confer monopoly on the
idea itself. In the instant case, the Court reasoned that mathematical questions are expressions of
laws of nature. Since language is a limited medium, such laws of nature can be expressed only in
a few ways. Hence extension of copyright protection for questions would deny access to ideas
that they encompass. This would obviate one of the primary objectives of copyright law i.e

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https://spicyip.com/2008/11/guest-post-delhi-highh-court-on.html
promotion of creativity. For these reasons, the Court held that copyright could not be extended to
the questions.7

The language of the judgment seems to suggest that copyright cannot be granted to mathematical
questions at all. There are sets of questions which can be expressed only in a few ways and those
which can be expressed in a myriad ways. For instance, consider the following sets of questions:

a) Questions which plainly seek for solution of an equation

b) Fact situations that require the application of a particular equation for its solution.

Copyright cannot be granted to the first set of questions as it encompasses an idea which can be
expressed only in a few ways. Such questions will have to be framed depending upon the
solutions envisaged – finite or infinite or unitary solutions. But this is not the case with the
second set of questions. Second set of questions lays down a fact situation. It, of course,
encompasses an idea. But this idea can be expressed in a myriad ways by changing the fact
situation. Hence doctrine of merger does not apply to the latter set of questions which in turn
means that such questions can be copyrighted.

ii) The issue of defence of fair dealing

All modern copyright systems provide for circumstances in which copyright will not be infringed
by the unauthorized reproduction or presentation of a copyright work. Such exceptions represent
scenarios in which the legislature has decided to prioritize some other interest over the interests
of the copyright owner. There are two general approaches to the provision of copyright
exceptions that can be taken.

The first approach is to provide a small number of generally worded exceptions. The effect of
this approach is such that any use which a court deems to be ‘fair’ will be treated as non-
infringing. This is known as the defence of “fair use”. The United States, for example, leans
towards this approach.

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INTELLECTUAL PROPERTY RIGHTS Book by KHUSHDEEP DHARNI and NEERAJ PANDEY
The second approach is to provide a large number of much more specific exceptions,
encompassing carefully defined activities. This is known as the defence of “fair dealing”. This
doctrine which was evolved in United Kingdom lays down limitations and exceptions to
copyright. Although most former colonies and dominions have now had their own copyright
legislations for a considerable number of years, they followed the imperial model so developed.
Thus the copyright laws of Australia, Canada, India, New Zealand, Singapore and South
Africa delineate the limits of copyright protection by way of an exhaustive list of specifically
defined exceptions. Unlike the related United States doctrine of “fair use”, “fair dealing” cannot
apply to any act which does not fall within one of these categories. Undoubtedly, the doctrine of
“fair dealing” is not as flexible a concept as the American concept of “fair use”. In contrast, the
defenders of the Commonwealth approach insist that the current approach offers certainty,
whereas the “fair use” defence is dogged by pervasive unpredictability. But this argument is
unacceptable as “fair use” defence in United States is supported by a complex web of
understandings, agreements and policy statements. These other elements of the US copyright
milieu provide institutional users of copyright material with degree of certainty around which
they can structure their own copyright policies.

In the instant case, the High Court examined the applicability of defence of “fair dealing”.
Interestingly, the Court used the balancing test in “fair use” doctrine in United States copyright
law for resolving whether Section 52 which encapsulates “fair dealing” doctrine applies in the
instant case. It is further interesting to note that the High Court used “fair dealing” doctrine and
“fair use” doctrine synonymously. This approach of the Court should be seen in the light of the
fact that both the doctrines are conceptually similar. The only difference is with regard to the
flexibility of the latter doctrine. Hence the adoption of the latter shall help the judiciary to give a
liberal interpretation to Section 52 of the Copyright Act.

The four-factor test for “fair use” which is adopted in this case is the following: a) purpose and
character of the use b) nature of the copyrighted work c) substantiality of the portion used in
relation to the copyrighted work as a whole and d) effect on the potential market regarding the
value of the copyrighted work. It is well settled that all the above said factors are to be treated
together and no undue preference can be given to any one of them. As far as the first factor is
concerned, the Court must look into the nature of the use i.e. whether it was for educational
purposes or for review or criticism. The test is whether the work merely supersedes and
supplants the original work or it adds something new, with a further purpose or different
character. In other words, the test is how transformative the new work is. This determination is
closely knit with the other three factors, and therefore, central to the determination of “fair use”.
For example, if the work is transformative, then it might not matter that the copying is whole or
substantial. Again, if it is transformative, it may not act as a market substitute and consequently,
will not affect the market share of the prior work.

In the instant case, the Court noted the following: (a) theory portions in the textbooks had not
been copied (b) text books did not contain the steps, or methods aiding solutions to the questions/
problems (c) guide books contained “step by step” method for solving the problems given in the
text books. The Court concluded that the purpose and manner of the defendants’ guide books is
different from that of the text books. The defendants’ guide books which provided the step-by-
step process of reasoning is for the purpose of catering to the needs of weak students. Thus, the
defendants’ work was held to be “transformative” in character.

The Court then closely analyzed the work of the defendants. The Court held that the revisiting of
the questions by the defendants and assisting the students to solve them by providing “step by
step” reasoning amounted to “review” under Section 52 (1) (a) (ii) of the Copyright Act. The
Court reasoned that a review, in the context of a mathematical work, could involve re-
examination or a treatise on the subject. Thus the work of the defendants was held to fall under
the “fair dealing” provision of Section 52 of the Act.8

Copyright law is premised on the promotion of creativity through sufficient protection. On the
other hand, various exemptions and doctrines in copyright law, whether statutorily embedded or
judicially innovated, recognize the equally compelling need to promote creative activity. They
ensure that the privileges granted by copyright do not stifle dissemination of information. The
doctrine of “fair dealing” is one such exception. Coupled with a limited copyright term, it
guarantees not only a public pool of ideas and information, but also a vibrant public domain in
expression, from which an individual can draw as well as replenish. Hence “fair dealing”
provisions must be interpreted so as to strike a balance between the exclusive rights granted to

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Overlapping Intellectual Property Rights
the copyright holder and the often-competing interest of enriching the public domain. Section 52,
therefore, must receive a liberal construction in harmony with the objectives of copyright law.
Since Section 52 details only the broad heads, resort must be made to the principles in other
jurisprudences. The adoption of principles enunciated in “fair use” doctrine is a welcome step
considering the fact that it is a more flexible doctrine. But this approach, as in United States,
requires supporting elements such as policy statements and guidelines for the purpose of drawing
in certainty. Otherwise this approach may turn detrimental in future as uncertainty may stifle
creativity which is one of the paramount objectives of copyright law.
 CONCLUSION-

Undoubtedly, "fair dealing" is a necessary doctrine, not only in the Copyright laws but also in
strengthening the protection given to the citizens under Article 19 of the Constitution of India.
But the Indian law related to fair dealing is very limited and confined as compared to the US fair
dealing laws which is more elaborate and keeps a flexible approach. Perhaps, the Indian
legislators wanted more certainty in the provisions that is the reason behind the conservative
approach which reflects in Section 52 of The Indian Copyright Act. Though the courts have
adapted the US approach from time to time in its decisions, the author here likes to submit that
the overall defense of fair dealing available in our country is yet to be examined, enlarged and
defined.

The issue of “originality” was rightly judged from the perspective of elevated standard of
originality. Surprisingly, the plaintiff relied on pre-EBC case laws for proving originality. If the
plaintiff had relied on post-EBC law and shown the uniqueness of their work, then the result
might have been different. In the absence of any material or arguments, the High Court rightly
held that copyright could not be granted. Further, in view of the arguments presented earlier, the
judgment should be read as applying to one type of mathematical questions and not to all types
and sets of questions.

It must also be noted that an elevated standard of originality may not be conducive in all the
circumstances. Such a standard does not extend protection to databases and remote sensing
images. Hence there is an urgent need for a sui generis regime for protecting such forms of data.
 BIBLOGRAPHY

BOOKS: -

 LAW BOOK CO. & Ors

STATUTES: -

 The Patents act, 1970

 http://www.mondaq.com/india/x/299252/Copyright/
 www.lexology.com/
 https://spicyip.com/2008/11/guest-post-delhi-highh-court-on.html