Intellectual Property Rights

 
Introduction

How do we theoretically explain the existence of IPR?

- Situation: Imagine a successful human being in different eras – Prehistoric era - someone who
has honed skill of hunting better than others and can kill bigger animals; Agricultural age - large
swathes of land and diff animals; Industrial age - factories and control over humans; Current
times - Zuckerberg etc. - someone who generates ideas [So, must appreciate the generation of
these intangible ideas and create laws to protect them]
- IPRs: give exclusivity on those who possess ideas, it protects ideas and their expressions
o Ideas: Intangible, hard to show who possesses it
o Copyright law - Protects creative expressions of ideas
o Patents law - Protects ideas when they are converted into objects of utility
o Trademark law - Protects how you want to brand yourself
o Others: GIs, Trade secrets, etc.
- Should people have complete control over what they created?
o Austin's definition of ownership – Ownership is a right indefinite in point of user,
unrestricted in its disposition, and unlimited in point of duration over a determinate thing.
So, an owner is one who has absolute dominion over a determinate thing, which he can use
in whichever way he likes and for an unlimited duration.
o Ideas not exactly privately owned, they belong to the community
- Intuitively appealing idea that each one's idea is their own control; versus the other side that
everyone is so heavily dependent on ideas of others
 
Should IPRs exist?
- Parallels between IPR and physical property regime:
o Physical private property rights also problematic because others may want to use your
house for warmth, so can't deny IPR for the fact that others might want to use it
o Previous debates on physical property also applicable to IPR - Even if the debate on physical
property has become less robust now, no reason to deny the same intellectual debate to IP.
▪ Tragedy of commons thesis - if you don't have physical property and keep it in
common, then there will be overutilization. The optimal use will happen when there is
private property
▪ Tragedy of anti-commons - Equally potent danger is underutilisation - giving large
amounts to a single individual who may not use it effectively

- Specific to IP: [Reasons for non-propertisation]

o Implications of the impact of propertising ideas on others’ liberty
▪ Palmer’s paper on Foundations of IP - liberty and IP seem to be at odds, for while
property in tangible objects limits actions only wrt certain goods, property in ideal
objects restricts an entire range of actions, unlimited by place or time, involving
legitimately owned property, by all but those privileged enough to receive monopoly
grants from the state.
▪ Eg. Tangible property rights in an abacus prevents a person from owning that abacus
but IPRs prevent all persons from making an abacus through their own labour and
 good. Therefore, since it is going to check on my liberty in this manner, it is necessary
to investigate the foundations of IPR.
o Stimulating impact of Ideas
▪ Ideas have a stimulating impact, gets others to respond to it. This is not a problem with
physical property. This may arise in the form of criticism, suggestions, responses etc.
When the very need to respond is coming from the idea, how fair is it to deny me the
opportunity of responding to your ideas?
▪ There will be a necessity to borrow and quote ideas and paras etc. to effectively
respond to the idea. If this is denied, you are being denied the participation in cultural
discourse. This negative impact is why there should be a need to investigate the
foundations of IPR and to see what form it is to exist in.
o Intangible subject matter is non-rivalrous in nature
▪ Does not create rivalry between two persons. Eg. Only one person can have the same
phone, so rivalrous. But intangible subject matter is not rivalrous, because people can
reach the same ideas independently
▪ This suggests that intangible subject matter provides one major reason less to
construct a property regime. Does not justify non-propertisation of ideas but takes
away one major reason which generally push people to propertisation.
▪ Jefferson on propertisation: Ideas should freely spread for the moral and mutual
improvement of man and multiple people can enjoy it at the same time without
hurting anyone else. Inventions cannot then be subject to propertisation.

- Questions that arise from these scenarios:

o Why should one individual have control over intangible ideas when others have legitimate
needs to use them? Who is to have control, how much control and how long should it exist?
o How much freedom should others have to make reasonable and legitimate use? What
would constitute reasonable and legitimate use? Should software protection be provided
for the same amount of time as others, considering it becomes redundant quickly?
o Therefore, must see theoretical underpinnings.

- Globalisation of IPR
o Current regime - dictated by its linkage with International trade. IPR today is about
corporatized endeavour of selling goods in the market.
o The TRIPS Agreement covers everything and obligates minimum protection standards and
time periods etc. Countries have to be committed to TRIPS fully, it enforces compliance, this
is different from previous conventions such as the Berne Convention. India's regime would
be dictated by commitments made to the WTO through the TRIPS. So why should we waste
time understanding the theoretical underpinnings?
o David Limmer: Copyright law has entered world of Intl trade and so the regime has ended.
He meant that copyright law would end as its real orientation would change. IPR pre-TRIPS -
About author; post-TRIPS about entrepreneur. In that sense, it met its death, but there still
exist statutes about copyright law specifically

- India:
o Product patent v. process patent - India had taken a conscious decision post-independence
to say products couldn't be patented wrt medicines, only processes. Reason: wrt India’s
specific economic conditions - to reduce the system of abuse of patent monopolies and give
 access to the masses. Theoretical underpinning: Utilitarian approach, maximise goods for
the maximum number of people. [Link to Sell – India no longer has the choice to decide]
o As a result of this position - India emerged as a global powerhouse of generic medicines -
called pharmacy of the world. Changed in 2005, when India changed its patent laws to
come in compliance with the TRIPS agreement - so pharmaceutical industry couldn't be
treated in a manner different from any other country. But even so, theoretical discussions
must still be had because TRIPS is only a minimum standard, should still see whether to go
above etc. Plus, there are still gaps that need to be filled or ambiguities such as who is an
author or who is an inventor, what is innovative etc - Ilaw usually doesn’t answer this
 Module 1

Reading 1 – William Fisher

Theories of Intellectual Property - 4

1. Utilitarian approach
- States that property rights should be shaped by “greatest good of the greatest number”.
Entitlements should (a) induce people to behave in ways that increase socially valuable goods
and services; and (b) distributes those goods and services in the fashion that maximises the net
pleasures people reap from them. So, maximisation of net social welfare
- We should have IP if it leads to maximum goods for the maximum people and should be
structured in a way that achieves this goal
- IP: Inventors and authors should be assigned entitlements sufficient to induce them to develop
and make available to the public inventions and works of art that they otherwise would not
produce. The incentive must be limited but enough to get the creator to still make the product

Examples of Utilitarian doctrine shaping IPRs

- Landes and Posner's work on copyright law
o The distinctive characteristics of most IP is that they are easily replicated and the enjoyment
of the product by one person does not limit its usage by another. Those characteristics are a
danger in combination - creators of such products will be unable to recoup their "costs of
expression" as they will be undercut by copyists who bear only low costs of production and
thus can offer consumers identical products at very low prices. Awareness of this danger
deters creators from making socially valuable intellectual products in the first instance
o How to avoid this economically inefficient outcome?
▪ Allocating to the creators (for limited times) the exclusive right to make copies of their
creations – enabling them to charge consumers monopoly prices. So, creators of work
that consumers find valuable will be able to charge higher amounts to stay competitive
▪ All of the various alternative ways in which creators might be empowered to recover
their costs, Landes and Posner contend, are more wasteful of social resources. This is a
limited incentive good enough to get people to create.
- Landes and Posner's work on trademark law
o Primary economic benefits of trademarks are reduction of consumer’s search costs by
allowing them to rely on prior experiences with a brand, while also incentivising businesses
to produce consistently high quality goods and services [as competitors can no longer use
similar marks to free ride on consumer good that results from consistent quality.
o But trademarks can also be particularly harmful when you take control over certain
attractive or informative words that may have an effect on consumers. Eg. delicious. Then
how can competitors describe their chocolate.
o So, trademarks to be given when they are socially beneficial and not deleterious –
maximisation of net social welfare.
- Parody v. Satire example.
o In the US, parodies are highly protected under fair use. But satire is not well protected.
Distinction: from an economic utilitarian perspective, when it comes to satire, borrowing
someone's work for the purpose of commenting on something else, the market will ensure
that there is negotiation as to prices and everyone will benefit. In a parody, there is a
ridiculing of work, so the original author will not permit you to do so. The law then has to
step in to create a space for the user, thereby protecting liberty to parody as well.
2. Labour-Desert Theory [Natural rights approach]
- Doesn't look at the ends to be achieved through IP
- Rewards the fact that it has happened – a person who labours upon resources that are either
unowned or "held in common" has a natural property right to the fruits of his or her efforts –
and that the state has a duty to respect and enforce that natural right.
o Especially applicable to IP, where raw materials (facts and concepts) are held in common
and where (intellectual) labour contributes importantly to the value of the finished product.
- Here, it is not about incentivising. The protection is for a long time because it is your creation.
But in utilitarianism - they are concerned with limiting the amount of time protection that is
afforded because they want to maximise the good for the maximum number of people
o Utilitarians give more scope of fair use also, but non-Utilitarians would not.

Example: Robert Nozick

- Locke - theory of property: Can have private acquisition if you laboured upon it
o Two limitations on how much you can acquire:
▪ Must leave enough for the others

▪ Must acquire only as much as I can consume before it spoils [No wastage]
- Nozick: Correct interpretation of the limitation on acquisition is that private acquisition is
legitimate if the other person does not suffer any net harm. IP meets this requirement as it does
not deprive anyone else from acquiring property through labour for themselves.
- The invention would not have even existed without the inventor, and the inventor would not
have created this invention without the lure of a patent. So, consumers are helped rather than
harmed though IP.
- But Nozick contends fidelity to Locke's theory entails two limitations on inventor's entitlement:
o People who subsequently invented the same device independently (i.e. without the
knowledge of the first inventor’s discovery) must be permitted to make and sell it.
Otherwise, the assignment of the patent would leave the second-comer worse-off.
o For the same reason - Patents should not last longer on average than it would have taken
someone else to invent the same device had the knowledge of the invention not disabled
them from inventing it independently
- So, patent law must be overhauled to allow for independent creation, so that patent law would
follow this interpretation of Locke's theory.
  
3. Personality based jurisprudence
- Derived from the writings of Kant and Hegel
- States that private property rights are crucial to the satisfaction of some fundamental human
needs or interests. Thus, must select the set of entitlements that most conduces to human
flourishing. So, IP may be justified either on the ground that they shield from appropriation or
modification artifacts through which authors and artists have expressed their will, or on the
ground that they create social and economic conditions conductive to creative intellectual
activity, which is important to human flourishing.
- It is based on issues of personality associated with the ability or lack of ability of an individual to
control things around them. Exercise of will on subject matter around you is an essential part of
how your personality is maintained. So should have control over your ideas in a tangible form
- Control over IP is linked with continuance with your personality traits
- Amount of labour put in should not be seen if the work is sufficiently personalised

Example: Hughes
- Derives from Hegel. Hegel states that man is an abstract entity with free will. Once that free will
is exercised, that provides a definition to your identity. That extends to the external
manifestations of your ideas
- Based on this, Hughes says that:
o Should be willing to accord more legal protection to the fruits of highly expressive
intellectual activities, such as books and poems etc., more than lower expressive activities
such as genetic research. [Whether copyright protection of computer software is a question
in France but not in India etc.]
o Because a person’s persona (his public image, including his physical features, mannerisms
etc.) is an important receptacle for personality, even though it ordinarily does not result
from labour. The kinds of rights offered would also be different - protecting the aspect of
your personality and not geared towards personalisation
o Authors and inventors should be permitted to alienate copies of their works, thereby
enabling them to earn respect, honour, admiration, and money from the public. But they
should not be permitted to surrender certain entitlements to their creations (most
importantly, the right to prevent others from mutilating or misattributing their works.)
▪ Authors and inventors should be allowed to earn from their work but should not be
permitted to alienate certain rights, i.e. Moral rights
▪ Economic rights [right to publish etc.] are alienable - but moral rights [right to claim
authorship and integrity of work] are inalienable
▪ You don't have only economic interest in the work, but also emotional, sentimental
etc. So moral rights should be protected.
- Eg. Adaptations - variations of the works (2D cartoon is converted into 3D stuffed toy etc.) - In
US, right to create derivate works is a strong right given. How to look at adaptations in this
approach? Criticism of the US: Adaptations and changing the nature of a work can change the
personalisation aspect as well, so it is still problematic
 
4. Social Planning Theory
- States that property rights and IP should be shaped to help foster the achievement of a just and
attractive culture.
- Similar to utilitarianism in the theological sense - wants to achieve certain ends of social welfare.
Dissimilar to utilitarianism - Different end, more than social welfare. It is willing to deploy
substantive visions of the good, not reducible to the greatest good of the greatest number.

Example: Neil Netanel

- In an ideal society, all persons would enjoy some degree of financial independence and have
considerable responsibility in shaping their local social and economic environments. A robust,
participatory, and plural civil society of this sort is vital to the perpetuation of democratic
political institutions. To achieve this, must be nourished by the government.
- Copyright can help foster this in two ways:
o Production function - incentivises creative discourse, thus bolstering discursive foundations
for democratic culture and civic association.
o Structural - supports structural and creative functioning - less dependent on state
patronage for support
- This suggests that copyright term should be shortened, thereby increasing the size of public
domain available for creative manipulation. Authority to control the preparation of derivative
works should also be reduced for the same reason.

Source of theorisation
- Theories are borrowed from how raw materials of IP talk about IP - statutes, case decisions etc.
- Eg. Utilitarian approach - References to the role of IPRs in stimulating the production of socially
valuable works that will benefit the society at large across America (constitution Art. 8 etc.). US
Supreme Court says that the primary objective of IPRs is to induce the production and
dissemination of works of the intellect.
- Eg. Labour-Based approach - US Supreme Court also uses vocabulary that indicates the
importance of rewarding authors and inventors for their labour.
- Eg. Personality theory - France and Germany – strong protection of moral rights (authors’ and
artists’ rights to control the public disclosure of their works, to withdraw their works from public
circulation, to receive appropriate credit for their creations, and to protect their works against
mutilation or destruction). This has been justified on the ground that a work of art embodies and
helps to realise its creator’s personality or will.
- Eg. Social planning theory – seen in strong protections afforded to criticisms, education,
commentary etc.
- Caution: In many of these pieces of raw material, theorisation is not perfectly
compartmentalised. In one para, there can be both utilitarian and other logic for why a
particular claim is protected in a particular manner.
o Example - Harper and Roe (in the paper)
▪ Fair return of labour - deserts based

▪ Contribution to the advancement of knowledge - utilitarian

 
Limitations of the theories

- Theoreticians have often believed that there is a comprehensive answer to the question of IP
available in the theory they have taken up. Fisher says that each theory has serious limitations in
the way they are able to determine answers to specific critical questions.

1. Utilitarian approach
- First challenge: to give us a more workable model of what is greatest good of greatest number,
which they have not been able to do.
- If Kaldor-Hicks model of wealth maximisation, it might be applied to IP in 3 different ways:
a. Incentive theory:
▪ The optimal doctrine is one that prefers establishing or increasing intellectual-property
protection when doing so would help consumers by stimulating creativity more than it
would hurt them by constricting their access to intellectual products or raising taxes
▪ IP acts as an incentive for inventors to create- Ideally patent strength or duration is to
be increased to where marginal benefit equals marginal cost.
▪ Problems:

● There is a lack of information necessary to apply this. To what extent is production

of intellectual products dependent on the maintenance of copyright or patent
protection? [Piracy paradox - more chance of piracy means less innovation, so
then must provide protection]
● In practice, monopoly theory incentives can be contrasted with the practice of
using patent protection as a sword or shield in litigation. Plus, not all industries
depend on this kind of incentive. Leave time, subsidies etc. also work.
b. Optimising patterns of productivity:
▪ IP acts as a signalling tool that encourages inventors to go out and find what society
wants the most and create that. So, it helps channelling productive effort and
investing in those areas where solutions are required by society
▪ Adoption of this strategy wouldn’t impede public dissemination of intellectual products

● Sales and licenses would ensure that goods get into the hands of people that can
pay for them. Only in the rare instances that transaction costs would prevent
voluntary exchanges should IP owners be denied absolute ownership over how
their work is used. [Either through fair-use doctrine (as seen in the parody v. satire
example), compulsory licensing etc.]
● So, Utilitarians depend on the rational individual who would not sit on their
invention but would disseminate it freely even in a monopoly situation. Only when
there is a market failure, or the market is not encouraging them to create should
the market interfere with rights
▪ Problems:

● For there to be a proper signal, there have to be fairly generous entitlements.

Argument is that stronger fair use would compromise on the signalling effect. Eg.
OUP v. Delhi University, interpreted terms of provision of materials to students in
great length. This is an expansive reading of the privilege - lowers signalling effect.
The arguments authors had made was how can you disregard our IP entirely, can
license it to universities etc. So, the argument can be made that there must be
stronger entitlements for signalling to work [thus reducing fair use standards].
● In no other creative field are innovators entitled to the entire value of their social
creations - Eg. School teacher who creates a new methodology of retaining
attention in class, civil rights activist who comes up with a new way to reduce
social tension, a physicist who finds a way to integrate understanding of gravity
and quantum mechanisms. These have a much greater social value than the
income of the creators. So, enhancing the entitlement for IP holders would lead to
overinvestment in IP rather than education, etc.

c. Reducing Rent-Dissipation / Rivalrous invention :

▪ Its objective is to eliminate or reduce the tendency of IPRs / patent rights to foster
duplicative or uncoordinated inventive activity.
▪ It is related to previous point that the signalling can become so strong that it can lead
to wastage of resources. There are three ways in which this can happen:
● It can invite disproportionately large number of people into investing into a
commercially valuable invention and result in fewer people investing in other
areas where solutions may be required [Eg. Pharma company may invest into an
obesity medicine and take away investment into inventions for rare diseases].
● Race to develop a lucrative improvement on an existing technology may generate
a similar scramble for similar reasons at the "secondary" level
● Firms may try to "invent around" technologies patented by their rivals -- i.e., to
develop functionally equivalent but non-infringing technologies [investing into
 trying to solve the same problems in different ways that would not impinge upon
the original patent] -- efforts that, although rational from the standpoint of the
individual firm, represent a waste of society's resources.
▪ Suggestions to prevent rent dissipation and problems

● Advocating granting to the developer of a pioneering invention an expansive set of

entitlements, partly to coordinate R&D dedicated to improving the invention,
reducing rent dissipation at the secondary level. But, implementing this suggestion
would exacerbate rent dissipation at the primary level as even more people would
try to be the first to develop the patent. [Problem (Merges): Reducing social waste
at one stage of the inventive process commonly increases it at another.]
● Grady and Alexander – protection per situation
o Primary inventions that have modest social value, but which are still calling
for further improvements are likely to draw too many improvers. To prevent
this, these inventions should be given strong IP protection so that they can all
coordinate and work together and others who are not coordinating with the
inventor are not unnecessarily involved in trying to improve it - So no
unnecessary wastage of resources.
o Primary inventions with large social value but minimal signalling should be
given narrow patents to only reduce the risk of duplicative activity at the
primary level
o Those which require no improvement should have no IP protection granted
to them because there will be no wastage of resources anyway (no one will
want to try to improve on the unimprovable.)
● But problem with this:
▪ Merges and Nelson – Granting of broad patent rights would, instead of
enabling the original inventor to coordinate efficiently, it may lead to
satisficing behaviour and an inefficiently narrow focus on improvements
related to the primary inventor’s principal line of business. Also, difficult to
prove that coordinated research is better than rivalrous. Diminishes the cost
of inaction. People who hold monopoly more tending to lethargy - so giving
monopoly to people who have to create improvements may just result in no
incentive to create those improvements
o Difficult to determine in advance which signal possibilities of improvements
o What to do where improvements are both socially valuable (thus creating a
danger of waste at the primary level) and signals the need for a lot of
improvements (thus creating a danger of waste at the secondary level)

o Even if no problems with all 3, there is no way to integrate the 3 lines of inquiry.
o Due to this uncertainty, many Utilitarians have given up finding IP through utilitarianism.
o Merges, who was hard core utilitarian, gave up and started justifying it through natural
rights theory - he says the current analytical and statistical tools do not give us enough
to justify the theory - can't analyse whether patents do incentivise creation etc.
o Economist - if there was no patent regime, I don't have enough data to say we should
have one. But now that it's there, I don't have enough data to say we must give it up
- Recap: Greatest hurdle: availability of relevant data - theoretically may be easy to apply or may
be logical, but there is no data to verify how much increase in incentive would result in how
much increase in creation. So, science-based theory leads to a faith-based theory. Can't also say
that the only way to incentivise is through IP.
 
2. Labour-Desert Theory [Natural rights approach]
- Problems start from the reasons why Locke wants privatisation [natural reason that says men
have a right to their preservation; appropriating fruits of labour; self-ownership; moral value of
work; sense of proportionality and fairness; productive transformation of property]. We do not
know which rationale is dominant, and whether that dominant one can justify IPRs.
o If moral value and proportionality important – justifies wide rights for any IP
o If fruits of labour and survival – case for IP weaker. Locke believed that it was necessary for
survival. So, whosoever creates things for survival deserves privatisation. But intellectual
products are not like this – Access to them is typically not necessary for survival and they
can be used by an infinite number of persons simultaneous without being used up. Eg. life
doesn't depend on exclusively enjoying my poem
o A person who improves upon something gains a moral right over that thing - This justifies IP
- Even if it justifiable to have privatisation, question of what counts as intellectual labour:
o Which labour justifies my exclusive control – time and effort (eg. hours spent in front of the
computer), or activity no one would rather do, or is it an activity that results in social
benefits (socially valuable creations), or creative activity (production of new ideas) -
Whichever we choose has different implications on IP protection: Eg. Anything made out of
love for the art/job will not be given protection in the second type. The last one emphasizes
on newness and not effort expended. Inability to choose would be disabling
- Other important aspect of Lockean theory - belief in commons
o Creates problems when you look at commons of intangible things like ideas. No clarity on
what the raw materials owned by the community would be - would data and facts be
commons, would language and slogans from which we fashion creative products be
commons, is it the set of ideas currently known to someone, set of reachable ideas etc.?
Would it be common cultural heritage (the set of artifacts (novels, paintings etc.) that we
share, and which give culture meaning and coherence?
▪ If cultural heritage, this is at odds with current copyright regime which gives strong
protection to mickey mouse, shape of a coke bottle etc.
- Even if one of these ideas could be selected, deeper problems:
o When Locke spoke about using labour to convert state of commons into something useful
that can be monopolised, implications Locke thought about not necessarily applicable to IP.
Eg. Growing something on a piece of land - right on the crop and the piece of land
improved. But in IP, if you worked on an idea, only the invention is protected but the idea
still remains to be exploited by others. Idea per se is not protectable, except as trade secret
o Property rights have exclusivity, not IPRs. Eg. Patent on mousetrap prevents others from
making that mousetrap but not from reading the patent and using the information therein
to create a better mousetrap.
o Property rights are also forever - the land is your land forever, but IP doesn't last forever.
- Problem with proviso of sufficiency [leave enough for the others]
o Expansion of set of available ideas improves everyone’s lot.
o In the cases where you just add something, and you haven't taken anything or left anyone
else - though there is a monopoly for some time, there is no real taking away of rights
▪ Rebuttal to this - if you monopolise a word, like Olympics, which has acquired a certain
set of meanings and emotions - denies you something and puts you at a disadvantage.
Public is worse off than if the word never existed.
- Problem of proportionality – If I pour juice into the ocean, do I own it? No guidance from Locke
- So, IP does not neatly comply with this theory.  
- Recap: Of Locke's rationales, he doesn't say which one is more important. Many don't apply to
IP, such as human survival. Ambiguity of questions of what labour and commons etc. are.
 
3. Personality-based jurisprudence
- Do not know which specific human needs or interests to promote:
o Similar to Lockean theory, there is a foundational theory as to which reason justifies IP.
Author has identified 10 reasons - he says that 6 out of 10 provide weak justifications for IP.
Only ones applicable to IP are: Privacy; self-realisation as an individual [ownership
necessary to enable a person to assert their will and to be recognised as a free agent by
others]; identity; benevolence [property rights essential to enable a person to express ideas
of what is beautiful or to enact benevolent wishes].
▪ Peace of mind says that exclusive right to determine might render one full of guilt - of
how one uses commons. Private property removes guilt. But IP is non-rivalrous, so guilt
of using resources is not there. So, may be applicable to property but not IP
▪ Privacy - my thoughts produced it, so it’s my right to determine how to share them
- Even if you take the 4 reasons - Theorists have come to diametrically opposite views on the
same questions using these reasons.
o When an author has expressed themselves, does it continue to fall within the zone of their
"personhood"?
▪ Netanel says yes, on the ideal of autonomy

▪ Weinreb says no, saying that once expressed, it is not to be protected, it can be freely
used as it takes on a life of its own
o May the author alienate the copying of his work? Are moral rights alienable?
▪ Hegel believes yes, saying that the expressions of mental aptitudes (as opposed to the
aptitude itself) were external to the author and therefore freely alienable
▪ Kant believes no, saying that the author's interest in deciding how and when to speak
is an inalienable part of his personality.
o Are celebrities’ persona a sufficiently important repository of selfhood such that others
cannot exploit that persona?
▪ Hughes-yes, as long as an individual identifies with that image, he will have a stake in it

▪ Madow - no, creative role of the media and the audience in the meaning-making
process of the “identity” of the celebrity is at least as important as the personality of
the celebrity
o Disagreements are because the conception of the self is too abstract
- No personality theorist has amply dealt with what Margaret Radin calls problem of fetishism
o Which of the many tastes exhibited by current members of American culture should be
indulged, and which should not - The quest for individuality? Nationalism? Nostalgia for a
real or imagined ethnic or racial identity? The hope that audiences will treat one's creations
with respect? The hunger for fifteen minutes (or more) of fame?
o Yearnings or orientations of all of these sorts are implicated by intellectual property
disputes. Deciding which merit our deference is essential to determining how those
disputes should be resolved. - Meaning: Basically, what people do is to be in the public eye
and is not actually their personality, driven by lust or greed etc.
o Answering these would require a more in-depth analysis of what is persona
 
4. Social Planning Approach
- Problem with indeterminacy #1 - How to formulate a vision of just and attractive culture? What
kind of society do you want to create [The very definition of good society is ambiguous]? What
are the foundations for social planning theory?
o Consumer welfare – happiness of members. In IP – maximise consumer welfare by
optimally balancing incentives for creativity with those for dissemination.
o Cornucopia of information and ideas – attractive culture in which citizens had access to a
wide array of information, ideas, and forms of entertainment. So, less IP protection.
o Semiotic democracy – Where all persons would be able to participate in the process of
meaning making.
o But no set definitions as to what constitutes consumer welfare, distributive justice etc.
- Problem with Indeterminacy #2 - Even if we have an idea of what kind of society, there are
problems with the application of such a vision to specific problems
o Example - would parody be allowed in such a social setup: Good - it promotes semiotic
democracy by eroding the control over meanings of cultural artifacts exerted by powerful
institutions and expanding opportunities for creative meaning making by others; Bad -
negative impact on the personhood of the creators

Conclusion
- All theories are equally open-ended
- The indeterminacy of the social-planning and personhood perspectives has long been
recognized. That recognition is reflected, for example, in the customary accusation that those
perspectives are "illiberal"; they seek to regulate persons' behaviour on the basis of necessarily
controversial "theories of the good”, which the government should not do.
- Social planning and personality perspectives are paternalistic insofar as they curtain a person’s
freedom on the basis of conceptions of what is good for them, with which they may not agree
- Utilitarian and labour-desert approaches have neutrality, objectivity, and determinacy. But in
terms of their capacity to generate determinate answers to specific doctrinal problems, they
stand on the same footing as the other two theories.
 
Why they should not be thrown out
- The theories can frequently help identify nonobvious attractive solutions for particular problems
o Example of this focused deployment of theory - IP theories used to analyse the Right of
publicity [entitlement of celebs to prevent depiction of their identities for profit]. Right to
publicity was a right given previously. But then some theorists started arguing that none of
the 4 major theories were argued to provide support for such an entitlement. Taking note
of the below points, the courts have read down this right
▪ Utilitarian approach - Not necessary to induce people to cultivate distinctive identities.
Celebs are not incentivised by protection of their persona. They become celebs before
that. It encourages people, once they have become celebs, to coast on endorsement
incomes instead of continuing to provide the services that made them famous. It also
leads to rent dissipation by inducing excessive number of adolescents to seek fame.
▪ Labour-deserts standpoint: Fame often results from luck [Eg. Compare two sports
persons from different fields - captain of cricket and kabaddi team - you know one but
not the other], fickle public tastes or efforts of third parties more than the celeb
▪ Personhood: If protecting personhood was the goal, the right is a poor way to do it.
The right serves commercial interests(not close to personality development) and does
nothing to prevent the disclosure of intimate details concerning a celeb's life.
 ▪ Social Planning – The right exacerbates the centralisation of semiotic power in the US
and undermines popular control over popular culture. So, it’s not in compliance with
our visualisation of a good society
o Example – dividing potential consumers into subgroups based on their ability and
willingness to pay [Eg. Producers showing movies in commercial theatres, then on tv, then
renting etc.]. Current copyright law makes it difficult to pursue this strategy. So, original
creators may have to sell products for a low price and are now allowed to prohibit the
reselling to high-margin customers. Intuitive solution to this is to ban price discrimination.
But IP theory (economic analysis and social planning theory) suggest that price
discrimination is good as it increases incentives for creative activity and reduces associated
welfare losses, as producers increase their own monopoly profits while also allowing poorer
persons with access to the creation while also paying lesser than wealthier consumers.
o So, IP has given non-obvious solutions to particular problems.

- IP fosters valuable conversations among various participants in the law-making process, esp in:
o The interaction between Congress, courts, and administrative agencies – Courts use IP
theory which Congress may then explicitly uphold or reject in later legislations etc.
o Explicit reliance on IP theories will improve conversations between lawmakers and their
constituents. By articulating and defending theoretical rationale for each innovation,
Congress/Courts etc. would increase ability of the public to critically appraise the change.
Lawmakers would then become more accountable
o Through continued conversations among scholars, judges, public at large, etc. there may lie
hope of addressing inadequacies in the existing theories. Only through conversation would
we be able to better understand how to protect IP and solve the gaps in these theories.
 Reading 2 – Susan Sell
Intellectual Property and Public Policy in Historical Perspective

- TRIPS: relatively higher degree of IP protection, mandated compliance for signatories, minimum
standard treaty [so countries can go above the TRIPS protection. So, developing countries facing
pressures may sign TRIPS+ Agreements.] So how have we arrived at this state of affairs?
- History of IP:
o It reveals shifting conceptions of ownership, authorship, and invention. These determine
what property is and who owns it.
o It reflects changes in organisation of innovation and production and distribution of tech
o It reflects institutional change with these shifting ideational and material forces
- History of IP is not linear appreciation of the role inventor/author plays
o Crux: Tracing of intl. history would take our attention to alignment and realignment of
intellectual property rights. It is contested and has been contested at every stage where
something has been asked for. Every new thing, like the internet, has challenged the
settlements and protections afforded, resulting in alignment or realignment of IP - many of
these detrimental to pro-property interests.
o The inherent tensions in the idea of IP recurrently resurface under philosophical,
technological, or institutional pressure.

Sections of the paper

1. Ideas about property – inherent tensions between romantic and utilitarian justification. Users
prevailed over patentees.
2. Key Moments of Contestation and Settlement: Diversity of IPL in the 19 th century – how different
countries used IP policies to encourage economic development.
3. Resolution of the patent controversy of 1870-1875 in favour of IP
4. Multilateral institutionalisation of this resolution in the Paris and Berne Conventions
5. Edison and his use of patents as a business strategy
6. Ascendance of the German chemical industry through the employment of a new business model
7. Evolution of American Position – from scepticism to vigorous advocacy for dramatically
expanded global property rights
8. Recent multilateral IP settlement in the WTO.
 
1. Ideas about Property
- Highlights the inherent tensions between the romantic notions of authorship and invention on
one hand, and utilitarian conceptions of incentives for creation and diffusion on the other
o Romantic notions – endorse the doctrine of natural rights in one’s own creation as private,
subjective, expressive, and perpetual
o Utilitarian theory – promotes dissemination to the public, the objective nature of
knowledge, competition, and limits on rights.
- Theories from Fisher paper can also be divided into 2 camps, for either the author or public
- Carla Hesse – Increasing literacy and emergence of large middle class readership throughout
Europe put unprecedented strains on a system of publication that had been based on the notion
that there was a fixed amount of divine or ancient knowledge to be known, transmitted, and
interpreted. So, wanted free dissemination to the public, as they had a right to this information.
- Daniel Defoe - romantic notion of authorship – A book is the author’s property, a child of his
inventions. Later, British, French, and German commentators on the literary enterprise further
developed the notion of an author's works as "unique, perpetual, and inviolable property.
o Influenced by Locke's "labour-desert" theory of property, Young offered a secularized
theory of knowledge, Young wrote that "the individual personality supplanted God as the
divine font of knowledge." So, individual personality and labour to be given precedence
- Previously, thought that authors deserved protection for their unique, perpetual, and inviolable
property. Later, Fichte concluded that ideas did not give goods the imprimatur of property, but
that the distinguishing quality was the unique form in which the author chose to express these
ideas. This is the beginning of the idea-expression dichotomy that anchors copyright law.
o One camp: Ideas were also to be protected. [Author/Creator-centric]
o Other camp: Ideas were in the state of commons and expressions were the labour [more
Public centric] - so Locke's same dichotomy appears in IP as well
- Condorcet – rejected the notion of literary property as a right. Argued that it was a privilege as
ideas are not produced by individuals alone but result from a collective process of experience.
Such privileges diminished activity by concentrating it in few hands, unjust. Knowledge thought
of as objective and fundamentally social in character, belonging to all – rooted in social utility.
o This social utilitarianism competed with the subjective notions of universal natural rights in
one’s creations. Tensions between utilitarian notions designed to reward creation and
diffusion, and the romantic notions that privilege the right to manage one’s own property
o Utilitarian – monopolies etc. were dangerous devices that should be given only when
absolutely necessary to advance some clear public interest. Romantic – extended IPRs
necessary to give existing copyright holders an incentive to preserve the works they had
already created, by provision of perpetual rights.
- History of IP has not always been pro-property centric. Since the 14 th century, IP policy focused
on tech transfer and diffusion.
- Theoretical discourse did not by itself settle intellectual discourse - Theories are one factor
among many to see how IP would be decided. Consequences of ideas of property, technological
advancements and interest groups created alignment and realignment with IP.
o Diversity of IP policies between countries is party a function of their different stages of
development. A technological leader would prefer strong protection of its innovations,
whereas a follower will favour access over protection.
- IP also has been appreciated as a policy tool, in addition to moral arguments - To reinforce
positions of economic advantage. Tension has not always been resolved in favour of IP holders.
o IP Regulation is fundamentally political in nature – seen in the US’s swings between public-
regarding and private protection.
- IP has served as an instrument of power, and once captured, the basis for further accumulation
of power. IP holders have constructed the scarcity of property through legal instruments to
retain power. The very process of defining what constitutes IP effectively reinforces particular
perspectives that may benefit some at the expense of others, rendering some creations property
and the others freely available. This asymmetrical economic power explains why indigenous
knowledge holders would not be in alignment of looking at IP in modern terms. [Link with: third
world being powerless to decide on their own IP]
 
Sell's approach v. other approaches
- Author has highlighted IP as an alternative to both realist [not legal, but intl. political] and
functional school analyses.
- Realism – emphasizes state power and its distribution across the intl. system. Due to its statist
orientation (treating state as a unitary actor with well-defined interests), it provides limited
leverage in the IP context as private actors, rather than states, have frequently prompted
changes in IP protection. So, even within this state, it has not been unitary and has been subject
to multiple alignments and realignments. Realism would miss this point.
- Functionalist theories – suggest that property rights are established to promote efficiency in
socio-economic relations; say that property rights emerged to respond to the need for clear
signalling in market relations, to prevent costs of conflicts between individuals.
 o Assumes that contests over IP produced rational settlements reflecting current political-
economic contexts or fulfilled the needs of a particular stage of industrial development.
Fisher – From this angle, law is superstructure, affected by changes in production.
o Problem: This theory does not state what constitutes efficiency and ignores the question of
who defines it – efficiency for what and for whom? [Link: third world]
▪ The particular problem of efficiency guiding policy depends upon the distribution of
political and economic power between owners and users.
▪ The theoretical argument on efficiency comes from two sides - those who justify
private property; and those who prioritise dissemination of work. Who brings efficiency
– the pirate who distributes a work or the author who requires incentives to create and
preserve works? [Winner keeps changing over time, not based on who has better
arguments]. Functional interpretation assumes that whatever happened had to be the
most efficient decision - but there were 2 contested definitions.
▪ Eg. Delhi v. oxford case - other aspect of settlement was also that the authors
published came out in favour of student interest which forced the publishing house to
not pursue appeals. So, not based purely on which side had better arguments, as both
sides argued on efficiency, it was based on whether the proponents championed one
conception of efficiency over the other.
o So, property institutions emerged from diverse circumstances, including the exercise of
economic power, the impact of technological change, and shifts in ideas about ownership
 
2. Key Moments of Contestation and Settlement
- Discusses evolution of IP regime and how at different times, settlements happened between
private reward and public good
- Eg. Arkwright – drafted patent specifications vaguely so that inventions would be impossible to
duplicate. In the first infringement case, court found his patent invalid as there was no disclosure
of the invention. In the second infringement case, the court upheld the patent. But this made his
position worse as the spinners feared paying him licensing fees to use his equipment. They
appealed on the grounds of public and national interest and stated that his monopoly would
destroy the flourishing British textile industry in which England was leading the world. So, the
appeal was interpreting IPR in the context of social and economic factors - if this was taken
away, Britain may lose its spot and hunger and stuff would happen. Court found that
dissemination and continued economic hegemony outweighed right to monopoly.
o This example shows that property holders did not automatically win, and that courts tried
to balance diverse public goals. These rights were recognised as privileges that could be
taken away when they conflict with other important social goals.
o Right to labour and continued British hegemony considered over right to monopoly. This
illustrates that a shift in public policy can affect the distribution of property rights.
▪ From the beginning of IP discourse, patents seen as an instrumentalist tool. Copyright
law invited a more divided debated. Patent right was seen as a utilitarian tool, so it was
easy for courts to interpret the rights of the owner in a narrower sense based on social
and political goals.
o Arkwright’s loss also paradoxically mobilised a quest for stronger patent rights.
Manufacturers were most concerned with protecting their escalating investments in factory
production. MacLeod – their interests shaped the patent systems, their agendas was the
security of their IP and the development of institutions that would decrease the risk and
uncertainty of managing it.
 o Crux: Ideas have played significant role to give a form to IP, but there are many additional
factors.
▪ 18th century patent law settlement, Arkwright - competing ideas of right to labour etc.
exerted greater influence on decision makers

IP landscape in the 19th century: Diversity in Law

- Most states had adopted IP policies to encourage the migration of useful inventions to their
territory and to facilitate the public’s access to an extensive range of published materials. These
policies included introductory patents, compulsory licensing, working requirements, differential
treatment for citizens v. foreigners etc.
- Even the property centric rhetoric has been there from the beginning, but the implications of
monopoly has also been seen. Role of patents in shaping economy: states have tried to exploit it
through the above policies. [link]
- Countries have taken different approaches to patent laws. US was inventor-centric and denied
protection to foreign tech, but Britain was not. Britain designed their early patent system to
introduce foreign tech to their kingdom. Therefore, they granted monopoly privileges not to the
inventors but to those who brought inventions into public knowledge. Inventors tended to seek
high levels of IP protection while imitators sought to maximise access to IP at minimal or no cost.
- Britain – first industrial revolution.
o Patents did not play a major role in the mechanisation and emergence of the textile
industry. This shows how factors other than innovator is to have right over inventions have
played out.
o But the organisation sometimes impeded the emergence of patents. Cost of acquiring and
defending infringements became prohibitively high in these situations. So, they did not
focus on that, there was less obsession with the idea that patents are necessary for
innovation or an incentive to inventors etc. Situation did not necessitate it.
o But once centralised after industrial revolution, it was easier to identify and sue infringer
and get money from them, and striking cost transactions came down. So, the value of the
patent increased, and may provide backing to the argument about innovations and
incentivisation.
o It is important to see how society could facilitate development etc. through patents and use
it to boost their economies. [link]
▪ France, Spain, Netherlands – follower countries whose governments attempted to
develop processes of innovation, modernisation, and economic growth over and above
IPRs. In the Netherlands, the absence of patent legislation gave small companies and
those just starting up protection from the disruption and expense of litigation and thus
improved their chances of survival. Without having to pay royalties, they could also
produce goods equal in quality to foreign goods at much lower costs. Switzerland also
had virtually no patent law between 1850-1907
● During this time, they freely imitated, copied, or modified others’ inventions.

▪ US – system sought explicitly to induce domestic invention. Discrimination against

foreigners was a common policy because it served public interest by encouraging tech
transfer. So, foreign tech could be introduced to America without inventor/introducer
monopoly, so they had access to world’s tech at lower costs. The asymmetry between
American and British laws (introducer monopoly) favoured inventors in the developing
follower economy of the US rather than the more industrialised economy of Britain.
o In the examples given, many of the developing countries intended to exploit patents in a
manner directly correlated with their stage of development and the needs of the people.
 However, nowadays, countries do not have this freedom, they are just asked to give high
patent protection irrespective of their stage of development or needs. If a country is not
following these standards, there is global reprimand. But from these examples, it is seen
that most of the developed world, across their history, had exploited the flexibility
associated with the idea of IP to decide how they wanted to use it to fuel their
socioeconomic development. Countries could choose whether this level of protection made
the most sense for them and their citizens. Countries exercised their freedoms and did what
they believed would be the best suited option for them - this is the freedom now being
denied. Important: This flexibility has been fully exploited by developed countries, but that
is now denied to those who are trying to catch up
o Eg. US keeps criticising India on its enforcement of IPs. [US has a particular methodology of
investing in IP. 303 Review under which they review different jurisdictions and how they
protect US interests]. India keeps being categorised as the middle-most problematic in their
table. But that doesn't mean India is falling short of what TRIPS expects but may still fall
short of the standards of the developed world.
- Wrt copyright:
o US kept trying to not get on the bandwagon of strong copyright protection. They were net
importers of copyright from Britain and continental Europe for the longest time. [US was
not throwing up big names in literary works]. So, they did not believe they required strong
copyright protection - Did not join Berne Convention which was backbone of Copyright law
[Berne required that copyright gets generated automatically, US had the system of
registering. Impact - everything that gets written down gets propertised. In the US way, it
first comes to the public domain and then may become propertised.].
o British authors complained of widespread piracy of their books abroad. American authors
also lobbied to establish recognition of foreign copyright claims. American authors aligned
with British authors not because they wanted author-centric laws, but because British
literature was easily available and American publishers preferred to publish uncopyrighted
British books and not them. So, disparity between lack of protection to foreign authors and
strong protection to local authors became detrimental to local authors.
▪ But American publishers won, had built their arguments on public interest etc., similar
to Arkwright. US policy reflected utilitarian justification of public interest. As a
developing country and importer of literary and scientific creations, US sought to retain
right to appropriate ideas. In contrast, net exporters such as France, England etc.
invoked natural-rights doctrine as a universal moral and economic right
▪ But again later, American authors also changed their tune and asked for stronger
copyright protection. As printing became easily available, established publishers were
threatened by newer ones who could print cheaply. Thought they had taken an anti-
monopoly stand, but only they could have the big publishing set-up because of bank
loans or funding etc. (so effectively a monopoly anyway). As printing became cheaper,
this was threatened. So, they saw advantages in having stronger copyright protection
so that they can continue to retain their monopoly position. Finally, US provided that
foreign authors could obtain copyright protection only if the US published their work
no later than the work was published in its country of origin. Foreign works also had to
be printed in the US [to appease printing workers unions]. Finally, Congress signed an
intl. agreement with England for reciprocal copyright protection – this reflected both
the security interests of the printers’ unions and the competitive interests of the well-
established publishers and authors.
▪ So, technological change impacted thought process - brought about realignment of
forces and interests - can see how it shaped IP
3. Key Settlement of the Patent Controversy
- Free trade v. Inventor rights (protection of innovation and invention)
o Free Trade – These were genuine proponents of free trade, not like the current ones which
have contradictions. They abhorred monopolies, characterised inventions as social,
objective, and a product of technological change – saw a problem in restriction of free flow
of information across borders, said IP was a main barrier to this. [Current free trade
proponents say that IP is a tool that helps in free trade - contradictions]
o Inventor Rights – Patent lawyers, engineers, companies etc. wanted to have stronger
protection. But not all, especially those disadvantaged by strong patent protection prior.
- Champions of patent protection prevailed – through extensive propaganda and due to the
decline of support for free trade itself.
o Free trade appeal declined. Appeal of moral arguments of inventors having to have rights
over their inventions become important. There was also emergence of corporate style of
business management then. These marketing people said that they wanted control over the
commodity they were going to be selling in international markets. New form of free trade
proponents backed by the international selling aspirations of big corporations came about.
o This, clubbed with myth-making inventors such as Edison etc. popularised the idea that
these genius inventors had to have rights over their creations.
- Conclusion: Proponents of patent protection regarded IP as a direct reward for intellectual
labour as part of the inalienable right of individuals to be associated with their innovations, and
due to an economic necessity to ensure the effective use of resources. This idea of knowledge as
property became more widespread and accepted, thus facilitating increased intl. commerce. This
also facilitated the emergence of cross-border recognition of patent protection

4. Multilateral Settlement
- US and Germany replaced Britain as tech leaders. Large business enterprises with international
marketing aspirations emerged. Myth-making inventors, such as Edison and Siemens, were at
the helm. These business leaders pressed for higher standards of patent protection and also
sought protection for the fruits of corporate research and development. USSC allowed clauses
requiring employees to assign patent rights to employer.
- Seimens in Germany – wanted to ensure that company’s patents would belong to the firm and
not to individual company inventors. German law also did this.
- Germany and US inventors were reluctant to participate in a world exhibition in Vienna – So, the
empire adopted a temporary law providing protection for foreigners to encourage foreign
inventors’ participation. This was the beginning of Congresses that led to the Paris convention,
which covered patents, trademarks, and industrial designs. [not copyrights]
- Victor’s perspectives enshrined in multilateral treaty. So, they brought about changes at both
the national and the international levels.
- Role of American and German interests represented a change in IP preferences from those of
followers to those of leaders seeking enhanced protection. Europe enacted stronger patent
protection.
- Summary:
o Saw how major stage in internationalisation / global standardisation (not really global
because euro-centric but still) of IP was achieved
o When it came to a treaty like the Paris convention, you had the US and Europeans coming
together and settling for a particular type of patent regime, but not for copyright. This was
because US for the longest time was net importer of copyright. So, it remained outside the
main attempt to standardise IP, which was Berne convention [Link: third world/developing]
o Within nation states, there was a tussle between various ideas - capacity of one group to
prevail over the other. American copyright system started coming under strain, not because
authors wanted control over their works or greater social welfare reasons, but because two
 American factions pitted against each other [Established publishers who had freedom to
copy v. new publishers, penny presses, who could become a threat to de-facto monopoly]
o So, thought that authors should have rights - This would give established publishers
continued de-facto monopoly
o 1891 - foreign works now being protected. But there was also a caveat that foreign authors
had to print in US, so that they also earned out of it.

5. Edison: Patents as a business strategy

- American policy makers were pushed to appreciating the virtue of higher protection. Previously,
they had prioritised local inventors (not introducers). Competition promoted a redefinition of
the established US publishers’ interests in IP protection. Similarly, major shift towards patent
protection animated by electric light, chemical industries.
- Eg. Edison’s [fu Tesla 4eva] transformation from American genius to predatory businessman –
illustrates this trend towards stronger patent protection.
o Edison’s mentors promoted a business strategy of market dominance by controlling the
fruits of innovation through acquiring both existing and future patent inventions. The idea
was to maintain control over innovation, manage patents to create barriers to entry, and
prepare patents with broad claims. He was also litigious.
o Edison effectively absorbed competition through predatory patenting strategies. Eg. James
Swan – invented and exhibited incandescent filament lamp, but Edison beat him to it with
his broad patent claim. Edison used this patent power to convince Swan to amalgamate
their two companies. Even though Swan had contributed more innovation, Edison’s patent
enabled him to maintain his monopoly position.

6. Rise of German Business Model and Emergence of Patent Cartels

- New business model emerged under which professional research and development departments
eclipsed the inventor-entrepreneur system. It was organised to conduct large-scale industrial
research by bringing employees patents and assigning them to the employer.
- Worry was that British and American firms would take patents but fail to work them in Germany.
So, German law included a working requirement that allowed the government to withdraw a
patent if the holder did not work the patent in Germany within 3 years of grant date. [Link]
- German law also covered processes, not products; and excluded the term ‘inventor’ in favour of
the ‘applicant’. So, it reflected commitment to research strategy of the process innovation and a
marketing strategy of product diversity.
- German firms realised that strong patent positions could help block research by rivals and
facilitate market domination [similar to Edison]. They took advantage of foreign laws (as
chemical products could not be patented) and filed for patents in US and UK without working
them [as these countries did not have working requirements]. Asymmetry.
- Following Germany, US also established patent departments that became central players in
corporate business strategies. Patents used not only for protecting inventors but also to raise
capital and force cross-licensing with rival firms.
- Phenomena of cartelisation - Patent was a tool of trying to push out competitors or making them
agree to your terms and forming a cartel. Eg. Incandescent lamp manufacturers in US; electric
light industry; Werner siemens in Germany.
o Patent was not encouraging competition in innovation [utilitarian argument] - lead to major
cartelisation and centralisation of innovator efforts. (innovators didn’t do what they wanted
to do but what their company wanted them to do.)
o Eg. General Electric’s strong patent position gave it an initial near monopoly position from
which it then exercised its financial and market power to maintain a dominant American
and world position until after WWII, decades after its key patents had expired.
- Most nations part of the globalising economy could not avoid international pressures to offer
patent protection to foreign inventors. [Link]

7. 20th century American Ambivalence

- One law helped monopolies and one was to prevent monopolies (antitrust)
- Post WWII - suspicion on cartels, they were made to face the brunt of cartelisation – greater
respect for the demands of antitrust law so suspicion of patent law that helps this. US policy
turned against monopolistic strategies, such as organising cartels, returning to the principles of
weaker patent protection and free competition.
o Patent rights increasingly construed as monopolies, market power was presumed, and
these rights were subordinated to the dominant anti-trust policy
o This anti-patent environment characterised by vigorous antitrust enforcement and judicial
attacks on patents led US businesses to question the economic value of patent protection.
Competitors had little to fear from infringing behaviour as courts presumed patents invalid
most of the time and criticised patentees for setting monopoly prices. So, businesses
started looking at other means of protection from competition (trade secret, govt.
subsidies, etc.).
o This had deleterious effects – few US companies took the risk of commercialising tech,
while other countries like Japan successfully commercialised on these US inventions.
- 1980 onwards: blocking patents had already been allowed. Court decisions signalled a new
attitude towards patents – said that policy of stimulating invention is on same footing as policy
of free competition. Ended antitrust dominance over patent law in the eyes of the judiciary.
o But inconsistencies in the attitudes of different circuit courts lead to rampant forum
shopping, which led to costly and protracted litigation. Companies did not consider patents
to be reliable incentives for investing in R&D.
o Shift in federal court attitude – held that a permanent injunction may be issued once a
patent has been held valid and infringed. Decisions reflected a more pro-patent approach.
- 1980s: US embraced the conception that IP protection was primarily a system for protection and
exclusion instead of a public policy to foster competition and diffusion. Global capitalism
produced new pressures on the domestic environment for intellectual property protection. US’s
priority to increase economic competitiveness led it to alter a number of significant policies and
institutions. So, can see change within countries from external factors.
- Summary: Antirust used aggressively to reduce monopoly and commercial advantage - one of
the points against this was that IP meant economic monopoly. Then anything this happened,
antitrust authorities swooped and tried to catch them. So, tried to show the difference between
IP monopoly (which is a legal monopoly) was not an economic monopoly. So, this was bringing
back patents. Next reading (Dragos) - "so for a long time at the intl. level, intl. IP levels were
being managed by WIPO [?]. But this .... in the eyes of such industry players"??

8. Multilateral Settlement: Property Rights Expanded

- In the 1980s, American private sector actors led the charge for new multilateral settlement
embracing their expanded notions of property rights – championed security instead of
competition.
- Institutionalization of the TRIPS Agreement – incorporates a notion of IPRs as a system of
exclusion and protection rather than one of diffusion and competition. It extends rights-holders’
privileges and reduces their obligations.
o TRIPS – Came about only after the tussle between competition concerns v. private concerns
in the US was settled.
- WTO and TRIPS – countries had to compulsorily enact a common and enlarged set of IP
standards.
Implications of this agreement on less industrialised countries [link]
- Implications are grave. TRIPS will shape innovation practices, the location of industry, economic
development and the global division of labour. By locking in high standards of IP protection for
countries in much earlier stages of economic development, it prohibits industrial latecomers
from adopting the very policies that proved to be so successful in countries like the US,
Netherlands, Switzerland etc.
- Industrialised countries built much of their economic prowess by appropriating others’ IP. TRIPS
sharply constricts the range of public policies that states can adopt to manage IP in a manner
tailored to their specific needs. The TRIPS regime makes information and technology more costly
and less accessible while vigorously defending the monopoly privileges of rights holders.
- TRIPS supports an approach to IP that closes off significant segments of what was once public
domain, making it unavailable to future creators. States and firms whose comparative advantage
lies in adaptation and imitation stand to lose in this regime.
o Also leads to increased economic concentration of some companies
- Even wrt copyright, Disney has benefitted more from institutionalisation of romantic notions of
authorship rather than a lone author.
- So, the most significant aspects of our culture remain perpetually in the control of a relatively
small number of corporations and companies

Conclusion
- Parallels between old and new
o Current era characterised by extensive property rights and economic concentration in
leading industrial sectors, same as before.
o Autonomy and Pressure to offer higher levels of IP protection - Follower countries must
abide by TRIPS, sharply reducing their policy-making autonomy. This is similar to 19 th-early
20th century where countries began to accept some uniformity in IP. Both times, countries
were unable to resist pressure to offer higher levels of IP protection.
o Mobilisation to protest broad expansion of property rights – Current Eg. HIV/ADIS drugs in
sub-Saharan Africa – At what point do rights-based incentives to invest in developing ife-
saving pharmaceutical products defeat the very purpose of saving lives?
- IPRs now
o More geared towards private reward over public access than ever before. Rights which
were thought of as privileges and exceptions have superseded obligations
- Legitimate Intl. IPR regime must recognise the variegated constellation of interests and abilities
within and between countries. A one-size-fits-all approach does not make sense in light of the
historical record of economic development. [link]
o Nations to craft policies appropriate to their levels of economic development and
comparative advantages in innovation/ imitation – So, they must reclaim their autonomy
o TRIPS as a blanket framework replacing diverse patchwork will create friction.
- IPRs have evolved as a result of shifting conceptions of property rights, technological change,
and institutionalisation of legal settlements. Property owners have not always prevailed, as
rights of ownership were contested and socially constructed.
o Realist theory – fails because it explains ownership rights solely in reference to power, so it
cannot capture the complex interplay of ideas, institutions, and material capabilities.
o Functionalist accounts of economic necessity – neglect the extent to which necessity is
highly contested social construction. Each round of contestation and settlement produced
new winners and losers.
 History and Evolution of Copyright Law

- Example of the Susan Sell Article.

 
What is copyright?
- The Indian statute has no definition.
- General technical definition: A copyright is a form of intellectual property that grants its holder the
legal right to restrict the copying and use of an original, creative expression, such as a literary work,
movie, musical work or sound recording, painting, computer program, or a design for a defined
period of time.
- A more fundamental way to understand it:
o It is the relationship between the work and its creator.
▪ Eg. King Dermot enunciated a copyright principle in settling a dispute over the st Colombo’s
copying of Abbot’s Psalter, declaring “to every cow her calf and to every book its copy.”
▪ This kind of thinking had an influence on the way copyright evolved.
- Formal journey of copyright - Linked with emergence of technology
o Eg. The advent of Printing Machine by Guttenberg 1450.
o With the emergence of printing press:
▪ A new community of readers emerged

▪ The scope of piracy increased manifolds and the authors and publishers felt threatened.

▪ The crown and the clergy felt threatened.

● Most literature was not written, and if written, was mostly for the church held within
its walls. With the printing press making publishing easier, there was an expansion of
the genre and knowledge was spread. Material considered treacherous/ blasphemous
etc. to the church and the crown were published. Moreover, publishers no longer had
a monopoly as it became easier for others to get into the business
● So, there was an alignment of the economic interests of the publishers with the
religious and political interests of the church and crown - Need to control the spread
of literature
o First response to these changes was to control and regulate it by way of licenses.
▪ Eg. 1469 - Venetian Senate granted a German printer, Johannes de Spira, a five-year
monopoly on the printing of the letters of Cicero and Pliny. 
▪ Eg. Israel - infringers threatened with serpents bite if they disseminated work without the
author's consent
▪ Eg. 1528 - Germany - Albrecht Dürer’s widow obtained an exclusive right to publish his
works, and in 1532 she obtained an injunction against an unauthorized reengraving.
 
England
- Previously:
o In 1504 King Henry VII started the licensing system. This was taken to the next stage by King
Henry VIII who required the literature to be approved by the privy council.
o Due to the emerging political situation [civil wars etc. made people emphasize freedoms] in
England this direct control over freedom of printing and publishing was getting difficult.
 o The solution: exercise indirect control through the grant of an exclusive charter to the printing
and book trade, which would carry out royal wishes in order to benefit from monopoly status.
- Thus in 1557, granted a royal charter to the Worshipful Company of Stationers of London, thereby
concentrating the entire printing business in the hands of the members of the Stationers
Company. The Stationers Company charter was confirmed two years later by Queen Elizabeth, but
this time with the goal of suppressing Catholicism. The privilege was strengthened further by way of
a decree in 1566 which authorised Star Chamber to enforce this monopoly. {star chamber was a kind
of a court which had the jurisdiction over the enforcement of royal decrees}
o So, they were regulating speech in the guise of regulating business by giving only some of them
licenses. A quid pro quo emerged - The state would ensure that no libellous or blasphemous
material was spread by threatening to dilute monopoly if that happened, and the publishers
retained their monopoly. Thus, the roots of copyright law lay in the attempt to prevent spread
of information etc.
o This had negative impact on authors’ position and emphasized the publishers. Control over
authors was asserted through mandatory entry of books in the Stationers’ Company register.
The exclusivity which this system created in favour of the publishers gave birth to the word
copyright. [As it meant then, it was the right to copy - which was exclusively with the publisher.
Now, there are more rights under copyright.]

- Dawn of a New Era

o In 1640- abolition of the Star Chamber.
o All of the regulations restraining the press were also eliminated
o One example of the new era is found in a remarkable order by the House of Commons
decreeing that: the Masters and Wardens of the Company of Stationers shall be required to
take especial Order that the printers do neither print nor reprint anything without the name
and consent of the Author. And that if any Printer shall notwithstanding print or reprint
anything without the consent and name of the Author that he then shall be proceeded against
▪ More emphasis on the author.
- But once the right was granted to everyone, those who wanted to revert to the old position would
use these same arguments.
o Licensing Order of 16 June 1643: In 1643, “the licentiousness of libels” of a free press led
Parliament to pass a licensing act for the benefit of the Stationers Company, including search
and seizure powers.
o The world was beginning to change, however. Government censorship, government-created
abusive monopolies, and lack of protection for authors were becoming inconsistent with the
spirit of the Age of Enlightenment. There was more of an emphasis on freedoms.
o As a consequence, in 1694 the world of the licensing acts and exclusive Stationers’ rights ended,
as the House of Commons, aided by arguments purportedly drafted by John Locke, refused to
renew the privilege of the stationers company. – Final blow to the Stationer's company
o 1709- Statute of Anne - first statute of copyright which recognized the right of the author.
▪ It says that the act was for the vesting of copies of printed books with the authors. The
authors were given rights for the first time.
▪ At an intuitive level, there is a link between a person and his work. But according to the
language of the Act, there was a utilitarian angle - limited rights for 14 years etc - So, even
though authors are in focus, this is done for the knowledge of the public.
▪ Contrary to the initial impression that it defeats publishers' monopolies and recognition of
IP and authors - Statute came out of the efforts of the monopolists. When they realised the
era of their monopoly was ending, they tried to project the author as deserving rights. The
 equation would then be tilted in their favour as they were already enjoying the rights to
publish the authors' works, and would get to continue benefitting from it.
● Link to prev paper - push for foreigners’ rights

o Subsequent to the passing of the statute, a few questions were raised:

▪ Statute of Anne - Did it create a new, hitherto unknown, copyright vested in authors or did
it declare an existing common law copyright?
▪ The Stationers contended that their former perpetual rights had not been taken away, but
rather that the Act merely enabled them to obtain summary remedies against piracy. The
expiry of the limitation period only took away the right to remedies and not their perpetual
common law rights.
▪ The issue came up before the court in Donaldson v. Beckket (1774)

● Issues:
o Whether the author of any literary composition had the sole right of printing and
publishing the same, in perpetuity, by the common law?
o Whether this right is any way impeached, restrained, or taken away, by the
statute 8th Anne?
● Held:
o Some people believed you can't predicate anything on intangible subject matter
like ideas. But others believed property always evolved with the time, so nothing
suggests it cannot be extended to ideas. Some believed the language showed
they had previous rights, but others said "vested" means they did not before.
o But finally - By a majority of eight to three they advised that there was a common
law copyright in published works but by a majority of six to five they advised that
it had been taken away by statute. Therefore, it was established that Copyright
was a statutory right enacted by the parliament on policy considerations and it
did not have any separate common law existence.
▪ So, common law right was taken away. Reemphasized policy underpinnings
and gave it more importance than any natural law or other justifications.
▪ Shift seen in Walter v. Lane [1900] - Authorship started getting defined based on the effort
put in by the author.
● Issue: whether the reporters of of speech could be considered "authors" under the
terms of the Copyright Act. Can this person then stop others from copying their work?
● Held: The House of Lords considered that the reporters were authors. The effort, skill,
and time that they spent was sufficient to make them original.
o Idea of authorship equated with idea of labour. So, even the mere verbatim
copying down of a speech was considered original.
o However, 'original' was not seen in the statute so some have argued that it
should not been seen to be indicative of the term now, but others still refer to
this case.

United States
- Thomas Jefferson - "That ideas should freely spread from one to another over the globe, for the
moral and mutual instruction of man, and improvement of his condition, seems to have been
 peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all
space, without lessening their density in any point, and like the air in which we breathe, move, and
have our physical being, incapable of confinement or exclusive appropriation. Inventions then
cannot, in nature, be a subject of property."
o He says there can be cases where society chooses to create monopolies as encouragement to
men to pursue ideas which may produce utility - Similar to the Statute of Anne
- Art 1 s 8: “Congress shall have Power To promote Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors exclusive Right to their respective Writings and Discoveries”
o Language: in terms of ends to be achieved (so more utilitarian)

- Wheaton v Peters (1834)

o Held: “that an author at common law has a property in his manuscript and may obtain redress
against anyone who deprives him of it or by improperly obtaining a copy endeavours to realise a
profit by its publication, cannot be doubted, but this is very different from that which asserts a
perpetual and exclusive property in the future publication of the work, after the author shall
have published it to the world."
o So, as long as the manuscript or ideas are not disclosed, they are your property and protected
by common law. Once it is disseminated, it is regulated - policy-driven legislative control.
 
Copyright law in the Intl. Stage
- Mechanisms through which it has been internationalised - multilateral treaties, bilateral agreements,
and unilateral measures.
- Multilateral Treaties
o Berne Convention - important for Copyright
▪ Provisions: It established common minimum standards and provided benefits to the
countries (and their authors) that joined; National treatment [equal protection to both
nationals and non-nationals alike]; Automatic protection; Principle of independence [not
dependant on the rejection or grant of copyright in another country]; Minimum protection
[50 years]; Minimum Rights [right to reproduce etc.]; Moral Rights
o But the Berne Convention, regulated by WIPO, was not seen as sufficiently robust in protection.
There was a push towards linking IP and copyright with intl. trade.
▪ The developing world was lured into this by promises of economic benefits in return for
significant enhancement of the developed worlds' copyright protection. Linkage diplomacy
worked, through pressure or otherwise, and countries joined the TRIPS.
o TRIPS
▪ Preamble - Desiring to reduce distortions and impediments to international trade, and
taking into account the need to promote effective and adequate protection of intellectual
property rights, and to ensure that measures and procedures to enforce intellectual
property rights do not themselves become barriers to legitimate trade;
▪ Sets Minimum Standards

▪ New kinds of works to be protected [like computer programs etc.], and enlarged the
bundle of rights.
▪ Enforcement

▪ Dispute settlement system

o WIPO Copyright Treaty - The WCT [1996] - not as universal as Berne and TRIPS.
 ▪ Further expands both the subject matter of copyright law and the accompanying bundle of
rights – Speaks about computer programs etc.
▪ It basically provides owners of creative works with legal protection of self-help measures.

● Most notably, Art. 11 of the WCT requires contracting countries to provide "adequate
legal protection . . . against the circumvention of effective technological measures," or,
in other words, to provide a protection for Digital Rights Managements (DRMs). 
● Not only the work but the self-help measures taken up by the authors (access control
measures - including encryptions, passwords, and other access related measures;
copy-control measures - allows access but prevents copying) fell within the protection.
So, not only subject matter but self-help measures.
● Controversial because it was supposed to balance the rights of the authors and the
genuine expectation of the users, but the balance was taken away. Fair use doctrine
and other legitimate uses – preventing from copying work once granted access to was
never protected before.
● Not a widely signed treaty - mainly US. Indian version corrected US's mistakes.

▪ Art. 12 - Ensuring measures rights management measures, like watermarks etc. that help
identify who the work's author is, are not tampered with - must have adequate remedies
for the authors.
o Rome Convention - Phonograms etc.

- Bilateral Agreements
o Eg. Since WCT has not been adopted by all, some countries may incorporate its provisions into
Bilateral treaties - US-Chile bilateral treaty.
o Such agreements help enhance protections between certain countries, especially since
multilateral regimes are hard to establish [as they invite much public scrutiny]
o Free Trade Agreements (FTAs) - FTAs are the avenue through which copyright and other IP
Rights are expanded beyond that which is required by TRIPS
▪ In these agreements, such as the Free Trade Agreements discussed above, TRIPS generally
serves as a baseline, and the owners of IP rights are granted more rights and fewer
exceptions or limitations than they would have under TRIPS. 
▪ These bilateral agreements result in a "TRIPS-Plus" regime.
o Issues of intermediary liabilities are arise between countries - so can resolve them through such
treaties.

- Unilateral Measures
o Section 301 of the United States Trade Act of 1974 - Special 301 Review US does a review of the
IP regime of other countries and if they are in breach.
▪ Countries are categorized in the USTR publication by placement on one of several lists:
Priority Foreign Country, Priority Watch List, and Watch List
▪ This is a powerful TRIPS-plus mechanism: even if a country is TRIPS compliant, the USTR
may require it to do more. The International Intellectual Property Alliance (IIPA), a
powerful coalition of United States copyright-based industries, is actively involved in this
process, as it collects and analyzes the data that forms the basis of the annual 301 Report.
● The US can then threaten to report the country to the WTO. Economic and penal
sanctions may be taken - smaller countries more impacted.
 
 Fundamental Requirements of Copyright Law

1. Registration

Are registrations an essential part of the regime?

- Berne Convention - Copyrights is a formality-free regime, no requirement of registration.
- India, being a signatory, has to comply with the Berne Convention. But Indian courts have decided in
contrary ways. The first two state that it is not a requirement (only voluntary), whereas others do.

- Sundarasan vs A.C. Thirulokchandar And Anr. (1973) 2 MLJ 290 – no req.

o Held: There is nothing to indicate that in the matter of infringement of copyrights, the
Legislature drew any distinction between copyrights, which are registered, and those which are
not. On the contrary, the scheme of the Act shows that an author acquires a copyright the
moment he produces a literary work, and it is open to him as the owner of the copyright to
effect, an assignment thereof, whether he has registered it or not.

- Zahir Ahmed v. Azam Khan 1996 Cri LJ 290 – no req.

o Held: The object behind the enactment of Section 44 of the Act was not to make registration
compulsory or mandatory for the purpose of enforcement of copyright. An option was only
provided thereunder. It is, therefore, not obligatory for- an author to get the copyright
registered under Section 44 of the said Act for the purpose of acquiring rights conferred by it
▪ Registration only raises a presumption that the person whose name is entered in the
Register of Copyrights under Section 45 of the Act is the actual author. Section 48 of the
aforesaid Act provides that the registration of copyright shall be prima facie evidence of
the particulars entered therein and shall be admissible in evidence in all Courts without
further proof for production of the originals.

- Dhiraj Dharamdas Dewani v. Sonal Info Systems Pvt. Ltd. MANU/MH/0255/2012

o Held: Perusal of Section 51 [Infringement] clearly shows that it shall be deemed that there shall
be infringement of the copyright when any person does anything which the exclusive right to do
is conferred upon the owner of the copyright by the Copyright Act or any person makes sale of
copies of such work by infringement of the copyright in the said work. It is thus clear from the
reading of Section 51 that infringement shall be deemed when exclusive right to do of the
owner of the copyright is utilized by some other person viz. the infringer. Now unless such
person (the infringer) knows that there is any particular owner of the copyright in India or that
such owner of copyright has registered his work under Section 44 of the Act before he did,
attributing infringement by him or on his part intentionally or unintentionally, would be an
preposterous. Such a person who is infringing the copyright in a work must be deemed to have
knowledge about the owner of the copyright and such knowledge cannot be attributed unless
the provisions regarding registration of copyright, publication thereof etc. are complied with
▪ The Court also spoke about the penal provisions of the copyright act: provisions relating to
penal provisions are required to be interpreted strictly. To make a person liable criminally,
it will have to be shown that such a person was fully aware about the owner of the
copyright and that he indulged in infringing the said copyright despite knowing the
ownership thereof. If registration is not made and published in the official gazette such
infringer cannot be expected to be aware nor can he be attributed knowledge about the
ownership of the copyright of a particular copyright owner and in that event the criminal
Court would not be able to convict such a person. That may lead to chaotic situations.”
- So, in the first two, the courts that are emphasizing on the voluntariness of the regime are looking at
it purely from an evidentiary standpoint. There could be other ways, but if you get it registered,
there is a prima facie presumption that it is yours.
o The court speaking about the compulsory nature looked at it from the standpoint of
information asymmetry that would arise were the work not to be registered - Who is the
owner, when was the work created etc. must be known to call out infringement etc.
o Non-registration regime also creates an automatic property regime. So, very little becomes
available in the public domain - no dissemination of knowledge or information. The registration
regime allows the work to go into the public domain, and also states exactly when the work got
copyrighted in case of infringements etc. - So, increases robustness of public domain.
▪ Eg. Orphan works [Dev Gandhi reading] - those which authors you are unable to trace or
who is not claiming the work. Lots of films, art works etc. in museums or archives are
orphan works. So, if anyone makes use of these, no one knows how to approach authors
and attain permission. When authorities tried to find the authors, it was very time and
money consuming.
o Locke - need a common forum which to appropriate. Here, there is no common.
- So, legally, the first two got it right. But the third one indicates a policy consideration that must also
be considered. There is a rethinking towards requiring registration due to its benefits.
 
Why does Berne continue to adhere to the non-registration regime?
- Romantic idea of authorship - the accomplishment of rights happens when the work is created. The
requirement of registration goes against this.
o But this is an easily solvable conflict - see Donaldson case - common law rights changing to
legally regulated ones.
- Impediments of registration [check Dev Gandhi article]:
o Difficulties in implementation - practical problems relating to fees, documents required etc. that
would shut out many people.
o Copyright is more organic and spontaneous - cannot go to the registration office every time you
get an idea. [This might be seen to be tilted towards established corporate players who have
the time and resources to track copyright developments, versus independent creators who
would be more concerned with their product.]
o Freedom is shunted for formalities
o People might want to decide what to share with the public. But if registration regime, must give
it to the public domain instead of keeping it with you. It can be used by anyone in their public
domain. [But corporate players might be in a better position to judge the value of their work]
o How would bureaucratic demands of registration work in this age of the internet where people
may be both users and authors.
o This may then make rights clearance as a default measure - so even if the rights to be exercised
under copyright can be done without a license, people will default to seek licenses
▪ Eg. Delhi University v. Copy House case - for any kind of utilisation, wanted licenses.

▪ Suggestion - Can have a mechanism like the ICANN in copyright - helps ease the practical
difficulties.
- For policy considerations:
o Can have common law rights at the beginning so that they have rights but also don't have to
disseminate it immediately. If they want to bring it to the public domain, then register and be
allowed legal remedies. If no registration, then lesser remedies.
▪ Changes from property regime to liability regime
o Can enforce it against people using your work as it is and not adaptations.
 o These would help create a balance between the authors and the people using the work [as they
would otherwise not know when they would be infringing the law in a no registration regime]
 
2. Originality

- It is not the same as novelty

o It is not newness. Novelty as a legal concept is more related with patent law, not copyright.
Originality does not need newness.
o C. Cunniah and Co. vs Balraj and Co. AIR1961Mad111
▪ Issue: Was the representation of a common subject like a painting of the deity "Bala
Subrahmanya" made from conventional ideas as to his appearance in human form?
▪ Held: It is well established that in order to obtain copyright production for literary,
domestic, musical, and artistic works, the subject dealt with need not be original, nor the
ideas expressed be something novel. What is required is the expenditure of original skill or
labour in execution and not originality of thought.
● Thus, though pictorial representation of Lord Balasubrahmanya in a human form is a
subject which is common to everyone, still, if a picture of Lord Balasubrahmanya
drawn by an artist made up of conventional ideas as to his posture, his form, the
ornaments he wears, the vahanam he uses and other matters, the picture produced is
still the result of skill and labour of the artist; and it certainly entitles him to claim
copyright in the product of his labour.
o So, it could be regular or mundane, but can still be copyrightable as long as it involves
processing and the use of original skill.
 
Two different standards
A. "sweat of the brow" or "industriousness" doctrine
- This standard of originality is based on a natural rights or Lockean theory that an author deserves to
have his or her efforts in producing a work rewarded - When there is labour, time and skill spent in
creating an expression, that deserves protection.
o But mere slavish labour is not copyrightable. [Eg. Walter v. Lane - comes closer to more slavish
- Originality does not mean that the work should be inventive novel, stylish or unique.
- The sweat of the brow argument is mainly followed in countries like U.K - They were influenced by
Locke, labour as justification for giving property in the first place. So, it makes sense that Lockean
theory is also used to see what kind of property is copyrightable.
 
- University of London Press Ltd. v. University Tutorial Press Ltd.
o In almost all common law countries, notion of originality is based on this decision
o Issue: What is the copyrightability of the mathematics question papers?
▪ It was urged that some of the questions are questions in workbook and that some of the
questions are similar to the questions asked before
o Held: The questions are asked to check if the students have read and understood the books
prescribed by syllabus, but the questions are not copied from the books and it involved
selection, judgment, and experience.
▪ Distinction between the materials upon which one claiming copyright has worked and the
product of the application of his skill, judgment, labour and learning with these materials:
which product even though it may be neither novel nor ingenious, is yet the claimant’s
original work in that it is originated by him, emanates from him and is not copied.
 ● So, it should originate from the author, not just copied. Nothing else has to be seen.
Time taken to create the work is not to be the test - Eg. Time taken by Lord Byron in
writing a poem might be short, but it would still be copyrightable.
▪ The selection of papers by the teachers involved time, skill, and learning to decide which
ones to pick out. The book and the papers arise from the authors and are not copied from
another, so copyrightable. If you apply the labour-based justification, compilation can give
a claim to copyright, even if the questions were not arising from the professors themselves.
 
- Sawkins v. Hyperion Records [2005] - Approved Walter v. Lane
o Facts: S worked on an old piece of music by a french musician who was a court composer. Some
of the portions had been recorded in a record but they were damaged so it could not be played
in entirety. S, being an expert, was able to almost come precisely as close to the original
composition as possible after 300 hours. HR then tried to get some musicians to play this record
to which S objected, but HR said it was not original so he could have no objections.
o Issue: Does copyright subsist in modern performing editions of the out of copyright music of
Michel-Richard de Lannande, principal court composer at the courts of Louis XIV and Louis XV?
▪ If a newspaper reporter can get copyright in a faithful account of a political speech as
in Walter v. Lane [1900] AC 539 there was no reason why a musicologist should not claim
copyright in a faithful rendering of a classical score.
o Held: The general policy of copyright is to prevent unauthorised copying of certain material
resulting from intellectual exertion of human mind.
▪ Copyright can be used to prevent copying of a substantial part of the relevant form of
expression, but it does not prevent use of the information, thoughts or emotions expressed
in the copyright work. It does not prevent another person from coincidentally creating a
similar work by his own independent efforts. It is not an intellectual property monopoly in
the same sense as a patent or a registered design. There is no infringement in the absence
of a direct or indirect causal link between the copyright work and the alleged copy.
● Thus, if the claim of Dr Sawkins to copyright in the performing editions were upheld,
that would not prevent other musicologists, composers, performers, or record
companies from copying Lalande’s music directly or indirectly or from making fresh
performing editions of their own. All that Dr Sawkins can prevent them from doing,
without his consent, is taking the short cut of copying his performing editions in order
to save themselves the trouble that he went to in order to produce them [Not an
original work because he reproduced them. So, he cannot stop others from playing
them. He can only prevent people from using his effort in finding the shortcut.]
▪ Wrt to Walter v. Lane - They held that copyright subsisted in shorthand writers’ reports of
public speeches as “original literary” works. The speeches were made by the Earl of
Rosebery in public when reporters were present. The reporters made notes in shorthand,
transcribed them, corrected, revised, and punctuated them and published them in
newspapers as verbatim reports of the speeches. A speech and a report of a speech are
two different things. Lord Rosebery was the author of his speeches. The shorthand writers
were the authors of their reports of his speeches. They spent effort, skill, and time in
writing up their reports of speeches that they themselves had not written
● There was a requirement of fixation of work before it could become copyrightable - so
oral speeches were not considered. In any case, copying and transcribing was enough
effort to make it copyrightable.
 ▪ On the application of Walter v. Lane to this case, the effort, skill, and time which the judge
found Dr Sawkins spent in making the 3 performing editions were sufficient to satisfy the
requirement that they should be “original” works in the copyright sense. This is so even
though (a) Dr Sawkins worked on the scores of existing musical works composed by
another person (Lalande); (b) Lalande’s works are out of copyright; and (c) Dr Sawkins had
no intention of adding any new notes of music of his own.
● This is how the labour-based theory played out in the concept of originality.
 
B. Modicum of Creativity
- The US courts while deciding issues on copyrightability follow a more rigorous standard to determine
originality - Reflecting their utilitarian bases. They require a “modicum of creativity” to be present in
a work so as to bestow it with originality. [Only a tinge of creativity, not entirely new.]
- This approach makes it clear that only those works that are the product of creativity will be
rewarded with copyright protection (independent creation + creativity)
 
- Feist Publications Inc. v. Rural Telephone Service Company Inc. (US 1991)
o Facts: RTS was required to publish a telephone directory, which was names and telephone nos.
FP wanted to publish another book so they approached RTS to ask whether they could copy the
book, they said no go door to door and collect info. FP said you cannot copy facts.
o Held: The US Supreme Court held that the selection, coordination, and arrangement of Rural's
directory do not satisfy the minimum constitutional standards for copyright protection.
Modicum of creativity requirement is not met
▪ Court recognised a dilemma that copyright faces. Facts are not copyrightable. But it exists
in the compilation of facts. So, how are facts not monopolised while the presentation is
monopolised? - They felt the sweat of the brow approach did not address this sufficiently.
▪ The key to resolving the tension lies in understanding why facts are not copyrightable. The
sine qua non of copyright is originality. To qualify for copyright protection, a work must be
original to the author. Original, as the term is used in copyright, means only that the work
was independently created by the author (as opposed to copied from other works), and
that it possesses at least some minimal degree of creativity.
▪ To be sure, the requisite level of creativity is extremely low; even a slight amount will
suffice. The vast majority of works make the grade quite easily, as they possess some
creative spark, "no matter how crude, humble or obvious" it might be. Originality does not
signify novelty; a work may be original even though it closely resembles other works so
long as the similarity is fortuitous, not the result of copying [2 people can come up with the
same thing at the same time - not novel but both original]
● So, more than mere labour - as US copyright incentivises addition to the corpus of
knowledge of the society, not labour. Thus, something that is a mere compilation is
not copyrightable, but something that shows your addition to the data will be.
▪ This arrangement is an old age practice and firmly rooted in tradition and so common place
that it has come to be expected as a matter of course. In case of a compilation, the raw
facts may be copied at will. This result is neither unfair nor unfortunate. It is the means by
which copyright advances the progress of science and art.
● By labour based - Directories would have been protectable.

● By this one - not protectable.

- The need to use these standards to determine originality arises only when the distinction between
expression and the underlying raw material is blurred - so, compilations, data protection etc. is
where originality is relevant. Otherwise, other components. So, most works would be copyrightable
under both the approaches. It is only a few that are affected
 
C. The Indian Position
- Burlington home shopping (P) ltd. V Rajnish Chibber 61 (1995) DLT 6 - Older approach
o Facts: ex-employee copied the database and put it on his computer at home. Among other
things, the company charged him with copyright violations
o Held: Court held that a compilation of addresses developed by any one by devoting time,
money, labour, and skill, though the sources may be commonly situated, amounts to
copyrightable literary work. So, the database was copyrightable
o Followed the English approach

- Eastern book co. v. D.B.Modak (2008)1SCC1 - Changed approach

o Facts: EBC is a publisher of cases. DBM tries to come up with a digital format of the cases in the
form of a CD. They copied this from EBC and had not gone to the SC to get permission for the
texts of the cases. EBC claimed copyright based on additions of citations, cross-citations, revised
editions etc., even though they had not changed the text of the judgement.
o Issue: Is this copyrightable subject matter?
o Held: Judicial pronouncements of the Apex Court would be in the public domain and its
reproduction or publication would not infringe copyright. Accordingly, the copywritten
judgements would not satisfy the copyright req merely by establishing labour, skill, and capital
invested in the copywritten judgements [Against position of Del. HC that labour is sufficient]
▪ To secure copyright, it is necessary that the labour, skill and capital expended should be
sufficient to impart to the product some quality or character which the raw material did
not possess, and which differentiates the product from the raw material.
▪ To claim copyright in a compilation, the author must produce a material with exercise of
his skill and judgment which may not be creative in the sense that it is not novel or non-
obvious, but at the same time it is not the product of merely labour and capital.
▪ No doubt appellants have collected the material and improved readability of the judgment
by putting inputs in the original text of the judgment by considerable labour and arranged
it in their own style, but that does not meet the minimum requirement of creativity. So,
only some amount of mere labour would not be sufficient.
▪ So, shift towards the American doctrine. But the court is not relying on the American
position, but a Canadian position – CCH Canadian Ltd. v. Law Society of Upper Canada,
2004 (1) SCR 339 - Only showing mechanical labour is not good enough, but the threshold
should also not be as high as showing creativity. They took a middle position stating that
there must be some skill and judgement for creating your work for it to be copyrightable.
o Summary: To claim the copyright in a compilation, the author must produce the material with
exercise of his skill and judgment which may not be creative in the sense that it is novel or non-
obvious, but at the same time it is not a product of merely labour and capital .
▪ Where "skill" is "the use of one's knowledge, developed aptitude or practised ability in
producing the work" and "judgment" is "the use of one's capacity for discernment or ability
to form an opinion or evaluation by comparing different possible options in producing the
work – Middle ground
 ▪ Readability and other improvements did not meet the threshold. But other improvements
met this threshold of skill and judgement - addition of headnotes, segregating paragraphs
and clubbing them together [as you need the art of understanding the legal argument to
know where best to break a paragraph], adding internal paragraph numbering, and
introducing who has concurred/dissented etc. suggest that there is some amount of skill
and judgement as it is not merely mechanical labour based. Therefore, it is copyrightable.

o Problems with the judgement:

▪ Loose usage of terminology - Uses skill, judgement, etc. very loosely.

● The Canadian court dropped the word labour and retained skill and judgement from
the package of words used by English courts. Why was this dropped? And if the
English courts used these other words, why did they emphasize only on labour?
o Canadian scholars - the intention was to exclude claims solely based on labours
because it diluted the distinction between facts (in the public domain) and a
compilation of facts.
o English opinions - the standard is ambiguous because it may be skill, judgement
and labour or skill, judgement, or labour. Either way, the power of labour to
foreshadow is strong. This is why Canadian courts dropped the word.
▪ Problematic – The understanding that this approach is midway between English and US

● USSC said they were not raising the level of creativity to any substantial level. It was
only miniscule, a modicum of creativity. It also did not mean a high level of originality -
So, the level was kept low and only in exceptional cases would things be excluded.
o Yellow pages v. white pages - same data but presented in a different way. Only
yellow pages copyrightable.
● So, Canadian court may have misread US position when it thought it meant novelty.
o Explanation of the Canadian position - Prof. Carey - By dropping the word
creativity, the SC was trying to avoid a situation peculiar to Canadian law - since
they have authoritative texts in two languages, the meanings may be taken in the
way they evolved in continental Europe etc. - Significant policy considerations as
borrowing the term creativity may imply that you have to invest your personality
into the work - this becomes a moral argument that is author-centric, but they
wanted it to be seen from a utilitarian perspective.
▪ In this way, it is not very different from the US position.

▪ Since we don't have this problem in India, if we still believe this is a midway
approach, then how to interpret our SC approach?

Idea-Expression Dichotomy
- Ideas are not protectable; it is only the expression of the idea that is protectable.
o It is not that ideas are less important, but that they are so important they cannot be
monopolised [the common source on which everyone builds upon]
- The originality requirement is analogous to first possession in property – There is a striking
correspondence between the idea/expression distinction in copyright law, on the one hand, and the
distinction between the intention to possess and the fact of possession--animus possidendi and
factum possidendi--in property law, on the other. [Converting the idea is factum of possession
whereas generating is analogous to intention to possess]
- Baker v. Seldon US 1879 [Origin of the dichotomy]
o Facts: In the said case, Charles Selden got a copyright in a book, which dealt with his particular
bookkeeping system. The book consisted of an introductory essay explaining the system of
book-keeping to which were annexed certain forms or blanks consisting of ruled lines and
headings, which illustrated how the said system of bookkeeping had to be carried out. Later on,
Baker made accounting books, which made use of a similar plan so far as results were
concerned; but made a different arrangement of the columns and used different headings.
o The allegation was that Baker had used Selden's system of accounting. However, there was no
allegation that Baker had actually copied the particular forms contained in Selden's book
▪ Independent creation is not a violation of copyright. No allegation of copying meant the
case was supposed to have been dropped here as no infringement. But judge overlooked
this, and case went on to be an articulation of how copyright approached copying
o Held: Had he used words of description instead of diagrams (which merely stand in the place of
words), there could not be the slightest doubt that others, applying the art to practical use,
might lawfully draw the lines and diagrams which were in the author's mind, and which he thus
described by words in his book.
▪ That blank account books are not the subject of copyright; and that the mere copyright of
Selden's book did not confer upon him the exclusive right to make and use account-books,
ruled, and arranged as designated by him and described and illustrated in said book.
▪ Where the art it teaches cannot be used without employing the methods and diagrams
used for illustration, or such as are similar to them, such methods and diagrams are to be
considered as necessary incidents to the art and given therewith to the public.
● It is believed that the idea-expression dichotomy originated from this paragraph
because the emphasis is the underlying incidents to the art is not to be monopolised,
and instead, belong to the public domain.
o The US Supreme Court stated that the copyright in the book, although effective to protect the
book, "did not confer upon the author the exclusive right to make and use account-books, ruled
and arranged as designated by the author and described and illustrated in said book."
● So, just because it was an example given, doesn't mean the idea was expressed in any
particular way. No infringement. The essay to describe it would be copyrightable, but
underlying art would not be [Eg. Science books can be copyrighted but not formulas]
 
Development of the idea-expression dichotomy
- In its earlier days, protection was given only to the bare words used by the author in his work and
nothing else was protected beyond that. Anything beyond was seen as improving upon the work.
o Hence ‘expression’ was given a very clear definition as nothing more than the exact words used
by the author.
o Examples:
▪ Johnson v. Donaldson 3F22,24 (C.C.S.D.N.Y. 1880)

● In one of these cases, right to translate was not a violation of the copyright as it was a
different expression of the same idea. Now, it is a right that is given.
▪ Stowe v. Thomas 23 F. Cas. 201 (C.C.E.D. Pa. 1853).

▪ White-Smith Music Publishing Company v. Apollo Company. 209 U.S. 1 (1908).

 ● Musical composition for one instrument was transposed to another instrument, not
protected since there required a different kind of expression
● So, hardcore difference between idea and expression.
- Change: In Kalem Co. v. Harper Bros. 222 U. S. 55 (1911)
o Facts: Defendant had made a motion picture of the copyrighted book Ben Hur
o Held: Justice Holmes upheld a finding of infringement based on the author's exclusive right to
dramatize his own work.
▪ Justice Holmes specifically rejected the defendant's argument that to find infringement
here would extend copyright to "ideas" as distinguished from "expression," observing that
"there is no attempt to make a monopoly of the ideas expressed."
● Expanded upon the concept but not endangering the dichotomy. Subject matter was
no longer limited to the exact manuscript or exact brush strokes or bare text
o This ruling established the precedent that all motion picture production companies must first
secure the film rights of any previously published work still under copyright.

- Doubt answer: If approaching from Lockean perspective - greater chance that an idea as according
to a US judge is an expression and therefore protectable. Lockean theory was also built on the
dichotomy of labour and commons, the idea being part of the commons and the expression showing
labour. In US, lesser portion of the claim would be seen as labour and greater emphasis on
commons.
- Doubt answer: Infringement if substantial similarity to previous work only.

- King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924) [More broadly worded]
o Held: United States Court of Appeals for the Second Circuit held that the making of a 3D doll
embodying the image of a copyrighted cartoon character was an infringement of copyright.
o Problem: The court in Fleischer created a problem, however, that did not exist under the
simplistic approach of the Stowe case [Expression was bare text]: If something more than the
exact expression is to be protected, where should the line be drawn
▪ Till late 19th century - West influenced by the idea that there are universal principles in
nature and creators only imitate them. So, the right would only be limited to the exact
imitation, showing why law also limits it to the bare text etc.
▪ Next, author was now romanticised. Ideas said to emerge from their genius etc. Since it
was a creation in their mind, it was the abstraction in the mind that had to be protected
and not only the exact manuscript
▪ But problem: Previous system had clarity. Judge would not have to expend discretion to
see whether it was an abstraction, since now they had to check if it infringed copyright
even if it was not only the exact text.
 
Abstractions Test
- It was an attempt to divide idea from expression.
- Nichols v. Universal Pictures Corp. 45 F.2d 119 (2d Cir. 1930)
o Facts: The plaintiff, playwright Anne Nichols, was the author of Abie's Irish Rose, play about a
young Jewish man who marries an Irish Catholic girl against the wishes of both of their fathers,
with hilarity ensuing. The defendant then produced The Cohens and Kellys a film based on a
play about an Irish boy who marries a Jewish girl from feuding families, with hilarity ensuing.
This was taken to court on the basis that copyright was violated
 o Issue: Was what had been copied the idea or the expression?
o Held: Upon any work, and especially upon a play, a great number of patterns of increasing
generality will fit equally well, as more and more of the incident is left out. The last may perhaps
be no more than the most general statement of what the play is about, and at times might
consist only of its title; but there is a point in this series of abstractions where they are no
longer protected, since otherwise the playwright could prevent the use of his "ideas", to which,
apart from their expression, his property is never extended. Nobody has ever been able to fix
that boundary, and nobody ever can. [So, it is only a methodology. While peeling the work, you
will find the similarity has stopped, which would indicate whether it was an idea or expression.]
▪ "the less developed . . ., the less they can be copyrighted; that is the penalty an author
must bear for marking them too indistinctly."
● So greater the generality and lesser the specifics, the more the judge will hold
infringement.
o Abstraction levels in Nichols:
▪ the similarities between two works at issue in Nichols may be abstracted as follows
(starting with a high level of abstraction and working downward):
● two works about two men with children;

● two works about two men whose children marry;

● two works about two men whose children marry causing the men grief and anger;

● two works about two men from different religions whose children marry in secret
causing the men grief and anger because of their religious differences;
● two works about two men from different religions whose children marry in secret
causing the men grief and anger because of their religious differences but who
reconcile in the end;
● Two families live happily thereafter.

▪ Hence, court held that similarities like two pig headed men who cannot get along because
of religious differences, two people overcome petty religious differences in favour of
stronger values, problems of marriage of two people from different religious backgrounds,
the animosity between the two families because of the love between their children etc. -
Did not constitute infringement as only the idea was taken and not the expression.
o The spirit of the dichotomy is to ensure that the commons are not monopolised, and also to
ensure that people don't free-ride off the efforts of others [as it goes beyond the bare text]

- Problem: Injects a huge amount of subjectivity into the question. As a result of this, the dichotomy
has the potential of jeopardising another facet of copyright law, i.e., copyright law should be non-
judgemental to the quality of the work or the kind of the work being judged. This is especially true
since judges are not qualified to judge the quality of the work. This subjectivity allows judges to
inject their judgement on the art in the guise of idea-expression dichotomy [backdoor entry]
o Eg. 20th century fox case - woman is almost seduced by an older man but was shot in both
movies. Though there were many plot differences, the court held that it had similarities had
extended to expression. Explanation: The idea that two people with different religious
backgrounds marrying is seen as a common idea. But in 1920, the idea that a woman goes to
the city to live alone was seen as a radical idea that needed to be protected, so subjectively
decided to protect it.
 o Instead, judges must not use idea-expression dichotomy and just give reasons, which may
include policy reasons etc. when they say infringement so that policy makers can take these
opinions into account, rather than hiding behind this mask. However, Bharti doesn't see the
need to do away with this dichotomy.
 
Indian Position
- India's statute does not give an idea-expression dichotomy, but courts have read it in.
- R.G. Anand v. Delux Films, A.I.R. 1978 SC 1613
o Issue: involved the copying of a film from a play, the main theme of the play (hum hindustani) is
provincialism and the prejudice of persons belonging to one state against persons belonging to
other states.
o Held:
▪ The play has concentrated only on one aspect of provincialism i.e. whether there can be a
marriage between the persons belonging to one state with those belonging to other states.
● Whereas in the film, the theme revolves around (1) two aspects of provincialism viz.
the role of provincialism in regard to marriage and in regard to renting out
accommodation (2) evils of a caste ridden society and (3) the evils of dowry
● So, it was a mix and match of themes.

▪ The Court made it clear that there can be no copyright in an idea, subject matter, themes,
plots or historical or legendary facts and violation of the copyright in such cases is confined
to the form, manner, arrangement, and expression of the idea by the author
● Similarities arising out of same subject matter or same idea would not amount to
copyright infringement.
▪ So, the case explicitly included the idea-expression dichotomy in the Indian jurisprudence.

▪ Ethically, it might be problematic to discuss with someone and be influenced by their ideas.
But legally, it was not problematic.
 
- Anil Gupta And Anr. vs Kunal Dasgupta And Ors AIR 2002 Delhi 379 [Also known as Swyamvar v.
Shubh Vivah]
o Facts: A went to Sony and shared a story which is vaguely based on Swyamvar [mythology,
matchmaking kind of]. Sony took this detailed interaction and renamed it Shubh Vivah with
their own nuances.
o Issue: Whether the concept note for the TV show is only an idea or an expression
▪ "whether the idea conceived by the plaintiffs of producing a reality TV programme is a
novel concept and same could be protected?" - court did not frame it in the idea-
expression dichotomy way
o Held:
▪ In the modern day, when the small screen has taken over the earlier means of mass
communication like radio, idea/concept/script of a broadcaster has wider potentiality of
capitalizing revenue and if that idea/concept or script is not protected then in a given case,
where a person has conceived an idea to be translated into the reality TV show which
could be key to its success with audience, the channels with their enormous resources
could always be in a better position to take the idea/theme/concept from any author and
develop at their own end and the original author of the concept will be left high and dry
 ● So, the court is motivated by the apparent injustice to the smaller author that is being
taken for a ride by a big corporation.
▪ One has to bear in mind that persons who create an idea/concept or theme which is
original, laws must ensure that such people are rewarded for their labour. An idea per se
has no copyright. But if the idea is developed into a concept fledged with adequate
details, then the same can be protected as a copyrightable subject matter.
● The court is paying lip service to the idea-expression dichotomy. But they do not stick
to a strict application of the dichotomy. They injected an in-between idea named 'a
concept fledged with adequate details' - need not be fully developed.
▪ So, the novelty and innovation of the concept of the plaintiff resides in combining of a
reality TV show with a subject like match making for the purpose of marriage.
● The Swayamvar quoted in Indian mythology was not a routine practice. In mythology,
we have come across broadly understood only two swayamvars, one in Mahabharat
where the choice was not left on the bride but on the act of chivalry to be performed
by any prince and whosoever succeeded in such performance got the hand of Draupdi.
Similarly, in Ramayana choice was not left to the bride but again on performance of
chivalrous act by a prince who could break the mighty Dhanusha (bow).
● Therefore, originality lies in the concept of plaintiff by conceiving a reality TV
programme of match making and spouse selection by transposing mythological
swayamvar to give prerogative to woman to select a groom from variety of suitors and
making it presentable to audience and to explore it from commercial marketing.
● Therefore, matchmaking in view of concept of the plaintiff giving choice to the bride
was a novel concept in original thought capable of being protected.
o This case comes close to the suggestion coming from previous criticism. Rather than letting law
enable free riding, it looks at the newness that must be protected.
 
See Bikram Yoga case slides - 41
  
Exception 1: Merger Doctrine
- Can be seen as an exception or supplement to the idea-expression dichotomy.
- Doctrine: Where idea and expression are inseparable i.e. idea cannot be separated from the
expression, then expression will not be copyrightable.
o In other words, if the underlying idea is susceptible to very few variations/expressions then no
one may claim a copyright in any one manner of expression or depiction because that would
result in monopolizing the idea.
o This is because we don't want ideas to be monopolised at any cost.
- Baker v. Seldon - idea-expression is associated with this case, but it was actually applying the merger
doctrine. Art and work not separable means the expression would also not be protected.
 
- Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 1971)
o Facts: the court invoked the said doctrine to deny copyright protection for a jewelled bee pin.
The plaintiff, filed a suit alleging that the defendants had infringed the plaintiff's copyright in a
pin made in the shape of a bee formed of gold encrusted with jewels by defendants' entire line
of a score or more jewelled bees in three sizes decorated with from nine to thirty jewels of
various sizes, kinds, and colours.
 o The plaintiff claimed: originality of the bee pin was in a particular arrangement of jewels on the
top of the pin, but the elements of this arrangement were never identified
o Defendant argued: that arrangement was simply a function of the size and form of the bee pin
and the size of the jewels used.
o Held: The court noted that a jewelled bee pin was an idea that defendants were free to copy.
▪ In the present case the idea and its expression appeared to be indistinguishable. There was
no greater similarity between the pins of plaintiff and defendants than is inevitable from
the use of jewel encrusted bee forms in both. If plaintiff's understanding of its rights were
correct, its copyright would effectively prevent others from engaging in the business of
manufacturing and selling jewelled bees.
▪ Therefore, idea seems to be merged with the expression, so not copyrightable.
o Can ask why the court only looked at arrangement of the jewels rather than looking at the
decision to choose a bee, which could then be argued to be a creative decision. But the court
picked that to be the idea part of it and chose to focus on the arrangement of the jewels.
 
- Mattel, Inc. and Others v Jayant Agarwalla and Others 2008.
o Facts: JA had developed an online version of the board, but Mattel argued they had a copyright
on the board.
o Issue: Whether the design of the scrabble board is copyrightable
o Held:
▪ Application of the merger doctrine would mean the colour scheme on such scrabble board
can be expressed only in a limited number of ways; if the plaintiffs' arrangement were to
be avoided, it is not known whether the idea of such a word game could be played at all
● Merger doctrine is applicable with respect to games as "they consist of abstract rules
and play ideas.“ If these rules- which form the only method of expressing underlying
ideas are subject to copyright, the idea in the game would be given monopoly: a result
not intended by the lawmakers, who only wanted expression of ideas to be protected
▪ So, unlike in snakes and ladders where ladders/ snakes can be of varying shapes and sizes
etc., each colour code and arrangement of the differing coloured-tiles in scrabble has a
different meaning according to the rules of the game. In such cases, idea and expression
has been merged. Merger doctrine applies so basic claim (the game) was not copyrightable
o It is possible that another court may have treated the entire game as an expression of an idea of
a word game - indeterminacy of the idea-expression dichotomy.
▪ But precedent generally - games as such cannot be protectable.
 
Exception 2: Scenes a faire doctrine
- Stands for "obligatory scene," one the public "has been permitted to foresee and to desire from the
progress of the action; and such a scene can never be omitted without a consequent dissatisfaction."
- Not legal, taken from a French novelist (Industrial definition)
- In the merger doctrine, it was a technical impossibility. Here, it is a practical impossibility - people
would not appreciate different kinds of treatment

- A. A. Hoehling v. Universal City Studios Inc, 618 F.2d 972 ( 1980)

o Facts: Hindenburg destroyed; German media captured this. Work was written on who
destroyed this, borrowed from many rumours etc. to come up with a theory. This was then
used by the defendants. Argued it was copyrighted and cannot be borrowed.
 o Held: Court said no copyright on interpretation, it immediately comes into the public domain.
So, the exact way in which it was written cannot be borrowed but the interpretation itself can
be borrowed. No claim.
o Scenes a faire part - heil Hitler slogans, nazi songs being played in the background of both
works. But this is needed if you're showing Nazi Germany, so can't stop others from using it.

- Reyher v. Children's Television Workshop 433 F.2d 87 (2d Cir. 1976)

o Shows the subjectivity of the idea-expression dichotomy, another court could have come to a
different result.
o Facts: Two stories where a child was lost and people asked who the mother was and the child
said my mother is the most beautiful woman in the world. Finally, the one he points at a person
who is not conventionally beautiful, showing how each child thinks their mom is the best
o Held: Not copyrightable, since the idea and expression were merged - the idea being looking at
how a child sees his mother. Cannot be separated, has to be part of public domain
- So, scenes a fair stands for those situations where a particular treatment is felt obligatory (not
because of technical limitations) because the audience will expect in a particular manner and would
be disappointed if portrayed in a different manner and the work would lose out on the purpose for
which it was created.
 
Exception 3: “De minimis non curat lex”
- Meaning: law cares not for triviality.
- The de minimis principle has evolved from case law and embodies the requirement that a literary
work possess a minimal degree of substantiality.
- Non-formality - consequences - anything as long as it meets the standard becomes copyrighted
subject matter theoretically. De minimis sets in in such situations - requires the claims to have some
amount of substantiality, otherwise they would not be protectable even if they were expressions.
- Policy implications - single words, punch lines, slogans etc. are held to not be copyrightable

- Exxon Corporation v. Exxon Insurance Ltd, (1982) RPC. 69

o Argued that Exxon as a word is copyrightable since it was not in the dictionary
o Held: Exxon lacks substantiality

- However, this does not mean simple works cannot be copyrightable.

o This doctrine applies only in those cases the court feels would be a waste of effort in protecting
a work. Moreover, single words, slogans etc. become part of common lingo. Human vocabulary
itself might come into scrutiny if such things are given protection.   
 Subject Matter

Issue 1: What is the subject matter protected by copyright law

- Section 13(1), 1957 Copyright Act - Copyright subsists in:
o Original Literary, Dramatic, Artistic and Musical Work
o Cinematographic Film and Sound Recording
- Section 13(3) - Copyright does not subsist in:
o Any cinematograph film if a substantial part of the film is an infringement of another
copyrighted work
o Sound recording, made in respect of a literary, dramatic, or musical work, if in making it,
copyright in such work has been infringed.
- Section 13(4) - The copyright in a cinematograph film or a sound recording shall not affect the
separate copyright in any work in respect of which or a substantial part of which, the film, or, as the
case may be, the sound recording is made.
o Eg. A and B write story and make film respectively. The underlying work does not lose its
copyrighted status.
- Section 13(5) - In the case of work of architecture, copyright shall subsist only in the artistic
character and design and shall not extend to processes or methods of construction.
o The closest the act comes to recognising the idea-expression dichotomy.
 
Literary Work
- The Indian copyright act does not define it, just says that it includes computer programmes, tables
and compilations including computer databases.
- The UK act, under section 3 states: Literary work means any work other than a dramatic or musical
work, which is written, spoken, or sung, and accordingly includes –
o It further says Copyright does not subsist in a literary, dramatic, or musical work unless and until
it is recorded, in writing or otherwise
▪ Requirement of fixation of work - not in the Indian act but is an implied requirement.

▪ Fixation - must be sufficiently stable such that it can be perceived, understood, and
reproducible. [Eg. Drawing on paper, even if it subsequently burns - fixed. But not a
drawing on a car]
- University of London Press Ltd. vs. University Tutorial Press Ltd. (1916)
o Issue: Are the mathematics examination papers subject of copyright? Whether these
examination papers are, within the meaning of this Act, original literary works?
o Held: The words “literary work” cover work which is expressed in print or writing, irrespective of
the question whether the quality or style is high. The word “literary” seems to be used in a
sense somewhat similar to the use of the word “literature” in political or electioneering
literature and refers to written or printed matter. Papers set by examiners are, in my opinion,
“literary work” within the meaning of the present Act.
o Reaffirms that copyright stands for being non-judgemental about work; and that literary work is
not to be confused as literature in the classical definition [It can be a menu etc., and not a story
- not literary in the conventional sense]
 
- Copyrightability of literary characters
o The question is not whether they are copyrightable, but whether they can be copyrighted
separately from the book. Courts have been open to copyrighting characters - previous case
said as long as they were sufficiently developed
o Warner Brothers v Columbia Broadcasting System (1954)
 ▪ Issue: The court raised serious doubt about the copyrightability of the characters and asked
the following question: Whether it was ever intended by the copyright statute that
characters with their names should be under its protection?
▪ Held: Characters are always limited and always fall into limited patterns and therefore
monopoly over characters might go against the mandate of the constitution [US -
advancement of useful arts and sciences in society]
▪ Court created a distinction where on one side characters constitute the story being told
and characters that are mere chessman in the game of storytelling.
● The former would be deeply developed and could be copyrightable. The minor
characters that cannot be copyrighted would anyway since their weak characteristics
can be seen across many works.
o Inherent in this dichotomy is - if there is no difference between the character or the story since
the character would be so important to and interconnected with it, then would it not be
substantial copying of the work anyway irrespective of whether you copy the story or the
character? One would rather talk about the copyrightability of the story itself.
 
o Warner Brothers, Inc. v. American Broadcasting Companies, Inc. (1983)
▪ Facts: Superman vs The Greatest American Hero. ABC wanted to create a prequel to
superman which was copyrighted by WB. Since prequel, there would be no substantial
similarity of the story so no infringement. But if characters could be copyrighted, then it
would be infringement. ABC dropped the name superman and did the same story by
renaming it the Greatest American Hero. There were many similarities between superman
and the GAH, some catchphrases were only slightly tweaked etc., people could connect the
two even if they hadn't watched superman
▪ Issue: Was any copyright violated since the story was not borrowed but only the character?

● If the character were not sufficiently developed, this could be decided based on the
idea-expression dichotomy. But if the character was sufficiently delineated and
developed, then how to resolve?
▪ Held:

● When, as in this case, the claim concerns infringement of a character rather than a
story, the idea/expression distinction has proved to be especially elusive.
● Care must be taken to draw the elusive distinction between a substantially similar
character that infringes a copyrighted character despite slight differences in
appearance, behaviour, or traits and a somewhat similar though non-infringing
character whose appearance, behaviour or traits and especially their combination
significantly differ from those of the copyrighted character, even though the second
character is reminiscent of the first one.
● Stirring one’s memory of a copyrighted character, is not the same as appearing to
be substantially similar to that character, and only the latter is infringement.
▪ Concluded that the total perception of the GAH character is not similar enough, just a
broad resemblance - one is bumbling but one is confident etc.
● So, the court relied on the idea-expression dichotomy to say only the idea was
borrowed but not the expression. They avoided the question of whether the character
 was copyrightable [If they named the character superman but the substance was still
different, the holding would have then been same as the name would not make the
character similar - But the courts usually default to the idea-expression dichotomy
when they want to protect works]
 
o Leslie S Klinger v. Conan Doyle Estate Ltd.
▪ Facts: Sherlock Holmes - final 10 of the books are still in copyright.

▪ Issue: Apart from these 10, could the character of Sherlock be copied from the others and
placed in different settings to tell a different story? Since 10 are still in copyright, can you
say the character is also copyrighted?
▪ Argument: Copyright on a complex character in a story like Sherlock Holmes whose full
complexity is not revealed until a later story remains under copyright until the later story
falls into the public domain. That some of the stories are in the public domain does not
permit less than fully complexified characters in earlier stories to be in the public domain
[This does not mean they are not complex enough to be copyrighted. They are sufficient to
be expressions, but they are made more complex in each subsequent story so copyright on
the character cannot be exhausted until the last story falls into the public domain ]
o Held:
▪ We cannot find any basis in statute or case law for extending a copyright beyond its
expiration. When a story falls into the public domain, story elements—including characters
covered by the expired copyright—become fair game for follow-on authors
● This is a limited admission of the fact that characters live within their stories and
their separate existence from stories is restricted.
▪ The ten Holmes-Watson stories in which copyright persists are derivative from the earlier
stories, so only original elements added in the later stories remain protected
▪ Lacking any ground known to American law for asserting post-expiration copyright
protection of Holmes and Watson in pre-1923 stories and novels going back to 1887, the
estate argues that creativity will be discouraged if we don’t allow such an extension. It may
take a long time for an author to perfect a character or other expressive element that first
appeared in his early work. If he loses copyright on the original character, his incentive to
improve the character in future work may be diminished because he’ll be competing with
copiers, such as the authors whom Klinger wishes to anthologize. Of course, this point has
no application to the present case, Arthur Conan Doyle having died 84 years ago.
● Policy argument, not legal.

▪ More important, extending copyright protection is a two-edged sword from the standpoint
of inducing creativity, as it would reduce the incentive of subsequent authors to create
derivative works (such as new versions of popular fictional characters like Holmes and
Watson) by shrinking the public domain. For the longer the copyright term is, the less
public domain material there will be and so the greater will be the cost of authorship,
because authors will have to obtain licenses from copyright holders for more material
▪ The estate asks us to distinguish between “flat” and “round” fictional characters, which is
potentially a sharper distinction than the other one it urges, which is between simple and
complex. The additional details about Holmes and Watson in the ten late stories do indeed
make for a more “rounded,” in the sense of a fuller, portrayal of these characters. But this
does not impact the copyrightability of the character in its own right. Copyright can be
 granted only to the additional features seen in the works not yet in the public domain, but
not on the character as a whole.
● Rounded v. flat character is also subjective, has no legal implication
o How do you separate some characteristics from the newer ones?
 
Concl: character can be separately copyrightable if sufficiently developed. But name in itself is not
copyrightable, other attributes - depends on the outlook of the judge.
 
Dramatic Work
- Under the Indian act, a dramatic work includes:
o Any piece of recitation
o Choreographic work
o Entertainment in dumb show,
o The scenic arrangement or the acting form of which is fixed in writing or otherwise but does not
include a cinematographic film.
- Black’s law dictionary: A work setting forth a story, incident, or scene from life, in which, however,
the narrative is not related by words but is represented by dialogues and action; may include a
descriptive poem set to music, or a pantomime
- So, there is an overlap between literary and dramatic work. One difference could be that literary is
more simple and textual but dramatic work has more actions and dialogues
o Story is an essential element.
o Academy of General Education Manipal vs. B. Mallini Mallya (SC, 2009)
▪ Held: Broadly speaking, a dramatic work may also come within the purview of literary work
being a part of dramatic literature. We must, however, notice that the provisions of the Act
make a distinction between the `literary work' and `dramatic work'. Keeping in view the
statutory provisions, there cannot be any doubt whatsoever that copyright in respect of
performance of `dance‘ would not come within the purview of the literary work but would
come within the purview of the definition of `dramatic work'.
 
- Green vs Broadcasting Corporation of New-Zealand (Privy Council 1989)
o Facts: Reality Tv show was copied in NZ. Was this a copyright infringement?
o Held: Despite – or precisely because – the evidence relayed to the court was particularly diffuse
(e.g. gimmicks, the use of a “clapometer”, etc.) the Privy Council held that there was no
sufficient unity or coherence for a dramatic work to exist under copyright law. Neither did it
consider the programme to be a literary or a musical work within the meaning of the (New
Zealand) Copyright Act 1962. [Not a script, which is literary work. It is only general ideas and a
concept note. (Contrast with the Syamvar case where the court acknowledged the pattern in
which the show would unfold is copyrightable as a script - So, Indian courts are more lenient in
considering concept notes as copyrightable)]
▪ While answering if the format of a TV show (Opportunity Knocks) would be a dramatic
work, privy council required any such work to have 2 characteristics of the subject matter
● Certainty

● Sufficient unity

▪ TV format in question was found to be lacking in both

▪ The court said that “the protection which copyright gives creates a monopoly and there
must be certainty in the subject matter of such monopoly in order to avoid injustice to the
 rest of the world…the subject matter of the copyright claimed for the dramatic format of
the “opportunity knocks” is conspicuously lacking in certainty. Moreover, it seems to their
lordships that a dramatic work must have sufficient unity to be capable of performance and
that the features claimed as constituting the format of a television show being unrelated to
each other except as accessories to be used in the presentation of some other dramatic or
musical performance.”
● So, not dramatic work on the basis that the elements of catchphrases or the timing of
use of clapometers etc. There has to be sufficient unity and certainty
o But does not define these - Eg. If a slap happens, it must happen the next time the situation
occurs and must make sense in the background
- TV format as dramatic work may not be protectable but different elements of it can be protectable -
such as its music, logo (through trademark) etc.
 
- Institute of Inner Studies vs. Charlotte Anderson (2014, DHC)
o Issue: Can Asanas of Pranic Healing be categorised as choreographic works as understood in the
definition of dramatic works?
o Held:
▪ The only subcategory of dramatic work in which this could be put is choreography. But
choreography in itself cannot be dramatic work, it has to fit the definition - certainty and
sufficient unity. These two elements arise from the assumption that dramatic work arises
from action based on a story (narration).
▪ So, applying the same test here - Explaining first the meaning of dramatic work the court
said - It is suggested that the essential feature of a dramatic work, as the term implies, is
that it is capable of being physically performed [essential feature of dramatic work but
that in itself does not complete the definition]
▪ To constitute a work a dramatic work something more is necessary than mere capability of
performance in this sense. It is suggested that the work must have been created for the
purpose of being performed, such purpose being a matter to be deduced from the form
and nature of the work - IMP
● However, in order for a work to constitute a dramatic work there must be sufficient
certainty of its subject matter. in the case of a play or a screenplay, this presents little
problem, since what knits the separate incidents together so that they can be
performed as an entity is the structure of the work, or the plot, which comprises the
setting, the characters, and their inter-relationship and development.
● In the case of subject matter which does not fall into any of the obvious types of
dramatic work, however, this requires not only that there should be identifiable with
sufficient certainty sufficient elements or features in such subject matter which are
of a dramatic nature in the sense discussed above, but also that those features or
elements should be sufficiently linked or connected so as to be capable of
performance. - IMP
● So, reiterates the previous two elements.

▪ Thus, by applying the test enunciated and well settled by the authorities in England for the
determining the work as a dramatic work, it can be said that prima facie the Asanas of Yoga
or Pranic Healing do not fall within the ambit of the dramatic work.
● The asanas did not have sufficient unity in the sense that others are united.
 ● Underlying assumption - it is a story-based work.
o Many people say this is slightly restrictive because many works are not given protection -
choreographed fireworks displays, sports show, etc. would not come under protection. On the
other hand, others believe that each element has a purpose and that only clearly identified
categories must be given protection.
 
Musical Work
- The word music is not defined in the act and there is an inclusive definition of Musical work
- Going by the dictionary definition, music means sounds in melodic or harmonic combination,
whether produced by voice or instruments
- Section 2(p): Musical work is a work consisting of music and includes any graphical notation of this
music, exclusive of any words or action intended to be sung, spoken or performed with it.
 
Artistic Works
- Copyright law:
o Sec 2(c) Copyright Act – artistic work means -a painting, a sculpture, a drawing (including a
diagram, map, chart, or plan), an engraving or a photograph, whether or not any such work
possess artistic quality; A work of architecture; Any other work of artistic craftsmanship.
o Very wide definition.
- Designs law:
o Designs Act, 2000 - Section 2(d) “design” means only the features of shape, configuration,
pattern, ornament or composition of lines or colours applied to any article whether in two
dimensional or three dimensional or in both forms, by any industrial process or means, whether
manual, mechanical or chemical, separate or combined, which in the finished article appeal to
and are judged solely by the eye; but does not include any mode or principle of construction or
anything which is in substance a mere mechanical device, and does not include any artistic work
as defined in clause (c) of section 2 of the Copyright Act, 1957
▪ Design – limited to non-functional features [functional - anything that improves the work]

- Art and Design conundrum

o Is there an overlap between the two acts or are they looking at different subject-matters?
Nothing has been excluded from the copyright act definition - Impression that there is an
overlap between copyright law and design law. This impression is strengthened by section 15 of
the Copyright Act.
▪ 15. Special provision regarding copyright in designs registered or capable of being
registered under the Designs Act,2000.-
● (1) Copyright shall not subsist under this Act in any design which is registered under
the Designs Act, 2000.
● (2) Copyright in any design, which is capable of being registered under the Designs
Act, 2000, but which has not been so registered, shall cease as soon as any article to
which the design has been applied has been reproduced more than fifty times by an
industrial process by the owner of the copyright or, with his license, by any other
person. So, this clarifies that whatever is protectable under the designs act is
protectable by copyright. How to reconcile this?

o Microfibres v. Girdhar [Del. HC] - Single judge bench judgement

 ▪ Held: Tried reconciling these two sections. Believed that there is a kind of exclusivity.
Artwork comes in 2 forms - artwork which stands on its own footing and artwork that is
dependent on its utility as applied art. Artworks in their own capacities are excluded from
designs definition, but everything else is part of the definition.
● The two important aspects are - the object with which it is made, which is industrial
and its inability to stand by itself as a piece of art. In fact, it has no independent
existence in itself.
● The exclusion of an artistic work' as defined in Section 2(c) of the Copyright Act from
the definition of design' under Section 2(d) of the Designs Act, 2000 is only meant to
exclude the original artistic works like paintings of M.F. Hussain. It is, thus, the original
paintings, sculptors and such works of art which are sought to be specifically excluded
from the definition of Design under the Designs Act, 2000.
o So, dichotomy. Claimants tried arguing their work was artwork so even if they had
not registered it as a design, it should be protected under copyright. Since it was
not registered, it was not protected as it was only a design.

o Microfibres v. Girdhar [Del. HC] - Two-judge bench judgement

▪ The definition of artistic work has a very wide connotation as it is not circumscribed by any
limitation of the work possessing any artistic quality. Even an abstract work, such as a few
lines or curves arbitrarily drawn would qualify as an artistic work. It may be two
dimensional or three dimensional. The artistic work may or may not have visual appeal.
▪ The rights to which a holder of an original artistic work is entitled are enumerated in
Section 14(c) of the Copyright act. These are the right: (i) To reproduce the work in any
material form including depiction in three dimensions of a two dimensional work or in two
dimensions of a three dimensional work [dimensional shift];
● So, single judge had made the mistake of ignoring this right that is afforded to
Copyright holders. It is a part of the definition, so cannot create a dichotomy
▪ Therefore, it is the exclusive right of the holder of a Copyright in an original artistic work to
reproduce the work in any material form. For example, a drawing of an imaginary futuristic
automobile, which is an original artistic work, may be reproduced in the three-dimensional
material form, using an element, such as a metal sheet.
▪ When the copyright holder of an original artistic work reproduces the same in another
material form, he may, or may not do so by employing an industrial process or means
which may be manual, mechanical, or chemical, separate or combined, on an article.
● If the reproduction of the original artistic work is done by employing an industrial
process, as aforesaid, on an article, and the same results in a finished article which
appeals to the eye as adjudged solely by the eye, then the features of shape,
configuration, pattern, ornament or composition of lines or colours applied to the
article by the industrial process constitutes a ―design, within the meaning of this
expression as defined under the Designs Act.
● There is therefore a clear distinction between an original artistic work, and the design
derived from it for industrial application on an article.
▪ This position is clarified by the use of the expression ‘only’ before the words the features of
shape, configuration, pattern, ornament or composition of lines or colours in the definition
of design in the Designs Act.
▪ Therefore:

● Firstly, the original artistic work, which may have inspired the creation of a design, is
not merely the feature of shape, configuration, pattern, ornament or composition of
lines or colours which are created to apply to an article by an industrial process. The
original artistic work is something different from the design.
● Secondly, the definition of design expressly excludes, inter alia, any artistic work
defined in section 2(c) of the Copyright act, 1957.
▪ It needs to be emphasized that it is not necessary that in every case a design has to be
preceded by an artistic work upon which it is founded. A craftsman may create a design
without first creating a basic artistic work.
▪ Whether or not a design is preceded by an original artistic work, a design would, in its own
right qualify to be termed as an artistic work within the meaning of Section 2(c) of the
Copyright Act.
● Court is saying that the difference lies in the fact that a design is a derivative of an
artistic work. Once the derivation happens through an industrial process, it becomes
design. But until this happens, it does not become a part of the definition of design as
mentioned.
▪ But under the Designs Act, a copyright has a different connotation from a copyright under
the Copyright Act. Under the Designs Act, copyright means the exclusive right to apply the
design to any article in any class in which the design is registered
▪ Once the distinction between the original artistic work and the design derived from it, and
the distinction between Copyright in an original artistic work under the Copyright Act, and
a copyright in a design under the Designs Act is appreciated, the meaning and purport of
section 15 of the Copyright Act becomes clear.
● It is clear to us that the Parliament in Section 15 of the Copyright Act was dealing with
the aspect of copyright in a registered/registrable design, as understood in the
Copyright Act and not the Designs Act. Else, there was no need to deal with this aspect
in the Copyright Act.
● So, copyright on the design part would be lost, but no suggestion that the copyright on
the artistic part would also be lost. Once artistic work has been converted to a design,
but you have not registered but give out copies - the copyright protection would also
be lost, not only the design.
▪ the law tolerates only a limited industrial, or shall we say commercial, exploitation of the
original artistic work by the application/reproduction of the said work in any other form or
reproduction of copies thereof in exercise of the rights under …..the Copyright Act. Beyond
the specified limit, if the design derived from the original artistic work is exploited (i.e. if
the design is applied more than 50 times by an industrial process on an article) the
copyright in the design ceases unless it is registered under the Designs Act.
▪ A perusal of the Copyright Act and the Designs Act and indeed the Preamble and the
Statement of Objects and Reasons of the Designs Act makes it clear that the legislative
 intent was to grant a higher protection to pure original artistic works such as paintings,
sculptures etc. and lesser period of protection to design activity commercial in nature. The
period of copyright would be the author's life span plus 60 years. However, the legislature
has allocated a lesser time span for the protection available to a registered design as only
being 15 years. Thus, commerce and art have been treated differently by the Legislature
and any activity which is commercial in nature has been granted lesser period of
protection. On the other hand, pure artistic works per se have been granted a longer
protection.
● Assume A has designed a statute and later uses a part of it for a lampshade, so the
latter becomes a design. If I have not registered, then A loses his right to object to
others mimicking the lampshade, but can object to the copying of the statute [would
not lose the right over the statute itself]
▪ Thus, while it is not open to the respondent to reproduce such paintings per se, which
formed the basis of the design that was applied to the fabric, nevertheless, such protection
qua the design imprinted on the product through industrial application is available only
under the Designs Act, provided there is a registration. This is precisely why the legislature
not only limited the protection by mandating that the copyright shall cease under the
Copyright Act in a registered design, but in addition, also deprived copyright protection to
designs capable of being registered under the Designs Act, but not so registered, as soon as
the concerned design had been applied more than 50 times by industrial process by the
owner of the copyright or his licensee. This clearly indicates that the legislature intended to
provide industrial and commercial application of an artistic work for commerce lesser
protection
 GITU’S NOTES – Test 3

Copyright Law – Test 3 (Final)

1 Question of Functionality and Section 52 – overlap in Copyright Law and Design
Law.
2 Overlap between the two definitions
3 Microfibers case – Delhi HC attempts to reconcile the 2 provisions – every design is
based on an underlying artistic work that is excluded from the definition of design.
When the artistic work is converted into a design there is overlap. Once created and
not registered and 50 copies are created, you lose the copyright over the artistic work.
4 Functionality under S.52(1)(w)
Provided that he does not thereby repeat or imitate the main design of the work;
(w) the making of a three-dimensional object from a two-dimensional artistic work,
such as a
technical drawing, for the purposes of industrial application of any purely functional
part of a useful
device Does not infringe upon copyright.
a. Functional design – even if more than 50 copies created?
b. S.52(1)(w)

c. Fair Use and Fair dealings – actions of a user that would be excused from the
charge of infringement
i. Making of a 3D object from a 2D work such as technical drawings of
useful devices/machinery
ii. Copyright law avoids the situation wherein a drawing that should
technically be under patent law, is under the public domain in
copyright law as well. Copyright law does not become a back-door for
protection, since the patent law has a high bar.
iii. What is a functional piece of art and what is aesthetic? – often
something functional will also be aesthetic. Therefore, how is it
protected? India – does not have substantive comments on the
definitions.
d. Functional Designs – UK Position. Lucas Ltd. v. Ainsworth
i. Stormtrooper helmet in Star Wars is in question. Ainsworth was
involved in the creation of the helmet’s design. 20 years later he found
the moulds that were used to design the helmets. He made copies that
were going to be sold to fans. Lucas Films claimed that it had a
copyright over the artistic work.
ii. Definition of artistic work – graphical work, sculpture, etc. Need to fall
under one of these sub-categories.
iii. Is the helmet a sculpture (and therefore, aesthetic design that falls
under copyright law) or a functional drawing, in which case a section
similar to S.52(1)(w) would apply.
 iv. Could a sculpture be any 3D figure? Or are there functional concerns
that defined the differences between the two
v. UK SC – not under the definition of sculpture under copyright law. J.
Mann defines sculpture – guidance factors can be extracted including
some regard to the normal use of the term sculpture. It would be
inappropriate to stray too far from the regular understanding. Not
every 3D representation of a concept is a sculpture, otherwise any
3D construction would be considered to a sculpture, which is
inaccurate. Definition of sculpture is not limited to what is found in
art galleries, but should not move too far away from the original
definition.
vi. It is of essence that it has a visual purpose of enjoyment. Purpose is
based on the creator’s intent.
vii. Is it a work of the artist’s hand – If the work has been done by the
artist’s hand there is a high probability that it will be considered art,
and not a functional design
viii. Choices about the art are choices that are not determined by the
utility of the product – should be seen as a non-functional entity.
ix. Therefore, Stormtrooper helmet did not have artistic purpose and their
primary function was utilitarian to be worn as items of costume, and to
be worn in films. Therefore, they went beyond the normal
understanding of sculpture. Therefore, not protected under copyright
law.
x. If it is functional, under English law the design would be utilised to
create an item of utility, since the law permits them to use the design.
e. US Position – Brandir International Inc. v. Cascade Pacific Lumber, 1987
i. Facts – Artist was a cycling enthusiast. With long pieces of wire he
made models of a bicycle, and an irregular fence model. One day he
ended up keeping the bicycle piece along with the fence. Another one
of his friends saw the art together and he thought that it could be
converted into a bicycle stand – ribbon rack.

Ribbon Rack

ii. They created a final design which was different from the original
rough draft conceptualisation. Was the cycle stand a piece of art or a
functional design?
iii. Previous positions – in your mind as a viewer you are able to
separate the aesthetic from the functional, there is sufficient
separability. Therefore, should be seen as a pure piece of art to be
protected under copyright law.
iv. Another position – How did they reach the design? What were the
compulsions of the creators? Did they have the ability to enjoy the
work, or was it a compulsion that was based upon necessities?
v. Rely upon Academician Dan Ecola – separation between industrial
design and works that were created outside of the design process,
despite the context in which they appear. Attempt to identify
elements that show the unrestrained aspect of the artists.
Dominant aspect of design – utilitarian, non-aesthetic concerns.
Therefore, copyrightability should depend upon the artistic
 features of the work, while not considering the utilitarian aspects –
Conceptual Separability
vi. Final refinement was purely dependent upon function to create the
ribbon design. Not dictated by the freedom of choice of the artist, but a
bicycle rack that can stack as many items as possible. Therefore,
despite the aesthetic nature, since the design was finally dictated by
functional aspects, it could not be protected under copyright law.
vii. Physical separability - when a piece of art is later added to something
more functional. When they cannot be physically separated, conceptual
separability – conceptually can the art be separated from the function.
Minority judge stated that this was reduced to vanishing point under
the present law.
Class 12
Photographs

1. Sub-category of artistic works

2. What do we protect under this subject matter? – different category since the subject
matter is unique

3. Idea-expression dichotomy becomes important to understand.

4. Time Incorp. V. Bernard Geis Associates
a. Last moments of Kennedy right after he was shot and he slumps onto the
shoulders of his life. Photo has been taken by someone who was passing by. It
was the only evidence of how or where he got hit. All the investigation about
where the shooter was located depended upon the angles of this picture.
b. Investigative work – conjecture and guesses in the work needed the support of
the photograph to substantiate their argument. Therefore, they needed to
situate the photograph in the book.
c. They created a charcoal impression of the photograph and included it in the
book after permission was denied.
d. Is this photograph copyrightable since it was merely capturing reality before
the camera?

e. Court relied upon the academic opinions that

f.
 g.

h. Therefore, Nimmer on Copyright – photographer’s multiple choices including

time, angle etc inject originality into the work. Therefore, more than merely
reality.

5. Donald A. Harney v. Sony Pictures

6.
a. Facts - Right is the original and the left is the copy. Harney is the
photographer and the person in the father-daughter photograph to click a
typical Sunday mass scene in America. He saw the father and daughter
coming out of the church after taking their permission. Later, the picture
became part of a big scandal in USA. There was an allegation that he had
kidnapped the ‘daughter’. He pretended to belong to Rockfeller family, and
then got married and had kids. Later, when the marriage soured he ran away
with the child. This was the last photo of the father and the daughter that was
available. This was used by the police on posters, and the photographer did not
object to its usage.
b. The episode became so popular that Sony Pictures wanted to use the picture
when they were creating a documentary drama based around the event.
Therefore, they created a similar image with their actors for the documentary
poster. It was clearly an attempt to recreate the first.
c. How much of the content of your photograph is original? In this case did they
copy the idea or the expression of the photograph.
d.

e.
 f.
g. Therefore, according to the Court, the major expression of the
photograph were the Church symbols in the background. Similarity of
the piggy-back pose was just an idea that was extremely common, and
therefore was not protectable. Further, the impressions of the photograph
were different due to differences in light and colour. There will always be
subjective distinctions between what is considered to be an idea and an
expression. In this case, the photographer had not asked for them to pose
in that position. Therefore, they were not involved in the creation of the
subject. Usually choices include how you want the subjects to pose.
h. Does intention to copy matter? No, since it is a strict liability regime.
However, it may affect the penalties that are paid.
7. Oasis Case – cover for music album. They hired a photographer. Artists were called
and they were asked to pose with a car in a drained swimming pool in a particular
swimming pool for the cover. A member of the press took a picture hiding with the
artists in the same arrangement. However, the original photographer had
conceptualised the entire shoot, the position of the musicians, etc. Does he have any
right over the picture that was taken? The court stated that since he was only
capturing a temporary arrangement and not copying from your image, it was not
copyrightable. Therefore, there is uncertainty about the actual principle.

Class 13

1. Rights Under Copyright

a. Economic Rights – based upon the money that you get out of the product that
you have created. The work and its commercial exploitation becomes possible.
b. Moral Rights – personality related impact. The impact that the exploitation of
your work by other people will have on you. Based upon the author’s
personality and the work that he has created.
2. Economic rights –
3. Section 14 of the Copyright Act
 a.
b. Therefore, it is a bundle of economic rights. Instead of just the right to copy
which is what it originally was
c. Rights available to you are negative rights and you can stop others from doing
any of these things.
4. Right to Reproduce

a. For someone to violate your right it must be in a permanent form

b. Reproduction is not limited to public acts. Further, making copies in itself is a
violation of copyright. They do not need to distribute copies to violate the act.

c.
d. MAI systems corp v. Peak Computer Inc (1993)
e. MAI systems manufactured computer systems and they provided software
with their system. Customers would acquire the software as licensees.
f. They were also offering repair services.
 g. Peak Computers was started by employees of MAI, and they offered
repair services for computer systems including the MAI systems which
ate into the MAI business of repair.
h. Some of the customers who bought from MAI used to repair their computers
at Peak Computers. The issue that arose was that since the MAI licensed
software, rights are provided only to their customers through their agreement.
When a customer boots the system a temporary copy is created in the RAM.
This right does not belong to a third party.
i. Therefore, when Peak boots a system and a copy is created in the RAM it
amounts to the creation of a copy that is against copyright law.

j.

k.
l. Since a copy has been created that can be sufficiently perceived, this
amounted to copyright infringement.
m. However, later American law included a clause to include third party
repairs. This does not take away from the decision that temporary copies are
copies of the work that can have repercussions.
5. c – private research, thesis, reporting current events, criticising someone’s work. If
copyright law is interpreted without these safeguards, there would be significant
limitations. Bona fide is allowed. These defences are necessary to allow people to
work.
a. This clause is necessary to protect users from infringement in the case that
transient or temporary copies of software are being created that you did not
intend to create.
b. Technical communication – copies that are created on temporary servers.
c. Judicial interpretation
6. S.31C – version recording – Allows cover versions of sound recordings for dramatic
or literary works
7. Right to Copy v. Right to Reproduce (both these rights are negative rights)
a. Cinematographic films you have the right to copy, whereas other artistic
works have the right to reproduce .
b. Sound recordings – have the right to copy the work
c. Star India v. Leo Burnett (2003) 27 PTC 81 (Bom)
d.

i. Tide had hired some of the artists from the series and re-created some
of opening song for their brand.
ii. The producers argued that their right in the serial has been violated
since their opening song was mimicked. There is an unmistakable
similarity between the two even from the eyes of the viewers.
iii. Only those works that have been allowed to be recorded once can be
re-recorded. If you have allowed for music/words to be recorded they
can be re-recorded.
iv. Since the commercial is similar to the TV show, is there a violation of
the right to reproduce?
e.
 f.

g. Bharti agrees with this legal position in light of the statute

8. Shree Venkatesh Films v. Vipul Amrutal Shah (Calcutta High Court)– the
producer of Namastey London sued a production company for creating a Bengali
movie with a substantially similar plot and on similar lines.

9.
 a.

b.

c. In this case, the court stated that S.14(d) refers to copying as being carbon
copied or replicated, and then later includes other elements also. Does not
acknowledge that only the term ‘copying’ has been used which has a
specific meaning.
d. In this case – there was an issue of the underlying story having been copied.
Therefore, they could just consider infringement of the literary work. Did not
need to look at the shooting style. Did not need to consider these other
elements. Did not need to interpret the word copy.
10. Should we interpret the law with respect to cinematographic films in a narrow sense.
a. Term copy has been used for movies, while they have used reproduce for other
films.
b. Cal HC did not mention why the law should be interpreted liberally. Cal
HC mostly moved by the fact that the stories were similar.
c. Restrict the right to copy – since it is usually based upon underlying works
such as the script, the musical work, performances by the actors.
Therefore, the cinematography only brings other elements together,
which should be a limited right.
 d. Alternative interpretation – different directors have very different styles
and will have very different results, and therefore, should have greater
protection. Therefore, copy should be read in an expansive sense.

Class 14

1. Should we see the distinction between recording as copy as a conscious decision?

Distinction between Bombay HC and Cal HC decisions
2. Bombay HC correct according to Bharti – since they use different words and has
different intentions.
3. Shree Venkatesh v. Vipul Amrutal Shah and Ors. – similarities arose from the story,
and not the cinematographic film. Therefore, decision could have been given
according to this, and not the right to copy in film.
4. Alternative Perspective - Cal HC presents a better overall understanding of
cinematographic works, that they should ideally be given broader perspective.
a. Spicy IP posts – How should we look at the question of cinematographic films
i. Some aligned with Bombay HC – since cinematographic work is not
an original work of authorship. S. 13 creates a distinction between
original literary, dramatic or musical works and the other set of
cinematograph films and sound recordings (since they are mostly
not original works, and based on the works of someone else)
ii. Rebuttal - interpretation of the Cal HC does greater justice to the
expectations of the owners of cinematographic works. Hugely unfair to
consider it to be a collection of the underlying works. Not only about
bringing these other elements together. Huge amount of original
artistic works are involved. It is something more than the sum of
its parts. Complex creative acts. Many creative decisions are
needed through each scene – 100s of aesthetic, administrative
choices. Editing makes a huge difference.
iii. Concentrate on definitions in the act – also agree with the Cal HC.
iv. S. 2(f) – “cinematograph film” means any work of visual recording
5[***] and includes a sound recording accompanying such visual
recording and “cinematograph” shall be construed as including any
work produced by any process analogous to cinematography including
video films;]
v. “any work of visual recording” – has to be a work of authorship to
create a copyright. There is a creative element that is highlighted
within the definition.
5. Differences between Cinematographic Films and Sound Recordings –
Cinematographic films have more elements of originality than sound recordings
which are almost only a combination of lyrics and the scoresheet.
a. Prior to the 1994 Amendment – the cinematographic films definition was
much narrower. After the amendment the expression was altered,
highlighting its importance
b. 2012 Amendment – cinematographic film is defined separately from visual
recording. Therefore, they should have separate understandings. A film is
considered to be something greater than a mere visual recording. It is more
than the sum of its parts
c. Sound recording definition has also evolved, but in a different manner from
cinematograph – therefore, sound recording is actually limited to the
 physical copy. The elements that are required for a sound recording and a
cinematograph film are extremely different.
d. Sound recording has more of a reliance on the underlying works.
e. International IP Regime – sound recording was always a part of non-core
treaties (not in Berne Convention) – it was in the Rome Convention, and
WIPO Phonogram treaty (not WIPO treaty). Therefore, the two works are not
comparable. Therefore, they are not of similar nature within the Indian Act
and internationally.
f. Therefore, a cinematograph film is more similar to the other categories under
S. 13, instead of the sound recording.
6. Further, under Berne Convention the definition has evolved. A cinematograph work
shall be considered to be similar to an original artistic work. – S.14(d)(1). Copying a
film is not similar to copying a recording. Film is something more than a recording.
The words have been defined differently under the Berne Convention (Read the Spicy
IP Article)
7. Right to Perform or Communicate
a. To perform the work in public or communicate the work in public. Thus, only
those performances or communication would be infringement which can be
considered as public use.
b. S.52 1 (j), (k), (l) – what is excused despite public performance. If were not
exceptions- Infringement would take place for innocuous activities
(j)the performance, in the course of the activities of an educational institution, of a literary,
dramatic or musical work by the staff and students of the institution, or of a cinematograph
film or a sound recording if the audience is limited to such staff and students, the parents and
guardians of the students and persons connected with the activities of the institution or the
communication to such an audience of a cinematograph film or sound recording;
(k) the causing of a recording to be heard in public by utilising it,—
(i) in an enclosed room or hall meant for the common use of residents in any
residential premises (not being a hotel or similar commercial establishment) as
part of the amenities provided exclusively or mainly for residents therein; or
(ii) as part of the activities of a club or similar organisation which is not
established or conducted for profit;]
(l) the performance of a literary, dramatic or musical work by an amateur club or society, if
the performance is given to a non-paying audience, or for the benefit of a religious institution;
S. 52 (za) - the performance of a literary, dramatic or musical work or the communication to
the public of such work or of a sound recording in the course of any bona fide religious
ceremony or an official ceremony held by the Central Government or the State Government
or any local authority.
8. S. 2(ff)
a. Does not matter – how many individuals actually watch it
9.

10.
a. If a broadcaster is distributing information through their TV channels without
having a right to the same that will be considered to be communication to the
public.
b. Does not need to be in front of a stage, can even be in private spaces.
c. Definition of ‘public’ – not determined by the space, but the nature of the
audience that is receiving it
11. Supercassette v. Nirulas Corner House (Delhi HC)
a. Work that had been copyrighted by Supercassette was being broadcasted by
Nirulas in their hotel rooms on their TVs.
b. Violation of their right to publicly communicate

c.
d.
e. The cable operator was providing a genuine connection through the TV,
however was this still considered to be performance to the public. Being
received at a centralised place, and then sent to the rooms.

f.

g. Court held that it would be considered to be a public performance

h.

i.

j.
k. Therefore, temporarily private space will still be considered to be public
space, since the area in general is open to the public. After one person goes,
another person comes, etc. Therefore, hotel rooms, restaurants, etc. that use
TV sets/radios to make a work available to the public effectively communicate
with the public. If that happens without permission it would be problematic.
l. Converting the TV signal into something that is watchable is a
communication. Therefore, in a public space a license clearance is necessary.
Further, it is a commercial set-up, and therefore the earnings should be shared.
m. Any commercial consumer would have to seek rights clearance.
 n.
o. Highlights the importance of proportion – the nature of the activity of the
establishment and the integral connection of the infringement complained has
with it. This was not the ratio of the judgement, therefore cannot be securely
relied upon. Therefore, need to consider whether it is a single vendor or a
franchise.
Class 15
1. American discourse on radio and television signals and the meaning of
communication/performance

2. Private rooms in hotels/hostels are not private for the purpose of copyright law.
Suggestion for the establishment – seek clearance from copyright societies.
3. Copyright societies – provided for under the act. Therefore, a person seeking license
does not have to trace every creator individually. Get rights cleared from them –
blanket license for sets of their work.
4. Suggestion emerging – rights clearance for commercial units. Feed to the cable
connection being legitimate does not mean that once you receive it, it’s not public
performance/communication.
5. Evolution in USA –
a. Last 3 cases – American discourse has an analogy between what happens
when they view something on the radio/TV and when they view something on
stage. There is a dividing line between the audience for the theatre which also
exists when they view something on the radio/TV. Reception of signals and
their conversion into something that can be heard or seen should be placed on
the audience side of the divide. Specific exceptions on the use of radio/TV in
smaller commercial establishments.
b. Aiken Exemption – Twentieth Century Music Corp v. Aiken
c.

i. Exemption for “Mom and Pop” shops since they have the radio/tv for
their own enjoyment
ii. The proportion of the act is important. May excuse common lobby, but
the TV sets in each room and enhancing its appeal.
iii.

iv. If you play something by choice such as cassette recordings, those

would not be exempt from the interpretation of public performance.
d. Fairness in Music Licensing Act – Law exempted small bars and
restaurants from paying royalty fees.
i. Not applicable to businesses that played live music, juke boxes,
pre-recorded music etc.
e.
 f.

g. EU had a problem with the law and took them to court. They took USA to
WIPO tribunal over the law, and USA agreed to pay them a certain
amount due to the law that exempted a large portion of bars and public
spaces.
h. Not all jurisdictions are equally meticulous about deciding exemptions – India
is ambiguous, and purely suggestive.
i. Finland – Taxi association was successfully sued since the taxi radios were
on even when there were passengers in the taxi present, and therefore,
should be paying royalties for the same.
6. Right to Dub as part of right to communicate
a. Mr. Thiagrajan Kumaraja v. MS Capital (Madras HC)
b. Tamil story was to be converted to a film and entered into a contract with the
producers for the creation of a Tamil story. The producers dubbed into Telugu
and remade the movie for Telugu audiences, and they did not consult the
owner of the script. They did not take his permission.
c.

d. Film available for being seen or heard or “otherwise enjoyed” – enlarges the
scope of communication. Without it, would have been limited to obvious
sensory attributes. Therefore, dubbing falls under the ambit of expression
communicating to the public
 e.

f.
g. Unconvincing – convoluted meaning to “otherwise enjoyed”. Besides
sensory enjoyment, however, even a dubbed film is finally for sensory
enjoyment (seen or heard).
h. Right to remake the film does not belong with the film owners, and they
have to take permission from the author of the script, since it does involve
translation according to the Calcutta HC.
i. Dubbing happens without the translation of the screenplay. Dialogues will
have to be translated through which the work will be remade or dubbed.
The dichotomy between dubbing and translation was unconvincing.
j. Further, the court added that if in the contract, the owner had retained the right
to dub, the film owners would not have been able to dub it without permission.
This is problematic since the rest of the interpretation seems to indicate that
the rights of the film owner does inherently include the right to dub, however,
the court have also claimed that it can be retained by the writer.
7. Right to Distribute
a. S. 14 of the copyright act gives the author the right to issue copies of the work
produced.
b. Right to Distribute is limited by the first sale doctrine, does not include
subsequent distribution

c.
d. Art. 11 of TRIPS – restrictions to the first sale doctrine
i. Art. 11 – In respect of at least computer programs and
cinematographic works, a member shall provide authors and their
successors in title the right to authorize or to prohibit the
commercial rental to the public of originals or copies of their
copyright works. A Member shall be excepted from this obligation in
respect of cinematographic works unless such rental has led to
widespread copying of such works which is materially impairing the
exclusive right of reproduction conferred in that Member on authors
and their successors in title. In respect of computer programs, this
obligation does not apply to rentals where the program itself is not the
essential object of the rental.
ii. Exemption – since computer programs are too easy to be copied,
and if this can be distributed uninhibited by the owner of a single
copy, there will be too many secondary versions. Therefore, it was
felt that greater control was needed in the case of films and computer
programs.
iii. The same phenomenon is also possible with books, but policy makers
felt that physical imitation of books is much harder.
p. Why is this doctrine important?
i. Impacts affordability and availability for users of books and authors.
ii. Affordability – first sale doctrine ensures that there is a
competition for retail price. Retail price competition ensures that
affordability is maintained.
 iii. Creation and sustenance of the secondary works market. They cost
lesser and this impacts the question of affordability. Many people can
buy second-hand.
iv. Rental market becomes a viable medium – renting is cheaper than
purchasing copies
v. Public lending could not be done unless the right to distribute is not
exhausted after the first sale of the copy.
vi. Availability – after works go out of print
vii. Works are withdrawn by the authors of the work. Continental
countries provide the right to withdraw for authors. The
availability of the work can continue in most countries due to this
doctrine, since the right to distribute is exhausted.
q. What happens if you insert conditions at the time of sale?
i. John Wiley v. Prabhat Chandra Jain

Class 16 – First Sale Doctrine

1. First sale doctrine – based on a property law doctrine. After sale you have lost the
right to control the property or any resale
2. Bobbs - Merrill Co v. Straus (American case) – rights of copyright owners are
enhanced through certain conditions at the time of sale
a.

b. Intention of the publisher – their old works do not become a competition for
their newer copies that are published
c. Is the violation of this clause copyright infringement?
i.
 d.

e.

f. therefore, copyright owners cannot extend their rights through these

statements. It is a purely statutory issue, contractual interpretation is not
relevant.

3. John Wiley v. Prabhat Chander Kumar Jain (Delhi HC, 2010)

a. Booksellers were purchasing books written by Wiley through their Indian
subsidiary. The books in their front-book mentioned that the works are only
to be circulated in the Indian sub-continent, and nowhere else.
b. When they were being sold online they were also purchased by customers
outside India. Geography in which copy could be resold was limited.
c. Para 45 – Copyright is a bundle of rights so authors may reap the benefit
of their creations. The rights also allow them to exploit the work to the
maximum and allows territory wise distribution. Several branches of
technology allow people to use the author’s work through exploitation–
distribution, cable, radio, multimedia rights operate to the exclusion for each
other. This includes licensing to different parties in different countries or
areas.
d. Copyright owner has the means to exploit their rights in various forms.
Rights can be exploited in many ways through the multiple technological
advents. Owner-centric philosophy adopted by the court – rights are meant to
enable and reward authors for their works.
e. American court – focussed on balance between public and private interests,
but this court starts by focussing exclusively on the property centric approach.
f. Court was focussed upon licensing of the subject matter – therefore, S.14
(right to distribute) is subject to S.30. S.30 licensing allows for the
conditions and limitations. Territory wise licensing is applicable – it
allows for maximum exploitation of works. In this case, John Wiley has
authorised licensing for the Indian subsidiary.
S. 30 - The owner of the copyright in any existing work or the prospective
 owner of the copyright in any future work may grant any interest in the right
by licence in [writing by him] or by his duly authorised agent:
Provided that in the case of a licence relating to copyright in any future work,
the licence shall take effect
only when the work comes into existence.
g. Therefore, copyright protection would be extended to the geographical
restrictions. However, this is in contrast to the previous judgement
h. S.14 and 18 talk about the transfer of copyright – subject to regulation by
clauses. However, when a consumer buys the copy they do not buy a
copyright, but only a physical copy of the work.
i. When purchaser of a copy buys a copy of the work, they purchase a physical
commodity of the book. Therefore, is this space regulated by the licensing
arrangement.
j. Rights of a licensee are not the same as the owner – court created a false
dichotomy. Therefore, John Wiley’s Indian subsidiary as a licensee could
not challenge the sale of the copies in another sub-continent, however the
original company could.
k.

l. The acts of selling the books from India or offering from sale through the
website and accepting the money violates the rights of the owners of
copyright.
m. Therefore, they the court stated that there was a prima facie infringement of
copyright. Indian subsidiary that is a licensee may not be able to complain that
the copies being published are being sold outside India. However, the
principal company can object to the sales in other territories.
n. Assuming American law does not have a problem with this, but India
does not allow it – it gives the Indian Copyright Act extra-territorial
jurisdiction, since it will apply Indian law to transactions in other
countries. Therefore, this judgement is an inaccurate interpretation.
o. If John Wiley does not have such a right in US, it would create a right in India.
 4.

5. Court stated that Position of licensee is equally applicable in the case of

computer software. It is mostly licensed and sold with limitations, and
purchasers are aware of these limitations. Therefore, they are within the notice and
bound by these conditions, and therefore, may be liable for copyright infringement.
6. The Court states that the Indian subsidiary cannot transfer more rights than it has.
Therefore, even the publishers are only licensees and the foreign company can
continue to retain rights over the property
7. Publisher – only a licensee and has the right to transfer the title in the copy.
a. Difference – software is licensed, and therefore even purchasers never
becomes the owner. However, this is not the case for authors.
b. None of us are license holders – software – the deal is for one of the rights
under Copyright law. However, with books, the purchase is not as a licensee.
Right to read is not available in copyright, and therefore, cannot be restricted
only to that.
c. Court believes that the licensee acts as your agent.
8. Terms and Conditions were between two parties, the final purchasers were not privy
to the contract, and therefore, not applicable on the final purchasers or retailers.
9. Comparison with the American opinion – forgot to take cognisance of the fact that the
allegation was of copyright infringement and the expansion/extension of copyright
that cannot take place.

10. First Sale and Parallel Imports

a. What happens in the second-hand books market?
b. Concern extended to the capacity to purchase books that are not published and
circulated in India – Can I buy it from another market and bring it in India and
sell it to Indian consumers? – dependent upon whether parallel imports is
possible
c. Parallel imports – import by a person that does not own the copyright
and does not have permission to use the copyright
d. Whether it is possible or not depends upon whether they follow national or
international exhaustion
i. National – parallel imports are not possible. Since, the jurisdiction is
the national jurisdiction. If India has national jurisdiction, parallel
imports will not be followed and foreign goods cannot be sold in India.
Anything sold in another country is not considered to have been
sold yet, therefore, if that copy is brought into the country it
violates the right to distribute.
ii. International – it is possible.

Class 17
1. American case – Kirtsaeng v. John Wiley and Sons – International Exhaustion
a. Books that he was supposed to read for college were also available at his home
country (Thailand) for much cheaper. Some of the books he sold in America
after his relatives shipped them.
b. Therefore, John Wiley had the Thai product as a competition to the American
product.

c.
d. Right to importation – If the owner of the copyright has the right to
importation, then parallel imports are not possible. An isolated reading of S.
602(a)(1) suggests that they have the right to importation, but it must be
read in light of S.106
e.
f.
g. Therefore, you have the right to distribute however it is subject to the
limitation that after the first copy is sold you can no longer control the
manner in which it is distributed. Does not qualify the right of the owner
in any geographical sense. Therefore, once a copy has been circulated
anywhere in the world, the first sale doctrine applies and a copy in circulation
exists.
h.
 i.

2. Comparison with Prabhat Chandra Jain – American courts allow for the
circulation of foreign goods after the first sale, however, Prabhat Chandra Jain
states that the country will not allow the sale of these goods to USA from India.
3. S.2(m) –

4. S.14 - Meaning of copyright (does mention that you do have the right to circulate
copies not already in circulation. No geographical conditions mentioned)
5.
6. S.2 and S.51(b) are circular – allowed to bring in one copy for individual – both say
that you cannot bring in infringing copies. However, S.51(b) states that the copies can
be brought for personal use
7. S.16 – No copyright except as provided by as the Act
8. Therefore, does India have national or international exhaustion?
a. Academics – support international exhaustion. Only infringing copies should
be restricted. No right to import mentioned anywhere
b. Judiciary –
c. Penguin Books v. India Book Distributors

d.
e. Read by the court to mean you have the right to first sell in India.
Therefore, they were granted the right to importation and others could
not import the work without the permission of Penguin Publishers.
f. Right to importation was read under the right to publish – to change the
scope of this
 Later Amendment changed – to issue copies of the work to the public, not
being copies already in circulation (amended to reflect change in
jurisprudence)

i. Legislature wanted to clarify that the right was limited to right to sell
for the first time, after that, they lose the right to distribute.

9.
10. Warner Bros v. V.G. Santosh [MIRP2009(2)175]
a. Right is exhausted only on the circulation of a copy that has been printed and
sold in the market, right is never exhausted on the copyright itself.
b. Video library owner in Delhi – bought movies in America that had not been
released in India, and he was renting them in India.
c. Court clarified
 d.
e. Anything that has been circulated with the permission of the copyright owner,
will be treated as a copy that is already in compliance.

11. Right to Adapt/Creative Derivative

a. Literary and dramatic works – variations that can be brought into a work
amounts to an adaptation
b. America – derivative works.
c. Work consisting of editorial revisions, annotations, or other modifications that
create a different work of authorship is also a derivative work.
d. Lee v. ART Company
i. ART Co. bought works by Lee. They pasted the artwork on tiles and
then sold them. Lee objected on the grounds that this created a
derivative work.
ii. Does this amount to transformation?
iii. 9th circuit judgement – pasting on ceramic tiles led to the creation of
artistic works.
iv. This court differed.

v.
 vi.

vii. Should have the capacity to be considered an original work, which is a

standard that must be met. In this case there was no real change of the
work, and therefore, it was not derivative. Does not lead to
transformation of the work.
Class 18
1. Macmillan v. Cooper
a. For adaptation of a work – the work must reflect elements that are elements of
authorship. Not an adaptation – will remain in the public domain
b. Abridgement of work was prescribed in the syllabus in Bombay University
that had been created by a company. Mentioned as an example of adaptation
under the Act.
c. Macmillan’s adaptation – taken paras as it is from the main book and excluded
many. Disjointed paragraphs – to provide continuity added lines. Otherwise
mostly copied verbatim. Collection of paragraphs – abridgement.
d. Is this reduced form of the work considered to be an adaptation (abridgement)

e.

f.
 g.
h. For abridgement to generate a copyright it must be a work of original
authorship. Since this was a collection of separate paragraphs it did not
amount to abridgement of the work. Therefore, it must have the capacity of
standing on its own feet as protectable subject matter.
2. Lewis Galoob Toys v. Ninetendo America
a. Modified version of videogame
b. Nintendo created a Home Gaming system that requires cartridges that are
produced by Nintendo or can be created by people licensed by Nintendo.
c. Player controls one of the game’s character by pressing buttons and can
progress through the game. The device ‘genie’ is manufactured by Galoob that
allows the player to alter upto three features of a Nintendo Game. It can
increase the number of lives, increase the speed of movement and it can hover
over obstacles.
d. The player can access these alternations of the ‘genie’ by entering codes into
the programming manual. The genie is inserted between the cartridge and the
entertainment system. It does not alter the data that is stored on the Nintendo
and all the changes that it makes are temporary.
e. ‘Genie’ was facilitating the creation of derivative works by the players of the
game. Would the producers be responsible for the infringement of the right to
create a derivative?

f.
g. Therefore, additional element of adaptation – comes into existence only if its
effects are permanent. If they are temporary, derivative cannot be created.
Because the variation is temporary and only when you are playing the game, it
cannot be said to be a derivative work. Modifications must be present in a
permanent or concrete form.
h. Earlier case – Midway v. Arctic International
 i. Modified version of game presented and the court upheld that there
was copyright infringement
ii. Therefore, the court contrasts the two cases – computer chip that
increased the speed of the play. The Arctic chip copied and
substantially altered the chip that had been created by Midway –
alternative chip. Game genie does not incorporate the copyrighted
work, nor does it serve as a substitute to the Nintendo cartridge. It only
manipulated the data from your cartridge to the entertainment system.
It does not create an alternative. The game genie is useless by itself and
does not sub-plant demand of the original work.
iii. No creation of a derivative work.
3. Kind of Rights – Moral Rights

a.
b. Based on continental European jurisprudence is the basis for moral rights.
Europe – where it is present in the strongest form
c.
i. Different from economic right – In this case the spirit of the right is
when do you want to let the public know that you have written
something and want to publish it. More about the first publication of
the work

d.
4. TRIPS – deals with the economic aspect of rights, and does not deal with the moral
aspect of rights. Berne Convention does speak about it – Article 6

Only the right to paternity and the right to integrity of the work are internationally
recognised. You have to commit to this if you are part of the Berne regime as a
minimum.

Different jurisdictions have different outlooks on moral rights

England and India – similar to Berne Convention. America – limited version of moral
rights (VARA – moral rights are applicable only to limited works of Visual Arts).
France has a bouquet of rights that are available. The condition of the distortion or
mutilation of the work being prejudicial to your honour is not present in France,
however it is strongly present in the Berne Convention and other regimes.

Moral Rights in India – mimics the Berne Convention

 General debate on Moral rights and challenges – Digital era
Should they exist for works of art and to what degree? –

5. obviousness of a moral rights regime has become clear since the threats to the
integrity of an author’s work has increased drastically in the digital era.
6. Right to authorship has been non-complicated, and has not been debated. However,
many believe that the right to integrity should be reduced with the digital era since the
conception of art that existed in the moral rights regime has become obsolete. Europe
originally– art was mostly seen in unique, hard, physical copies. However, today there
are multiple digital copies immediately. This reality is linked with the fact that any
computer has the potential to alter the integrity of an artwork. Pre-digital era
manipulations could be traced and enforced. However, now it is impossible to trace
where manipulations have happened and to penalise individuals. Modern world –
most acts of creativity enter into streams of commerce, unlike the romantic
conceptualisation of art (patrons of art were only buying art for aesthetic purposes).
Copyright XIX
MORAL RIGHTS [Contd.]

● Moral rights is a part of the civil remedies section in India. This is called the
"author's rights" and not moral rights. This is effectively a civil remedy in the
country and not a copyright one.

o The proviso to Sec. 57 provides for an exception in cases of manipulation by a

lawful holder of a computer copy.

o S.57 – Author’s rights

o The explanation states that this cannot be invoked just because you don't like
the presentation.

● Manu Bhandari v. Kala Vikas Pictures

o At this time, the section was structured differently so interpreted differently.

Not sure if it exists as that right now.

o The issue was that M was a famous novelist. She wrote a novel named "Aapka
Bunty" about a child growing up with parents who had a troubled marriage.
She entered into a contract with K to make this a film. K was allowed to make
some changes to make it into a film. When she didn't like the changes, she
sued that the moral rights had been violated.

o Does the assignment of filming rights mean that the author has no right? How
do you balance the right between the two parties?

o Held

●
 ● Lower court found that the claim did not exist. They said that prima
facie this film is not going to harm the reputation of the author. It
will only affect the perception of people who have seen the movie as
well as read the book. But then wouldn't they only demean the
produced and the film.

● The court then proceeds to the law. The section at that time
disjointed two clauses. So, the prejudice of the author was not
important to distortion and mutilation. Now it basically clubs the
two and states that prejudice must be caused by distortion.

▪ Even though it should have been read together according to

Bharti, the section wasn't exactly framed this way. Even
BERN requires prejudice.

▪ The production house claimed that the contract allowed for all
modifications to make it a successful movie. The court held
otherwise. It must comply to Sec. 57 in any case. The
contract must be read as complementary to Sec. 57.

▪ The court proceeds to Sec. 57. It emphasizes the importance of

authors and artwork in society. It brings to the forefront the
idea behind the section and connects it to the culture.

● The expression "other modification" must be read

ejusdem generis. Modification cannot be in a sense
that it changes the art itself. Major changes would
therefore be violative of Sec. 57.

● Basically, the contract only allowed for the smaller

changes.

● This is a very strict interpretation of the section and is

unlikely will exist anymore.

● Bharti
 ● There are a few types of modifications

o De Minimis is irrelevant – Court does not concern itself with it.

o Technical is also irrelevant as that is unavoidable – therefore, not relevant.

o Modification simpliciter – Therefore, this is the relevant scope.

● From policy perspective, economic rights are given to ensure that

people exploit it. You give licenses, enter into agreements, etc.

● But if alterations are lost due to the moral rights regime, then the
incentive to modify and adapt is lost. This makes the economic
rights redundant.

o Major changes

● This was anyway hit by S.57

● So now effectively no changes can be made at all. Should limit the scope of
modification – when it changes the character of the work. Otherwise the moral rights
regime infringes upon the economic regime.

The court saying that the reputation is being harmed because people will now think she is
also a sellout author is an innovative position.
● Bharti thinks this position could have been

reached from the perspective of someone who

has heard her name but now seems the movie.

● The court held that

▪ She claimed that they were changing the name, but this was not relevant. When
you have changed the name in this case, that is not necessarily problematic.
Because the name is not really derogatory.

▪ She claimed that intimate scenes were also harming my reputation. You can't
claim inclusions of explicit scenes alone would lead to a violation of moral
 rights. The book allowed for it, and the court is not supposed to sit as a
censor board.

▪ The above changes are modifications simplicter and are allowed. However, it
still prejudices the author.

o Further the judge creates a distinction between people like the author in
question and cheap screenplay writer of the run. This idea of moral rights
being higher for some people and lower for other seems weird.

● Finally, the court points out that there should be few sentences deleted from the
film.

● Court contradicts itself – some scenes are considered to be too harsh, but finally
the court does sit in moral judgement

▪ This includes things like how death has been shown. The scene is too brash, mad
etc. Rather than killing Bunty, it would have been easier to just show that he went
to hostels. They said that this is too harsh because it is crude to believe that
his body remained unclaimed.

● This is contradictory to the statement about them not being value

judgments.

● Amarnath Sehgal v. Union of India 2005 (30) PTC Del. 260 – post amendment

● This is a case which widened the scope of moral rights in India by including the right
against destruction of a work of art.

● Court considered two views:

One side argued that where a work is destroyed, since it no longer exists and cannot
therefore be viewed by anyone, where is the occasion of prejudice to author’s reputation
□ On the other side it was argued that destruction of the work can prejudice an author’s
reputation by reducing the volume of his creative corpus.

□ Deletion to or mutilation is after all a treatment of a work and so is destruction or

removal. It is the extreme and ultimate form of mutilation.

□ Mutilation is nothing but destruction so as to render the work imperfect.

 □ Court agreed with the second view that section 57 is wider in amplitude to
include destruction of a work of art, being the extreme form of mutilation, since
by reducing the creative corpus it affects the reputation of the author
prejudicially as being actionable under said section.

□ Raj Rewal vs Union of India, 2019 Delhi High Court

□ The question which arises is, whether the laws relating to artistic work of architecture
and the copyright therein, expressed on land belonging to another, can be interpreted
without regard to the laws relating to land.

□ As distinct from copyright, which is purely a statutory right and not even a natural or
common law right, right to land/property, is not only a human and common law right
but also a constitutional right and till the year 1978, was also a fundamental right.

□ The Legislature has enacted Copyright Act only to amend and consolidate the
law relating to copyright and not the law relating to property/land. None of the
provisions thereof can thus be construed as affecting a right in property/land.

□ Thus, unless a right to exclude/prevent the owner of the land, on which artistic work
of architecture is executed, from using his land as he may desire including by
removing the said work of architecture, is expressly provided, the owner cannot be so
excluded in the garb of copyright.
Neha Bhasin v. Anand Raj Anand

□ Where a person lawfully does anything for another person, or delivers anything to
him, not intending to do so gratuitously, and such other person enjoys the benefit
thereof, the latter is bound to make compensation to the former in respect of, or to
restore the thing so done or delivered

□ Plaintiff has a right in equity for being given proper credit for the song sung by her.

□ If her voice is used and commercially exploited she has the right to prevent it being
attributed to somebody else.

□ The damage and injury caused and being caused to the plaintiff is twice over. First she
is not described as the lead female singer and in her place someone else is described
as lead singer. Second, the plaintiff, who indeed was the lead/main singer, has been
demoted to the status of a mere back up singer.

□ The later act in itself is likely to cause grave harm and injury to the reputation of the
plaintiff as a singer.
 □ Moral rights of performers in international IP

□ Earlier no moral rights were granted to the performers. But now under the WIPO
Performances and Phonograms Treaty, 1996 the rights have been extended to include
these moral rights.

□ In every performance a performer has:

□ (1) the right to be identified as the performer;

□ (2) the right to object to any distortion, mutilation or other modification or

other derogatory action in relation to the performance, which would prejudice
his or her reputation;

□ (3) in addition to these rights, every person has the right not to have a
performance falsely attributed to them

□ Indian law has been amended accordingly.

Copyright XX
OWNERSHIP OF COPYRIGHT

● The default position is that author is the owner of the copyright. But there are
possibilities that this might not be the case. This generally happens in the cases of
issues like job works.

o 17(b) is one of the cases where the right would rest with someone else.
●

o This effectively just set aside the previous decision.

o But this has not meant that the film people have no longer maintained a strong
hold on the ideas presented in movies. The producer lobbies are stronger
and they end up getting these rights through the use of assignment
contracts anyway.

● To do away with these affects in the industry, two more changes were
made to Sec. 18 and Sec. 19. Sec. 18 is the assignment of copyrights
while Sec. 19 is the mode of assignment.

● Things like ringtones meant that the producers got a bunch of money
but no royalties for content providers. So, this meant that the
continuous exploitation was problematic.

● After changes, it is statutorily impossible for you to reassign the work

completely. You will always have a stake in exploitation other than the
films.

● In 2012, there was a huge producers lobby led by Aamir Khan and a
content creator's lobby led by Javed Akhtar. The producer lobby said
that only a few movies actually succeeded, and therefore they take
 up risks which should be rewarded. On the other hand, the content
creators claimed that the money these people get very little money
if they are not big names.

▪ The content creators had earlier not thought of issues like

revenue streams through ringtones. So this gave them the
incentive to fight.

▪ Initially, the copyright societies were controlled by content

creators but now this were all controlled by producer labels. So
they were stronger. But at the right time, Javed Akhtar became
a member of Rajya Sabha. This also contributed to the changes.

▪ There was international support for the content creators too.

● A problem with the court's reasoning in the previous case is that they assumed
the relationship between producers and the creators is one of employee-
employer. So this is simply not true as it is more on the commissioning side.

● Community for Creative Non Violence v. Reid

o The sculpture that they required had been proposed by the agency. They said
they wanted a life size statute of a black family in Washington in winter
standing next to a steam gate. There was a lot of close engagement as the
CCNV took Reid around in a car to look for a family that could act as a model
 for the sculpture. Now the question became whether this is a contract of
employment or not

o So is this a work for hire? This happens in two cases

● Whether this is in the course of employment

● Whether the other party had a say in the final product

o Other interpretations could be the common law idea, or the generic idea of
how employee is seen.

o The court held that nothing in the statute says that someone having some
control over the final work would always mean assignment of rights.
Similarly, the generic idea of employment would be too restricting. So, we
must look at the development of common law jurisprudence.
 ●

● All these factors taken together help you understand what the
relationship is.

o The court found that Reid was only an independent contractor, and
therefore will have ownership over the final product. Some control over
the final product cannot be enough.

● VT Thomas v. Malayalam Manorama Co. Ltd.

o Thomas was a famous cartoonist who published in Malyalam Manorama. He

snapped the relationship and started to publish for other magazines. M said
that this cannot be done because they own the copyright.

o
 o The characters here had been created before he even joined M. Bharti believes
if the characters had been created in the time he was with M, it should have
been protected. However, in this case it was created even before he joined the
magazine.

o
Copyright XXI

FAIR USE - FAIR DEALING

● This is important to create a balance between the rights and who it protects.

 
Section 51 of the Indian Copyright Act deals with the cases of infringement. But
infringement cannot be discussed in isolation, it must be done with regard to the concepts
therein.
 
Now how do you decide whether something amounts to infringement?

● First, whether this is infringement in the first place and who has done it. This is
the primary liability.

● Second, what is the case for/against people who facilitate infringement. This is
particularly important for cases today regarding infringements in internet. This is
the secondary liability.

 
But all of this comes subsequent to the FAIR USE DOCTRINE.

● There are two approaches - fair use and fair dealing.

o Conceptually both are pretty similar.

 o It is a structuring formula. US gives you 4 points against which the "fair use"
is being judged. India and UK provide a list of activities that will be exempt
(fair dealing).

● So regardless of how unjust it seems, if you are not a part of the

exempted issues, you cannot get protection.

● So people say the predictability of UK and India is better while US's

flexibility is better.

o Basically, held in that case that if there is no prejudice to the owner, why not

o Story however gets criticized too. Initially – utilitarian basis was done on a
case-by-case basis. Therefore, the public domain was inherently bigger
because there were no specific exemptions under which use needed to be
justified. However, now it shrunk because of the use of the Lockean theory.

o They criticize that Story actually shrunk the domain for people using
copyrighted work. It was after this case that the trend to shrink the public
domain became common.

● They said you should focus on the language he's using in the judgment.

● The language was highly Lockean Property theory (labored on the land
means a right in the property). This was the first time US was relying
on this theory as a justification for copyright.

● In this time in US, the whole utilitarian theory was in use everywhere.
Like the whole book can be adopted into a story drama. This was a
major shift therefore. It shrunk the domain available to people.
 ● So the utilitarian theme would have effectively meant that the people
would have had these powers anyway.

● On one hand he increased the scope of fair use, but at the same time
shrunk the powers people thought they had anyway.

● Sometimes the infringement is so insignificant that the court will just

throw it out. It won't care for the fair use doctrine also. This is not what
the test is about.

● Each of these aren't separate inquiries, and they affect each other.

● You don't have to justify your case on all 4 points. You can only secure
2 points but still win. So, the question is then how do you give
weightage to issues?

▪ It generally depends case to case on the basis of facts – how

to consider S.107 (fair dealing)

o Harper and Row v. Nation Enterprises

● This is not good law anymore, but it is an important case nonetheless.

● Memoirs of President Ford were being written. He succeeded Nixon.
These memoirs were to be published by Harper and Row. This
included issues such as the Watergate scandal and why Ford had
let Nixon off.

● So, Times Magazine entered into an agreement with Ford to publish a

teaser. They published a small part of the work in an article. This was
to increase curiosity and gauge interest.

● Before they could publish it, The Nation Enterprises somehow secured
the full book before publication through illegal means. Now they
published a similar article to Times.

● Some important quotations were verbatim, but generally the lifting was
little only. This even gave credibility to Nation Enterprises.They had a
lot of the major selling points of the book

● They held that factual works generally do not form the core of the
copyright protection. So, there is a greater scope of fair use.

● The Appellate Court

● SC
▪

▪ Presumptively unfair – given too much focus. The second line

here is the most problematic. It gave too much importance to
the commercial nature of the transaction. Anything that is
commercial should be inherently considered to be unfair.
▪

Should Copyright Law be a tool at the hand of the owners to

protect themselves and prevent genuine coverage? Especially
given the fact that this is generally the only way news can be
gotten. You can stop this through use of other doctrines but do
you need to do it through copyright law.

▪ US law is generally known for its flexibility in the case of fair

use. But this case shows that this is at the hand of the
interpreter. Here it was very restrictive – considering illegal
methods to be infringing especially in the case of news
reporting, since it is harder to access and uncover resources.

▪
▪

▪ So, basically found that just because biographies are factual,

does not mean you can steal. Like even though they are factual
they are pretty creative.

▪ This factor went against the petitioners because it was

essentially a 200 page summary

▪
 ▪ In the third factor tool it is an important clarification that what
is important is not the amount of words, but what was copied.

● Time cancelled its contract because of this pre publication.

● This inquiry must take account not only of harm to the original, but
also of harm to the market for derivative works

● If the defendant's work adversely affects the value of any of the rights
in the copyrighted work (in this case serialization right) the use is not
fair.

▪ The majority was trying to provide benefits to the owner

not for utilitarian purposes but for the labor employed.

▪ The minority also said that the only issue on the marketability
of the memoir would be that these facts are now out. But
the facts are anyway not protected.

Copyright XXII
FAIR USE [Contd.]

● Campbell v. Acuff Rose Music

 o

 
o

 
 o

 
o
o

● The clarification here is that the word transformative alone is too broad/
vague. If this applies, then you have no right to derivative work. So how
do you reconcile this?

▪ The court is giving a different notion to transformation under the fair

use doctrine. This is not simpliciter.

▪ Since it was borrowing from the examples, it seems like the

transformation work must exist for a purpose different from
underlying work [criticism, mock, etc.]. Satire may not be able to
rely on this defense as it exists for the same underlying work purpose.

▪ Derivative works are different because they occupy the same purpose,
such as to gather widespread use and make money.

o
o Confused

● Through Mechanical application, songs should have the highest protection but
that should not be the case when you meaningfully apply.

● Parodies need to rely upon the original work and therefore, similiarity cannot
be infringed upon

o
o

● It is unquestionable that the most important part of the song was borrowed.
But the Court said that this borrowing was justified in light of the purpose
because how do you even critique it without using the most famous lyric.

o
 o

● The court says that this is to be rather celebrated because this is exposing
the flaws of the original work. It is good in a utilitarian sense.

o In summation, it is all about the fairness of the issue and the court would determine
what they believe would be the best way to ensure a fair solution. This would decide
how much priority is given to each factor.

 
 
FAIR DEALING
●

o Some people argue that fair dealing is effectively just these three exceptions as
the others are all specific exception. But this is not exactly true as the other
exceptions also often end up becoming subject to interpretation. There are two
things you must consider in considering these laws.

● Even these generally worded ones are a bit different in different

jurisdictions. English law says you have liberty to report current
events while Indian law provides for current affairs. So maybe
English law is broader.

▪ The language of each statute needs to be carefully analyzed.

English and Canadian law therefore will not always have a
direct bearing.

● How do you interpret these sections?

▪ Do you see them as an exception to the right or a liberty to an

individual.
 ▪ Hoffield analysis of rights: He highlighted 4 variations of
rights. He says that the rights mean different things in different
settings. It can mean claim against somebody, liberty,
immunity or power. So how we treat these exceptions make
a difference.

▪ How you define the right changes the application

● CCH Canadian v. Law Society of Upper Canada

o C is the biggest library in Canada and they have a photocopy service available
for their members. At someone's request, either the library will do it or you
can do it yourself. So does this photocopying amount to violation?

● The court had to consider which category it would fall under and
whether it is fair use.

o It was claimed that when lawyers do this, it is for research. The counter
argument was that this is not the research envisioned in the statute, this is
commercial research.

o If you think of it as a restriction, you read the owner's rights broadly

while you interpret the individual rights broadly the other way round.
 ● The court gave the interpretation that this is a right and used this to
broadly interpret the word research.

● Alongside the categorization of it as rights, the fact that the words

"private" and "research" are different played a role. This is not the
case in UK where it specifically provides non-commercial research.

● India does not explicitly remove commercial research. Still it says

private and personal research. So it is a matter of interpretation
for courts but it is possible a more restrictive approach is taken.
Copyright XXIII
FAIR DEALING [Contd.]
• Reporting Current Events

• News Paper Licensing Agency Ltd. vs. Marks and Spencer Plc [2003]3WLR1256.

• Court Held:

• Not everything reported in the press is current event. The word ‘current event’ is
narrower than ‘news’. Reporting current events does not extend to publishing matters
of current interest.

• Court also drew a distinction between public interest and private commercial interest
while reporting.

● Hubbard v. Vosper

o One of the members was the head of a scientology group while the other had
left after becoming disgruntled with its functioning. So, he started publishing
critical comments on the functioning of the group and in doing so, relied a lot
on the book written by the head.

o Questions

● The case was whether this would amount to criticism of a work

▪ The plaintiff said that the criticism was of the person and not of
the work. The criticism of the work was only secondary.

o Held

● The SC held that the criticism in itself can also be of the ideology
behind the work and need not only be of the words of the book.

● But the important question was the idea of fair dealing

 ▪

▪ Not infringement

● Ashdown v. Telegraph

o Here Ashdown was a political leader who had a secret meeting with Tony
Blair who was still not elected at that time. There was some dealing with
possibly forming the government with a coalition. Someone from A's team
then leaked the info to Telegraph [info being the minutes], and Telegraph
heavily relied on it.

o Questions

● When you are interpreting these clauses, you interpret each word. You
interpret whether its current, event etc.

o Held
●

● These steps show a reflection of the American steps being shown as

a second step to determining the fair dealing [after the statute].

● This case however has received criticism however.

▪ Jake Griffiths - Copyright after Ashdown

● The court should look into the subject matter of the

defendant and the claimant's work. Both of these are
a part of the American doctrine.

● Ashdown’s factors – If they rely on American courts –

focus on copyrighted work and the use, however here,
only the defendant’s work and not the use which is of
public importance (Too Lockean theory)

● The Ashdown's factors are solely focused on the

issue of what is happening to the defendant. This
is quite contrary to the rights idea of the
copyright.

● The nature of the subject matter should be given

more focus. For instance, this is hardly any
creative work. While there is a strong inclination
 to not make value judgments, surely the two can
be distinguished when this is that different.

● The absence of these considerations is perhaps

problematic. You must consider these to be able
to understand what actually is fair.

● Information of public importance is strongly protected

under Art. 10 ECHR.

● The matters in the article itself was very

important. It was a matter of public importance.
So they should have noted the importance of the
work itself.

● Things like domestic statutes also provide for

the significance of public interest.

● Here the court should have thus placed a strong

presumption in favor of the Telegraph solely
because of the subject matter involved.

● CCH Canada v. Law Society of Upper Canada

o Factors enumerated
 ●

 
INDIAN CASE LAW
 

● ESPN Star Sports v. Global Broadcast News 2008

o
o There was a lot of on field controversies in this series. So, this meant that there
was a huge investment on the part of the public.

● So now a lot of news channel were continually trying to report these

events and they were liberally sprinkling the game videos.

o Prasar Bharti upheld the 7 minute restriction, but it had the consent of the
parties. Cannot be a thumb rule of 7 minutes because of context as seen in
Vosper.

o Making
money out of it – ads on either sides of the clip

o No copyright infringement

o The court did not give any injunction or something of the sort.
 o

o DB said that the SB refused to look at context – should be allowed, however,

cannot be shown in a manner where there are profits and commercial interests
cannot be to the extent wherein mainly showing the clipping

o The court came to the conclusion that this is going beyond the fair dealing
doctrine. The respondents were effectively making money out of it and just
nearly entire reproducing broadcasts.

•  Super Cassettes Industries Ltd. vs Hamar Television Network Pvt., 2010

• It was alleged that the defendants were using musical works and videos in many of
their programs.
• it is stated that the plaintiffs on their own showing have alleged that broadcast ranges
between 10 to 30 seconds except on a few occasions where the duration is more than
30 seconds. It goes on to aver that it is clear from the allegations of the plaintiff that
the maximum duration of broadcast is 40 seconds, that too not at a single stretch and,
therefore, the alleged broadcast for duration in the range of 10 to 40 seconds cannot
be dubbed as indiscriminate use of copyright for commercial exploitation. It relies
upon the judgment of this Court in ESPN Star Sports vs Global Broadcast News Ltd.
& ors. 2008 (38) PTC 477 (Del) to invoke the test of "fair dealing" to decide as to
whether the alleged broadcast would amount to violation of the copyright.

• In support of its defence based on the principle of fair dealing it relied upon the
provisions of Section 52(1)(a)(i) and (ii) to contend that the alleged broadcast are
in the nature of "review", "preview", "news", special programmes and
interviews. These programmes, according to defendant no. 1, are in the nature of
criticism or review to educate the viewing public.

• Mr Sagar distinguished the judgment in the case of ESPN Start Sports (supra) on the
ground that the decision was rendered in the context of news reporting of cricket
matches.

• The learned counsel went on to say that the test of substantiality is a qualitative test
and not quantitative test

• For the purposes of the controversy which has arisen in the present case, it may be
relevant to refer to Sections 52(1)(a) and 52(1)(b) as also Section 39(b). These
provisions set out the gateways against the action for infringement of copyright. The
gateways being: the publication or broadcast of copyright work for the purposes of
criticism, review or reportage of current events.

• After reviewing the material presented the court came to the conclusion that they were
neither used for the purpose of criticism nor shown to be necessary for the purpose of
reportage of current events.

● Oxford Uni v. Delhi University [Photocopy case]

o The facts were that the photocopies were being made with knowledge of the
University. The single judge allowed for the copying.

o The relevant section provides an exception for reproduction by a teacher for

the purpose of education.

o The main argument here was that people buy these books for education, so
course packs would act as a competition and would hurt them financially.

● So, they said that this clause cannot be interpreted in a manner this
broad that it hurts them commercially.
 ● Further they referred to section (h). This says that publication in a
collection mainly composed of non-copyrighted matter. The petitioners
said that this is where the exception would lie, which is not happening.

● It was claimed that even if the section is applicable, the fair use
analysis must be considered. It cannot be a blanket exemption
altogether. They basically claimed that the result should still be
equitable.

o How to determine fairness – purpose of the exemption. How much was

required to explain the content to students (proportional analysis)

o The court said that the section (i) is not subject to fair use generally, though
the law should aim for equitable solution. So you should look at the purpose of
the copying, which was to finish syllabus. This is justified.
 ●

● Court held -

● The students cannot anyway afford these books as they are super expensive and
would have relied on libraries. So is their really any harm caused financially?

● The costs are so high probably that they have realized that the market is not students
but people who are extremely interested in niche subjects.

●
Copyright XXIV

Oxford Uni v. Delhi University [Photocopy case]

● Double Bench

● Sec. 52a – Fair dealing exception. CCH Canada – ‘users rights’. Though India does
not use the word rights, it is not an exception and should have a broad interpretation

o While discussing the research exception, the single judge used this to say
that it is irrelevant if the student was privately copying stuff or the
university was facilitating it. This is because they would have gotten it done
anyway. Section is not applicable, since there is a more specific exception that
is applicable. If this were the only exception, it would be possible that
infringement was upheld because then they would have to satisfy the four
parts of fair use doctrine.

o In division bench's opinion, though the word private or public use is up to

interpretation, you cannot ignore the fact that this is still subject to the
fair dealing notion. So if you have borrowed so much work, that it is
financially harmful to the other, it should not be within this. Two points

● This section is not applicable as a more specific section.

● If it was just this section, it can be argued that this would not fall
within this exception. They disagreed with the SB opinion.

● Sec 52h -

the publication in a collection, mainly composed of non-copyright matter, bona fide intended
for the use of educational institutions, and so described in the title and in any advertisement
issued by or on behalf of the publisher, of short passages from published literary or dramatic
works, not themselves published for the use of educational institutions, in which copyright
subsists: Provided that not more than two such passages from works by the same author are
published by the same publisher during any period of five years. 
o The publishers were relying on this clause very heavily.
 o They claimed that the acts by the university are under this section, and this effectively
decides the boundaries of what is allowed and what is not allowed. As per this, you
cannot borrow more than 2 passages from copyrighted material over the course of 5
years.

o Both the single and division bench disagreed.

● SB held that publication means books available to everyone. On the other

hand, course packs are meant for only people attending the course.

● DB said publication can be limited to target audience also. However,

publication must still mean that some sort of profit must be associated
with the publication.

o Publication can be limited, but there must be some profit associated.

● The court therefore disagreed that this would be relevant.

● Sec. 52j

o The exception provides a case for teachers, lecturers etc.

● This is based on the notion that they should not have to keep running
around to get permissions.

● The petitioner claimed that this was the case only in case of
spontaneity. If the teacher had no time then it was fine to include it
in slides or something that should be fine. However, it cannot be
read to include pre-planned cases. The court had to decide the
validity of this claim?

▪ Course of instruction should not mean only during the course of

teaching such as in classes. This could be before, after, or
during class. There is nothing that requires spontaneity in
the section.
 ● The NZ case that they heavily relied on in fact
however found that the exception was not relevant.
They rather relied on an exception similar to Sec.
52h. There the course pack was created and was in
use for several years. The court held that this was
similar to creating a book rather than a course pack, and
should thus be governed under Sec. 52h.

● The DB distanced itself from this interpretation.

It just said that we would only look at the
purpose, i.e. course instruction.

● The second question was even if we read it more expansively, is the

amount of work that you can borrow in these cases also limited by the
fair dealing doctrine?

▪ Fairness is always relevant, but fair dealing itself is not

something that each exception has to justify. The amount of
how much you can borrow would depend on the purpose of the
borrowing, i.e. how much do they need to copy to
accomplish the exception related task. In this instance, how
much work was required to teach students.

▪ The court did not take the fair dealing doctrine because the
nature of work would then have to be taken into
consideration and this might be problematic when having
to give effect to an exception.

● This is something Bharti finds problematic. Because

even in the US cases, multiple times how much you can
borrow would often judge the fair use doctrine against
the purpose of the copying. So, nothing in these four
factors is particularly restrictive in the way the court
puts it.
 

● When the SB was deciding this case, they were only arguing for the copying of 20%
of the work to be copied without permission. America allows 10% for course packs,
so surely India can do 20%? So strong proponents to the section were also trying
to argue for a limitation. However, the DB did not make a ruling regarding this.

● Cannot use the US doctrine to decide fairness. US also does not tell to overlook
the purpose of copying, and therefore, the US doctrine is not restricting.
Therefore, how much of the work can you take? – DB did not make a ruling wrt
this.

o Argument about what would be fair – copying whole books may still be
unfair

o So now there is a difference in opinion as to whether the court allows for the
whole books to be copied. The camp against this says that the decision was
only with respect to the case facts, and it is likely that this argument will not
fly if it is fully copying.

● Another argument by publishers was to seek co-operation between Indian universities

and the copyright societies at a lower price.

o This was disagreed as the court found it fair use.

o Another academic opinion against this is that the publishers tend to get greedy
overtime even if these relationships start out bona fide in the beginning.

 
 

● Fair Use and Fair Dealing are not the only ways in which your right is protected under
the right. There are others:

o De Minimis

● You can claim that the infringement was minimum

▪ India TV Independent v. Yashraj Films Delhi HC

 ● Two suits were brought. In one of the suits, there was an
advertisement in which a kirana shop owner was waiting for his
customers, and in the background 3-4 secs of Kajra Re could be
heard in the background. So they claimed this was
infringement.

● Second, Vasundhara Das was a budding singer at the time and

she was taking part in a show in India TV which was about her
life and how she grew up to be a star. As part of her interview,
she sang some of the most famous songs she has. This was only
a few lines. So now is this infringement?

● No exception under Sec. 52 was protecting this. So the Court

relied on de minimis principle in general. The Court
highlighted that so many copyright infringement violations
happen. If we take up each, the regime would become absurd.
They said this was not worth the Court's time.

● The court did give a 5 point formula

● The size and the type of harm

● The cost of adjudication

● The purpose of the copying

● Effect on the legal rights of the third party

● Intent of the wrongdoer

o Exploring Public Interest as a possible Defense

● While India hasn't used this, England has. Example is the Ashdown case.
There fair dealing was one of the defenses alongside this. There have been two
approaches to use public interest as a defense
● Need to look at inherent jurisdiction of the court, nothing in the act specifies
this

● Ashdown refers to Hyde Park v. Yelland

▪ Majority (Aldace) – even though there is no statutory

representation, still can prevent enforcement of something that
is against public interest.

▪ Considered Lion Lab. Case – exemption was actually applied

(breathalyzer was not working correctly, and motorists were
being caught despite being caught – document leaked and other
party claimed copyright due to confidentiality_

▪ Court claimed that this was not allowed. Initial documents reek
of turpitude. Court will not protect copyright if it for an action
that is immoral, injurious to public fight, or encourages others
to act in a similar way

● Mann – the majority is too restrictive, and does not work. Lion Lab is
on the facts of the case and only one scenario. He believed that public
interests’ understanding to only include morality was too narrow and it
should be broader, and include more actions.

● Ashdown v. Telegraph – reaffirms the judgement by J.Mann.

Immorality is not the only thing that is required, should have broader
interpretation.

▪ Narrow Approach - Only available in some circumstances which are

rare such a s when the work is protecting something illegal.

▪ Broad - In Ashdown, they saw that there is nothing that limits them to
the narrow approach. You can use it for pressing concerns.

▪ There is one case where both approaches have been used. This
concerned the breathalyzers used by the police. The internal documents
 suggested that the product was malfunctioning catching people when it
shouldn't. When the newspapers exposed this, they claimed
infringement. The court said no. This was a case where public interest
would take preference.

● England also has a clause in statute which provides public interest as an

exception, while India doesn't. However this should not stop them as per
Bharti.

▪ Now Indian courts have shown an inclination towards using this. For
instance, in India the courts have forced compulsory sharing of feed
with Doordarshan in several cases of importance. This perhaps
indicates they are willing to do this.
 Introduction to Trademark Law

- TMs have a psychological impact on an individual. They determine your decision-making skills.
The older it is, the more it shows reputation, and the more people will want to copy it.
- History of TM Law: 1200 BC -1300 BC - Chinese pottery had name of period’s Emperor/maker/
origin; Dark Ages - Fall of the Roman empire led to the disappearance of TMs; Middle ages -
Upsurge of trade. With this, guild and municipal legislation enacted to regulate use of marks.
- Why such use?
o Growth of trademark: response to expansion of trade- need to ID source due to increase in
repeat orders from remote customers
o For helping visualise the goods and perpetuating it
▪ The marks, though for individuals and not corps then, performed the same functions
- Historical roots:
o The proprietary mark
▪ It is optional, but fixed to goods by the owner - in cases goods were lost at sea etc.

▪ It was a merchant and not a craftsman mark

▪ Nothing to do with source

o The Regulatory Production mark
▪ It was affixed by administrative orders etc., not optional.

▪ It is so that defective work may be traced to the craftsman

- Two approaches
o English Law: Follow a distinction between a court of law and court of equity - Court of
equity would hear anything except remedies with monetary damages and court of law was
only monetary damages - property rights v. individual rights. They have developed
incompatible approaches to TM.
▪ They protected customers and prevented illegitimate diversions to their trades -
through existing forms of actions to remedy the harm
o Anglo-American: Primarily concerned with protecting producers' interests by recognising
property rights. As an added benefit, consumers were helped
▪ Decisions were not clear about the nature of the property - confusion about role of
property in TM
- Reading: Frank S., Rational basis of TM protection [Counter arguments: Keith M Stolter - How
early did TM law begin]
o Southern v. How [1618] - first reference to TM law?
▪ FS - Questions the authority of Southern v. How [5 inconsistent case reports of it, don't
know what it relied upon exactly]
● Says Sykes v. Sykes is the first reported case squarely involving the protection of
TMs by an English common court.
● bridge between Anglo-American and history of TM law – Sv.H
o KS - The recent discovery via a brief reference to an earlier unreported case published as
Sandforths case is now the earliest reported TM case

Who is TM law trying to help? [Reading: Normative foundations of TM law]

1. Property based regime [producer]
o Traditional US TM law - producer oriented; designed to promote commercial morality and
prevent illegitimate attempts to divert trade - to help maintain their brand.
o Property rights were grounded in the natural rights theory, but TM rights were narrower.
2. Confusion based protection [Consumer]
o TM designed to reduce consumer search costs.
o It targets the confusion that someone would try to take advantage of.
- Eg. Dettol - consumers don't have to keep looking up ingredients, know quality etc. But a
property-based regime would be satisfying the producer - giving a guarantee that competitors
cannot use your mark so they are incentivised to create a stable brand and keep up a high-
quality product that cannot be diluted or maligned by others.
- The underlying debate: public v. private interests
o Protection of public from fraudulent copies v. Protection of public being seen as incidental
to the protection of the private right - this relates to the consumer v. producer sides as well.
- Mark Makenna - new conception - Early TM law served only the trader to ensure their
consumers did not get diverted to others, with incidental benefit to the consumer.
o Re-examination article - said no consumer or producer-based approach. Early TM law was
driven instead by a concern on part of courts to create a balance with a different goal in
mind - Honest Competition. Creation of a fair competition law by giving the mark to
individual producers.
▪ Economics POV:

● Lanham act - TMs made possible between competing articles by enabling

consumers to distinguish between the other, plus encouragement of the
maintenance of quality of the trademarked good [benefit of good rep - producer;
good quality - consumer]
● The economic consumer-oriented account of the legal doctrine:
o Economizing consumer’s search costs
o Rewarding the producer’s investment
o Makenna - This factorisation wrong - instead, based on producers
o So, impossible to see what the courts were relying upon - no dominant interest is seen.
Now, just seen as a balance between private and public interests

Functions of a trademark identified by Sidney

- Identification function
- Guarantee function
- Advertising function
- Ensure uniformity
- Builds goodwill and image

Frank S –
- that the value of the modern trademark lies in its selling power.
- that this selling power depends for its psychological hold upon the public, not merely upon the
merit of the goods upon which it is used, but equally upon its own uniqueness and singularity.
- that such uniqueness or singularity is vitiated or impaired by its use upon either related or non-
related goods; and
- that the degree of its protection depends in turn upon the extent to which, through the efforts
or ingenuity of its owner, it is actually unique and different from other marks
- Current Legal Argument: One who by the ingenuity of his advertising or the quality of his
product has induced consumer responsiveness to a particular name, symbol, form of packaging,
etc., has thereby created a thing of value; a thing of value is property; the creator of property is
entitled to protection against third parties who seek to deprive him of his property
o Creator of property is given an entitlement over his product.
- Current Legal definition of a trademark
o Lanham Act: "Any word, name, symbol, or device or any combination thereof adopted and
used by a manufacturer or merchant to identify his goods and distinguish them from those
manufactured or sold by others." [So, it is essentially merchandising shortcut that induces a
consumer to buy the product]
 Subject Matter of a TM

Logo
- It is the face of a company.
- Types:
o Wordmark. Eg. Google, Coca-Cola
o Pictural. Eg. Target
o Abstract iconography. Eg. Pepsi, Nike Swoosh
o The logo system. Eg. MTV, Google Doodle system, twitter avatars etc. which can be changed
- they have elements of all the 3 types above
- It's not the mark but the association that consumers have to come with it. They are empty
vessels into which you pour meaning into.
o They need to have a long life, not just make a splash.
o The marks above, like the Nike Swoosh, have also attained distinctiveness over time
- Difference between Logo and Trademark:
o A trademark protects a slogan, phrase, word, company name, logo, or design that identifies
a company and/or its goods. A logo is a symbol or design used by a company that may fall
under trademark protection laws.
o Trademark protection on logos
o When approved, a trademark restricts others from using an exact or similar mark.
 
Kinds of Trademarks
- Brands also try to communicate with consumers through other marks - like jingles etc. Eg. ICICI
Bank jingle or the McD jingle.
- Types of trademarks
o Conventional Trademarks
▪ Comprise words or designs such as Coca-Cola as a word or in its familiar cursive script.

▪ These are both legally well-established and regularly protected by the tort of passing-
off or by registration in India
o Unconventional Trademarks
▪ Unusual elements which were incapable or registration and largely unprotected. They
are more outre elements such as smell, colour, shape, even taste or gestures.
▪ The international position is largely changing though - smell, sound, colour and even
shape marks now appear on many trademark registries and in legislation/treaties. Even
when unregistered, they are gaining protection in common law.
▪ Eg. Cadbury trying to trademark the colour purple.
 
Basic Intl. Legal Framework
- Required criteria may vary from country to country but are generally around the following lines:
o The sign should have the potential to be distinctive.
o it must indicate origin and
o thereby distinguish or differentiate the goods or services upon which it is used from others
on the marketplace
- TRIPS: Any sign or combination of signs may be registered as a TM, although a condition is
imposed that the mark be visually perceptible.
o Gives flexibility to national legislatures to decide what can be classified as a TM but treaties
have attempted to bring some uniformity to this
 o Many countries provide some form of protection to non-traditional trademarks - India is
silent.
- TRIPS Art. 15 - Capable of distinguishing - focus on distinctiveness. Same as EU Trademark
Directive Art. 2; Lanham Act - distinctiveness and must indicate source of origin
o All these provisions emphasise the communicative ability that a candidate must possess.
The sign should have the potential to be distinctive; it must indicate origin and thereby
distinguish or differentiate the goods or services upon which it is used from others on the
marketplace.
o Moreover, the law recognises that brand owners can educate the relevant public that a sign
is being used as a trademark, through the doctrine of acquired distinctiveness or secondary
meaning.
- This open-ended approach to subject matter is also evident in the Indian Trademark Act of 1999
- Distinguishing capability etc.
o A ‘mark’ is further defined in section 2(1)(m): “‘mark’ includes a device, brand, heading,
label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof”.
o While this is an inclusive definition, the Manual (Draft) of Trademarks Practice and
Procedure of Indian Trademark Registry, 2015 states that colour, sound, shape of goods,
packaging and smell trademarks fall under the category of unconventional trademarks.
▪ Draft Manual clarifies that certain categories of marks, such as shapes, colours, sounds
and smells, “will require special consideration”. This ‘special consideration’ can be
analysed along the lines of certain overarching themes, cutting across all categories of
non-conventional subject matter.
o The Draft Manual therefore devotes several pages to the graphical representation
requirements for colour, sound, scent, hologram and shape marks. It specifies that the
graphical representation should be independently sufficient to identify the applicant’s mark;
the representation should stand in place of the mark; and it should enable those inspecting
the register to understand what the mark is
- TM Rules, 2017 - sound clips etc. allowed by submitting mp3s - coming at par with intl. legal
obligations.
 
Main categories of non-traditional TMs that can be registered
- Smell/scent/olfactory marks
- Sound/aural marks/audio signature
- Tactile/touch/texture/haptic marks
- Single colour marks
- Shape marks/three dimensional/3D marks - more conventional of the non-conventional marks
- Taste/gustatory marks
- Holograms
- Moving images/motion/animated marks
 
Cases:
- Dyson Ltd. v. Registrar of TMs (2007) [Court of Justice of European Committees] - shape marks
o Facts: Electronic brand wanted to TM two photos, one of a vacuum cleaner. They were
described as follows: 'the mark consists of a transparent bin or collection chamber forming
part of the external surface of a vacuum cleaner as shown in the representation Rejected.
Went into litigation.
o Legislation
▪ Art. 2 Directive above +
 ▪ Art. 3 - a sign with consists exclusively of a shape can be scrutinised for invalidity
o Issues:
▪ In a situation where an applicant has used a sign (which is not a shape) which consists
of a feature which has a function and which forms part of the appearance of a new
kind of article, and the applicant has, until the date of application, had a de facto
monopoly in such articles, is it sufficient, in order for the sign to have acquired a
distinctive character within the meaning of Article 3(3) of [the Directive], that a
significant proportion of the relevant public has by the date of application for
registration come to associate the relevant goods bearing the sign with the applicant
and no other manufacturer?
▪ If that is not sufficient, what else is needed in order for the sign to have acquired a
distinctive character and, in particular, is it necessary for the person who has used the
sign to have promoted it as a trade mark?'
o Dyson Argument: Registration is not for the shape but for the entire idea of a collecting bin.
Moreover, they were not trying to trademark a colour but the absence of a colour -
transparency. [So, tries to push the conventional aspects]
▪ They also argued that since they had a patent protection on this for so long, consumers
had come to associate it with their brand. So, they were trying to convert their patent
protection into a trademark protection - Increase IP boundaries
o Held:
▪ Since a concept is not capable of being perceived by one of the five senses and appeals
only to the imagination, it is not a 'sign' within the meaning of Article 2 of the Directive.
If a concept were able to constitute a trade mark, the logic behind Article 3(1)(e) of the
Directive, namely to prevent trade mark protection from granting its proprietor a
monopoly on technical solutions or functional characteristics of a product, would be
frustrated.
▪ Accordingly, it should not be possible to achieve that advantage by registering all the
shapes which a particular functional feature might have, which would be the result of
allowing the registration of a concept which can cover many physical manifestations”
o Failed the graphical representation aspect. Innumerable permutations and combinations
were possible from the description so the graphical representation was inadequate.
▪ The OHIM held that given the exclusivity inherent in TM, the holder of such a non-
specific subject-matter would get an unfair advantage
● Link to whether it is about customers or about regulating competition - it would
prevent others from honest competition, as competitors would be prevented from
using transparent containers, defeating the purpose of trademark law.
 
- Sieckmann v. Deutsches Patent-und Markenamt (2003) [ECJ] - smell
o Facts: They tried to TM a particular scent using a stylised chemical formula, indicating labs
where the samples may be obtained, submitting an odour sample and describing the scent.
o Arguments:
▪ Sieckmann claims that Article 2 of the Directive does not preclude an olfactory mark
from being capable, in principle, of being registered. He submits that such a mark is
covered by that provision, as are acoustic marks, colours, holograms and other 'non-
 traditional' marks. He submits that 'represented graphically' should be understood as
'represented, or electronically represented or deposited in another way'.
▪ He also claims that the mark at issue in the main proceedings can be obtained in
normal quantities from local laboratory suppliers or in part directly from
manufacturers and distributors of fine organic chemicals. By knowing the chemical
name, which should be published, once they had purchased that chemical and
irrespective of the sample's deposit and of publication of the mark's olfactory
description, third parties would be able to form an exact, objective idea of the mark
and, where appropriate, to compare it with other olfactory characteristics.
o Issues:
▪ Can Art. 2 (graphical representation - core idea) also be construed as meaning signs
which cannot be perceived visually per se but can be reproduced indirectly using
certain aids?
▪ If yes (broad interpretation), are the requirements of graphic representability set out in
Article 2 satisfied where an odour is reproduced: (a) by a chemical formula; (b) by a
description (to be published); (c) by means of a deposit; or (d) by a combination of the
abovementioned surrogate reproductions?
o Held:
▪ The European Court of Justice answered the first question by stating that Article 2 of
the Directive must be interpreted as meaning that a trade mark may consist of a sign
which is not in itself capable of being perceived visually, provided that it can be
represented graphically, particularly by means of images, lines or characters, and that
the representation is clear, precise, self-contained, easily accessible, intelligible,
durable and objective. Graphic representability determines the precise subject of
protection afforded to registered proprietor and thus enables the competent
authorities to fulfil their obligations to examination of marks while further ensuring
that the competitors or other members of the public have knowledge of rights of the
registered proprietor without subjectivity.
● They answered the first question in the negative as they were not satisfied as to
whether all the other aspects could be enough to graphically represent the scent.
▪ The European Court of Justice answered the second question by stating that in respect
of an olfactory sign, the requirements of graphic representability are not satisfied by a
chemical formula, by a description in written words, by the deposit of an odour sample
or by a combination of those elements.
▪ The reasoning of the European Court of Justice to arrive at such a finding can be
summarized as under:
● Only few people will be able to recognize the odour by way of formulae.

● A formula does not represent the odour but the substance and is not sufficiently
clear and precise.
● The description provided is not sufficiently clear, precise, and objective.

● Sample of odour does not constitute graphical representation and is not

sufficiently stable or durable.
 ● If the above three constituents, by themselves cannot satisfy graphic
representability, a combination of the same will not be able to satisfy requirement
of clarity and precision.
o So, smell marks would be difficult to represent. They emphasized upon the graphical aspect.
- So, this had a strict self-contained requirement which has been subsequently relaxed
 
- John Lewis of Hungerford Ltd’s Trademark Application, 2001 - smell
o Facts: Tried to TM a cinnamon smell that was popular in Christmas candles etc. Described it
as "the smell, aroma, or essence of cinnamon".
o TM Registry objected to registration on the grounds: that the sign put forward for
registration was not capable of being represented graphically; and that it was a sign that
other traders may legitimately wish to use
o The Applicant took steps to obtain an electronic sensory analysis and graphic profile of the
relevant “smell, aroma or essence of cinnamon” from Neotronics Scientific Ltd, a company
specialising in ‘electronic nose’ technology.
▪ The Registry was not satisfied, questioned the ability of “electronic nose” analysis to
provide a graphic representation
▪ The Registry concluded in the light of this evidence that the proposed graphical
representation of the electronic sensory analysis would be unintelligible to people
inspecting the Register of Trademarks or the Trade Marks Journal and that they would
in any event be unable to identify the smell represented in the graphical
representation without additional information as to the test conditions and apparatus
used to produce it, even if they had access to the necessary equipment. The objection
to registration under Sections 3(1)(a) and 1(1) of the Act was therefore maintained -
went back to their original section
o Held:
▪ Many factors have a bearing on the perception of a smell. Perceptions are liable to vary
accordingly to the nature, purity, concentration, quantity, age and temperature of the
relevant olfactant(s). They are also liable to vary under the contemporaneous influence
of other olfactants and from one person to the next according to their ability to discern
the smell in question
▪ Words which merely describe a smell by reference to the olfactory perceptions of
people exposed to it are thus liable to cover a range of perceptions linked to a range of
precipitating sources, thereby defeating the purpose of TM law
● Words cannot represent a unique smell.

● This is especially since smells are different to different people in different contexts
o Judgement:
▪ Cinnamon is the name given to the spice obtained from the bark of certain trees of the
laurel family. True cinnamon comes from the inner bark of the Laurus Cinnamomum, a
native of Sri Lanka, and base cinnamon comes from Laurus Cassia, a native of tropical
Asia. I also understand that cinnamon from the bark of these trees comes in different
forms and concentrations with differing degrees of aromatic strength.
▪ A person’s perception of the smell of cinnamon is liable to be influenced by the context
in which they experienced it. I do not know how many different ways there are in
which people can experience the smell of cinnamon. I believe that they go beyond
 those related to cookery and the preparation of alcoholic drinks and into the realms of
toiletries and air fresheners. I am unsure whether or how far they may go beyond that.
▪ So, the smell might be different to different persons. Colds etc. could impact olfactory
senses. It can vary from nature, temperature, age etc. that could impact it - so, might
smell different. Due to this, the mere description of cinnamon was not enough.
 
- Nice Classification and agreement- international classification system for trademarks
o Class 1-34 is on goods and rest is services
o Bigger companies- will try for multi-class applications because they want max protection
and can afford it.
 
Self-containment requirement
- On closer scrutiny, the Sieckmann criteria seem to have been developed with traditional visual
marks in mind, and in satisfying some criteria an applicant may lose out on others. While visual
marks such as words or devices can satisfy all 7 criteria, for nonvisual marks this appears difficult
- In later decisions, the ECJ has relaxed the ‘self-contained’ requirement and conceded that
external clarificatory references may be necessary for greater precision, but only up to a point.
 
- Libertei Groep BV v. Benelux Trademark Office (2003) [ECJ] - colour
o Facts: Libertei is a company established in the Netherlands whose principal activity is the
supply of mobile telecommunications services. The BTMO is the competent authority with
regard to trademarks for the Kingdom of Belgium. In the space for reproducing the
trademark, the application form contained an orange rectangle and, in the space for
describing the trade mark, the word Orange' without reference to any colour code.
o Issue: Is graphical representation possible for colours?
o Held:
▪ In particular a sample of a colour may deteriorate with time. There may be certain
media on which it is possible to reproduce a colour in permanent form. However, with
other media, including paper, the exact shade of the colour cannot be protected from
the effects of the passage of time. In these cases, the filing of a sample of a colour does
not possess the durability required by Article 2 of the Directive. It follows that filing a
sample of a colour does not per se constitute a graphic representation within the
meaning of Article 2 of the Directive.
● Shades are also different on different mediums. So, the court was not satisfied by
the mere submission of a sample.
▪ However, it was held that the designation of colour using an internationally recognised
identification code may be considered to constitute a graphic representation which is
sufficiently precise and durable. Eg. Pantone Number
▪ Thus, as per this decision of the European Court of Justice, it can be gathered that a
mere sample of colour is not registrable, and it is to be accompanied by a description in
words. If still the said representation and description together fail to satisfy graphical
representation requirement, the same can be fulfilled by relying upon Internationally
recognised colour identification code. These requirements fulfill the ‘graphical
representation’ test. However, the sign would still have to perform function of a trade
mark for which it has to be distinctive. Due to the nature of colour marks and their
perception amongst the relevant public, it has been stated that a colour mark can only
be registrable on evidence of use. Therefore, a colour mark has to be in use prior to the
date of application for the purpose of registration
 ▪ Is it possible for a single specific colour to acquire a distinctive character for certain
goods or services within the meaning of Art. 3(1)(b) of the Directive?
● Art. 3 - Grounds for refusal or invalidity - (b) TMs which are devoid of any
distinctive character. Colours could be trademarked if they gave a specific
meaning, but mostly it does not because they do not have the specific capacity to
convey meaning. Court was divided
● The Court emphasised that although colours possess little inherent capacity for
communicating specific information due to their widespread use to advertise and
market goods without any specific message, they could, in principle, represent the
origin of the goods or services of an undertaking. It followed that a colour per se
was capable of constituting a trademark within the meaning of Article 2 of EUTD
▪ In the assessment of the distinctive character of a specific colour as a trademark, must
account be taken of whether, with regard to that colour, there is a general interest in
availability, such as can exist in respect of signs which denote a geographical origin? -
so could monopoly be a factor
● As regards the registration as trademarks of colours per se, the fact that the
number of colours actually available is limited means that a small number of trade
mark registrations for certain services or goods could exhaust the entire range of
the colours available. Such an extensive monopoly would be incompatible with a
system of undistorted competition, in particular because it could have the effect
of creating an unjustified competitive advantage for a single trader. Nor would it
be conducive to economic development or the fostering of the spirit of enterprise
for established traders to be able to register the entire range of colours that is in
fact available for their own benefit, to the detriment of new traders.
▪ Finally, the Court ruled that in assessing whether a trade mark has distinctive character
within the meaning of Article 3 of the Directive, the competent authority must carry
out an examination by reference to the actual situation, taking account of all the
circumstances of the case and in particular any use which has been made of the mark.
o Sum: A mere sample of colour is not enough and must be accompanied by a description.
But representation +description is not enough, can rely on intl. systems.
o But there is still relaxation of the system - allows applications to try to trademark colours.
 
Sound Marks
- Shield Mark BV v Joost Kist, 2003 [ECJ] - first case to have spoken about sound marks
o Facts: Shield Mark In the present case had obtained Benelux registrations in various forms
for 2 kinds of sound marks; a musical mark the melody of the first nine notes of Beethoven's
Fur Elise and the sound of a cockerel's crow as a non-musical mark. When it brought
trademark infringement and unfair competition claims against Mr Kist, the court found that
there was no infringement
o Held:
▪ For musical sounds, it concluded that sufficiently detailed musical notation would
suffice – for e.g. a stave divided into bars and showing, in particular, a clef, musical
notes and rests whose form indicates the relative value and, where appropriate,
accidentals and all of this notation determining the pitch and duration of the music.
Although a stave is not immediately intelligible, it may be easily intelligible, allowing
 the competent authorise and the public (including other traders) to precisely know the
sign whose registration is sought
● So, satisfies Art. 2 of the Directive

▪ However, for non-musical sounds, a description in words (“the sound of a cock

crowing”) was insufficiently precise while the onomatopoeia (for e.g. “Cock-a-doodle-
doo”) created a gap between sign as registered and the actual sound of a cock crowing.
● So, they said that non-musical sounds can be protected if they can be represented
graphically - but neither an onomatopoeia nor description is enough
- This gave rise to a puzzle – how were non-musical sounds to be represented graphically?
o Jurisdictions which have a more flexible representation requirement, such as the US, have
avoided this problem by simply requiring the deposit of a digital recording of the sound,
which is then available online on the trademark register.
▪ However, given the language of ‘graphical’ representation, the EU’s Office of
Harmonisation for the Internal Market felt compelled to experiment with depicting
sounds through complex graphical sonograms
▪ Deciphering these graphs was the province of experts and a complex as well as
incomplete substitute for the sound. The compromise finally adopted was a digital
sound recording deposit as well as a graphical representation in some form.
o But for registration in India, the Draft Manual seems to follow the teachings of Shield Mark
case insofar as detailed musical notation is required, but the Manual does not differentiate
between musical and non-musical sounds.
o So, how is one to depict a non-musical sound (e.g. a dog barking) using musical notation
alone?
▪ Eg. Yahoo registration in India - it has both a verbal and a musical component. This
verbalised component (a human voice yodelling ‘Yahoo’) cannot be adequately
represented by musical notes alone. If it is represented as a written description, this
leads to ambiguity. There are a number of ways of vocalising ‘Yahoo’. To me, the most
vivid version is indelibly associated with the song ‘Yahoo! Chaahe Koyi Mujhe Junglee
Kahe’ from the Hindi film Junglee (1961).64 If ‘Yahoo’ can be yelled or yodeled with
considerable variation, then words are an imprecise technique by which to represent
this sound mark.
● Won't be covered by musical works or copyright

▪ This question is still open.

- Note: Community trademark in EU: harmonisation.
o So ECJ will refer to Trademark Directive and CTMR (community trademark regulation) - It’s
the same basically.
 Absolute Grounds for Refusal of Registration

Procedure for filings in India

- Trademark search - look at the trademark register to see if there is a similar mark [optional]
- Trademark application TM A [s.18]
- Objections by TM Office [s.18] - if any
- Acceptance by TM Office [s.18]
- TM Journal Advertisement [s.20]
o Comes out once a week - the public is advertised to so that they can see if they are fine with
the mark being registered.
- Opposition by third party within 4 months [s.21] - if any
- Trademark Registration Complete [s.23]
- There's also trademark revocation etc.
- Smaller entities would have to pay lesser, lesser when filing online etc.
 
Absolute Grounds for Refusal of Registration
- Two kinds of grounds for refusal in the Indian act:
o Relative Grounds for Refusal
▪ Invalidity based on ‘relative grounds,’ which relate to conflicts with earlier trademark
rights belonging to third parties
▪ When explaining the relative grounds for refusal, it considers the bases on which a
trademark might be held to conflict with an earlier right.
▪ Section 11, TMA
o Absolute Grounds for Refusal
▪ Depends on lack of distinctiveness etc. Looks at it on its own.

▪ Invalidity based on ‘absolute grounds’ which relate to intrinsic qualities of the mark.

▪ When explaining the absolute grounds for refusal, it considers concepts such as
descriptiveness, lack of distinctive character, generic trademarks, exclusions based on
shape or other characteristics and bad faith.
▪ Section 9, TMA
- Idea [in both s.9 ITA 1999 and Art. 3 EUTD] is to avoid handing monopoly of rights in one entity
 
- Windsurfind Chiemsee Produktions v. Boots - EU
o Facts: Plaintiff used the word Chiemsee with an image on all of its products. They had been
using it for years, so there was a likelihood of confusion as the public was familiar with their
product (public perception). The respondents also used Chiemsee. They raised geographical
objections since Chiemsee was a lake so protection should not be given; and that since they
were using it in a different graphic form, it would not create any likelihood of confusion.
o Held:
▪ In assessing the distinctive character of a mark in respect of which registration has
been applied for, the following may also be considered:
● the market share held by the mark;

● how intensive, geographically widespread and long-standing use of the mark has
been;
 ● the amount invested by the undertaking in promoting the mark;

● the proportion of the relevant class of persons who, because of the mark, identify
goods as originating from a particular undertaking;
● and statements from chambers of commerce and industry or other trade and
professional associations.
▪ The court noted that Article 3(1 )(c) of the Directive pursues an aim which is in the
public interest, namely that descriptive signs or indications relating to the categories of
goods or services in respect of which registration is applied for may be freely used by
all, including as collective marks or as part of complex or graphic marks.
● Article 3(1 )(c) therefore prevents such signs and indications from being reserved
to one undertaking alone because they have been registered as trademarks
▪ But On consumer perceptions, the court held: If, on the basis of those factors, the
competent authority finds that the relevant class of persons, or at least a significant
proportion thereof, identify goods as originating from a particular undertaking because
of the trade mark, it must hold that the requirement for registering the mark laid down
in Article 3(3) of the
● So, if the public perceives it as such even though it is a place, it can be
trademarked - geographically indicative marks could be trademarked.
▪ Directive is satisfied.
o In line with the US view as well.
o Sum: If the petitioner shows that consumers attach meaning to the name- then despite it
referring to a real place- it can be trademark
▪ So, nothing mandates that a GI cannot be trademarked.

▪ But this caveat on showing association is maintained.

 
- Imperial Tobacco Company v. Registrar of Trademark, 1977 - India
o Facts: ITC wanted to TM the design on their cigarette box which had Simla written on it with
mountains. 1960 application was rejected on the grounds that geographical marks could
not be trademarked. 1966 it tries again showing that it had attained distinctive meaning,
public started to associate it with them etc. Again, Refused by the Registrar. Went to Cal HC.
o Rule:
▪ s.9 - Absolute grounds for refusal or registration

● (a) TMs that are devoid of any distinctive character

● (b) TMs which consist entirely of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographic origin,
or the rime of production of goods or rendering of the service or any
characteristics
o Held:
▪ Registration of a geographical name is not allowed unless it is proved that the mark has
acquired distinctiveness because of its user or if it is a well-known mark.
 ● People refer to simla as many other things, like tourist destination. So, with the
snow-clad mountains, creating an impression in the minds of users about tourist
destination. Can't TM it for a packet of cigarettes - unable to show the place had
become associated with a more popular tourist destination
▪ Court also observed that distinctiveness cannot be proved by the sales of the product
or popularity
▪ Applicant was unable to prove the relevance to SIMLA here and held that SIMLA is a
famous geographical place which cannot be registered
o Note the difference between the EU and Indian approach
▪ In ITC - Simla is a geographical name, ITC has only used it for a few years etc. so no
distinctiveness; Chiemsee - why consumer perception is more important, not
geographical origin
 
- Procter & Gamble Co. v. OHIM (2001)
o Facts: P&G filed an app for registration of the term 'baby dry' as a community TM [CTM] for
disposable diapers. OHIM refused saying it is not eligible under Art. 7(1)(c) on the ground
that it was descriptive of a good.
o Rule: Art. 7(1)(c) CTMR - Description of a mark is a ground for absolute refusal
o OHIM Argument: refused because baby dry implies the product is keeping the baby dry,
which is its essential function of the product. So, in direct violation of the provision since
the other competitors will not be able to use the term - defeating the purpose of TM law.
o CFI: agreed.
o ECJ:
▪ If there is any difference between the combination of marks submitted and the
common words for the relevant class, then there is an element of distinctiveness.
● Although keeping babies dry is the principle function, the term baby dry is not
used in common parlance. It is two words randomly put together. It can also be
used for some other products with similar functions like raincoats etc.
▪ Wrt trademarks composed of words, descriptiveness must be determined not only in
relation to each word separately but also in relation to the whole which they form.
▪ Whilst each of the two words in the combination may form part of expressions used in
everyday speech to designate the function of babies' nappies, their syntactically
unusual juxtaposition is not a familiar expression in the English language, either for
designating babies' nappies or for describing their essential characteristics.
▪ Word combinations like 'BABY-DRY cannot therefore be regarded as exhibiting, as a
whole, descriptive character; they are lexical inventions bestowing distinctive power on
the mark so formed and may not be refused registration under Art. 7(1)(c)
o Compare with Chiemsee - there ECJ emphasized on consumer perception heavily. But here,
the TM registration standard has become weak since low standard. Public perception
appears to be of lesser value. This case has instead referred to common parlance and
language aspects
▪ NS - she doesn't agree that it does not describe the purpose of the diaper. She thinks
the threshold to TM has been reduced by a lot in this case as they didn't look at
distinctiveness, public perception etc.
- Note: CTMR v. TMD - both are distinct in timeline, but the idea is to harmonise rights in the EU.
But the regulations are just distinct in time. Do not get confused. Art. 12 CTMR talks about the
descriptiveness
  
- Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd.
o Facts: Shaver with 3 rotary blades. In 1966, they applied to TM consisting of a graphic
representation of the shape and configuration of the head of such a shaver. R also tries to
sell a similar kind of blade. Philips accordingly sued Remington for infringement of its
trademark. Remington counter-claimed for revocation of the trademark registered by
Philips on the ground that it was functional, which was an absolute ground for refusal.
o High Court of Justice of England and Wales: allowed the counterclaim because the Philips
marks was unable to distinguish goods , devoid of any distinctive character and was
descriptive in nature. Phillips appealed.
o Court of Appeal:
▪ A shape whose essential characteristics performed a technical function and which was
chosen to fulfil that function should be used freely by all competitors - an aim in line
with public interest in TM law. Rules in favour of respondent - no infringement.
● How can something that depends entirely on the functional aspect be
trademarked?
▪ The rationale of the grounds for refusal of registration laid down in Article 3(1)(e) of
the Directive is to prevent trademark protection from granting its proprietor a
monopoly on technical solutions or functional characteristics of a product which a user
is likely to seek in the products of competitors. Article 3(1)(e) is thus intended to
prevent the protection conferred by the patent right from being extended, beyond
signs which serve to distinguish a product or service from those offered by
competitors, so as to form an obstacle preventing competitors from freely offering for
sale products incorporating such technical solutions or functional characteristics in
competition with the proprietor of the trade mark.“
- Ruling was agreed with by the next case.
 
- Lego Juris A/S v. OHIM and Mega Brands Inc. (2010) [ECJ]
o Facts: Lego applied for a CTM for the shape of a red toy brick in 1996. When this was
registered, MB who made similar blocks argued it was invalid. OHIM declared the
registration invalid for 'construction toys' in class 28 on the basis that the shape of the Lego
brick performed a technical function. Lego appealed unsuccessfully to the CFI
o Rule: Art. 7(e) - signs which consist exclusively of: (i) the shape, or another characteristic,
which results from the nature of the goods themselves; (ii) the shape, or another
characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or
another characteristic, which gives substantial value to the goods
▪ Lego bricks have to be joined together. The ridges help with that can these be TMed?
o CJEU:
▪ Each of the grounds for refusal in Article 7(1) must be interpreted in the light of the
underlying public interest.
▪ Patents v Trademarks

● Lego had a patent over this particular brick for a while. But when the shape only
talks about the technical solution as being developed, and they have also patented
 it - the protection of that shape by trademark after the patent has expired would
disadvantage competitors. Can't extend protection like this.
● EU - Technical solutions are capable of protection but only for a limited period,
after that it is free for use. So, Lego cannot simply convert its patent to TM
▪ The existence of other shapes which could achieve the same technical result does not
preclude the application of Article 7(1)(e)(ii)
▪ Held in favour of the respondent.
o In both this and Philips - If there are other shapes which could achieve the same functional
aspect, then a TM and monopoly can be given to a competitor?
▪ Several shapes could achieve the same result, so no monopoly. The judgement
supports the reasoning in Philips - reluctance with which they register shape marks
which do not incorporate a major non-functional aspect - depriving competitors.
 
- Lal Babu Priyadarshi v. Amrit Pal Singh, 2015 - India
o Facts: Trademarked consisted of the use of the word ramayana on agarbattis.
o Issue: Can the term Ramayana be trademarked?
o Rules:
▪ s.91(a) - TMs devoid of any distinctive character

▪ s.9(2)(b) - TM not to be registered if it is likely to hurt the religious susceptibilities of

any class or section of the citizens of India.
o Held:
▪ Looked into the Eighth Report on the Trademarks Bill,1993 -> any symbol relating to
Gods, Goddesses, places of worship should not ordinarily be registered as a trademark.
▪ There are many holy and religious books like Quran, Bible, Guru Granth Sahib,
Ramayan etc., to name a few. The answer to the question as to whether any person
can claim the name of a holy or religious book as a trademark for his goods or services
marketed by him is clearly 'NO'.
● Ramayan is the title of a book. So, using it as a TM could not be permitted. If any
word is added as a suffix or prefix, it may lose its significance as purely religious
and then might be TMed. They tried to add Om to ramayan but there was still
place in between both words and the picture still depicted Rama. The court also
felt they were not trying to TM om ramayan but only ramayan
● So, SC refused registration. Religious teachings and the names of deities were for
all, no one could claim monopoly
▪ Moreover, the Appellant has not been able to establish that the word "RAMAYAN" for
which he has applied the trademark had acquired a reputation of user in the market
inasmuch as, we find that there are more than 20 traders in the city using the word
"RAMAYAN" as a mark for the similar products and also in diff parts of the country
 
- Radico Khaitan v. Carlsberg 2011 [Del. HC]
o Facts: Use of 8 by the defendant in relation to beer violates the TM of the plaintiff's 8 pm
TM. Plaintiff argued they couldn’t use 8.
o Issue: Can a single number in this context be protected?
 o Defendant argument: Defendant submitted extensive pictures to show that 8 is very
common in the foods and drinks sector, used in both alcoholic and non-alcoholic beverages
- common to trade. It is also used by beer companies to showcase the strength of the beer
o Held: Court relied on this
▪ Though Section 2(m) of the Act [definition of a mark] is inclusive in nature, it has to be
examined from the facts and circumstances of every case.
● Numbers could come into picture, but it has to be checked according to the facts
and situations of each case.
▪ Radico had registration to a composite mark (‘8 PM’) and not an individual number (It
attributes 8 PM to the preferred recreation time of the evening when everyone desires
to unwind).
● The courts do not generally provide it for single numbers.

▪ The number 8 is common to the trade and also has some relevance with the alcohol
trade, due to which monopoly on the number cannot be granted in this case.
▪ Unless the prominent feature of the mark was proved to be prima facie enjoying high
degree of distinctiveness, it could not claim the benefits of statutory protection
● So, mark was not distinctive, statutory protection could not be claimed.
 
- Societe Des Produits Nestlé SA v. Cadbury UK Ltd 2017 [ECJ]
o Issue: Whether protection could be granted to Kit Kat's 4 finger shape
▪ Had to see whether consumers strongly associated the 4 finger shape with kit kat if all
other indicators were removed; and if it does not mention where it originated.
o Held: A consumer never purchased Kit Kat only after looking at the shape (the shape is not
visible from the opaque wrapper) and appreciated the shape only after buying the product.
▪ While the public may associate the shape with KitKat bars they did not use the shape
of the bar alone to conclude that the product is a KitKat.
▪ Therefore , the 3D mark had no inherent distinctiveness
o Potentially permanent monopoly on the four finger shape has to be avoided as it would be
unfair given that KitKat had never used the shape alone to promote or advertise KitKats [the
red and white wrapper is advertised, not the shape] - Have to see it from all the statutory
requirements. So, it could not registered as a TM.
 
- M/s Hindustan Development Corporation Ltd. v. Deputy Registrar of Trade Marks, 1955 [India]
o Facts: Appellant had registered a mark rasooi [meaning: kitchen] for hydrogenated
groundnut cooking oil. Registrar refused to register it due to direct reference to
characteristics [Section 6(1)(d) Old 1940 Act - now Section 9(1)(c) 1999 act]
o Rule:
▪ The trademark cannot be registered

● if there is a direct reference to character or quality.

● If the word has no distinctive character

● If it is a common word of a language

 o Held: Rasooi means kitchen - common word of a language; It has no distinctive character
and is a direct reference to characteristics of the oil [primary reason is the characteristics -
edible oil relating to cooking in the kitchen] - cannot be given protection.
o But oddly, rasooi is still registered under different categories - mustard oil etc. [Class 29 -
edible oils; similar goods and services]. If no one opposes a mark, it can exist irrespective of
judgement. Enforcement is a pain.
- Contrast: if used with something prefixed or suffixed, would it be protected? - Would be easier.
[Agarbatti case]
 
 Relative Grounds for Refusal of Registration

- s.11 - deals with relative grounds of refusal

 
- Sabel BV v. Puma AG 1997
o Facts: Puma had objected to the registration of Sabel's TM because it was deceptively
similar and cause confusion to consumers and dilute Puma's brand
o Rule: Art. 4(1)(b) - Further grounds for refusal include if the mark, because of its identity
with, or similarity to, the earlier trademark and the identity or similarity of the goods or
services covered by the trade marks, there exists likelihood of confusion on the part of the
public, which includes the likelihood of association with the earlier trade mark.
o Issues:
▪ Is it sufficient for a finding that there is a likelihood of confusion between a sign
composed of text and picture and a sign consisting merely of a picture?
▪ What is the significance in this connection of the wording of the Directive, in terms of
which the likelihood of confusion includes the likelihood that a mark may be associated
with an earlier mark?
o Held: Sabel's registration was allowed
▪ Conceptual similarity was not enough to show risk of confusion. You may think a mark
is similar to one you know but you're not confused because less level of similarity
▪ Global appreciation of the visual, oral, conceptual similarity must be based on the
overall impression given by the mark, and how an average consumer would perceive
the overall mark
● They wouldn't deconstruct the mark. They would look at it in its entirety

● There may be some association in the mind of the consumer, but that is not
enough.
 
- Amritdhara Pharmacy v. Satya Deo Gupta, 1993 [India SC]
o Facts: Respondent had applied to TM which had the word lakshmandhara. Petitioner
objected because their name was amritdhara, which would likely create confusion in the
minds of consumers.
o Held:
▪ Tests looked at:

● Reasonable Man's Test - The differentiation of the two marks must be done from
the point of view of a man with average intelligence and imperfect recollection
● Overall Impression Test - One must see the overall impression of the two marks.
This includes the overall phonetic and visual similarity of the two marks
▪ The question whether a trade name is likely to deceive or cause confusion by its
resemblance to another already registered is a matter of first impression and one for
decision in each case and has to be decided by taking an overall view of all the
circumstances.
▪ The standard of comparison to be adopted in judging the resemblance is from the
point of view of a man of average intelligence and imperfect recollection.
 ● Average person would not consider services etc., they would just see it as a whole

▪ The two names as a whole should be considered for comparison and not merely the
component words thereof separately.
▪ Considering all this, the two were not similar enough to cause confusion taken
together. So, Respondent allowed to register.
o NS - Court did not go back to the fact that both of them were for similar services. There
also might have bene confusion with people thinking they were sister brands etc.
 
- Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 (Indian SC)
o Facts: Appellant had registered the mark 'Glucovita' under the US Act in class 30 in respect
of Dextrose. Respondent applied to TM 'gluvita' in respect of goods specified in class 30,
which was opposed by the appellants. Deputy Registrar held that 'Glucovita' and 'Gluvita'
were not visually or phonetically similar and there was no reasonable likelihood of any
deception. Bom. HC held that the two marks were sufficiently similar so as to cause
deception and confusion and held that the respondent's mark could not be registered.
o Held:
▪ It is well known that the question whether the two marks are likely to give rise to
confusion or not is a question of first impression. In deciding a question of similarity
between two marks, the marks have to be considered as a whole
▪ The idea of the two marks are the same - presence of glucose in both - both show that
it is giving glucose to your body and providing nutrients
● Apart from the 'co' sound, it was similar enough. Presence of glucose, though one
was liquid and one was powdered, was enough to establish that there was a trade
connection [sugarcane etc.] between the two - leading to user confusion
▪ Presence of glucose is enough to establish a trade connection between the 2
commodities, despite the difference in goods i.e biscuits (which uses liquid glucose) &
glucose (powdered form of glucose)
 
- London Rubber Co. v. Durex Products (Inc.) 1958 (Cal. HC) - honest concurrent usage
o Facts: Both parties claimed to be proprietors of the term 'Durex'.
o Rule: Older trademarks act of 1940 - section 10 - in case of honest concurrent use, the
Registrar can allow the registration of the mark by more than one [current - s. 12]
o Held:
▪ User of the mark by the applicants has been for a considerable length of time and in
any event since 1932. But there was also honest concurrent usage in the present case
● Once honest concurrent use of identical or resembling marks in respect of the
same goods or description of goods is established, the Registrar has jurisdiction to
allow registration of the marks by more than one proprietor.
▪ Due regard to the interest of the public is to be given, therefore the Registrar is
entitled to consider socio-economic considerations (contraceptives are necessary for
the welfare of the nation, so why to put restrictions - allowed both to go ahead with it)
 
- Daimler Benz Aktiegesselschaft and Ors. V. Hydo Hindustan, 1993 [Del. HC] - honest conc. usage
 o Facts: A man on men's underwear brand used the word benz and the image was of a man
with his legs spread and arms together forming a mark similar to the Benz's three spokes
circle. Is it an infringement?
o Held:
▪ The Trademark law is not intended to protect a person who deliberately sets out to
take the benefit of somebody else's reputation with reference to goods.
▪ “The word "Benz" has been associated with a Car ever since I remember. This car had a
device upon it; a three pointed star in a circle/ring. Both, the name and the device,
have always, in my memory, been inextricably linked. I am unable to ignore this
connection.” (para 3)
▪ So, the court refrained them from using the word Benz in relation to underwear.
 
- Canon Kabushiki Kaishi v. MGM
o Facts: In 1986, MGM wanted to apply for registration of the trademark 'Cannon' in relation
to goods like films recorded on cassettes. Canon objected to this on the ground that it
violated their previous trademark 'Canon' which was in respect of film and motion pictures.
o Registrar: Normal public would not get confused since video cassettes and films, especially
since it did not come from the same manufacturer
▪ Contrast with Lakshmandhama where they thought people would be confused.
o Rule: Art. 4(1)(b) TMD - likelihood of confusion even where the public believes the goods
and services are origination from different places
o Issue: Whether there can be a likelihood of confusion within the meaning of Article 4(1)(b)
of the Directive where the public perception is that the goods or services have different
places of origin ?
o Held: There may be a likelihood of confusion within the meaning of Article 4(1)(b) of the
Directive even where the public perception is that the goods or services have different
places of production. By contrast, there can be no such likelihood where it does not appear
that the public could believe that the goods or services come from the same undertaking or,
as the case may be, from economically linked undertakings
▪ So, public may know they were produced at different places but they may be confused
that there could be a link between the companies due to immense similarity.
▪ Overturned Registrar.
 1 – Foundational Theories of Patents

[Reading: Lemley - Myth of sole inventor]

 
Introduction
- Lemley has a utilitarian belief; believes in justifying IP on empirical evidence. IP is to be
structured in a way it is doing good for everyone.
- Foundational Myth - image of sole genius. This genius requires all forms of support to invent. Eg.
Einstein etc. We are groomed to believe they work in isolation from their social environment.
o However, Lemley says invention in a social phenomenon. Area covered by patents is as
social as area covered by copyright
- Strict empiricist- dismisses natural law. But he doesn't only stand against non-empiricist
theories, but even within his own school of law, he is a purist. Faith-based arguments like saying
patents are needed for innovation etc. are challenged.

Prevalence of Simultaneous Invention

- Merton’s singletons (an invention which is sprung from a genius) are rare.
- Multiple simultaneous invention is how progress happens
- Most innovations happen not because of genius but because the components of time and
conditions are right for it. This proven by multiple studies.
- If time and circumstance are so important:
o Invention is part of an ongoing process where inventors contribute to improving the tools
they are given
o Inventors very rarely come up with ideas that are unique and haven’t been thought of by
others
- May fault the studies for focusing only on big-name inventions: high signalling effect may cause
the multiple people working on it. But small inventions also have this- 98% of suits take place
against independent inventors and not copiers
o This shows that others were also on the verge of the same invention
- Possible explanations
o Inventions take place due to consumer demand
o Inventions also arise from binding constrains on the supply side.
o Invention is incremental
o Inventors work within constrains of what we know about principles of science and stuff
▪ Like rats in a maze- all will find the same path because it’s the only one to be
discovered.
- Therefore, idea that there is only the one genius inventor, which is intuitive argument, is wrong.
- Exceptions
o Many of these reflect opportunistic exploitation of accidental discoveries rather than
conscious invention. Eg: Charles Goodyear with invention of Vulcanised rubber.

Theoretical justification of patent law

1. Incentive or Inducement theory – the genius out there will not invent without a patent system
because they would not get a return on their investment otherwise.
- But there are other circumstances that bring about inventions – time and conditions.
- Do Inventors really need an incentive?
o Inventors will invent anyway – Eg. Light bulb etc.
o Many inventions are pure luck – Eg. Penicillin.
- Deadweight lost associated with patents – If we patent inventions we would have obtained
without the cost of a patents, then there is a high social cost.
 o Static inefficiencies are created by the costs of the monopoly of patent law.
o Dynamic inefficiencies - other creators who want to build on an idea cannot do so.
- Also creates rent seeking behaviours that is wasteful
o Imposes high administrative costs
o Overinvestment in research is itself a waste.
- Patents ensure transactions facilitate exploitation. Creation of corporate monopolists, not
innovation. Moreover, there is no need to create a monopoly- trade secret may be sufficient to
get people to enter into contracts.
- So unclear if patents needed for innovation. The incentive theory does not explain the nature of
patent law as it exists today.

2. Commercialisation theory – Invention is only one part of the innovation cycle.

- Distinguishes invention from innovation.
o Prospect theory – give the patentee exclusive rights so that they will be incentivised to
innovate and maximise the value of that space. So, only is patent is given would the
inventor further innovate or improve upon the product.
- However, they may not have the incentive to disclose further inventions. Commercialisation
through exclusivity does not work.
- Moreover, inventors don’t need supra-competitive returns or exclusivity to bring stuff to market
o No need for market control- ordinary rents and other non-patent advantages like first
mover advantage help inventors anyways.
o No particular benefits to society- no real development of new fields of application due to
commercialisation.

3. Disclosure theory – Says that patent law brings what would otherwise be a secret into the public
domain. Patent disclosures are important sources of information that inventors rely on, which is
why they are also said to be better than trade secrets.
- However, this is glorified.
o People don’t look at patents as a primary source of information. It’s usually academic
papers about contemporary topics, etc.
o Structural issue – dissuades people from looking at patent info
o Lawyers make patents as vague and unrevealing as possible.
- So, none of these 3 theories justify patent law.

Lemley’s Alternative Theory: Patent Race Theory

- Fisher- continuous engagement w/ IP theory is used to develop the law – this is one such theory.
- Patents contribute to the ‘race’ phenomenon – race to get the invention and monopoly rights.
o Inventors are acutely aware of the possibility of patent rights and the risk that others may
obtain core patents
o Inventors are aware of the race between competitors who were racing to reach a goal
before the others. Everyone is aware of where the others are in the race.
- Benefits of races:
o People work faster to get to the goal. Patent date is from filing- so will expire sooner and
will be available sooner.
o Commercialisation theory focused on monopoly. But the competition to get this monopoly
is what is important. So, doesn’t encourage only one entrant but contributes to getting
more entrants into the race.
o Assumption: Racing would result in many inventors spending resources to get to a patent
first, making the efforts of all but one to be a waste – Wastage of resources.
 ▪ However, people do not achieve the same end in the same way. So, each process also
contributes something. Eg. Air travel through plane/helicopter.
o May get greater variety of inventions quickly- this benefit means races have a hard rep

Is this theory enough to justify patents?

- Will need to show the race for a patent is what it motivates, not race for reputation etc.
o So similar flaw to the commercial theory- if there are other reasons then this is less strong.
- Inventors may also be racing to the invention to avoid losing out or being excluded.
o Sometimes patents are secured just to prevent others from shunting them out. This is a
stick approach. [Carrot approach – dangling incentives]
o Those who don’t want to be excluded will always a push towards weak system
▪ Eg- will want prior usage rights so they cannot be excluded.
o Winner take all approach could be a benefit - Diluting the patent system would mean that
others in a race have less incentive because the seriousness of the stick is lost out on.
▪ Even if this is a carrot- the race theory would have different outcomes and different
processes that could be beneficial to society
- However, major restructuring is required for this to happen
o We would not pay attention to others of skill in the art. Simultaneous invention would not
be evidence against granting of a patent.
o First to file and first to invent system- First to invent would be borne out by race theory.
o Exchange of info would be integral to many races. But it also creates an incentive to hide
the progress. This would delay commercialisation and raise costs
o Risk of losing a patent race is an odd justification for invention
- Therefore, it is only a partial explanation, so unlikely that patent law will take up this approach

2 Criticisms – Bharti
- If we look at critiques of sole inventor, other scholars objected to the simultaneous invention
claim. So, must wait for more evidence to see whether invention is truly simultaneous or not. If
not, the incentive theory would still stand.
- Even if Lemley’s position is correct, have to look at each industry separately to see whether
monopoly is pushing people to compete etc.
 2 – Overview of the Patent Regime

International Regime
Paris Convention
- Established:
o National treatment - Nationals of other countries have to be treated on par with the citizens
of the host country
o Independence of patents - Existence of patent does not depend on existence anywhere else
o Priority - Who files first gets priority. You get time of 12 months to file in other countries to
protect the non-obviousness or novelty of your invention after the grant of a patent in one
country. In other countries, priority is the first date filed in the first country
- Substantive obligations
o Right of the inventor to be mentioned in the patent - moral claim secured
o Patent not to be refused or invalidated on the basis that that the sale of the claimed
product or a product made by claimed process is subject to limitations or restrictions
resulting from domestic law
o Compulsory Licensing – to prevent abuses which might result from exercise of exclusive
rights conferred, such as failure to work the patent in that country.
▪ WIPO Guide - failure of work means working an invention industrially. So, mere
importation of an invention may not get covered by failure to work. Defined to mean
you have to industrially manufacture within that country, in the absence of this,
compulsory licensing is permitted to be issued by that country.
▪ Voluntary license v. compulsory licence - latter is where market forces fail so govt. has
to force the holder to give license, former is where the holder will voluntarily license
● Forfeiture – only where compulsory licensing would be insufficient to prevent
abuses. First, use compulsory license to prevent abuse. If not possible, forfeiture.

Patent Cooperation Treaty (PCT) 1970

- Procedural. Without this, inventors would have to simultaneous file in many countries. So, you
can file a centralised application after which you have time to figure out which jurisdictions to
pursue a patent in.
- Creates a mechanism for an international patent application.
o To remember: there is no central or international patent
o Does not establish international patent, but rather allows for the filing of an international
patent application to enable protection for an invention to be simultaneously sought in any
of the contracting states.
- Like Paris Convention, PCT is also administered by WIPO

TRIPS (1994)
- Incorporates key provisions of Paris Convention
- Further lays down minimum standard with respect to substantive Patent Law.
o Art 27(1) stipulates that patents will be available for inventions, whether products or
processes, in all fields of technology, which are new, involve an inventive step, and are
capable of industrial application
o New - novelty; inventive step - non-obviousness; industrial application - utility; Subject-
matter - So, NUNS test.
- Provisions of Non-discrimination:
o Patents shall be available and patent rights enjoyable without discrimination as to place of
invention, the field of technology and whether products are imported or locally produced.
 o Before, India had excluded pharmaceuticals so that all info is in the public domain etc. TRIPS
made non-discrimination compulsory.
- Exclusions – Members may exclude from protection, inventions:
o whose commercial exploitation would be contrary to public order or morality
▪ Eg. I can't claim something that reduces air pollution
o Diagnostic, therapeutic, and surgical methods for the treatment of humans or animals,
o Plants and animals other than microorganisms, and essential biological processes for the
production of plant or animals other than non-biological and microbiological processes, etc.
- Exceptions – Members may provide exceptions to general norms.
o Eg. Fair use exception
o 3-step test
▪ Exceptions must be limited

▪ They must not unreasonably conflict with the normal exploitation of patent

● Must have freedom to exploit current and future potential of patent

▪ Must not unreasonably prejudice the legitimate interest of third parties.

- Article 31 - permits compulsory licensing – provided the proposed user has made efforts to
obtain authorisation from the right holder on reasonable commercial terms and conditions and
that such have not been successful within reasonable time.
o This condition may be waived in situations of national emergency

Doha Declaration (2001)

- Important - Art. 31 on compulsory licensing. Manufacturing of drugs is primarily to be of sale
within domestic countries previously, which was problematic for African countries with less
manufacturing companies. The declaration authorised TRIPS council to find a solution
- Created Art. 31(bis) – waiver to facilitate members, in reliance on a compulsory licence, to
export pharmaceutical products to other members with no manufacturing capacity in the
pharmaceutical sector. [Applicable only for those countries which have adopted the protocol
amending the TRIPS agreement]
- So, now if an African country applies, then the govt. can give compulsory license to them to
export to that country. But that country has to utilise it only for the purpose for which it was
granted, it can't be put on the market
 
Indian Patent Law
 
Securing Patent in India
- Who can apply?
o True and First Inventor
▪ Two paradigms. First to file paradigm is whoever files first [Like how Lemley says there
is a race]; First to invent is who actually invented the thing first [America shifted to this
recently]. India follows first to file first, but the term is 'true and first' inventor.
Literally, it should be the first to invent, but due overwhelming opinion (due to history
and England etc.), it is seen as first to file.
o Assignee of the Inventor
o Legal Representative of the Inventor
- Unity of Invention
o Application only for one invention/group of inventions relating to a single inventive concept
o Otherwise asked to divide
 o Eg. Pen and pen holder would be two different patents. But pen and process for
manufacturing the pen can be a group of inventions with a single inventive concept
- Form of Application
o Provisional/Complete - Provisional - if you're not sure how you draft your claim etc. You
may be able to describe but not claim, so until you claim, you can file provisional to ensure
you are the first to file.
o Convention Application - If you have filed in a country with which India has a convention
treaty. Priority would be determined wrt where you filed first
o PCT Application – PCT application - once intl. phase is over, and you are deciding which
country, if India is one of them, the application in the India patent office is a PCT application
o Divisional Application – If you have to divide it into two, then the second is divisional
- Priority
o Date of First Filing
o Important to Determine Novelty, Non-Obviousness of the Invention claimed.
- Foreign Applications
o Must keep the controller informed about the foreign patent applications on the same
inventions until the patent is granted in India.
o As and when required, the controller must also be informed about proceedings of the
foreign applications
- Foreign Filing Permit
o Person resident in India can file a foreign patent application only after taking permission of
the IPO -OR- After filing in India first and then waiting for six weeks to see if any secrecy
directions are given in that time
o The reason for this: many inventions might be sensitive from defence/ security purposes, so
the govt. would want to peruse it before you apply abroad
 
Patent Prosecution
- Filing of Application – If provisional application is filed, then within 12 months, the complete
application must be filed
- Publication – To be published on the completion of 18 months from the priority date or filing
date, whichever is earlier
o Remains secret till then and hence does not become the part of prior art until publication
o The rights of the patentee start from the date of publication (though can be enforced only
after publication). But you can also ask for earlier publication
- Request for examination
o To be made within 48 months from priority or filing date whichever is earlier, but
examination does not happen before publication.
o Applicant receives First Examination Report (FER) in six months from the request for
examination or publication whichever is later
▪ If you have self-examined and thought it wasn't patentable, then you can drop the
claim. But if you want it, you can request for examination.
▪ If first examination report has substantive problems - can withdraw or contest (through
written statement or seek audience and defend)
- Pre-Grant Opposition – Can be filed by anyone after the publication till the grant of patent.
o The patent becomes public and everyone reads it. Anyone who has a problem can oppose it
– Eg. Fraudulently took it from you, they are claiming more than they disclosed etc.
o On the grounds mentioned in section 25 (1) of the Act
o Controller would decide if the patent application is to be rejected or needs amendment and
the same will be notified to the applicant, who has three months to respond
- Grant of Patent – If the results of First Examination report and the Pre-Grant Opposition
proceedings are favourable, the patent shall be granted in favour of the applicant.
o It remains valid for 20 years from the date of filing; Grants rights
- Post-Grant Opposition – To be filed by ‘interested person’ within one year from the date of
publication of patent
o Interested person is a person engaged in, or promoting research in, the field to which the
invention relates.
o Grounds are mentioned in section 25 (2) and are same as those for pre grant opposition.
  
PCT Filing - on slide
- Two ways of filing - directly filing in your country; or filing in another convention country (but
only 12 months). PCT gives you room to file PCT application which gives you 18 months.
- You get international search report and an opinion (non-obligatory) as to whether they think
your invention is patentable or not. So, you get to know obstacles at an early stage through one
application, rather than getting to know after applying in each country [Can drop it if it's not
patentable in most countries, to save substantial costs etc.]
 
Complete Patent Specification must have these elements:
- Title; Preamble; Name, Address and Nationality; Field of Invention; Prior Art and Problem to be
solved; Object of the invention; General Statement of the Invention; Detailed Description of the
Invention; Statement of Claims; Drawings; Abstract; Deposition [if you can't describe in words]
- Statement of claims: Claim what exactly is your property
o Parts: Introductory; transitory; body
o Eg. Pencil comprising or consisting of eraser. Pencil – introductory; Comprising of or
consisting of – transitory. Keeps it open-ended; Eraser – body
o Chemistry etc. - consisting > comprising as comprising might change nature of invention
 
Relationship between description and claim
- Description – Informative part that discloses information to society [quid-pro-quo on which
world gives you monopoly]. The description or disclosed part is what helps you make a claim.
- Claim – What exactly you are patenting
o Anything beyond disclosure would not be seen as a claim
o Independent claims and dependent claims
▪ Independent - broadest claim. Eg. Car with 3 wheels

▪ Dependent claim - narrowing down what you have claimed. Eg. Car with 3 wheels and
steering wheel. This is done because your invention might be challenged on novelty
etc., as board claims are more vulnerable to challenges, then you can secure it based
on the dependent claim.
 
● O’Reilly v. Morse
- Facts: X invented “American Electromagnetic Telegraph” and did not restrict his claims to the
use of electromagnetism in the particular machine/system he invented.
- Court (Majority)- X claims an exclusive right to use a manner and process which he has not
described and has not invented, and therefore could not described when he obtained his patent.
o Prof. Morse has not discovered that the electric current or galvanic current will always print
at a distance, no matter what may be the form of machinery or mechanical contrivances
through which it passes. He has not discovered that electromagnetic current, used as
motive power, in any other method will do as well. So, since it did not inform public of how
to use electro-magnetism, it was insufficient to support his claim.
 o When the description is not an enabling claim, it is not to be given.
▪ To see if it’s enabling, you have to see if someone skilled in that art can be able to work
out how to use this invention independently.
- Minority view: Value of innovation - They wanted to correlate the award with the innovation,
otherwise would not incentivise others to create. So innovative part was printing letters with
electromagnetism, should be protected
o Thought market dynamics would come into play to ensure downstream innovation
▪ Blocking patent - if B makes improvements on A's broad invention, then has to get
license from A. Two parties would then get together as they would have business
reasons to cross-license.
o Bharti - But if my co-invention is being made redundant with a newer invention, why would
I give license to newer invention. Tension.
- All these cases - not on legal issues but policy issues.
o Majority is apprehensive of over-protection which may kill downstream innovation
o Minority is concerned about inventors not being incentivised to create at all.
 
● Consolidated Electric Light Co. v. McKeesport Light Co (The Incandescent Light Case), 1895
- Facts: Patent under challenge was an incandescent lamp with carbon material for incandescent
conductors. In practice, the inventors used carbonised paper, and also wood carbon.
o Claimed - An incandescing conductor for an electric lamp, of carbonised fibrous or textile
material, and of an arch or horseshoe shape, substantially as herein before set forth.
o Edison - came up with something similar
- Court – is the complainant entitled to a monopoly of all fibrous and textile materials for
incandescent conductors?
- Held: No. From Edison’s experiments, it is clear that there is no such quality common to fibrous
and textile substances generally as makes them suitable for an incandescent conductor, and that
the bamboo which was finally pitched upon, and is now generally used, was not selected
because it was of vegetable growth, but because it contained certain peculiarities in its fibrous
structure which distinguished it from every other fibrous substance.
o For a claim on a genus – have to give sufficient examples that the genus has that particular
element which you are claiming. But if you are preventing others from identifying other
genuses, then the claim will be void. Claim on a species would defeat a subsequent claim on
genus, but you would have had to experiment on all the genuses in the species for that.
Cannot claim a genus to be representative of the species.
- Commenting on the importance of description in a patent specification, the court said “if the
description be so vague and uncertain that no one can tell, except by independent experiments,
how to construct the patented device, the patent is void.
 
Summary
- Description serves two purposes
1. Quid-pro-quo
2. Helps give meaning to claims – So, there must be a correlation between disclosure and claims -
done by enabling disclosure - must be able to do it without experimenting or any further
expending of resources
 
● Generics (UK) Ltd. v H Lundbeck (2009)
- Facts: Some cytalopram (XY) for separation and extraction of positive something. XY was not
previously available but is important for Z purpose.
- Issue: Someone figured out how to make XY and claims it, can they claim Z even though there
may be other methods of creating Z? Innovative part is the method to create Z.
o I.e. Can there be a valid claim to a product, if it is a known desideratum (thing required), if
the inventor has found a way of making that product?
- Held: When a product claim satisfies the requirements of novelty and non-obviousness, the
technical contribution to the art is the product and not the process by which it was made, even if
that process was the only inventive step. No statutory provision to say that claim should be
rejected because there are other ways of making the product (once shown that it is novel and
non-obvious, sufficient disclosure). In this case, novelty and non-obviousness was not seen, but
there was sufficient disclosure that allowed teaching through the patent.
o Requires description to be enabling
 3 – Subject Matter

Two approaches
- American/Canadian approach - positive definition
o In US Section 101 says - Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this title.
o Doesn't provide exceptions.
o But judicial exceptions:
▪ Laws of nature, natural/physical phenomenon, abstract ideas

▪ These three terms are typically used by the courts to cover the basic tools of scientific
and technological work, such as scientific principles, naturally occurring phenomena,
mental processes, and mathematical algorithms.
- Indian approach - exclusionary definition
o Lists subjects that cannot be patented.
▪ s.3 Indian patent act - many won't be patents anyway (literary etc.); Excludes frivolous/
invention the commercial exploitation of which would be against public policy etc.
▪ s.4 - relating to atomic energy

Can Life be patented?

● Diamond v. Chakraborty (1980)
- Facts: Genetic Engineer Chakrabarty - altered something in bacterium which was capable of
breaking down crude oil - to be used in treating oil spills. Application for patent was rejected
- District Court: Living things could not be understood as potential patentable subject matter
- US SC: Reversed judgment, held that it can be patented because of the human intervention.
Here, the patentee had produced a new bacterium with markedly different characteristics from
any found in nature and one having the potential for significant utility
o Common expression: "Anything under the sun that is made by man,“ is patentable
▪ Court said that the use of expansive terms such as “manufacture”/ “composition”
implies Congress plainly contemplated that patent laws would be given wide scope. So,
said framers wanted innovation. So, statute does not exclude anything
▪ But this does not mean everything is patentable. Laws of nature, physical phenomena,
abstract ideas are not be patentable. Newton could not have patented law of gravity.
● Such discoveries are manifestations of nature, free to all men and reserved
exclusively to none – So, naturally occurring discoveries are not patentable.
● Live, man-made microorganism is a non-naturally occurring composition and may
be patented.  This issue, regardless of its philosophical implications, is strictly a
matter of statutory construction. The fact they are alive is not relevant, patentable
- There was another case filed about creation of a Chimera or another human being. This was
dismissed - challenged the perception that anything made by man is patentable
o Court rejected arguments implying that plant protection legislations suggested patent law
did not protect life forms by pointing out totally different reasons for their enactment.
 ▪ 1930 and 1970 Acts dealt with plants. The argument was that if patent law always
included plants, then why two statutes. But this was only a formal requirement,
nothing excludes it by definition.
o This genetic technology was unforeseen when Congress enacted § 101.
 
● Harvard College v. Canada (2002) [Onco mouse case]
- Facts: X created a mouse prone to certain types of cancer for cancer research
- Difference from DvC: DvC was about lower life forms; this is about higher life forms
- Issue: Whether higher life forms are patentable
- Held: Definition is not unlimited in the sense that it includes “anything under the sun that is
made by man”. In drafting the Patent Act, Parliament chose to adopt an exhaustive definition
that limits invention to any “art, process, machine, manufacture or composition of matter”.
o So, Canadian court thought it meant more about mechanical forms and not life forms, as
the Parliament did not define “invention” as “anything new and useful made by man
o The Act failed to address many of the concerns that were raised by the patenting of higher
life forms, a factor which indicated that Parliament never intended the definition of
“invention” to extend to this type of subject matter.
o Concerns external to patent law jurisdiction such as enviro etc. could be kept aside. Those
concerns closer to patent law deserved attention of Parliamentarians
▪ Patenting of higher life forms has characteristics different from patenting mechanical
inventions: Self-replicating; Incapable of full description – products of bio-tech have
important characteristics that have nothing to do with innovation and are a product of
that life-form; May deter further innovation in the biotech field. Court notes that
access to basic DNA sequence at reasonable cost is most important. Patents would
increase costs.
▪ Worry: Is patenting higher life forms allowing patents too early in the process.

● Pharma and biotech is where it is more important for patents to secure

investment. So, when should patents be inserted into the system? Down-stream
towards marketable medicines or cells etc.? - dealt with in Myriad Genetics
- Court, however, created a distinction between lower and higher life forms, said that you could
manufacture bacteria, but you can't manufacture a mouse
 
European Convention also dealt with this:
- European Patent Convention,1973 proscribes the following:
o plant or animal varieties or essentially biological processes for the production of plants or
animals; this provision shall not apply to microbiological processes or the products thereof;
o inventions the commercial exploitation of which would be contrary to "ordre public" or
morality; such exploitation shall not be deemed to be so contrary merely because it is
prohibited by law or regulation in some or all of the Contracting States.
● Onco mouse case
- EPO developed a utilitarian balancing test – This aimed to assess the potential benefits of a
claimed invention against negative aspects. Other considerations could also be taken into
account in the balancing test, such as environmental risks, or public unease.
- In this case, suffering of the onco-mice was seen against the expected medical benefits to
humanity. The EPO concluded that the usefulness of the oncomouse in furthering cancer
research satisfied the likelihood of substantial medical benefit, and outweighed moral concerns
about suffering caused to the animal.
 o Since the claim was for an animal and not an animal species or variety, can be patented
o Looked at utilitarian perspective - it was to investigate cancer v. life of one mouse.
● Upjohnmouse case
- Facts: a transgenic mouse, into which a gene had been introduced such that the mouse would
lose its hair. The objective was to test products to treat human baldness and wool production
techniques. Patent rejected on the basis of above-mentioned utilitarian logic.
o Applying same utilitarian scale - harm to animal was too large, no large benefits to humans
 
Conclusion
- On the scale of anything under the sun is patentable: US and Canada on extremes, whereas the
EU is in the middle
- India - plants and animals and varieties are not patentable, so also on an extreme.
 
● Association for Molecular Pathology v. Myriad Genetics [Exception]
- Facts: Genetic markers linked to a certain disease – Wanted to see predisposition to a particular
disease. MG wanted to have patents on isolated DNAs having portions of gene sequences, had
some methods for comparing/ analysing them for some types of cancers
- Previous assumption: Isolated gene is patentable since it does not occur isolated in nature
- Issue: are isolated genes patentable?
- Held: Natural phenomenon not to be patented
o No alteration or human intervention. DNA’s existence in an isolated form alters neither
this fundamental quality of DNA as it exists in the body nor the information it encodes.
Myriad’s contribution was uncovering precise location and genetic sequence of the genes.
o What could be patented?
▪ Court distinguished between genetic information found in nature and genetic
sequences created using naturally occurring sequences but modifying info by removing
certain parts – human intervention is key. Said that the act of reproducing naturally
occurring substances via sequenced DNA through lab processes (Eg. Purifying, isolating,
producing in quantity) involves human intervention
▪ If Myriad had somehow shown an innovative way of manipulating genes while
searching for ones they were isolating (process of discovering the gene), that could be
patented. But process of isolating gene was already well understood. There were also
no new applications, they did not see usefulness
▪ Could have patented any new applications of the isolated genes

- Difference between this and Chakrabarty:

o Chakrabarty – It was a product of human ingenuity having a distinctive name, character and
use – bacterium was new with markedly different characteristics from any found in nature.
o Myriad – did not create anything – it found an important gene but separating the gene from
its surrounding genetic material is not an act of intervention.

Implication of this decision – At what point should there be patent injected into the system?
- In Myriad, court had held:
o Ground-breaking, innovative, or brilliant discovery does not by itself satisfy §101 inquiry.
o Many of Myriad’s patent descriptions simply detail the “iterative process” of discovery by
which Myriad narrowed the possible locations for the gene sequences that it sought. But
extensive effort alone is insufficient to satisfy the demands of §101.
 o Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome
severs chemical bonds and thereby creates a non-naturally occurring molecule.
▪ Myriad’s claims are simply not expressed in terms of chemical composition, nor do
they rely in any way on the chemical changes that result from the isolation of a
particular section of DNA. Instead, the claims understandably focus on the genetic
information encoded in the BRCA1 and BRCA2 genes.
▪ Claim is just based on information presented in the gene. So, there is no difference
between the info in the natural state and changed state.
o About cDNA the court noted the argument that….“[t]he nucleotide sequence of cDNA is
dictated by nature, not by the lab technician. But the lab technician unquestionably creates
something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but
it is distinct from the DNA from which it was derived. As a result, cDNA is not a “product of
nature”. cDNAs - gene libraries - could be used to find genetic mutations, huge laboratory
application. Since this is created by humans, this is patentable.
- In general - those from pure sciences like these judgments, but those in the field of application
find it to be a blow
 4 - Novelty

 Indian Law
- Indian Statutory definition: Section 2(l) "new invention" means any invention or technology
which has not been anticipated by publication in any document or used in the country or
elsewhere in the world before the date of filing of patent application with complete
specification, i.e., the subject matter has not fallen in public domain or that it does not form part
of the state of the art
- Novelty requirement asks if the invention is new. If it is not new, it is said to be anticipated by
prior art [If something is not novel, it is anticipated – Anticipation Test for Novelty]
- An invention is new if it does not already form part of the state of the art (i.e. everything that is
available to public before the priority date of the invention).
- Two-fold rationale for invention requirement:
o Right to work rationale – Can't stop whoever was using it before
o Information disclosure – Discloses information for after monopoly ends
 
Types of Novelty
- Absolute; Local; and Relative Novelty
o Absolute - definition does not geometrically limit where a product must be new, must be
new everywhere
o Relative - Written material can be looked at anywhere in the world but must be based on
use in that territory. Eg. US previously had this. Knowledge was public but not documented,
so it used to not be patentable. After 2011, no qualification on use only in the US
o Local - Before India 1977 act this was there
- Novelty can be defeated by the inventor himself/herself.
o If you have disclosed invention before you filed, then you've disclosed without incentive
etc., there is no legitimate claim
- Exclusions: Material deemed excluded from the state of the art [Chapter VI –Anticipation]
o If someone published info before you disclosed without permission [fraudulent disclosure]
o If any other application is filed before your application, would not count as prior art
o If you display it in public, will be hit. But exception if it is permitted by the CG in Gazette
o Description by author in a paper or reading it in a conference (so they can get funding etc.) -
must be filed within 12 months though
o Public use of invention for a public trial [Eg. Train engine that you have to run on rails etc.] -
reasonable trial - no reasonable anticipation.
o Provisional specification or convention specification
 
Doctrinal Framework
- All the elements of your invention must be in prior art, and this must be a single prior art
o Can't bring many prior arts together, combine them, and say it already existed
o Eg. Can't bring A pen and B cap together, have to show that the pen and cap existed
together even before
- Prior art should be sufficiently enabling
o To demonstrate anticipation, the proponent must show “that the four corners of a single,
prior art document describe every element of the claimed invention.” But this statement
does not tell the whole story. Because the hallmark of anticipation is prior invention, the
prior art reference- in order to anticipate- must not only disclose all elements of the claim
within the four corners of the document, but must also disclose those elements arranged
as in the claim (in other words it must enable)
 o Eg. Claim required several ingredients to be mixed in a specific order – this would not be
anticipated by a prior art reference that disclosed all of the ingredients but not the order
▪ [A]n anticipatory reference [must] show all of the limitations of the claims arranged or
combined in the same way as recited in the claims, not merely in a particular order.
[Federal Circuit in Net MoneyIn, Inc. v. Verisign (2008)]. So, you can't claim process of
making tea by just stating ingredients. Must give grams, interrelation etc
o Sufficiency of disclosure discussion. As your invention will become the next prior art, it can't
become blocking.

● Altas Powder Company v. IRECO Incorporated (Fed Cir. 1999) [US]

- Facts: claim on an explosive composition. The claim now had overlapping percentages from the
earlier composition percentages. [Slide 7 Novelty]. The only element of the claims arguable not
present in the prior art compositions was “sufficient aeration… entrapped to enhance sensitivity
to a substantial degree”. They said in the absence of this air, there would be no explosion
- Issue: Whether the element being an additional element created novelty
- Held: In chemical compounds, if a single prior art species within the patent’s claimed genus
reads on the generic claim, it anticipates. So, species of more general claim is similar, the
elements are identical. The only new element is the air
o Court held that to anticipate a claim, a prior art must disclose every limitation of the
claimed invention, either explicitly or inherently.
o Inherency doctrine - if there is an element present in the prior art inherently, even if it were
not known but people were enjoying its benefits, it would defeat novelty of the invention
o Under principles of inherency, if the prior art necessarily functions in accordance with or
includes claimed limitations, it anticipates. Inherency is not necessarily coterminous with
knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize
inherent characteristics or functioning of prior art. However, discovery of a previously
unappreciated property of a prior art composition, or of a scientific explanation for the
prior art’s functioning, does not render the old composition patentable new.
▪ So inherent v. explicit. - implicit and inherent are not the same thing. If you read
something, you might be able to see what is implicit in it. Inherent presence is there
even if you are not aware of it. If there is something inherent, no claim for novelty. The
same holds true when it is not a property, but an ingredient, which is inherently
contained in the prior art.
▪ The public remains free to make, use, or sell prior art compositions or processes ,
regardless of whether or not they understand their complete makeup or the
underlying scientific principles which allow them to operate. The doctrine of inherency,
among other principles, enforces that basic principle.
o In the case court held that trial record contained sufficient evidence regarding the
inherency of both interstitial and porous air in the prior art within the overlapping ranges.
Experts testified that the emulsions described in the prior art would inevitably and
inherently have interstitial air remaining in the mixture. Because “sufficient aeration” was
inherent, it is irrelevant that prior art did not recognize the key aspect of Dr. Clay’s alleged
invention – that the air may act as the sole sensitizer of the explosive composition.
- Prof. Mark Lemley: The inherency cases are all ultimately about whether the public already
gets the benefit of the claimed element or invention. If the public already benefits from the
invention, even if they don’t know why, the invention is inherent in the prior art. If the public
doesn’t benefit from the invention, there is no inherency.
 o Relating it to the second rationale - it was already in the public domain. So, can't
monopolise it just because someone made it explicit.
- US – New definition does include the term "available to public" though, so has come closer to
English position. But literature suggests inherency doctrine still says. So, by availability, they
mean whether present or not. In Europe, its whether public knew about it [Different approach to
patent justifications - which type of monopoly is best]
 
Position in Europe
- Different. They also admit implicit prior art. They aren't comfortable with the inherency doctrine
because the meaning of something already in existence has to mean something available to the
public. It is not available to the public if it is only inherent and they do not know about it.
- EPO decisions have held that the doctrine of inherency is not compatible with the requirement
of “availability to the public” in Article 54(2) EPC
- According to the European Position, a prior art document anticipates the novelty of claimed
subject-matter if the latter is directly and unambiguously derivable from that document,
including any features implicit to a person skilled in the art. However, an alleged disclosure can
only be considered "implicit" if it is immediately apparent to the skilled person that nothing
other than the alleged implicit feature forms part of the subject-matter disclosed.
 
Position in India
- Guidelines [not enforceable, but can influence]
- Indian Patent Office guidelines on pharmaceutical patents mention all three kinds of anticipation
i.e. explicit, ,implicit and inherent anticipation
- Inherent anticipation: Prior art may inherently disclose subject matter of an invention. In a case
before the IPAB, it was held that “patent is invalid for anticipation if a single prior art reference
discloses each and every limitation of the claimed invention. Prior art reference may anticipate
without disclosing a feature of the claimed invention if that missing characteristic is necessarily
present, or inherent, in the single anticipating prior art. It is not necessary that inherent
anticipation requires that a person of ordinary skill in the art at the time would have
recognized inherent disclosure. But it is necessary that the result is a necessary consequence of
what was deliberately intended in the invention” [Enercon (India) Limited vs Aloys Wobben]
 
Public Knowledge or Public Use
● Gayler v. Wilder (US 1850) - Abandoned and forgotten art
- Facts: Person had designed a fireproof drawer for his own use. No one knew about it.
- Issue: Does the fact that it existed defeat novelty?
- Held: No.
o It is well known that centuries ago discoveries were made in certain arts the fruits of which
have come down to us, but the means by which the work was accomplished are at this day
unknown. The knowledge has been lost for ages. Yet it would hardly be doubted, if anyone
now discovered an art thus lost and it was a useful improvement, that, upon a fair
construction of the act of Congress, he would be entitled to a patent. Yet he would not
literally be the first and original inventor. But he would be the first to confer on the public
the benefit of the invention. He would discover what is unknown and communicate
knowledge which the public had not the means of obtaining without his invention.
o Upon the same principle, if the Conner safe had passed away from the memory of Conner
himself and of those who had seen it, and the safe itself had disappeared, the knowledge of
the improvement was as completely lost as if it had never been discovered. The public
could derive no benefit from it until it was discovered by another inventor.
● Rosaire vs. Baroid Sales Division (5th Circuit 1955) - Abandoned Art
- Facts: An experiment was unsuccessfully done in the public, where the public had access to it.
- Held: This becomes relevant prior art
o An unsuccessful experiment which is later abandoned does not negative novelty in a new
and successful device. Nevertheless, the existence and operation of a machine, abandoned
after its completion, and sufficient use to demonstrate its practicability, is evidence that the
same ideas incorporated in a later development along the same lines do not amount to
invention. Where such work was done openly and in the ordinary course of the activities of
the employer, no constraint to say that there must still be some affirmative act to bring the
work to the attention of the public at large.
 
Earlier Publication
- Is secret publication a publication? No. [Publication has to be open. If you put a thesis in a library
and it got indexed, it is publication even if no one goes to that library]

● In Re Klopfenstein (2004)
- Facts: There was a poster presentation at a conference
- Issue: Is this publication for the purpose of defeating novelty?
- Held: A printed matter which was neither distributed nor indexed could still be called as printed
publication on the following factors: The length of the time the display was exhibited, the
expertise of the targeted audience, the existence of reasonable expectation that the material
displayed would not be copied and the simplicity and ease with which the material could have
been copied.
 
  
 5 - Non-obviousness

Novelty v. Non-obviousness
- Novelty - Strict in terms of what one has to identify. Have to go element by element and see if its
similar. If it is, no patent.
o Non-obviousness - it is not a strict rule, it is more of a standard. Vagueness is associated
with the concept [So, have to see policy reasons for what the standard is]
- Novelty - was about figuring out one previous prior art
o Non-obviousness - can borrow from multiple pieces. If you borrow from multiple together
and its similar to yours, then no patent.
 
Origin of Non-obviousness
● Hotchkiss vs Greenwood (1851) [Added non-obviousness]
- Facts: Doorknobs earlier made of wood, now the claim was for potter's clay or porcelain knobs.
So, applied a better material. Novelty - previously, this did not exist
- Issue: is it non-obvious?
- Held:
o In the case before us, the knob is not new, nor the metallic shank and spindle, nor the
dovetail form of the cavity in the knob, nor the means by which the metallic shank is
securely fastened therein. All these were well known, and in common use, and the only
thing new is the substitution of a knob of a different material from that heretofore used in
connection with this arrangement.
o Now it may very well be, that, by connecting the clay or porcelain knob with the metallic
shank in this well-known mode, an article is produced better and cheaper than in the case
of the metallic or wood knob; but this does not result from any new mechanical device or
contrivance, but from the fact, that the material of which the knob is composed happens to
be better adapted to the purpose for which it is made. The improvement consists in the
superiority of the material, and which is not new, over that previously employed in making
the knob (as porcelain was used in making pots and pans before as well etc.)
o The difference is formal, and destitute of a patent. It may afford evidence of judgment and
skill in the selection and adaptation of the materials in the manufacture of the instrument
for the purposes intended, but nothing more.
o unless more ingenuity and skill in applying the old method of fastening the shank and the
knob were required in the application of it to the clay or porcelain knob than were
possessed by an ordinary mechanic acquainted with the business, there was an absence of
that degree of skill and ingenuity which constitute essential elements of every invention. In
other words, the improvement is the work of the skillful mechanic, not that of the inventor.
- Court followed up by saying that subject-matter was not an invention. Suggested difference
between improvements that a mechanic does in his garage and an improvement (invention) that
patent law seeks to incentivise
 
Ambiguity of the standard
- Showed anti-patent attitude.
- Some courts started looking at it from the standard of absence of genius
o Absence of genius was a prior criterion - removed now, as even incremental innovation is
allowed. Some jurisdictions have additional protections against minor increments though.
 
Current definition [US]
- 103 Conditions for Patentability: Non-obvious subject matter
 o (PRE-AIA) (a) A patent may not be obtained even though the invention is not identically
disclosed or described as set forth in section 102 , if the differences between the subject
matter sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains. Patentability shall not be negatived by
the manner in which the invention was made.
▪ Whether careful or by accident, you have to just see if there a jump between what was
there before and what is there now
▪ Required to see when the invention was made since first to file

▪ "ordinary skill" - PHOSITA acronym - personal having ordinary skill in the art
- Current: A patent for a claimed invention may not be obtained, notwithstanding that the
claimed invention is not identically disclosed as set forth in section 102, if the differences
between the claimed invention and the prior art are such that the claimed invention as a whole
would have been obvious before the effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
negated by the manner in which the invention was made.
 
Attempt to formulate the test (standardised legal form)
- Graham vs. John Deere (1966)
- Facts: Google
- Held wrt facts: If free flexing is the crucial difference above the prior art, then it appears evident
that the desired result would be obtainable by not boxing the shank within the confines of the
hinge. The only other effective place available in the arrangement was to attach it below the
hinge plate and run it through a stirrup or bracket that would not disturb its flexing qualities.
o Certainly a person having ordinary skill in the prior art, given the fact that the flex in the
shank could be utilized more effectively if allowed to run the entire length of the shank,
would immediately see that the thing to do was what Graham did, i.e., invert the shank and
the hinge plate. So, the court said that anyone skilled in the art would be able to reduce
pressure by doing this. So, even if it as useful, it was not non-obvious
- Court held: Unlike the novelty test, this opens up to several factual enquiries
o Graham Framework of non-obviousness –
▪ Under § 103, the scope and content of the prior art are to be determined; differences
between the prior art and the claims at issue are to be ascertained [claimed
inventions]; and the level of ordinary skill in the pertinent art resolved. Against this
background, the obviousness or non-obviousness of the subject matter is determined.
● How to determine what ordinary skill is? - answer might change depending on
how you define this. It's not a rule-centric approach, depends on the judges.
▪ Such secondary considerations as commercial success, long felt but unsolved needs,
failure of others, etc., might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As indicia of obviousness or
non-obviousness, these inquiries may have relevancy.
- Primarily - it is framework to see whether the jump is non-obvious. Secondary considerations are
commercial success etc. This is become commercial success could also be because of other
reasons such as marketing etc., they just confirm if your hunch on non-obviousness is right
- Conclusion: no litmus test. Only analytical framework within which to make a determination
 
● United States v. Adams (1966)
- Facts: Water-batteries as against prior art where other chemicals had to be stored. The
specifications of the patent state that the object of the invention is to provide constant voltage
and current without the use of acids, conventionally employed in storage batteries, and without
the generation of dangerous fumes. Another object is "to provide a battery which is relatively
light in weight with respect to capacity" and which "may be manufactured and distributed to the
trade in a dry condition and rendered serviceable by merely filling the container with water."
o Initially, this was displayed to the military as it would be better to transport etc. Then they
said the benefits wasn't as promising as the data. They sent away the inventor. But then
they did a test again and realised it was good, gave the manufacturing to another person.
▪ The Government argued that wet batteries comprising a zinc anode and silver chloride
cathode are old in the art, and that the prior art shows that magnesium may be
substituted for zinc and cuprous chloride for silver chloride. Hence, it argues that the
"combination of magnesium and cuprous chloride in the Adams battery was not
patentable, because it represented either no change or an insignificant change as
compared the prior battery designs." And, despite "the fact that, wholly unexpectedly,
the battery showed certain valuable operating advantages over other batteries, [these
advantages] would certainly not justify a patent on the essentially old formula."
- Held: Despite the fact that each of the elements of the Adams battery was well known in the
prior art, to combine them as did Adams required that a person reasonably skilled in the prior
art must ignore that (1) batteries which continued to operate on an open circuit and which
heated in normal use were not practical; and (2) water-activated batteries were successful only
when combined with electrolytes detrimental to the use of magnesium. These long-accepted
factors, when taken together, would, we believe, deter any investigation into such a
combination as is used by Adams.
o Adams used water with certain electrolytes, which was thought to be detrimental to
magnesium. But Adams figured out a way to use both of these together. So, this was an
important indicator of non-obviousness
o This is not to say that one who merely finds new uses for old inventions by shutting his eyes
to their prior disadvantages thereby discovers a patentable innovation. We do say,
however, that known disadvantages in old devices which would naturally discourage the
search for new inventions may be considered in determining obviousness.
- Contrasting this case with the one that govt cited
o In that case, the patentee had created rapidly drying ink. All that was needed was a solvent
that would evaporate quickly. The patentee just looked through list and picked lowest
boiling point. Then had to see if it worked with the printing ink. But there was no problem
with the latter. So, not patentable because it was already available and you just had to put
it to a new use. Same as the porcelain case
o Here, the batteries embrace an interdependent model. Prior art suggested against such a
model as they thought it would be detrimental. But Adams reconciled them. So, patentable
 
If a person skilled in the art is able to make a jump, then patentable. How to determine whether
they can make the jump?
- TSM Test [Teaching, Suggestion, Motivation Test]
o If the teaching of the prior art suggests or motivates a person having ordinary skill in the art
to take the plunge, then the invention is obvious
o Prior art must hand hold - then obvious. If it doesn't handhold, no suggestion or motivation,
then non-obvious.

● KSR vs Teleflex, 550 U.S 398 (2007)

- Adherence to the TSM test as a rule was rejected. The test was not rejected though.
- Claim: Disclosed “ a position-adjustable pedal assembly with an electronic pedal position sensor
attached to the support member of the pedal assembly. Attaching the sensor to the support
member allows the sensor to remain in a fixed position while the driver adjusts the pedal”.
o So, electronic sensor plus adjustable-position. Traditional way was through a wire attached
to a fuel chamber. Sensors were always available, so was adjustable-position. The only
innovative part was where the sensor was placed. It was placed on the footrest. In the
previous place, there would have been wear and tear of the wire. Two places it could have
been placed was the pedal or in the engine. Prior art said it should be put on the pedal, but
at a different place. In light of this prior art, placing the sensor on the pivot of the pedal
would prevent wear and tear and would allow it to send data faster as it was closer.
- District Court: Applied TSM test. Sia din light of this, there is enough suggestion and motivation
to make this an obvious invention
- Appellate Court: Nothing in prior art was motivating the inventor to place it at the pivot point, so
it was non-obvious.
- Supreme Court:
o Court of Appeals for the Federal Circuit tried for uniformity and has employed an approach
referred to as the “teaching, suggestion, or motivation” test (TSM test), under which a
patent claim is only proved obvious if “some motivation or suggestion to combine the prior
art teachings” can be found in the prior art, the nature of the problem, or the knowledge of
a person having ordinary skill in the art. But the expansive and flexible approach SC has
taken to the TSM test is inconsistent with the way the Court of Appeals applied its TSM test
here. To be sure, Graham recognized the need for “uniformity and definiteness.” Yet the
principles laid down in Graham reaffirmed the “functional approach” of Hotchkiss. To this
end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at any
secondary considerations that would prove instructive.
o When a work is available in one field of endeavour, design incentives and other market
forces can prompt variations of it, either in the same field or a different one.
▪ So, even if from the prior art, there is no direction or motivation, a new question asked
to you might get your mind to think about it. So, that factor cannot be ignored
o However, the analysis need not seek precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.
▪ When first established, TSM captured a helpful insight but when transformed into a
rigid rule it becomes contrary to law. The diversity of inventive pursuits and of modern
technology counsels against limiting the analysis this way. In many fields it may be that
there is little discussion of obvious techniques or combinations, and it often may be the
case that market demand, rather than scientific literature, will drive design trends.
Granting patent protection to advances that would occur in the ordinary course
without real innovation retards progress
▪ Graham's invention - the only prior art was his own invention. To apply TSM strictly,
the invention was not suggesting how to make that innovation
● In determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
o A person of ordinary skill is a person of ordinary creativity, not an automaton.
▪ Must take into account inferences and creative steps that a person of ordinary skill in
the art would apply
 ▪ TSM test reduced the definition to someone who acts mechanically - Only when hand-
holding. So, too much could then be patented. So, by the court saying that this is not a
strict rule, attempt is made to inject qualities to this ordinary person. Person were
creative, they could infer certain things, and could take certain steps in the ordinary
course - so, now, reduced number of patents.
▪ Breathed life into PHOSITA
o Court acknowledged the concern of hindsight bias, but also cautioned that the courts
should not deny recourse to common sense.
▪ Hindsight bias - used in terms of obviousness - People just think it's obvious after they
get to know about it; but obviousness is not to be seen in hindsight, must go back to
the past and see if it was obvious at that point of time.
 
Problems with TSM test
- Rebecca Heisenberg - Unless something is available in the form of solid material on which
PHOSITA could rely, no reliance was put on PHOSITA's own creative capabilities to see whether
something was creative or not.
o Fed circuit ignored the directions on when PHOSITA should be used, it is not consulted on
the main question of whether it is obviousness. It is only used on secondary questions.
- Unless something available in written material to make PHOSITA do something, TSM wouldn't
consider it. the test didn't look at the creativity of PHOSITA
 
Recap
- American approach to non-obviousness
o John Deere- contribution in the form of a three-point formula. [Graham Framework]
▪ Content and scope; What is claimed; Could gap be bridged by one ordinarily skilled

▪ Secondary considerations- long felt need and commercial success and stuff.
- KSR v Teleflex- PHOSITA – US had developed attitude that unless prior art does not motivate- no
patent. This was undone in KSR. Threshold was too low till this change.
 
EU Approach
- Problem-solution analysis [as opposed to the Graham framework in US]
o Determine the “closest prior art" – It doesn't use prior art generally; says you have to pick
one out of all the prior art.
o Establish the “Objective Technical Problem” that the prior art seems to be establishing
o Considering whether or not the claimed invention, starting from the closest prior art and
the objective technical problem, would have been obvious to the skilled person.
- Differences:
o American terminology - PHOSITA - "Ordinary skill" as a qualifier. This word ordinary is not in
India or EU. This was actually a reason for TSM growing in US.
 
● Actavis UK v. Novartis AG (2010)
- Expounded upon the meaning of these elements and their strengths and weaknesses.
o Closest prior art-
▪ not much to do with the other factors. More to do with admin ease that European
jurisprudence wanted. Challengers often dump a huge amount of prior art, difficult to
 sort through this. To remedy this: Identify closest prior art- anything less close wouldn't
make it obvious if it is not here.
▪ Problem- difficult to decide what is closest. And it is something that is contentious.
Ways to look at it:
● One way- art that incorporates as many elements of the invention as possible

● Or whether the concept is closest in terms of elements.

o Objective technical problem
▪ EU technical guidelines - Technical problem: means the aim and task of modifying or
adapting the closest prior art to provide the technical effects (benefits) the invention
presents over the next best prior art.
● It may not be what the applicant presented in his application, requires
reformulation. The prior art that is later disclosed can alter the objective technical
problem disclosed in the filing.
● Reformulation requires the court to create an artificial problem supposed to be
solved by an invention. Guidelines themselves grapple with this.
● So, don't have to go by the problem as defined by the inventor. Can reframe to
see whether this results in obvious or non-obvious solution
o If Applicant thought A was prior art and his invention was a jump on that, but
then the court can say that this is the problem to be solved instead etc.,
showing no jump
▪ Too much depends on this, no matter how objective.

● Guidelines-
o Chance of hindsight bias creeping into reformulation because you're making
the determination post-facto.
o Technical problem to be interpreted broadly- may not be an improvement-
may just be an alternative method of doing the same thing.
● In the absence of these guidelines, the alternative may not be solving any
problems etc. So, emphasis on objective technical problem is also not good
o Judge says reformulation as Retrospective construction of problem is weakest

- The UK approach is similar to US

o In the English approach- once one has oriented step 3, the question is left open- Is the
invention obvious? There is no attempt to force the question into a problem-solution
framework. Merely whether someone could bridge the gap.
o Approach doesn't deal well with cases where the invention involves perceiving that there is
a problem or that a known problem put up with for years can be resolved
● Haberman v Jackal International

▪ Anywhere cup - if cup falls down, water doesn't fall out. Baby drinker cups had existed
for years. Parents had put up with it falling. It was fitted with a known valve. Every
parent had put up with the issue of leaks- so now when someone came up with the
valve is patentable according to most parents, even though it was very obvious to them
 ▪ But this problem framework wouldn't really account for this because it'd reframe it in
terms of the problem being spillage.
▪ The identification was part of the innovation - long-standing problem was resolved. But
this wouldn't fit into the approach
- Graham's framework- long-standing problem was a secondary consideration to see innovation.
Looks at time taken to solve an issue as indicative of non-obviousness. These would not find a
place within the problem-solving approach
 
UK approach
- Windsurfing/Pozzoli SPA framework
o Four factor analysis
1. Identify the notional “person skilled in the art” and the relevant “common general
knowledge of that person” [Person skilled- not ordinarily skilled]
2. Identify the inventive concept of the claim in question or if that cannot be readily
done, construe it
3. Identify what, if any, difference exist between the matter cited as forming part of the
“state of the art” and the inventive concept of the claim or the claim as construed.
4. Viewed without any knowledge of the alleged invention as claimed, do those
differences constitute steps which would have been obvious to the person skilled in
the art or do they require any degree of invention.

- Similar to the EU. The only difference is from whose perspective from which we judge
- Qualities associated with person skilled in the art under English Jurisprudence
o He never misses the obvious nor stumbles on the inventive
o He never thinks laterally
o The person is imputed with common general knowledge of the particular art or technical
field in question.
- Differences:
o TSM tried to stick to the statutory language of ordinarily skilled in the art. Not relying upon
the fact that the person also had some skillset, solely relied on what the prior art is telling
the person.
o The UK approach gives more credence to common skills and GK in the industry.
- KSR brings these closer together.
 
India
- Patent Act 1970: Section 2 (ja) "inventive step" means a feature of an invention that involves
technical advance as compared to the existing knowledge or having economic significance or
both and that makes the invention not obvious to a person skilled in the art
- S2(ja)- inventive step- is generally referred to as obviousness.
- Qualifiers: technical advancement or economic significance
o So, the sippy cup case- was economically significant.
 
● Biswanath Prasad Radhey Shyam v Hindustan Metal
o Facts: Metal on a spinning cool to be manipulated. A lathe that has been tweaked. Facts
indicate it was not a significant innovation.
o Held: It is important to bear in mind that in order to be patentable an improvement on
something known before or a combination of different matters already known, should be
something more than a mere workshop improvement; and must independently satisfy the
test of invention or an 'inventive step'.
 ▪ To be patentable the improvement or the combination must produce a new result, or a
new article or a better or cheaper article than before. The combination of old known
integers may be so combined that by their working inter relation they produce a new
process or improved result. Mere collocation of more than one integers or things, not
involving the exercise of any inventive faculty, does not qualify for the grant of a patent
▪ In adopting the old contrivance to the new purpose, there must be difficulties to be
overcome through invention, or some ingenuity in the mode of making the adoption'.
▪ "A patent can be granted only for 'manner of new manufacture' and although an
invention may be 'new' and relate to a 'manner of manufacture' it is not necessarily a
'manner of new manufacture'-it may be only a normal development of an existing
manufacture. It is a necessary qualification of a craftsman that he should have the
knowledge and ability to vary his methods to meet the task before him-a tailor must
cut his cloth to suit the fashion of the day-and any monopoly that would interfere with
the craftsman's use of his skill and knowledge would be intolerable. [There must also
be a manner of new manufacture.]
● Eg- if you have bowls, you cannot then also make plates and call it new

● Relies on knowledge and ability of craftsman- so not a mere person with mech
skills. Reliance is necessary secure freedom to continue using these skills and
knowledge. Important policy consideration.
▪ "A patentable invention, therefore, must involve something which is outside the
probable capacity of a craftsman-which is expressed by saying it must have 'subject
matter' or involve an 'inventive step'.
● ‘Obviousness' has to be strictly and objectively judged. For this determination,
several forms of the question have been suggested. The one suggested by
Salmond L. J. in Rado v. John Tye & Son Ltd. is apposite. It is "Whether the alleged
discovery lies so much out of the Track of what was known before as not
naturally to suggest itself to a person thinking on the subject, it must not be the
obvious or natural suggestion of what was previously known."
● "Had the document been placed in the hands of a competent craftsman (or
engineer as distinguished from a mere artisan), endowed with the common
general knowledge at the 'priority date', who was faced with the problem solved
by the patentee but without knowledge of the patented invention, would he have
said, "this gives me what I want?“. i.e. "Was it for practical purposes obvious to a
skilled worker, in the field concerned, in the state of knowledge existing at the
date of the patent to be found in the literature then available to him, that he
would or should make the invention the subject of the claim concerned ?"
▪ Salmond's question: whether the discovery lays well off the beaten path

● Hoffman v Cipla
- Court relied upon Bishwanth judgement and declared – “Such observations made in the foreign
judgments are not the guiding factors in the true sense of the term as to what qualities that
person skilled in the art should possess. The reading of the said qualities would mean qualifying
the said statement and the test laid down by the Supreme Court.”
- It is to be emphasized that what is required to be seen is that the invention should not be
obvious to the person skilled in art. These are exactly the wordings of New Patents Act, 2005
 u/s Section 2(ja) as seen above. Therefore, the same cannot be read to mean that there has to
exist other qualities in the said person like unimaginary nature of the person or any other kind of
person having distinct qualities
o Normal and grammatical meaning of the said person who is skilled in art would presuppose
that the said person would have the knowledge and the skill in the said field of art and will
not be unknown to a particular field of art and it is from that angle one has to see that if the
said document which is prior patent if placed in the hands of the said person skilled in art
whether he will be able to work upon the same in the workshop and achieve the desired
result leading to patent which is under challenge.
- Disassociates from the adjectives used in both UK and US. No ordinary skills or creativity and
shizz. Just a person with skills. Has know-how also and will use that.
 
● Enercon v Aloys Wobben
- “Since this obviousness test is the most frequently debated issue in patent litigations. It may be
better if in the future, the pleadings or evidence tells us who this person is. This person is skilled
in the art. This person is presumed to know the state of that art at that time, and to have the
knowledge that is publicly available. The Act is quite clear and free of ambiguity. This person is
skilled in the art and has more than average knowledge of the state of the art and also has
common sense. Indian law expects the non-obviousness to be tested against this person and not
the person who is the touchstone in U.S. Law. She is Ms. P. Sita (Person Skilled In The Art) and
not Mr. Phosita or Mr. Posita who are both ordinary by definition!”
- Accordingly, the following points need to be objectively judged:
i. Identify the "person skilled in the art", i.e. competent craftsman or engineer as
distinguished from a mere artisan;
ii. Identify the relevant common general knowledge of that person at the priority date;
iii. Identify the inventive concept of the claim in question or if that cannot readily be done,
construe it;
iv. Identify what, if any, differences exist between the matter cited as forming part of the
"state of the art" and the inventive concept of the claim or the claim as construed;
v. Viewed without any knowledge of the alleged invention as claimed, do those differences
constitute steps which would have been obvious to the person skilled in the art or do they
require any degree of inventive ingenuity?
- More than average knowledge of state of art. Contrast w/ sufficiency of disclosure- there
average skills is mentioned. Here it is more than average.
 Utility

- Utility [US] or "Industrial Application" [India]

o Something must be capable of being put to use in the industry, or has some purpose , or is
operable – Threshold is very low
o High initial burden on the patent office \
▪ Presumption in favour of inventor. Only after the initial burden is dispensed would the
inventor have to argue that the invention is useful.
▪ Very easy for an invention to be usable in industry or produced by it

● Bedford v. Hunt
- Beneficial Utility – a peculiarly American doctrine (now almost abandoned) was articulated by
Justice Story in Bedford v Hunt as: By useful invention, in the statue, is meant such a one as may
be applied to some beneficial use in society, in contradistinction to an invention, which is
injurious to the morals, the health, or the good order of society.
o So, anything not injurious to morals or health is beneficial, society to have positive benefit
- This way of looking at his has died out. Eg. Subject-matter against public order is now a hurdle to
cross (s. 3 Indian patent act etc.)
- Now requirement is just operability - The utility requirement now demands the invention be
operable and this requirement is easily satisfied

● In Re: Swartz [Fed Cir. 2000]

- Facts: The patent claim for cold atomic fusion was refused for the reason that those skilled in the
art would reasonably doubt the asserted utility and operability of cold fusion. Patent office
claims this is highly contestable and someone skilled in the art would think it was bunkum.
- Held: Was rejected. All literature thought something like this was possible only in 2040 but here
someone was claiming this in 2000, so they were right in refusing it and doubting that it had
actually been invented, put burden on the inventor

- India has more on the lines of industrial application - capable of being reproduced by the process
many times, or of being put to industrial use.
 
Substantial and specific utility
- Represents areas where threshold is higher- biotech and chemicals

● Brenner v Mason [US 1966]

- Facts: person figured out process of making known steroids. Made a novel process of making
these. No particular utility was found for these though.
- Issue: Whether he did enough to show utility.
o If you go by minimum threshold - yes, operable. It is capable of being put to use.
- Patent Office: rejected. Unless you tell us purpose, you have not fulfilled the required of utility
- Court of appeal: overturned. When a claimed process produced a particular product, there is no
need to show utility separately.
- SC sided with patent office- need to show specific utility of product
o Starting point- can only patent what is useful.
o Single word can be pregnant with possibility.
o Here- the substance's use beyond scientific enquiry is unproven.
- Applicant itself was not relying on the extremely liberal court of appeal interpretation
o He argued that the steroids he produced were anticipated to help in tumour screening.
Similar compounds were being examined. So, anticipation because compounds in the same
group had shown promise. Applicant was not lowering his understanding of utility to the
levels that the appellate court had held to
- So question- Is a chemical process ‘useful’ within the meaning of section 101 either 1) because it
works –i.e. produces the intended product – or 2) because the compound yielded belongs to a
class of compounds now subject to serious scientific investigation?
o Majority held that a process patent in the chemical field, which has not been developed
and pointed to the degree of specific utility, creates a monopoly of knowledge which
should be granted only if clearly commanded by the statue.
▪ Unless statute commands, this is not a quid-pro-quo society has set with inventor
o Until the process claim has been reduced to production of a product shown to be useful,
the metes and bounds of that monopoly are not capable of precise delineation. It may
engross a vast, unknown, and perhaps unknowable area.
o So, the actual invention was too upstream. The actual inventions that benefit people
would be developed based on this invention. Eg. If you put a dam upstream, many people
who depend on the water downstream would be affected
▪ Such a patent could obstruct whole areas of scientific development without
compensating benefit to the public.
▪ Nobody would argue that steroids are patentable if they have no use- so why would
you patent the process. This is how the court rationalised it.
o This the major legal consideration
- Minority
o Not granting patents at this stage encourages people to keep secrets- policy objective of
early disclosure. To encourage one chemist or research facility to invent and disseminate
new processes and products may be vital to progress, although the product or process be
without ‘utility’ as the court defined it.
o The minority emphasized the virtues of early disclosure made possible by patent grant in
such cases. They said let things be patented as soon as it is invented so that people are
incentivised to disclose
- Majority held this concern overblown. Lawyers are duty bound to draft patents with as little info
as possible. Plus, legal concerns, not policy, are main for them
o There are others who argue that the degree of utility is unimportant. However slight the
advantage which the public has received from the inventor, it offers a sufficient reason for
his compensation. Must pinpoint the exact point of utility.
 
● In re: Fisher
- Facts: Tissue of maize plant- extracted DNA and made express sequence tags. (ESTs). Again- no
idea what to do with the sequence identified. They are patentable as they're shorter forms of
CDNA (Myriad case). Anyways gene patents are not a wholly shut door- Myriad was one way-
but representing it as the structuring of the DNA in a chemical way etc., may be more fruitful. So,
discussion on utility is still relevant
- Claim: They highlighted the utility of their application - said molecular marker for marking maize
genome etc. Ultimately, all these were said to be projects, which are starting points of further
research, not utility in itself. [Eg. I want to see the length of this RNA. But what will you do with
 this.] all the claims were of the same nature- starting point of research and not the end of it. Did
not know the precise structure of it and so on.
o Should be able to provide immediate use to public in its current form - not that it'll be
useful after further research.
- Held: The federal circuit agreed and held for substantial utility to be shown. One skilled in the
art should be able to use a specific claimed invention in a manner which provides some
immediate benefit to the public.
o Substantial- immediate use - Application must show that an invention is useful to the public
as disclosed in its current form, not that it may prove useful at some future date after
further research.
o Specific- not vague- not something like further research – the invention claimed must
disclose a use which is not so vague as to be meaningless
▪ Therefore, nebulous expressions ‘biological activity’ or biological properties’ appearing
in the specification convey no more explicit indication of the usefulness of the
compounds and how to use them than did equally obscure expression ‘useful for
technical and pharmaceutical purposes.’
o Don't want research tools monopolised too early.
▪ Court compared- are things like microscopes not patentable because they're merely
research tools that expose subject matter to you more clearly
▪ But microscope actually meets specific and substantial utility: magnifies what is seen.
There is a substantial utility that is immediately secured. So, not comparable.
 
Indian Patent Office Guidelines
- In the context of the gene sequences, it may be said that whatever ingenuity is involved in
discovering a gene sequence, one cannot have a patent for it or a protein encoded by it unless it
is disclosed how it can be used. It is therefore necessary to consider whether the invention
claimed has a useful purpose, and whether specification identifies any practical way of using it
- The use of claimed subject-matter (e.g. a gene or a protein) disclosed in the specification should
not be merely speculative, rather the said use should be specific, substantial and credible for
establishing industrial applicability of the claimed subject matter.
- Fragments/ESTs (Expression Sequence Tag) are allowable if they in addition to other conditions
satisfy the question of usefulness and industrial application. An EST whose use is disclosed
simply as a ‘gene probe’ or ‘chromosome marker’ would not be considered to have an industrial
application. A credible, specific and substantial use of the EST should be disclosed, for example
use as a probe to diagnose a specific disease. Then it would be patentable.
 
 6 - Infringement

Indian Patent Act

- s. 48 - rights of patentee – Patent shall confer exclusive rights on patentee to prevent third
parties from making, using, offering for sale, importing.
o Basically, doing without the patent owner's permission what only he is allowed to do.
o Violation of these rights=infringement.
- Two Categories of infringement
o Literal Infringement – Literal Infringement is straight forward and occurs when every
limitation recited in the claim is found in the accused device.
▪ Eg. Claimed chair with 4 legs and 2 armrests. For infringement to happen, must have 4
legs and 2 armrests. Each element of the patented subject matter must be the same.
▪ In other words, we say that the Patentee’s claim ‘reads on’ infringers claims.

▪ Two-step

● Identify scope of the claim

● Whether elements are the same

- Non- Literal Infringement [below]
 
Non-Literal Infringement
- Claim Interpretation –
o Earlier phases- just needed to describe, now need to specifically claim
o Claiming requirement serves two purposes
▪ Define the invention for the purpose of patentability [shouldn't be ambiguous]

▪ Provides notice the public (particularly competitors)

● Gives notice of the fences that they must not cross to step on to your property
- Different approaches in interpreting claims
o Fence post interpretation – You must focus only on the claims and the specific language
used in the claim to interpret the claim.
▪ What inspired this: Greater concern with the notice element.

▪ Public reads the claim and it gives them notice as to where to not step

▪ Literalist approach basically (English)

o German approach - language of the patent claim is only a guide to interpreting the claim,
ultimately it was the invention described that would be the determinant.
o EU Convention struck a compromise - Art. 69 - Extent of protection shall be determined by
claims but description and drawings shall be used to interpret the claim
▪ Protocol to Art. 69 - goal: balance between fairness to the patentee (any small change
should not preclude them from claiming) as well as certainty in law as to public notice.
So, neither extremes are good. The above is balanced.
▪ Before EU toned it down, most cases- unfair to patentee because it is read strictly.
Minor variation would keep alleging infringing material out of purview of infringement

o Pith and Marrow Doctrine

 ▪ Look at the essence of the claims, but also appreciate vagueness and not restricting
scope of the claim to the exact technical language (more of the core). Appreciating the
essence, so any minor violation should be seen to be covered by the pith and marrow.
● Clark v. Eddy

▪ Infringer might not take the whole of the patent instrument. He may take a certain
number of parts or might resemble the instrument but not in all its parts.
▪ Whether that done by inventor is a colourable departure from patented instrument-
and whether he took something that was in substance the pith and marrow.
▪ Not a mathematical thing

● So, if something had 12 steps, and the person took 8, might in pith and marrow be
considered to be infringement.
● Difference from German - do not focus on claims v. focus on essence of claims.

● But due to its vagueness, they have moved out of it.

 
o Catnic Doctrine
▪ Has now moved to the Catnic v. Hill and Smith Doctrine due to ambiguity.

● Catnic v. Hill

▪ Invention- steel lintel for spanning space above doors and windows. Hollow and strong.
It used to be wood or bricks or iron. The problem was that it was heavy and not
efficient. This person developed a hollow steel thing which was lighter, economy of
material, ease of handling. Claims referred to a second rigid support that was vertical.
▪ Issue- Can a design slightly slanted or angled be seen as part of the claim as well? The
claim specifically mentioned one side would be vertical and one side being slanted.
▪ Held: The question is – whether persons with practical knowledge and experience of
the kind of work in which the invention was intended to be used, would understand
that strict compliance with descriptive word or phrase appearing in a claim was
intended by the patentee to be an essential requirement of the invention so that any
variant would fall outside the monopoly claimed, even though it could have no
material effect upon the way the invention worked.
▪ Not bogged down by literalist interpretation or losing sight of what is claimed, but also
not sticking to the literal words- look at it from POV of skilled person- would they know
that this is how it is to be read. Would they think it is more figurative or literal?
● Eg- If I say I use 2 spoons of sugar, would a person read sugar literally or to mean
any sweetener.
▪ In explaining this court said - where variant would have a material impact on the way
an invention worked, no infringement. Here, the court held that the minor variation
was not material. The phrase vertical was not read strictly. Nor does it arise if on the
date of publication, it was obvious knowledge [see improver protocol]
 ▪ So, Question not needed when the variant would have a material impact on invention-
that'd be a different invention altogether. Also does not arise when obvious to the
reader at time of publication.
▪ So, Material Impact – Obviousness – The POV of skilled person

▪ SB- this is doubted because the simpler question should be followed.

- Improver protocol (Improver Corp v Remington Consumer Products) [Steps]

o Does the variant have a material effect upon the way the invention works? If yes, the
variant is outside the claim. If No –
o Would this (i.e. that the variant had no material effect) have been obvious at the date of
publication of the patent to a reader skilled in the art. If No, the variant is outside the claim.
If yes-
o Would the reader skilled in the art nevertheless have understood from the language of the
claim that the patentee intended that strict compliance with the primary meaning was an
essential requirement of the invention. If yes, the variant if outside the claim.
- This is a reformulation of Catnic.
 
- US Approach- doctrine of equivalents
o Also concerned with fairness to patentee/claimant. How to ensure fair returns to patentee
for their disclosure
● Graver Tank and MFG v Linde AIR Prods
- Triple Identity test: If the infringing subject matter performs substantially the same function in
substantially the same manner to obtain the same result, then that variation is violative of the
rights granted to the patent owner
- Facts: Fluxes (electric weld compositions). Silicates of alkalines and Calcium Flurite combination.
The Union meld contains Silicon and Manganese. The lincoln meld (infringing one) has Silicon
and Mgnesium. Claim specifies alkaline earth metal silicate- used Magnesium- the competitor
used another metal to avoid infringing on this claim, so is he violating the claim?
- Infringer claims that they did enough because it is using something outside the claims. From the
notice angle of the claim, he read your claim to mean alkaline earth metal, so he just had to
choose another element. But is letting this person replace element be fair to the patent owner.
- Court held:
o Apart from the different chemicals, the two compositions are same in most ways - uses,
mechanical methods in which they are used, produce same quality.
o Evidence noted:
▪ Chemists- both are similar in reactions. Alkaline earth metals are often found in same
ores. And Manganese is often listed with the alkaline earth metals.
▪ Nothing to show independent invention- so considered to be infringement.
- Dissent below
 
Difference from UK
- Temporal
o UK goes back to the time the claim was filed to see how they'd read the claim - In light of
the prior art etc. Looking at infringement at the time of filing.
o US is willing to look at subsequent developments. Looking at infringement at the time of
infringement
- Subjectivity
 o UK was looking at it as whether a person skilled in the art would have read this to mean
excluding everything else; not whether they're actually perfect substitutes. Eg. Whether
jaggery can be substituted in lemonade instead of sugar depends on how the person skilled
in the art is reading it.
o US - looking at whether they are substitutable, not whether a person skilled in the art
considers it to be excluded. Eg. jaggery= sugar in all circumstances.
- Objectives of claim concerned
o UK - Concerned about notice - application acts as a notice. Ambiguity wrt notice means
claim goes for a toss
o US - Looks at fair quid pro-quo for the patentee
 
- J Black Dissent
o Anything out of claim goes to public.
o Court has rejected the underlying principles and has made a claim something that can be
twisted to suit whatever is needed.
o Not permissible to treat claims as something different than the language.
o From the public policy perspective- an important/enduring critique.
▪ We wanted claims to be made so that patentees could disclose specifically. If they
couldn't specifically claim it properly, then unfair to the public as well. It should then be
available to the world
- This is why the UK's purposive approach balances the two better than this approach.
- SB- flipside- equivalents protects you against subsequent equivalents that you could not
anticipate at that point, which may become relevant due to technological innovation elsewhere.
Eg. Imagine sugar was not invented, but then you hadn't anticipated jaggery could be replaced
with sugar. If sugar process is allowed to be patented separately, then the patentee will lose
money due to competitors etc.
o Also- language is insufficient to explain something in its totality. So can't penalise for the
fault of language. In this way, the doctrine of equivalence guards against limits of language.
o US didn't abandon this, they moved to a more cautious approach
 
- Cautious Approach
● Werner Jenkinson v Hilton Davis [1997 US]
- Nuance added to the Equivalence doctrine
- Each Element Approach - Equivalents has to be applied to each element of the claim- not
whether the whole invention does the same thing.
o Eg- ball pen v fountain pen - invention as a whole, then they are seen as the same because
writing instrument. If you look at elements, looking at how the ink dispensation is different
from the rolling ball etc. Elements have to be replaced by equivalents for it to be
infringement.
- Invention should not be seen only if it performing the same task. Have to see for each element.
- Prosecution History Estoppel -If as a result of the back and forth with the patent office you drop
some claims (because you might have wanted to avoid prior art nullifying patent etc.), then
those dropped claims cannot be protected
o If an amendment visible in prosecution history is inexplicable- then patentee has to explain.
So, if you changed to avoid prior art- then that part cannot be claimed as prosecution
history acts as estoppel. If not to avoid prior art, that may not impact your ability to claim a
particular variant.
o In favour of patent owner: Intent irrelevant for PHE as to why you made certain changes. It
is not limited to equivalents that are disclosed in the specification or were known at the
time when patent was issued.
- Reiteration of equivalence doctrine, securing of innovations that happen in the future also. [So,
even future variants infringe]
 
● Festo Corp v Shoketsu (2002) - further added balance, reduced damage to notice aspect
- Issues:
o Does PHE arise only from the amendment done to avoid prior art? [as the court said in the
present case]
o Does PHE establishes absolute bar against all equivalents?
- Lower court said if you narrowed down your claim, you've given up right to claim and current or
future equivalents
- Held:
o Doctrine of equivalents is premised on language’s inability to capture essence of innovation,
but a prior application describing the precise element at issue undercuts that premise.
▪ PHE ensures that DOE remains tied to its underlying purpose

▪ Therefore, PHE may apply whenever an amendment is made to meet the requirement
of patentability – both substantive and formal.
▪ In substantive - broader claim may be hit by novelty. So, making it a species claim
rather than generic. Or trying to avoid non-obviousness/ utility related issues.
▪ Could be more formal - patent office wanted less ambiguous term, or you supplied a
clarification on what a term meant. Any of these reasons can be used for PHE. May not
necessarily become PHE, but this case says that for any issue of patentability and you
made an amendment where you disowned something, that is relevant.
- No reason why a narrowing amendment should relinquish claims to something that cannot be
anticipated.