INTELLECTUAL PROPERTY LAW

Contents

1. Introduction to Intellectual Property Law

2. Theories of Intellectual Property Law
3. Copyrights and related rights
4. Patent, Industrial designs and unfair competition (unlawful competition)
5. Passing off
6. Trademarks
7. Geographical indication
8. Selected International instruments on Intellectual Property
9. Current Trends

Introduction to Intellectual Property Law

Intellectual Property Rights (IPR) are the rights given to individuals for their creative and
Intellectual creations, including inventions, art, designs, literary works, images and symbols
used in commerce.

They consist of a wide range of human Intellectual output, such as concepts, industrial
models, trademarks, literature, music, names and brands.

IPR are similar to traditional property rights in that they allow the owner to fully benefit
from their creations, which originally started as ideas.

Owners have authority to prevent others from using, dealing with, or altering their creations
without prior permission and can take legal action against violators.

However, primarily, below classification will provide an idea about contradiction between
property and Intellectual property.

IPR protection allows innovators, brand owners, patent holders, and copyright holders to
benefit from his/her work, labor and investment.

It’s important to note that IPR protection does not equate to a monopoly on intellectual
creations.

These rights are endorsed by the International Declaration of Human Rights, which
recognizes the right to benefit from the moral and material interests stemming from the
work of the right holder, whether in literature, art, or any other creative endeavor.

Definition –

“Intellectual Property Law that area of law which concerns legal rights associated with
creative effort or commercial reputation and good will”
Nature and characteristics of Intellectual Property Right

Intangible Property

Intellectual property law does not deal with the material object in which works of mind have
represented. The main feature which distinguishes Intellectual property from other types of
property is its intangibility.

IP is about a person’s ability to produce a new idea and put it before the public. Mostly the
creativity, strength, and initiative of the mind included in the product.

Intellectual property rights are awarded in a specific authorship work, mark, design, etc. for
the integration of ideas.

Rights and Duties

IP not only gives rise to rights of ownership but also to duties. In relation to his
work/product, the IP owner has the right to conduct such actions. He is entitled exclusively
to produce, copy the work, market the work, etc.

He has a negative right also to rule out the exercise of his statutory rights for third parties. In
this way, IPR law grants the proprietor’s exclusive right to exclusion.

The reciprocal requirement must not be infringed on the right by all others. The privilege
resulting from the application of IP law gives the owner the right to use the job. Such a right
does not extend to others except the IP holders.

Territoriality

IP laws are mainly territorial and apply only within the relevant competence. Although the
TRIPS agreement sets the minimum standard in its respective municipal laws for all nations,
the IP laws around the world are not harmoniously united.

In order to secure and implement their IPR, developers and inventors of different kind of Ips
have to comply with their national law and jurisdictions. The extent of security on the
national legislation is in question.
Dynamism

The IPR is constantly changing. The IP sector is also developing accordingly. In accordance
with the demand for scientific and technological advancement the scope of its defense is
being extended and new items are being added to the IPR sector.

Property

Real Property Intellectual Property

(there as it is) Ex: Vehicle

Putting into a creative way to earn

Tangible intangible movable immovable money Ex. Meter Taxi system

Accordingly, term “property law” can be defined as the rules that govern access to and
control of land and other material resources.

As such, there are two types of properties. Tangible and Intangible.

Those that have physical attributes which can be seen and touched are tangible and those
which are abstract; invisible to the eye such as thoughts and ideas which lack physical
attribute are intangible.

IPR falls under the latter category, since it protects creative expressions and ideas.
 Intellectual Property

IP law relative to copyrights/ Industrial Property

Related rights (neighboring rights) Trademarks
Tradenames
A right grant to protect the interests Patents
of performers, producers of phonograms,
and broadcasting organizations relating to
the activities of the public use of author’s
work.
(Connection to some other right -> nearby to
Copyrights) Product Patent Process Patent
(Based on (method
Ex. Song – Copyrights commercial assembled)
Players, recorders etc. agreement/ * Patent will
ownership) be provided if
only followed
Neighboring rights that method
(to accomplish the final result)
Industrial Designs
(formula)
Supported to another
Ex. To design a car,
More than 100
designs
Clothing designs

Geographical Indications

common undisclosed unfair

application information competition
(trade secrets)
Interpretation (refer – Section 05 of Intellectual Property Act, No. 36 of 2003)

Works protected (refer – Section 06 of Intellectual Property Act, No. 36 of 2003)

Derivative works (refer – Section 07 of Intellectual Property Act, No. 36 of 2003)

Works not protected (refer – Section 08 of Intellectual Property Act, No. 36 of 2003)

Economic rights (refer- Section 09 of Intellectual Property Act, No. 36 of 2003)

 Economic rights can be transferable

Moral rights (refer – Section 10 of Intellectual Property Act, No. 36 of 2003)

 Moral rights cannot be transferred

Ex. “Gamperaliya” – It is not sure whether Martin Wickramasinghe has/had economic rights
to his work but definitely he is entitled to have moral rights (such as entitle to publish his
name with the work)

Moral Rights upon death

Testamentary By operation of
disposition law
(Last will)

Fair use (refer – Section 11 of Intellectual Property Act, No. 36 of 2003)

 Reasonable usage of the particular work.

Indicators one has to be tested violation of Copyrights or coming under fair use –

a) Purpose and character of the use whether it’s in a commercial nature or non-profit
educational purposes
Lalitha Sarachchandra v Upul shantha Sannasgala case

b) Nature of the copyrighted work

c) Amount and the sustainability of the portion used

d) Potential market for, or value of the copyrighted work

Ex. KFC sells chicken Bucket for 5000 LKR and another restaurant named FKC sells the
same chicken bucket for 3000 LKR. Economic potential can be seen here.
 Leaking recipes, formulas etc.
Act of fair use (refer – Section 12 of Intellectual Property Act, No. 36 of 2003)

Duration of copyright

Section 13 (1) - (Single ownership)

Economic During the lifetime of the author

and moral = +
rights are 70 years from the date of his death
protected

Ex: A is a book author. He published his book X on 1950. He died in 1962.

From 1950 to 1962 = 12 years MR and ER can be enjoyed by A during his lifetime

From 1962 to 2032 = MR and ER can be enjoyed after the death of A by an individual, agent
appointed by testate or by operation of law.

 MR and ER after the duration of Copyrights are vested by a trust fund established
accordingly.

Section 13 (2) – Joint Authorship

Economic During the lifetime of the last surviving author

and moral = +
rights are 70 years from the date of death of the last
protected surviving author

Ex: A, B, C, D are joint authors of a book published in 1950. B died in 1955. C died in 1957. A
died in 1962 and finally D died in 2023.

From 1950 to 2023 = 73 years during the lifetime of the last surviving author D Until 2093

Section 13 (3) – In case of collective work + audiovisual work

Economic 70 years from the date on which the work was first
And moral = published or failing publication within 70 years from the
rights are making of the work
protected
Ex: Audio Visual work by a company on 1950 – until 2020

Ex: A team made an audio-visual work in 1950. But did not publish – until 2020

Section 13 (4) – work published anonymously

ER and MR = 70 years from the date on which the work was first
are protected published

Ex: A work has been published anonymously in 1950 but revealed the identity before 70
years.
 Subjected to rights under Section 13 (1) and (2)

Section 13 (5) – Work of applied Art

ER and MR = 25 years from the date of the making of the work

are protected

Section 14 (2) – According to the contribution

Ex: A, B, C have published a book in 1950 which consists with 12 chapters. Each authors
contributed and separately could be recognized as –
A - 4 chapters
B – 3 chapters
C – 5 chapters

Assume, this book is going to sell for 1200 LKR. Calculate their economic contribution.

A- 400 LKR
B- 300 LKR
C- 500 LKR

Created in a form of a person (refer- Section 14 (3) of Intellectual Property Act, No. 36 of
2003)

Created in a form of a contract (refer- Section14 (4) of Intellectual Property Act, No. 36 of
2003)

Based on a contract ER can be varied (refer- Section 14 (5) of Intellectual Property Act, No.
36 of 2003)

Authorship can be challenged under Section 15 of Intellectual Property Act, No. 36 of 2003
Section 16 – Assignment or license of author’s rights

Copyrights of an owner (ER referred to S.9)

grant license to a physical person assigns or transfer in whole or

or legal entity any part of ER

International Influences

One of the primary characteristics of intellectual property rights is that they are national or
territorial in nature- that is that they do not ordinarily operate outside the national territory
in which they are granted.

The territorial nature of intellectual property rights has long been a problem to rights
holders whose works, inventions, and brands are the subject of transnational trade.
Throughout the 19th century, a number of countries that saw themselves as net exporters of
intellectual property began to explore ways of protecting their authors, designers, inventors,
and trademark owners in other jurisdictions. Initially, this was done by way of bilateral
treaties, whereby two nations agreed to allow nationals of the other country to claim
protection of their respective laws.

Towards the end of the 19th century, a number of (largely European) countries entered into
two multilateral arrangements.

1. Paris Convention for the Protection of Industrial Property of 1883

2. Berne Convention for the Protection of Literary and Artistic Works of
1886

Here, the both treaties adopted as their central criterion for protection the principle of
‘national treatment’. This provides that a member state of the Paris and Berne Union
(assume ‘country A’) must offer the same protection to the nationals of another member
state (assume ‘country B’) as country A gives to its own nationals.

Thus, the principle of national treatment is a rule of non-discrimination. The beauty of the
principle of national treatment is that it allows countries the autonomy to develop and
enforce their own laws, while meeting the demands for international protection.

The expansion of international arrangements for the protection of intellectual property

continued through the 20th century and into the 21st. Over this time, the Paris and Berne
Conventions have been revised on a number of occasions, their membership has expanded
(particularly as former colonies achieved independence), and a number of new treaties have
formulated. Most of these treaties have been developed and are supervised by the World
Intellectual Property Organization (WIPO), which has its headquarters in Geneva. It
continues to be the main forum for the development of new intellectual property initiatives
at an international level.

The GATT (General Agreement on Tariffs and Trade) was formed after the second world war
with a view to stabilizing and liberalizing trade conditions on a worldwide basis. In 1986, a
new round of negotiations began, which included TRIPS (Trade Related Aspects of
Intellectual Property Rights) on the agenda.

The TRIPS Agreement is the first significant agreement to adopt the concept of ‘intellectual
property’ to define its remit (and it has played a critical role in placing the concept of
‘intellectual Property’ at the forefront of policymaking).

TRIPS defines ‘intellectual property’ by reference to the rights specifically mentioned or

implicitly included via the clauses that require members of the WTO to recognize the existing
standards of protection with Berne and Paris Conventions. It demands substantive
protection for ‘neighboring rights’ to copyright, trademarks, geographical indications,
designs, patents, topographies of integrated circuits, and undisclosed information.

Paris Convention

The Paris convention for the protection of Industrial Property, signed in Paris, France, on
20th March 1883, was one of the first Intellectual Property treaties, after a diplomatic
conference
in Paris, France, on 20 March 1883 by Eleven (11) countries. According to Articles 2 and 3 of
this treaty, juristic (one who has through knowledge and experience of law) and natural
persons who are either national of or domiciled in a state party to the convention. The
convention is currently still force. The substantive provisions of the convention fall into three
main categories: National Treatment, Priority right and Common Rules.

Berne Convention for the Protection of Literary and Artistic Works (The Berne Convention)

An international copyright treaty called the convention for the protection of Literary and
Artistic works signed at Berne, Switzerland in 1886 under the leadership of Victor Hugo to
protect literary and artistic works. It has more than 145 nations. The United States became a
party to the Berne Convention in 1989. The Berne Convention is administered by WIPO and
is based on the percept that each member nation must treat nation must treat nationals of
other member countries like its own nationals for purposes of copyrights (the principle of
‘national treatment’). In addition to establishing a system of equal treatment that
internationalized copyright amongst signatories, the agreement also required member states
to provide strong minimum standards for copyright law. It was influenced by the French
‘right of the author’.
 TRIPS (Agreement on the Trade Related aspects of Intellectual Property Rights)
(Refer – TRIPS Agreement)

Basic idea of TRIPS –

TRIPS is an international agreement that sets down minimum standards for many forms of
Intellectual Property regulation. It’s like a set of rules that countries agree to follow to
protect the creations of people and companies, including inventions, literary works, and
symbols.

Why TRIPS exists –

Before TRIPS, countries had different rules for IP, which made international trade
complicated. Imagine trying to sell your invention in a country that doesn’t protect your idea
the same way your home country does. TRIPS was created to make these rules more
consistent across countries, making it easier for people and businesses to sell their products
and ideas globally.

What TRIPS cover –

TRIPS covers several types of IP, such as patents (protection for inventions), copyrights
(protection for artistic and literary works), trademarks (protection for brand names and
logos), and industrial designs. Each type has its own set of rules under TRIPS.

The Role of WTO –

The World Trade Organization (WTO) oversees the TRIPS agreement. It’s like a referee that
makes sure all the countries that have signed TRIPS are playing by the rules. If countries
don’t follow the TRIPS standards, they can be challenged through the WTO’s dispute
settlement system.

Impact of TRIPS –

TRIPS has a big impact on how businesses and creators operate worldwide. It can help
protect their ideas and investments, encouraging innovation. However, it also raises
concerns, especially in developing countries, about access to important things like
medicines, as strong IP laws can make them more expensive.

PART I – General Provisions and Basic Principles

Article 1 - NATURE AND SCOPE OF THE OBLIGATIONS

(Nature and Obligations)

This article sets the tone for the entire agreement. It states that members shall give effect to
the provisions of the agreement. However, it allows them to determine the appropriate
method of implementing these provisions within their own legal system and practice. This
means that while all member countries are required to adhere to the minimum standards
set by TRIPS, they have some flexibility in how they implement these standards in their
national laws.

(Members' Freedom to Grant More Extensive Protection)

Specifies that members can provide more extensive protection of intellectual property rights
than required by the agreement, as long as the additional protection does not contravene
the provisions of TRIPS. This allows countries to go beyond the minimum standards of IP
protection if they wish to do so.

(Types of Intellectual Property Covered)

The article does not explicitly list the types of intellectual property that must be protected.
These are detailed in other parts of the agreement (like patents, copyrights, trademarks,
etc.). The understanding is that the agreement covers all forms of intellectual property that
are of importance to international trade.

(Binding Nature of the Agreement)

Emphasizes that the provisions of the TRIPS Agreement are binding on all WTO member
countries. This is a crucial aspect, as it means that compliance with TRIPS is not optional for
the members of the WTO.

Article 7 – OBJECTIVES

(Promotion of Technological Innovation)

Recognizes the importance of promoting technological innovation. The underlying idea is

that by providing a framework for protecting intellectual property rights, the agreement
aims to encourage the development and sharing of new technologies.

(Transfer and Dissemination of Technology)

Another critical aspect is the emphasis on the transfer and dissemination of technology. The
agreement acknowledges the role of intellectual property protection in facilitating the
spread of technology, both among countries and within them. This is particularly important
for developing countries, as it underscores the need for a system that helps in bridging the
technological gap between developed and developing nations.

(Mutual Advantage)

Suggests that the protection and enforcement of intellectual property rights should be done
in a manner that is mutually advantageous to producers and users of technological
knowledge. This implies a balance where the interests of IP creators (like inventors, artists,
and businesses) and those who use these creations (like consumers and other businesses)
are both considered and catered to.

(Social and Economic Welfare)

A key objective of the TRIPS Agreement, as stated in Article 7, is to contribute to social and
economic welfare. The protection of intellectual property, when managed properly, is seen
as a means to enhance the economic and social well-being of societies. This includes
considerations like fostering creativity, promoting competition, and encouraging investment
in new innovations.

(Balance of Rights and Obligations)

Finally, it highlights the importance of a balance of rights and obligations. This refers to the
need for a fair and equitable intellectual property system that not only provides rights to IP
holders but also considers the broader implications for society, including issues related to
access to knowledge, public health, and cultural development.

Article 8 – PRINCIPLES

(Protecting Public Health and Nutrition)

Article 8 (1) explicitly allows member countries to adopt measures necessary to protect
public health and nutrition. This provision recognizes the importance of ensuring that
intellectual property rights (IPR) enforcement does not hinder a country's ability to address
public health concerns, including access to essential medicines. For example, this provision
supports actions like issuing compulsory licenses for essential drugs, which can be critical in
addressing health emergencies.

(Promoting Public Interest in Sectors of Vital Importance)

Beyond public health, Article 8(1) also provides room for countries to take necessary steps to
promote the public interest in sectors of vital importance to their socio-economic and
technological development. This broad language gives member states the discretion to
decide what constitutes the public interest and how best to advance it, considering their
specific national circumstances and development goals.

(Preventing the Abuse of Intellectual Property Rights)

Article 8(2) addresses the potential abuse of IPR, acknowledging that while intellectual
property rights are important, they should not be exercised in a manner that adversely
affects the international transfer of technology. Member countries are permitted to adopt
measures necessary to prevent such abuse. This can include practices that unreasonably
restrain trade or adversely affect the international transfer of technology.
(Balancing Rights and Obligations)

Overall, Article 8 is about balancing the rights of intellectual property holders with wider
public interest considerations. It underscores that while protecting IP is vital for encouraging
innovation and creativity, this protection should not come at the expense of public health,
nutrition, and the broader socio-economic interests of society.

PART II – Section 1 – Copyright and Related rights

Article 9 – RELATION TO THE BERNE CONVENTION

(Berne Convention for the Protection of Literary and Artistic Works)

Article 9(1) of the TRIPS Agreement explicitly mentions that Members shall comply with
Articles 1 through 21 of the Berne Convention (1971) and the Appendix to the Convention.
This direct reference incorporates a significant portion of the Berne Convention into the
TRIPS framework. The Berne Convention is one of the most important international
agreements governing copyright laws, setting minimum standards for copyright protection,
including the rights of authors of literary and artistic works, such as books, music, paintings,
and films.

(Exceptions to the Berne Convention)

Article 9(2) of the TRIPS Agreement clarifies that Members do not have rights or obligations
under the TRIPS Agreement with respect to the rights conferred under Article 6bis of the
Berne Convention or the rights derived from Article 6bis. Article 6bis of the Berne
Convention deals with moral rights, specifically the right of authors to claim authorship of
their work and to object to any distortion or modification of their work that could harm their
honor or reputation.

Article 10 – COMPUTER PROGRAMS AND COMPILATION OF DATA

(Computer Programs)

Article 10(1) states that computer programs, whether in source or object code, shall be
protected as literary works under the Berne Convention (1971). This is significant because it
categorizes computer programs as a form of literary creation, thereby extending copyright
protection to software. This means that just like books or musical works, computer software
is recognized as a creation of the mind and is thus eligible for copyright protection. The
protection applies regardless of the way the code is expressed, ensuring both the source
code (human-readable format) and object code (machine-readable format) are covered.

(Compilations of Data (Databases))

Article 10(2) addresses the protection of compilations of data or other material. It states that
these compilations, sometimes referred to as databases, will be protected as such when, by
reason of the selection or arrangement of their contents, they constitute intellectual
creations. This part of the article is acknowledging that while individual pieces of data might
not be protected, the creative effort in selecting and arranging the data within a database
can be. This protection does not extend to the data or material itself but rather to the
creative effort involved in making the compilation.

Comparison to Section 6(1) of IP Act of SL to Article 10 of TRIPS Agreement –

(Scope of Protection)

Both TRIPS Article 10 and the Sri Lanka Intellectual Property Act Section 6(1) seem to align
with the Berne Convention in terms of protecting literary and artistic works, including
computer programs.

(Specificity on Computer Programs and Databases)

TRIPS Article 10 specifically addresses the protection of computer programs and databases.
The Sri Lanka Intellectual Property Act likely covers these as well, given its alignment with
the Berne Convention, but the exact scope and manner of protection might differ based on
national legislation specifics.

(Implementation and Flexibility)

TRIPS provides a broad framework and sets minimum standards, allowing member countries
some flexibility in implementation. The Sri Lankan law would be an instance of how a TRIPS
member country has incorporated these international norms into its domestic legal
structure, potentially with some local adaptations.

Article 11 – RENTAL RIGHTS

(Rental Rights for Computer Programs and Cinematographic Works)

The first part of Article 11 requires member countries to provide authors of computer
programs and producers of cinematographic works with the exclusive right of rental. This
means that the creators or their assignees have the exclusive right to authorize or prohibit
the commercial rental of these works to the public.

However, for computer programs, this right does not apply if the program is not the
essential object of the rental.

(Condition for Waiving Rental Rights in Case of Music and Sound Recordings)

The second part of Article 11 pertains to the rental of musical works in the form of sound
recordings. It states that a member may provide that, in the case of musical works, the
exclusive right of rental does not apply where composers and lyricists have obtained a single
equitable remuneration for the use of their work.
This essentially means that for musical works, the exclusive rental right can be waived if the
composers and lyricists are compensated in a different manner, typically through a one-time
payment.

Comparison to Section 9 (e), Section 7 and section 6 – Refer IP Act of Sri Lanka

Article 12 – TERM OF PROTECTION

ER and MR no less than 50 years from the end of the calendar year of
Are = publication or,
protected failing such publication within 50 years of making of the work,
50 years from the end of the calendar year of making

Article 13 – LIMITATIONS AND EXCEPTIONS

(Limitations and Exceptions Must be Limited)

Article 13 states that member countries may implement limitations or exceptions to the
exclusive rights granted by copyright. However, these limitations or exceptions must be
confined to certain special cases.

(No Conflict with a Normal Exploitation of the Work)

The article specifies that these special cases should not conflict with a normal exploitation of
the work. This means that the limitations or exceptions should not interfere significantly
with the ways in which the work is normally used or expected to be used commercially.

(No Unreasonable Prejudice to the Legitimate Interests of the Right Holder)

Finally, any limitations or exceptions should not unreasonably prejudice the legitimate
interests of the right holder. This clause ensures that while exceptions are allowed, they
should not harm the economic interests of the creators or owners of the copyrighted
material in an unreasonable manner.

Copyrights and Related rights

Copyright term is used to describe the area of intellectual property law that regulates the
creation and use made of a range of cultural goods such as books, songs, films, and
computer programs. The intangible property protected by copyright law is distinctive in that
it arises automatically and usually for the benefit of the author.

Various rights are conferred on the owner of copyright, including the right to copy the work
and the right to perform the work in public. The rights vested in the owner are limited,
notably in that they are not infringed when a person copies or performs a work that they
have created themselves. The rights given to a copyright owner last for a considerable time;
in many cases, for 70 years after the death of the author of work.

Authors Rights and Neighboring Rights:

Accordingly, the distinction between ‘author’s rights’ refer to works created by ‘authors’,
such as books, plays, music, art and films. In contrast, ‘neighboring rights’ (which are
sometimes called related rights) refer to works created by ‘entrepreneurs’, such as sound
recordings, broadcasts, cable programmes, and the typographical format of published
editions.

The rationale for differentiating between these two categories of subject matter lies in the
facts that neighboring rights are typically derivative, in the sense that they use or develop
existing authorial works, that they are a product of technical and organizational skill rather
than authorial skill, and that the rights are initially given not to the human creator, but to the
body or person that was financially and organizationally responsible for the production of
the material.

According to Natural Rights theorists, the reason why copyright protection is granted is not
that we think that the public will benefit from copyright; rather, copyright protection is
granted because it is right in intellectual productions because such productions emanate
from the mind of an individual author.
Ex: A poem is seen as the product of a poet’s mind, of their intellectual effort and
inspiration. As such, it should be seen as their property, and copying as equivalent to theft.

Criteria for Protection

Originality: Literary, Dramatic, Musical, and Artistic Works

The most important requirement that must be satisfies for copyright protection to arise is
that the work must be ‘original’. It should be noted that this applies only to literary,
dramatic, musical, and artistic works (authorial works). In contrast, there is no need for
entrepreneurial works (sound recordings, films, broadcasts, and typographical
arrangements) to be original for them to qualify for protection.