Article 2 of the World Intellectual Property Organisation defines “intellectual property”.

IP is a work or invention which originates from an idea. It is an intangible property as WIPO

describes it, it is also called mind’s creation and is published to be called intellectual property.

● A work or invention
● Originates from an idea
● Intangible Property
● Mind’s Creation
● Published

How is IP different from other forms of property?

● Incentive to Produce - w/o protection, valuable creations would go unrecognised and

undervalued, different from other properties as it creates an incentive to produce
something which is beneficial to both the producer and the society.
● Need to be produced
● Dependence on intermediaries
● Use of licenses for the use of IP

1710 - The Statute of Anne

During the early 1800s came the idea of global protection of intellectual Property Rights existed
among legislative bodies.

1886 Berne Convention extended the same kind of protection to written works - Copyrights.

Madrid Protocol - Trademark

All these offices from these conventions merged into a central governing body called United
International Bureau for the Protection of Intellectual Property. This then became the United
Nations Office WIPO.

Reward theory is compensating the inventor for their invention or creation - leading to the
creation and protection of rights over that property.
Utilitarian Theory: Something’s value should be measured by its usefulness.

All such acts should be permitted if they produce the greatest happiness amongst the majority of
the population and ensures the absence of pain.

Maximizes the well-being of all people.

Awarding property rights to innovators and producers of creative work is a mere means to an end
which should eventually lead to the benefit of society.

According to John Mill, Patent Monopolies are more appropriate as opposed to the simple
practice of giving awards.

A person who believes in this theory would argue that affording a monopoly for a short duration
would encourage him to share his creation with the rest of the world.

Criticism:

● Not able to balance between private and public interests.

● Private IP restricts the use of ideas.
● The patent regime prevents others from using the idea.
● Impedes the flow of knowledge and prevents downstream innovation.

Labour Theory: by John Locke

● IPR lies in the belief that “a person deserves the fruits of his labour”
● Locke asserts that when an individual exerts his labour over resources he can claim it as
his property because he has added value through his labour.
● Labour exerted by an individual is his own property and it is impossible to separate
labour and its product.
● Property rights can be allowed only if it does not deny others of resources existing in
nature. (Only be given if there are enough resources in nature)
● You cannot have patent rights over the discovery of a thing that exists naturally.

Criticism:
 ● If the labour is not naturally mixed with the existing product, it shall not result in the
transformation of the substance.
● An individualistic approach where others’ contribution to the evolution of the product is
disregarded and not recognised as only the most recent contributor is given consideration
or acknowledgement of the product. (Exclusion of Others)
● When you own rights in IP at the exclusion of others, the same right can be attributed to
the society which is creating the system of protecting them.

Personality Theory: By Georg Hegel

● An invention would belong to its author or inventor because it is the manifestation of the
inventor’s personality. Property is the self-actualisation of an individual’s will.
● Personality is identified as an individual’s will’s struggle to actualise itself. It is the
reflection of an individual’s will.
● Society accepts the external manifestation of an individual’s personality as property.

Criticism:

● Personality stake in a particular object to have personality justification to intellectual

property becomes a fundamental question to determine.
● The skill of a painter copying an original painting of another painter is equal as the effort
and hardwork put in by the painter is the same as the original one, however it would not
be his creation as it is not a reflection of his personality.
● Does not recognise the imitator (who adds value to the original work) as a property right
holder.

TRIPS (Trade-Related Aspects of Intellectual Property Rights)

● Universal Copyright Convention is an exception to Burn Convention as under Burn

Convention you do not need to register your work to get copyright.
● TRIPS obliges those countries that do not yet protect intellectual property to introduce
that protection if they do not want to be excluded from the world free-trading system and
from WTO.
National Treatment Clause: denotes a rule of non-discrimination, promising foreign intellectual
property owners that they will enjoy in a protecting country at least the same treatment as the
protecting country gives to its own nationals. (TRIPS Article 3)

Exceptions:

● A restriction can be imposed on the rights of a non-WTO member who is not a resident in
a WTO member and may restrict the protection given to that work if the country of which
the author in question is a national fails to protect in an adequate manner the works of its
authors.
● If the member of the first publication restricts protection, then other members may also
do so. They are not required to grant to the work in question a wider protection than that
granted to it in the member of the first publication.

MFN Clause:

● Article 4 discusses the Most-Favoured-Nation (MFN) treatment which provides that, any
advantage, favour, privilege or immunity granted by a member to the nationals of any
other country shall be accorded immediately and unconditionally to the nationals of all
other members.
● Essential for ensuring a level playing field between all trading partners and is therefore
the central pillar of the international trading system.
● It is generally governed by the

Exceptions:

● When the advantage is accorded by a member deriving from international agreements

related to the protection of IP which entered into force before the WTO agreement
entered into force, provided that such agreements are notified to the TRIPS and do not
constitute an arbitrary or unjustifiable discrimination against nationals of other members.
( In service matters, they are allowed to differentiate in certain circumstances, if you
lower one trade barrier, you will have to lower all trade barriers for that particular
country).
In the case of the MFN clause, the products on which the immunity should be applied are called
Like Products. Conditions for Like Products:

● Products' end use should be the same.

● Physical characteristics should be alike.
● Consumer preferences
● Product nature and quality

Case: Cubaexport and French Firm Pernord Ricard jointly owned HCH and HCI for distribution
of rum under the Havana Club. They registered their trademark in US Patents & Trademark
Office (US PTO).

In this case, the EU filed a complaint against the US alleging that a law which prohibited the
registration and enforcement in the US of a cuban trademark.

Principle of Territoriality

● This principle permits States to tailor their national intellectual property laws to suit their
level of technological and economic development.
● The TRIPS Agreement significantly encroaches upon this principle as it contains certain
minimum standards that member states are required to implement at the national level.

Paris Convention

● Tries to enable protection of inventions, but it does not create a proper international
patent system.
● Establishes the right to national treatment.
● Impact: Enlarged even further by the TRIPS Agreement. Article 2 of TRIPS obliges the
contracting states to comply with the main substantive provisions of the Paris Convention
even if they are not members of it.

Berne Convention 1886:

● This convention is for copyrights what Paris Convention is for patents.

● Berne Convention acknowledges the right to reproduction of original works.
● Minimalist harmonisation of Copyrights.
 ● 3 basic principles for minimum protection: 1. Equitable status on the protection of literary
arts. 2. Automatic Protection of all works, regardless of any legal formalities for
protection. 3. Independent of the protection terms in the country where the work
originated, with limited exceptions.

COPYRIGHT

A legal right in the form of protection afforded to original ideas which are expressed in a
concrete form.

Concurrent Copyright

Recipes that are communicated orally or written on paper are not copyrighted whereas a ‘Recipe
Book’ can be copyrighted not because it is published but because it is a collection of dishes and
constitutes a concrete form.

University of London Press v University Tutorial Press - Issues and Arguments

● Copyright over Question Papers - Are they original enough for copyright protection?
● Who is the owner in case of copyright protection?

Fiest Publication v Rural Telephone Service

● A telephone company provided telephone service public utility providing telephone

service to several communities in Kansas, and that was subject to a state regulation
requiring all telephone companies operating in the state to issue annually an updated
telephone directory, published a typical telephone directory, consisting of white pages
and yellow pages.
● The telephone company obtained the data for its white pages from the company’s
subscribers, who were required to provide their names and addresses when applying for
telephone service from the company.
● Selection, coordination and arrangement of respondent’s white pages did not satisfy the
maximum constitutional standards for copyright protection.
● Lacked the requisite originally because respondent had not selected, coordinated, or
arranged the uncopyrightable facts in any original way.
 ● To establish copyright infringement, two elements must be proven 1. Ownership of a
valid copyright and 2. Copyright of constituent elements of the work that are original.

Eastern Book Company v DB Modak

● In 2004, the defendants came out with a software called Grand Jurix CD Roms and
published copied reports of SCC.
● Issues: What should be the standard of originality with respect to the derivative works to
receive copyright protection?
● Derivative work should be more than copied work and showcase skill, labour, capital and
a minimal level of creativity.
● Intellectual Creativity and Judgement should have gone in the creation of a work for it to
pass as a creative originality.
● Judgement held in favour of appellants giving them exclusive right over their content
prohbhiting anyone to utilitse it. The court ordered the respondents to sell their CD-
ROMs with their own Headnotes, Footnotes and editorial and in no way, they should be a
copy of the apellant’s work. - exercise of brain.

Baker v Selden 101 U.S. 99 (1879)

● Plaintiff, testator for complainant, obtained a copyright for a book on the art of
bookkeeping written by complainant

CCH Canadian Ltd. v Law Society of Upper Canada [2004] 1 SCR 339

● The Library provided self services as well as custom-based photocopy services.

● In 1993, the Respondents publishers commenced copyright infringement actions against
the Law Society, seeking a declaration of subsistence and ownership of copyright in
specific works and a declaration that the Law Society had copyright when the Great
Library reproduced a copy of each of the works.
● Test of originality instead of the US’s approach to understand originality,
● Defined skill as use of one’s knowledge, develop aptitude and
● Headnotes, case summaries which were photocopied, were original and protected under
the Act.
 ● Factors that purpose of dealing, character of use of such work, amount and nature of use
of such work (purpose, character, amount and nature)

Determining Originality

● Sweat of the Brow: An author gains rights through simple diligence during the creation of
a work. Substantial creativity or “originality” is not required. Entitled to rights on account
of efforts and expense put in.
● Modicum of Creativity - The concept of “originality” has undergone a change from the
“sweat of the brow”
● Position in India: We lean towards a minimum level of creativity as well as
acknowledging that there needs to some amount of originality.

Baker v Selden 101 U.S. 99 (1879)

● The complainant took protection under IPR for his books on bookkeeping. A complaint
was filed against Baker who was another author of accounting books.
● The Court held that the record failed to show that the defendant had violated the
copyright and the matter the plaintiff alleged was infringed was not even a lawful subject
of copyright.
● The Court drew a distinction between an author’s original writing, which was a valid
subject of copyright, and the art or practical knowledge explained by the writing, which
generally was considered to be a community property and was the subject not of
copyright but of a patent if completely original to the author.

Walter v Lane:

● Report of a speech contained in a book considered as an original work of the author?

● Sweat of the brow was applied
● Literally skilled or originality is nothing but an industrialist’s collection.
● As much skill involved in compilation.
● Reporting requires skill and reproduction is a work of art itself.

Ladbroke v William Hill [1964] 1 WLR 273

Krishika Lulla & Ors. v Shyam Vithalrao Devkatta & Anr.

● Filed a complaint over the movie ‘Desi Boyz’ as he had copyright over the synopsis of a
story written by him ‘Desi Boys’.
● Whether copyrights subsist in the title of a literary work?
● A title by itself in the nature of the name of a work is not complete by itself without the
work and is not protectable under Section 13 of the Copyright Act.
● Common works and their combination do not qualify as literary works.

R.G. Anand v Deluxe Films

Apple Computer, Inc. Franklin Computer Corp.- 714 F.2d 1240

● Whether a code can be copyrighted?

● Section 102 talks about copyrightable subject matter.
● Operating systems are considered creative work.
● The underlying idea of the operating system is that the method in which it is designed
should be copyrightable as a ‘fog of expression of ideas’.
● Both source and object code are copyrightable.
● Doctrine of Merger: If an idea can be expressed only in one way, it cannot be
copyrighted.
● Whether other programs be written or created in the way the original one was and
perform the same functions?
● If the other programs are possible

Computer Associates v Altai Inc, 923 F.2d. 693

● Whether copyright can extend to the structure and design of a code?

● Non-literal parts of a code.
● Original OSCAR violated Adapter’s Copyright
● Substantial similarity in software programs.
 ● The court held that first, it needs to break down the program into different parts like
deducing it into building blocks and separate what is the idea, expression and whether the
expression is necessarily incidental or taken from the public domain.

Roger v Koons:

Section 17:

● First Owner of Copyright

● Initial Ownership of Literary, Dramatic, Musical and Artistic Work

Community for Creative Non-Violence at al. v. Reid 490 U.S 730 (1989)

● Reid created a sculpture on commission from the CCNV and contended that since he had
not been employed by it under common law agency principles, he owned the copyright.
● He made it himself but through the instructions and requests made by the Plaintiff.
● Issue: Under common law agency principles, does one who creates artwork at the
directive of another retain copyright upon it unless that other had employed the artist?
● To determine who is an employee, certain factors were laid down: 1. Control by the
employer over the work. 2. Has the work been done on the office premises of the
employer? 3. Did the employer provide any resources for the commission of the work? 4.
Control of the employer over the employee (schedule, kind of directions being issued,
payment and whether there have been more employees)? 5. Status and conduct of
employees (Whether he is in the normal business of creating it?) What kind of benefits
are the employees being provided with?
● CCNV concealed the idea of the sculpture and provided directions on its construction,
meanwhile, the artist was an independent contractor who used his own skill, created it in
his own studio with his own tools and did not need the support of the employer. - Joint
ownership.

Assignment and Licensing:

 ● Assignment is in essence a transfer of ownership while a license is in essence permission
to do what otherwise would be infringement.
● Section 18: Assignment, the owner of the copyright of a work has the right to assign his
copyright to any other person - effect that the assignee becomes entitled to all rights
related to copyright.
● Assignor is the one who assigns and Assignee is the one who receives. In case the rights
are not assigned to anyone, the assignor becomes the absolute owner.
● Duration, Territorial Jurisdiction, Amount of consideration paid, types of rights.
● Section 19(9) and 19(10) - Any assignment of copyright for making a sound recording or
film will not affect the right of the author to claim an equal share of royalty.
● Section 20 - Assignment by Operation of Law
● Section 14: Bundle of Rights.

Licensing:

● Exclusive, Non-Exclusive, Co-Exclusive and Sole License.

● Rights that are assigned?
● Section 31: Compulsory License (Being a member of the Berne Convention)
● If the author is dead or cannot be traced, the ownership of the unpublished work can be
claimed by anyone. (Section 31A - Compulsory Licensing of Unpublished Work)

Term of Copyright: Author’s Life plus sixty years. (Catcher in the Rye)

Najma Heptulla v Orient Longman Ltd. AIR 1989 Delhi 63

● Revolves around the autobiography of Maulana Azad - India Wins Freedom, penned
down by Prof. Kabir.
● Maulana Azad would go over the documentation of Prof and check if its suits him.
● National Archives, New Delhi and National Library came forward and agreed to become
the trustees including the unpublished 30 pages which were not published until the
judgement.
● Later, it was recognised and agreed that the seal of the complete book would only be
broken with the consent of a close associate of the author Prof. Kabir.
● It was also recognised in a separate dispute that the nephew was the legal heir.
 ● Later Kabir entered into an agreement with Orient Longman for the publishing of the
book and it was decided that the royalty would be distributed among the Indian Council
of Cultural, Fatima and…
● Whether Maulana Azad was the sole owner of the autobiography? Whether Kabir was a
joint owner? Section 2(d), 17, 13(2), 2 applied.
● The court determined how joint ownership can be recognised in these works. The Status
of an “Author” cannot be given to the person in whose language a literary piece is written
while ignoring the person who worked on the complete material.
● Each author should express copyrightable contributions and there should be an Intention
to Collaborate. - TWOFOLD TEST

Doctrine of Exhaustion

● It provides that a copyright owner’s right to control copies of their work “exhaust” on its
first sale by the copyright owner or with their consent.
● This prevents the copyright owner’s right to control copies of their work from extending
beyond the point at which they receive reasonable compensation.
● Allows the purchaser to have control over their copy.

Anton Piller Order

● An order granted by the court permitting the inspection of premises on which it belongs
that some activity which infringes the copyright the plaintiff is being carried on.
● Ex-parte interlocutory injunction- called in India.
● Bucyrus v Vulcan

Mareva Injunction

● It restrains the defendant from disposing of assets which may be required to satisfy the
plaintiff’s claim or removing them from the jurisdiction of the court.

Permanent Injunction:

● Perpetual Injunction and Damages.

 ● Perpetual Injunction lasts up to the unexpired term of the copyright, is granted in order to
prevent any further repetition of the infringing action, need not prove the actual damage
but only the infringement of copyright.
● John Doe Injunction is used in the UK to describe an injunction sought against someone
whose identity is not known at the time it is issued.
● Damages

Fair Use/ Fair Dealing

● Amount, purpose, nature and effect - 4 factors of Fair Use.

● Incidental storage on an electronic medium is going to constitute fair use.
● Fair Use is a concept mentioned in the US Copyright Law.
● Reasonable Unauthorised Use.

Campbell v. Acuff-Rose Music 510 U.S. 569 (1994)

Authors Guild v. Google No. 13-4829 and Oracle Case

Patents

1. To identify the relevant common general knowledge of that person

2. The inventive concept of the claim
3. Difference
4. In ppt

Compulsory Licensing:

Section 84, 91, 92 and 92A.

● Reasonable Requirement of the public wrt the patent has not been met.
● Not available to the public at a reasonably affordable price
● The patented invention is not worked in the territory of India.
Bayer Corporation v Union of India and Others 2013 Indlaw IPAB 20

Grounds for Revocation: Section 64

The general burden of proof to establish infringement rests on the plaintiff.

Contributory infringement

Kirin-Amgen v Hoechst (2005) RPC 9

Trademarks

Words, slogans, designs, letters, numerals, internet domain names, the shape of goods or their
packaging, smells, sounds, colours and gestures moving digital images.