IPR

Table of Contents
Introduction...............................................................................................................................1
Copyright...................................................................................................................................3
Patents.....................................................................................................................................19
Trademarks..............................................................................................................................37
Geographical Indications (TA only)...........................................................................................47
Designs....................................................................................................................................49
Protection of Plant Varieties (TA).............................................................................................54
Protection of Traditional Knowledge and Traditional Cultural Expression.................................54

Introduction
 Standard – indicate that certain products have certain characteristics; std setting
organizations set them
 There are 4 technologies to indicate a std  Once a std is created, out of 4 technologies,
the std setting organization picks up 1 technology which becomes dominant and the other
3 go out of use. The patentee of that particular technology can try and abuse his dominant
position, being the holder of the std essential patent. There is a need for the regulation of
his activities – this is the interface b/w IP and Competition Law
 Not all categories of IP have the same term of protection because of how society is
affected etc. For instance, the copyright of a literary work is the lifetime of an author + 60
years but patents are only for 20 years and then it goes into the public domain, not
renewable. Trademark – 10 years + renewable. Design – 10 years + 5 (?)
 Different principles for infringement for different IPR
 There is also trade secret – commercially valuable or relevant info, disclosure of which
should be actionable. In India, there is no specific legislation. However, non compete
agreements and non disclosure agreements along with protection of confidential
information under tort law covers this aspect.
 Generally, IPR is mutually exclusive. But there can be overlaps between things, like the
Disney logo can be both a copyright and a trademark
 Hegel’s Personality Theory 
 Human will – way to achieve freedom.
 Personality
 Freedom – this is the ultimate objective and most imp thing for H.
 Problems that Justin Hughes raises –
 Hegel’s theory can be applied only to some parts of IPR (like artistic works) and not to
others (like semi conductors or some patents)
 Some countries have accepted the theory, ie limitation of
 Whoever may be the owner of the copyright, the author retains the right of integrity over
the work (Hegelian theory)
 Tragedy of Commons – Garrett Hardin (William Forster Lloyd)
 Anything left to common public space is ruined because no one gives a fuck. The solution
to this is regulation. But the problem of angels renouncing angelic behavior because non-
angels did so first still persists. The next solution presented is sustainable development
and converting commons into private property.
 In case of IPR is there a tragedy at all (like w physical property)? IPR is infinite unlike
physical property which is finite.
 But, the growth of commons is still affected even if the protection of existing commons
isn’t. Freeloaders may still exist. There is no incentive for innovation. We should
recognize the performance of the performer. This is also in line with Article 1 Section 8
of the US Constitution
 Richard Posner (annoying TA did this part) doesn’t make much sense despite apparent
effort. Ignores the fact that Posner himself called copyright and patent law excessive in
2012.
 Alternative modes to IP discussed and rejected in 5 mins, sad.
 WIPO  World Intellectual Property Organization, UN organ
 WTO  TRIPS (Trade Related Aspects of Intellectual Property Rights) stronger than the
25 WIPO treaties
 Other 4 treaties  intl convention for the protection of new varieties of plants, universal
copyright convention (UNESCO), convention on biodiversity (UNEP), intl treaty on plant
genetic resource for food and agri (FAO)
 Do the Paris Convention and the Berne Convention from the RM
 3 main features of TRIPS
 standards: min stds of protection to be provided by each member
  enforcement
 dispute settlement

Copyright
 Original expression in works are protected: literary, artistic, dramatic, musical, sound
recording, cinematograph films
 Not protected  functional features, non-original expressions, ideas
 Protection is automatic. You may register or may not.
 Copyright is a bundle of rights  economic rights and moral rights
 Moral rights  not transferable. Integrity of author. Can sue for damages
 Bern Convention says that copyright protection should not be subject to any formality.
Formal registration is for additional protection.
 Encryption is “technological protection measures”. If someone tries to decrypt and access
the copyrighted material, it is called circumventing. The WIPO Copyright Treaty and
WIPO performance and phonograms treaty are meant to prevent circumventing and are
called “internet treaties”.
 Article 1 Section 8 of the US Constitution is known as the ‘copyright clause’. SCOTUS in
the case of Harper and Co. v. The Nation, said that copyright was an engine of
expression, and therefore there was no conflict b/w the 1st amendment and copyrights
 Napster, the music sharing platform (like Limewire) – the users committed a primary
copyright infringement. Napster promoted or rather, materially contributed to such
infringement w its centralized server. It was proved that it had knowledge of such
infringement. Secondary liability under copyright law is of two types – (1) contributory
infringement (= material contribution + knowledge of infringement) (2) vicarious
infringement (if a person has the power to control the activities of others but does not do
so, and financially benefits from it). Napster was both types of infringement.
 Secondary liability was first accepted by SCOTUS in the Sony case.
 If a VCR is manufactured and one can use it to download copyrighted material, is the
manufacturer liable? Is this product capable of “substantial non infringing use”? That was
the test laid down by the court – Sony doctrine.
 Compare with vicarious liability in criminal law – if you manufacture a knife and it is
used to kill people, the manufacturer isn’t liable. Why not? Cuz of substantial non
criminal use. Similarly, if someone chooses to use a product to infringe copyright, the
manufacturer is not liable
 Fair use exemption to copyright – parody. US 2 nd Circuit Court says two contradictory
messages are being sent out in a parody. Four tests to see whether it is fair use.
 PETA – People Eating Tasty Animals had a website on peta.com but the real PETA was
on peta.org. This could be a parody by content, but the URL means it’s not a parody
because confusion was created. Ultimately, not a parody.
 To determine infringement, substantial similarity is the test.
 S 16 of the Copyright Act – statutory basis for copyright law
 You cannot copyright a historical fact
 The bhagat singh videos  although both were in prison, the sets were different. The fact
that it is in prison itself is a historical fact. But the expression of ‘prison’ was different in
both
 Scenes’ affair – when some facts cannot be changed. An inevitable part of expression.
Inextricably linked to the common idea. Therefore, the similarity will not be an
infringement. Example – if you do a scene from the Mahabharata; the prison scene in the
freedom struggle
 John Cage’s 4 min 33 s – someone else composed ‘1 min’ and was sued. It was settled
out of court.
 Can the composition as opposed to the performance of the composition be copyrighted?
 Orphan works – even if DD doesn’t reveal who the author of the work is, you can be
liable for infringement once the author complains

Idea Expression Dichotomy

 First, you need to prove there is copyright protection. Only then can there be infringement
through substantial similarity
 Only expressions get copyright protection
 Ideas are protected under patent law, and expressions are protected under copyright law,
generally (patents are for inventions, which are ideas)
 S 102, USA and 9(2) TRIPS exclude protection for ideas. No explicit provision in India
but that’s the position of law.
 Baker v Selder 26
 Where a truth of science or method of art are common property of the world, the author
can use it in any way
 Donoghue v allied newspaper 27
 Najma Heptollah 28
 Rg anand 30 – ordinary observer test or dominant impact doctrine – there can be
similarities without things being identical
 Anil Gupta v Kunal Das Gupta  idea of a swayamvar reality show. Can anyone claim
copyright over the concept? They had provided the details of how it would be in the
show, and if “fledged with details” it becomes an expression and stops being an idea
 Zee telefilms v sundial communications  concept of ‘kanhaiya’ who resides in ppl’s
house to make their problems go away. It was put down into detailed plot notes. This was
copied by someone who breached the confidentiality clause in their contract – ‘krish
kanhaiya’. Copyright violation. See highlighted parts of the case pdf.
 Indian express newspapers v jagmohan  “there cannot be a copyright in an event which
has actually taken place … ideas, information, natural phenomena and events on which an
author expends his skill, labour, capital, judgment and literary talent are common
property and are not the subject of copyright”. Journalist goes to Madhya Pradesh to
investigate human trafficking of women and writes a series of articles in the newspaper.
A movie called ‘kamala’ was later made on the same topic w the same facts etc. No
copyright violation found.
 If you go and find a relic from Harappa, the fact of its discovery or the relic as a subject
matter is not protected. But if you write about it with analysis, your analysis does get
protection.
 Unadorned recipes are not protected
 Institute for inner studies v charlotte  can pranic healing techniques be copyrighted?
Books were written explaining how to do asanas etc. The plaintiff sought to restrain the
defendant from teaching what was in the book. They sought to treat the exercises as a
‘dramatic work’. Copyright not granted. Pranic healing is a part of public knowledge. If at
all there are any novel processes, it will be in the realm of patents.
 Mazer v stein (functionality) – whether the artistic features in statuettes of male and
female dancing figures made of semvitrous china could be protected despite the fact that
they were used as bases for table lamps? It becomes functional in nature cuz its in a lamp
and is a useful article. Useful articles are always wrt patent and not copyright. The lamp
got protection to the extent of the base ie the dancing statue. The artistic feature got
copyright protection. Violation to that extent.
 The conceptual separability doctrine – there are works which have functional features. Is
it possible for you to separate the aesthetic features from a particular article? If it is
 capable of being physically separated, you get copyright protection for the separable part.
But then they brought in the ‘conceptual separability doctrine’. If there is a designed
poster, can the design be separated from the info on the poster? Conceptually, yes even
though physically, no. (sometimes you get design protection but how do you know when
that is and when this is?)
 Can an idea be expressed in only one way?
 If there is such an idea which can be expressed in only one way, it doesn’t get copyright
protection. This is because if you protect only the single possible expression, you are
protecting the idea by extension.
 The doctrine of merger – the idea merges with the sole expression and doesn’t get
copyright protection
 “the topic necessarily requires if not only one form of expression at best only a limited
number”
 Kendrick v Lawrence – is an image of a hand holding a pencil checking a box, meant for
illiterate voters entitled to protection? No because of the merger doctrine + not the
exclusive right of K to represent a particular operation (ticking the box)
 Copyright over the turtle shaped gold pin – oval cluster of precious round stones –
protection? You cannot, by obtaining a copyright upon one design of a turtle pin, exclude
all others from manufacturing gold turtle pins on the ground that they are substantially
similar in appearance – Herbert Rosenthal jewelry v honara jewelry
 Mattel inc v jayant aggarwalla – SCRABBLE – doctrine of merger, so no violation
 Morrisey v proctor & gamble – see RM
 Is copyright about novelty or is it about original expression? This is in re the memory
stone case
 Scenes a faire doctrine  precludes copyright protection for scenes that must be done. In
the computer software context, this means that the elements of a program dictated by
practical realities may not obtain protection. Examples – hardware stds or mechanical
specifications, compatibility requirements

Originality

 It must originate from the author in the sense that it is not copied. Relates to original
expression of the thought and not original thought itself
 University London Press case – see RM
 Does not have to be novel
 Literary work need not be literature; it need just be in print
 Sweat of the brow means they have expended labour
 Labour cannot be the basis for copyright protection
 Sweat of the brow theory rejected – feist publications – see RM
 Facts are not copyrightable, although factual compilations are (so a telephone directory
wouldn’t be copyrightable cuz it is just collecting everyone’s numbers and putting them
in alphabetical order. Something like our IPR RM would be copyrightable)
 Is the compilation of facts just an arrangement of pre-existing material? If yes, no
copyright. If there is a modicum of creativity, however, it is copyrightable.
 Elsenmen v quimron  800 ancient scrolls discovered in caves. Deciphered,
reconstructed and compiled by one prof – 130-line text. Someone else was writing a book
about ancient scrolls and included one of these scrolls
 The scrolls were damaged and there were pieces of scrolls on which only one word was
found. Some had sentences too. The task of the prof was to reassemble them so as to
convey a meaning. She also filled in the gaps by meeting experts on Judaism, Christianity
etc.
 But would a person who solves a crossword puzzle be entitled to protection?
 She hadn’t written it herself, it was written by someone else
 The court held that there was indeed an element of creativity – the work was not
mechanical or technical, the result of which is pre-known like in a crossword.
“decipherment is the art of providing soul and spirit in the fragments that made them a
living text”. Copyright exists
 Are judgments of the court copyrightable? See s 2 of the copyright act, “government
work”
 S 17 (d) – government is the owner of the copyright
 S 14 – copyright owner shall have exclusive right. One of those rights is reproduction
 S 51(1)(a) – you can reproduce a judgment without infringing copyright
 Customer databases no longer enjoy copyright protection cuz no creativity – 2014

Fixation

 Must be fixed in a tangible medium

 Why is it relevant
 Charles dickens’ last book – he had bequeathed his last book to someone – the court
differentiated b/w chattel and the copyright and said she only had the chattel right. The
act was amended immediately after this decision to say that bequeathing included the IPR
of the object so bequeathed

What is copyrightable?

 S 13
 Hollirab v trustwell test discarded
 S 2(o) – literary work – includes computer programs
 Derivative works are not defined in India – art 2(3) of the Berne Convention, s 101 UK
CA
 Titles of works
 does a title by itself satisfy the defn. of literary work or is it just a part of the literary
work?
 Godfrey Philips v dharampal satyapal – not copyrightable because “shauq badi cheez
hai” is a combination of common works and no great skill involved
 Started looking at the length of the title, whether it involves any creativity, whether
the title itself is capable of imparting any instructions
 Arivale v Kamal Hassan – title not part of composition or work of author / composer;
workmanship confined to the work and not the title (this is the logic used in the below
cases)
 Krishik lulla case in RM – sets the controversy to rest. Titles NOT copyrightable
 EM Forster v AN Parasuram – same, with passage to india
 Radhakrishna v murugadom
 Lyca productions v manimaran – no element of originality in the title
 Satya movies case – mistakenly allowed protection
 So, titles are generally NOT given copyright protection. Maybe TM
 Mere ad slogans are not literary works; info in ad may be protected
 written notes of lectures are copyrightable
 annotations – are copyrightable if they involve intelligence and skill in making some text
easily understood
 letters
 are original literary works
  those dictated to a steno – the author has copyright (not the addressee or the steno)
 all kinds of letters – business, govt, pvt – have protection
 new editions of works – author and editor are both copyright owners
 research thesis or dissertation – yes (OP Singhal case)
 yes, to all of the following: arrangement of broadcasting programs, school textbooks if
original, directories, football coupons, stock exchange prices
 no, to: photocards with pictorial borders, names and addresses printed on index cards,
plain calendars, news, facts, work in public domain, sports scoring sheets
 Time Warner entertainment case v RPG net – can you have copyright in a future work?
No, because you cannot be an owner of something that does not yet exist; no right and no
infringement in a non existing work (13, 14, 16, 17, 18, 55)
 Computer programs need a modicum of creativity – can be represented in various ways –
computer programs have two elements – literal (code) and non literal (wtv is not code)

Dramatic works

 S 2(h)
 Work in which a narrative unfolds, dialogue, action, or even action alone
 Academy of general education v malini mallya – dif bw literary and dramatic work – the
former allows itself to be read whereas the latter forms the text on which the play rests
 Green v broadcasting corp 61
 Arks case 62
 Banner universal motion picture v shine group – defined dramatic work as a work of
action with or without music, capable of being performed before an audience
 In the dissenting opinion (?) of the Green case, held that the format of a show may be
copyrightable; should have a number of clearly identifying features, which taken together,
distinguish it from other shows; those distinguishing features are connected with each
other in a coherent framework which can be repeatedly applied so as to enable the show
to be reproduced in a recognizable form
 Dev anand 63
 Sporting events and moves? Think about it

Musical work

 India – s 2(p); UK s 3(1)(d); US 101

 Only the musical part may be copyrighted, not the lyrics
 Gramophone co v super casettes
 Dif b/w sound recording and musical work?
 Campbell case 63

Artistic work

 2(c) – ‘any other work’ is vague

 2(i) – engraving; 2(s) – photograph; 2(b) – work of architecture; 2(za) – sculpture
 lebbus woods v universal – drawing – used in a movie called 12 monkeys – right to
reproduce a 2D work in 3D form exists – held, infringement

Artistic craftsmanship

 Hensher v restawile upholstery (in rm 58)  copyright claim in a prototype for a suite of
furniture designed and produced by Hensher. H claimed that the defendant infringed
copyright by making and selling one of the prototypes.
 HoL – one of the judges – test is “whether substantial section of public genuinely admires
and values a thing for its appearance and gets satisfaction whether emotional or
intellectual from looking at it” – the intention of the author is neither necessary nor
conclusive
 Lord morris held that expert evidence matters to establish whether it is artistic
craftsmanship
 Lord kilbrandon – depended on whether the author consciously intended to produce a
work of art, work itself, and circumstances of creation; does not depend on the opinion of
critics / public / expert evidence
 Lord simon – it is craftsmanship rather than the work that must be artistic – expert
evidence relevant – intent of the creator and its result
 Ratio  ?
 Merlet v mothercare ltd (in rm)
 Burke v spicers dress designs – one persons sketches it, the other makes the dress – not
AC – there must be the artistic input from the ultimate creator also – this was
OVERRULED by bonz group v cooke – sweater designers and knitters – it IS AC cuz the
ultimate product is AC + 2 ppl will have join authorship
Characters

 Sholay media case  some verma made a movie called Aag with similar characters and
plot as sholay. It infringed the copyright of sholay, and trademarks of the characters
gabbar singh etc
 Are characters like Mickey Mouse or Sherlock Holmes entitled to copyright?
 Something like MM or the common man by RK Laxman have more than just the artistic
depiction – they have some characteristics / personality
 Nicholas v universal pictures in rm – held to be idea not expression – character
delineation test – whether the particular character is sufficiently and distinctively
delineated so that it warrants protection – the less developed it is, the less entitled it is to
copyright (distinct delineation test)
 Warner bro pics v Columbia broadcasting system (sam spade case) in rm – characters are
the vehicles of the story and the vehicles do not go to sale w the story – literary characters
are entitled to copyright protection if the character constitutes “the story being told”
rather than merely being a “chess man in the game of telling the story” (story being told
test)
 Nagaraj character case – without deciding whether the character CAN get copyright
protection, the court went into seeing whether the characters are substantially similar or
not
 Walt Disney case
 Leslie klinger v canon doyle estate
 Dc comics  D started manufacturing batmobiles – whether it infringed batman
copyright? The following are not independent tests, but must be looked at as a whole:
1) Does the character possess conceptual and physical attributes?
2) Is it sufficiently delineated? Identified across multiple instances?
3) Must contain “some unique elements of expression” and must be “especially
distinctive” – must be consistency is traits of character
 This is where stock characters come in – handsome doctor in love novels – cannot be
granted copyright protection
 The batmobile: (1) it did possess conceptual and physical attribute (like weapons in the
batmobile and cool features etc) (2) whenever batman was in need of help, the batmobile
was used – it was a cunning machine and could maneuver itself in dif sichs – hence
 sufficiently delineated (3) not just an idea, was an expression. Not a mere vehicle or a
normal car – special characteristics

Who is the author of a work?

 One who creates or originates

 S 2(d)
 The monkey who took a selfie – who has copyright? The court held that non human or
non legal persons cannot be granted copyright
 What about AI?
 See 2(d)(vi) for computer generated work – the person who causes the work to be created
– I am writing this document and hence I am the author and not MS Word
 S 17 – the author shall be the first owner of copyright
 Exceptions – 17(a) – only wrt publication will the proprietor be the owner. For any other
purpose, the author will be the first owner!
 17(b) – commissioned work
 17 (c) – general provision – contract of service or apprenticeship
 noah v shuba in RM – implied contract to the contrary
 Stevenson Jordan v macdonald – accountant in a firm delivered some public lectures –
who owned the copyright? Employee did cuz it wasn’t in the contract of employment
 Nora beloff v pressdam – Nora was a correspondent, wrote a memorandum on some
political shit – the newspaper published it – if she was employed by them, it was theirs. If
not, it was hers. She also said the editor assigned it to her
 She was employed by the newspaper (the observer) and copyright was theirs. The editor
had no authority to assign copyright
 Test  whether employed? Whether the work is an integral part of the business or is only
an accessory to it, and a work created by someone on their own account? (imp test)
 Missing link software v magee  goes beyond time, place, utilization of office resources
– the employee worked on the subject matter of his employment but worked at home and
developed a software. Since he was employed to do exactly that thing, it didn’t matter
whether he did it at home or not

Contract of service
 Control test – existence of direct control, degree of independence, place where services
are rendered
 Diljeet titus v Alfred adebare used the nora beloff test
 See Ccnv v reid pg 73 in the rm
 The above case also applied the agency test – working for and on behalf of the other, in
which case his work is attributed to the principal
 Proviso  if lyrics and a song and are incorporated in a movie, the author of the lyrics
still has a right in that even though the rights to the whole movie rest with the producer
 S 18 – lyricist or composer may not assign the right to receive royalty

Joint authorship

 Levy v rutley – essence – pre-concerted common design

 UK – work produced by collaboration in which the contribution of each is not distinct
from the other
 2(z) in India
 Robin ray v classic fm plc  technical assistance =/= co authorship. Mere scribe as per
instructions without creative contribution is not the author or co-author.
 Martin v Kogan [imp]  a film – whether only m was the author or whether k was a
joint author? K was a part of the 1st three drafts but not the final one.
 What was the nature and extent of k’s contribution to the writing of the screenplay?
 Held that she hadn’t sufficiently contributed to it
 Adding elements not themselves covered by copyright such as scenic effects is not
sufficient contribution (tate v Thomas)
 Providing helpful criticism and expert feedback on the work is not sufficient contribution
(wiseman v George weidenfeld)
 Reporting errors and suggesting corrections is not sufficient contribution (fylde
microsystems v key radio)
 Fixing in writing another’s work is not a sufficient contribution (robin ray)
 To be sufficient, the contribution must be directed towards the originality of the work,
understood as ‘skill and labour’ in the conception of the work and not just its fixation
(cala homes v Alfred..)
 Primary skills and secondary skills – ps necessary for authorship and ss only is not
enough
 For literary works  primary skills relate to the selection and arrangement of words in
the course of seeting them down; sec skills are inventing the plot and character
 For artistic works  ps = the use of a pencil, brush, computer, or other means to create an
image; ss = the composition and selection of colour
 2 elements for joint authorship
1) common design
2) contribution must not be distinct (ie distinct from each other’s cuz its joint authorship)
 form an integral part of the work
 contribution to the final expressions, that the law protects.
 Independently copyrightable protection
 India – najma heptulla v orient – active and close intellectual collaboration and
cooperation was taken into consideration

Right of reproduction

 MA Systems v Peak Computers – 80 – a program was on RAM (transient) and not ROM
(permanent) – they argued that it wasn’t actually copied / reproduced cuz it wasn’t a
permanent copy.
 The court held that if the copy was capable of being perceived and reproduced, then it is
indeed a copy under law. Therefore, RAM copies are also copies.
 Performance in public – 2(ff)
 S 14
 Prior to 2012, there was no exhaustion of rights cuz you could sell the same copy to
different buyers. This was amended. Now, once you sell it, the rights are exhausted. First
sale doctrine

Infringement

 S 51
 What are the different rights conferred on a copyright owner? If any of them are violated,
there is infringement
 When is there infringement? Four essential elements:
1) Is the work itself copyrightable?
2) Did the alleged infringer have access to the original work?
3) Is the alleged infringement substantially similar to the original?
 4) Was the infringement a fair use? [defenses]
 In re the second question above, the doctrine of independent creation says that if two ppl
create something separately, then both of them have copyright unlike in patents where
only one person can hold it regardless of whether 2 different ppl came up w the same
thing independently
 Substantial similarity
 Difficult q
 Slight or trivial similarities are not substantial
 The test is a little vague says justice learned hand
 Comprehensive non-literal similarity – not just as to a particular line or paragraph or
other minor segment but where the fundamental essence or structure of one work is
duplicated in another
 Abstract ideas can be borrowed, ofc [the line b/w abstract ideas and concrete
expressions again]
 Factors to determine infringement – copying (whether subconscious or not) or substantial
taking (extent of defendant’s alteration, etc.)
 Fred fisher v Dillingham  The proposition laid down here was the subconscious
copying doctrine, which is still good law. 2 musical compositions – did the second piece
infringe the copyright of the first? Held, yes. Sub sim and access tests used. The first
piece was popular and the defendant, being in the music industry was bound to have
heard it [access]. It doesn’t matter whether you copied it deliberately or subconsciously
 Access  if I publish a book and it is in the public domain, that can be enough to prove
access because I cannot prove that the defendant has purchased and read my book. If the
defendant lives in Malta, where this book was not published or available as an e-book,
she can claim that there was indeed no access. It is difficult to prove actual knowledge, so
access is used as a test instead
 Different tests have evolved over time to test substantial similiarity:
1) Abstraction test – do a series of generalizations and see whether the idea has been
copied or the expression (only the latter is infringement). For instance, 2 states can be
generalized to be about provincialism, which is an idea, and therefore not
infringement. Nichols case in rm (case mentioned in passing)
2) Pattern test – prof zachariah chafee – the line lies somewhere between the author’s
idea and the precise form in which he wrote it down – the protection covers the
patterns ie the sequence of events and the interplay of characters
  If Romeo & Juliet wasn’t in the public domain, no one could copy the play by
paraphrasing the dialogues. That would be infringement. However, you can
take the idea of star crossed lovers from two hostile families.
 Comparison w west side story  If you apply the pattern test here, there is
infringement
3) Total look and feel test – roth greeting cards in RM, sulamanagalam jayalakshmi and
arnstein v porter cases applied the “ear of lay listeners” test; see also raja pocket
books case (cases mentioned in passing)
 Extrinsic test – analytic dissection and expert testimony
 Intrinsic test – response of an ordinary reasonable person [they apply this test
wherever possible, but its hard to apply it for computer programs. Besides
computer programs, this test is still valid for other situations]
4) Structure, sequence, and organization test
 Non literal copying – what amount of protection is to be granted to non literal elements of
a computer program – they do have protection cuz they are expressions.
 But what test do you use for infringement?
 Whelan associates v jaslow dental lab – Whelan developed computer program for dental
lab record keeping for jaslow. The court stated – the purpose or function of a utilitarian
work would be the work’s idea, and everything that is not necessary to that purpose or
function would be the expression. Structure, sequence, and organization test. The
structures in both the programs were similar and hence there was copyright infringement.
The case was criticized for allowing too broad a protection cuz comp programs are built
on previous programs, like building blocks. Ordinary observer test discarded in this case!
 Computer associates v altai  alleged infringement of a comp program ‘adapter’ by the
company altai, with their ‘oscar 3.5’ program. The same guy designed both. Whether
Oscar 3.5 is a copy of adapter? Both are inter-operable software
 Developed the Lotus 3 stage test (aka Golden nuggest test, altai test, AFC test):
1) Abstraction – separate the idea from the expression. Examine the program in terms of
structure rather than the specific sequence of code and try to identify its modules,
routines, and sub-routines [find the expression]
2) Filtration – filter out expressions which do not merit copyright protection like scenes
a faire stuff, or for efficiency reasons, or those that are part of the public domain [find
the copyrightable expression]
  This copyrightable expression is called the ‘golden nugget’. It is the
protectable expression
3) Comparison – whether the defendant has copied this golden nugget? What is the
relative importance of the copied portion to the infringing work?
 Applying these tests, Oscar 3.5 did not infringe the copyright of Adapter
 This test is not just for computer programs, but for everything (non literal copying)

Secondary liability

 Unless there is primary infringement, the q of secondary liability does not arise, obv
 Vicarious liability (right and ability to control, deriving financial benefit) and
contributory liability (knowledge of infringing activities, material contribution to primary
infringement)
 Sony case in RM page 82  the VCR is capable of substantial non-infringing use (imp
phrase and test – this is the sony doctrine). Also held that there was no vicarious liability
because there was no constructive knowledge of infringing activity. Here, there was no
primary infringement as per the court (because the users recording it was fair use) but it
still gave its opinion on sec liability. Compare with a type writer – the person who made
the type writer cannot be liable for those who infringe copyright of literary works. In the
Sony case, there was no material contribution.
 Unclear whether the sony doctrine is an exception to secondary liability or whether it is
used to say there is no material contribution at all.
 Napster – technological advancement from the sony case. Vicarious liability there – it did
derive a financial benefit, it did have a right and ability to control (it could block accounts
etc) but didn’t do so, so it was also vicariously liable (in addition to contributory
liability).
 The court distinguished from sony by saying that P2P software and the website promoted
copyright infringement (through actual knowledge and failing to take action). It was not
substantial non-infringing use. It was infringement.
 51(1)(a)(ii)  “any place” – does it include cyberspace? Yes, says Delhi HC
 ^ second part of this provision, brings in the element of knowledge. Secondary liability
exists only when there is knowledge of primary infringement

Moral rights (author’s special rights)

 art 6bis of the berne convention for the protection of literary and artistic works –
independent of the author’s economic rights, and even after the transfer of said rights, the
author can claim authorship and object to distortions etc (see the article!) (right of
paternity and right of integrity  ?)
 s 57 in India  only two rights recognized here
 protection of authors – contractual stipulation, confidentiality laws, defamation, passing
off for trademark
 the different moral rights in different jurisdictions
1) right to authorship / to be identified as an author / paternity
2) right of integrity / to object to derogatory treatment
3) right to object to false attribution
4) privacy rt
5) rt to publish
6) right to correct
7) rt to withdraw a work from circulation
 UK provides for waivers of moral rights – this is not possible in India
 In UK, rt to object to derogatory treatment – 1) demonstrate that work has been subject to
addition deletion alteration (2) this amounts to distortion or mutilation or is otherwise
prejudicial to the honour or dignity of the author
 UK 4 rights recognized  1,2,3,4
 Moral rights in the US are very very limited and may be waived in writing
 France  1, perpetual and inalienable (so no waiver here either), 7
 Manu Bhandari v kala vikas pictures – in RM – (1) contract of assignment is read subject
to s 57, terms of the contract cannot negate the special rights and remedies under 57 (2)
the words “other modifications” in 57 has to be read ejusdem generis with ‘mutilation’
and ‘distortion’
 Amar Nath Sehgal v UoI – in RM – destroyed it, so mutilated it
 ?

Misc

 read the sections mentioned below

 assignment - s 18
 the proviso on royalties – there is some confusion regarding this because the “right to
receive royalties” isn’t mentioned anywhere in the act
 s 19
 s 20 (similar to that Charles dickens manuscript case amendment)
 relinquishment of copyright – 21 (opt out system)
 31B, 31C, 31D
 Something about WCT and WPPT?
 Digital Millennium Copyright Act in USA – 1201-1204 (read these sections)
 ^ notes on this missing (2nd hour 22nd april)
 s 65A, 65B


Patents
 Invention: processes and products are protected
 Not protected  business method, laws of nature, physical phenomena, abstract ideas,
mere discoveries, living animals, scientific principles, computer program per se (but you
can patent the process of the computer program)
 The patent office must grant the patent after clear and complete disclosure of the
invention. Monopoly over the invention will be from the date of disclosure. Before the
date of disclosure, if any of the elements of the patent have been published or known (ie
disclosed generally), there is no novelty anymore.
 Objective behind patents is incentivizing innovation – this reveals the neoliberal
foundations of IPR which ignore other forms of incentivizing innovation such as state
sponsored science or grants
 In the UK, back in the day, when they abolished monopolies, they had an exception for
patents.
 It should be a patent eligible subject matter – Any new and useful process, machine,
manufacture or composition of matter is patent eligible in the US. The judicially created
exception to this is – law of nature, physical phenomena, and abstract idea. In India, it is a
statutory exception.
 Someone tried to patent rhizobium which fixed nitrogen in root nodules. But it was a
discovery and not an invention. No patent.
 Any new form of a known substance is not patentable.
 Novartis’ claim was rejected under S 3(b)
 Can the generic manufacturer enter the market without conducting its own clinical trials,
after the patentee’s patent expires? No because the generic manufacturers need to conduct
BA, BE trials which take 4 years. So the patent is extended by 4 years in reality if not in
law. To counter this, in the US and India ..?
 In built sunset clause in patents, especially pharmaceutical patents, prevent the infinite
extension of the patent
 Bolar exception – if the patented product is used only for … the patent office, such use
will not amount to infringement
 Literal infringement and doctrine of equivalence are the two ways in which patents can be
infringed.
 For example, if a chair with a base and four legs is patented, then a stool with three legs
does not infringe the patent by literal infringement
 For example, if an ultra filtration unit is patented with elements A, B, and a particular ph
level (say, 6). If someone else makes an ultra filtration unit with elements A, B, but the ph
level is 5, does it infringe the patent? Yes, because of the doctrine of equivalence.
 This doctrine is whether the two units are substantially performing the same function in
substantially the same way giving way to the same result? If the answer is yes, there is
infringement even if it is not literal
 Different from the test in copyright of substantial similarity
 Prosecution history estoppel  limitation on the doctrine of equivalents. If there were
parts in your patent application that you cut down through the course of applying for the
patent, you cannot later claim that it is part of your patent
 US  clothes are soft sculptures and excluded from copyright

 Art. 27 of the TRIPS lays down some requirements (new, inventive step, capable of
industrial app). it also has exceptions where member states can exclude certain things
from patent protection – know what they are (eg. Medical methods, those inventions the
commercial exploitation of which is contrary to public order or morality). Shall grant
protection for plant varieties (either through patents or through other laws)
 In order to get a patent:
  Patent eligible subject matter
 Novelty
 utility (capable of good application)
 non obviousness / inventive step
 written description

1) Patent eligible subject matter

 biotechnology, software, business matters  the cases in the RM are on these topics
Biotech cases:
The TA’s:
 US: diamond v chakravarti – in RM- cuz it was an engineered micro organism, SCOTUS
said it should be patentable. Usually, protection was for the process that created the
organism and not the organism itself. Hence, an interesting case. Some GE engineer
created a new organism with four plasmids (which wasn’t naturally present in nature)
which made it easier to heat oil. He tried to patent the organism itself – pseudomonas
with 4 plasmids. Markedly distinct from what is found in nature (this is the test) . The
patent office refused the patent for two reasons – first, it is a product of nature and
second, it is a living organism. The Appellate Board said it was NOT a product of nature
but since it was a living organism, patent still not granted. On second appeal, they granted
the patent by holding that it was more akin to chemical substances than to “roses and
raspberries”, ie living organisms. Finally, the SC said that the section didn’t distinguish
bw living and non living organisms. The section said “any”. The definitions of
manufacture and composition of matter were satisfied.
 Post this, lots of different organisms were granted patents. US Patents office said – to the
extent that the claimed subject mater is directed to a non human non-naturally occurring
manufacture or composition of matter – a product of human ingenuity, such claims will
not be rejected – this essentially meant that even living organisms could be patented as
long as they were created by humans
 After this, the oncomouse case came up
 The Oncomouse by Harvard (mouse w cancer genes) was granted a patent in the US.
Europe, however, rejected the patent and said it was an animal (as opposed to an animal
variety, which is a distinction they make). They also invoked the morality clause.
 S 3(j) in India says plants, animals, and any part thereof are not patentable in India.
Exception for microorganisms, which can be patented. Exception as per TRIPS.
 US – started granting patents for genes – for isolation and purification of genes. 100s of
1000s of patents granted for various DNA sequences
 Substantial utility, specific utility (if you say you’re going to use it for X purpose, you
must necessarily use it for that purpose), credible utility (peers should be able to tell that
this particular use is possible) – all three together are called well established utility – this
test is for genetic material
 Myriad patents case – patent granted for procedure but not for the gene sequence. The C
DNA (complementary DNA) was granted a patent. 2 parts to naturally occurring DNA –
intron and exon. They removed the intron and created something which doesn’t occur
naturally and is a product of their effort. This is why the C DNA was granted protection
in the district court. A new chemical structure was created by removing the intron. But on
appeal, the judge viewed it not as a chemical structure but as an information carrier.
Experts testified that the information carrying function does not change by removing the
intron. On second appeal, SCOTUS said that DNA is both a chemical structure as well as
an information vessel. Similar logic as in diamond v chakravarthi will apply here – i.e.
what has been created is markedly distinct from what occurs naturally.
 India: Dimminaco case – bersetes vaccine used for poultry. The vaccine is a living virus.
Definition of invention – a live virus would not qualify is what the patent office in India
said. The HC held that it was manufactured and hence, could be granted protection.
emphasized the vendability test (passed on from one person to another by sale and
purchase). No statutory basis for this vendability test.
 ‘manufacture’ in the Act, includes process of creating a vendible commodity
 no statutory bar to end product being a living organism
 Read s 3 fully
 Some sub section of 3 – genetically modified organisms are patentable but not naturally
occurring ones

Software cases:
 US: Gottschalk v Benson in RM – indicates initial reluctance to grant patents to software
 Parker v Flook – Refused to grant patent protection to an alarm for some dangerous
science research thing, saying it was too abstract an idea. This was criticized because
novelty was not a requirement u/s 101 under which the case was decided. Novelty was a
requirement u/s 102.
 Diamond v deer – method for curing raw rubber – RSN equation (amount of heat needed
to cure the rubber) – mathematical formula not granted protection? whether it brings
about a transformation – the process, not the formula is granted protection –
transformative test
 In re allappat – over the screen of a digital oscilloscope, jagged lines appeared. He created
a method which reduced the jagged lines. Upheld the patent cuz – (1) new machine (2)
the formula changed the general purpose computer into a special purpose computer
(CUT)
 Alice corp v CLS Bank (landmark case, 2014)
 Escrow system developed to reduce risk in financial transactions. Alice corp created
this system and CLS bank used it.
 2 step test: (1) whether the patent is directed towards ineligible subject matter
(namely, natural phenomenon, law of nature, abstract idea); (2) whether the claim
includes something more than a mere abstract idea (inventive concept!).
 Held – mere instruction does not qualify for p; mere computer program cannot
transform an ineligible subject matter into an eligible one.
 Some criticized this as opening up a Pandora’s box: The court has not defined what an
abstract idea is or specified how you can satisfy test (2). Invalidated a lot of US
patents.
 The US Patent office replaced prong (2) of test – now, inventive concept has been
replaced with “practical effect”. This is possibly similar to the indian test in intex
detailed below. Latest amendment
 Art 27 (patents) & Art 10 of TRIPS (copyright) - ?
 India: s 3(k) – read
 Algorithms and business methods clearly excluded
 What is meant by a computer program per se?
 Ercison v intex
 held technical contribution and technical effect can be granted patents
 Viacom judgment in the EU relied on in intex
 Technical effect means:
 There must be more than a mere physical interaction b/w the computer
hardware and the software
 Increased efficiency quantitatively and qualitatively
  Must result in a better performance of the computer than before this
software
 CRIA guidelines in 2016, 2017
 2016 guidelines proposed that there must be contribution and novel hardware
 contribution to the efficiency of the software, which isn’t an abstract idea. Must
not be on excluded subject matter like business methods or algorithms in 3(k)
 novel hardware requirement – is the contribution above being used wrt novel
hardware?
 The novel hardware requirement is problematic cuz if you have novel hardware,
then that hardware will get protection. Software is mostly developed for existing
hardware.
 2017 – this test done away with for this^ reason
 substance over form test – focus should be on the underlying substance of the
invention and not on the particular form
 nature of claims should be technical
 review by sir from this point onwards : mental process, point of novelty, transformation
(goodschart, fluke, diamond, then came bilsky, and then alice)
 you have to check whether each claim is patent eligible or not – claim construction is very
important – the markman rule: claims are interpreted literally. If there is an ambiguity,
read the claim in the context of the whole claim. If that doesn’t work, read other claims.
Then, you go to specification where a detailed description is provided. If that doesn’t
work either, you look at prosecution history. All of the preceding is intrinsic evidence. It
is only if intrinsic evidence fails that the court goes to extrinsic evidence like dictionaries,
sciences etc. Experts are summoned at the final stage. “the patent applicant is considered
to be a lexicographer”
 pre-emption – whether by allowing a particular claim, you are … ? The claim should be
to the step in the process. Structure your claim in such a way that you don’t use certain
terminology – this is the doctrine of magic words
 but the court does not look at the words. Looks at their effect – does the process result in
useful, concrete, tangible results? If yes, then protection granted. Otherwise, it is an
abstract idea

Business methods
 US: MoT test – machine or transformation? Which one is it? (SCOTUS)
 TA: State street bank case in RM – turning point where business methods were granted
patent protection. but this is in USA. In India, it is categorically excluded from protection.
 Bilski v kapos in RM page 119 – abstract idea hence no patent. SCOTUS said business
methods are not unpatentable per se and the MoT test is just one of many (but did not
mention any further test). Useful, concrete, tangible results test was overruled
 UK: general purpose management systems case – held, technical contribution existed.
Distinction b/w technical problem solved, and object of the invention. The former was
important to see whether technical contribution existed
 Queueing systems case – a method of doing business as such is not patentable. Here, it
solved a technical problem and hence was patentable
 Controlling pensions benefit system case – it was only an economic method of doing
something. There is no technical step.
 Position in UK: if it is only a business method and does not lead to solving a technical
problem, then it is not patentable.
 India: yahoo chat box – online and offline indications – patent office distinguished from
UK and US positions. We don’t have an MoT test. Clear statutory prohibition.
 Sir: when you examine patent eligibility – start with the defn. of invention, then look at
the exceptions u/s 3, and then cases if any
 S 3(d)
 Developed countries want India to change 3(d) – neo-imperialism
 S 5 – food, medicine, and x were not to be patented. India granted patents for the
process, however. But art 27 TRIPS mandated that member countries shall grant
patent protection for product and process even for pharmaceutical substances. Most
countries did not do this. Then india got some time (10 years) to amend the law to
shift from process patent to product patent. In effect, we could have retained s 5 only
for 10 years. We knew that generic manufacturers here were able to reverse engineer
medicines because there was no product patent. This ensured accessibility. But TRIPS
wanted to fuck this up (surprise, surprise) through 27. This is how s 3(d) came about –
read it
 New forms of known substances are not patentable unless there is increased or
enhanced efficacy – effect of s 3(d) [enhanced efficacy should be towards therapeutic
effect and not for other things like shelf life]
 This is the manner in which evergreening of patents was prevented.
 Accommodate incremental innovations within the patent system – objective of s 3(d)
  Big Pharma is slimy af and tries to make tiny changes to the formulas of meds so as to
hold on to patents forever – this is evergreening
 The Novartis case (161)
 upheld the constitutional validity of s 3(d)
 imatinib – patent held by Zimmerman and leased to Novartis, who then tried to
patent a derivative of it, ie beta crystalline form of imatinib
 it was a new form of a known substance
 Novartis couldn’t prove enhanced efficacy of the drug, so no patent
 Held, enhanced efficacy should be towards therapeutic effect
 After this case and the bayer case, international pressure on India has been
increasing. But, we don’t grant many compulsory licenses

2) Novelty

 A claim is a legal boundary to a patent

 To check for novelty, look at all the elements of a claim – a,b,c,d – an objective test
 Elements are expressly described (sometimes they may not be expressly described but
described under principles of inherency where in a single prior art reference or in a single
prior art device [together called ‘prior art’])
 Even if the elements are found in different articles (for eg. a is found in 1 article, b is
found in another and so on), novelty exists if there is no single prior art reference or
single prior art device (ie abcd aren’t found in a single reference)
 State of the art is found in either publications or devices – docs, patents granted, news
articles, device made available to the public, scientific journals
 Always compare the claim made to prior art
 Eg – a fan has wings, a rod, motor. But together, they form a fan in a single device –
novel
 Continental can case on page 127 – doctrine of inherency – two tests – 1) undisclosed
element must be a necessary technical part of the prior art (2) ordinary person skilled in
the art should be able to recognize the undisclosed element of the prior art [inherent
anticipation]
 Does the prior art anticipate the new claim?
 For example, does a solid bottom inherently anticipate a hollow bottom in water bottles?
So, the hollow bottom is the undisclosed element.
 The continental can test is criticized because a person skilled in the art should be used for
non-obviousness and not novelty. Novelty should be decided by objective factors
 General tire case on page 128 – a direction towards a particular product
 Asahi kasei case on page 129 – this case is important for enabling disclosure – disclosure
which would enable a person skilled in the art to reach the same conclusion or product –
the doctrine of inevitable consequence – if you follow the steps, you will most certainly
reach that conclusion – if you follow a b c d steps, you will reach X, the product being
claimed. If you need to figure out c1, c2, c3 by yourself, in order to reach step d, then it is
not enabling disclosure. A mere disclosure of the final formula is not enabling disclosure.
‘Planting the flag’ concretized the enabling disclosure doctrine
 In re leo case – public disclosure – s 2(l) in India
 It isn’t public disclosure if confidentiality obligations exist
 Whether prior use is anticipatory or not, prior art or not? Yes, it is prior art
 What about secret use? Merrel dow case page 130 – differentiated b/w secret use and use
without knowledge (take highlights for this case from MV)
 S 25(5) in India – secret use is not prior art in India (because there is no disclosure)

3) Utility

 (TA presentation starts here) US – ‘useful’

 India, EU – ‘capable of industrial application’
 US: specific, credible, substantial
 Brenner case in RM page 132
 In re brana – specific and credible utility must exist. In vivo studies (on animals)
insufficient to check whether tumours can be treated in humans – patent office. On
appeal, held - the patent office should not get into the clinical trials. Need not necessarily
test on humans before claiming that it has utility
 In re fisher – focused on the experimental usage of nucleic acid – said it can be used for
other experiments. Whether this usage is sufficient for a patent? No, does not meet the
requirement for specific utility.
 EU: Capability of exploitation in an industry
 Eli lilly case in RM – incomplete, look at SC decision too – exact industrial applicability
not established said HC. SC held:
 practical application, profitable use, commercial benefit
  concrete benefit must be derived from the description itself
 mere speculative use insufficient to grant patent
 skilled person with general knowledge must be able to reproduce or exploit the design
without further research upon reading the patent application
 plausible, reasonable claim or an educated guess for art. 57; do not have to prove it
with experimental data
 reversed the HC decision and said it was patentable
 this standard is slightly different from the US standard of specific utility because here,
all you have to do is show that someone making an educated guess would guess that a
particular use is possible, without any experiments being conducted
 India: s 2(1)(a)(c) – defn. of ‘capable of industrial application’
 Provisional patent application / provisional specification
 this is to gain priority when the invention is at the conceptual stage. if the use etc. is
not fully established, but the patentee for some reason wants to file (for priority or for
publication or other reasons), then you can file under this. Must disclose the nature of
the invention.
 Do not have to mention the claims in this app . The complete application must, of
course, have claims.
 Within one year’s time, must file a complete patent application (s 9) – if not filed, app
considered to be abandoned.
 If you file two provisional apps, they are called cognate apps. When you file a
complete app, you can file a single one in respect of both your provisional apps
 Filing procedure
 after 18 months of your application, the patent app is published in a gazette journal.
Till 18 months pass, it is confidential. Read the sections once.
 Expedited publication – within 1 month of the application, they publish it.
 Pre grant objections only after publication.
 First examination report (fer) with either acceptance or rejection. Then, the grant stage
if the patent office accepts your app. If not, you have one year to convince them. If
rejected, can appeal to IPAB  HC  SC.
 Different claims have different dates of priority depending on date of disclosure. Eg. – if
ABC elements were disclosed in a provisional application and ABCXYZ elements are
present in your complete application. In that case, only ABC elements have priority and
XYZ elements do not. Read s 11.
 Complete application must disclose the best manner of performing the invention – the
objective is to allow others to know the exact boundaries of the invention within which
they will be trespassers.
 Independent or dependent claims – know the difference
 Claims
 Disclosure and claim
 must relate to a single invention; must define all novel features which are
interconnected; cannot go beyond your disclosure for your invention. Need to make a
claim on what you have disclosed.
 If you make a wide disclosure and a narrow claim, then that narrow invention is
patented but not everything in the disclosure is patent protected – only that part
related to the narrow claim you’ve made
 If you make a narrow disclosure and a wide claim, then obviously they don’t grant a
patent cuz your claim is based on your disclosure
 They don’t entertain omnibus claims
 Transitional words or phrases b/w the preamble and the body
 Comprising / comprise of – broad and open claim
 Consist of – narrow af
 Identification of the invention from the description is the crux of the claim
 If you’ve already filed an app in another country, you can also file in India under the Paris
Convention, within 12 months of first filing – this is called a conventional application – in
India, the patentee must inform the Indian patent office of her apps in other jurisdictions
and whether they were accepted or rejected
 PCT: The patent cooperation treaty –receiving authorities exist under the WIPO. After
you file (priority date), you get 31 months to file in all jurisdictions. It doesn’t grant
patents it merely examines them and gives you an international search report. Such a
report is not binding on the member countries – merely persuasive. After getting such a
report, the regular national process is followed. The advantage gained by using PCT is
that the patentee gets priority in all countries and can then decide which jurisdiction is
most commercially viable for the product and can then get a patent on that product.
 S 48 – rights of the patentee
 Ss 106, 107, 108
 4) Non obviousness

 PHOSITA – person having ordinary skill in the art (mnemonic) – subjective test
 The phosita should find it non-obvious
 The reference is prior art
 Hodgkins v greenwood – level of ingenuity must be that of an inventor and must be more
than just a mechanic’s additions [doorknob case]
 US – s 103 – read it – “invention as a whole” should be non obvious to a person skilled in
the art – first inventor who files will get the patent
 Graham case on 133 – graham factors
 check the difference b/w prior art and the claim presented… – the 4 tests (primary)
 Secondary considerations like commercial success, long felt but unsolved needs.
These are objective considerations – not all have equal weight. But commercial
success depends on marketing
 US v Adams on 134
 KSR case
 Federal court: TSM test – teaching, suggestion motivation – if one of these factors is
met, then it is obvious. Applied rigidly
 Does the prior art dictate any nature of problem wrt to the claimed invention and
is the nature of problem such that it motivates the inventor to make the claimed
invention?
 Does the prior art teach you what the new invention is?
 Does it suggest what the new invention is?
 Supreme Court: Combination of familiar elements – obvious if it does no more than
yield predictable results!
 Should ask whether improvement is more than the predictable use of prior art element
 To determine apparent reason for combination, look at
 Interrelated teachings of multiple patents
 The demand of the market
 Background knowledge of PHOSITA – to see whether she knows that this
combination will give rise to this result (of the new invention) – if she can predict
it, then it is obvious
 Imp – The best test is the Graham test, applicable till date. TSM test is a helpful
insight but it should not be applied rigidly and it is not an independent formula, held
  Comments on the federal court decision:
 The court should look only at the problem the patentee was trying to solve
 Don’t assume that person of ord skill attempting to solve the problem will be led
only to those prior art elements designed to solve the problem
 Cannot be proved obvious merely by showing that the combination of elements
was obvious to try – ‘obvious to try’ is different from ‘obvious’
 Proper question – whether a pedal designer of ordinary skill in the art, facing the wdie
range of needs created by developments in the field would have seen an obvious
benefit to upgrading with a sensor?
 Held to be obvious
 If you applied TSM to the adams case – people had previously applied magnesium with
cuprous chloride and it had exploded (as replacements for the anode and cathode) – the
PHOSITA now knows that mg and cu cl cannot be brought together – the prior art
reference is therefore leading away from the invention – teaching away from the
invention – hence it was non obvious to phosita
 Hindsight bias or the ‘know it all’ phenomenon – sometimes PHOSITAs think they could
have reached that conclusion themselves. To counter this, the courts have laid down some
rules – windsurfing case in RM – normally skilled but unimaginative addresse
(windsurfing is not for hindsight bias only. It is also for ‘inventive step’ or non-
obviousness in the UK)
 Missed some notes here
 India: – the windsurfing test has been adopted in guidelines here – the third element in the
graham test is similar to the second step here
 Step 1 – identifying the inventive concept in the patent
 Step 2 – skilled person, common general knowledge – thorough knowledge of the
state of the art related to that field. The knowledge must be of the date of priority of
the patent application in question and not later than that. That is, the person must not
consider any document published subsequent to the date of priority or claim. This also
seeks to avoid hindsight bias
 Step 3 – identifying the difference if any b/w the matter cited and the alleged
invention
 Step 4 – Deciding whether those differences viewed without any knowledge of the
alleged invention constituted steps which would have been obvious to the skilled man
 or whether they require any degree of invention (or whether there was reasonable
expectation of success leading from the prior art)
Infringement

 claim interpretation becomes relevant

 each claim consists of various elements; remember: each element is not patented. The
claim as a whole is patented
 compare the alleged infringer’s product with the claim
 literal infringement – literally literal
 markman case on page 140 – literal infringement case. Look at: the claim; the
specifications; prosecution history (the communication b/w parties i.e. objections to the
patent, responses to those objections etc.); prior art; extrinsic evidence (expert testimony)
 pith and marrow doctrine in the UK
 van der lely v bamfords
 a hay rake is a machine used for collecting hay
 whether the same result was secured by means that are substantially identical to the
patented product
 no infringement
 imp: essential integers of the claim must have been copied for there to be
infringement
 catnic components case on page 141 – departure from the vab der lely case
 improver corp
 US: doctrine of equivalents
 graver tank on page 145 – a claim and public notice is to indicate the exact boundary of
the monopoly. Doesn’t the doctrine of equivalents defy this purpose? Envisage the claim
as the core or the umbra and the equivalent as the periphery or the penumbra. Strictly
speaking, the law provides protection to the core or the umbra. The doctrine of
equivalents extends the right beyond the core to the periphery or the penumbra. How do
we reconcile these two? The doctrine can be seen as clearly defining the boundaries of the
right rather than extending the right already present. This is to ensure you give protection
to the rights of the patentee. The scope of the patent is not arbitrarily extended, but a set
standard exists (triple identity, insubstantial change etc.) DoE is applied only when there
is ambiguity or when the infringer is likely to get away by using interchangeable
elements. It is an apparent tension that can be reconciled this way.
 Warner jenkinson 146
 intent behind a violation is irrelevant for DoE, held.
 Prosecution history estoppel (defined above) – patentee cannot use doe to recapture
the subject matter that he gave up during prosecution to obtain the claim from the
PTO. The basic principle of estoppel is that you cannot blow hot and cold at the same
time. S 115, IEA.
 You have narrowed the scope of your claim to avoid prior art, now you are trying to
recapture the claim using doe, not pos, held. Equivalents can apply to all other
elements actually present in your claim
 However, narrowing amendments create an estoppel only when they are made to
address a concern “that arguably would have rendered the claimed subject matter
unpatentable”  hence, PHE is NOT an absolute bar for all changes
 PHE is a presumptive bar to DoE
 Reiterates that DoE is not inconsistent with the Patent Act (because of the public
notice function)
 Festo corp 147
 a piston driven carriage system – the patented product had a pair of sealing rings, with
a sleeve made of magnetizable material – the alleged infringing product had a a single
sealing ring with a sleeve that was not magentizable
 federal circuit
 the approach is too rigid, but the SC fixed it. This is not good law.
 voluntariness of PH is irrelevant
 complete bar: if the amendment substantially relates to patentability, such claim is
not entitled to any equivalents. Similarly, a complete bar exists when there is no
explanation
 Supreme Court – not all amendments attract PHE; cosmetic changes do not attract
PHE
 Back to the warner Jenkins presumptive bar
 Equivalents disclosed but not claimed are not protected by DoE – what has been
disclosed but not claimed has been dedicated to the public (doctrine of dedication)
 India
 Bishwanath Prasad rajesham case 164
 whether there was novelty? Inventive step?
 Infringement only if all elements are copied? (ask palash for the ratio)
 Ravi kamal bali 149

Limits on the rights of the patent holder

 Read s 64 generally
 TRIPS – art 31 – read! – ‘other use without authorization of the right holder’ – commonly
known as compulsory licensing – limits on the monopoly of the patent
 Only 1 compulsory license granted in India
 Art 31 – minimum conditions to be complied with; each country can add their own
conditions – know the conditions
 Read the relevant sections in the act – s 84 is imp
 Natco case on compulsory licensing to cipla (on 179)
 Neoliberal economy vs. public interest in CLs
 De minimis use is an exception to infringement: 1) infringement is de minimis (2) no
actual damage (3) no intent to infringe
 Bolar exceptions – important:
 S 47 of the Indian patent act – see sub-section (3) – experimental use
 no statutory provision in the US, but was judicially created in Cutter v Whitmore; the use
must be non-commercial for exception to apply; experiment with a patented article for
philosophical taste, curiosity, mere amusement is not an infringement
 roche v bolar 154 – the policy argument bolar made was about ‘backend distortion’ i.e.
the BABE trials require 4-5 more years and therefore effectively extend the
 hatch Waxman act passed after this – introduced 271(e)(1) in the patent act – not
infringement if patented product used for uses reasonably related to the development and
submission of information under a federal law that regulates the manufacture use sale of
drugs or veterinary bio products – this is popularly called the bolar exception
 eli lilly, merck 155
 India: s 107A(a) – India’s Bolar exception – read
 Compare to 271(e)(1) –
 “any law” vs “federal law”
 “in a country other than India” vs “federal law” i.e. only USA law
 “any product” vs “drugs and vet bio”
 bayer v natco – 2 judgments – 2014, 2019 (know the latter as well)
 https://www.livelaw.in/news-updates/export-of-patented-products-bolar-exemption-sec-
107aa-patents-act-delhi-hc-144570
 ^ additionally, issue of compulsory license here – ask ajax
 regional, national, international exhaustion
 doctrine of exhaustion: once the patentee sells the product, her exclusive rights end there
and the buyer may use the product for anything she wishes, like resale or wtv.
 First sale results in exhaustion
 national e: product should be sold within the country for the first time. Resale is then fine.
If it’s an import, then it has to be with the permission of the patent holder
 For parallel imports, the law of the importing country is relevant and not the law of the
exporting country
 US: moved from national exhaustion to international exhaustion
 107A(b) covers this – read
 Lexmark case SCOTUS 2017
 Toner cartridges to be returned to the seller for a 20% discount on refills
 Defendant tried to refill cartridges themselves
 154A, 271A patent act – patent holder entitled to exclude others from making, using,
etc the patented product in USA
 the condition was that the cartridges
 whether a patentee that sells an item under express restrictions can enforce those
restrictions through an infringement suit?
 Enforceable under contract law perhaps
 Doctrine of exhaustion under patent law means t&c cannot be imposed on
buyers, after sale
 whether the patentee exhausts patent rights by means of sale outside USA, where US
patent laws do not apply?
 Yes
 Cannot distinguish b/w copyright law and patent law wrt doctrine of
exhaustion
 Relied on Kirsten v john wiley

Standards

 ISO, BSI etc. set technical standards for various products

 The standard setting organization chooses some technology which is patented, to be the
standard. Because of this, the other technologies which perform the same function
disappear and become obsolete. The monopoly due to the patent does not persist after it is
chosen as a standard ?.
 Standard essential patent (SEP) – the patent that is essential for complying with the
standard.
 Someone whose tech is a std can engage in anti-competitive practices by:
 licensing them at very high rates
 Can refuse to deal on FRAND terms- fair, reasonable, and non-discriminatory
 Can base royalty rates on the size of the entire product even though the patent might
be on a small part of the product
 Disclosure:
 If you’re a part of a std setting organization (SSO) and you invent something that you
think will be a standard, you are required to disclose it. If you’re not a part of an SSO
then there’s no obligation
 Rambus v FTC (by TA, might not be very important)
 Std for DRAM (dynamic RAM)
 Rambus didn’t disclose that it has a patent app pending
 It was a member of a std setting organization, which was discussing a particular std
 Rambus kept amending their patent based on the discussions, all without disclosure
 FTC sued on grounds of abuse of dominant position
 Held, exclusionary conduct, monopoly and hence, abuse of dom p
 On appeal, held in favour of Rambus for lack of evidence
 Qualcomm v Broadcom
 std for mobile phone chips
 qualcomm had std but did not disclose it
 Broadcom then got the std
 Held, without disclosure, you waive the right to enforce your patent
 Licensing:
 Obliged to license it when you have an SEP
 No royalty rates set by SSOs
 FRAND terms to reach royalty rates –
 Fair = not anti competitive
 Reasonable = reasonable rates
  Non discriminatory = wrt rates and terms of licensing
 FRAND terms have been criticized because enforcement is difficult cuz of non-
disclosure clauses
 Ericsson v intex 173
 Ericsson and micromax 172  IPR grants a monopoly while competition law tries to
regulate that monopoly
 to test abuse of dom p
 patent must be indispensable in a particular industry
 whether exclusion is enough to hinder participation in the market (up stream and
down stream markets – competition in the downstream market must be affected here)
 whether refusal prevents emergence of a new product for which there is consumer
demand
 whether the patented product ?? (ask Yamuna)
 per se rule  if a statute says that X act is anti-competitive
 USA: scope of patent test
 Rule of reason test – whether there was a reason to refuse license?
 Refusal to deal is usually not anti comp so you have to establish abuse of dom p
 Other issues can arise too – is cross licensing anti competitive? While answering this
question you have to look at the nature of technology – are they substitutable? Or
complementary? Do prices increase or reduce for the consumer?
 Competition law does not question the existence of IP rights but only questions the
exercise of those rights
 Unwired planet v Huawei 265
 Rajesh bansal 263
 Ebay v merc exchange
 rejected mandatory injunctions as a rule for patents
 4 tests while deciding whether to grant an injunctin
 irreparable harm
 balance of conveniences
 is compensation in case injunction is not granted, adequate?
 Public interest in granting injunction
Trademarks
 Distinctive marks in relation to goods and services are protected
 Not protected  generic, non-distinctive, descriptive, functional, deceptive, hurting
religious feelings, scandalous, prohibited under law under the Emblems Act etc.,
confusing, diluting
 No need for registration. It’s all protected.
 Identification, source, quality (consistency in quality), advertisement  4 functions of a
trademark
 Trademarks have information transmission functions
 What is trademark
 Capable of being represented graphically
 Must be a mark
 Capable of distinguishing goods and services of one from another
 EU – ended the graphical representation requirement (sieckmann case)
 Passing off is an action in tort
 Sieckmann case
 Lays down the test for graphical representation
 Smell sought to be trademarked
 Chemical formula – composition changes in different temperatures, climates, wtv.
Represents substance and not the odour
 Cannot draw a smell
 Cannot describe a smell in written language accurately
 Cannot deposit samples cuz they change over time
 A combination of all of the above would lead to even more uncertainty, held
 Hence odours cannot be registered as trademarks
 Important holding – signs can be represented in any appropriate form as long as they
are clear, precise, self-contained, easily accessible, intelligible, durable, and objective
 Smells of perfumes, or the taste of KFC wings cannot get protection cuz it’s the
product itself – functionality
 Mark is a device, label, brand, ticket, name of co. / individual, signature (not preferred),
invented words,
 Invented words test in Eastman case.
 If you use the word “ice cream” to name a chewing gum, then it is an arbitrary trademark.
The name is unconnected to the product
 Distinctiveness – this mark distinguishes one product from another
 Spectrum of distinctiveness + Abercrombie = see RM page 188 onwards
 ^ apple for computers = arbitrary; apple-a-day for vitamin tablets = suggestive (proverb);
tomapple for combination of tomato-apple juice is descriptive; apple for apple = generic
 Generic names cannot become trademarks – for eg., you can’t say “Laptop laptop”
 You can sue other people for using your mark on the grounds of likelihood of confusion
as well as dilution of brand
 The test for infringement is deceptive similarity between the trademarks. The likelihood
of confusion in unwary purchasers with average intelligence and imperfect recollection is
the test
 Dilution doctrine – assuming Maggi is a well known trade mark u/s 10+11. Someone
wants to register the word Maggi for toilet cleaner. Association with unwholesome
product will tarnish the image of the noodles brand. This is a ground for refusal of
trademark.
 they tried to TM Harley Davidson engine noises – “potato potato potato”
 3 elements for a trademark:
(1) symbol
(2) there must be secondary meaning attached to the sound or wtv you’re seeking to tm (a
sound or mark may have a primary meaning as well. This is to see whether the laypeople
consumers associate the mark with the product or service or brand. Factors to be
considered are extent of relevant public who have related it to the product and not to
anything else, the length in the market, the relevant market, how much advertising,
whether the mark is highly distinctive or highly descriptive – if the latter, more proof
required to show secondary meaning acquired)
(3) Is it functional in nature?
 If it is functional, it loses protection under all IPR laws

Sound as trademark

 It could be a mark, and it could be distinctive, but how are you going to represent it
graphically? [the 3 requirements]
 Question of fact in each case
 Indian law now provides for registration of a sound mark expressly
 Egs – MGM’s roar of the lion, intel’s tune, 20th century fox’s brass instrumental
 Harley Davidson potato potato  (1) description of symbol – exhaust sound not a fixed
sound (2) acquisition of secondary meaning – not there cuz consumers associated all
engine sounds with Harley, whether or not it was actually Harley (3) overcome
functionality doctrine – the function of the engine which makes the noise was essential to
the use and purpose of the test
 Shield mark case (in RM)

Colour

 Qualitex (in RM)

 Pantone scale – universal scale wherein certain numbers signify certain exact shades
 Missed a couple of lines here
 If a pharma co. is using blue for 200 mg and red for 400 mg  does the colour denote the
co. producing or the dosage function? It’s the latter. Does not qualify for trademark
 Functionality doctrine = if exclusive use of the feature would put competitors at a
significant non-reputation related disadvantage
 Heidelberger (in RM 212)
 Loubotin shoes get protection – red sole (in RM 228)

Shape

 No protection for shape if

- If the shape results from the nature of the good (for eg. Round shape of a tennis ball –
naturally)
- If the shape is necessary to obtain a technical result (like the aerodynamics of a
plane’s cone shaped front)
- If the shape adds substantial value to the good
 Toblerone chocolate has protection
 Philips case (in RM 214)
 There exists no class of marks which is not capable of distinguishing goods and
services
  Will you protect the shape or the embellishment as well as the shape? In other words,
should shape get protection only when there is embellishment? No. There is no
requirement for a capricious addition or embellishment in order to qualify for
protection
 If a substantial proportion of the relevant class of persons associates a shape with a
particular trader and believes that goods of that shape come from that trader, then ?
 Whether a purely functional shape was caught by the exclusion in art 3(1)(e) even
when it can be shown that the same technical result could be achieved by other
different shapes?

Relative grounds for refusal

 Grounds (what are these??)
 Dissimilar goods
 Reputation
 Unfair advantage
 Damage to reputation
 Without due cause
 Ss 11(2) [well known] and 29(4) [reputation] 
 to show conceptual connection b/w reputation – seeling drinks in football shaped bottle
with three stripes – was there a connection with adidas sports shoes? Yes (sold at the
football games) and they took unfair advantage of adidas; parasitic use [unfair advantage]
 Audi-med for hearing aids – connection with audi cars? Court said no,..? [unfair
advantage]
 use of similar mark on other goods has brought down the distinctive character of the
popular good. Have to establish blurring between the two products. This can be hard
because both products can have equal reputation. If that’s the case, then there is no wrong
/ remedy. It does not adversely affect the original mark by way of reputation. Merely
reduces the distinctive character
 damage to reputation is beyong blurring – tarnishing the image of the original product
 there is a distinction b/w a mark being well known and having reputation
 GM v Yplon – mark has reputation where it was well known by a significant part of the
public concerned with the product – not quantitative – look at market share, intensity,
 geographical extent, duration of use, size of investment (hence different from well known
mark)
 Everready for condoms vs for batteries – registrar said there was no blurring, both were
distinctive products
 Tarnishment
 where the mark is used on poor quality or ineffective goods. Eg – colgate Palmolive v
local bols – ‘claeryn’ registered for gin, wanted to use ‘klarein’ for detergent. The
office said no one wants to be reminded of detergent while drinking alc. Suffered to
the extent that it no longer added the same degree of value of goods (to the gin)
 Benz car. Some company wanted to manufacture Benz underwear. The court
recognized the dilution doctrine in practice and said it would tarnish the reputation of
Benz cars. The rule wasn’t present in the relevant statute (trade and merchandise act)
 Owner to establish that negative association will be real and fanciful – CA Sheimer’s
TM application – VISA mark for condoms – VISA financial services opposed it –
registration refused – held that it would alter the perception of the finserv mark
negatively
 Position in the US
 Before the amendment – owner of famous mark – injunction against second mark IF
the second mark began use after the first mark became famous; and causes dilution of
the distinctive quality
 2003 – Moseley v secret catalogue – victoria’s secret and victor’s little secret (adult
vids, sex toys). Court held – if the mark is identical, proof that consumers mentally
associate the second / junior mark with the famous one is sufficient. If non identical,
then, you need proof of actual damage.
 After the amendment (?) – likely to cause dilution by blurring or tarnishment,
regardless of actual injury (likelihood is a ground for a suit, notably)
 Blurring – association by similarity, that impairs the distinctiveness of the famous mark
 Tarnishment - association by similarity, that harms the reputation of the famous mark
 ^ Compare this with Indian law
 Use of mark as part of trading style or corporate name (s 29)
 Product with a different name but with ‘ellora industries’ printed on it – yes,
infringement
 Infringement can occur even when other’s marks are used for ads, labelling or
packaging, as a business paper – provided he knew or had reason to believe… 29(6)
  29(8)(a) – comparative advertising
 reckitt and colman v M P Ramachandran (pg 217 in RM)
 is puffery allowed? Yes
 permitted to say that your goods are better than other goods / the best ever? Yes
 for this purpose, are you allowed to compare with the other goods? Yes
 are you allowed to say that the other goods are bad? No, this is disparagement.
Can even be an action for defamation
 s 30 – limits on infringement
 HUL v Reckitt Beckniser – hul was lifebuoy, RB was Dettol – in RM page 219
 Pepsi Dabur Godrej L’oreal Horlicks
 We haven’t seen in India whether a refusal of trademark can infringe rt to free speech? In
the mattel case in USA, such a restriction was indeed contrary to freedom of speech – the
TM was refused initially cuz it was a racial slur

Trademark and Internet

 Domain name disputes

 Nls.ac.in  the .in is the top level domain (like .com, .gov etc.)
 .ac is the second level domain
 nls is the 3rd level domain
 panavision case – toeppen registered all popular brands’ names as domains and asked for
lotsa money to sell it back. Constituted dilution of TM. Use by Toeppen was commercial
use (trademark dilution act, but perhaps they could have resorted to passing off as well)
 marks and spencer v one in a million – anyone who pressed a button saying “who is
m&s” would be led to the website of one in a million – this is a false representation and
constitutes passing off because it misleads customers – domain was an instrument of
fraud
 India – yahoo and satyam cases in RM
 Yahoo
 The case was before the TM Act came into force. Hence passing off action
 Whether goodwill associated with a non invented word will be protected? It has
acquired a distinctive meaning despite being a dictionary word.
 Domain name has the same function as a trademark, and is an instrumentality of
goodwill.
  Relief of passing off allowed because:
 Business reputation wrongly exploited
 Need to ensure commercial stability
 Disclaimer does not absolve liability
 Likelihood of deception is enough (imp)
 Satyam
 Reputation and goodwill of a business represented by the domain name
 Close visual and phonetic similarity
 Domain names can be protected as trademarks, held
 Passing off – entitled to protection under this as well
 UDRP
 the following 3 elements must be proved for an action to lie (all 3 elements!)
 domain name must be identical or confusingly similar
 domain name holder must have no rights or legitimate interests in the name
 is registered and used in bad faith
 how do you demonstrate rights and legitimate interest in the domain name?
 before notice of the dispute, the use of or prep to use the domain name in
connection with a bona fide offering of goods and services
 the holder has been commonly known by the domain name, even if there are no
TM or service mark rights
 the holder is using the domain name in legitimate non commercial or fair use of
the domain name without intent for commercial gain to misleadingly divert
consumers or to tarnish the mark
 how do you prove bad faith?
 If it is just to sell or rent the domain name
 if it is to prevent the owner of the trademark from using that same word in the
domain name
 if it is for the purpose of disrupting the business of a competitor
 if it is intentionally used to divert traffic to some other website and leads to the
likelihood of confusion
 remedy – cancellation, transfer, and change only
 procedure – complaint, independent panel w experts, decision, implementation by
registrar if no court proceedings
 something?
  The content of a website is irrelevant in determining confusing similarity – just
compare the domain name in dispute to the trademark
 Owning a registered TM is sufficient to prove TM rights
 Walmartsucks.com – this is indeed confusingly similar to the actual Walmart website
because it’s similar and might not be recognized as negative
 No specific protection to geographical terms under UDRP. Some terms can be
protected if the complainant can show that it has rights
 Personal names can sometimes be granted protection – Julia Roberts was
 Criticism sites cannot use confusingly similar names as the TM
 Fan sites – since it isn’t diverting any business, and is non commercial use, fan sites
are permitted

Passing off

 Common law remedy, law of torts, deceit

 Available for TM, GI, characters like teenage mutant ninja turtles
 Passing off your goods as someone else’s
 What are the indicators? Trademark, shape, similarity in nature of goods, might sell it
together to cause confusion
 Perry v true fit – cannot use marks, other indicia by which the purchaser is induced to
believe that goods are another person’s
 Diversion of potential customers
 Spalding brothers case
 Erven warmink v townend (‘advocaat’) – extended passing off and not classical passing
off
 Alcoholic drink from the Netherlands sold in England
 Made out of eggs and spirit
 Several traders – the plaintiff had 75% market share. Goodwill is shared, not
individual. Hence, each one of them is entitled to sue for passing off, or all of them
may sue together
 Defendants manufactured it in England, from dried eggs and Cyprus sherry
 Marketed as old English advocaat
 They paid less duty, so their sale price was lower
 People who were inexperienced could not tell the difference
  The product had no natural association with advocaat (cuz the ingredients are
different). The public was deliberately induced into buying something that wasn’t
advocaat while believing it was
 Deception caused; damage caused to trade and goodwill
 Tests (five pronged test by lord diplock) (tests are the imp part of this case)
 Misrepresentation
 made by a trader in the course of trade
 to prospective customers or ultimate consumers
 which is calculated to injure the business or goodwill of another trader (reasonable
foreseeability)
 actual or potential damage
 note that intention is irrelevant!
 Lord oliver laid down this test – goodwill, misrep, damage (trinity test) (reckitt and
coleman v borden)
 are the two tests contradictory? No cuz the five pronged test is for extended passing off
and the trinity test is for classical passing off
 goodwill
 may manifest itself in advertising style, descriptive words, [use of image, likeness, or
voice], packaging or get-up or trade dress
 there must be a trader trading
 can there be pre-trade goodwill?
 No says Maxwell v hogg
 Maxwell advertised a journal BELGRVIA, to be published
 Hogg started BELGRAVIA
 Held – if the product isn’t available in the market, no protection
 Mere declaration of intention will not secure protection
 BBC v Talbot
 BBC’s planned program was CARFAX, Talbot used it before BBC’s program was
rolled out
 Held that BBC built up goodwill through ads. Talbot’s actions are misrep and
damage. Protection granted
 My kinda bones v dr peppers stove reversed the position again and held that there
would be no goodwill for pre-launch ads
 Can there be goodwill after trading ends?
  Commissioner of inland revenue case – destroy the business and the goodwill
perishes (this is NOT the law rn)
 Star industrial case – goodwill can remain after the business closes. But for how
long? There are no answers. You could infer from s 47, TMA, that it is 5 years (if
a TM hasn’t been used for trade bona fide for 5 years, it is a ground for removal)
 When do foreign traders have goodwill?
 There must be evidence of business activity in that place
 Sheraton corp v Sheraton motels – no hotels in UK, only a booking office. The
motel company wished to start a motel chain with the Sheraton name. The court
held that the booking offices were evidence of business activity
 If there isn’t business activity, but customers exist, goodwill exists
 What happens if there is mere reputation or it is a well known mark? Budweiser
case – an heuser manufactured beer, called it Budweiser and sold it in UK.
Budweiser co. sold it only in American airforce bases. Held no goodwill in UK
cuz no sales to general public
 Hard line and soft line approaches
 UK = hardline (starbucks v british sky broadcasting – confirmed that business
must persist / customers in that jurisdiction for goodwill to exist; reputation
through advertising insufficient)
 India, Australia etc. = soft line, which accounts for cross border reputation (cases
in india – calvin klein, apple computers)

Parodies

 Peta case – contents of the website reflected parody

Geographical Indications (TA only)

 A sign used on a product specifying quality, characteristics, reputation attributable to a
particular region
 Nexus b/w product and place of production
 ‘terroir’ is the link b/w the product and the natural and human factors which go into
making the product – GI is heavily influenced by terroir
 Indications pertaining to goods are protected (a Thai massage, which is a service, isn’t
protected)
 GI is a collective right – cannot be asked for by an individual. An association of persons
can ask for a GI – usually an association of producers.
 GI is usually given for products of a particular region having similar characteristics
 Egs – kanjivaram sarees, pashmina shawls, tirupati laddu, rasgulla, tequila.
 Registration is required (but action for passing off lies even without registration?)
 Difference b/w GI and TM
 Collective v individual right
 GI is only for goods and not services
 TM can be licensed and GI cannot
 Association asks for a GI,
 Difference bw ‘indication of source’ and GI
 Ios refers to the place where it has been produced but does not signify quality /
characteristic / reputation like GI does
 Ios = made in China
 Difference bw appellation of source and GI?
 Deceptive similarity v false indication of source wrt identity of the producer – know
 Paris convention?
 Madrid convention? Wtv he said in class for these two
 Lisbon agreement for protection of appellations of origins – v few member states –
mandated that once you grant protection to aoo only then is wipo required to grant
recognition – what does that even mean
 Gi is much broader than aoo
 TRIPS
 Defn. of GI in a.22.1
 22.2 – basis of protection for GI - member states must prevent:
 misleading GIs
 unfair competition
 23 – additional protection for wines and spirits – a political bargain, no specific
rationale or legal basis
  TRIPS also prevents registration of a TM which has a GI
 Exceptions
 24 – exceptions to 22, 23, especially for wine and spirit
 24.5
 generic designations are also granted exemptions
 our GI act reflects TRIPS
 GI Act, India
 2(e) defines GI – read – quality, reputation, characteristics again
 2(f) defines goods – read – agricultural, natural, manufactured
 Only an authorized user can use a GI (s 17)
 S 9 – read – prohibition of certain GIs – similar to the prohibition in TM – but ss 25,
26 permits certain TMs as GIs if they were good faith use [overlap b/w GI and TM]
 Application can only be filed by an association; an individual cannot file (s 11)
 An app must represent the interests of the producers of goods (s 11)
 Once an app is made, an ad is displayed, and an objection may be registered if some
producers feel that their interests aren’t represented  producers / farmers filed an
objection wrt Basmati rice
 S 21 – rights upon GI registration for an authorized user
 22(2) – imp – some sort of special measure for local products which are not wines and
spirits (cuz that was a European thing) but ironically enough, only wines and spirits
have been notified under this section. Lots of other handicrafts etc exist which haven’t
been granted additional protection
 24 – no assignment
 problems with GIs in India
 no post registration process
 no infringement suits although infringement surely exists
 some GIs aren’t checked for quality before marketing or sale
 the uniqueness of the product will be considered by the authority; see what remedy exists
– can an action for passing off lie against infringers? (ramakrish)
Designs
 Features of shape (3D), configuration, pattern, ornamentation, combination of
colours/lines are protected
 Not protected  trademark, device, functional features, artistic work protected under
copyright, unoriginal, not novel
 No protection for unregistered designs in India
 (1) shape (2) novel or original
 Indian designs act  features of: shape (indicates the external form of the article. Eg. -
vase), configuration (arrangement by which the shape of a composite article is arrived at.
Eg. – desktop computers), pattern, ornamentation, composition of lines or colours
 ^ Shape and configuration are 3 Dimensional whereas the rest are 2D
 protection exists only when an article exists to which the shape is applied!
 Protection for 10 years + 5 extension
 judged solely by the eye – subjective assessment
 special, peculiar, or striking, distinctive appearance
 ‘eye appeal’ as per the judge in the interlego case (in RM) is ?
 features not fully visible at the time of purchase are also entitled to design protection
 KK Suwa Seikosha case – sound and bell symbols were visible only when circuitry
was connected
 see also ferro case (in RM)
 the way Lamborghini doors open is protected under design (but also trademark)
 No protection in India for:
 a mere mechanical device in substance (has only a function)
 trademark defined in the trademarks act
 property mark under IPC
 artistic work as defined in the copyright act, s 2(d) i.e. what is not a design
 if not NEW and ORIGINAL
 if they are disclosed anywhere by publication or by use or any other way before
priority date (publication is different from registration. The latter does not amount to
publication by itself) (publication = applying the design to an article and releasing it
in the market. Tangible form)
  if not significantly different from known design or combination of known designs
 scandalous or obscene matter (mastermann’s design case in RM)
 use of design must not be against public policy or morality (s 35)
 difference b/w novelty and originality
 Under patents, they look for absolute novelty. Originality, however, is different  if
you take the shape of the Eiffel tower and make pencils, it is original because of its
application
 Novelty is established if the design never existed before
 Originality is established if design is old but new in its application
 The test of novelty and originality is wrt kind and not class of the article  class egs =
automobiles, pharmaceuticals, clothing. Kind = the individual product??? [look this up]
 Bharat glass tube v gopal glass works = some holding on s 4?
 Read s 44 on some priority that can be claimed
 Design protection can be claimed for an entire article, as well as for parts of the article
 ‘Article’ means any article of manufacture and any substance, artificial, or partly artificial
and partly natural… (the key point is artificiality)
 article must have its existence independent of the design applied to it
 The texture of an article or material of an article is NOT the feature of a design;
irrelevant. Eg. – bach’s design case in RM – on how classes are different but kinds can be
the same. Eg. 2 – the croissant sofa – initially made with some natural materials.
Someone else used metal to make the same sofa – will the second one get design
protection? No cuz materials are irrelevant to design protection
 Parts of the article – ford motor co. case (HoL)
 The law is that they should be able to be made and sold separately
 Design protections sought for (1) wing mirrors, steering wheels, seats (2) spare parts
such as door panels and the bonnet
 The overall car already had design protection
 Held: design must be applied to an article that has an independent life as an article of
commerce and not merely an adjunct of a larger article of which it forms a part

 In other words, if an article has design protection, some parts of that article will
receive protection but others which are just an adjunct will not
 Functionality
 design must not be wholly attributable to its function
  If the dominant element of the design is functional, then it does not get protection! Eg.
– chocolate on a stick makes it convenient and less messy so it is functional. Similarly
for bone shaped soap and being able to grip it
 Cow v cannon rubber manu – diagonal arrangement of ribs on a hot water bottle – no
solely functional – radiation of heat without discomfort could be achieved by
horizontal ribs as well. Hence, design protection granted
 Amp v utilix (in RM)
 Interlego (in RM) – the shape of the Lego brick not dictated solely by the function it
had to perform
 Rights of the proprietor – copyright in the design (exclusive right to apply a design to any
article in any class in which the design is registered – s 2(c) of the Designs Act – this is
different from copyright generally), exclusive use, assignment, license, mortgage, sue for
piracy
 Mohan Lal case (in RM) – all 3 issues
 Rotomac pens case (in RM)
 Cello case (in RM) – what was held is important in this case says rama
 How do you differentiate between artistic work and design? Artistic works applied to
articles are designs.

UK
 Design means the appearance of the whole or a part of the product resulting from features
of lines, contours, materials, colours, shape, texture of the product or its ornamentation
 Computer program is excluded but computer screen icons are included
 Can overlap with copyright and trademark
 Does not insist on ‘eye appeal’ anymore – only visual impression matter (???)
 2 elements are required to qualify as a design – novelty and individual character
 individual character = if the overall impression it produces on the informed user differs
from the overall impression produced on such a user by any design which has been made
available to the public before the relevant date
 an informed user is not an unwary purchaser, nor is she an expert – somewhere in
between – a particularly observant woman
 the degree of freedom of the author in creating the design shall also be taken into
consideration while determining individual character (???)
 dyson v vax  cylinder vacuum cleaner – applied the individual character test – the
second cleaner was rugged angular and industrial but the first one was smooth curving
and elegant
 no registration and no protection if (1) design solely dictated by technical function (2)
opposed to public policy or morality (3) “must fit” (4) “must match”
 unregistered designs
 CDPA Part III – a design is any aspect of the shape or configuration of the whole or
part of an article would be a design – ‘any aspect’ deleted later cuz too wide
 ‘Design right’ / protection only if it has been recorded in a design document (i.e. any
record of a design whether in the form of a drawing, written description, photo, data
in a computer) or an article has been made to the design
 hence, unregistered designs require fixation
 must be discernable, recognizable, visible
 eg. – an engine in a lawnmower does not get protection cuz its not visible
 duration = 10 + 5
 license MUST be given in the last five years, t&c may be negotiated
 exclusions:
 surface decoration (painted finish, v-grooves, cock beadings are surface deco but
cornice, quadrant corners, are not – markwikison v woodcraft design) (fulton v
grant barnett – stitched seams of an umbrella are significant aspects of shape)
 methods or principles of construction – the process of stitching the umbrella
seams does not get protection
 must fit
- if you’re taking an article and placing it with another article, by virtue of
which either of the articles become functional, it falls under the must fit
example
- eg. – mobile phone case which fits the phone as well as your hand
- ocular sciences case – IMP – certain technical features like back radius,
diameter enabled them to fit against the eyeballs – the court ignored that there
needs to be another article – this decision makes the human body an article for
the purposes of this law
- amoena v trulife – differentiated from ocular sciences – breast prostheses for
mastectomy patients – strict interpretation saying two articles must exist –
novelty is unnecessary
  must match
- aesthetic counterpart of must fit exclusion
-
 not original and commonplace – the latter determined by ascertaining degree of
similarity to the design of similar, independent articles in the same design field –
evidence includes expert evidence
 missed some microfiber case here with the facts and holding – legislative intent was to
grant a higher protection to pure original artistic works such as paintings etc and lesser
protection to design activity which is commercial in nature
 ^ if the design is registered under DA, it loses copyright protection under CA. If a design
is capable of being registered but is not, then it enjoys copyright protection till 50. After
50, loses copyright protection under the CA. If registered, even after 50 there was design
protection. This interpretation would harmonize copyright and design law
 52(1)(w) – fair use protection – page 107 of the RM – holland company case – do it!
 Microfiber is good law, takes precedence over Holland cos.

Protection of Plant Varieties (TA)

 TRIPS Art. 27(3)(b) mandates that every country should provide protection to sui generis
plant varieties.
 (1) commercially novel (2,3,4) characteristics in the variety must be distinctive, uniform,
stable (“DUS”)
 Must register for protection and be tested under DUS
 Breeders, farmers, agri instis etc. can apply for protection
 Plant variety comes under ‘species’
 UPOV convention – each member state needs to adopt a legislation consistent with
UPOV
 Art 2 – basic obligation is to grant and protect breeders’ rights
 NDUS test- novel / new, distinct, uniform, stable
 Art 14- breeders’ rights, 15 – exception to breeders’ rights
 Can get priority
 PPV&FR Act, India
 Breeder – one who has developed a variety; includes legal persons
  NDUS
 essential derived variety – 2(i) – she read the whole damn thing out – must seek perm
from the initial variety right holder
 extant variety – 2(j)
 shouldn’t have a terminating gene technology which stops propagation of crops
 pepsi co case – repeated commercial use is infringement
 unintentional and accidental use is not infringement (esp relevant for farmers)
 farmers’ rights vs breeders’ rights (Ramakrishna)
 EU law is more breeder friendly, but Indian law is more farmer friendly (see above)
 The saving seeds campaign persists in India even now
 Need to make more info available to farmers – practically

Protection of Traditional Knowledge and Traditional Cultural

Expression
 knowledge relating to uses of biological materials known to indigenous communities
 WIPO has been working on this to protect it lol k thx neoliberalism
 No single legislation protecting TK
 The biodiversity act provides for benefit sharing not IPR rights and Patent Act provides
for defensive protection and if someone tries to patent TK, you can object u/s 25 and s
3(p)
 Kalahari bushpeople had knowledge about a Hudia cactus; a scientific insti started
working on this and isolates an ingredient and file for a patent, later assigned to a pharma
company. Are they allowed to do this?