WEEK I

INTRODUCTION
TO
INTELLECTUAL PROPERTY

Amit Jyoti S. Gomber

LL.B. 2019
INTERNAL ASSESSMENT

 Midterm Examination: 30
 Date: March 19
 Other details to be announced closer to the date

 Viva: 10
 May 1 to 10

 Oral Presentation (individual): 10

 1 presentation per class
 Maximum time – 15 mins
 - Introduction to IP
- Int’l IP

- Introduction to ©
- Protected Works
- Standards of Protection
- Authorship/ Ownership
- Rights of a © Holder
- Infringement, Defenses & Remedies

- Introduction to Patents
- Patentability Criteria
- Ownership and Working
- Infringement, Defenses & Remedies

- Introduction to TMs
- Standards of protection and
registration
- Dilution
- Rights of TM Owners
- Infringement, Defenses & Remedies
Property

Tangible
property

Intangible
property
MEANING:
 Non-physical or intangible property that
is the creation of mind called an idea;
 Only the concrete, tangible or physical
embodiments of the idea are protected
by intellectual property law:
- inventions;
- literary and artistic works
- symbols, names and images
used in commerce

 Propertization of intellectual efforts;

 Defined by its nature, duration, and
scope.
 Creation

Exploitation Protection
Intellectual Property

Industrial Property
Includes: patents; trademarks; industrial
designs and geographical indication

Copyright
Includes: literary, artistic, musical and
cinematographic works; related rights
(performers; broadcasters; producers)
CLASSIFICATION OF IP UNDER
TRIPS AGREEMENT
a) Copyright and Related Rights
b) Trademarks
c) Geographical Indications
d) Industrial Designs
e) Patents
f) Layout-Designs (Topographies) of Integrated Circuits
g) Protection of Undisclosed Information
 COPYRIGHT AND RELATED RIGHTS
Copyright laws grant authors, artists and other creators protection for their
literary and artistic creations, generally referred to as “works”. A closely
associated field is “related rights” or rights related to copyright that
encompass rights similar or identical to those of copyright, although
sometimes more limited and of shorter duration. The beneficiaries of related
rights are performers, producers and broadcasters.
 TRADEMARKS
A distinctive sign that identifies certain goods or services produced or
provided by an individual or a company.
 GEOGRAPHICAL INDICATIONS
A sign used on goods that have a specific geographical origin and possess
qualities or a reputation due to that place of origin.
 INDUSTRIAL DESIGNS
It refers to the ornamental or aesthetic aspects of an article. A
design may consist of three-dimensional features, such as
the shape or surface of an article, or two-dimensional
features, such as patterns, lines or color.
 PATENTS
 A patent is an exclusive right granted for an invention –a product or
process that provides a new way of doing something, or that offers a
new technical solution to a problem.
LAYOUT-DESIGNS (TOPOGRAPHIES) OF
INTEGRATED CIRCUITS
PROTECTION OF UNDISCLOSED INFORMATION
BRIEF HISTORY OF IP
 Roots in Europe.
 The trend of granting patents started in the fourteenth century.
 The first known copyrights appeared in Italy.
 Venice can be considered the cradle of IP system.

Protection of IP at International Level:

1. Territorial Period – absence of international protection
2. International level – Paris Convention, 1883 and Berne Convention,
1886
3. Global period – linked trade and IP resulting into TRIPS agreement,
1994

Indian IP Legislations:
1. The Patent Act in India is more than 150 years old, (1856).
2. The first © Act – 1914 based on British Act of 1911
3. The first TM Act - Trade Marks Act, 1940
 WHY WE PROTECT INTELLECTUAL PROPERTY?
Economic Rationale:
- All intellectual subject matter is a public good
- Public goods are: Non-excludable; and
Non-rivalrous
- Problem of free riding
- Economic justification does not lie in rewarding creators for their
labor but in ensuring that they have appropriate incentives to
engage in creative activities.
- Stakeholders: Creator; Consumers; Producers
 Philosophical Rationale:
Locke’s Natural Right’s theory:
 In Two Treatises on Government, Locke describes a state of nature in which
goods are held in common through a grant from God. God grants this bounty
to humanity for its enjoyment but these goods cannot be enjoyed in their
natural state. The individual must convert these goods into private property
by exerting labor upon them. This labor adds value to the goods, if in no
other way than by allowing them to be enjoyed by a human being.
 Everyone has an inalienable right to his labour and to the property created
thereby.
Hegel’s Personhood theory:
 In Philosophy of Right, Hegel says that property provides a unique or
especially suitable mechanism for self-actualization, for personal expression,
and for dignity and recognition as an individual person.
 An idea belongs to its creator because the idea is a manifestation of the
creator's personality or self.
 IPRs are inalienable but author or inventor reserves the right of manufacture
or reproduction.
J.S. Mill’s Utilitarian or Economic Incentive theory:
 Innovation and creation are good and necessary for the general happiness,
but also that they will occur at an unacceptably slow rate without the
monetary incentive.
 Tool of
public
policy

Transfer and Promote

dissemination economic,
of knowledge social and
and cultural
technology Purposes progress
of IP
protection

Encourage
Promote
and
innovation
reward
and
creative
creativity
work
 Limited
Scope of
the
incentive
Complex model
calculus Curbs
behind freedom
utilitarian of speech
method
Criticism
Retards
development
Protection
and leads to
involves
exploitation
cost
of poor
Calling it nations
“property”
is not
appropriate
 International IP Conventions/ Treaties
Paris Convention for the
Protection of Industrial
Property, 1883

WIPO Performances and Berne

Phonograms Treaty, 1996 Convention, 1886

WIPO Copyright Rome Convention,

Treaty, 1996 1961

Patent
TRIPS, 1994 Cooperation
Treaty (PCT),
1970

Madrid Agreement
(1891) / Protocols
(1989)
INTERNATIONAL IP
 GATT was the predecessor to the WTO.
 GATT originally came into existence as a treaty, not an
international organization, the demise of the ITO left
GATT to develop an administration of its own.
 After eight rounds of multilateral trade negotiations to
reduce trade barriers the Final Act was signed in
Marrakesh, Morocco on April 15, 1994 that
transformed the GATT into the new WTO.
 Most important international body for intellectual
property.
 164 members
 WTO administers the Understanding on the Settlement
of Disputes, commonly know as Dispute Settlement
Understanding or DSU which provides an effective
dispute settlement process for international trade
disputes.
 TRIPS
 Trade Related Aspects of Intellectual Property Rights;
 Annex 1C of the Marrakesh Agreement that established WTO;
 Binding on each member of the WTO;
 Sometimes referred to as “Paris-plus” and “Berne-plus”
agreement;
 Gave transition periods to members, according to their stages of
development (Article 65 & 66);
 IP services were launched into GATT during the Uruguay rounds
(1986-1994);
 In April 1989, a decision was adopted by the negotiating parties
on adopting TRIPS as full mandate;
 Final draft was released in 1993;
 Came into effect on 1 January 1995, is to date the most
comprehensive multilateral agreement on intellectual property.
Features of TRIPS:
1. Deals with each of the main categories of IPRs;

2. Establishes minimum standards of protections as well

as rules on administration and enforcement of IPRs;
3. Provides for the application of the WTO dispute
settlement mechanism to resolve disputes between
Members concerning compliance with its standards.

MAP OF DISPUTES BETWEEN WTO MEMBERS

http://www.wto.org/english/tratop_e/dispu_e/dispu_maps_e.htm?countr
y_selected=none&sense=e
 TRIPS PLUS
 Free Trade Agreements (FTA) - Refer to bilateral and pluri-
lateral agreements entered [primarily] by the US and other
developed countries with developing countries, made outside the
WTO, to secure stronger protection and enforcement of
copyright and trademarks.
 The IP provisions in these FTAs are controversial because they
typically impose higher standards of IP protection (TRIPS plus)
requirements on the countries involved.
 The ACTA (Anti-Counterfeiting Trade Agreement), a plurilateral
trade agreement, focuses on increasing measures to stop
trademark counterfeiting and copyright piracy.
 It contains an optional provision that allows countries to seize
“suspect goods” while in transit to another country.
 Recent eg: Trans-Pacific Partnership Agreement.
WIPO
 Intergovernmental and Specialized agency of UNO;
 191 member states;
 Before TRIPS, WIPO was the most important forum for the
development of international intellectual property treaties and
norms;
 Inherited its role from its predecessor BIRPI (the Bureaux
Internationaux Réunis pour la Protection de la Propriété
Intellectuelle, French for the United International Bureaux for
the Protection of Intellectual Property, 1893);
 Handles dispute settlement procedure for the Uniform Domain
Name Dispute Resolution Policy;
 Recently undertaken an education role and assumed the lead role
in negotiation among countries of the Development Agenda.
 India joined WIPO in 1975.
 PRINCIPLE OF TERRITORIALITY
 IP rights are territorial in nature;
 IP rights are created by national legislation, not by
an international treaty;
 Principle of Territoriality can be understood as
corollary to national sovereignty;
 It is connected to the general theory of
“jurisdiction to prescribe”;
 This principle is not expressly stated as a legal
standard in any international IP agreement but is
based on the principle of comity and mutual
respect among nations.
SUBAFILMS LTD. V. MGM-PATHE COMMUNICATIONS
CO. [24 F.3D 1088 (9TH CIR. 1994)]
Year Event

1966 Beatles through Subafilms enter JV with Hearst Corp. to produce

animated motion picture: Yellow Submarine;
This JV was the producer of the movie.

1967 Hearst entered into an agreement with United Artists Corp to

distribute and finance the film.

1968 UA distributed the film in theatres and later for TV

1980 Home video market developed; UA was uncertain whether the

1967 agreement allows home video right.
UA was succeeded by MGM

1987 MGM authorized its subsidiary (Warner) to distribute the picture

for domestic home video market and notified Warner Bros to
distribute video cassettes around the world.

1988 Subfilms and Hearst sued MGM and Warner contending that
distribution, both domestic and foreign constitutes © infringement
and breach of 1967 agreement
 17 U.S. Code § 106 - Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright under this
title has the exclusive rights to do and to authorize any of the
following:
1) to reproduce the copyrighted work in copies or phonorecords;
2) to prepare derivative works based upon the copyrighted work;
3) to distribute copies or phonorecords of the copyrighted work to
the public by sale or other transfer of ownership, or by rental,
lease, or lending;
4) in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and motion pictures and other audiovisual works, to
perform the copyrighted work publicly;
5) in the case of literary, musical, dramatic, and choreographic works,
pantomimes, and pictorial, graphic, or sculptural works, including
the individual images of a motion picture or other audiovisual
work, to display the copyrighted work publicly; and
6) in the case of sound recordings, to perform the copyrighted work
publicly by means of a digital audio transmission.
HELD:
 Mere authorization of extra-territorial acts of
infringement does not state a claim under the © Act
because “authorization” is not proscribed as one of
the rights under Section 106.
 Infringing actions that take place entirely outside
the US are not actionable under © Act.
 Extra territorial application of © law is only
possible where a presumption that denial of
application would result in adverse effects within
US, is satisfied.
QUESTIONS
 Since the plaintiffs were unable to assert that
unauthorized foreign distribution breached U.S. © Law,
do they have any other recourse?

 If this decision had come out the other way, do you think
foreign nations would disagree with this approach?
 PRINCIPLE OF NATIONAL TREATMENT
ARTICLE 3, NATIONAL TREATMENT

1. Each Member shall accord to the nationals of other

Members treatment no less favourable than that it accords to
its own nationals with regard to the protection of intellectual
property, subject to the exceptions …
Exceptions:
 As permitted under the pre-existing WIPO treaties (Paris,
Berne and Rome).
 In relation to judicial and administrative procedures where
such exceptions are necessary to secure compliance with
laws and regulations and which are not applied in a manner
which would constitute a disguised restriction on trade.
 Comparison of term of protection.
 The principle of National Treatment is a principle
of internal non-discrimination, requiring each
nation to accord treatment to foreign nationals that
is at least as favorable as that accorded to its own
nationals.
 Advantages over Bilateral or Plurilateral
agreements:
- National treatment applies without regard to a
condition of reciprocity.
- Does not require national courts to apply or
interpret foreign law.
 PHIL COLLINS V. IMTRAT
{EUROPEAN COURT OF JUSTICE: [1993] ECR I-5145, C-
92/92 (OCTOBER 20, 1993)}
HTTP://WWW.YOUTUBE.COM/WATCH?V=4Z-3BXGMW7E

 Phil Collins, a singer and

composer of British
nationality filed a suit
against Imtrat for
marketing in Germany a CD
containing the recording
unlawfully made of a
concert held in the US.
 Provisions of German Copyright Law:
- German Nationals: Performing artists who have German
nationality enjoy the protection (to prohibit distribution) granted
by the law in respect of all their performances i.e. irrespective of
the place of the performance.
- Foreign Performers: These performers cannot avail themselves
of the protections of law where the performance was given
outside Germany.
 As interpreted by the ECJ, Article 7 of Treaty Establishing
European Community that lays down the general principle
of non-discrimination on the grounds of nationality,
Germany should NOT preclude protection to foreign
nationals where illegal marketing in Germany but
performance was given outside its national territory. A
member state is precluded from making the grant of an
exclusive right subject to the requirement that the person
concerned be a national of that State.
 THE MOST FAVORED NATION PRINCIPLE

 MFN effectively prevents a country from giving

preferential treatment to one foreign country over
others. Under MFN, if a country gives preferential
treatment to one country, it must accord the same
benefits to all countries within the trading group.
 Article 4: Most-Favoured-Nation Treatment
With regard to the protection of intellectual property, any advantage,
favour, privilege or immunity granted by a Member to the nationals of
any other country shall be accorded immediately and unconditionally to
the nationals of all other Members …
Exempted from this obligation are any advantage, favour, privilege or
immunity accorded by a Member:
a) deriving from international agreements on judicial assistance or law
enforcement of a general nature and not particularly confined to the
protection of intellectual property;
b) granted in accordance with the provisions of the Berne Convention
(1971) or the Rome Convention authorizing that the treatment
accorded be a function not of national treatment but of the treatment
accorded in another country;
c) in respect of the rights of performers, producers of phonograms and
broadcasting organizations not provided under this Agreement;
d) deriving from international agreements related to the protection of
intellectual property which entered into force prior to the entry into
force of the WTO Agreement, provided that such agreements are
notified to the Council for TRIPS and do not constitute an arbitrary
or unjustifiable discrimination against nationals of other Members.
 US – SECTION 211 OMNIBUS APPROPRIATION ACT OF
1998, Report of the Appellate Body, WTO
 Controversy over the mark “Havana Club”
Year Event
Prior to Arechabala family produced rum in Cuba under the TM: “Havana Club”
1960
1960 Cuban government confiscates the mark and the business
1963 US imposes trade embargo against Cuba barring cuban products from
entering the US
1974 Cuban State company – Cubaexport registers the mark “Havana Club” in
Cuba and began selling rum to other countries but the US
1976 Cubaexport receives TM registration in the US but couldn’t sell the rum
due to trade embargo
1993 Cubaexport enter JV with Pernod Ricard (French Co.); Now JV owns the
TM and internationally distributes Havana Club rum
1996 US TM registration renewed
1996 Bacardi began exporting Bermuda made rum as “Havana Club Rum” to
the US
1997 Bacardi bought rights from Arechabala family in Cuba
1997 JV sued Bacardi for TM infringement in the US Court
1998 While suit was pending, Congress enacted S. 211 of Omnibus
Consolidated and Emergency Supplemental Appropriations Act
2000 Second circuit decides in favor of Bacardi; EU files a challenge against US
in the WTO for violation of NT and MFN
 Section 211 prohibits US Courts from enforcing trademarks in the US of any
“designated national or its successor-in-interest” (defined by regulation as “Cuba
and any national thereof) – if the TMs had been confiscated by the Cuban
government and the designated national had not received the consent of the
original, pre-confiscation owner of the mark.
 § 211(a)(1) prevents any party from registering or renewing a trademark that is
the same as or "substantially similar" to a trademark that was associated with a
business confiscated by the Cuban government, unless the original owner of the
trademark consents. The provision accomplishes this by preventing anyone from
paying the fee that is required to complete a registration or renewal of a
trademark unless these qualifications are met.
 § 211(a)(2) prevents a Cuban entity from gaining U.S. judicial enforcement of
statutory or common law rights for a trademark that is the same as or
substantially similar to a confiscated trademark.
 § 211(b) prevents a Cuban entity from gaining U.S. judicial enforcement of
treaty rights for a trademark that is the same as or "substantially similar" to a
trademark that was used by a confiscated business, unless the original owner
agrees.
 The provision distinguishes on one hand between the original owner who is a
Cuban national and is subject to the provision and on the other hand the original
owner who is a non-Cuban national who is not subject to the provision.