IPR.

INTRODUCTION TO COPYRIGHT LAW.

Copyright refers to the legal right of the owner of intellectual property. In simpler terms,
copyright is the right to copy. This means that the original creators of products and anyone they
give authorization to are the only ones with the exclusive right to reproduce the work Copyright
law gives creators of original material the exclusive right to further use and duplicate that
material for a given amount of time. Once a copyright expires, the copyrighted item becomes
public domain.
One safeguard that can be used to legally protect an original creation is copyright.1 Under
copyright law, a work is considered original if the author created it from independent thinking
void of duplication. This type of work is known as an Original Work of Authorship (OWA).
Anyone with an original work of authorship automatically has the copyright to that work,
preventing anyone else from using or replicating it. The copyright can be registered voluntarily
by the original owner if they would like to get an upper hand in the legal system in the event
that the need arises.

RC Cooper v/s union of India, 1970

The property where the means the highest right to a man where he can have
anything estates and Interest on In includes ownership, Corporeal thing and so on
personal capability of transfer and transmission

Intellectual property rights (IPR)

Intellectual property, being intangible property, indicates the creation of the human mind. The
creation of the human mind mainly includes inventions and literary and artistic works,
including symbols, names, images, and designs used in commerce.
There are three components to intellectual property rights –
It is related to the intelligence of the human mind, which is new and unique.
It is an intangible commodity that is protected. The most important difference between any
other form of property and intellectual property is that intellectual property is intangible and
does not qualify to be defined or identified by the medium of physical parameters.
The idea per se is not protected. The idea has to be published as a form of intellectual property,
and only then is it granted protection.
The meaning and scope of intellectual property are, with time, evolving and thus are involved
with the inclusion of newer forms of intellectual property in addition to its four separate and
distinct types, namely, patents, trademarks, copyrights and trade secrets. In current times, the
protection of geographical indication, protection of varieties of plants, the protection of
semiconductors and integrated circuits and undisclosed information have been covered under
the ambit of Intellectual Property Rights
Principles of the international intellectual property regime
It was with the Paris Convention for the Protection of Industrial Properties, 1883, which is
commonly known as the Paris Convention, that the principles of intellectual property rights
began to take shape. It was followed by the Convention for the Protection of Literary and
Artistic Works, 1886 which is infamously known as the Berne Convention.
Both the above-mentioned conventions were negotiated and also re-negotiated as well as
amended throughout the years, and eventually, they were finally incorporated and advanced
in Trade-Related Aspects of Intellectual Property Rights (TRIPS) through the Uruguay Round
of Negotiations from 1986 to 1994, which came into effect from the 1st of January 1995. Let’s
understand each convention in detail.

Paris Convention, 1883

The Paris Convention covers all forms of industrial property, such as patents, trademarks,
industrial designs, utility models, geographical indications, service marks, trade names, and
the prevention of unfair competition.
The Paris Convention was created with two goals, which are-
first, to prevent the unforeseen loss of patent protection eligibility by publishing 81 patent
applications and taking part in international exhibitions before submitting national patent
applications; and
second, to some extent, harmonise the various patent laws of the various countries.
The substantive provisions of the Paris Convention can be divided into three main categories-
National treatment– As per the terms and conditions of the convention, every secretary state
must ensure that the citizens of their nation and the citizens of other contracting states have an
equivalent degree of protection regarding industrial property. Citizens of non-contracting
states shall be entitled to national treatment under the convention in the same manner as in
their own state if they reside in the contracting state or have a lawful and functioning industrial
or commercial presence there.
Priority rights– It covers within its ambit industrial designs, trademarks, and utility models.
This right gives the holder the ability to file an application for protection in any other
contracting state within a certain amount of time, that is, 6 months for industrial designs and
trademarks and 12 months for patents and utility models, based on a standard initial
application that was filed in one of the contracting states. It would be assumed that these
additional applications were filed on the same day as the first application. To state it otherwise,
it means that they will supersede any application filed by third parties for the same invention,
utility model, trademark or industrial design during the previously indicated term.
The subsequent applications would not be influenced by any subsequent event, including the
publication of an invention or the sale of items bearing an industrial design or mark, because
they have their foundation in the original application.
Common rules – They are as under:
Patents– Patents issued for the same invention in different Contracting States are independent
of one another. A patent cannot be refused, cancelled, or terminated in any Contracting State
on the grounds that it has already been so in another Contracting State, and the granting of a
patent in one Contracting State does not obligate other Contracting States to do the same. The
refusal to award a patent or the invalidation of a patent on the grounds that the sale of the
product or of a product made using the patented technique is subject to domestic legal
restrictions or limitations is not permitted.
Marks– The filing and registration requirements for marks are governed by local law in each
Contracting State and are not governed by the Paris Convention. As a result, neither a
registration nor a request for registration of a mark that is put forward by a citizen of any
Contracting State may be denied or invalidated on the grounds that the application,
registration, or renewal was unaffected in the country of origin.
Registration– A trademark’s registration in one Contracting State is unrelated to any potential
registrations in other nations, including the place of origin.
Industrial Designs– Each Contracting State is required to preserve industrial designs, and
protection cannot be revoked because products containing the design were not produced there.
Trade Names– Trade names must be protected in every Contracting State without being
required to file or register the names.
An indication of Source– Each Contracting State is required to take action to prevent the direct
or indirect use of misrepresentations regarding the origin of commodities or the identity of
their producer, maker, or trader.
Unfair competition– Each Contracting State shall offer adequate safeguards against unfair
competition.

Berne Convention, 1886

States began to become more interested in the potential for international cooperation on
intellectual property during the nineteenth century because of increased literacy piracy.
Literary pirates misrepresent someone else’s ideas as their own. This desire of such cooperation
initially showed itself through bilateral agreements. Most country copyright laws were only a
few decades old in 1886. The only protection offered was that provided by monopolies, or
privileges granted for the publication of specific works.
Eight countries ratified the Berne Convention for the first time in 1886, namely- Belgium,
France, Germany, Italy, Spain, Switzerland, Tunisia, and the United Kingdom. India has been
a member of the Berne Convention since April 1928.
Principles Enshrined
The principles which got enshrined in the Berne Convention of 1886 and form the bedrock of
intellectual property laws today are-
Principle of national treatment– According to the principle of national treatment, treatment is
no less favourable than that provided to people belonging to other member countries as people
of one’s own country. This principle is enshrined very much in general agreements regarding
tariffs and trade. It forms one of the most important principles of the World Trade
Organization structure.
The works of authors who are citizens of such States, or works first published in such States,
should be accorded in each of the other Contracting States the same protection as such other
Contracting States provide to the works of their own citizens.
Principle of automatic protection– The principle of automatic protection provides
unconditional protection which does not require any compliance with any formalities in all the
member countries.
Principle of independence of protection– This principle provides for intellectual Property
Rights protection, specifically for copyright protection, to be affordable irrespective of whether
the protection is given in the country of origin or not.
Protection is provided in accordance with the convention, regardless of whether there is
protection in the nation where the work was created. However, if a Contracting State grants a
longer period of protection than the minimum period required by the Convention and the work
loses its protection in the place of origin, protection may be withdrawn.
The works and rights that must be protected, as well as the length of the protection, are
addressed by the minimum requirements of protection. Each production in the literary,
scientific, and creative fields must be protected, regardless of how it is expressed.
Principle of minimum standard protection– This principle concerns original works and rights
to be protected. For example, for copyright, the different rights protected are transaction,
adaptation and arrangement of work, performance in public, citation, communication,
broadcast, reproductions, and basis of audio-visual works.
Principle of moral rights of authors– The Convention also establishes the rights pertaining to
morals, i.e., “moral rights”. The moral rights include the right to claim authorship of a work as
well as the right to object to any alteration of the work, mutilation, deformation, or
modification. It also contains the right against derogatory actions that would be detrimental to
the honour or reputation of the author.
The rights recognised as exclusive rights of permission include the following, subject to any
permissible reservations, restrictions, or exceptions:
The right to translate;
the right to adapt and arrange the work;
the right to perform musical, theatrical, and dramatical-musical works in public;
the freedom to do literary readings in public;
being able to publicise the performance of such works;
the privilege of broadcasting; and
the freedom to create copies in any way or form, with the potential for a contracting State to
allow copies without permission in specific circumstances as long as they don’t interfere with
the work’s regular exploitation or unfairly damage the author’s legitimate interests; and the
potential for a Contracting State to grant the right to just compensation for music sound
recordings

Rome Convention,1961
The first international treaty to recognise the three neighbouring rights was the Rome
Convention, and the rights that it recognised were Performers’ rights, rights of the broadcasting
organisation, and rights of phonogram producers.

Performers’ rights
Performers receive protection from some actions that they have not authorised. These include-
broadcasting and making a live performance available to the public;
fixing a live performance; and
reproducing a fixation if the original fixation was made without the performer’s permission or
if the reproduction was made for purposes other than those for which permission was granted.

Rights of the broadcasting organisation

The following are some of the actions that broadcasting organisations have the authority to
permit or forbid-
the rebroadcasting of their broadcasts;
the fixing of their broadcasts;
the reproduction of such fixes; and
the communication to the public of their television broadcasts if such communication is made
in locations where the public may enter by paying a fee.
Rights of phonogram producers
Producers of phonograms have the authority to allow or restrict direct or indirect replication of
their phonograms. A single equitable remuneration must be paid by the user to the performers,
the phonogram manufacturers, or both when a phonogram released for commercial use gives
birth to secondary uses.
For phonograms and performances included therein, protection must last at least until the end
of a 20-year period calculated from the end of the year in which–
the fixation was made,
the performance took place, and
the broadcast took place.
The Rome Convention permits limitations and exceptions to the afore-mentioned rights in
national laws with regard to private use, the use of brief excerpts in connection with reporting
current events, temporary fixation by a broadcasting organisation using its own facilities and
for its own broadcasts, use exclusively for teaching or scientific research, and any other
situations where national law permits exceptions to copyright in literary and artistic work

WIPO
The World Intellectual Property Organization is an agency of the United Nations that
specialises in the promotion and protection of intellectual property rights throughout the
world. It was established in 1967, with its headquarters in Geneva, Switzerland. It carries or
mandates poster innovation economic development and creativity by providing a framework
for the protection of intellectual property globally.
ooThe primary mission of the World Intellectual Property Organisation is to encourage the use
and protection of intellectual property with the aim of creating a balanced and effective
international intellectual property system which facilitates innovation investment as well as
technology advancement. It is one of the largest specialised agencies within the United Nations
system, and its membership is open to any UN member state. It administers various
International treaties and agreements which are related to intellectual property. It provides a
platform on an international level for the filing of patterns, making it easy for investors as well
as companies to see protection of patterns in multiple countries with just a single application.
Its Madrid system simplifies the registration and management of trademarks across multiple
jurisdictions. It also supports the protection of copyright and other related rights. Furthermore,
it offers various services relating to intellectual property information and capacity building,
including various training programs.
The World Intellectual Property Organisation conducts research and analysis on intellectual
property trends and policies across the world and publishes its report along with various
valuable insights worldwide.
It offers arbitration and mediation services as a form of dispute resolution between parties
without the need for costly and time-consuming litigation. It takes the initiative in bringing
about development programmes across countries to build their capacity in intellectual property
protection and management. It also encourages the transfer of knowledge and technology from
developed to developing countries in order to promote economic growth and development,
considering the development of the world as a whole.
It plays a crucial role in harmonising the facilities for global protection of intellectual property
rights.
The goals of the World Intellectual Property Organisation
The two main goals of the World Intellectual Property Organisation are-
to encourage the protection of intellectual property around the world; and
to ensure administrative cooperation between the intellectual property Associations established
by the treaties that the World Intellectual Property Organisation oversees.
In addition to carrying out the administrative duties of the Unions, the World Intellectual
Property Organisation engages in a number of activities to achieve these goals, such as
normative activities, which encompass the formation of international trees to create norms and
standards for the protection and enforcement of intellectual property rights.,
programme activities, involving legal and technical assistance to States in the area of
intellectual property,
international classification and standardisation activities; and
trademark and industrial design registration, as well as filing and registration services relating
to foreign applications for patents on inventions.

Universal Copyright Convention(UCC)

The Universal Copyright Convention, also known as the UCC, is a piece of international
legislation that was drafted in the year 1952 under the auspices of UNESCO.
The Convention not only needed to acknowledge that copyright is a human right, but it also
needed to function as a kind of bridge between the various legal and social systems that exist
around the world in order for it to live up to the claim that its title makes about its universality.
Before the Second World War, steps had already been taken to remedy the paradoxical
situation in which the United States was cut off, legally speaking, from the countries of Europe
and Asia which since 1886 had become signatories to the Berne Convention – the International
Convention for the Protection of Literary and Artistic Works. These countries had all become
signatories to the convention in an effort to protect literary and artistic works from piracy.
However, the United States was not one of these countries.
Under the law of the United States, authors could only be protected if they completed certain
administrative formalities, such as registering their work with the US Copyright Office. This
was one of the requirements for protection. This law was similar to others that dealt with
intellectual property, such as the one that stated that an inventor's rights could only be
recognised if his or her invention was officially registered.
The United States was unable to accede to the Berne Convention due to this requirement. The
Berne Convention enshrines the principle that a work is protected solely by virtue of the fact
that it was created, and this requirement prevented the United States from doing so.
Because of this, there was no legal mechanism by which a work originating in the United States
could be protected in Japan or in the countries of Western Europe, nor was there any legal
mechanism by which a work originating in the aforementioned countries could be protected in
the United States other than by complying with the requirements of American law.
The Universal Copyright Convention that took place in 1952 offers a straightforward and
ingenious solution to this issue. It prescribes that the formalities required by the national law of
a contracting state shall be considered to be satisfied if all of the copies of a work that
originated in another contracting state carry the symbol, accompanied by the name of the
copyright owner and the year of the first publication. This will be considered to be in
compliance with the formalities that are required by the national law of the contracting state.
The United Nations Convention on Contracts for the International Sale of Goods has been
ratified by almost all of the states that are parties to the Berne Convention, including the
United States of America. As a result, the UCC has been able to fulfil its mission of facilitating
communication between different legal systems while simultaneously enhancing the protection
of intellectual works on a global scale.

The TRIPS Agreement is regarded as a comprehensive new framework defining norms of

intellectual property protection and addresses the protection of intellectual property in trade-
related industries to a major extent. The TRIPS Agreement also holds the distinction of being
the first global agreement that covers all forms of intellectual property and includes a wide
range of substantive provisions.
The TRIPS Agreement is a comprehensive and in-depth agreement with 73 Articles broken
down into 7 Parts. General regulations and fundamental principles are included in Part I. The
TRIPS Agreement, which defines “intellectual property” as “all categories of intellectual
property that are the subject of Sections 1 to 7 of Part II” of the Agreement, requires member
countries to implement domestic legislation to give effect to its provisions. Additionally, the
TRIPS Agreement mandates that Members honour their commitments to uphold their
obligations related to intellectual property rights under existing agreements.
The Paris Convention for the Protection of Industrial Property, the Berne Convention for the
Protection of Literary and Artistic Works, the Rome Convention for the Protection of
Performers, Producers of Phonograms and Broadcasting Organisations, and the Treaty on
Intellectual Property in Respect of Integrated Circuits are among the treaties that must be
complied with. Both national treatment and most-favorable-nation treatment were stipulated
as fundamental concepts in the TRIPS Agreement. The TRIPS Agreement’s Part II sets rules for
the accessibility, scope, and application of intellectual property rights.
Purpose of Trade-Related Aspects of Intellectual Property
Rights Agreement
The preamble of The Trade-Related Aspects of Intellectual Property Rights agreement along
with Article 7 clearly lists out the purposes for the TRIPS agreement-
To reduce distortion and impediment to international trade.
To promote effective and adequate protection of intellectual property rights.
To ensure that measures and procedures to enforce intellectual property rights do not
themselves become barriers to legitimate trade.
Article 7 of the TRIPS agreement gives its objective, which is that the protection and
enforcement of intellectual property rights should contribute to the promotion of technological
innovation and the transfer and dissemination of technology, to the mutual advantage of
producers and users of technology, and in a manner conducive to social and economic welfare
as well as to balance the rights and obligations.

The Patent Cooperation Treaty

According to the Patent Cooperation Treaty of 1970, by submitting an international patent
application, an invention can receive simultaneous patent protection in several different
countries. An application may be submitted by any citizen or resident of a contracting
member state. After meeting the connection through establishment requirement, it can
typically be filed with the national patent of the contracting member state where the
applicant resides or is a citizen, or, at the applicant’s option, to the World Intellectual
Property Organisation’s Geneva-based International Bureau as well as its regional offices.
The treaty regulates in considerable detail the formal requirements that must be fulfilled by
international applications. All contracting states that are parties to the treaty as of the
international filing date are automatically identified upon submission of an application
under the patent cooperation treaty. On the international application, a global search is
carried out. Such a search is carried out by one of the authorised international search
authorities in accordance with the provisions of the Patent Cooperation Treaty. In light of
the search report’s result, a preliminary and non-binding written opinion is also offered
about whether the invention seems to meet the standards of patentability. After receiving
the written opinion and international search report, the applicant may choose to modify the
clauses of the application or withdraw it altogether, especially if the content of the report
and opinion suggest that patent issuance is unlikely. The overseas bureau publishes the
foreign application and the findings of the worldwide search if it is not withdrawn.
A union was established with an assembly as a consequence of the Patent Co-operation
Treaty. Every state that has ratified the Patent Cooperation Treaty is a member of that
assembly. Adopting the biennial agenda and budget of the union, updating the regulations
issued under the Patent Cooperation Treaty and changing some costs associated with
utilising the system are among the key goals of this assembly.

SUBJECT MATTER OF COPYRIGHT.

Kinds Of Copyright:
Section 2(y) of the Copyright Act 1957, provides the different categories of work.
2.(y) "work" means any of the following works namely:

a literary dramatic musical or artistic work;

a cinematograph film;
a record;
The copyright Act provides for different kind of work which may be subject matter of
protection under the copyright Law in India. Viz: literary work, dramatic work, musical
work, artistic works, cinematograph films, sound recording etc.

Work In Which Copyright Subsists:

Section 13 of the Copyright Act 1957 provides for various kings of work in which Copyright
subsists.

These works are of following kinds:

original, literary work 2(o)

Original Dramatic Work2(h)
Original Musical Work
Original Artistic Work
Original Cinematograph Works e
Sound recordings

Copyright protection shall extend to expressions and not to ideas,

procedures, methods of operation or mathematical concepts as
such.”
CASE- R.G Anand v. M/S. Delux Films & Ors.
R.G Anand was a playwright, dramatist, and producer of stage plays. He wrote a play titled
"Hum Hindustani" in the year 1953. It was enacted in 1954 after which the play gained
popularity. Mr. Mohan Sehgal, a film director and producer, requested R.G Anand for a copy of
the play as he wished to make a film based on it. However, upon receiving the copy, he did not
contact R.G Anand again and announced the production of a motion picture titled "New Delhi".
R.G Anand alleged that "New Delhi" was entirely based upon the play "Hum Hindustani" and
filed a suit for copyright infringement at the trial court in Delhi. The Court concluded that
although the appellant was the owner of the copyright in ’Hum Hindustani’, there was no
violation of copyright. Thereafter, R.G Anand filed an appeal in the Delhi High Court. The Delhi
High Court upheld the trial court's decision. Thus, he filed an appeal before the Supreme Court
of India.
• Issues:
• Whether the plaintiff is the copyright owner of the play ’Hum Hindustani’ ?
• Is the film 'New Delhi' an infringement of the plaintiff's copyright in the play 'Hum
Hindustani'?
• Have defendants or any of them infringed the plaintiff's copyright by producing, or
distributing or exhibiting the film 'New Delhi'?
1. Laws Involved:
Section 1 & 2 of the Copyright Act, 1911.
1. Analysis:
The Court held that the play written by R.G. Anand falls within section (1)(2)(d) because it is a
dramatic work. The learned District Judge had rightly held that emotions like mere ideas are not
subject to pre-emption because they are common property. Further, the case highlighted that
infringement exists when a work is a transparent rephrasing to produce essentially the story of
the other writing. Where there is no textual copying and there are differences in literary style,
the similarity between the narration or the script does not indicate infringement. An imitation
will be a copy that comes so near to the original as to suggest the original to the mind of every
person seeing it.

The Supreme Court held that "...an idea, principle, theme, or subject matter or historical or
legendary facts being common property cannot be the subject matter of copyright of a particular
person. It is always open to any person to choose an idea as a subject matter and develop it in
his own manner and give expression to the idea by treating it differently from others. Where two
writers write on the same subject, similarities are bound to occur because the central idea of
both are the single but the similarities or coincidences by themselves cannot lead to an
irresistible inference of plagiarism or piracy."

CASE2: Najma Heptulla vs Orient Longman Ltd. And Ors.

Facts: The dispute revolves around the autobiography of the famous Indian freedom fighter,
Maulana Abdul Kalam Azad (“Maulana Azad”). The book was titled “India Wins Freedom” and
was penned by Professor Humayun Kabir (“Professor Kabir”). Maulana Azad and Professor
Kabir worked closely to create this literary work. Maulana would recite his life stories and
provide notes to the Professor, who in turn documented the same in written format. Maulana
Azad would then go over the composed work and approve it. The book was completed in 1957
and was due for publication. However, Maulana passed away in 1958 before the publication of
this book.
Professor Kabir had approached the National Archive Library and requested them to be the
trustee of the book and of an additional 30 pages that were meant to be published 30 years after
the death of Maulana Azad. The National Archive Library accepted the offer. Professor Kabir
then entered into an agreement with Oriental Longman Ltd. for the publication of the book,
excluding the 30 pages. The legal heirs of Maulana Azad, his sister Fatima Begum, and his
nephew Noorudin Khan consented to this arrangement.
In a property dispute, it was clarified by the Court that it was Noorudin and not Fatima Begum
who was the sole owner of all rights over Maulana’s writings, whether published or unpublished.
. Therefore, when Oriental Longman intended to publish the additional 30 pages in 1988, they
informed Noorudin of their intentions. Noordin agreed to this arrangement through a written
agreement.
Plaintiff, the granddaughter of Fatima Begum sent a legal notice to the National Archive Library,
stating that the legal heirs of Maulana Azad have the sole right over all his writings and the
Library must not open the seal of the unpublished work sent to them by Professor Kabir and
neither is Oriental Longman allowed to published Maulana’s work without her due consent.

Issues:
1. Whether Maulana Azad was the sole author of ‘India Wins Freedom’?
2. Whether Professor Kabir had the authority to enter into an agreement with Oriental
Longman Ltd. regarding the said book?

Law Involved: Section 2(d), Section 55(2), and Section 18 of the Copyright Act, 1957.

Analysis: The Court considered the definition of an author provided in Section 2(d) and 55(2)
of the Copyright Act. It was observed that although Maulana Azad was the owner of the book, he
was not its sole owner, since Professor Kabir had contributed greatly to the work. It was decided
that Maulana Azad and Professor Kabir were joint authors of the book.
This decision was supported by the fact that Professor Kabir did not just verbatim translate the
story recited by Maulana Azad, he often had to work with ideas recited by Maulana Azad in
Urdu. He was required to edit and arrange the stories to make a cohesive end piece. The Court
went ahead to state that the Professor’s contribution enables him to be considered as a sole
author, but since that was not the intention, he is not the sole author. The intention was
determined through the sharing of royalties, an arrangement set up by Professor Kabir.
Regarding the second issue, the court held that as per Section 18 of the Act, an author has the
right to assign their work. As per Section 19, the consent of the legal heirs is required if one or
more of the joint authors are deceased and evidence showed that the legal heirs (including
Fatima Begum) had consented to the arrangement in a written agreement.

Conclusion: The judgement is considered to be a landmark one since it sheds light on the
nature of joint authorship. It places importance on the intention of the creators rather than
technical elements of authorship. The judgement also clarifies the position on the rights of legal
heirs of a deceased joint author.

Economic And Moral Rights

An author produces literary, artistic, scientific or dramatic work or a cinematograph film or a

sound recording with various aims and objective. These aims and objectives can be termed as
his interest. In creating any work the author employs his time, energy, labour, skill, creativity,
resources, mind, faculties, perception, ideology. The production of work by the author may be
purely for self growth, self development and self satisfaction or for commercial gains.
The national statutes and international conventions include specific rights in the
term copyright to avoid confusion and bring certainty. The term copyright appears to be singular
but consists of three bundles of rights, these are Exclusive Economic Right, Moral rights, and
Neighboring rights.

Copyright is a bundle of rights consisting of Exclusive Economic Rights, Moral Rights &
Neighbouring Rights. The scheme in of the Indian copyright act 1957 concerning different kinds
of rights is under:
Economic Rights
Economic rights are those rights which help the author reap economic benefits9.As per Section
14 of the Copyright Act, 1957(14 of 1957), different rights are recognized for the works
considering its nature. The section provides that it is the exclusive right of the author to do or
authorize the doing of the acts provided thereunder. The important rights generally recognized
by all types of works under the Indian statute that attracted much judicial interpretation include
reproduction rights, right of distribution, and right to communicate work to the public.
Moral Rights
Moral rights are the English translation of the French phrase Droit moral. They are in addition
to the economic rights, and they are inalienable. Moral rights safeguard personal and
reputational rights, which permit authors to defend both the integrity of their works and the use
of their names Section 57 of the Act Independent of the author's copyright and even after the
assignment either wholly or partially of the said copyright, the author of a work shall have the
special right:

To claim authorship of the work; and

To restrain or claim damages in respect of any distortion, mutilation, modification or other act
about the said work which is done before the expiration of the term of copyright if such
distortion, mutilation, modification or other act would be prejudicial to his honor or reputation.
Neighboring Rights
Broadcasting Rights in India
the broadcasting organisation is conferred with Broadcasting Reproduction Rights wherein the
organisation is conferred with a series of rights in respect to the broadcast made namely,

reproducing the broadcast;

causing the broadcast to be heard or seen by the public on payment of any charges;
making any sound recording of visual recording of the broadcast;
making any reproduction or such sound recording or visual recording where the initial
recording was unauthorised;
selling or hiring or offering for sale or hire to the public any such sound or visual recording.

Following the operation of Section 3745, the performance of any act as under (a) to (e) shall
require a license of the broadcasting organisation or else the act shall be treated to be a violation
of copyright. However exceptions to the same have been provided in Section 3946 of the Act.

TERM OF PRTOECTION OF COPYRIGHT OWNER.

Copyright is protected for a limited time. Economic rights have a time limit, which can vary
according to national law. In those countries which are members of the Berne Convention, the
time limit should be equal to or longer than fifty years after the creator’s death. Longer periods
of protection may, however, be provided at the national level.3 For example, in Europe and the
United States, the term of protection is life plus seventy years.
Under the Indian Copyright Act, 1957, Chapter V enumerates the term of copyright protection.
Section 22 of the Act states the term of copyright in published literary, dramatic, musical and
artistic works shall subsist, published within the lifetime of the author, until sixty years from the
beginning of the calendar year following the year in which the author dies. In this section, the
reference to the author shall, in the case of a work of joint authorship, be construed as a
reference to the author who dies last.4 This term has been increased from fifty years to sixty
years by the Amendment of 1992.

However, in cases where the work falls under the category of a cinematograph film, sound
recording, photograph, posthumous publications5, anonymous organisations, the sixty years
period is counted from the date of publication.

Term of Copyright for Posthumous Publications

it is the publication of work after the death of its author. The term of copyright protection of a
posthumous publication subsists for a period of sixty years and unlike in others, here such
period is calculated from the date of publication. 6 The United States Court of Appeals held in the
case of Bartok v. Boosey & Hawkes7that, “A “posthumous work” under section 24 of the
Copyright Act is a work on which the right to copyright has passed by will or intestacy due to the
absence of an effective assignment by the author during his lifetime.”

Term of Copyright for Anonymous Publication

If the publication of the work anonymously, that is, publication when the author of such work is
unknown. The copyright term of an anonymous publication, as provided under Section 23 of the
Copyright Act, 1957, is also for a period of sixty years, calculated from the beginning of the
calendar year next following the year in which the work is first published. The section also
provides for the disclosure of the identity of the author. In its proviso, it is provided that where
the identity of the author is disclosed before the expiry of the said period, the copyright exists for
a period of sixty years, calculated from the beginning of the calendar year next following the year
in which the work is first published.8 The explanation clause to Section 23 of the Copyright Act,
1957 enumerates about the position of the author, that is, here the identity of an author shall be
deemed to have been disclosed. The identity may be disclosed either publicly by both the author
and the publisher or is otherwise established to the satisfaction of the Appellate Board by that
author.

Term of Copyright for Photographs

While Section 22 contains terms of copyright for all other works, the term for photographs has
been set out separately in Section 25 of the Act. This is in consonance with the Berne
convention, which also arrays separate terms for photographs and other works under Article 7.4
and Article 7.1 of the Berne Convention (Paris text) respectively. The Indian Copyright Act
provides for copyright in a photograph for a period of 60 years from the beginning of the
calendar year, following the year in which the photograph is published. But this Section has
been omitted by the amendment of 2012.

Term of Copyright for Cinematograph Films

Copyright of Cinematograph Films9 shall subsist until sixty years from the beginning of the
calendar year next following the year in which the film is published.
Term of Copyright for Sound Recordings
Copyright of sound recordings10 shall subsist until sixty years from the beginning of the calendar
year following the year in which the sound recording is published.

Term of Copyright of government works

In the case of a Government work, where Government is the first owner of the copyright therein,
copyright subsists until sixty years from the beginning of the calendar year next following the
year in which the work is first published. 11

Term of Copyright where a public undertaking is the first owner

In the case of a work, where a public undertaking is the first owner of the copyright therein,
copyright subsists until sixty years from the beginning of the calendar year next following the
year in which the work is first published. 12

Term of Copyright of work of an international organisation

In the case of a work of an international organisation to which the provisions of section 41 apply,
copyright subsists until sixty years from the beginning of the calendar year next following the
year in which the work is first published. 13

An author’s moral right as a right against distortion is available even after the expiry of the term
of copyright.

INFRINGEMENT AND REMEDIES

Section 51 Deals with Copyright infringement in India .Outlining Situations Where someone
can be held responsible for violating the rights of a copyright owner. These situations include:

Unauthorised Use of Copyrighted Material:

If someone uses a copyrighted work without permission, or in a way that goes against the
conditions set by the copyright owner or the Registrar of Copyrights, it’s considered copyright
infringement. For example, using a song in a video without obtaining the necessary rights or
licenses is an infringement.

If someone allows others to use a place for public performances or displays of copyrighted
works, and this usage violates copyright, they can also be held responsible, unless they genuinely
didn’t know it would infringe copyrights.

Unauthorised Distribution and Sale:

Making copies of a copyrighted work for sale or hire without permission, selling or renting them,
or displaying them for sale or rent as part of a business is considered infringement.

Distributing copyrighted material either as part of a business or to an extent that harms the
copyright owner is also an infringement.

Publicly exhibiting copyrighted works as part of a trade can lead to copyright infringement
claims.
Importing infringing copies of copyrighted works into India is also a violation of copyright, with
a limited exception for personal, non-commercial use.

CASE: Rogers Vs. Koons

Citation-Rogers Vs. Koons

Facts – Art Rogers ( plaintiff) took a picture of a couple carrying a row of

puppies and sold it for use on invitations and other merchandise. Jeff Koons
(Respondent) was a globally renowned artist who utilized the plaintiff’s
photograph to build a group of statues.

Issue – Whether these statutes made by the respondent fall under the
category of fair use (parody) or derivative work (exclusive right of the copyright
owner)?

Rules/Provisions – 17 U.S.C. § 107 states that the fair use of a copyrighted

work for purposes such as criticism, comment, or parody is not an infringement
of copyright.

Judgment – The work of the respondent didn’t fall under the scope of fair use
and was considered to be deceptively similar to the original photograph of the
plaintiff.

Analysis – Here, statutes made by the respondent were so similar to the

original photograph that a “normal person” would be able to detect the
duplicate. Hence, it can be termed as a derivative use of the original
photograph, which is one of the exclusive rights available to the owner of the
copyright.

What is Section 52 of the Copyright Act, 1957?

• Section 52 provides for certain exemptions from copyright infringement. Some of
the exemptions include:

o Fair Use:
 ▪ The use of copyrighted material for purposes such as criticism,
comment, news reporting, teaching, scholarship, or research is
considered fair use and may not be considered infringement.

o Reproduction for Personal Use:

▪ Making a single copy of a literary, dramatic, musical, or artistic work

for personal use (not being a computer program) is generally
exempted.

o Performance by Amateurs:

▪ The performance of a literary, dramatic, or musical work by

amateurs, where the performance is given to a non-paying
audience or where the proceeds are applied to charitable or
educational purposes, is exempted.

o Reproduction or Publication of Certain Works:

▪ The reproduction or publication of certain works for the purpose of

judicial proceedings, or for the purpose of reporting of current
events, is exempted.

o Recording of Broadcasts:

▪ The making of sound recordings of a broadcast for private or

▪ domestic use is exempted.

CASE: University of Oxford v. Rameshwari Photocopy

Service
Facts:
In 2012, Oxford University Press, Cambridge University Press and Taylor and
Francis (“Oxford”) filed a suit for copyright infringement against Rameshwari
Photocopy Services (“RPS”) and Delhi University (“DU”) for the unauthorized use
and reproduction of Oxford’s publications to create and sell “course packs”,
which were bundles of study material for students’ reference. The Single Bench
of the Delhi High Court granted an interim injunction by which the RPS and DU
was restrained from making and selling these course packs and reproducing
compilations of them. During the trial, the Society for the Promotion of Equitable
Access and Knowledge (SPEAK) and the Association of Students for Equitable
Access to Knowledge (ASEAK) were also named as defendants. The Delhi High
Court, in September 2016, ruled in RPS and DU’s favor. The Court stated that
presence of copyright in literary works did not give authors complete ownership
of their creations and that it is rather a right to inspire progress in the arts for
public intellectual prosperity. After the Single Bench’s decision, Oxford appealed
to the Division Bench.

Issues:
Did the reproduction of sections in the course packs constitute copyright
infringement?

Laws:
Sections 52(1)(i) of the Copyright Act, 1957.

Analysis:
On the 9th of December, 2016, the Division Bench of the Delhi High Court
interpreted Section 52(1)(i) of the Copyright Act, to allow photocopying of
copyrighted literary works to create course packs. Accordingly, pursuant to
Section 52 (1) (i) of the Copyright Act, any copyrighted material that is reproduced
by a teacher or a student in the course of educational instruction does not
constitute copyright infringement.

The Division Bench pointed out that since Section 52(1)(i) does not have an
express fair use limitation, it can only be applied as the general principle dictates.
Thus, it was held that when determining if the use of a copyrighted work was fair
under Section 52(1)(i), the only standard to be upheld was the work’s necessity in
achieving the purpose of educational instruction regardless of the percentage of
the work used in the process. It was also held that students were not potential
customers of the books used in the course packs because they would ultimately
refer to the same books in the library thereby not having an adverse impact on
Oxford's market. The core issue in the case concerning the interpretation of
Section 52(1)(i) was addressed with reliance on Section 13(2) of the General
Clauses Act of 1897. It was held that ‘photocopying’ (making multiple copies)
came under the meaning of the word 'reproduction’. The phrase ‘in the course of
instruction’ was also held to include within its scope the creation and distribution
of course packs to students, who also constituted the general public. However, it
went on to say that this distribution did not amount to publication because the
intent to publish did not include making profits off of it.

Thus, the Division Bench dismissed Oxford's appeal. The Court clarified that RPS
need not possess a license or permission to photocopy. The factual
 determination as to whether the copyrighted works in the course packs were
truly necessary for specific teaching purposes was handed over to the Single
Bench. On March 9th, 2017, Oxford withdrew the suit from the Delhi High Court.

Conclusion:
Copyright law plays a crucial role in balancing the interests of creators, curators,
and publishers with the interests of those who need access to the educational
works. This case and its outcome helped students who could not afford to
purchase books to provide equitable dissemination of knowledge to students
and the quality of their education. A developing nation like India certainly
requires regular contribution and concerted efforts to raise its standard of
education to help students strive for greater heights. The more equity in
knowledge accessibility, the more prosperous a country’s citizens. In a way, this
judgment has managed to balance both sides of the scale - when those who
seek knowledge gain it, their thirst for more increases, which means that those
who disseminate knowledge will succeed in their pursuit to further disseminate
it.
CASE2: Eastern Book Company & Ors. v. D. B. Modak and
Anr.
Facts:
The Petitioners, Eastern Book Company, a partnership firm, and EBC Publishing Private
Limited were engaged in the business of printing and publishing various legal books together.
One such publication was titled ‘Supreme Court Cases’ or SCC. This publication has existed
since 1969 and consisted of all non-reportable, reportable and short judgements, orders, records
of proceedings and directions of the Supreme Court. They published copy-edited versions of
these judgments along with certain additions such as formatting, numbering, cross-referring,
and other contributions that rendered it user-friendly. It also incorporated headnotes, footnotes,
and long notes.

In 2004, the Respondents, Spectrum Business Support Limited, (also called Respondent-1) and
Regent Datatech Private Limited (Respondent-2) put out a software titled ‘Grand Jurix’ and ‘The
Laws’ respectively. These companies were alleged to have copied the entire module from SCC
onto CD-ROMs, thereby infringing the appellants’ IP rights.

Issues:
• Whether the Petitioners’ work is eligible for protection under Copyright Law?
• Whether the Defendants infringed the Petitioners’ copyrights?
• Whether individual elements added by the Petitioners suffice to receive copyright
protection over the entire work?
Laws:
Section 13, 14 and 52 (1) (iv) (q) of the Indian Copyright Act, 1957.

Analysis:

The Petitioners contended that they have copyright in their version of the judgements compiled
in SCC, which is a product of their skills, ability, labour and capital. They did not intend to claim
monopoly over the judgement, but the specific format in which they publish them. The
Petitioners further claimed that their work was infringed by the Respondents because all the
modules contained in the CD-ROM were similar to their work and they had replicated the
Petitioners’ way of publishing the legal reports with the exact arrangements, sequences, and
choices of cases. It was further alleged that the Respondents copied the entire judgement as put
forth in the Petitioners’ law report with the same formatting, paragraph numbers, copy-editing
and footnotes.

The Respondents, however, presented that the Petitioners’ product is not eligible for protection
under copyright law as it is merely a derivative work of Supreme Court’s judgments. Since it
does not portray independent creation, it is not an original work. It was argued that the
additions made by the Petitioners were not sufficient enough to render it protection under the
Copyright Act. Further, they applied the merger doctrine and stated that the idea intended to be
expressed by the Petitioners and the form in which they express the idea are inseparable,
therefore leaving no room for a possible alternative expression.

The Court held that for a derivative work to receive copyright protection, it must be
demonstrated that the derivative work is more than just a copy of the original. It must contain
the author’s independent skill apart from capital and labour. The court wanted to identify
whether the petitioner's work was original. For doing so, they determined that the modicum of
creativity was too high of a standard whereas sweat of the brow test was too low of a standard.
Hence, they decided to apply the Canadian test of "skill and judgement". According to the court,
skill meant those which are not trivial and are substantial and judgement meant the use of
resources that went beyond the mere expenditure of labour and capital. The Respondents were
ordered to refrain from copying the paragraphs made by the Petitioners for internal referencing
and to stop using the Petitioners’ views on dissent and concurring opinions of the cases. The
final judgement was in favour of the Petitioners, giving them an exclusive right over their
content, prohibiting the utilisation of the same.

Conclusion:
Eastern Book Company & Ors. v. D. B. Modak and Anr. created a new benchmark for the
interpretation of "originality" as a concept by defining a balance between ‘Sweat of the Brow’
and the ‘Modicum of Creativity’ test. At one end of the spectrum, there is the ‘Sweat of the Brow’
test to determine originality, which entitles anybody with the provisions of labour and capital to
be eligible for copyright protection. On the other hand, we have a benchmark of creativity, which
requires a creation or a production to be novel and non-obvious. The Court is seen to have
adopted a ‘middle path’ with the prerequisite of ‘adequate skill and judgement’, thereby setting a
standard for proving originality

Remedies against Infringement

There are three kinds of remedies against infringement of copyright, namely:

1. Civil remedies
Injunction damages or account of profit, delivery of infringing copy and damages for conversion.
2. Criminal remedies
Imprisonment of the accused or imposition of fine or both. Seizure of infringing copies
3. Administrative remedies
Administrative remedies consist of moving the Registrar of copyrights to ban the import of
infringing copies into India when the infringement is by way of such importation and the
delivery of the confiscated infringing copies to the owner of the copyright and seeking the
delivery.
Jurisdiction of Courts
A suit or other civil proceedings relating to infringement of copyright is filed in the District
Court or High Court within whose jurisdiction the plaintiff resides or carries on business or
where the cause of action arose irrespective of the place of residence or place of business of the
defendant
Limitation
The period of limitation for filing the suit is three years from the date of infringement.

RELEVANCY OF TECH. IN COPYRIGHT.

Intellectual Property (IP) simply refers to the creation of the mind. It refers to the possession
of thought or design by the one who came up with it. It offers the owner of any inventive design
or any form of distinct work some exclusive rights, that make it unlawful to copy or reuse that
work without the owner’s permission. It is a part of property law. People associated with
literature, music, invention, etc. can use it in business practices.

There are numerous types of tools of protection that come under the term “intellectual property”.
Notable among these are the following:

• Patent
• Trademark
• Geographical indications
• Layout Designs of Integrated Circuits
• Trade secrets
• Copyrights
• Industrial Designs

Cyberspace is the non-physical domain where numerous computers are connected through
computer networks to establish communication between them. With the expansion of technology,
cyberspace has come within reach of every individual. This fact led to the emergence of cyberspace
as a business platform and hence increases pressure on Intellectual Property. Nowadays, cyber
crimes do not solely limit themselves to fraud, cyberbullying, identity thefts but also an
infringement of copyrights and trademarks of various businesses and other organizations. Online
content needs to be protected and hence Intellectual Property Rights and Cyber laws cannot be
separated.
In cyberspace, sometimes one person makes a profit by using another person’s creation without
the owner’s consent. This is a violation of privacy, and it is protected by IPR. We have certain laws
to avoid violation of Intellectual Property Rights in cyberspace and when it is violated, then
additionally we have several remedies in law.

Copyright Infringement: Where copyright is infringed, owner of copyright is entitled to sue

for remedies including injunction, damages, profit of accounts and delivery up of infringing
goods[7]. Section 51 states copyright in a work is considered infringed when a person without a
license from owner or registrar of copyrights or contravening conditions of a license does anything
the exclusive right to do which is the right of the owner as per the Act or permits for profit a place
to be used for communication of work to public where such communication constitutes
infringement of copyright in the work unless he was not aware and had no reasonable ground to
believe such communication will be infringement of copyright.
It also amounts to an infringement where a person makes for sale or hire or displays or offers for
sale , or distributes for trade or to prejudicially affect the owner of copyright or by way of trade
exhibit in public or import into India infringing copies of work( excluding one copy for personal
use of importer).

As registration is not compulsory , suits for infringement can be filed evenm if plaintiff has secured
no registration of the work.[8]. Civil remedies available to owner of copyright are also available to
exclusive licensee.[9] Electronic contracts are considered legally valid in most jurisdictions such
as India and electronic licensing or assignment is also legally valid.[10]
Fair dealing as a defense
Section 52(a) provides for exceptions to infringement termed as “ Fair dealing”.Fair dealing with
literary , dramatic , musicasl or artistic work ( not being a computer program) for purpose of
private use, including research , criticism, review, and as per Section 52 (b) for purpose of
reporting current events in a newspaper, magazine, or similar periodical, or by broadcasting or
cinematographic film or by means of photographs.As per Section 62 of Copyright Act, a suit or
civil proceeding will be filed for infringement of copyright in district court having jurisdiction to
hear the case. The jurisdiction under CPC will include place of residence where plaintiff resides
or carries on business or personally works for gain. Section 63 of the Copyright Act provides the
punishment for offence of copyright infringement. Any person who knowingly infringes or abets
the infringement of the copyright in a work or any other right conferred by the Act is punishable
with imprisonment for a term which shall not be less than six months but which may extend
to three years and fine which shall not be less than Rs. 50,000 but may extend to 2 lacs.

Copyright Issues in Cyberspace:

1. Linking –
It permits a Website user to visit another location on the Internet. By simply clicking on a word
or image on one Web page, the user can view another Web page elsewhere in the world, or simply
elsewhere on the same server as the original page.

Linking damages the rights or interests of the owner of the Linked webpage. It may create the
supposition that the two linked sites are the same and promote the same idea. In this way, the
linked sites can lose their income as it is often equal to the number of persons who visit their page.

2. Software Piracy –
Software piracy refers to the act of stealing software that is lawfully shielded. This stealing
comprises various actions like copying, spreading, altering, or trading the software. It also comes
under the Indian copyright act.

An example of software piracy is downloading a replica of Microsoft Word from any website other
than Microsoft to avoid paying for it as it is a paid software. Piracy can be of 3 types:

1. Soft lifting
2. Software Counterfeiting
3. Uploading-Downloading.

3. Cybersquatting –
Cybersquatting means unauthorized registration and use of Internet domain names that are
similar to any business’s trademarks, service marks, or company names. For example, let us
consider Xyz is a very famous company and the company hadn’t created a website yet. A
cybersquatter could buy xyz.com, looking to sell the domain to the company Xyz at a later date for
a profit. The domain name of a famous company can even be used to attract traffic and this traffic
will help cybersquatters earn a lot of money through advertising.

When more than one individual believes that they have the right to register a specific domain
name, then this can lead to a Domain Name Dispute. It arises when a registered trademark is
registered by another individual or organization who is not the owner of a trademark that is
registered.

Trademark Issues in Cyberspace :

Trademark means a mark capable of being depicted diagrammatically and which may distinguish
the products or services of one person from those of others and will embody the form of products,
their packaging, and combination of colors. A registered service mark represents a service.
Trademark infringement refers to the unlawful use of a trademark or service mark which can
cause ambiguity, fraud, or confusion about the actual company a product or service came from.
Trademark owners can take the help of the law if they believe their marks are being infringed.

CASE: Monkey selfie Case.

FACTS

◘ David Slater, wildlife photographer, visited the National Park, island North Sulawesi, Indonesia in July 2011. He left his camera
unattended in a troop of Celebes Crested Macaque living in a reserve of Indonesia island of Sulawesi. A seven year old monkey
named ‘Naruto’ came on his cam and took multiple photos of himself.
◘ In 2014, Slater published and sold a book via San Francisco based self publishing company Blurb, Inc named ‘wildlife
personalities’ containing some of Naruto’s selfies identifying himself as copyright owner of photographs. And ‘Monkey Selfie’
became a theme in Wikimania.
◘ The suit was filed in District Court of California in 2015 by PETA(People for Ethical Treatment of Animals) and Dr. Antje
Engelhardt, who studied the macaque monkeys on Naruto’s reserve, and has also kept the track of Naruto since birth, initiated the
suit as Next Friends of Naruto asserting copyright infringement on behalf of Naruto against David, Wildlife personalities Ltd, Blurb
Inc. For falsely claiming authorship of monkey’s selfie.
◘ In response, David filed motions putting forth that the animal lacks statutory standing and standing under Article III of United
States Copyright Act.
◘ In 2016, the District Court judge William Orrick III dismissed the case ruling that "if Congress and the president intended to take
the extraordinary step of authorising animals as well as people and legal entities to sue, they could, and should, have said so plainly”
Naruto as an animal and not a human, could not establish statutory standing under the Copyright Act and determined that it was
unnecessary to reach the question of Article III standing.
◘ Aggrieved by the decision, PETA and Dr. Antje Engelhardt appealed to the Ninth Circuit Court of Appeals U.S which has also
been set aside.

ISSUES

The primary issue in the case ‘Naruto vs David Slater’ is whether animals(non humans) can stand or sue for infringement of its
copyright work as humans? Or Can animal protected works be protected by Copyright Act 1976?
JUDGEMENT

The Ninth Circuit Court of Appeal U.S in the case ‘Naruto vs David Slater’ upholding the decision of the District Court, held that
Naruto (and all animals) lacks statutory standing to sue under U.S Copyright Act since they are not humans. It is ascertained that
the primary reason for dismissing PETA’s lawsuit lies in the language of the US Copyright Act i.e. the statutory interpretation of
the law.
◦ Firstly, the plain reading of the legislative text does not seem to suggest that animals could file a copyright infringement under
the statute. The legislature would have made it clear if it was intended so. Hence, in the absence of a clear language (expressing
that animals may sue), Naruto lacks standing to sue under the US Copyright Act.
◦ Secondly, the words found in the US Copyright Act, such as “children”, “legitimate”, and “widow”, – all seem to imply humanity
and exclude animals from the ambit of the copyright domain. Hence, the irresistible conclusion is that animals have no statutory
standing to sue under copyright law as they do not marry and inherit proprietary rights as humans do.
The Ninth Circuit Court has also repudiated the agreement made between the parties as Naruto was not a party to settlement.

CONCLUSION

The suit in ‘Naruto vs David Slater’ was an incredible attempt by Naruto(PETA on its behalf) which knocked the doors of court
for owning the rights to its own image(Monkey’s Selfie). The Ninth Circuit Court has shut the door closed by ruling that animals
have no locus standi to sue under copyright law. In this evolving world of Artificial Intelligence, this judgement will be lamplight
by putting a barricade to the non-human(animals or AI) generated works being copyrighted. As it has set the precedent that

CASE LAW 2: A&M Records, Inc. v. Napster Inc.

Facts:
Napster, a peer-to-peer file sharing platform, used a software called MusicShare, which facilitated the transmission of MP3 files
among users. Through this platform, users could search, make copies of, and transfer MP3 music files available on their own or
others’ computers. Enraged by this, prominent corporate music record companies like A&M Records, Sony Music Entertainment,
MCA Records, Warner Bros. Records and many others, including music publishers, sued Napster in the U.S. District Court, N.D.
California for vicarious and contributory copyright infringement. The record companies and the music publishers filed a joint
motion to preliminarily enjoin Napster from engaging in or assisting others in unauthorised copying, downloading, uploading,
transmitting, or distributing copyrighted music. The District Court found Napster guilty of copyright infringement and granted a
preliminary injunction against the company.
The U.S. Court of Appeals for the Ninth Circuit temporarily stayed the injunction and reviewed whether the District Court applied
the legal principles correctly while granting the injunction.

Issue:
Whether Napster is a direct, contributory, and vicarious copyright infringer?
Whether copying, transferring and downloading MP3 files on Napster qualify as ‘fair use’?
Analysis:
The Court of Appeals first looked into whether the record companies presented the prima facie case of direct copyright infringement
by considering two factors:
a) ownership of the allegedly infringed material; and
b) demonstration that the alleged infringers violate at least one exclusive right granted to copyright holders under 17 U.S. Code §
106.

The District Court was of the view that the record companies satisfied the above requirements, and the Court of Appeals affirmed
the same. It was proved that Napster violated at least two of their exclusive rights: the right of reproduction and distribution.
Next, the Court of Appeals determined whether Napster was guilty of contributory and vicarious copyright infringement. It agreed
with the District Court’s conclusion that Napster knowingly encourages and assists copyright infringement on its platform.
Moreover, Napster’s capability to locate the infringing works and its right to terminate access make the platform guilty of vicarious
infringement.
Secondly, the Court of Appeals analysed the District Court’s findings on Napster’s fair use defence as stated in 17 U.S. Code §
107. The District Court concluded that:
Downloading MP3 files does not make the work ‘transformative’.
The users were involved in the commercial use of the copyrighted materials, as repeated and exploitative copying of copyrighted
works, even if the copies are not offered for sale, may constitute commercial use.
The users engaged in ‘wholesale copying’ of the copyrighted works.
Napster reduced the sale of audio C.D.s and created barriers to the record companies’ entry into the market.
The Court of Appeals sided with the District Court and confirmed that Napster’s users could not be considered ‘fair users’.
However, the Court of Appeals was of the view that the injunction granted by the District Court was broad and must be modified
concerning contributory infringement. Thus, the Court of Appeals partly affirmed and partly reversed the injunction.
CASE 3: PIRATE BAY CASE.

Key Facts:
The Pirate Bay was founded in 2003 and quickly became one of the most prominent facilitators of peer-to-peer file sharing,
primarily using the BitTorrent protocol.
The website did not host copyrighted material directly but provided "torrent" files which allowed users to download copyrighted
media from each other's computers.
Legal Issues:
The main legal issue was whether the operators of The Pirate Bay were culpable for copyright infringement committed by its users,
given that the site facilitated the sharing of torrent files but did not host copyrighted content itself.
Proceedings:
eThe trial began on February 16, 2009, in Stockholm, Sweden.
The prosecution argued that by providing a platform for sharing torrent files, the operators of The Pirate Bay were complicit in and
facilitated the illegal sharing of copyrighted content.
The defense argued that The Pirate Bay did not host any copyrighted material directly and merely provided a service which could
be used for both legal and illegal purposes.
Outcome:
On April 17, 2009, the Stockholm District Court found all four defendants guilty of assisting in copyright infringement. They were
sentenced to one year in prison each and ordered to pay damages of 30 million SEK (approximately 3.6 million USD at the time).
The verdict was appealed, and in 2010, the Swedish Court of Appeals upheld the convictions but adjusted the prison sentences and
increased the damages to 46 million SEK.
Significance:
The case was landmark in the realm of internet law, highlighting the complexities and challenges of applying traditional copyright
laws to internet-based technologies.
It prompted significant discussion and debate about copyright, the legality of file sharing, and the responsibilities of service
providers facilitating potentially infringing activities.
Aftermath:
Despite the legal battles and the shutdown attempts, The Pirate Bay continued to operate and remained a central figure in discussions
about copyright and internet regulation.
The case has had a lasting impact on the ongoing global debate over copyright enforcement in the digital age, influencing laws and
policies in various jurisdictions.

TRADE MARK ACT.

A. INTRODUCTION TO TRADEMARK LAW

What is a Trademark?
Trademark is a branch of intellectual property rights. Intellectual property rights permit people to maintain ownership rights of
their innovative product and creative activity
A trademark includes a name, word, or sign that differentiates goods from the goods of other enterprises. Marketing of goods or
services by the procedure becomes much easier with a trademark because recognition of product with the trademark is assured and
easier. The owner can prevent the use of his mark or sign by another competitor.
Trademark is a marketing tool which increases financing of the business. A trademark is not always a brand but the brand is always
is a trademark. Sometimes there is a confusion between trademark and brand. The brand name can be simply a symbol or logo but
the trademark is a distinguishing sign or indicator in a business organization as it has a wider implication than brands. People are
more influenced by the distinctive trademark that reflects the quality of the product. A trademark can be a logo, picture mark or a
slogan.
According to the Section 2(1)(m) of the Trade Mark Act, 1999: “mark” includes a
device, brand, heading, label, ticket, name, signature, word, letters, numerals,
shape of goods, packaging or combination of colours or any combination thereof.
What are the differences between ‘TM’ and ‘R’?
The differences between ‘TM’ and ‘R’ are as follows-:

Sr No.
Trademark (TM)
Registered (R)
1.It is applicable everywhere.
Only the countries where you have successfully registered your trademarks may utilize them.
2.It doesn’t offer any legal protection or rights.
Registered trademarks offer total security and protection.
3.Utilizing TM symbols prior to trademark registration is not prohibited.
Use of the ® symbol prior to trademark registration is prohibited.
4.You must apply for trademark registration to protect your brand.
You won’t need to submit a new application for any additional registration To protect your brand.
5.It doesn’t provide any unique advantages.
It increases the credibility of your company and provides various other advantages.
Conclusion
A trademark symbol(TM) is used when a trademark application is registered with the trademark
registration, which was established in 1940. It merely means that one asserts ownership of the brand. It is
a mark that indicates one intends to utilize a trademark, to put it simply. However, in India, the R symbol
can only be used by the owner of a registered trademark. The trademark’s registration status is shown by
the R symbol. As a result, it is protected from all sorts of violation. It is managed according to the Trade
Marks Law.

Trademark law in India

Before 1940 there was no law on trademarks in India. A number of problems of infringement of registered
and unregistered trademark arose which were resolved under Section 54 of the Specific Relief Act,
1877 and registration was adjudicated under the Indian Registration Act,1908. To overcome these
difficulties, the Indian Trademark law was enforced in 1940. After the enforcement of the trademark law,
demand for protection of trademarks increased as there was major growth in trade and commerce.
The Trademark law was replaced with the Trademark and Merchandise Act, 1958. It provides better
protection of trademark and prevents misuse or fraudulent use of marks on merchandise. The Act provides
registration of the trademark so that the owner of the trademark may get a legal right for its exclusive use.
This previous Act got replaced with the Trademark Act, 1999 by the government of India by complying it
with TRIPS (Trade-related aspects of intellectual property rights) obligation recommended by the World
Trade Organization. The aim of the Trademark Act is to grant protection to the users of trademark and
direct the conditions on the property and also provide legal remedies for the implementation of trademark
rights.
The Trademark Act, 1999 gives the right to the police to arrest in cases of infringement of the trademark.
The Act gives a complete definition for the term infringement which is frequently used. In Trademark Act,
it provides punishments and penalties for the offenders. It also increases the time duration of registration
and also registration of a non-traditional trademark.

Well-Known Trademarks in India

The Registrar of Trade Marks maintains a list of famous trademark in India. This list includes both Indian
and foreign trademarks. Some of the well-known marks in India include:
Amul
Coca-Cola
Bisleri
Google
Pepsi
Nestle
McDonald’s
Samsung
LG

Criteria for Determining Famous Trademark

The Indian Trademarks Act provides several factors that can be considered when determining whether a
trademark is well-known, including:
The degree of knowledge or recognition of the mark in the relevant section of the public in India
The duration, extent, and geographical area of any use of the mark in India
The duration, extent, and geographical area of any promotion of the mark in India
The degree of inherent or acquired distinctiveness of the mark
The extent to which the mark has been registered in India or in other countries.

REGISTRATION OF TRADEMARK

To understand the registration of a trademark under the Indian Trademark Act of 1999,
focusing on Sections 5-8, let's break down these sections:

Section 5: Conflicts between Trademarks and Geographical Indications

Section 5 addresses issues where there is a conflict between trademarks and

geographical indications. Geographical indications (GIs) are signs used on products
that have a specific geographical origin and possess qualities, a reputation, or
characteristics that are essentially attributable to that place of origin (e.g., Darjeeling
tea).

It stipulates that a trademark which is identical or similar to a GI not originating from

that region cannot be registered if it is likely to deceive or cause confusion.

Section 6: Keeping and maintaining the register of trademarks

This section outlines the duties and responsibilities related to the maintenance of the
Register of Trademarks. The Register is maintained electronically, and includes the
registration of all trademarks and pertinent details such as the class of goods/services,
the name and address of the owner, notifications of assignment and transmission, etc.

The Register is divided into two parts: Part A for trademarks whose registration is
complete, and Part B for trademarks whose registration is pending due to some
conditions or limitations.

Section 7: Classification of goods and services

Section 7 specifies the classification under which trademarks are to be registered. India
follows the international classification of goods and services as provided by the Nice
Classification.

Applicants must specify the particular class(es) of goods or services for which they seek
trademark registration, ensuring that the trademark is registered under the
appropriate class to avoid any confusion or overlap.

Section 8: Statement as to use of the mark

When applying for trademark registration, the applicant must submit a statement
regarding the use of the mark. This involves declaring whether the mark is already in
use or if it is intended to be used in the future.

If the trademark has been in use, the applicant should specify the date from which the
mark has been continuously used. If the mark is intended for future use, this should
also be clearly stated in the application.

In summary, registering a trademark in India involves ensuring there are no conflicts

with geographical indications, properly maintaining registration records, classifying
goods and services accurately, and providing a clear statement regarding the use of the
trademark. These requirements help safeguard the rights of trademark owners and
ensure clarity and fairness in the registration process.

Grounds for refusal of a Trademark Registration

Absolute Grounds
Section 9 of the Trademark Act of 1999 discusses the absolute grounds for refusing to
register a trademark. Any trademark that falls within the scope of this act is ineligible
for registration. The following is a list of trademarks that fall under this category.

1. A trademark that lacks distinctive character cannot be registered.

 2. Trademarks are indications or marks that are used in commerce to define the
quantity, quality, type, values, intended purpose, or geographical origin of
goods or services rendered.
3. Trademarks that exclusively enclose indications or marks that have become
common in established trade practices.
4. Trademarks that cause confusion in the public domain.
5. Trademarks that are sensitive and have the potential to interfere with the
religious sensibilities of any class of Indian citizens.
6. Trademarks containing obscene or scandalous content.
7. If the use of a trademark is prohibited by the Emblems and Names (Prevention
of Improper Use) Act of 1950.
8. Trademarks consisting of marks resulting from the nature of the goods
themselves.
9. Trademarks enclose marks that add significant value to the goods.
10. Trademarks are marks of the shape that adds significant value to the goods.

Important Note: The Act includes an exception for the first three points. According to
the act, a trademark that falls under the regime of the first three points will be denied
registration unless the trademark possesses certain characteristics such as novelty and
distinctiveness.

Relative Grounds for Trademark Registration Refusal in India

Section 11 of the Trademark Act clarified the reasons for refusal of trademark
registration. The section contains an exception regarding the grounds for refusal. If the
exceptions are met, the trademark can be registered under this section.

Key aspects of relative grounds of objection include:

1. Similarity: The applied-for mark should not be similar to an existing
registered or pending mark in the same or related class of goods or services.
The similarity may pertain to visual, phonetic, or conceptual aspects.
2. Likelihood of Confusion: The key consideration is whether the average
consumer would be confused or mistaken by the presence of two similar
marks.
3. Prior use of Trademark: If a third party can demonstrate prior use and
reputation of a similar mark, they may raise an objection based on their prior
rights.
4. Well-Known Marks: Protection may be extended to well-known marks,
even if they are not registered in a specific jurisdiction, to prevent dilution or
unfair advantage.
When applying for trademark registration, it is essential to navigate through
the absolute and relative grounds of objection to ensure that your trademark
is eligible for protection. The absolute and relative grounds are criteria used
by trademark registries to evaluate the distinctiveness and uniqueness of a
mark. Understanding these grounds is crucial for a successful trademark
registration process.

CASE: The case of Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Marks and
Anr. (Simla case)involved a legal battle concerning trademark registration and revolves
around the broader principles of trademark law, particularly in relation to the
distinctiveness and deceptiveness of a trademark. Below is a brief summary of the case:
Facts:
Imperial Tobacco Company of India Limited sought to register a trademark for
their product. The Registrar of Trade Marks, however, rejected the application on
the grounds that the trademark was not distinctive enough and could potentially
deceive or cause confusion among the public.
Issue:
The primary legal issue was whether the trademark applied for by Imperial
Tobacco was sufficiently distinctive and non-deceptive to qualify for registration
under the Trade Marks Act.
Decision:
The Calcutta High Court ruled in favor of the Registrar of Trade Marks, upholding
the decision to refuse the trademark registration.
Reasoning:
The court held that the trademark lacked the necessary distinctiveness required
under the law. Furthermore, there was a concern that the trademark could
mislead the public or cause confusion, which is a ground for refusal under the
Trade Marks Act.
Significance:
This case highlights important aspects of trademark law, particularly the need for
a mark to be distinctive and not deceptive. The judgment underscores the
protective purpose of trademark laws, which aim to prevent the public from being
misled and to protect the rights of other businesses and the integrity of
established trademarks.
Legal Principles:
Distinctiveness: A trademark must be distinctive enough to be recognized by the
public as identifying the goods or services of a particular trader and
distinguishing them from those of others.
Deceptiveness and Confusion: If a trademark is likely to deceive the public or
cause confusion about the origin or other aspects of a product, it is not eligible for
registration.
This case serves as a useful reference for understanding the criteria for trademark
registration and the balance the law seeks to maintain between business interests
and consumer protection.
Case: EAST MAN PHOTOGRAPHIC MATERIAL V.CONTROLLER GENERAL OF
PATENT AND DESIGNS ( SOLIO Case)

The Comptroller-General of Patents, Designs, and Trade Marks, having refused

to register "Solio" as a trade-mark in respect of photographic paper, because
that the mark proposed did not consist of any of the essential particulars
required as a condition of the registration of a new trade-mark, the appellants
appealed to the Board of Trade, who referred the appeal to the Court. Kekewich J
held that the application had been rightly refused, and his judgment was upheld
by the Court of Appeal, The ground upon which the Courts proceeded was that
the word "Solio" had reference to the character or quality of the goods, and was
therefore incapable of registration. Those learned judges being of opinion that
"Solio" suggested "Sol," the sun, and therefore had "reference to the character
or quality of the goods"

Issues,

Whether an "invented word" cannot be registered as a trade-mark if it "has any

reference to the character or quality of the goods.

Whether paragraphs (d) and (e) of S.10 of Patents, Designs, and Trade Marks Act
were independent of each other,

Held.

A word which is "an invented word" within the meaning of clause (d), may be
registered as a trade-mark, although it "has reference to the character or quality
of the goods" within clause (e). Clauses (d) and (e) are independent of each
other..

The word "Solio" held to be capable of registration as a trade-mark under class

39 in respect of photographic paper, and the decision of the Court of Appeal
reversed.

The court gave 5 guidelines in relation to invented word.

 1. The Quantum of invention not material
2. Word should have meaning
3. Appearance of invention is not sufficient.
4. Word must be taken as complete in pronouncing.
5. Nobility is not sufficient by making up words.

CASE:3 NR DONGRE V. WHIRLPOOL CORP LTD .

The case is related to the re-use of a trademark which is already attached to the goodwill and
reputation of an entity.

Facts
• The Plaintiffs originally registered the "WHIRLPOOL" trademark for their electrical
appliances, including washing machines, found that the Defendants later began using
the same trademark for their washing machines.
• Furthermore, the Defendants managed to register this mark in their own name.
• In response, the Plaintiffs filed an original lawsuit against the Defendants, alleging a
passing-off action.
• The Single Judge of the Delhi High Court issued an interim injunction, preventing the
Defendants from using the trademark until the final resolution of the case.
o This decision was upheld by the Division Bench.
• The defendant then filed an appeal before the Supreme Court for interim injunction.

Issues Involved
• Whether a non-registered prior user of a trademark can obtain an injunction against a
competing business that is the registered proprietor of the same or similar trademark in
India?
• Whether Whirlpool was a well-known mark and had acquired a trans-border reputation?

Observation
1.The Delhi HC's Single Judge and Division Bench both favored Whirlpool Corporation.
2. The Whirlpool Corporation secured a temporary injunction due to presented documents
affirming prior use.
3. The Division Bench upheld this decision, emphasizing the petitioner's extensive pre-
existing trademark use.
4. Evidence of widespread advertisements in publications supported the conclusion
that 'Whirlpool' attained recognition and goodwill in India.
 5. The Division Bench asserted that a trademark could extend beyond geographical
boundaries through both importation and advertising.
6. At the SC, the defendants, claiming registered ownership, argued for maintaining their
trademark status as it is, during the passing-off action.
7. However, the Supreme Court disagreed, noting irreparable harm to Whirlpool
Corporations reputation and goodwill, given the long association of 'Whirlpool' with
their products.

Conclusion
•Finding no compelling reasons to overturn the Delhi HC's decision, the SC ruled in favor of
Whirlpool Corporation.

Section 12 of The Trade Marks Act, 1999: Registration in the case of

honest concurrent
If the Registrar believes there are good reasons, like when different owners
have been using the same or similar trademarks honestly at the same time, or
in other special cases, he can allow multiple owners to register the same or
similar trademarks for the same or similar products or services. However, he
may add certain conditions or restrictions as he sees fit.
Explanation using Example

Imagine two companies, "FreshBake Ltd." and "BakeFresh Inc.", both operating independently
in different regions of a country for several years. They both use similar logos for their
businesses, which involve selling bakery products. However, neither company was aware of the
other's existence or their similar logos due to their distinct geographical operations. Now, both
companies decide to expand nationwide and apply for trademark registration of their logos. The
Registrar, upon noticing the similarity, could invoke Section 12 of The Trade Marks Act, 1999.
Given the honest concurrent use of the similar logos by both companies, the Registrar may
permit the registration of the similar trademarks for both companies. However, this may come
with certain conditions or limitations, such as geographical restrictions, to prevent consumer
confusion.

Registration of Geographical Indication as a Trade

Mark
Geographical indicators cannot be registered as trade marks by the Registrar of Trade Marks
because they could mislead or confuse people regarding the genuine location of origin. The
Geographical Indication Act of 1999, Section 25, renders a trade mark’s registration void suo
moto or upon the request of a concerned person. This Act’s Section 25 forbids anybody from
using a public property that is in the form of a geographical indicator as a trade mark that could
cause confusion in the marketplace.

However, trademarks comprising geographical indications that have been legitimately applied
for or registered prior to the effective date of this Act are protected under Section 26 of the
Geographical Indication Act, 1999.

In the case of Tata Groups Mount Everest Mineral Water Ltd. v. Bisleri, Mount Everest
Mineral Water (2010), the registered owner of the trade mark “Himalaya”, asked the Delhi High
Court to issue an interim injunction prohibiting Bisleri from using the mark on its packaging.

Bisleri submitted a request to the Intellectual Property Appellate Board to have the Himalaya
trade mark registration revoked. Because the Geographical Indication Act prohibits any private
entity from registering a geographical term as a trade mark and the word “Himalaya” refers to a
mountain range, Bisleri argued that it cannot be registered as a trade mark.

The Intellectual Property Appellate Board stated in its ruling that there would be a requirement
placed on registration, stating that it does not grant the sole right to use the word “Himalayan”
or the device depicting a mountain and that the term should only be applied to water that
originates from the Himalayan mountain. The highest authority, the Intellectual Property
Appellate Board, stated that no corporation is granted the exclusive right to use the term
“Himalayan” as a trade mark for its products just because it was registered.

Why should private entities be given a GI tag?

However, it can be argued that private entities should be granted a GI tag in cases where they
can prove that they represent the interests of the producers. Applications where a private entity
proves beyond reasonable doubt that they have the support of the producers and the benefits
from the tag would be shared with the producers in concern, should be considered. This would
be especially helpful in cases where the producers are reluctant or unable to deal with the
paperwork required for forming the organization and applying for a GI. Although this would act
as a precedent for other private entities to try and misuse the GI label for their own benefits,
inclusion of special provisions in the Act by way of periodic checks can prevent this.

DIFFERENCE BETWEEN INFRINGEMENT AND PASSING OFF

UNDER TRADEMARK ACT

Infringement:
Section 29 of the Trademark Act-1999 talks about various aspects related to infringement as
given in S.29(1) that a registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of trade, a mark which
is identical with, or deceptively similar to, the trade mark in relation to goods or services in
respect of which the trade mark is registered and in such manner as to render the use of the
mark likely to be taken as being used as a trade mark.
Other subsections describes that in course of the use of the trademark it is said to be infringing
the rights of other company due to use of similar or identical trademark using for marketing of
similar kind of goods and services or use of identical or deceptively similar trademark for any
other kind of goods and services. It is further given in the Sub Section (9) of this section that the
infringement can also be done by the spoken use of those words as well as by their visual
representation.

Passing Off:
The specific description of passing off is not given in the trademark act but the courts have
drawn its meaning from common law that if the infringement of trademark done in such a
manner where the mark is not only deceptively similar to the trademark of other company but
also creating confusion for the customers, which ultimately results in damage for business of the
company.
The Supreme Court defined the difference between infringement and
passing off in the case of Durga Dutt vs. Navaratna
Pharmaceutical (1960)

Differences between Passing Off and Infringement:

They are slightly different to each other:
· Statutory remedy is available for infringement whereas the action for passing off is a common
law remedy.

· For infringement it is necessary only to establish that the infringing mark is identical or
deceptively similar to the registered mark but in the case of a passing off action, the need is to
prove that the marks are identical or deceptively similar which is likely to deceive or cause
confusion and damage to the business of the company.

· When a trademark is registered, registration is given only with regard to a particular category
of goods and hence protection can be given only to these goods and action of infringement
would be taken but in a passing off action, the defendant’s goods need not be the same, they may
be related or even different.

Bata versus Bata

In the 1980's Bata, the shoemaker company filed for trademark infringement
against a company for using the same brand name, which sold foam materials.
The court questioned the latter that a customer coming to purchase shoes
would not inquire if a product were being made by the shoemaker BATA.

As a result, even though both companies operated in distinct commercial

realms, Bata, the shoemaker, won the case.
Paypal versus PayTM
Both these companies provide digital payment gateways to their customers.
Both Paypal and Paytm target the same audience in the Indian market. But
Paytm is far more popular than Paypal in the Indian market.

Paytm is used by the masses, whereas Paypal is an internationally recognized

brand whose operations in India are limited to eBay shoppers, forex investors,
crypto enthusiasts, and some IT software professionals who regularly transact
with the global world.

Paypal's cause of worry is that if Paytm finds its place in the global market, then
Paypal will lose its position and business in the global marketplace. Fearing this,
in 2016, Paypal filed for trademark infringement against Paytm for using its logo
and having this homogeneity with each other's brand name.

In their trademark infringement lawsuit filed in the Indian trademark office,

Paypal accused Paytm of using the same two-tone color scheme as theirs. This
case is still going on and may take several years to get the final verdict.

CASE : RENAISSANCE VS.SAI RENAISSANCE

Facts
The Appellant, proprietor and holder of the trademark ‘RENAISSANCE’, had filed a suit against the
Respondents for a permanent injunction against the use of the allegedly infringing trademark ‘SAI
RENAISSANCE’, as well as any other mark identical to the Respondents’ mark, ‘RENAISSANCE’.
The Appellant discovered two hotels being run by the Respondents, in Bangalore and Puttaparthi,
and noted that it copied the style, signage, and the word ‘RENAISSANCE’.

The Respondents’ countered the claim stating that the term ‘RENAISSANCE’ was a generic word
used widely, and the use of it by the Appellant had not gathered reputation. The Respondents also
asserted their obliviousness to the fact that the mark was under use by the Appellant. The Trial
Court held the Respondents’ mark to be infringing, and granted an injunction against its use by the
Respondents, but denied the Appellant’s claim for damages.

The Respondents filed an appeal before the High Court, against the lower court’s decision. The High
Court observed that the Appellant provided no evidence of a trans-border reputation for its mark, of
any damage caused to its reputation or distinction of the mark, or of any unfair advantage taken by
the Respondents. The High Court did not see any infringement, and allowed the appeal. Aggrieved
by the same, the Appellant approached the Supreme Court.
Issue
The issue before the Apex Court was to consider whether the decision of the High Court in
overturning the decision of the Trial Court, and holding there to be no infringement of the Appellant’s
trademark was valid.

Conclusion
The Apex Court came to the conclusion that the High Court had erred in its interpretation of the test
laid down under S.29(4) of the Act, as it had not taken into account the other applicable provisions of
S.29(4), as well as other provisions which covered the circumstances of the case herein. The Apex
Court overturned the order of the High Court, and upheld that the order delivered by the Trial Court
as well-reasoned.

EXCeption to INFRIENGEMENT

Available Defences

• Fair Use
In order to plead this defence successfully, the accused infringer will have to prove
that he had obtained the consent of the trademark owner or establish that he acted
without any intention to defraud the consumers of the goods.
There are two types of fair use:
Descriptive fair use
This refers to a situation where a mark has been used in good faith, primarily for a
descriptive purpose rather than in order to refer to a specific mark or product.
Nominative fair use
This refers to the situation where a mark is incorporated in order to refer to the
registered proprietor’s product and not for the user’s product. This is justified where
the use of the mark is necessary in order to facilitate identification of the product.

Remedies for trademark infringement

•Injunction by prohibition of use of the infringing mark.

•Injunction by cancellation of the registration, if the mark has been
registered.
• Damages (may include punitive damages) or account of profits.
• Costs towards legal fees.
In order for a court to award compensatory as well as punitive damages, proof of
deception and intention of the infringer to infringe the plaintiff’s trademark must be
established17.