Professional Documents
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Aw of Ntellectual Roperty Ights
Aw of Ntellectual Roperty Ights
Academic texts are priced high because nobody purchases them. Photocopying is an exception.
Courts have accepted in. Actionable passing off is essentially passing off only if the potential
infringer was in a position to cause damage.
Another angle on the consumer perspective on the need for IP is that when you think of access
to information or knowledge, then in that scenario, you are not concerned about the economic
benefit. You focus upon your interest i.e., access.
For example, books. The perspective of readers and collectors are different. As a reader, the priority
is content.
Piracy is usually seen in the context of access to information as well. Access is something in which
state has a direct responsibility. When you consider the policy of education, for example, they need
to have access to the latest books. The state has to provide some kind of balance so as to make
the interest of the IP holder in balance with the interest of the readers.
US FTA brought a case against Brown Williamson that makes Marlborough. When these
companies were selling cigarettes, they set up a scientific panel to look into the effects of cigarettes.
The panel reports clearly mentioned the ill effects of smoking. Nobody argued against these facts.
By this time, the effect of tobacco was everywhere. The consumption of it is so much that
governments cannot stop it. It is not like heroin or cocaine that is not as present.
Australia has introduced something known as plain packaging. A country in Africa wanted to
introduce a ban on tobacco.
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Article 6 of the TRIPS Agreement provides for a very important flexibility. This flexibility allows
member states to put in place a system of exhaustion that best suits their policy objectives. Article 6 of TRIPS Agreement
For instance, India promotes international exhaustion in its Patent Act.
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In 1961, the Rome Convention came. They were providing copyright protection for works – both
authors and producers of films. All the producer is signing the checks. But Bern Convention refers
to him as author. Why?
The basic justification if not for them, there would be no film. There were phonogram or sound
producers who said that if film producers are authors, they should be too. Another set of
stakeholders were broadcasters. Among the stakeholders were performers like singers, dancers etc.
The difference is that authors and their books could reach different parts of the world very easily.
The only way an audience could listen to a singer sing was if the singer would travel or if they are
recorded. They realised that a certain percentage of money should come to them.
The Rome Convention in 1961, tried to introduce a uniform framework for performer’s rights,
broadcasters etc. The fact that these international instruments were in place need not be aligned
with the policy of different countries. Countries like India, for example, had no reason to be a part
of these conventions. The fact that this was completely optional for countries, there was a
requirement felt by countries that were looking to promote stronger IP regulation.
What changed was that under these fora, you were focused on one set of laws. Under the GATT,
you were focused on different sectors. During the Uruguay rounds, it opened up more scope for
negotiations. There were some additional categories that were introduced.
For instance, a category on undisclosed information or trade secrets, IC (integrated circuit) layouts.
There was a very controversial type of IP i.e., plant variety protection.
There were many reasons for failure such as no enforcement mechanism like that of GATT.
We need to tackle the question whether this blank canvas should be protected by intellectual
property or not?
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In the Bern Convention, it was mentioned that it was upto member states to decide if fixation
should be attached to some things. For some things, it is obvious like a sound recording. India
made a decision to stray away from requirement of music because our system is different from
western graphical notations.
Artistic work definition is not there but examples are there like paintings, sculptures etc. A
qualification is that they need not possess artistic qualities. It is extremely subjective and brings in
complicated questions. A blank canvas cannot fit into the definition of painting or drawing. If
there are 10 blank canvases in a room with one of them having a blank canvas with the artist’s
name, there is clear differentiation because of the story he has created. Something as simple as a
dot or a white paint can satisfy the requirement of fixation.
Another example is in a European country, a sculptor was asked to create a sculpture to be placed
in intersection roads. He made a huge potato, and it was placed on the roads.
It is possible for a blank canvas to qualify for intellectual property.
If expression is established, we move into the next step of originality, which is subjective. If there
is fixation required by a country, then it will be expression + fixation + originality. A blank canvas
is not something that can claim protection in the USA because there is no fixation. Indian law is
unclear regarding this. So, it is possible.
The US interpretation addresses a significant question that arises i.e., the duration of fixation.
Fixation is prima facie evidence of the origin of the work. The moment there is evidence of idea on
a form. Western notion of music is closely connected to graphical notations. Cultural context also
matters. For India, it does not make sense. The moment you reduce an expression into a tangible
form, there is concrete proof of existence.
Intellectual property not only covers same things but also similar things. Your contributions need
to go beyond the existing corpus and must go to the point where you feel like you have made an
original contribution. Demand by itself does not really explain whether IPR incentivises a person
to create a work.
For example, in our population, there are just 2 people suffering from a life-threatening disease. No
pharmaceutical company would invest in R&D to make a drug for them. They can compensate by
generating a revenue on other streams of income. In this scenario, the government will have to
step in. The demand is extremely low. The cure they found should come under IP protection.
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Trademarks
Trademark essentially helps you distinguish a particular good or service in the market. Consumer
preference is central to trademarks. Here, the question of human interference is not of
consideration.
For example, nobody considers who created a particular logo.
Policy consideration is important though. The aspect of public domain is also applicable.
For example, public order.
As for public order, the example is of generic marks. A good example is apple for electronics. If it
was used for fruits, it would be a problem. Generic marks could be a term that has dictionary
meaning.
For example, cello tape. Cello is the brand. But now it is used to refer to tape itself. Another example
is band-aid.
Too much popularity can be detrimental to the company. It enters public domain, and it cannot
serve the basic purpose of trademarks i.e., distinguishability. At the point of genericization, this
happens.
Copyright
Here, the idea of human intervention is included. Even for computer generated works, it is the
programmer who is given copyright over that work. Works in public domain are outside the scope
of copyright protection. It can have copyright protection if the collection has been made creatively.
If something is in public domain, you can sell it.
For example, judgements, bare acts directly from government website.
An exception in our Copyright Act, in a scenario where a particular legislation is not available in a
particular language, you can make your own version and translate and sell it with a caveat that this
is not an official translation.
Indian kanoon can be an example of public domain.
Directors and the art of directing is an excluded subject matter in India. In India, the only author
recognised for a film is a producer. In the Europe, they consider directors and producers to be co-
creators.
If you create specific categories of subject matter in Copyright like literary work, there is no
category where a director fits. There was a matter that came up before the Punjab High Court
where the HC considered the work of directors as equivalent as work of artistic craftsmanship.
They tried broadening the horizon.
Another reason is that if the director is granted an equal partnership in the film, that itself would
be a disincentive to the producer. The money is flowing only from one source that is the producer.
If the film doesn’t do well, the director takes a major hit but as far as that film is concerned, his
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film is based on nothing. Producer takes the entire risk. In Europe, they consider it a conflict of
policy between economics and IP. In India, it is a policy preference.
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Another way designs can be protected is under utility models. If the threshold for patent is too
high to meet, you try to bring it under utility model.
Article 25 of the TRIPS Agreement talks about protection for designs. It is not limited to a
particular type of production. They do not say that we need to have a sui generis design system in
our country. The reason why this is so flexible, and states have discretion is because it is very
difficult to define designs. In copyright, an overlap exists with respect to artistic works.
For example, a piece of pottery that has visual appeal can very well be an artistic work.
You purchase it on visual appeal and not on the basis of how much water it holds. Severability is
essential here i.e., you are able to sever functional aspect with the aesthetic aspect.
Another important consideration here is that if the predominant purpose of the creation of the
design is industrial sale, then it is ideally registered under the Designs Act. Industrial sale refers to
mass production. If it is not there, then copyright.
There is a classic case of Popeye the Sailor Man. It is a popular cartoon. It was being used for
merchandising. This question arose that now that Popeye is being used industrially, is it not under
any kind of copyright protection? It is a longer duration that extends to the life of the author +
another 50/60 years depending on jurisdiction. Design is 15 years. This case was in the year 1960s.
In that case, the court said that artists created it as a piece of art.
With respect to designs, it is incorporated into an article, whereas artist work isn’t. The work of
artisan craftmanship is to make small sales. Because creativity is low in designs, you are looking to
make profit off larger sales. Whereas, for artisan craftsmanship, the creativity is high and sales are
small.
For example, a curtain is not purchased for artistic value. But works of artistic craftsmanship is
purchased for artistic value.
Countries like USA realised that this would be unfair. They have something like design patent in
place that considers both design and functional appeal.
This has two parts; first, capacity of being registered, and second, cessation on quantum of
reproduction.
1. How do we define capacity? The purpose of creation will decide capacity.
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2. Upon reaching 50, it is industrial production. Below that, there is copyright protection.
Going beyond this limit would entail a cessation.
India does not have a system to protect utility models.
Article 39 of TRIPS
There are two aspects of intellectual property:
- The creativity of making that recipe
- The effort in keeping it secret
Coca cola is a good example of trade secrets. Pre- 1994, this was not espoused as a subject matter.
The justification makes sense as it justifies the risk that the person is willing to take in keeping the
information secret.
got access of a picture of hers that was taken, and she posted on Instagram. She took it
down later. Photographer cited copyright infringement. This matter did not eventually
reach fruition because the photographer did not register his copyright. That is a
requirement in US, unlike India where it is not needed to register. In India, copyright angle
would probably prevail.
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Social Welfare Theory: society would want to protect those subject matters that are forwarding
a just and equal society [Willam Fischer].
Personality Theory looks at IP creation as an extenison of a person's personality. This is mostly
used in terms of a Copyright. Like, the creator transfers some part of him/her to that specific
work. The theory posits such is the inherent connection of the artist of this work that it is the
extension of him and must be controlled by him.
One basic flaw is that anyone copying a work will claim that some part of that person is also in
that work; this may also justify protection of copied works (thereby incentivising copying).
Again, the basic premise here is that no one justification sufficies as valid justification. IP rights
are those granted by statutes.
Copyright
Sec 14 Copyright Act:
For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or
authorise the doing of any of the following acts in respect of a work or any substantial part thereof [...]. [This is
literally seen as rights to authorise or to do something. It reflects a bundle of rights.]
Six Types of Works
1. Artistic Work
Sec 2(c)(i)
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph,
whether or not any such work possesses artistic quality; [...] (emphasis supplied) [This means the work
need not qualify some threshold. But the person will need to prove that it is original work.]
Sec 2(c)(ii)
(ii) an 5[work of architectural]; [...] [This has to be read with Sec 2(b) which states that a work of
architecture “means any building or structure having an artistic character or design, or
any model for such building or structure”]
Sec 2(c)(iii)
(iii) any other work of artistic craftsmanship. [No functional consideration comes within the ambit
of Copyright protection. For example, Pottery, which is both an artistic work and a product
with functionality, the latter (i.e., functional consideration) is severed.]
Sec 2 (p)
“musical work” means a work consisting of music and includes any graphical notation of such work but does not
include any words or any action intended to be sung, spoken or performed with the music.[Muscial work can
either be through graphic notation or through pefromance. This does not include the lyrics
that accompany it, the same has separate copyright. Because the performance = musical
work + literary work. The sound recording has authors of its own, can be independent to
the author of the lyrics.]
Author gives the sound recorded a limited amount of rights. For example, if some foundational
music exists in a particular sound recording (over which the producer has the rights), the producer
cannot take protection over such foundational sound (but only that sound recording) because the
author still has rights over it.
Read with Sec 2 (ff)
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(ff) “communication to the public” means making any work or performance available for beingseen
or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other
than by issuing physical copies of it, whether a simultaneously or at places and times chosen
individually, regardless of whether any member of the public actually sees, hears or otherwise enjoys
the work or performance so made available.
Explanation.—For the purposes of this clause, communication through satellite or cable or any
other means of simultaneous communication to more than one household or place of residence
including residential rooms of any hotel or hostel shall be deemed to be communication to the
public.
Bright Tunes Music Operation v. Harrisongs Music (1976). One portion of the judgment was very
complex, the court went into in-depth discussion on different types and amount of repetions. It is
an important norm in Copyright that although intentional copying is (obviously) an infringement,
subconscious copying is also an infringement.
Another matter concerned the song Levitating.
Sound recording are necessarily fixated. The sound used has nothing to do with music. Any noise
can be a sound. Sound is a broader umbrella.
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