EXAM CAPSULE LED Intellectual Property Rights Law - II

EXAM CAPSULE
Prepared by Law Exam Destination (LED)

(DU LLB semester exam material)
Subject – Intellectual Property Rights Law- II
Ahmad Khan
History Honours, JMI
M.A. History, HCU (NET Qualified)
LLB, DU
Shweta Suman
Zoology Honours, MU
LLB, DU
No part of this book can be reproduced or transmitted in any form or by any means, without prior
permission of the authors.
1
Preface
2
Topic – 1 (Copyright Law)
(Principal Reading)
Subject Matter of Copyright
Case - Donoghue v Allied Newpapers Ltd., (1937)

Fact - Entire material was supplied by Donoghue to Felstead, who was a journalist. The material
was in fact, his experiences which he shared with Felstead for the purpose of writing article for a
newspaper.
Mr. Donoghue was interviewed about his adventures, which were subsequently used by a
professional journalist S. T. Felstead. The series of articles published were called "Steve
Donoghue’s Racing Secrets, Enthralling Stories of the Sport of Kings", and all articles were
approved by Mr. Donoghue prior to publishing. Mr. Felstead wanted to further use the material
which was published in these articles by writing a new piece titled "My Racing Secrets, By Steve
Donoghue" to be published in the newspaper Guides and Ideas, which used condensed parts from
the older articles, effectively creating a new work. Mr. Donoghue did not consent to the
publication of new works, yet when the piece was published in the newspaper, Mr. Donoghue
took action to prevent any further publications of such articles.
Issue - Whether Donoghue has claim over the copyright as joint author?
Observation & Judgement:

➢ Farwell J. held that: If the idea, however brilliant and however clever it may be, is
nothing more than an idea, and is not put into any form of words, or any form of
expression such as a picture or a play, then there is no such thing as copyright at all.
➢ It is not, until it is reduced into writing, or into some tangible form, that you get any right
to copyright at all, and the copyright exists in the particular form of language in which,
or, in the case of a picture, in the particular form of the picture by which, the information
or the idea is conveyed to those who are intended to read it or to look at it.
➢ Normally, it is not difficult to decide as to who is the author of the work, but sometimes
problem may arise. Thus, where a person merely suggests the plot of a novel or play to
the writer, he will not be considered as author of the novel or play as there is no copyright
in ideas. Thus, if a person who has an idea for a story, picture, or play, communicates it
3
to another, the production which is the result of the communication of the idea is the
copyright of the person who has clothed the idea in form.
➢ It is equally clear that a mere amanuensis does not by taking down word for word the
language of the author, become in any sense the author of the work.
➢ The court held that Donoghue was not an author or even a joint author of those articles.
Case - University of London Press Ltd. v. University

Tutorial Press Ltd, 1916
Fact - Examiners were appointed by London University for the matriculation examinations to be
held in September, 1915, and January and June, 1916. Prof. Lodge and Mr. Jackson were
appointed examiners for setting the examination papers in mathematics. It be made a condition
of the appointment of every examiner that any copyright possessed by him in examination papers
prepared by him for the University shall be vested in the University.
On July 26, 1915, the University entered into an agreement with the University of London Press,
Limited, the plaintiff company, by which it was agreed to assign and make over to the Press
Company all such copyright and rights of publication (if any) as the University might have in
such respective papers.
The defendant company, the University Tutorial Press, Limited, issued a publication in which
sixteen out of forty-two matriculation papers were included in January 1916. The papers were
not copied from the publication of the University of London Press, Limited, but were taken from
copies of the examination papers supplied by students. In addition to the papers so published the
University Tutorial Press, Limited, published in the same book the answers to the questions in
some of the papers, and, further, made some criticisms on the way in which the papers had been
set.
On February 24, 1916, the University of London Press, Limited, commenced this action against
Tutorial Press, Limited, for infringement of copyright, and, on objection being taken that the
plaintiff company was not entitled to sue.
Issue - Whether certain mathematics exam papers were original literary works?

➢ An original literary work may enjoy protection even though it is devoid of any aesthetic
merit. Peterson J. stated that the words ‘literary work’ covered work which was expressed
in print or writing, irrespective of the question whether the quality or style was high.9
4
The word “literary” seemed to be used in a sense somewhat similar to the use of the word
“literature” in political or electioneering literature and referred to written or printed
matter.
➢ For a work to be original, it is important that it should not have been copied from another
work. The word “original” does not mean that the work must be the expression of
original or inventive thought. Copyright is not concerned with the originality of ideas, but
with the expression of thought, and, in the case of “literary work”, with the expression of
thought in print or writing.
➢ The originality which is required relates to the expression of the thought. But the Act
does not require that the expression must be in an original or novel form, but that the
work must not be copied from another work - that it should originate from the author.
➢ A mere copyist does not obtain copyright in his copy. A work like abridgement,
compilation, translation etc. are, however, original even though the author has drawn on
knowledge common to him and others or has used already existing material.
➢ The preparation of a question paper by any examiner involves selection, judgment and
experience. The questions are prepared to test the students’ acquaintance with the book
thus question papers are original literary work.
➢ The court held that originality does not mean that the work must be an expression of
individual thought. The simple fact that the authors drew on a body of knowledge which
was common to mathematicians did not compromise originality.
➢ The requirement of originality, it was held, does not require that expression be in an
original or novel form. It does, however, require that the work not be copied from another
work. It must originate from the author. As such, even though these were the same old
math problems which every student is familiar with, and even though there was no
creative input, the skill, labour, and judgment of the authors was sufficient as to make the
papers original literary works.
Case - Eastern Book Company v. D.B. Modak, 2008

Fact - The SCC and SCC- Online were aggrieved by individuals who launched a software
package entitled "The Laws" and "Jurix". The plaintiff alleged that they infringed the copyright
of the copy-edited judgments published by SCC.
The appellants have claimed that the copyright subsists in Supreme Court Cases (SCO as a law
report as a whole based, cumulatively and compendiously, on all the substantial contributions of
skill, labor and capital in the creation of various parts of SCC, i.e., head notes, editorial notes,
footnotes, the version of the copy-edited text of judgments, the selection of cases, the sequence
and arrangement of cases as published in SCC and the index, table of cases, etc. which are
published in each volume of SCC, that give it the SCC volumes and thereby complete SCC set,
its character as a work as a whole.
5
Issue - Whether the SCC has copyright over the Supreme Court cases?

➢ The Supreme Court held that copyright is a right to stop others from exploiting the work
without the consent or assent of the owner of the copyright. A copyright law presents a
balance between the interests and rights of the author and that of the public in protecting
the public domain, or to claim the copyright and protect it under the copyright statute.
➢ One of the key requirements is that of originality which contributes, and has a direct
nexus, in maintaining the interests of the author as well as that of public in protecting the
matters in public domain. It is a well-accepted principle of copyright law that there is no
copyright in the facts per se, as the facts are not created nor have they originated with the
author of any work which embodies these facts. The issue of copyright is closely
connected to that of commercial viability, and commercial consequences and
implications.
➢ The primary objective of copyright is not to reward the labor of authors, but to promote
the progress of science and useful arts. To this end, copyright assures authors the right to
their original expression but encourages others to build freely upon the ideas and
information conveyed by a work.
➢ The Supreme Court held that only the compiler’s selection and arrangement may be
protected. The raw facts may be copied at will. The Court rejected the doctrine of the
“sweat of the brow” as this doctrine had numerous flaws, the most glaring being that it
extended copyright protection in a compilation beyond selection and arrangement—the
compiler’s original contributions—to the facts themselves.
➢ A subsequent compiler was not entitled to take one word of information previously
published, but rather had to independently work out the matter for himself, so as to arrive
at the same result from the same common sources of information. “Sweat of the brow”
courts thereby eschewed the most fundamental axiom of copyright law that no one may
copyright facts or ideas.
➢ The “sweat of the brow” doctrine flouted basic copyright principles and it creates a
monopoly in public domain materials without the necessary justification of protecting
and encouraging the creation of writings by authors.
➢ Originality requires only that the author makes the selection or arrangement
independently and that it displays some material with minimal level of creativity. While a
copy of something in the public domain will not, if it be merely a copy, support a
copyright, a distinguishable variation will. To support a copyright there must be at least
some substantial variation, not merely a trivial variation such as might occur in the
translation to a different medium.
➢ The Supreme Court held that although for establishing a copyright, the creativity standard
applies was not that something must be novel or non-obvious, but some amount of
creativity in the work to claim a copyright was required. It did require a minimal degree
of creativity.
6
➢ Arrangement of the facts or data or the case law was already included in the judgment of
the Court. Therefore, creativity of SCC would only be addition of certain facts or material
already published, case law published in another law report and its own arrangement and
presentation of the judgment of the Court in its own style to make it more user-friendly.
➢ Under section 17(d), the Government shall, in the absence of any agreement to the
contrary, be the first owner of the copyright in a government work. In the absence of any
agreement to the contrary, the Government shall be the first owner of the copyright in the
judgments of the Supreme Court, the same being a government work under section 2(k).
Case - Urmi Juvekar v. Global Broadcast News Ltd, 2008

Fact - The plaintiff claimed confidentiality in relation to her “concept notes and production plan”
pertaining to programme “Work in Progress”. The grievance of plaintiff was not confined to
exploitation of her concept or idea of staging a television reality show to highlight the woes of a
common man in respect of civic problem, but also in relation to the format, the treatment, the
problems and the production plan articulated by the plaintiff in the original concept note and
further developed concept notes and production plan for the programme “Work in Progress”.
Issue -

➢ The Bombay High Court observed that for the purpose of action in breach of
confidentiality, it is well established position that a party can claim confidentiality even
in relation to a “concept or idea”, unlike in a claim or action in infringement of copyright.
The Court in this case found that substantial part of the work of the plaintiff has been
lifted in programme of the defendants titled “Summer Showdown”.
➢ It is often stated that there is no copyright in ideas. There are two aspects to this statement
the first namely, that it is not the concern of copyright enactments to protect ideas unless
and until the ideas have found expression in the form of a work of a category recognized
as deserving of protection. The second aspect is the corollary of the first, that once the
ideas have been expressed in the form of a work, it is the form of expression which is the
subject of protection, not the ideas, which themselves may be freely extracted from the
work and absorbed and used by others to produce their own works, so long as the form of
expression of the work is not also taken.
➢ In this respect, however, it is to be noted that the form of expression of a literary work
does not mean only the text in which that work is written, it may include the selection and
arrangement in a particular order of incidents, whether factual or fictional.
7
➢ The same considerations apply to literary works whose principal purpose is to
communicate news, and indeed it is often stated that there is no copyright in news. This is
perhaps not an accurate way of applying the general principle referred to above. The fact
that the content of a literary work is news does not prevent that work from being capable
of protection by copyright. But again, what is protected is the form of expression of that
content. The information itself, as information stripped of its particular form of
expression, may be freely used, as with any other literary work.
➢ In the instant case the plaintiff had given shape to her idea by expressing it in a detailed
concept note and the production plan relating to the programme "Work in Progress". This
had been substantially reproduced by the defendant channel, namely CNN IBN in its
show titled as "Summer Showdown". For determining whether there was substantial
reproduction or not the court applied the "average viewer test." According to this test, the
two works are not to be compared with hypercritical and meticulous scrutiny but from the
standpoint of the observations and impressions of an average viewer.
➢ The defendant was held liable for breaching the confidentiality of the plaintiff.
Case - Barbara Taylor Bradford v. Sahara Media

Entertainment Ltd, 2004
Fact - If in plaintiff’s play hero has inherited a fortune from his uncle subject to the condition
that if he dies unmarried the money will go to his cousin, the Villain. The Villain shoots him but
makes it look like an accident. The hero defeats the machination of the Villain by bribing a
beggar girl out of the streets to marry him before his death can ensue.
In the defendant’s play the hero has inherited a fortune from his father subject to the condition
that he must marry before the age of twenty five, or else the money will go to his cousin, the
Villain. The Villain induces him to pass his time drinking and gambling so as to forget the
condition. The family lawyer finds the hero on the eve of his twenty fifth birthday and persuades
him to go home. On his way home, the hero meets a beggar girl and out of compassion gives her
shelter for night. The next day the lawyer turns up with a special marriage licence and insists on
immediate marriage. The hero marries the beggar girl.
The appellant, who wrote a book, “A Woman of Substance” alleged that the TV serial
“Karisma—The Miracle of Destiny” which is being produced by respondent in 300 episodes is
based on the work of appellant therefore the respondent should be prevented from making and
showing the alleged TV serial.
Issue - Whether the defendant’s play infringes the copyright in the plaintiff’s play, quite a
natural reaction would be, to place emphasis on the basic theme of both the plays?
8
How to make a distinction between a copy of an idea or a plot, which was permitted and the copy
of an expression of the author, which was protected? Where did idea end and expression begin?

➢ That is, if a marriage does not take place within a specific time the good person loses
everything and the bad person takes everything. This is the common theme of both the
plays.
➢ The court observed that these were the most difficult questions to answer or even to
explain. The best answer was that there were no final answers, and there was also no
hope that there would be any final answers ever. These were situations of legal
assessment. There was no final and exact way of determining as to what was a copy, or
what was a copy of the expression, or what was a copy of the idea only. It was an
exercise doomed to failure from the very beginning. It would either become too long for
an Act, seeking to encompass in it all the judicial pronouncements of value of all the
civilized countries in the world in all the different cases, or it would be short, simple and
wrong.
➢ The idea/expression dichotomy was explained by the Calcutta High Court, where the
court pointed out that the law protected originality of expression and not originality of the
central idea due to the balancing of two conflicting policies. The first policy was that the
law must protect originality of work, thereby allowing the authors to reap the fruits of
their labour and stopping unscrupulous pirates from enjoying those fruits. The second
policy was that protection must not become an over protection, thus, curbing down future
creativity. If mere plots and characters were to be protected by copyright, an author could
not write anything “original” at all, on a similar plot or on similar characters.
➢ If plots and ordinary prototype characters were to be protected by the copyright law, then
soon would come a time in the literary world, when no author would be able to write
anything at all without infringing copyright… an intending author, instead of
concentrating upon the literary merit of his expression, would be spending his life first
determining whether he is infringing the copyright of the other authors who have written
on this topic or that. The law of copyright was intended at granting protection and not
intended for stopping all literary works altogether by its application.
➢ The court further observed that where a person copied a plot, be it consciously or
unconsciously, he must also weave into the plot sufficient creations of his own
imagination and literary skill, to make the work his own and not a copy of the work
which might have inspired him in the first place.
➢ The existence of common characters cannot also be denied. Both the plays show a cousin
as the Villain. In both the plays the beggar girl happens to take the morsel out of the
villain’s mouth at the very last moment. In both the plays the subject-matter is inherited
fortune. One would thus conclude, that the substance of the play of the plaintiff has been
reproduced by the defendant and he is therefore copying it. A substantial part of the
plaintiff’s work has been adopted, by the defendant.
➢ Rejecting the claim of appellant the Calcutta High Court found that copyright does not
protect plots and stock character but confirmed to the form, manner and arrangement and
9
expression of idea. Neither the producer nor the director of TV serial had even read the
book. Further, there has been no prima facie case in favour of appellant for granting
injunction.
Case - Anil Gupta v. Kunal Dasgupta, 2002

Fact - The plaintiff conceived the idea of producing a reality television programme containing
the process of match making to the point of actual spouse selection in which ordinary persons
would participate before a TV audience. The plaintiff devised a unique and novel concept of
leaving it to the prerogative of a woman to select a groom from a variety of suitors. The concept
was named as ‘Swayamvar’. The plaintiff disclosed this concept to defendant under confidential
agreement in 1998 and a concept note was sent to him for the purpose of the production of the
TV serial.
Subsequently, the plaintiff came to know about the defendant’s plans of launching a high reality
show for matchmaking by the name of ‘Shubha Vivah’. The plaintiff filed a suit for copyright
violation of the concept of reality show of matchmaking and violation of confidential
information.
The defendant contended that the concept was in public domain and there was no copyright in
ideas. It was also contended that information given was a broad, vague and rough preliminary
note which could not have protection under confidential information.
Issue -

➢ The court held: An idea per se has no copyright. But if the idea is developed into a concept
fledged with adequate details, then the same is capable of registration under the
Copyright Act. The novelty and innovation of the concept of the plaintiff resides in
combining a reality TV show with a subject like matchmaking for the purpose of
marriage.
➢ Therefore, originality lies in the concept of plaintiff by conceiving a reality TV
programme of matchmaking and spouse selection by transposing mythological
swayamvar to give prerogative to woman to select a groom from variety of suitors and
making it presentable to audience and to explore it for commercial marketing. Therefore,
the very concept of matchmaking in view of concept of the plaintiff giving choice to the
bride was a novel concept in original thought capable of being protected.
10
➢ An idea per se has no copyright. But if the idea is developed into a concept fledged with
adequate details, then the same is capable of protection under the Copyright Act. The
court cited with approval Fraser v. Thomas Television [ (1983) All ER 101 ] where the
court observed, "I accept that to be capable of protection the idea must be sufficiently
developed, so that it would seem to be a concept which has at least some attentiveness for
a television programme and which is capable of being realized as an actuality.
➢ The idea giver on the other hand pleads that there is a breach of confidence and an
infringement of his copyright. The court has discussed this problem and has concluded
that first, there is a distinction between the law relating to copyright and confidence and
second, when idea gets converted into a detailed concept note copyright law will come
into play.
➢ The courts have held that in the modern day, when the small screen has taken over the
earlier means of mass communication like radio, idea/concept/script of a broadcaster has
wider potentiality of capitalising revenue and if that idea/concept or script is not
protected then in a given case, a person who has conceived an idea to be translated into a
reality TV show which could be key to its success with the audience then channels with
their enormous resources could always be in a better position to take the
idea/theme/concept from any author and then develop at their own end and the original
author of the concept will be left high and dry. In appropriate cases interlocutory
injunction may be issued restraining such breach of confidentiality of the theme, concept
or scripts otherwise it would be catastrophic for the television industry. One has to bear in
mind that the laws must ensure protection to persons who create an idea/concept or theme
which is original and reward them for their labour.
Case - Zee Telefilms Ltd. v. Sundial Communications,

2003
Fact - The plaintiff developed a concept note for a serial " Krishan Kanhaiya " with detailed
plots, episodes and a main story line. The plaintiff got the note registered with Film Writers
Association and discussed the concept with the Zee Television Channel. There was no positive
response from Zee, therefore the defendant approached Sony Entertainment television. Zee
started broadcasting the serial " Kanhaiya " based on the concept of the plaintiff.
Issue -
11
➢ The Bombay High Court observed that the law did not recognize property rights in
abstract ideas, nor was an idea protected by a copyright. It became copyrighted work only
when it was given embodiment in a tangible form. But where the plaintiff had developed
an idea into various concept notes, character sketches, detailed plot of episodes, they
would become subject matter of copyright protection.
➢ The Bombay High Court observed that having considered two works involved in the case
not hypocritically and with meticulous scrutiny but by the observations and impressions
of the average viewer, we found that striking similarities in two works could not in the
light of the material placed on record be said to constituted mere chance. The only
inference that could be drawn from the material available on record was unlawful
copying of the plaintiffs’ original work.
➢ In order to find out similarity in the two concepts what was to be seen was the substances,
the foundation, the kernel and the test as to whether the reproduction was substantial was
to see if the rest could stand without it. If it could not, then even if many dissimilarities
existed in the rest, it would nonetheless be a substantial reproduction liable to be
restrained.
➢ If the ideas or information have been acquired by a person under such circumstances that
it would be a breach of good faith to publish them and he has no just case or excuses for
doing so, the court may grant injunction against him. The distinction between the
copyright and confidence may be of considerable importance with regard to unpublished
manuscripts/works submitted, and not accepted for publication or use.
Case - Zee Entertainment Enterprises Ltd. v. Gajendra

Singh, 2008

➢ The Bombay High Court observed that as a general proposition, a concept note which
contains literary work, is entitled to be protected under the Copyright Act if it contains
work which is copyrightable under the said Act. If it contains copyrightable work, the
author/owner thereof would be entitled to the protection afforded under the Copyright
Act, 1957.
➢ There is no magic in the expression “concept note”. It appears to be an expression used in
the television/film industry. The mere use of the term “concept note” however, would
make no difference. It would be necessary for a Court in each case, to examine whether
the concept note constitutes work which is copyrightable and entitled to protection under
the provisions of the Act.
12
Case - Najma Heptulla v. Orient Longman Ltd. And Ors.,
1989
Fact - The issue of authorship of a book India Wins Freedom came up. The book recorded
experiences of Maulana Abul Kalam Azad. Azad used to describe his experiences and Humayun
Kabir, a close associate of Azad, used to make copious notes. When sufficient material was
collected for a chapter, Kabir prepared a draft in English and gave it to Azad. Azad read each
chapter and after that both Azad and Kabir went over that chapter together. Azad used to make
many amendments, additions, alterations and omissions. Kabir’s function was only to record
Azad’s feelings. Kabir did not interfere with the opinions and judgments in the book, even if he
did not agree with Azad. Azad communicated his thought to Kabir in Urdu and the later strived
as far as he could to reflect it with complete accuracy in English.
Issue -

➢ Disagreeing with the judgement in Donoghue’s case, the court observed that if the
reasoning in Donoghue’s case was correct, it would mean that material on the basis of
which a literary book was written would be of no importance, while deciding as to who
was the author of a book.
➢ The Court concluded that the work India Wins Freedom was the product of the active and
close intellectual collaboration between Azad and Kabir in pursuance of a preconcerted
joint design between the two that Azad would contribute the material for the book and
Kabir write the same in English. Such a work could neither be regarded as the sole
creation of Azad nor as the sole creation of Kabir, but was a “work of joint authorship.”
➢ Kirpal J. also expressed doubts whether, in view of the proviso (cc) to section 17 that in
the case of a speech delivered in public, the person who has delivered the speech, is the
first owner of the copyright therein, the Walter rationale holds good in India. By virtue of
section 13, copyright subsists only in the classes of works mentioned therein and a
“lecture” as such is not a “work” in which copyright can subsist under the Act, unless it is
reduced to writing, printing or other notation. In the latter case, copyright subsists in the
latter as literary work, not in the speech itself. The law laid down in proviso (cc) to
section 17 is not in conformity with section 13.
➢ A literary work consists of matter or material or subject, which is expressed in a language
and is written down. Both the subject matter and the language are important. It is difficult
to comprehend, or to accept, that when two people agree (emphasis supplied) to produce
a work where one provides the material, on his own, and the other expresses the same in
a language which is presentable to the public then the entire credit for such an
13
undertaking or literary work should go to the person who has transcribed the thoughts of
another. To me it appears that if there is intellectual contribution by two or more persons
pursuant to a pre-concerted joint design to the composition of a literary work then those
persons have to be regarded as joint authors.
Note - Difference between breach of confidence and

copyright law
The courts have laid down the following differences between the law relating to confidential
agreement and the copyright law:
1. The law of breach of confidence is a broader right than proprietary right of copyright.
2. There can be no copyright in ideas or information and it is not infringement of copyright to
adopt or appropriate ideas of another or to publish information received from another, provided
there is no substantial copying of the form in which those ideas have, or that information has,
been previously embodied. But if the ideas or information have been acquired by a person under
such circumstances that it would be a breach of good faith to publish them and he has no just
case or excuses for doing so, the court may grant injunction against him as it amounts to breach
of confidence.
3 Copyright protects material that has been reduced to permanent form, whereas the general law
of confidence may protect either written or oral confidential communication.
4. Copyright is good against the world generally while confidence operates against those who
receive information or ideas in confidence.
5. Copyright has a fixed statutory time limit which does not apply to confidential information. In
practice application of confidence ceases when the information or idea becomes public
knowledge.
6. The obligation of confidence rests not only on the original recipient, but also on any person
who received the information with knowledge acquired at the time or subsequently that it was
originally given in confidence. Copyright is a negative right of the owner against the whole
world.
7. The principles on which the action of breach of confidence can succeed, have been culled out
as (i) Plaintiff has to identify clearly what was the information he was relying on; (ii) Plaintiff
has to show that it was handed over in the circumstances of confidence; (iii) Plaintiff has to show
that it was information of the type which could be treated as confidential; and (iv) Plaintiff has to
show that it was used without licence or there was threat to use it. In case of copyright
infringement the owner has to show that the defendant has infringed his copyright.
14
Note - An idea converted to a concept is copyrightable?
The decided cases have raised a few issues that need further elaboration:
(i) If concept note is protected by copyright then the duration of copyright shall be sixty years
from the death of the author. However, this rule is not followed in these cases as the confidential,
novel idea translated to a concept note is copyrightable but once the show is on television it will
get into public domain and again be called an idea that is not copyrightable and, therefore, not
protected. The term for protection is thus drastically reduced in case of concept notes.
(ii) According to section 16 of the Copyright Act, copyright is a statutory right and the rights and
remedies under the copyright law do not abrogate any right or jurisdiction to restrain a breach of
trust or confidence. The above cases could be successfully tried under only the law of confidence
by judiciary without resorting to the law of copyright and complicating the settled issue that
copyright does not vest in an idea but in the expression of an idea. The learned judges have not
even made a passing reference to such a significant provision, namely section 16.
(iii) The courts have divided the idea into two categories: (a) Idea in public domain which is not
copyrightable and (b) Novel ideas converted into a concept and communicated to television
channels under an agreement of confidentiality which are copyrightable. Novelty is a concept
which has been used under patent law to determine whether an invention is new. The concept of
novelty has crept into copyright law by judicial interpretation and innovation.
15
(Principal Reading)
Rights in Respect of Works
Case - John Wiley and Inc v. Prabhat Chander Jain, 2010

Fact - The plaintiffs were publishers in USA. They decided to expand their operations in India
by introducing Low Price Edition (hereinafter referred to as LPE) of their books. For this
purpose, they authorized publishers in India for publishing and distributing their works subject to
certain territorial restrictions. The grievance of the plaintiffs began when they discovered that the
defendants, who were publishers and booksellers in Delhi started a website offering online sales
and delivery worldwide of the LPE of the plaintiff’s publications. Plaintiffs allege that these acts
of defendants of diverting the LPE of books meant for sale in India and neighboring states to
USA, UK and other countries amounts to infringement of the plaintiff's copyright in the said
books. According to defendants, they had legally bought the books and then exported those. The
defendants contend that the export of books does not amount to infringement of copyright. They
also rely upon the rule of "exhaustion of rights" whereby the rights of the copyright holder are
lost once the first sale of the article is affected.
Issue -

➢ The court stated that the owner had full right to enjoy the property and if the property was
purchased from the owner only then would the owner lost his rights. In this case “the
purchaser after purchasing from the exclusive licencee cannot by claiming the principle
of exhaustion or extinguishment of rights defeat the rights of the owner.”
➢ Acts laid down in section 51(a) are known as primary acts of infringement, whereas the
acts laid down in section 51(b) above are known as secondary acts of infringement.
Section 51 lays down provision for the infringement of rights of copyright owner which
is different from those of the licencee. It may be possible that the bundle of the rights of
the owner may include the rights of the licencee, but the infringement of the rights has to
be measured from the rights of the owner and not from the limited rights of the licencee.
➢ For copyright to exist in a work, registration is not compulsory, but for obtaining civil or
criminal remedies against an infringement, such work should be registered. According to
section 51, infringement takes place when exclusive rights of the copyright owner are
exercised by the infringer without prior permission of the former. The infringer must be
deemed to have knowledge about the copyright owner and such knowledge cannot be
16
attributed unless the provisions of Chapter X (Registration of Copyright) are complied
with.
➢ Otherwise a person who is innocent can in that event be easily brought in the net of
infringement under civil law or criminally, which can never be the intention of the
legislature. Thus, if a copyright owner wants to enforce civil and criminal remedy before
the special forum i.e. district court rather than a normal civil court, he must have the
registration.
➢ The acts of selling the books from India or offering for sale from India through website
and thereafter accepting the money and couriering the books to an unauthorized territory
will violate the right of the owners of the copyright to issue the copies to the public not
already in circulation (not of exclusive licencees) and thus will, prima facie, infringe their
copyright.
➢ The court stated that the sale, and offer for sale of Low Priced Edition (LPEs), meant for
exclusive use in India, by the defendant, who was clearly targeting overseas buyers, to
whom such products could not be sold at Indian prices, constituted acts of infringement
under section 51.
➢ That the rights of the owner may be broader than the limited rights of the exclusive
licensee, although the exclusive licensee has the independent right to sue for infringement
of the copyright. That the rights of the owner and exclusive licensee may not be the same
and the rights of the exclusive licensee shall also be subject to the fetters imposed by the
agreement between the licensor and licensee.
➢ Once the said defendant offers for sale the books or publications (which are fettered by
territorial restrictions purchased from exclusive licensees) and puts them into circulation
by selling or offering for sale or by taking orders for sale to the territories beyond the
ones for which permission has been granted by the owners of the copyright, the said acts
are prima facie tantamounting to putting into circulation or issuance of copies not being
in circulation in other territories where the right to do so is of the owner to exercise and
violates the rights of the owner of the copyright under section 14 read with section 51 of
the Act
Case - R G Anand v. Deluxe Films, 1978

Fact - The plaintiff, a playwright, dramatist and producer of stage plays wrote a play entitled
‘Hum Hindustani’ based on the idea of provincialism and parochialism. The defendants made the
film ‘New Delhi’ which portrays three main themes: (1) Two aspects of provincialism viz. the
role of provincialism in regard to marriage and in renting out accommodation; (2) evils of a caste
ridden society; and (3) evils of dowry.
After the release of the film there were comments in the newspaper that the picture was very
much like the play.
17
Issue -

➢ Copyright operates to prevent a person from copying the copyright work. In so far as it is
possible for a person to create the same or similar work independently, there is no
copyright infringement. Similarity of the infringing work to the author’s or proprietor’s
copyrighted work does not of itself establish copyright infringement if the similarity
results from the fact that both works deal with the same subject or have a common
source. Nevertheless, it is the unfair appropriation of the labour of another that constitutes
legal infringement.
The Supreme Court laid down following propositions after careful consideration and elucidation
of the various authorities and the case law on the issue of infringement of copyright:
(1) There can be no copyright in an idea, subject-matter, themes, plots or historical or legendry
facts and violation of the copyright in such cases is, confined to the form, manner and
arrangement and expression of the idea by the author of the copyrighted work.
(2) Where the same idea is being developed in a different manner, it is manifest that the source
being common, similarities are bound to occur. In such a case, the courts should determine
whether or not the similarities are on fundamental or substantial aspects of the mode of
expression adopted in the copyrighted work. If the defendant’s work is nothing but a literal
imitation of the copyrighted work with some variations here and there, it would amount to
violation of the copyright.
(3) One of the surest and safest test to determine whether or not there has been a violation of
copyright is to see if, the reader, spectator or the viewer after having read or seen both the works
is clearly of the opinion and gets an unmistakable impression that the subsequent work appears
to be a copy of the original.
(4) Where the theme is the same but is presented and treated differently so that the subsequent
work becomes a completely new work, no question of violation of copyright arises.
(5) Where, however, apart from the similarity appearing in the two works there are also material
and broad dissimilarities which negative the intention to copy the original and the coincidences
appearing in the two works are clearly incidental, no infringement of the copyright comes into
existence.
(6) As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent
evidence after applying the various tests laid down by the case law.
(7) Where the question is of the violation of the copyright of stage play by a film producer or a
director the task of the plaintiff becomes more difficult to prove piracy. It is manifest that unlike
a stage play a film has a much broader perspective, wider field and a bigger background where
the defendants can by introducing a variety of incidents give a colour and complexion different
18
from the manner in which the copyright work has expressed the idea. Even so if the viewer after
seeing the film gets a totality of impression that the film is by and large a copy of the original
play, violation of the copyright may be said to be proved.
➢ A close perusal of the script of the film clearly shows that all the three aspects mentioned
above are integral parts of the story and it is very difficult to divorce one from the other
without affecting the beauty and the continuity of the script of the film. Further, it would
appear that the treatment of the story of the film is in many respects different from the
story contained in the play. On a close and careful comparison of the play and the picture,
but for the central idea (provincialism which is not protected by copyright), from scene to
scene, situation to situation, in climax to anti-climax, pathos, bathos, in texture and
treatment and support and presentation, the picture is materially different from the play.
Case - Warner Bros. Entertainment Inc. and Ors. v.

Santosh V.G., 2009
Fact - The plaintiffs were associated with the business of film production. The defendant bought
legal copies of the cinematographic films from the United States and imported them into India to
offer the same for hire or rent. Plaintiffs filed a suit for permanent injunction and damages,
claiming that the defendant has infringed their copyrights with respect to cinematographic films
by hiring and offering to hire or rent in India.
The defendant contented that the said copies were legitimately purchased in the course of trade,
being rental copies, which can be used for the purpose of rental in India and thus would not
constitute infringement.
Issue - Whether the said acts of the defendants of importing and giving to hire or rent in India
copies of the Cinematographic films which were authorized for sale and rental only in a
particular territory outside India would constitute infringement of copyright under Section
51(a)(i)?

➢ Justice Bhat noted Section 14(d) of the Act stated that in respect of cinematographic
works, “copyright” would mean the doing or authorizing the doing of the following:
i. Making a copy of the film
ii. Selling or giving on hire or offer for sale or hire any copy of the film, regardless of whether
such copy has been sold or given on hire on earlier occasions
19
iii. Communicating the film to the public
➢ Thus, the content of copyright in case of cinematographic works is different from that in
the case of literary works, dramatic works etc. The phrase “copy in circulation” was
found in describing the copyright vis-à-vis literary, musical and dramatic works. It found
no application in cinematographic works. On a plain reading of Section 14, the phrase
was used to limit the copyright in the case of literary, musical and dramatic works only.
In defining copyright vis-à-vis cinematographic works, the phrase was not used at all.
➢ Justice Bhat noted that while the exhaustion principle would perhaps be applicable to
literary, musical and dramatic works; that would not mean that the principle also applied
to cinematographic works. The Single Judge further observed that the doctrine of
exhaustion in copyright works is limitedly applicable and applies only in relation to the
class of copyrights in Section 14(a) and to the extent specified in Clause (ii).
➢ Court came to the conclusion that the defendant’s actions would amount to infringement
of copyright.
Case - Macmillan & Co. v. K. and J. Cooper, 1924

Fact - Action was brought by McMillan and Company to restrain the respondent-firm who was
carrying on the trade and business of publishers of educational books, from printing, distributing
or otherwise disposing of copies of the book published by the appellants.
Issue - Whether an abridged work comes under the copyright?

➢ It was held that it was the product of the labour, skill and capital of one man which must
not be appropriated by another, not the elements, the raw materials, upon which the
labour and skill and capital of the first had been expended. To secure copyright for the
product, it was necessary that the labour, skill and capital should have been expended
sufficiently to impart to the product some quality or character which the raw material did
not possess, and which differentiated the product from the raw material.
➢ What was the precise amount of knowledge, labour, judgement or literary skill or taste
which the author of any book or other compilation must bestow upon his composition in
order to acquire copyright in it could not be defined in precise terms. Thus, a work may
be ‘original’ if the author has applied his skill or labour, even though he has drawn on
knowledge common to himself and others or has used already existing material. A mere
copyist does not obtain copyright in his copy.
20
➢ To constitute a true and equitable abridgment, the entire work must be preserved in its
precise import and exact meaning, and then the act of abridgment is an exertion of the
individuality employed in moulding and transfusing a large work into a small compass,
thus rendering it less expensive and more convenient both to the time and use of the
reader. Independent labour must be apparent, and the reduction of the size and work by
copying some of its parts and omitting others confers no title to authorship, and the result
will not be an abridgement entitled to protection.
➢ To abridge in the legal sense of the word is to preserve the substance, the essence of the
work in language suited to such a purpose, language substantially different from that of
the original. To make such an abridgment requires the exercise of mind, labour skill and
judgment brought into play, and the result is not merely copying.
➢ Copyright subsists in an abridgment of a literary and dramatic work. Abridgment means
to reduce a large work into a small one by preserving the sense and meaning of the entire
work. Abridgement is created when an existing work is condensed by another in a
manner that the precise import of the work is preserved yet an original work is created.
➢ Thus expenditure of labour, skill and capital to impart to the product some quality of
character which the raw material did not possess will result in a compilation having
copyright protection.
Case - Amar Nath Sehgal v. Union of India, 2005

Fact - The plaintiff, a sculptor, created a mural cast in bronze to decorate Vigyan Bhavan. The
artistic work of the plaintiff was kept there from 1962 to 1979. In 1979, the government removed
the mural without his permission and dumped that in a storeroom. In the process of removal,
owning to mishandling the mural lost its aesthetic and market value. The plaintiff brought a suit
for violation of moral rights and sought not only the remedy of permanent injunction to restrain
the defendant from further mutilating the plaintiff’s mural but also prayed for the damages of Rs.
50 lacs towards compensation for humiliation, injury, insult and loss of plaintiff’s reputation.
The plaintiff also prayed that the mural be returned to him.
Issue - Whether an author/artist can exercise his moral rights after the assignment of copyright?

➢ The court made very significant observations on section 57 of the Copyright Act, 1957.
The court observed that the special right has been conferred upon the author with the sole
objective of protecting that honour and reputation which his intellectual work has earned
for him.
21
➢ Therefore, the other person who has acquired ownership in the intellectual work from the
author by paying its price to the author should be restrained from damaging the honour
and reputation of the author by distorting, mutilating or modifying that work. The reason
was that such unauthorized distortion, mutilation, and modification vitiated the spirit with
which the author had created that work.
➢ The fact remained that even after the ownership of an intellectual work had been
transferred to another person by the author himself for monetary gain the work continues
to bear with the name of the author. So it was morally wrong to distort, mutilate or
modify the creative work of the author to the prejudice of his honour and reputation by
another person just because he had paid the price for that work. Such distortion,
mutilation or modification was nothing but a tampering with the spirit of the author. It
was basically the morality, which was at the root of special right conferred upon an
author with respect to his intellectual work under section 57 of the Copyright Act.
➢ The mural in whatever form is too precious to be reduced to scrap and languish in the
warehouse of the Government of India. It is only the plaintiff who has the right to
recreate his work and, therefore, has the right to receive that broken down mural. Plaintiff
also has a right to be compensated for loss of reputation, honour and mental injury due to
the offending acts of the defendants.
➢ The Delhi High Court held that plaintiff had a cause to maintain action under section 57
notwithstanding that the copyright in the mural was assigned to the defendant. It not only
violated the plaintiff’s moral right of integrity in the mural but had also violated the
integrity of the work in relation to the cultural heritage of the nation.
➢ The court held that destruction was an extreme form of mutilation. While awarding
damages to the extent of Rs. 5 lacs.
22
(Principal Reading)
Authorship, Ownership and Exploitation of Copyright
Case - Entertainment Network (India) Limited v. Super

Cassette Industries Limited, 2008
Fact - The respondent was one of the leading music companies engaged in the production and/or
acquisition of rights in sound recordings. It had copyright over a series of cassettes and CDS
commonly known as "T- series". It had copyrights in cinematographic films and sound
recordings. Appellant M/s. Entertainment Network (India) Ltd. (ENIL) broadcasts under the
brand name "Radio Mirchi". It is a leading FM radio broadcaster. Disputes and differences arose
between Bennett Coleman & Co. Ltd., the holding company of the first respondent and
Phonographic Performance Ltd. (PPL) as regards the playing of the songs of which copyrights
belongs to the first respondent in their FM radio network. Appellant is a company which holds
licence for running FM radio stations in various cities across India.
Issue - Whether in any event such a compulsory license can be issued to more than one
complainant in the light of section 31 (2) ?
What would be the relevant considerations which the Copyright Board must keep in view while
deciding on (a) Whether to issue a compulsory license to a particular person; and (b) The terms
on which the compulsory license may be issued, including the compensation?

➢ According to section 13 of the Copyright Act, 1957, copyright subsists in the following
works: (a) original, literary, dramatic, musical and artistic works; (b) cinematograph
films; and (c) sound recordings. Section 13(a) protects original work whereas section
13(b) and (c) protect derivative works. It provides for commercial manifestation of
original work and the fields specified therein.
➢ Section 14(a) deals with original work. It is extremely broad. In contrast thereto, the
copyright in films or sound recording work operates in restrictive field; they provide for a
restrictive right as would appear from the provisions contained in section 14 (e) of the
Act.
➢ It must be noticed that whereas the term of a copyright in original literary, dramatic,
musical and artistic works not only remain protected in the entire life time of the author
23
but also until 60 years from the beginning of the calendar year next following the year in
which the author dies, the term of copyright in sound recordings subsists only for 60
years, but the same would not mean that the right of an owner of sound recording is in
any way inferior to that of right of an owner of copyright in original literary work etc.
➢ The Supreme Court observed that section 34 provides for administration of rights of
owner by copyright society. The proviso appended thereto prohibit any discrimination in
regard to the terms of licence or the distribution of fees collected between rights in Indian
and other works.
➢ The concept of copyright society appears to be that the interest of the copyright holder
can be protected by the said society while granting licence so as to enable all players to
have the benefit of a single window; as such a society is entitled to: (i) issue licences
under section 30 in respect of any rights under this Act; (ii) collect fees in pursuance of
such licences; (iii) distribute such fees among owners of rights after making deductions
for its own expenses; and perform any other functions consistent with the provisions of
section 35.
➢ It was further stated by Supreme Court that the concept of Copyright Society was
incorporated in the Act so as to enable an author to commercially exploit his intellectual
property by a widespread dispersal in a regulated manner. It for all intent and purport
steps into the shoes of the author. The society grants license on behalf of the author, it
files litigation on his behalf, both for the purpose of enforcement as also protection of the
enforcement of his right. It not only pays royalty to the author but is entitled to distribute
the amount collected by it amongst its members.
➢ Section 34 providing for administration of rights of owners by a copyright society for all
intent and purport creates a virtual agency so as to enable the society to act on behalf of
the owner. The civil remedies for infringement of copyright as envisaged under section
55 of the Act can also be enforced by the society.
➢ The court held that the Board acting as a statutory authority can exercise its power from
time to time. It is therefore not correct to contend that having regard to the provisions of
sub-section (2) of section 31, compulsory licence can be granted only to one and not to
more than one broadcaster.
➢ It held that a compulsory licence can be granted even if the work is not withheld from the
public and is made available to the public. This can happen when the owner refuses to
permit a broadcaster to broadcast the work. Demanding of a royalty or compensation
which is high or imposes unreasonable restrictions amounts to refusal to grant
permission.
Case - Event and Entertainment Management Association

v. Union of India, 2011
24
Fact - The question of Constitutional validity of a circular issued by Commissioner of Police,
Delhi regarding powers of police under section 64 was challenged.
Issue -

➢ It is held that the working of the copyright societies continues to be monitored and guided
by the Copyright Act. There are adequate safeguards provided within the Copyright Act
to check the consequences of any perceived excessive delegation. The Copyright Act
does not provide a free run as regards the fixation of tariffs and royalties in copyright
works to copyright societies.
➢ The court set aside the circular to the extent that it required police force in Delhi to treat
complaints received from SCIL about violation of the Act as a class requiring a special
treatment. It held that the police is not expected to act differently depending upon who
the complainant is.

(Principal Reading)
25
Infringement of Copyright and Exceptions to
Infringement
Case - Chancellor, Masters & Scholars of University of

Oxford & Ors. v. Rameshwari Photocopy Services &
Ors., 2016
Fact - The dispute before the learned Single Judge concerned photocopying of pages from the
copyrighted publications of the plaintiffs; namely (i) Oxford University Press; (ii) Cambridge
University Press, United Kingdom; (iii) Cambridge University Press India Pvt. Ltd.; (iv) Taylor
& Francis Group, U.K.; and (v) Taylor & Francis Books India Pvt. Ltd. The first defendant,
Rameshwari Photocopy Services has a shop licensed to it within the precincts of the Delhi
School of Economics (University of Delhi). Albeit with an initial denial by the University of
Delhi, the ultimate picture which emerged was that the professors imparting teaching in the
Delhi School of Economics had authorized preparation of course packs and Rameshwari
Photocopy Services was entrusted with the task of photocopying the pages from the books
published by the plaintiffs, and after binding the same, to supply them to the students charging
50 paisa per page.
It is the case of the plaintiffs that the inclusion of specific pages of its publications by
Rameshwari Photocopy Services, under the authority of the Delhi School of Economics, amounts
to institutional sanction for infringement of its copyright.
The plaintiffs have pleaded that Section 52(1)(i) was not applicable since reproduction by
Rameshwari Photocopy Services, with the assistance of Delhi School of Economics, could not be
classified as reproduction by a teacher or a pupil in the course of instruction.
Rameshwari Photocopy Services pleaded that the preparation of course packs by it amounts to
fair use within the meaning of Sections 52(1)(a) and (h) of the Copyright Act, 1957.
It was argued, by way of pleading, that the term ‘reproduction’ used in Section 52(1)(i) was
distinct from the term ‘publication’ used in Section 52(1)(h), with Section 3 of the Act defining
‘publication’ as making a work available to the ‘public’, with the term ‘public’ having a wider
connotation than the term ‘students’ and therefore, Section 52(1)(h) would not be applicable to
preparation of course packs to be used by students for an educational purpose. The University
pleaded that the expression ‘course of instruction’ must be interpreted expansively.
Issue -
26
➢ Thus, we reject the arguments by learned counsel for the appellants that the four factors
on which fair use is determined in jurisdictions abroad would guide fair use of
copyrighted material during course of instruction. The qualitative and quantitative test
which is one of the four tests would not apply to clause (i).
➢ Arguments advanced by learned counsel on either side with reference to articles and
treatises by professors on what the policy of copyright law in its interface with education,
especially in developing countries where literacy levels are low and purchasing power is
less, should be are simply noted by us for record. Being a matter of policy, it is for the
legislature to decide what should be the policy underlying the statute. If transposed into a
judicial verdict it would be a doctrinal approach and we prefer to interpret the statute
using the tools of grammar, giving meaning to the words as in ordinary English parlance
and defining concepts with common sense.
➢ There can be no dispute that the doctrine of fair use is an exception to the copyright
protection as the opening line of section 52 uses the expression ―The following acts
shall not constitute an infringement of copyright namely - (a) A fair dealing with a
literary, dramatic, musical or artistic work [not being a computer programme] for the
purposes of‖. This expression implies that without the fair use protection the use shall
constitute an infringement of copyright.
➢ We find that the learned Single Judge has dismissed the application seeking interim
injunction against the defendants and simultaneously on the reasoning that no triable
issue arises the suit has been dismissed. Having restored the suit and identifying the
triable issue warranting evidence, we are not inclined to grant interim injunction to the
appellants but would direct respondent No.1 to maintain a record of course packs
photocopied by it and supplied to the students.
Case - Devendrakumar Ramchandra Dwivedi v. State of

Gujarat, 2010
Fact - The present case was a Public Interest Litigation (PIL) filed by the Petitioner on the
ground that the royalty fee charged by Respondent No.4 (a Copyright Society formed under
Section 33(3) of the Copyright Act, 1957) in respect of songs, musical works etc. that are
intended to be performed by various amateur groups, clubs, hotels etc. during the religious
ceremony of Garba/Dandiya is unfair as the said musical work forms a part of the cultural and
traditional heritage of Gujarat State and the same has been in public domain for generations
despite the fact that it may have been incorporated in films/movies.
27
The defence of fair use under sections 52(1) (k), 52(1)(l) and 52(1)(za) was pleaded. The said
petition was opposed by the Respondent No.4 on the ground that unless a specific permission is
sought and adequate royalties are paid the performance/organization of any musical work etc.
will result in infringement of the exclusive rights of its members as per sections 14(a) read with
51 of the Copyright Act, 1957.
Issue -

➢ The main thrust of Section 52(1) of the Copyright Act, 1957 is to exempt live
performance of such works when there is no commercial purpose and when there is no
admission charge and/or when admission proceeds are used exclusively for educational,
religious or charitable purpose and not for private personal financial gain.
➢ Above principle is generally called fair or honest use doctrine which constitutes the most
significant limitation on the exclusive rights held by a copyright owner. 'Fair Use
Doctrine' was first articulated by Justice Story in Folsom v. Marsh in the year 1841.
➢ Learned Judge, opined that quoting copyrighted material in the course of preparing a
biography or a critical commentary might be excusable, but not if so much is taken, that
the value of the original is sensibly diminished, or the labours of the original author are
substantially to an injurious extent appropriated by another. Fair use doctrine has another
object to achieve is to promote the progress of science and the useful arts.
➢ Fair use doctrine comes into play when a too literal enforcement of the copyright owner's
rights would operate to the detriment of the public interest in access to and dissemination
of knowledge and unauthorized copying can be tolerated without significant economic
injury to the copyright owner.
➢ Fair use doctrine is mixed question of law and facts and if the use is commercial rather
than non-profit, it is presumed to be unfair and to have a likely adverse impact on the
market for the owners work, the burden is on the organizers to prove otherwise.
➢ Question whether certain acts fall within exempted categories enumerated under Section
52(1) of the Act has to be decided according to facts of each case. The theory of
presumed intention or fair use and infringement, public interest etc. are to be judged on
the material we get in a given case. Difficulty would arise when such copy rights are
exploited for commercial purpose, which may give rise to a complaint of infringement.
➢ The present PIL was dismissed by the Division Bench of the Gujarat High Court on the
ground of lack of Locus Standi. However, these observations in respect of the “Doctrine
of Fair Use” were made by the Hon'ble Bench.
Topic – 2 (Patent Law)

(Principal Reading)
Patentability Criteria in India
28
Case - Dhanpat Seth v. Nil Kamal Plastic Crates Ltd,
2008
Fact - The plaintiff Dhanpat Seth had been granted Patent No: 195917 for a device used for
manually hauling agricultural produce. The device was ‘visualized’ by them in 1999 after which
they developed it over a period of time and applied for a grant of patent in 2000. The patent was
granted in their favour on 11.7.2005.
The plaintiff had alleged that the defendant had infringed his patent by manufacturing the afore-
described patent device and selling it to the Department of Horticulture, Himachal Pradesh
Government amongst others. The plaintiffs filed a suit praying for a permanent injunction
restraining the defendant from infringing the patented device and also for damages to the tune of
Rs. 51 lakhs.
Issue -

➢ A bare perusal of the definition of invention clearly shows that even a process involving
an inventive step is an invention within the meaning of the Act. It is, therefore, not
necessary that the product developed should be a totally new product. Even if a product is
substantially improved by an inventive step, it would be termed to be an invention.
➢ The mere fact that the device is made of polymeric material instead of bamboo is not an
inventive step involving any novelty. There is nothing new about the process of
manufacturing the traditional Kilta made of natural material from synthetic material.
Even nylon straps now added are virtually copies of the ropes used in the traditional
Kilta. The ropes in the Kilta can also be adjusted by the user keeping in view the height
of the person using the Kilta and the weight being carried by him. The mere introduction
of buckles would not amount to a new device being called an invention or an inventive
step.
➢ The court observed that a Kilta is a traditional product which has been used since time
immemorial for carrying produce including agricultural produce in hill areas especially in
the State of Himachal Pradesh. The traditional Kilta is made of bamboo. The shape of a
Kilta is conical having a wider circular opening on the top and it tapers and narrows
down at the bottom.
➢ There is virtually no difference in the overall design of the traditional Kilta or the
‘device’ developed by the plaintiffs and the defendant. A visual comparison of the three
items prima facie establishes that the articles manufactured by the plaintiffs and the
29
defendant are virtual copies of the traditional Kilta. The only difference is that Kilta is
made of bamboo and the Kilta made by the plaintiffs is made of polypropylene
copolymer (PP). The Kilta made by the defendant is also made of polymeric material.
➢ The Division Bench held that “the device developed by the plaintiffs is in fact the result
of traditional knowledge and aggregation/duplication of known products such as
polymers and, therefore, cannot be said to be an invention.
➢ As the case progressed the defendants successfully proved to the Court that the Kilta
(patented article of the plaintiffs) is a mere imitation of traditional Kilta made by
bamboos and has been in use since times immemorial. As a result, the Court not only
rejected the plaintiffs request for permanent injunction but also that granted Indian Patent
No. 195917. Thus, the plaintiff was not able to establish the case at a prima facie level, as
the patent in question was revoked.
Case - Novartis Ag v. Union of India, 2013

Fact - The appellant, Novartis International AG filed an application on July 17,1998 as per the
TRIPS agreement before the Chennai Indian patent office for the grant of a patent for an
anticancer drug 'Gleevec' which is used to treat Chronic Myeloid Leukaemia (CML) and
Gastrointestinal Stromal Tumours (GIST) invented from Beta crystalline form of "Imatinib
mesylate”. In the application it claimed that the invented product, the beta crystal form of
Imatinib Mesylate, has (i) more beneficial flow properties: (ii) better thermodynamic stability;
and (iii) lower hygroscopicity than the alpha crystal form of Imatinib Mesylate.
When Novartis filed its patent application, the grant used to be restricted to methods or processes
and not for products in India, as defined under section-5 of Patent Act, 1970. After the Patent
(Amendment) Act, 2005 section-5 was repealed and patents came to be granted for methods or
processes but also for products.
In 2005 patent application of Novartis for the drug Gleevec was taken into consideration and the
same was rejected by Madras Patent Office on the ground that the drug was anticipated by prior
publication and failed to satisfy the requirement of novelty and non-obviousness, further stating
the alleged invention as un-patentable under the provision of section-3(d) of Patent Act, 1970 as
the said drug did not exhibit any major changes in therapeutic efficacy over its pre-existing form
i.e. Zimmermann patent.
After that Novartis filed two writ petitions in Madras High Court in the year 2006 under Article-
226 of Constitution of India. The appeals subsequently stated that the section-3(d) of Patent Act,
1970 is unconstitutional because it is not in compliance with TRIPS agreement and also violates
Article-14 of Constitution of India and the other against the order passed by Madras Patent
Office. Madras High Court transferred the case to IPAB (Intellectual Property Appellant
Tribunal) in 2007. This appeal was finally heard and dismissed by IPAB stating that the
invention satisfied the tests of novelty and non-obviousness but the patentability of the product
30
was hit by section-3(d) of the Patent Act, 1970. The judgment given by IPAB is to prevent ever-
greening of already patented product by introducing minor changes and to provide easy access to
the citizens of India to life saving drugs.
After that Novartis filed SLP (Special Leave Petition) in 2009 before the Supreme Court of India
against the order passed by IPAB under Article-136 of Constitution of India.
Issue - What is the true import of section 3(d) of the Patents Act, 1970? How does it interplay
with clauses (j) and (ja) of section 2(1)?
Does the product for which the appellant claims patent qualify as a 'new product' which comes
by through an invention that has a feature that involves technical advance over the existing
knowledge and that makes the invention 'not obvious' to a person skilled in the art?
Whether the appellant is entitled to get the patent for the beta crystalline form of a chemical
compound called Imatinib Mesylate which is a therapeutic drug for chronic myeloid leukaemia
and certain kinds of tumours?

➢ The Supreme Court stated that “new product in chemicals and especially pharmaceuticals
may not necessarily mean something altogether new or completely unfamiliar or strange
or not existing before. It may mean something “different from a recent previous” or “one
regarded as better than what went before” or “in addition to another or others of the same
kind”.
➢ The court observed that “it is clear from the amended section and the explanation that in
the pharmacology field, if a discovery is made from a known substance, a duty is cast
upon the patent applicant to show that the discovery had resulted in the enhancement of a
known efficacy of that substance.
➢ The judgment given by the Hon'ble Supreme Court is to prevent the ever-greening of
patented products
➢ 'Evergreening' is a term used to label practices that have developed in certain jurisdictions
wherein a trifling change is made to an existing product, and claimed as a new invention.
The coverage/protection afforded by the alleged new invention is then used to extend the
patentee’s exclusive rights over the product, preventing competition.
➢ 'Invention' and 'Patentability' as two distinctly separate concepts. section 3(d) as
representing 'patentability', a concept distinct and separate from 'invention'.
➢ In case of chemicals and especially pharmaceuticals if the product for which patent
protection is claimed is a new form of a known substance with known efficacy, then the
subject product must pass, in addition to clauses (j) and (ja) of section 2(1), the test of
enhanced efficacy as provided in section 3(d) read with its explanation.
➢ These forms, unless they differ significantly in property with regard to efficacy, are
expressly excluded from the definition of 'invention'. Hence, the mere change of form
with properties inherent to that form would not qualify as 'enhancement of efficacy' of a
31
known substance. In other words, the explanation is meant to indicate what is not to be
considered as therapeutic efficacy.
➢ Section-3(d) of Patent Act, 1970 prevents obtaining secondary patent by introducing
minor changes in existing technology from these big pharmaceutical companies.
➢ Rejecting the appellant’s case that Imatinib Mesylate is a new product and the outcome of
an invention beyond the Zimmermann patent. Court held and found that Imatinib
Mesylate is a known substance from the Zimmermann patent itself.
➢ Not only is Imatinib Mesylate known as a substance in the Zimmermann patent, but its
pharmacological properties are also known in the Zimmermann patent and in the article
published in the Cancer Research journal referred to above.
➢ In view of the findings that the patent product, the beta crystalline form of Imatinib
Mesylate, fails in both the tests of invention and patentability as provided under clauses
(j), (ja) of section 2(1) and section 3(d) respectively, the appeals filed by Novartis AG
failed.
Case - 3M Innovative Properties Ltd & Anr. v. Venus

Safety & Health Pvt Ltd & Anr, 2014
Fact - The appellant (plaintiff in the suit) is aggrieved by the order dated 30.05.2014 whereby
the applications have been disposed of and the interim injunction dated 19.12.2013 has been
vacated.
The appellants have filed the suit for permanent injunction restraining the respondents from
infringing the patent of the appellant No.1 and further consequential relief of rendition of
accounts and a decree for damages.
The appellant No.1 claims to be a pioneer in personal protection equipment and is engaged in
designing and manufacturing respiratory devices since 1972. The subject patent i.e. Indian Patent
No.211175 for invention titled "Flat Fold Personal Respiratory Protection Devices and process
for preparing the same" was granted in favor of the appellants w.e.f. 26.05.1999. The appellants
claim to be manufacturing the product, claimed in the subject patent, since 2002.
As per the claims of the appellants in the subject patent, the mask for which the patent
application has been filed and patent obtained, is intended to serve the following purposes/needs:
(i) Flat folded yet providing a good respiratory seal;
(ii) Uncomplicated design that is easy and inexpensive to manufacture;
(iii) Contact wearer's face at periphery of face mask with minimum facial contact such that
comfort to wearer is maximum and engagement with perimeter of face mask to the face of the
wearer is minimal.
32
The appellants filed the subject Suit contending that the respondents have recently started
manufacturing a device identical to the device covered by the subject patent. Comparing the
infringing device model V4410 of the respondents, the appellants contend that the said infringing
device has been manufactured analyzing the subject patent and each of the elements of Claim 1
of the subject patent are present in the respondents‟ infringing device.
Per contra, the contention of the respondents is that the respondent No.1 had been manufacturing
flat-folded personal respiratory device which opened into a cup shaped configuration since 1994.
It is contended that three patents namely US Patent No.US 3,971,369 (D1), US Patent No.US
5,701,892 (D2) and International Publication No. WO 1996/28217 (D3) disclose major elements
that are claimed by the appellants‟ patent and are prior arts and the Claim I of the appellants is
covered by prior art and is anticipated and obvious to a person skilled in the art (POSITA) and,
thus, lacks the requisite Novelty and Non-obviousness (Inventive step) and therefore the
appellants are not entitled to grant of any ad interim injunction.
The learned Single Judge, held that the said patents disclose many essential features of the patent
in question and also teach many elements claimed in the subject patent, therefore lacks novelty
and non-obviousness.
The learned Single Judge has held that the respondents have been able to prima facie
demonstrate the existence of various elements as prior art. He has held that it is an admitted
position that the respondents have been using the impugned device since April 2011 and have
made considerable investments in the same. In this view of the matter, the balance of
convenience has been found to be in favor of the respondents. The ex-parte ad interim injunction
dated 19.12.2013 has thus been vacated.
Aggrieved by this Impugned order, the appellants have filed the present appeal contending that
the learned Single Judge has erred.
Issue - Whether the comparison done by the learned single judge of the elements of the claim of
the appellants in the subject patent with the alleged prior art satisfies the test as laid down by the
Supreme Court of India in Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries?

➢ The learned Single Judge has erroneously combined the abstract of D1, D2 and D3 to
arrive at a conclusion that the three combined teach the elements of the subject patent. By
reading the alleged prior art documents relied upon by the Respondents, a person
ordinarily skilled in the art would not be able to reach to the solution provided by the
subject patent without use of inventive ingenuity.
➢ As held by the Supreme Court in Bishwanath Prasad Radhey Shyam (Supra), the proper
way to construe a specification is not to read the claims first and then see what the full
description of the invention is, but first to read the description of the invention, in order
33
that the mind may be prepared for what it is, that the invention is to be claimed, for the
patentee cannot claim more than he desires to patent.
➢ The experts in the field i.e. the officials of the US Patent Office as also the officials of the
Indian Patent Office have, not held that the three cited prior arts teach the elements of the
subject patent or that there is obviousness of the elements to a person skilled in trade.
➢ We are of the view that the appellants have been able to show a strong prima facie case in
their favour. The appellants have denied the assertions of the respondents that the
appellants were aware that the respondents had been selling the impugned mask since
2011. On the contrary, the assertion of the appellants is that they came across the
respondent No.1’s product on or about second week of August, 2014 and, immediately
thereafter, the subject infringement suit was filed.
➢ By the ad interim order dated 19.12.2013 in the suit, the respondents were restrained
from manufacturing the impugned mask. The interim order dated 19.12.2013 was vacated
by the impugned order dated 30.05.2014. By order dated 05.05.2015, in the present
appeal, the operation of the impugned order was stayed and the interim order dated
19.12.2013 was revived and is in operation till date. We are of the view that the balance
of convenience also lies in favour of the appellants and against the respondents.
The principles governing patentability of an invention as laid down in Bishwanath Prasad

Radhey Shyam v. Hindustan Metal Industries can thus be summarized as under:
(i) it must be the inventor's own discovery;
(ii) should not be a mere verification of what was already known before the date of the patent;
(iii) it is a manner of new manufacture and includes an improvement and an allied invention;
(iv) must also be useful;
(v) not only the art, process or manner of providing, preparing or making an article but also the
article prepared or produced by the manufacture can be patented;
(vi) should be more than a mere workshop improvement;
(vii) the improvement or the combination must produce a new result, or a new article or a better
or cheaper article than before;
(viii) a combination of old, known integers may be so combined that by their working
interrelation they produce a new process or improved result;
(ix) mere collection of more than one integer or things, not involving the exercise of any
inventive faculty, would not qualify for the grant of a patent;
(x) there must be novelty in the mode of application and the novelty must show invention;
(xi) the new subject-matter must involve "invention" over what is old;
34
(xii) must involve something which is outside the probable capacity of a craftsman;
(xiii) it must not be the obvious to a skilled worker, in the field concerned,
(xiv) it must not be a natural suggestion of what was previously known;
(xv) Prior public knowledge of the alleged invention would disqualify the grant of a patent and
prior public knowledge can be by word of mouth or by publication through books or other
media;

(Principal Reading)
Procedure for filing Patent Application
Case - Neon Laboratories Pvt. Ltd v. Troikaa Pharma

Limited, 2011
35
Fact -
Issue - If the person opposing the grant forwards his response and also prays that he should be
heard on the amended claims as well, then, whether it is incumbent upon the authorities to grant
personal hearing?

➢ Section 2(1)(s) of the Patents Act, 1970, defines “person” to include the Government.
After the amendment of 2005, any person whether interested or not may oppose the grant
of patent. This is an illustration of statutorily broadening the concept of locus standi and
widening the scope of objection procedure by giving access to ‘any person’ who has a
concern for public interest, to raise an objection.
➢ The opportunity provided in section 25(1) is not an empty formality. The legislature in its
wisdom has specifically conferred on any person a right to make representation in writing
and to object the grant of patent which is to be made by raising specific grounds. Once
the legislature has devised such a safeguard in public interest and provided for pre-grant
opposition, then, a narrow interpretation on the said provision cannot be placed so as to
defeat the legislative mandate.
➢ The court held that if the opposition is raise to the grant, then, until the same is dealt with,
no patent can be granted. If the original claim/application is amended, as in this case, and
the amendments are also opposed, then, a personal hearing to the objector on the
amended claims is required to be given if specifically requested. That is the scheme of
Section 25(1) and Rule 55 which are to be considered and read together. Court finally set
aside the grant of patent and directed the Controller to give personal hearing to the
petitioner and deliver a reasoned order.
Case - J.Mitra & Co. Pvt. Ltd. v. Assistant Controller of

Patents & Design,
Fact - J Mitra filed for a patent and after the patent was published, a preopposition application
was filed by Span Diagnostics. The opposition failed and the patent was eventually granted.
Thereafter, Span filed an appeal against the Controller’s decision in the High Court under the
original section 116 of the Patents Act. J Mitra challenged Span’s appeal before the HC stating
that the appeal “must be dismissed as being misconceived.”
This argument was based on the fact that at the time that the appeal was filed in the HC, the
government had passed several amendments to the Patents Act whereby
36
(1) no appeals could be filed against decisions of the Controller in a pre-grant opposition
(amendments to the old section 116 and establishment of IPAB) and
(2) post-grant opposition could be filed before the Controller (Section 25(2) and
(3) all appeals against the Controller’s decision in post grant opposition had to be filed before the
IPAB (section 117A).
Although all these amending laws were passed by the Parliament and received the assent of the
President, not all of provisions were notified/brought into force.
Issue - Whether appeal against decisions made by the Controller of Patent pertaining to "pre-
grant oppositions" had to be preferred to Appellate Board or to the High Court in view of the
promulgation of the Patent (Amendment) Act, 2005?
Whether said amendment will affect an appeal preferred to High Court before its enforcement?

➢ Where a request for examination is made by an applicant or person interested, the
examiner is to make a report in respect of whether the application, specification and other
documents meet the requirements of the said Act and rules, whether there is a lawful
ground of objection to the grant of patent under the Act, the result of the investigations on
the grounds of anticipation and other matters that may be prescribed.
➢ Court held that an Act cannot be said to commence or to be in force unless it is brought
into operation by legislative enactment or by the exercise of authority by a delegate
empowered to bring it into operation.
➢ Finally, the court held that taking into account the complexities involved in this case, on
account of a hiatus created by reason of the law not being brought into force in time, the
first appeals, filed in the High Court, should remain in the High Court. The said appeals
would be heard and disposed of by the High Court in accordance with law under Section
116 of the said 1970 Act.
37
(Principal Reading)
Licensing of Patents
Case - Bayer Corporation v. Union of India, 2014
38
Fact - The petitioner, a U.S. corporation got a patent for the drug “Sorafenib Tosylate” (brand
name Nexavar) in India which is used in the treatment of patients suffering from Kidney cancer
i.e. Renal Cell Carcinoma (RCC) and liver cancer i.e. Hepatocellular Carcinoma (HCC).
On 6 December, 2010, Natco a drug manufacturer in India approached the petitioner for grant of
voluntary licence for the purpose of manufacturing and selling the patented drug in India at a
price of less than Rs. 10,000/- per month of therapy as against the price of Rs. 2,80,428/- per
month of therapy charged by the petitioner. On 27 December, 2010, the petitioner rejected
Natco’s application for grant of voluntary licence to manufacture and sell the patented drug.
On 29 July, 2011, Natco applied to the Controller of Patents for the grant of compulsory licence
under section 84 of the Patents Act, 1970. On 9 March, 2012, the Controller while granting
compulsory licence to Natco to manufacture and sell the patented drug also directed it to pay to
the petitioner royalty at 6% of its net sales of the patented drug.
The petitioner made an appeal to the IPAB. On 4 March 2013, the Tribunal after hearing the
parties upheld the order of the Controller granting the compulsory licence to Natco. However, it
increased the royalty payable by Natco to the petitioner from 6% to 7%.
The petitioner filed a writ of certiorari in Bombay High Court to quash impugned order of the
Tribunal into which has merged the order of the Controller.
Issue - Whether the patented drug was available to the public at reasonably affordable price?

➢ The Court stated that it was sine qua non before invoking the jurisdiction under section
84(1) that the applicant had made efforts to obtain voluntary licence from the patent
holder. The Court agreed that this condition was satisfied. The terms and conditions on
which the compulsory licence has been granted to Natco is in compliance with the
requirements of section 90 of the Act, particularly when the Tribunal has enhanced the
royalty from 6% to 7% of the sales turn over of Natco.
➢ According to Court, the reasonable requirement of the public has to be considered by the
authorities in the context of number of patients requiring the patented drug.
➢ Explaining the meaning of the term “adequate extent”, the Court further stated that
section 84(7) of the Act provided a deeming fiction which deems that reasonable
requirement of the public is not satisfied, if the demand for patented article is not met to
an adequate extent.
➢ Section 90(1) (iii) of the Act on which reliance is being placed does not direct the
Controller to fix the reasonably affordable price but only directs the Controller to
endeavor to ensure/secure that the patented article is available at reasonably affordable
prices. in the present case the price at which the petitioner is selling the patented drug is
at about Rs. 2,84,000/per month of therapy and the applicant was offering the same at
Rs.8,800/per month of therapy. In such a case the reasonably affordable price has to be
39
necessarily the price of the applicant as it by itself establishes that the price of the
petitioner is not a reasonably affordable price.
➢ On the contention of petitioner that the expenditure incurred on failed drugs as such
should also be taken into account, the Court stated that in terms of section 90(1) on which
the petitioner is placing reliance only requires the expenditure incurred for research and
development on the patented drug to be included for the purposes of considering the
terms and conditions of the Compulsory Licence.
➢ The Indian Patent and Design Act, 1911, also provided for grant of compulsory licence so
as to prevent abuse of the patent by the patent holder. Thus, the requirement/obligation of
the patent holder to utilise his invention for the benefit of the society was always a part of
the consideration for grant of a patent.
➢ The Court concluded by stating that the law of patent was a compromise between interest
of the inventor and the public. In this case, patented drug was meant to heal patients
suffering from cancer. Public interest is and should always be fundamental in deciding a
lis between the parties while granting a compulsory licence for medicines/drugs.

(Principal Reading)
Rights of Patentee and Patent Infringement
Case - F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2009
40
Fact - This appeal by the Plaintiffs F. Hoffmann-La Roche Ltd. (`Roche’) and OSI
Pharmaceuticals Inc. (`OSI’) is directed against the judgment dated 19th March, 2008 passed by
the learned Single Judge of this Court dismissing I.A. No. 642/2008 filed by them in their suit
CS (OS) No.89/2008, thereby declining their prayer for grant of an interim injunction to restrain
the Defendant/Respondent Cipla Limited from manufacturing, offering for sale, selling and
exporting the drug Erlotinib, for which the plaintiff No. 2 claimed to hold a patent jointly with
Pfizer Products Inc.
According to the plaintiffs the various tests conducted on Erlotinib have shown a marked
increase in the survival benefit in the patients suffering from advanced or metastatic non-small
cell lung cancer (NSCLC).
On 13th March 1996 OSI along with Pfizer Products Inc. made an application to the Controller
General of Patents, Trademarks and Designs, New Delhi for grant of a patent in respect of
Erlotinib. The Controller General of Patents, New Delhi granted the said applicants a certificate
bearing Patent No.196774 dated 23rd February 2007 which was subsequently recorded in the
Register of Patents on 6th July 2007.
It is claimed that Roche introduced Tarceva in India sometime in April 2006. The announcement
regarding the launch of Tarceva by the subsidiary of the Roche Group in India was given wide
publicity by the media inter alia in view of its importance in cancer treatment.
The defendant Cipla Limited is alleged to have announced in the print and electronic media its
plan to launch a generic version of Tarceva (Erlotinib) in India. One such news item appeared on
11th January, 2008 in an English daily “Mint”.
The plaintiffs state that from such news report they learnt for the first time of Cipla’s plans to
infringe and violate the plaintiffs’ rights. According to the plaintiffs the drug Tarceva (Erlotinib)
has been developed after long-sustained research and after incurring enormous expenditure inter
alia on the tests which are mandatorily conducted for its efficacy and safety.
The suit was filed on 15th January, 2008. Along with the suit the plaintiffs filed an application
under Order XXXIX Rule 1 Code of Civil Procedure 1908 (CPC), I.A. No. 642/2008, seeking
ad-interim injunction restraining the defendant from infringing the plaintiffs patent in respect of
Tarceva (Erlotinib).
It was mentioned in para 15 that the defendant had also filed a counter claim along with written
statement praying for the revocation of the patent granted to the plaintiff. it was specifically
averred that the plaintiffs’ patent "for which the complete specification is yet to be disclosed for
the drug Erlotinib" was "completely invalid".
It was stated that there were at least three EU patents dating back to 1993 which disclosed the
Quinazoline derivative. One of the said patents disclosed the exact chemical structure as found in
the plaintiff’s patent except for one substitution which is "obvious to any person skilled in the
art".
A one-month dosage of Tarceva for a patient undergoing treatment for cancer would cost Rs.1.4
lakh whereas the equivalent dosage of Erlocip would cost Rs.46,000/-. It was pointed out that in
41
the context of life saving drugs, it was in the public interest that the drug should be made
available at cheap and affordable prices.
Issue - Whether the plaintiffs have made out a prima facie case for grant of injunction, is that the
specification for the suit patent (i.e. patent No.196774 corresponding to U.S.”498) showed that it
was in respect of Erlotinib Hydrochloride Polymorphs A+B which was on their own showing an
unstable form which could not be administered as such?

➢ The expression “patent” connotes a right granted to anyone who invents or discovers a
new and useful process, product, article or machine of manufacture, or composition of
matter, or any new and useful improvement of any of those. It is not an affirmative right
to practice or use the invention; it is a right to exclude others from making, using,
importing, or selling patented invention, during its term. It is a property right, which the
state grants to inventors in exchange with their covenant to share its details with the
public.
➢ Observed that section 3(d) discouraged evergreening and prevented such derivative or
other forms of the already patented product being granted patent unless the derivatives or
other forms “differed significantly in properties in regard to efficacy”.
➢ The court observed that the question of availability of the drug at affordable price was
provided by way of provisions for compulsory licensing. Since the legislative intent was
to grant a monopoly to the patent holder for at least the first three years after the grant of
patent to enable it to recover the enormous costs incurred in research and development of
the product, the court should not override such legislative intent on the basis of untested
principles.
➢ The failure by the plaintiffs to bring the facts concerning the filing of the subsequent
applications for grant of a patent in respect of the Polymorph B form of the compound to
the notice of the Controller of Patents at the time of consideration of their application for
patent for the compound of a combination of Polymorphs A and B was not consistent
with the requirement of a full disclosure.
➢ In an application seeking ad interim injunction in a suit for infringement of patent, it
would be incumbent on the plaintiffs to make a full disclosure of the complete
specification of the product whose patent is claimed to have been infringed. The plaintiffs
will also have to disclose to Court the x-ray diffraction data of the product, particularly if
it is a pharmaceutical drug. The plaintiffs have to make an unequivocal disclosure that the
patent they hold covers the drug in question; whether there are any other pending
applications seeking the grant of patent in respect of any derivatives or forms of the
product for which they already hold a patent and the effect of such applications on the
suit patent.
➢ To the extent that the defendant has raised a serious doubt whether the plaintiffs in fact
hold a patent for the product sold in the tablet form as Tarceva, the plaintiffs must be held
not to have been able to cross the first hurdle of showing that they have a prima facie case
42
in their favour for grant of an order restraining the defendant from marketing Erlocip.
The plaintiffs therefore ought to have been refused injunction for their failure to make out
a prima facie case.
➢ The question of general public access in our country to life saving drugs assumes great
significance and the adverse impact on such access which the grant of injunction in a case
like the instant one is likely to have, would have to be accounted for. This Court finds no
ground to differ with the reasoning or the conclusions arrived at by the learned Single
Judge on this aspect.
➢ The appeal is dismissed with costs quantified at Rs.5 lakhs which will be paid by the
appellants/plaintiffs to the defendant within a period of four weeks. The interim order
stands vacated.
Topic – 1 (PVPFR)
(Principal Reading)
Law of Plant Varieties and Farmers’ Rights
43
Case - Monsanto Technology LLC v. Nuziveedu Seeds
Ltd., 2019
Fact - The appellants/plaintiffs instituted Civil Suit (Comm) seeking permanent injunction
against the defendants from using the trademark “BOLGARD” and “BOLGARD II” brand
cotton technology, violating the registered patent no. 214436 of the plaintiffs, and also to further
restrain the defendants from selling and or using seeds/hybrid seeds bearing the patented
technology, infringing the registered patent of the plaintiffs, along with rendition of accounts.
The plaintiffs pursuant to their patent rights had entered into a sub-licence agreement dated
21.02.2004 with the defendants for an initial period of ten years. The agreement entitled the
defendants to develop “Genetically Modified Hybrid Cotton Planting Seeds” with help of the
plaintiffs’ technology and to commercially exploit the same subject to the limitations prescribed
in the agreement. The agreement also provided for payment of licence fee/trait value by the
defendants, for use of the plaintiffs’ patented technology.
The agreement after extension was ultimately terminated by the plaintiffs on 14.11.2015 due to
disputes regarding payment of licence fee/trait value in view of subsequent price control regime
introduced by the State, and to which the defendants required adherence by the plaintiffs. The
plaintiffs filed an application for injunction under Order 39, Rule 1 and 2 of the Code of Civil
Procedure (hereinafter referred to as ‘the Code”), to restrain the defendants from using their
registered trade mark in violation of the registered patent during the pendency of the suit in view
of the termination of the agreement.
The defendants in their written statement inter alia contended that their rights were protected
under the Protection of Plant Varieties and Farmers’ Rights Act, 2001 (‘the PPVFR Act’). The
suit patent was bad because claims 1-24 were “process claims” concerning genetic engineering
or biotechnology method to insert “Nucleic Acid Sequence” (NAS) into a plant cell as in claim
25-27 practiced in laboratory conditions, unlike the complete biological process adopted by the
defendants.
The defendants also filed a counter claim no.51 of 2016 seeking revocation of the patent under
Section 64 of the Act, as being in violation of Section 3(j) of the Patents Act (referred to as “the
Act”) in respect of plants and seeds that contained DNA sequences, denying any infringement.
The learned Single Judge on 28.03.2017, while deciding the plaintiffs’ application for injunction,
observed that the issues arising in the suit necessarily required formal proof, particularly expert
opinion, which in complicated matters like that of patent were crucial for ascertaining the
breadth of the monopoly granted by the specifications of a patent claim. Considering the existing
patent registered under Section 48 of the Act, it was ordered that during the pendency of the suit,
the parties shall remain bound by their respective obligations under the sub-licence agreement
and that the license fee/trait value payable by the defendant shall be governed by the laws in
force.
Aggrieved, both the Plaintiffs and the defendants preferred appeals. The Division Bench
dismissed the plaintiffs’ appeal upholding the defendants’ contention with respect to patent
exclusion under Section 3(j) of the Act and that the plaintiffs were at liberty to claim registration
44
under the PPVFR Act, as the two Acts were not complementary, but exclusive in the case of all
processes and products falling under Section 3(j) of the Act. Consequentially, the defendants’
counter claim succeeded.
Issue -

➢ The DNA construct was inserted into a plant which confers the trait of insect tolerance to
the plant. It comprises of three different components i.e. (i) A promoter, (ii) A gene for
the production of Cry2Ab 5-endotoxin and (iii) a third component for the production of a
transit peptide. Of these three, Cry2Ab 5- endotoxin is stated to be a man-made gene.
This nucleic acid sequence is then inserted into the cell of the plant at a particular
location resulting in the production of “a fusion protein” which comprises the Cry2Ab 5-
endotoxin 7 bonded with transit peptide.
➢ The defendants themselves had contended in their appeal that the issues were
complicated requiring expert evidence to be considered in a fullfledged trial. The
Division Bench therefore ought to have confined its adjudication to the question whether
grant of injunction was justified or unjustified in the facts and circumstances of the case.
The Division Bench ought not to have examined the counter claim itself usurping the
jurisdiction of the Single Judge to decide unpatentability of the process claims 1-24 also
in the summary manner done.
➢ Summary adjudication of a technically complex suit requiring expert evidence also, at the
stage of injunction in the manner done, was certainly neither desirable or permissible in
the law. The suit involved complicated mixed questions of law and facts with regard to
patentability and exclusion of patent which could be examined in the suit on basis of
evidence.
➢ The Division Bench ought to have confined itself to examination of the validity of the
order of injunction granted by the learned Single Judge only. But we are not inclined to
remand the matter for that purpose to the Division Bench as we are satisfied in the facts
and circumstances of the case that the nature of the injunctive relief granted by the Single
Judge was in order and merits no interference during the pendency of the suit.
➢ The order of the Division Bench is set aside. The order of the Single Judge dated
28.03.2017 is restored and the suit is remanded to the learned Single Judge for disposal in
accordance with law. In view of the importance of the question involved, we expect the
parties to cooperate and facilitate the learned Single Judge in early disposal of the suit.
45
46

EXAM CAPSULE LED Intellectual Property Rights Law - II

Uploaded by

Copyright:

Available Formats

You might also like

EXAM CAPSULE LED Intellectual Property Rights Law - II

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

EXAM CAPSULE LED Intellectual Property Rights Law - II

Uploaded by

Copyright:

Available Formats

EXAM CAPSULE

Prepared by Law Exam Destination (LED)

Case - Donoghue v Allied Newpapers Ltd., (1937)

Observation & Judgement:

Case - University of London Press Ltd. v. University

Observation & Judgement:

Case - Eastern Book Company v. D.B. Modak, 2008

Observation & Judgement:

Case - Urmi Juvekar v. Global Broadcast News Ltd, 2008

Observation & Judgement:

Case - Barbara Taylor Bradford v. Sahara Media

Observation & Judgement:

Case - Anil Gupta v. Kunal Dasgupta, 2002

Observation & Judgement:

Case - Zee Telefilms Ltd. v. Sundial Communications,

Observation & Judgement:

Case - Zee Entertainment Enterprises Ltd. v. Gajendra

Observation & Judgement:

Observation & Judgement:

Note - Difference between breach of confidence and

Topic – 2 (Copyright Law)

Case - John Wiley and Inc v. Prabhat Chander Jain, 2010

Observation & Judgement:

Case - R G Anand v. Deluxe Films, 1978

Observation & Judgement:

Case - Warner Bros. Entertainment Inc. and Ors. v.

Observation & Judgement:

Case - Macmillan & Co. v. K. and J. Cooper, 1924

Issue - Whether an abridged work comes under the copyright?

Observation & Judgement:

Case - Amar Nath Sehgal v. Union of India, 2005

Observation & Judgement:

Topic – 3 (Copyright Law)

Case - Entertainment Network (India) Limited v. Super

Observation & Judgement:

Case - Event and Entertainment Management Association

Observation & Judgement:

Topic – 4 (Copyright Law)

Case - Chancellor, Masters & Scholars of University of

Case - Devendrakumar Ramchandra Dwivedi v. State of

Observation & Judgement:

Topic – 2 (Patent Law)

Observation & Judgement:

Case - Novartis Ag v. Union of India, 2013

Observation & Judgement:

Case - 3M Innovative Properties Ltd & Anr. v. Venus

Observation & Judgement:

The principles governing patentability of an invention as laid down in Bishwanath Prasad

Topic – 3 (Patent Law)

Case - Neon Laboratories Pvt. Ltd v. Troikaa Pharma

Observation & Judgement:

Case - J.Mitra & Co. Pvt. Ltd. v. Assistant Controller of

Observation & Judgement:

Case - Bayer Corporation v. Union of India, 2014

Observation & Judgement:

Topic – 5 (Patent Law)

Case - F. Hoffmann-La Roche Ltd. v. Cipla Ltd., 2009

Observation & Judgement: