Statutes Governing Various IPRs Trade Marks Act, 1999 Copyright Act, 1957 Designs Act, 2000 The Patents Act, 1970
Legislature – Parliament – Statutory Enactments Administrative Machinery – involved in Registration Procedures Departments in the Government viz., Police, Customs, etc., Judiciary Various Entities Involved
COPYRIGHT - A GLOBAL RIGHT Right exists on creation No registration is needed Protectable in all Convention countries. Almost 150 countries are covered Reciprocal protection in all countries
COPYRIGHT –Categories of copyrighted works literary artistic musical Dramatic Cinematograph films Sound Recordings Broadcasters rights Performers Rights
Copyright Computer includes any electronic or similar device having information processing capabilities (added by amendment in 1995) Duplicating equipment means any mechanical contrivance or device used or intended to be used for making copies of any work. Reprography means the making of copies of a work, by photocopying or similar means
Copyright Publication means making a work available to the public by means of copies or by communicating the work to the public. But by a review of cases one can see that protection against what is contemplated under the new WIPO treaty has already been granted by judge-made law.
Examples of some works Choreography: –art of arranging designing of ballet or stage dance in symbolic language. –It is a form of dramatic work. –In order to qualify for the copyright protection it must be reduced into writing.
Examples of some works Ballet: –The elements of ballet are the music, the story, the choreography, the scenery, and the costumes. –A composite work. –Such work could be the subject matter of copyright.
Examples of some works Painting : –An artistic work whether or not it posses any artistic quality. –To be entitled to copyright protection a painting must be original i.e. it should originate from the painter and not a mere copy of another painting. –A painting must be on a surface of some kind. –Facial make-up as such, however idiosyncratic it must be an idea, –cannot possibly be a painting for the purpose of copyright act.
Sculpture: –Included in the definition of artistic work –the work of sculpture includes casts and models. –means the art, act, process of carving cutting, hewing, molding or constructing materials into statutes, ornaments, figures –The act, art, process of producing figures or groups in plastic or hard materials. –The art of sculpture is the branch of the visual arts that is especially concerned with the creation of expressive form in three dimensions. –A sculpture should in some way express in three dimensional form an idea of the sculptor. Examples of some works NEW ENCYCLOPEDIA QUOTED IN WHAM-O CASE. A Frisbee was a sculpture. Copyright subsists original sculpture. The creation of a sculpture no doubt involves good amount of skill and labor
Creativity All Industry be it fashion design, manufacturing of industrial goods, manufacturing of aesthetic items of export, production of jewellery etc. has intellectual creativity in them Creativity starts from the very moment the creator draws his first sketch, makes improvements on it and finally arrives at the product.
Creativity Creation goes through various steps which can be broadly divided –Conception –Design & development –Commercial manufacture.
Creativity At each of these stages, there are works which are created that can be protected in law Examples -A drawing or a sketch which can be created as the first conception of a product is a copyrightable subject matter -The shape and aesthetic look given to a product is protectable under the Designs Act -The final product and the brand which is given to the product are protectable under the Trade Mark Act -If the shape is unique and can be identified exclusively with a specific product then the shape is also protectable At every stage there is creation of what is loosely referred to as Intellectual Property
Safeguards Organisations which are engaged in any of the above stages of creation of a product ought to protect their creation. Sufficient safeguards ought to be taken to ensure that such works are not misused or plagiarised
Safeguards Whenever designs or any other subject matter of Intellectual Property is created within an organisation, the contract should clearly specify that anything created by the employees during the course of their employment would automatically belong to the organisation which will have the rights to exploit the same
Safeguards Documents relating to the creation should be preserved chronologically in original. The same should be maintained under specific portfolio and should be kept under the custody of any of the Top Management Officials
Safeguards Once the final product is created and before it is sent for industrial manufacture or in the case of a designer product before it is put in the market for sale, steps should be taken to protect it by filing Copyright applications or Design applications Care must be taken to ensure that no prior publication is made before such applications are filed. This would ensure that in the case of a design, prior publication is not made and in case of copyright., no one else claims prior rights
Safeguards The applications which are filed should be followed up diligently and registration certificates obtained should be maintained in the records of the organisation. The Copyright office is located in Delhi. The Designs office comes under the Controller General of Patents and Designs & Trade Marks, which is situated at Kolkata. However, applications can be filed through posts If any misuse of the drawing, design, mark or work is seen, immediate steps should be taken to protect them
Defences Available That the design has been previously registered in India; or That it has been published in India or in any other country prior to the date of registration; or That the design is not a new or original design; or That the design is not registrable under this Act; or It is not a design as defined under clause (d) of section 2.
TERM OF COPYRIGHT The term of copyright –for literary, dramatic musical or artistic work is lifetime of author + 60 years –for anonymous or pseudonymous work is 60 years from the date of publishing –for a photograph, sound recording, cinematographic film and government work is 60 years from date of publishing of the work
INFRINGEMENT OF COPYRIGHT What constitutes infringement? –Doing or authorizing to do any of the following acts without the consent or license of owner of copyright: Reproduce the work including its storage by any electronic means Issue copies to the public Perform/Communicate the work to public Make translation of the work Make adaptation of the work To make any cinematograph film or sound recording in respect of the work.
INFRINGEMENT OF COPYRIGHT Permit for profit any place to be used for communication of the work when infringement To permit for profit any place to be used for the communication constitutes infringement of the copyright in the work unless he is not aware or has reasonable grounds for believing that such communication to the public will be an infringement of copyright make infringing copies of work for sale, hire or display or offer for sale or hire import infringing copies in India
Types of copyright in one work BOOKS: 1.Rights of the author 2.Rights of the publisher in India and abroad 3.Rights of a person publishing the book on CD Rom/multimedia format 4.Rights on the Internet
Types of copyright in one work MUSIC: 1.Right of lyricist 2.Music director 3.Singer 4.Orchestra 5.Music company 6.Version recordings
Types of copyright in one work Machinery This can be sub-matter of patent & copyright. But drawings of machinery falls in copyright. Escorts Construction case.
Types of copyright in one work PEPSI CAN 1.Copyright in the packaging, colours etc. 2.Trade mark in Pepsi 3.Copyright in circular device 4.Copyright in manner of writing Pepsi
Adaptations of various works MUSIC -- SONGS Original album New albums Remixes Version Recordings Pop versions DJ versions
Adaptations of various works STORY PUBLISHED IN A BOOK STORY ENACTED IN A DRAMA TRANSLATION TELE-SERIAL CINEMATOGRAPH FILM
Adaptations of various works STORY OPERA/BALLET MUSICAL VERSION COMPILATION Each of the above works, once created have a separate, new copyright, protectable as original works.
Adaptations of various works POEMS SONGS SOUND RECORDINGS PERFORMANCES POETRY BOOKS COMPILATIONS OF POETRY, including expert comments
Adaptations of various works PAINTINGS Licensing as covers for books Licensing on stamps Create new versions by changing the sizes of the painting Calendars Diaries etc.,
Exceptions-fair use Section 52 of the Copyright Act enlists acts which do not constitute infringement, viz. –Fair dealing for the purpose of private use, including research and criticism or review of the work. –Fair dealing for the purpose of reporting current events in a newspaper, etc. –reproduction for the purpose of judicial proceeding or report of judicial proceeding.
Exceptions-fair use –Making of temporary or back-up copies to provide against destruction or damage –Observation, study or testing of functioning of the computer programme –making of copies of software from a legal copy for non-commercial personal use
Fair Dealing Fair dealing is permitted for the purposes of –private study or research, –criticism or –review or –the reporting of current events.
Fair Dealing Fair dealing with the literary, dramatic, musical or artistic work does not infringe any copyright in the work if used –for the purposes of research or private study, –in the case of a published edition, in the typographical arrangement. The aim of this provision is to give students and researchers greater access to copyright works.
Fair Dealing or Permitted Acts SEC 52(1)(o) : Making a maximum of 3 copies for the use of a public library. Sec 52(1)(c): Reproduction for judicial proceedings or for the purpose of a report of a judicial proceeding. Judicial proceedings are defined as including proceedings before any court, tribunal, or person having authority to decide any matter affecting a persons legal rights or liabilities. SEC 52 (1)(m) : Reproduction in newspaper and magazine of the article of the current economic, political, social or religious topic in certain situation.
Fair Dealing or Permitted Acts SEC 52(1)(p): Reproduction of unpublished work kept in a museum or library for the purpose of research or study. Sec 52(1)(d) : Reproduction in any work prepared for the exclusive use of members of any legislature or publication of a translation of acts of legislature or rules
Fair Dealing or Permitted Acts Sec 52(1)(h) : Reproduction by a teacher or a pupil in the course of instruction, or as part of a question paper or in answers to such questions. e.g. It seems that the teacher may copy onto a blackboard a substantial part of a literary work, and pupil may copy it down. The teacher may however not photocopy the same material for the use by students in absence of a licensing agreement.
Fair Dealing or Permitted Acts SEC 52(1)(f): Reading and recitation in public of extracts (literary or dramatic). SEC 52 (1)(g) : Publication in collection for the use of educational institution in certain circumstances. Sec 52(1)(I) : Performance in course of activities of educational institutions in certain circumstances. WORK OF ARCHITECTURE: SEC 52(1)(s) :The making or publishing of a painting,drawing, engraving or photograph of a work of architecture does not constitute infringement.
Fair Dealing or Permitted Acts WORK OF ARTISTIC CRAFTSMANSHIP: SEC 52(1)(t): The making or publishing of a painting, drawing, engraving, or photograph of a sculpture, or other artistic work falling under the category of a work of artistic craftsmanship if the work is permanently situate in a public place or any premises to which the public has access will not constitute infringement.
Fair Dealing or Permitted Acts AUTHORS RIGHT TO USE MOULD, CAST etc. OF WORK: SEC 52 (1)(v): The use by the author of an artistic work, where the author of such work is not the owner of the copyright therein, of any mould, cast, sketch, plan, model or study made by him for the purpose of the work –Provided that he does not thereby repeat or imitate the main design of the work
Fair Dealing or Permitted Acts SEC 52(2) The exceptions to infringement listed under s. 52(1) in relation to literary, or dramatic, musical artistic work will apply also in relation to any translation or adaptation of such work
Whether registration is essential? Particulars needed for registration: 1.Name of author 2.Date of publication 3.Whether assignments are obtained 4.If it is an artistic work, then no-objection from Trade Marks Registry
Advantages of registration: 1.Documentation comes in place in terms of assignments/no-objections from authors 2.Evidence of date when the work was created 3.Prima facie evidence of particulars 4.Easier to take action especially criminal action where police are convinced with copyright certificate. (re:software, music) Whether registration is essential?
Remedies Civil remedy A suit for infringement of copyright can lie in the District Court or in a High Court of Original Jurisdiction.
Remedies contd., Civil remedy Reliefs to be claimed: 1. Injunction coupled with Anton Piller orders, John Doe orders & Mareva injunction 2.Rendition of accounts, damages 3.Delivery Up
Remedies contd Criminal: Copyright infringement is a cognisable offence. A criminal complaint can be filed either before the police or a Magistrate and search & seizure orders can be obtained.
Pros & Cons of Civil remedies PROS Proper judicial determination of rights Likelihood of earning damages Less subject to challenge Commissioners seizure orders are more respected CONS Delays - Trial, Appeal, Supreme Court Damages not usually awarded No severe punishment for violation of rights
Pros & Cons-Criminal remedies PROS Quick remedy Greater possibility of curbing violation quickly because of fear of being arrested in a criminal case CONS Chances of seizure of goods may be less as there can be a leakage Difficulty in coordinating with police authorities
CRIMINAL REMEDIES Section 63 of the Copyright Act,1957 defines offence of infringement of copyright. Infringement of copyright is a cognizable offence punishable with imprisonment upto 3 years and fine upto 2 lakh rupees
OVERLAP OF DESIGN, COPYRIGHT & TRADE MARK
Copyright & Design Design is for aesthetic appearance. Anything functional is not registrable as a design Copyright in a design comes to an end if the work has industrial application and is reproduced more than 50 times Is there diff. between copyright in a design and copyright in a drawing. Yes.
Confusion is worse with Trade mark definition being amended Shape is also a trade mark – But articles like dresses, sculpture etc., cannot come in trade marks. However commercial products have more overlaps in protection.
Designs Design As per Copinger and Skone James on Copyright, a design is, in broad terms, the plan or scheme for the appearance of an article (or a part of an article). It primarily concerns with what an article looks like or is intended to look like. It is not concerned with how an article performs its function. The design of an article may be recorded in any form including the written description, sketch, drawing, photograph or it could actually be embodied in the article itself. Design has also been defined as the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. Copinger & Skone James on Copyright, 15th Edn., Vol. 1, pg. 730
Infringement Infringement in the context of Indian Textiles, Apparels and Life Style Industry: Indian Textiles: If artistic patterns are drawn up on a piece of cloth to be used for any purpose, including but not limited to for instance, making of garments, bed sheets, sofa covers, table cloths, etc., then the artistic patterns printed on the piece of cloth are protected as copyrights. On the other hand, if a designer of clothes creates a new pattern of garment to be used as a fashionable attire, then the sketch/ drawing that is drawn of the pattern of the garment is protected as a copyright.
Infringement However, once the idea of the creative pattern is implemented on the piece of cloth, then the same may be protected as a design right. If, the intention of the designer is to ensure that only one piece of the garment is manufactured, then the same could also be protected as the artistic work imprinted on the piece of cloth having copyrights.
Infringement Alternatively, if the designers intention is to produce several thousands of garments in different scheme of colours, etc., then the intention of the designer is to use the said design in the industry. Accordingly, the latter form of use of the same material may be considered to be a design. There is an ongoing debate on the issue and a lot depends on the manner, in which the author of the work intends to use the work.
Cases Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Honble Delhi High Court
Cases Allegation that the Defendants garments were copies of the garments designed and crafted by the Plaintiff The said garments were supposed to be developed, designed and crafted by the plaintiff as a part of their collection for the year 2006 The Honble Delhi High Court vide order dated 21.10.2008 granted ex-parte ad-interim injunction Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Honble Delhi High Court
Cases Defendant served notice. Application for vacation of stay moved claiming that both designs are separate. The impugned prints are generic Jamawar Prints Matter is sub-judice – Referred to Mediation Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Honble Delhi High Court
Cases Allegation of infringement of copyright as the defendant used the dress in a movie which was worn by an actress Importance of costumes worn by actors and actresses in a film play special role and serve purpose of promotion of the movie Held that all kinds of clothes worn by actors cannot be stated as Fair Use permitted under sec 52 (1) (u). Suneet Varma Design Pvt. Ltd. Vs Jas Kirat Singh Narula & Anr. [2007 (34) PTC 81 (Del)]
Cases Case relating to design of upholstery Plaintiff claimed to have copyright in the artistic work applied to upholstery design Did not have a registered design however they claimed a copyright in the drawings Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del)
Cases Question was whether without a registered design, the plaintiff could protect the same and whether the copyright was lost because of more than 50 reproduction of the said upholstery fabric design The Court although upholding that the motives etc. of the plaintiff was artistic and also holding that the defendants had copied it, on a legal and technical argument that more than 50 reproduction had been made, refused to grant injunction Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del)
Cases Plaintiff claimed an injunction on the ground that his designs of shoe soles had distinctive shape and configuration During the course of argument, it was revealed that the plaintiff himself had copied designs from Bata India Ltd. Thus Court had held that the plaintiff himself being a pirater, no injunction can be granted in favour of the plaintiff 1997(17) PTC 268: Baldev Singh vs. Shriram Footwear
Cases Case under the Designs Act, 2000 Plaintiff had claimed that defendants copied the design Stylush, Corel and Ultra in respect of bath tubs Defendant had not established that he had been selling bath tubs prior to the registration obtained by plaintiff in respect of similar designs Plaintiff had a registered design Sufficient resemblance between the two designs and the plaintiffs design was protected Hindustan Sanitaryware & Industries Ltd. vs. Dip Crafts Industries: 2003(26) PTC163 (Del)
Cases Judgment of full bench of Delhi High Court Holds primarily that in a case filed for infringement of a design, the defendant would be entitled to take a defence that the registration of the design itself was incorrect Various grounds can be taken for claim that the registration was granted wrongly, namely, that the design is not new or original or unique If any of the grounds can be proved, then the fact that the design is registered by itself, does not come to the aid of the plaintiff Registration can be a proof at the first stage but it has to be established that this was not copied design and that it is a new and original Metro Plastic Industries (Regd.) vs. M/s. Galaxy Footwear New Delhi: 2000(20) PTC 1
Cases Suit filed alleging infringement of design in respect of a bottle which is being used by plaintiff for packing hair oil Court found plaintiffs bottle to be common bottle used by several other companies Bottles were held to be in use much prior to the registration of the design of the plaintiff No peculiar feature of the bottle registered as a design and the plaintiff had not pin pointed any novelty in the design of the bottle Held that for validly of the registered design there must be some novelty and originality in the design sought to be protected and it must have not been pre-published Dabur India Ltd. Vs. Rajesh Kumar & Ors 2008 (37) PTC 227
Cases Suit filed for the infringement as well as passing off of design in Toy Scooter The defendant pleaded the prior publication of the design Another defense taken by the defendant was that the defendant too was having the registration of the design Court held that there were various dissimilarities in the prior published design The design of the defendant was identical to the design of the plaintiff Hence the defendant is not protected even on account of the registration having been obtained by it which admittedly is the subsequent registration Vikas Jain Vs. Aftab Ahmad And Ors, 2008 (37) PTC 288 (Del)
Cases Suit for infringement of a design, where the defendant had filed a cancellation petition with the Controller of Designs Proceedings pending before the controller of Design who had heard the arguments in the cancellation petition before him and the order had been reserved Defendant had also sought the transfer of the cancellation proceedings from the Controller to the Honble Delhi High Court Honble High Court declined to stay the proceedings pending before the Controller and to order for the transfer of those proceedings as there was no provision for the transfer of the cancellation proceedings under the Act Reckitt Benckiser Australia Pty Ltd. And Anr Vs. R. B. Impex And Ors 2008 (37) PTC 262 (Del)
Cases Single Judge of this Court held that once a design was registered, prima facie, it was only the registered proprietor, who could take benefit of the registered design The Court then negatived the contention that even if a false plea about the validity of registration was taken up by a Defendant, no interim injunction should be granted. The Court went on to hold that the contention that the design had no novelty was a valid defence to the Suit and could be raised to challenge the validity of the registration. It further held that this did not have any bearing at the initial stage and that these were matters to be decided on evidence. It must be mentioned that after so holding the Court, went into the merits and held that in that case it had not been shown that the design was previously published Sat Pal Singh Vs. S.P. Engineering Works - 1982(2) PTC 193
Faber Castell Textliner. A dark green body Unique cap of same colour as colour of ink Gold lettering on green body Regd design. Prior Publication could be through prior documents or some other prior user. Injunction granted Cases Faber Castell Vs. Pikpen - 2003 PTC 538
Suitcases made by plaintiff copied by defendant The entire range was copied Claim was based on drawings & copyright No registered design No protection granted as it is manufactured industrially more than 50 times. Cases Samsonite Vs. Vijay Sales 1998 PTC 372
Design of photo-frames Registered design Defendant no.2 was an employee of plaintiff Injunction granted protecting the copyright in the design of photo- frames Cases Preeti Gupta Vs. Rajendra Prahladkar 2002 PTC 64
RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Plaintiff & defendant manufacture ladies clothing. Copyright claimed in 3 stages of Manufacturing Procedure viz., - design sketches, - cutting patterns - prototype garments
Def argued –Prototype is not work of artis.crtms. –No one author is involved –Cutting patterns are functional –One of the sketches was copied from earlier dress –Dress could not reproduce a sketch –Stiffness was to be given otherwise it is not a dress –Delay RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455
Court Held: –It is work of A.C –Need not unite with one author –Dress can be a 3 dimensional reproduction of a sketch –Huge diff between the earlier dress and new one, hence plaintiff work is original RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455
BRIGID FOLEY Ltd. v ELLOT (1982) RPC 433 It has been observed that if there is a direct copying from a garment which one person has designed and produced by himself, doing all the cutting, stitching, and so on, there might be a case for saying that there would be a breach of doing that.
BERNSTEIN v SYDNEY MURRAY(1981) RPC 303 The plaintiffs were owners of copyright in certain sketches for ladies garments in which the garments were shown as worn by ladies. They had displayed garments made from such sketches in fashion shows and shop windows. Defendants have copied the dresses produced from plaintiffs sketches. It was held that this constituted infringement of copyright in sketches.
BURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS (1936) CH D 400 The plaintiffs alleged that defendants had infringed the copyright in the sketch described as frock being worn by a young lady It was also alleged that there was infringement of artistic copyrights in dresses made up by the plaintiffs in accordance with those sketches, which dress themselves were said to be works of artistic craftsmanship It was held that thee was no infringement of a sketch by a frock.
In MERLET v MOTHERCARE Ltd (1986) RPC 115 The plaintiff made a prototype baby cape for her child. The cape was subsequently manufactured by the second plaintiff. The defendants copied the plaintiffs garments and made baby cape in accordance with the copy. The plaintiff claiming the handmade prototype garment as a work of craftsmanship it was not a work of artistic craftsmanship brought an action for infringement of copyright.
It was held that though the prototype was a work of craftsmanship it was not a work of artistic craftsmanship. It was held that in approaching the question the garment has to be considered by itself and neither as worn nor as containing a baby. No aesthetic satisfaction unless worn on the baby Action was dismissed. An appeal against infringement of certain drawings was dismissed. In MERLET v MOTHERCARE Ltd (1986) RPC 115
KOMESAROFF v MICKLE (1988) RPC 204 A product called (moving sand pictures) comprising a mixture of liquid, colored sands, and a layer of air bubbles encased within two glass panels was held not a work of artistic craftsmanship. They are functional – not regd design
Cases MERCANDISING CORPORATION v HARPBOND(1983) FSR 32 P, 32 (Facial make-up was not held a painting within the meaning of sec 3 of the U.K. copyright act.)
Ford Motor Co.1993 RPC 399 Vehicle parts are not subject matter of design because they have no value in commerce except as part of a vehicle Mirrors, seats, etc., were capable of registration as substitution was possible without affecting shape of the vehicle. The distinction that seems to have been drawn is that there are several parts which are mostly hidden and never seen, such parts cannot be registered as designs. However, parts and their circuits if in drawing form are artistic works
George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 Upholstered chairs & settees. One prototype was evolved – chairs were copied from it and sold Def. copied the chairs and hence the prototype Trial Court granted injunction. Appeal court dismissed the injunction. HL refused protection
George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 Artistic craftsmanship need not necessarily mean work of art. The product may be a commercial success but need not be of Art craftsmanship
Merchandising Corpn Vs. Harpbond 1983 FSR 32 Adam from the pop group Adam & Ants New look for himself with Red- Indian face markings Two red lines in grease paint, light blue line in between, heart over left eyebrow & a beauty spot Def. made a poster of it & made a portrait & superimposed new look over an old poster In infringement action court held that this is not a painting and hence not protectable.
Animal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985) Novelty slippers Resembles a bears foot or paw Slippers design features separate from its utilitarian features, incl. impractical width of sole, shape of sole, profile of slipper, toes which are unrelated to function and copyrightable. Injunction granted.
CONCLUSION Technological advancement made the job of the creator easy ………it also made the job of the copier easy. Consciousness in IPR is the only way to prevent the latter.