UNIT – I

Meaning and nature of the intellectual property

Intellectual property (IP) is an intangible property that comes into existence through human
intellect. It refers to the creations of the mind or the products of human intellect such as
inventions; designs; literary and artistic works; symbols, names and images used in
commerce.

The “Convention Establishing the World Intellectual Property Organisation” states

that “intellectual property” shall include the rights relating to: —

1. literary, artistic, and scientific works,

2. performances of performing artists, phonograms, and broadcasts,
3. inventions in all fields of human endeavour,
4. scientific discoveries,
5. industrial designs,
6. trademarks, service marks, commercial names and designations,
7. protection against unfair competition, and
8. all other rights resulting from intellectual activity in the industrial, scientific,
literary, or artistic fields.

Other categories of intellectual property include geographical indications, rights in respect of

know-how or undisclosed information, and layout designs of integrated circuits.

Meaning of Intellectual Property Rights

The term “Intellectual Property Rights (IPR)” is used to refer to the bundle of rights
conferred by law on a creator/owner of intellectual property. These are the rights that a
person has over the creations of his mind. They seek to protect the interests of the creators by
rewarding their mental labour and allowing them to retain property rights over their creations.
The creators and inventors are thus allowed to benefit from their creations. IP rights are the
legal rights governing the use of intellectual property.

Need for legal protection of intellectual property

The various reasons behind granting protection to intellectual property through the enactment
of suitable Intellectual Property (IP) laws are as follows:

1. To encourage inventions and creations that promote the social, economic,

scientific, and cultural development of society by incentivising the creators and
allowing them to make economic gains out of their creations.
 2. To provide legal protection to intellectual creations.
3. To prevent third parties from enjoying the fruits of someone else’s creativity.
4. To facilitate fair trading.
5. To promote creativity and its dissemination.
6. Giving recognition to the efforts of creators.
7. Preventing the infringement of proprietary rights of creators in their creations from
unauthorised use.
8. To encourage investment of skill, time, finance, and other resources into
innovation activities in a manner that is beneficial to society.

Advantages and disadvantages of Intellectual Property Rights

Advantages of Intellectual Property Rights

1. IPR protection gives your business a competitive advantage over other similar
businesses.
2. IPR protection allows you to prevent unauthorised use of your intellectual property
and works.
3. IPR enhances the value of your company and also opens avenues for
collaborations and opportunities for generating income such as by entering into
licensing agreements to exploit/work the invention/work.
4. IPR helps to attract clients and creates your brand value. For example, the
consumers start identifying your products with the unique logo or registered
trademark.

Disadvantages of Intellectual Property Rights

1. You have to incur additional costs for getting IPR protection including legal costs
and other fees.
2. Even after getting the intellectual property right, you might still face a lot of
difficulties in curbing the copying and unauthorised use of your work. Moreover,
sometimes an attempt to enforce IP rights could lead to a reduction in the
consumer base.
3. IP rights aren’t absolute. There are certain limitations and conditions imposed by
law on the exercise of these rights (such as a limited period of protection and
compulsory licensing provisions) in the interests of the general public.
International regime of Intellectual Property Rights
Various agreements and conventions have been formulated at the international level to
govern and regulate the various aspects and emerging issues relating to intellectual property
rights. Some of the major efforts undertaken in the form of major international instruments,
treaties, conventions, and forums dealing with intellectual property rights are as follows:

The Paris Convention on the Protection of Industrial Property

The Paris Convention on the Protection of Industrial Property adopted in 1883 is the oldest
international convention and was the first major step taken towards the protection of IP
rights. The Convention contains 30 Articles dealing with various aspects and types of
industrial property including patents, trademarks, service marks, utility models, industrial
designs, geographical indications, and the repression of unfair competition. The Convention
was revised in July 1967 in Stockholm.

The Convention is based on three guiding principles:

1. National treatment: Each contracting state must provide the same level of
protection to nationals of other contracting states as it grants to its own nationals.
2. Right of priority: The Convention provides for the right of priority in the case of
patents and utility models, marks and industrial designs. This right means that the
applicant may, within a certain period of filing a regular first application in one of
the contracting states, apply for protection in any of the other contracting states as
well. The subsequent applications filed within the grace period shall be regarded as
being filed on the same date as the first application. The benefit of this provision is
that applicants seeking protection in several countries need not present all of their
applications at the same time and have a period of 6/12 months to decide in which
countries they wish to seek protection.
3. Uniform rules: The Convention lays down some common rules that must be
followed by all member states such as:

1. Patents granted in different contracting states for the same invention are
independent of each other and the inventor has the right to be named as such in the
patent.
2. Industrial designs must be protected in each contracting state, and protection may
not be forfeited on the ground that articles incorporating the design are not
manufactured in that State.
3. Protection must be granted to trade names in each contracting state without there
being an obligation to file or register the names.
Berne Convention for Protection of Literary and Artistic Works, 1886

The Berne Convention for Protection of Literary and Artistic Works adopted in 1886 is the
most significant International Convention dealing with copyright protection. It provides for a
minimum term of protection of copyright i.e. life of the author plus 50 years or an alternative
of 50 years from the publication of anonymous and pseudonymous works. The Convention is
based on three basic principles:

1. Principle of national treatment: The works originating in one member state must
be given the same protection in each of the other member states as the latter grants
to the works of its own nationals.
2. Principle of automatic protection: Protection should not be conditional upon
compliance with any formality. This means that the original artistic and literary
works shall be given automatic global protection from the moment of their
creation, in a fixed medium, thereby ensuring equal treatment to such works.
3. Principle of “independence” of protection: This means that the protection is
independent of whether the protection exists in the country of origin of the work or
not.

TRIPS Agreement

The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS) 1994 is an international level multilateral agreement that deals with the protection of
intellectual property rights. The TRIPS Agreement recognizes the importance of IP in
international trade and also provides a dispute resolution and prevention mechanism for
trade-related IP issues. Every member of WTO is required to observe the provisions of TRIPs
and provide a minimum level of IP protection in their national laws.

Categories of IP covered by TRIPs

 Copyright and related rights

 Trademark
 Geographical indications
 Industrial design
 Patent
 Layout designs of integrated circuits
 Protection of undisclosed information
 UNIT – 2

Components of Intellectual Property Rights

Copyright

The term ‘copyright’ concerns the rights of the creators/authors of literary and artistic works.
A copyright is also called a ‘literary right’ or ‘author’s right’.

Copyright gives an author exclusive rights to his creation and prevents the copying and
unauthorised publishing of his work.

Copyright protection begins at the very moment a work is created and expressed in some
tangible form. Copyright protection is granted to a work that is an original creation. Also, the
protection extends only to expressions.

Mere ideas without any tangible expression are not granted legal protection and do not form
the subject matter of copyright. Copyright protects the following two rights of the author:

1. Economic rights i.e., the right of the owner to derive financial benefit from the use
of their works by others. For instance, the right to prohibit or authorise
reproduction of the work in various forms, the right to prohibit unauthorised
translation of the work, etc.
2. Moral rights i.e., protection of non-economic interests of the author. For instance,
the right to oppose changes to work and the right to claim authorship, etc.

What kind of works can be protected under copyright?

The following categories of works typically come under copyright protection:

 Literary works such as novels, plays, poems, and newspaper articles;

 Computer programs and databases;
 Films, musical compositions, and choreography;
 Artistic works such as photographs, paintings, drawings, and sculpture;
 Architecture and advertisements, maps, and technical drawings.

In India, the term of copyright protection extends throughout the lifetime of the author and
then 60 years after his death.
 Law relating to copyright in India: the Copyright Act, 1957

The Copyright Act, 1957 is a comprehensive legislation dealing with copyrights in India. The
Act regulates the various aspects relating to copyright regime in India such as:

 Registration of copyright
 Publication, term of copyright
 Assignment, and licence of copyright
 Special rights of broadcasting organisation and performer’s rights
 Infringement of copyright and remedies thereof
 Establishment of copyright authorities and copyright societies
 International Copyright

Section 14 of the Copyrights Act, 1957 extensively defines copyright and Section 13(1) lists
works where copyrights subsist. In general, these works would include-

 Original Literary, dramatic, musical and artistic works;

 Cinematograph films;
 Sound recording

Section 17 - Copyright Act, 1957:

The conditions that are ought to be specifically kept in mind while interpreting the state of
ownership has been provided statutorily under Section 17 of the principal Act are discussed as
follows –

 For literary, dramatic or artistic works – The author who creates them would be the first
owner;
 Works performed under contractual service as an employment – ownership lies upon the
employer;
 In case of photographs shot for cinematographic films – ownership lies at whose instance it
has been taken;
 Works done under a value of consideration – ownership lies on the person who pays for such
work;
 For a speech delivered at public – ownership lies on who delivers such speech;
 If a speech is made on behalf of another person – the person who assigned the work to deliver
such speech would be the owner of the same;
 Works published or orders passed by the Government or any organization – ownership lies on
the Government or the organization which has published it.

 Rights of the owner of a Copyright:
In order to exercise and enjoy the position of ownership of the copyrighted work, certain rights
have been conferred to the owner in terms of morality and on monetary benefits by the
copyright Act, 1957, and are also recognized by International conventions like TRIPS and
Berne.

Economic rights of a Copyright Owner –

Any right that yields or payoffs the owner monetarily are said to be the economic rights. The
economic right of the owner are been listed out in Section 14 of the principal Act, under the
meaning of copyright.

Moral rights of a Copyright Owner:

A moral right would stand a step ahead of an economic right in which it is based on the dignity,
uniqueness and the reputation that a work has gained and maintained. It has been well
illustrated in the case of Amarnath Sehgal v Union of India[5],the plaintiff’s masterpiece was
damaged by the defendant by which it lost its aesthetic and market value. A mandatory
injunction was passed by the court in addition of fine amount of 50 lacs as the cost of damage.

The moral rights of the copyright owner has been provided under Section 57 of the principal
Act that encompasses three basic moral rights.

i. Right of paternity;
ii. Right of integrity; and
iii. Right to retraction.

Right of paternity:

The right of an owner of copyright to claim and prevent others to claim the ownership of his
copyrighted work is said to be a right of paternity. Sholay Media Entertainment and Pvt. Ltd.
V Parag M. Sanghavi was a landmark judgement delivered on the Right of paternity of the
copyright owner, where the court granted protection to the title of the movie which made the
defendant to replace his’ movie title completely by refraining the use of the name which causes
damage to the cult of the name “Sholay” since it was deceptively similar with the same.

Right of integrity:

The right of the owner of the copyright to protect the reputation of his own work from
exploitation is the right of integrity. Sajeev Pillai v. Venu Kunnapalli & ors the respondent
was alleged on the act of pre – release publicity of the movie which was yet to be released
without ant authorized permission. The court granted relief to the aggrieved petitioner by
restraining the respondent to carry on such act which damages the exclusiveness and reputation
of the movie.

Right to retraction:

Retraction is an act of taking back the previous assertion made. The author at times may feel
to give up his own right as an act of honoring the dignity of his work which sounds like
assassinating ones own life for the sake of protecting the so far gained reputation. The principal
Act, under section 57 grants the author the right to withdraw from the publication of his work.
In simple terms it means waiving of his granted rights for the sake of protection of reputation
or integrity. In Amarnath Sehgal v Union of India[8], the court pointed out the right to
retraction as to withdraw ones own publication if the author feels the condition of his work is
derogatory in nature and are advisable to do the withdrawal of the same. This would be the
author’s right to retraction.

Assignment of Copyrights

Section 18 of Copyrights Act

The owner of the copyright of a work has the right to assign his copyright to any other person.
The effect of assignment is that the assignee becomes entitled to all the rights related to the
copyright to the assigned work] However, mere grant of right to publish and sell the
copyrighted work amounts to publishing right and not assignment of copyright.

Where the assignee of a copyright becomes entitled to any right comprised in the copyright, he
shall be treated as the owner of the copyright in respect of those rights. The assignor shall also
be treated as the owner of copyright with respect to unassigned rights. The legal representatives
of the assignee shall be entitled to the benefits of assignment, if the assignee dies before the
work comes into existence.

In Video Master v. Nishi Production the Bombay High Court considered the issue whether
assignment of video rights would include the right of satellite broadcast as well. The Court
agreed with the contentions of defendant that there were different modes of communication to
the public such as terrestrial television broadcasting (Doordarshan), satellite broadcasting and
video TV. The owner of the film had separate copyright in all those modes, and he could assign
it to different persons. Thus, satellite broadcast copyright of film was a separate right of the
owner of the film and the video copyright assigned to the plaintiff would not include this.

Mode of Assignment: Section 18 of Copyrights Act

As per section 19, assignment of copyright is valid only if it is in writing and signed by the
assignor or his duly authorized agent. The assignment of a copyright in a work should identify
the work and specify kind of rights assigned and the duration and territorial extent of such
assignment. Further, it should specify the amount of royalty payable, if any, to the author or
his legal heirs during the continuance of assignment and the assignment will be subject to
revision, extension or termination on terms mutually agreed upon by the parties.

If the period of assignment is not mentioned it will be deemed to be taken as five years from
the date of assignment. If the territorial extent of such assignment is not stipulated, it will be
taken as applicable in whole of India.

Also, Section 19(8) contemplates that the assignment of copyright work against the terms and
conditions on which rights have been assigned to a particular copyright society where the
author of the work is a member shall be void.

Further, Section 19(9) and section 19(10) opine that the assignment of copyright for making
cinematograph film or sound recording shall not affect the right of the author to claim an equal
share of the royalties and consideration payable with respect to use of his protected work.
 In Saregama India Ltd v. Suresh Jindal it was held that the owner of the copyright in a future
work may assign the copyright to any person either wholly or partially for the whole of the
copyright or any part thereof and once the assignment is made the assignee for the purpose of
this Act is treated as the owner of the copyright.

Licensing of Copyright

The owner of copyright may grant a license to do any of the act in respect of which he has an
exclusive right to do. The license can be classified into following categories:

Voluntary license: Section 18 of Copyrights Act

The author or the copyright owner has exclusive rights in his creative work and he alone has
right to grant license with respect to such work. According to section 30 of the Copyright Act
1957, the owner of the copyright in a work may grant any interest in his copyright to any person
by license in writing, which is to be signed by him or by his duly authorised agent. A license
can be granted not only in existing work but also in respect of the future work, in this situation
assignment shall come into force when such future work comes into existence. Where a
licensee of the copyright in a future work dies before such work comes into existence, his legal
representatives shall be entitled to the benefit of the license if there is no provision to contrary.

The mode of license is like an assignment deed, with necessary adaptations and modifications
in section 19 (section 30A). Therefore, like an assignment, a license deed in relation to a work
should comprise of following particulars:

a. Duration of license
b. The rights which have been licensed
c. Territorial extent of the licensed
d. The quantum of royalty payable
e. Terms regarding revision
f. Extension and termination

Voluntary licenses can be:

Exclusive – The term exclusive license has been defined in Section 2(j) as a license which
confers on the licensee and persons authorized by him, to the exclusion of all other persons,
any right comprised in the copyright work.

Non-exclusive – It does not confer right of exclusion. It is mere grant of an authority to do a

particular thing which otherwise would have constituted an infringement. When owner grants
an exclusive right, he denudes himself of all rights and retains no claim on the economic rights
so transferred.

Co-exclusive – Here the licensor grants a license to more than one licensee but agrees that it
will only grant licences to a limited group of other licensees.

Sole license – Where only the licensor and the licensee can use it to the exclusion of any other
third party.
Implied license – Author impliedly allows or permits the use of his work. For example, he had
knowledge that someone is using his work but he did not take any action.

Compulsory Licenses

Compulsory and statutory licenses can impact both the identity of the licensee who the owner
chooses to deal with and the terms, including rates of royalty that the owner may stipulate for
such dealing. Viewed from this perspective, compulsory licenses are less of an infraction on
owner autonomy, on both these counts. The owner does retain a fair bit of autonomy to enter
into appropriate licensing arrangements with those who he may deem fit, and he is also
permitted to negotiate on the terms of the license within the zone of reasonableness. Normally,
it is an unreasonable refusal to deal with a person that gives rise to a compulsory license. This
brings us to the third important distinction between a compulsory and statutory license. The
former is always granted upon specific application by an individual to the competent authority.
The latter, on the other hand, is a blanket fixation of rates of royalty by the authority and a grant
of standardised licenses to all those who are interested in availing the same. The owner, as a
necessary corollary, has no autonomy on the identity of those who obtain the license, or what
they pay as royalty for the same.

Categories of Compulsory Licenses

There are five main categories of compulsory licenses currently operating in India.

These are:

1. Licenses in respect of works unreasonably withheld from the public;

2. Licenses in respect of orphan works;

3. Licenses in respect of works for the differently abled;

4. Licenses in respect of translations;

5. Licenses in respect of reproduction and sale of works unavailable in India.

Statutory Licenses

As seen from the above discussion of compulsory licenses, such licenses can be understood as
a particularised expropriation of owner autonomy in respect of the copyrighted work. The need
for such expropriation arises only upon acts or inaction on the part of the owner that render the
work unavailable to the public or differently abled persons. Statutory licenses, on the other
hand, do not require any examination into the conduct of the owner. It attempts a wholesale
expropriation of owner autonomy, once the work fits within the broader class of works that can
be so licensed.

There are two such categories of statutory licenses, namely cover version recording licenses
(Section 31C) and broadcasting licenses (Section 31D). The first has existed, though as part of
the fair dealing exceptions in Section 52, from the very beginning. The second is a very recent
addition to the Act vide the 2012 amendment.
 Copyright Infringement

When Copyright is infringed

Section 51(b) (IV) states: “Copyright in a work shall be deemed to be infringed when:

1. any person, without a license granted by the owner of the Copyright or the Registrar of
Copyrights under this Act, or in violation of the conditions of a license so granted or of
any conditions imposed by a competent authority under this Act-
2. Does anything, the exclusive right to which is conferred on the owner of the Copyright
by this Act.

 When any person-

 Make for hire for sale, sells or lets for hire, or trade displays or offers for sale or hire
 Distributes either for commercial purposes or in such a way as to harm the owner of the
copyright.
 By way of public trade shows.
 Imports into India of any infringing copies of the work (omitted by Act 65 of 1984, S.3
(effective 8-10-1984)

OR

Section 51 of the Copyright Act, 1957 provides for ‘What constitutes copyright infringement’.
Copyright is said to be infringed:

1. when a person does something that the owner of the copyright has the exclusive
right to do, or permits for profit the use of any place for the purpose of the
communication of the work to the public, where such communication constitutes
an infringement of the copyright in the work, without a licence or in violation of
the conditions of the licence.
2. When any person makes for sale or hire, sells or lets for hire, or displays or offers
for sale or hire, or distributes either for the purpose of trade or to such an extent as
to prejudice the owner of the copyright, or exhibits in public, or imports into India
any infringing copies of the work.

Section 52 enlists the acts which do not constitute an infringement of copyright such as fair
dealing in any work for personal, private use or for research, reproducing any work for the
purpose of a judicial proceeding or replication by a teacher or a pupil in the course of
teaching etc.

It is pertinent to note that the Copyright Act provides for both civil and criminal remedies
against infringement of copyright.
 Fair Dealing was used in this particular Benchmark Case Judgement

The High Court held in the case of Kartar Singh Giani v. Ladha Singh that “two points in
relation to the meaning of fair expression were raised, in fair dealings:

 An intention to compete with and profit from such competition was necessary in order to be
unfair.
 An infringement unless the infringer’s motive was unfair, in the sense of being wrong the
dealer.
Exceptions to the reproduction right (the 3-step test)

The three step test made its debut in the Berne in 1967, as Article 9(2), for exceptions to the
new right of reproduction.

How to register a copyright in India

The Registrar of Copyrights maintains a Register of Copyrights wherein he enters the names
or titles of works and the names and addresses of authors, publishers and owners of the
copyright. This entering or recording of names and other particulars of the copyright owners
in the register of copyrights is called Registration of copyright.

The procedure for registration of copyright in India is provided under Section 45 of the
Copyright Act, 1957 read with Chapter XIII of the Copyright Rules, 2013.

Steps to register copyright

1. Filing of application: The author/publisher/owner or any other person interested

in the copyright can make an application (Form-XIV of Copyright Rules) for
registration of copyright to the Registrar of Copyrights. Such application must be
accompanied by the prescribed fee for entering particulars of the work in the
Register of Copyrights.
Also, an application for registration of copyright shall be in respect of one work only. It
should be signed only by the applicant, who may be the owner or author of the right. In case,
the application is made by the owner of the copyright, an original copy of a no-objection
certificate issued by the author in the favour of the owner has to be submitted.

2. Application for registration of copyright in an unpublished work: An

application for registration of an unpublished work should be accompanied by two
copies of the work.
3. Application for registration regarding an artistic work that is being used or
could be used in connection with any goods or services: In case the application
for registration is regarding an artistic work that is or can be used in relation to any
goods or services, the application must include a statement along with a Certificate
from the Registrar of Trademarks that no trademark identical to or deceptively
similar to such artistic work has been registered under the Trademarks Act,
1999 or no such application has been made.
 4. Application for registration in respect of an artistic work which is capable of
being registered as a design: In this case, the application must be supported by an
affidavit declaring that:

1. The design has not been registered under the Designs Act, 2000, and
2. That it has not been applied to an article through an industrial process and
reproduced more than 50 times.
3. Mode of filing the application: The application for registration of copyright can be
filed in following modes:

1. By visiting the Copyright Office in person; or

2. By post; or

6. By online facility
7. Notice of application: The person applying for registration of copyright has to give
the notice of the application to every person who claims to have, or has any
interest in the subject matter of the copyright or who is disputing the rights of the
applicant to the copyright.
8. Entering of particulars in Register of Copyright: A thirty day period is given for
filing of objections and if no objections to the registration are received by the
Registrar, and on being satisfied that the particulars stated in the application are
correct, the Registrar of Copyright shall enter such particulars in the Register of
Copyrights.
9. Completion of registration process: The registration process is complete when a
copy of the entries made in the register of copyrights is signed and issued by the
Registrar of Copyrights or by the Deputy Registrar of Copyrights. Also, every
entry made by the Registrar of Copyrights has to be published by him in the
prescribed manner.

Need and benefits of registration of copyright

The registration of copyright is optional. However, the registration of copyright offers several
advantages to the author or owner of copyright. This can be discerned from Section 48 of the
Copyright Act. Section 48 provides that the register of copyright is prima facie evidence of
the particulars entered therein and shall be admissible in evidence in all courts. Thus, a
person who has got the copyright registered in his name is generally presumed to be the
author/owner of the work. Registration of copyright is beneficial due to the following
reasons:

 It allows the owner to protect his work from being used in an unauthorised
manner.
 It becomes easier to claim ownership and royalties for your work when it is to be
used or adapted in any manner.
 Copyright registration specifies the date of publication.
  Registration of copyright in your name might work in your favour in case of any
claim of copyright infringement.

Copyright violation remedies

 Civil correction: pursuant to Section 55 of the Copyright Act of 1957, the owner is entitled
to all such remedies by injunction, damages & accounts in cases where copyright in any work
has been violated.

 Criminal redress: The copyright owner is entitled under Section 63 of the 1957 Copyright
Law to prosecute a contravener in which a penalty can be extended to at least 6 months, with
a fine of Rs. 50 000, extending to two lakhs.

If the accused has proven that he was not aware of the infringement and had no reasonable
reason to believe that copyright was subsistent in the work at the date of its infringement, the
complainant is not entitled to any rectification in the circumstances that the defendant considers
reasonable for all or any portion of the profits made by it through the sale of the infringing
copies.