Intellectual Property Rights (IPRs)

Intellectual Property
• Refers to the creations of the mind.
• According to Article 2 (viii) of the Convention establishing the WIPO,
‘Intellectual Property’ includes rights relating to:
 Literary, artistic and scientific works
 Performances of performing artists, phonograms and broadcasts
 Inventions in all fields of human endeavor
 Scientific discoveries
 Industrial designs
 Trademarks, service marks and commercial names and designations
 Protection against unfair competition and all other rights resulting
from intellectual activity in the industrial, scientific, literary or
artistic fields
• Intellectual property is essentially the creation
of human mind and intellect and IPR laws are
aimed at safe guarding authors and other
producers of intellectual goods or any services
by granting them certain time bound rights.
 Types of Creative Work
• Industrial property- includes inventions (patents),
trademarks, industrial designs and geographic
indications of source
• Copyright- includes literary and artistic works such as
novels, poems and plays, films, musical works, artistic
works such as drawings, paintings, photographs and
architectural designs.
o Rights related to copyright include those of performing
artists in their performances, producers of phonograms in
their recordings and those of broadcasters in their radio and
television programs.
• Copyright- covering books, dramatic work,
computer software, music, artistic works,
cinematograph films and sound recordings.
• The rights provided by copyright, applied to authors
and related rights also known as neighbouring
rights applied to other categories of persons such
as performers, producers of phonograms or
broadcasting organizations with regard to their
performances, phonograms and broadcasts
respectively.
• Copyright is a form of protection provided to the authors of
“original works of authorship” including literary, dramatic, musical,
artistic, and certain other intellectual works, both published and
unpublished.
• The 1976 Copyright Act generally gives the owner of copyright the
exclusive right to reproduce the copyrighted work, to prepare
derivative works, to distribute copies or phonorecords of the
copyrighted work, to perform the copyrighted work publicly, or to
display the copyrighted work publicly.
• The copyright protects the form of expression rather than the
subject matter of the writing. For example, a description of a
machine could be copyrighted, but this would only prevent others
from copying the description; it would not prevent others from
writing a description of their own or from making and using the
machine. Copyrights are registered by the Copyright Office of the
Library of Congress.
• Patent rights covering gadgets, new processor chips,
firmware, medicines, etc.
• A patent for an invention is the grant of a property
right to the inventor, issued by the Patent and
Trademark Office. The term of a new patent is 20
years.
• The right conferred by the patent grant is, in the
language of the statute and of the grant itself, “the
right to exclude others from making, using, offering
for sale, or selling” the invention in the United
States or “importing” the invention into the United
States.
• Trademark rights covering trademarks, industrial designs and
geographic indications of source of goods.
• A trademark is a word, name, symbol or device which is used in trade
with goods to indicate the source of the goods and to distinguish them
from the goods of others. A servicemark is the same as a trademark
except that it identifies and distinguishes the source of a service rather
than a product. The terms “trademark” and “mark” are commonly
used to refer to both trademarks and servicemarks.
• Trademark rights may be used to prevent others from using a
confusingly similar mark, but not to prevent others from making the
same goods or from selling the same goods or services under a clearly
different mark.
• Trademarks which are used in interstate or foreign commerce may be
registered with the Patent and Trademark Office. The registration
procedure for trademarks and general information concerning
trademarks is described in a separate pamphlet entitled “Basic Facts
about Trademarks”.
 Some additional differences between a copyright and a trademark are as follows:

• The purpose of a copyright is to protect works of

authorship as fixed in a tangible form of expression.
Thus, copyright covers: a) works of art (2 or 3
dimensional), b) photos, pictures, graphic designs,
drawings and other forms of images; c) songs,
music and sound recordings of all kinds; d) books,
manuscripts, publications and other written works;
and e) plays, movies, shows, and other
performance arts.
• The purpose of a trademark is to protect words, phrases and logos
used in federally regulated commerce to identify the source of goods
and/or services.
• There may be occasions when both copyright and trademark
protection are desired with respect to the same business endeavor. For
example, a marketing campaign for a new product may introduce a
new slogan for use with the product, which also appears in
advertisements for the product. However, copyright and trademark
protection will cover different things. The advertisement’s text and
graphics, as published in a particular vehicle, will be covered by
copyright – but this will not protect the slogan as such. The slogan may
be protected by trademark law, but this will not cover the rest of the
advertisement. If you want both forms of protection, you will have to
perform both types of registration.
• If you are interested in protecting a title, slogan, or
other short word phrase, generally you want a
trademark. Copyright law does not protect a bare
phrase, slogan, or trade name.
• Whether an image should be protected by
trademark or copyright law depends on whether its
use is intended to identify the source of goods or
services. If an image is used temporarily in an ad
campaign, it generally is not the type of thing
intended to be protected as a logo.
• The registration processes of copyright and trademark are entirely
different. For copyright, the filing fee is small, the time to obtain
registration is relatively short, and examination by the Copyright Office is
limited to ensuring that the registration application is properly
completed and suitable copies are attached. For trademark, the filing fee
is more substantial, the time to obtain registration is much longer, and
examination by the Trademark Office includes a substantive review of
potentially conflicting marks which are found to be confusingly similar.
While copyright registration is primarily an administrative process,
trademark registration is very much an adversarial process.
• Copyright law provides for compulsory licensing and royalty payments –
there is no analogous concept in trademark law. Plus, the tests and
definition of infringement are considerably different under copyright law
and trademark law.
 Example: Clothing Items
• Anything you silk screen or otherwise display prominently on the
front or back of a shirt, top, cap or hat is generally considered
artwork, and therefore covered by copyright. In fact, if you send a
photo of a clothing item to the U.S. Trademark Office showing
your design, logo or slogan prominently displayed on the front or
back, they will refuse to register it as a trademark.
• To qualify as a trademark, your logo or slogan must be used as
the brand of the clothing item itself. In other words, your logo or
slogan must be used the way clothing brands are typically used
and displayed on clothing, namely, sewn into a waistband, collar,
hem or pocket, or applied to a label, sticker or tag, and NOT in a
way that dominates the appearance of the clothing item.
• The caveat, of course, is that when your design, logo or
slogan is regarded as artwork – even though it can be
protected by copyright – the protection only extends to the
artistic configuration used. To put it more bluntly, if you
have a slogan or name, copyright law can protect the artistic
way you display it, but the text itself is NOT protected.
Copyright law does not cover names, words or short
phrases.
• The only way to protect a name, word, short phrase or
other text, is to register it as a trademark. But this means
that you have to change the way you use the mark from an
artistic display to a brand name usage.
• Yes, it is possible to register a design, logo,
name or phrase under both copyright law and
trademark law, so long as you use it in two
different ways and you do it consistently.
Keeping the two usages of the same design or
text at the same time is not an easy task, and
you can end up compromising your rights
under copyright or trademark, or both, very
easily if you aren’t careful.
 Characteristics of Intellectual Property
• It is a property in fiction and not in fact or not a real
property.
• It is right relating to some material object or real property.
• It is an asset like other forms of tangible property. But it is
incorporeal or intangible property which cannot be defined
or identified by its own physical parameter.
• It is saleable and transferable but only attached with its
object. The price of the object is not determined by sale or
transfer of the intellectual property in the material object.
• It is confined and extended to defined period of its life.
• It is more valuable than the real property or article itself.
 Benefits of protection of Intellectual
Property
• Safeguarding of individual interests
• Progress of science and technology
• Progress and development of nations or the
world at large
• Work of the inventors is recognized and
protected
• Help in the growth of industries
 International Treaties and Conventions
relating to Intellectual Property rights
• First Intellectual Property law was passed in Venice
in the year 1474.
• It protected the investor’s interest against copying
of their creation.
• The Statute of Monopolies that granted intellectual
property rights to the inventor for a limited period
was passed by England in 1624.
• Modern intellectual property system commenced
with the adoption of the Paris Convention and
Berne Convention.
 (1) The Paris Convention, 1883 and the
Berne Convention, 1886
• The Paris Convention, 1883 dealt with the
protection of industrial patents, industrial
designs and trademarks.
• The Berne Convention, 1886 dealt with the
protection of copyrights.
 Shortcomings of the Paris Convention
• It did not mention the length of time for which
a patent or trademark should be respected.
• It did not apply to a variety of industries such
as biotechnology.
 Shortcomings of the Paris Convention and
the Berne Convention
• Both did not provide for any viable avenues
for dispute settlement and enforcement.
• The treaty option of referring the disputes to
the International Court of Justice was never
used.
 Rights recognized as exclusive rights of
author
• The right to translate
• The right to make adaptations and arrangements of the work
• The right to perform in public dramatic, dramatic-musical and
musical works
• The right to recite in public, literary works
• The right to communicate to the public the performance of
such works
• The right to broadcast
• The right to make reproductions
• The right to use the work as a basis for an audiovisual work
and the right to reproduce.
 Moral rights
• The right to claim authorship of the work
• and the right to object to any mutilation or
deformation or other modification of, or other
derogatory action in relation to, the work
which would be prejudicial to the author’s
honor or reputation.
 Duration of protection
• The protection must be granted until the
expiration of the 50th year after the author’s
death.
• Exceptions:
– In case of anonymous or pseudonymous works, the
term of protection expires 50 years after the work has
been lawfully made available to the public, except if
the pseudonym leaves no doubt as to the author’s
identity or if the author discloses his identity during
that period; in the latter case, the general rule applies.
– In case of audio-visual (cinematographic) works,
the minimum term of protection is 50 years after
making available of the work to the public
(“release”) or failing such an event from the
creation of the work.
– In case of works of applied art and photographic
works, the minimum term is 25 years from the
creation of such a work.
 (2) Rome Convention, 1961
• Provides
– definition of the “national treatment” (Article 2)
– Conditions for providing national treatment
– Protections of phonograms (Article 4), broadcasts
(Article 5) and performers (Article 6), permitted
exceptions and performer’s rights in films.
• Prohibits the fixation of a performance without
the consent of performer who has got the sole
right over fixation or reproduction of his
performances.
 (3) The World Intellectual Property
Organization (WIPO), 1967
• Signed at Stockholm on 14 July, 1967 and
came into force in 1970.
• Headquartered at Geneva.
 Objectives
• The promotion and protection of intellectual property
rights throughout the world through the cooperation
among the member states and where appropriate, in
collaboration with other international organizations.
• To make international laws regarding IPRs.
• To bring national laws in tune with the international laws
relating to IPRS.
• To provide cooperation to countries.
• Administrative cooperation among the unions.
• Disseminating information and maintaining services for
protection of IPRs.
 (4) Universal Copyright Convention (and
Protocols), 1952
• Revised in 1971.
• Administered by UNESCO.
• Main objective was maintenance of specific
minimum legal standards by all contracting
states for effective protection of the copyright
of the authors.
• Published and unpublished works both are
protected under this Convention.
• Article 1:
– “The contracting states” must resolve to provide the adequate
and effective protection to authors and other copyright
proprietors in literary, scientific and artistic works, including
writings, musical, dramatic and cinematographic works and
painting, engravings and sculpture.
• Article 2:
– Provides for national treatment to published or unpublished
works of one member country by other members of the
convention.
• Article 4:
– Term of protection for works protected under this convention
shall not be less than the life of the author and 25 years after
his death.
• Article 5:
– States that Copyright shall include the exclusive
right of the author to make, publish and authorize
the making and publication of translations of
works protected under this convention.
• Article 6:
– Defines ‘Publication’ as the reproduction in
tangible form and the general distribution to the
public of copies of a work from which it can be
read or otherwise visually perceived.
 (5) Treaty of International Registration of
Audio-visual Works (Geneva), 1989
• Came into force in 1992.
• Main objective was the registration of audio-
visual works at international level.
• Administered by WIPO’s International Bureau.
 (6) WIPO Copyright Treaty, 1996
• To grant additional recognition to compilation
of data or other material in any form and
protection to intellectual property used in
selecting and arranging their material.
• Recognition to exclusive rights of rental for
computer programmes, cinematographic work
and works embodied in phonogram as
determined by national law of a state.
 (7) WIPO Performances and Phonograms
Treaty, 1996
• To meet the new challenges of audio-visual
technology, the Internet in particular.
• A period of fifty years to be provided for
protection of the performers and producers of
phonograms.
(8) International Convention for the Protection of
New Varieties of Plants (UPOV Convention), 1961
• Came into force in 1968.
• Established a system of international protection for
breeders of new plant varieties.
• Amendment (1991):
 Breeders were prevented from developing new
varieties from those varieties already protected
under UPOV.
 Farmers were not allowed to save the seeds for next
crop as it was said to affect the legitimate interests
of the plant breeder.
(9) Patent Cooperation Treaty (P.C.T), 1970
• Came into force in January, 1978 and became operational in June, 1978.
• Main objectives:
 To simplify and to make more effective and economical methods for
applying for patent protection for inventions in several countries.
 To get rid of the system which required filing of several applications for
patenting same invention in several countries and for this end:
 To establish an international system which enables the filing of a single
application, in one language, in a single office, for the purpose of
getting patent granted in those member countries which are
mentioned by the applicant.
 To provide for the formal examination of the international application
by a single patent office.
 To subject each international application to an international search
resulting in a respect the copy of which is provided to the applicant
before the same being published.
  To provide for centralized international publication of the international
applications with search reports therein.
 To provide a chance to the designated office to consider whether the
patent be granted.
 To provide an opportunity to the applicant to know whether and upto
what extent his invention meets the international criteria for
patentability.
• To help the member countries cope with the increased work load
since an application by the time it reaches a designated office.
• To facilitate and accelerate access by industries and other
interested sectors to technical information related to inventions
and to assist developing countries in gaining excess to
technologies.
(10) The Budapest Treaty on the International Recognition of the Deposit
of Micro-organisms for the purposes of Patent Procedure, 1977

• Came into force in 1980.

• To solve the problems arising due to lack of
uniformity in national requirements for
protection of micro-organisms.
 (11) Eurasian Patent Convention, 1973
• The Eurasian patent office grants a Eurasian
Patent for any invention having an inventive
step.
(12) Madrid Agreement relating to International
Registration of Mark (with protocol), 1996
• The registration of a trade mark in the country
of its origin is a condition precedent for
international deposits under this agreement.
 (13) Trade Mark Law Treaty and
Regulations, 1994
• Came into force in 1996.
• To simplify and harmonize the Trade Mark
Registration System of the member states.
(14) General Agreement on Tariffs and Trade
(GATT), 1948
• Proposed three separate agreements:
 TRIPS (Trade-related aspects of IPRs)
 TRIMS (Trade-related Investment Measures)
 GATT (General Agreement on Tariffs and Trade)
(15) World Trade Organization (WTO), 1995

• Mainly performs trade related functions.

• General Council of WTO performs the following
functions related to IPRs:
 To supervise the operation of the revised agreements
and ministerial declarations relating to (a) goods, (b)
services and (c) TRIPS.
 To act as a Dispute Settlement Body.
 To serve as a Trade Review Mechanism.
 To establish Goods Council, Services Council and
TRIPS Council as subsidiary bodies.
 (16) The TRIPS Agreement
(a) Copyright and Related Rights
1. In relation to Berne Convention (Article 9):
– Copyright protection shall extend to expressions and not to ideas,
procedurals, methods of operation and mathematical concepts as such.
2. Computer Program and Compilations of data (Article 10):
– Computer Programs whether in source or object code shall be
protected as literacy works under the Berne Convention.
– Compilation of data or other material, whether in machine readable or
other form, which by reason of the selection or arrangement of their
contents constitute intellectual creations shall be protected as such.
Such protection which shall not extend to the data or material itself,
shall be without prejudice to any copyright subsisting in the data or
material itself.
3. Rental Rights (Article 11):
– In respect of atleast computer programs and
cinematographic works, a member shall provide authors
and their successors in title the right to authorise or to
prohibit the commercial rental to the public of originals or
copies of their copyright works unless such rentals had led
to widespread copying of such work which is materially
impairing the exclusive right of reproduction conferred in
hat member on authors and their successors in title. In
respect of computer programs, this obligation does not
apply to rentals where the programme itself is not
essential object of the rental.
4. Term of Protection (Article 12):
– In a copyright work other than photographic
work or work of applied art is to be calculated on
a basis other than the life of a natural person but
such term should not be less than 50 years.
(b) Patents
1. Subject-matter of Patent (Article 27):
– Patents shall be available for any inventions whether
products or process, in all fields of technology,
provided that they are new, involve an inventive step
and are capable of industrial application.
– Except in exceptional cases, patents shall be available
and patent rights shall be enjoyable without
discrimination as to the place of invention, the field of
technology and whether products are imported or
locally produced.
– Members may exclude invention from patentability or
prevent the commercial exploitations within their territory if
it is necessary to protect the public order or morality,
including to protect human, animal or plant life or health or
to avoid serious prejudice to the environment.
– Members may also exclude from patentability:
• Diagnostic, therapeutic and surgical methods for the treatment of
humans or animals.
• Plants and animals other than micro-organisms and essentially
biological processes for the production of plants or animals other
than non-biological and microbiological processes.
• But members are obliged to provide for the protection of plant
varieties either by patents or by an effective sue generis system.
2. Rights Conferred (Article 28):
– A patent shall confer on its owner the following
exclusive rights:
• Where the subject-matter of a patent is a product, to
prevent third parties not having his consent from the acts
of making, using, offering for sale, selling or importing for
these purposes that product
• Where the subject-matter of a patent is a process, to
prevent third parties not having his consent from the act
of using the process and from the acts of using, offering
for sale or importing for these purposes at least the
product obtained directly by that process.
 – Patent owners shall also have the right to assign or transfer
by succession the patent and to conclude licensing contracts.
3. Conditions on Patent Applicants (Article 29):
• Members shall require that an applicant for a patent shall disclose
the invention in a manner sufficiently clear and complete for the
invention to be carried out by a person skilled in the art and may
require the applicant to indicate the best mode for carrying out the
invention known to the inventor at the filing date or where priority
is claimed, at the priority date of the application.
• Members may require an applicant for a patent to provide
information concerning his corresponding foreign applications and
grants.
4. Exceptions to rights conferred (Article 30)
• Members may provide limited exceptions to the exclusive rights
conferred by a patent, provided that such exceptions do not
unreasonably prejudice the legitimate interests of the patent
owner, taking account of the legitimate interests of third parties.
5. Revocation/Forfeiture (Article 32)
• An opportunity for judicial review of any decision to revoke or
forfeit a patent shall be available.
6. Term of Protection (Article 33)
• The term of protection available shall not end before the
expiration of a period of twenty years counted from the filing
date.
(c) Trademark
• Definition of Trademark (Article 15):
– Trade mark is any sign or any combination of signs, capable of
distinguishing the goods or services of one undertaking from
those of other undertakings.
• Article 16:
– States that the owner of a registered trade mark shall have the
exclusive right to prevent all third parties, not having the
owner’s consent, from using in the course of trade, identical or
similar things for goods or services which are identical or
similar to those in respect of which the trademark is registered,
where such use will result in a likelihood of confusion.
 Indian Laws relating to IPRs
• The Patent and Designs Act, 1911.
• The Copyright Act, 1957.
• The Trade Marks Act, 1971.
• The Patents Act, 1970.
 New Laws
• In relation to Copyright:
– The Copyright (Amendment) Act, 1983
– The Copyright (Amendment) Act, 1984
– The Copyright (Amendment) Act, 1992
– The Copyright (Amendment) Act, 1994
– The Copyright (Amendment) Act, 1999
• In relation to Patents:
– The Repealing and Amending Act, 1974
– The Delegated Legislation Provisions
(Amendment) Act, 1985
– The Patents (Amendment) Act, 1999
– The Patents (Amendment) Act, 2002
– The Patents (Amendment) Act, 2005
• In relation to Trademark:
– The Trade Marks Act, 1999
• In relation to Design:
– The Designs Act, 2000
• In relation to geographic indication of goods:
– Geographic indication of goods (Regulation and
Protection) Act, 1999
• National level- District or High Courts; Criminal
Court
• International level- Treaties and Conventions
be adopted
 Meaning of Copyright (Section 14)
“Copyright” means the exclusive right to do or authorise the doing of any of the
following acts in respect of a work or any substantial part thereof:
• (a) in the case of a literary, dramatic or musical work, not being a computer
program:
– To reproduce the work in any material form including the storing of it in
any medium by electronic means
– To issue copies of the work to the public not being copies already in
circulation
– To perform the work in public or communicate it to the public
– To make any cinematograph film or sound recording in respect of the work
– To make any translation of the work
– To make any adaptation of the work
– To do, in relation to a translation or an adaptation of the work, any of the
acts specified in relation to the work in above sub-clauses
• (b) in the case of a computer program:
– To do any of the acts specified in clause (a)
– To sell or give on commercial rental or offer for sale
or for commercial rental any copy of the computer
program
• (c) in the case of an artistic work:
– To reproduce the work in any material form
including depiction in three dimensions of a two
dimensional work or in two dimensions of a three
dimensional work
– To communicate the work to the public
– To issue copies of the work to the public not being
copies already in circulation
– To include the work in any cinematograph film
– To make any adaptation of the work
– To do in relation to an adaptation of the work any
of the acts specified in relation to the work in
above sub clauses
• (d) in the case of cinematograph film:
– To make a copy of the film, including a photograph
of any image forming part thereof
– To sell or give 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
– To communicate the film to the public
• (e) in the case of sound recording:
– To make any other sound recording embodying it
– To sell or give on hire or offer for sale or hire, any
copy of the sound recording regardless of whether
such copy has been sold or given on hire on earlier
occasions
– To communicate the sound recording to the public
• A copy sold once shall be deemed to be a copy
already in circulation.
 Copyright Infringement in the digital
medium
• Caching
• Mirroring
• Browsing
• Downloading
• Uploading
• File swapping
• Scanning
• Transmission of copyright work from one computer system or
network to another, involving temporary storage (RAM) of that
information.
• An unauthorized storage of such copyright work resulting in
violation of the copyright owner’s exclusive right to make copies
(to reproduce the copyrighted work).
• Distributing the copyright work to public thus violating the
copyright owner’s exclusive right of distribution.
• An appearance of a copyright image in a web browser thus
infringing the copyright owner’s right of public display.
• Preparing derivative works thus infringing copyright owner’s
exclusive right to prepare derivative works.
Infringement of rights of a copyright owner

• To reproduce the copyrighted work

• To fix (store) the information in tangible form
• To sell, rent, lease or otherwise distribute
copies of the copyright work to the public
• To perform and display publicly the
copyrighted work
• To prepare derivative works based on the
copyright work
 Rights of Reproduction
• Copying
• Reproduction and display
Two conditions:
• The defendant’s work and the plaintiff’s work
are ‘substantially similar’
• The defendant had access to the plaintiff’s
work
 Playboy Enterprises, Inc vs Russ
Hardenburgh, Inc
• The defendant, a bulletin board owner was
managing an electronic central system that
stored information.
• It gave home computer users the opportunity
to submit information to the system (upload)
or retrieve information from the system
(download).
• The defendant also displayed copyrighted
images of plaintiff on its system.
• The defendant encouraged its subscribers to upload
adult photographs, screened all submitted images and
moved some of the images (including that of the
plaintiff) into files from which general subscribers could
download them.
• The court held that since the actions of defendant
allowed subscribers to download copyrighted images, it
violated plaintiff Playboy’s right to public display. In
other words, the electronic bulletin board system
infringed Playboy’s copyrights by displaying copyrighted
images on its system.
 New York Times Co. vs Tasin
• There was an agreement between six freelance
authors and publishers whereby the articles of
authors were to be published in three print
periodicals.
• But without the freelancers consent, two
computer database companies (Electronic
Publishers) placed copies of the freelancers’
articles, along with all other articles from the
periodicals in which the freelancers’ work
appeared, into three databases.
• The freelance authors’ complaint alleged that their
copyrights had been infringed by the inclusion of their
articles in the databases. The publishers, in response,
relied on the privilege of reproduction and distribution
accorded them by Section 201(c) of Digital Millenium
Copyright Act, 1998.
• The US Supreme court held that the Electronic
Publishers infringed the Authors’ copyrights by
reproducing and distributing the articles in a manner
not authorized by the authors and not privileged by
Section 201(c).
 Kelly vs Arriba Soft Corp.
• The plaintiff, Leslie Kelly, a professional photographer had
copyrighted many of his images of the American West.
• Some of these images were located on Kelly’s website or other
websites with which Kelly had license agreement.
• The defendant, Arriba Soft Corpn. operated an Internet search
engine that displayed its results in the form of small pictures
rather than the more usual form of text.
• Arriba maintained its database of pictures by copying images
from other websites including plaintiff’s website.
• By clicking on one of these small pictures called thumbnails, the
user could view a large version of that same picture within the
context of the Arriba web page.
• Plaintiff Kelly discovered that his photographs
were part of Arriba’s search engine database, he
filed a suit for copyright infringement.
• The District court found that plaintiff Kelly had
established a prima facie case of copyright
infringement based on Arriba’s unauthorized
reproduction and display of Kelly’s works but that
this reproduction and display constituted a non-
infringing fair use under Section 107 of the Digital
Millenium Copyright Act, 1998.
• The Circuit court held that the creation and the use of
the thumbnails in the search engine is a fair use, but the
display of the larger image is a violation of Kelly’s
exclusive right to publicly display his works.
• The use of Kelly’s images does not amount to copying
them but rather importing them directly from Kelly’s
website.
• It cannot be copyright infringement based on the
reproduction of copyrighted works.
• The use of Kelly’s images infringes upon Kelly’s exclusive
right to display the copyrighted work publicly.
Right to store information in tangible form

• Work stored in electronic form by the author

• any Internet user without permission of
author or owner stores that work in any form
(tangible/intangible)
• Is it Copyright Infringement?
 Distribution rights
• Distributing and displaying copyrighted work of
another without his authorization amounts to an
infringement of statutory exclusive rights vested in
the said copyright owner.
• Marobie-Fl. Inc. vs National Association of Fire Equip.
Distributors:
– The court held that the act of placing unauthorized copies
of plaintiff’s electronic clip art files on the defendant’s web
page constitutes an infringement of distribution rights of
the plaintiff as the plaintiff’s files became available for
downloading by Internet users.
 Display right
• Website owner downloads material from web
server violating display right of the actual owner
and hence liable for copyright infringement.
• In relation of website owner and receiver,
website owner is deemed owner of copyright
material and viewer by pointing his browser at a
particular web address, by downloading, storing,
publishing and transmitting that material
infringes the copyright of the website owner.
 Playboy Enterprises, Inc. vs Frena
• The defendant George Frena operates a subscription computer bulletin board
service, Techs Warehouse BBS that distributed unauthorized photographs.
• BBS is accessible via telephone modem to customers.
• The subscribers may browse through different directories to look at the
pictures and customers may also download the high quality computerized
copies of the photographs and then store the copied image from Frena’s
computer onto their home computer.
• The defendant admitted to all above and that he never obtained consent of
plaintiff.
• The court held that the display rights of PEI have been infringed upon by
defendant.
• Display covers any showing of a copy of the work, either directly or by means
of a film, slide, television image or any other device or process publicly.
 Derivative work
• A work based upon one or more preexisting
works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture
version, sound recording, art reproduction,
abridgment, condensation or any other form in
which a work may be recast, transformed or
adopted.
• Any attempt to create the similar look and feel of
a copyrighted work would amount to
infringement.
 Louis Galoob Toys, Inc vs Nintendo of
America, Inc
• The Ninth Circuit held that a Game Genie
merely enhances audiovisual displays which
originate in Nintendo game cartridges and
does not constitute a derivative work.
• It does not incorporate a partition of the
copyrighted work in some permanent form.
• It cannot duplicate or recast a Nintendo
game’s output.
 Copyright and Digital Music
A & M Records Inc vs Napster Inc.:
• Legality of mp3 file sharing over the Internet was
questioned.
• People could download free software from
defendant’s website and this software lets them
share music in the form of mp3 files.
• Napster developed a software called Napster’s
MusicShare software available free of charge from
Napster’s Internet site and Napster’s network
servers.
• Through P2P file sharing, Napster allowed its
users to store mp3 files on individual
computer hard drives available for copyright
by other Napster users; search for mp3 files
stored on other users’ computers; transfer
exact copies of the contents of other users’
mp3 files from one computer to another via
the Internet.
• The District court passed a judgment that prevented defendant
Napster from engaging in, or facilitating or distributing plaintiff’s
copyrighted musical compositions and sound recordings without
express permission of the right owner(s).
• Majority of Napster users use the service to download and
upload copyrighted music and by doing that, it constitutes direct
infringement of plaintiff’s musical compositions, recordings.
• Imposed an obligation on the record company (Recording
Industry Association of America) to notify Napster of specific
things infringing files and on Napster to constantly search its
index and block all such particular files.
 UMG Recordings vs MP3.com, Inc.
• Defendant purchased number of popular CDs in which
plaintiffs had the copyrights and without authorization,
copied their recordings onto its computer servers so as
to be able to replay the recordings for subscribers.
• MP3.com launched it’s service My.MP3.com where it
advertised that permitting subscribers can store,
customize and listen to the recordings contained in their
CDs from any place where they have an Internet
connection.
• The court held defendant’s to have infringed the
plaintiffs’ copyrights.
 MGM Studios Inc. vs Gorkster Ltd.
• A group of movie studios and other copyright
holders filed a suit against Gorkster Ltd., alleging
that respondents knowingly distributed software
that was used for copyright infringement of
copyrighted music and video files over the
Internet.
• The Supreme court held that the defendant P2P
file sharing companies Grokster could be sued for
inducing copyright infringement for acts taken in
the course of marketing file sharing software.
 Copyright in computer database
• Databases which, by reason of the selection or
arrangement of their contents, constitute the
author’s own intellectual creation shall be
protected as such by copyright.
 CCC Information Services vs Maclean
Hunter Market Reporter
• The defendant had been publishing a database consisting of
projections of used cars, valuations based on their auditors,
predictions, taking into account various sources of
information and their professional judgment of expected
values for vehicles for the upcoming six weeks in a particular
area.
• The plaintiff CCC information service had been loading large
parts of database in the nature of red book published by
defendant on to its computer network and republishing the
information in several forms to its customers.
• Many red book customers cancelled their subscriptions and
switched over to defendant’s service.
Circumvention of technology measures for
protection
• Article 11 of WCT, 1996:
– The contracting parties shall provide adequate
legal protection and effective legal remedies
against the circumvention of effective technology
measures.
– the authors in connection with exercise of their
rights under this treaty and that restrict acts, in
respect of their work which are not authorized by
the author concerned or permitted by law.
• Article 18 of WPPT, 1996:
– The contracting parties shall provide adequate legal
protection and effective legal remedies against the
circumvention of effective technology measures that
are used by the performers or producer of
phonograms in connection with exercise of their
rights under this treaty and that restricts acts, in
respect of their performances or phonograms which
are not authorized by the performers or producers of
the phonograms concerned or permitted by law.
Removing and altering rights management
information
• Any information given on copyright work in digital form
such as sound recording, video, film and CD about terms
and conditions of use of work.
• Article 12(1) WIPO Copyright Treaty, 1996:
– Contracting parties shall provide adequate and effective legal
remedies against any person who performs any of the
following acts either knowingly or having reasonable grounds
to know, that it will induce, enable, facilitate or conceal an
infringement of any right covered by this treaty to remove or
alter any electronic rights management information without
authority; to distribute, import for distribution, broadcast or
communicate to the public.
 Fair Use of copyright work in Digital
medium
• The purpose and character of use including
whether such use is of a commercial nature or
for non-profit educational purposes.
• The nature of copyrighted work.
• The amount and substantiality of the portion
used in relation to the copyright work as a
whole.
• The effect of use upon the potential market for
or value of the copyrighted work.
• Under International Law, WCT, 1996 (Article 10):
– An obligation on contracting parties to provide, in their
national legislation, for limitations of or exceptions to the
rights granted to authors of literary and artistic works under
the said treaty in certain special cases that do not conflict
with a normal exploitation of the work and do not
unreasonably prejudice the legitimate interests of the author.
– Contracting parties shall confine any limitations of or
exceptions to rights provided for therein to certain special
cases that do not conflict with a normal exploitation of the
work and do not unreasonably prejudice the legitimate
interests of the author.
 Liability of ISP for infringement of
copyrights
• Section 2(1)(w) of IT Act 2000: Intermediary, with
respect to any particular electronic records means
any person who on behalf of another person
receives, stores or transmits that record or
provides any service with respect to that record
and includes telecom service providers, network
service providers, Internet service providers,
webhosting service providers, search engines,
online payment sites, online auction sites, online
market places and cyber cafes.
 Role of ISP regarding copyright work
• ISP is a person who transmits third party information to public
through Internet
• To make copyrighted work of the author available to end users.
• Any person (author) interested in making available his work on
Internet will have to upload the webpage into his website which
is physically located on the host server.
• The uploaded work becomes available to all those connected to
Internet and access to Internet is provided by an ISP.
• The uploaded work is transmitted from host to the end user by
using the infrastructure of a network provider who apart from
providing the physical facilities to transport a signal will also
transmit and route it to the designated recipient.
Liability of ISP for Copyrights Infringement
• The service providers should be subject to the strict liability
standard as they facilitate transmission of infringing
messages.
• The strict liability standard would turn service providers into
inspectors or supervisors of the online information flow who
may become centralized control centers to enforce copyright
law.
• The service provider shall be held liable only when it is proved
that he has actual knowledge of copyright violations.
• The service provider shall be held liable only when he receives
complaint from a copyright holder but does not remove an
illegal message.
 Exemption from liability of Intermediary
Section 79 IT Act, 2000
• The function of the intermediary is limited to providing
access to a communication system over which information
made available by third parties is transmitted or
temporarily stored or hosted.
• The intermediary does not
– Initiate the transmission
– Select the receiver of the transmission
– Select or modify the information contained in the transmission
• The intermediary observes due diligence while discharging
his duties under this Act and also observes such other
guidelines as the Central Govt. may prescribe in his behalf.
 Computer software in digital medium
• Preparatory design materials like flowcharts, diagrams, written
specifications, form and report layouts, designs for screen
displays.
• Object code and source code and other executable code.
• Software development tools like relational database development
systems, compilers, report generators.
• Databases and data files
• Computer output as sound, printout, computer file or data,
electronic signals
• Screen displays
• Manual and guides
• Program languages
• Trips Agreement, 1995 10(1) provides that computer programs
whether in source or object code shall be protected as literary
work.
• A computer program has an expression of its own. The expression
is in the form of an application with a front end and back end.
• The front end, which is visible to the user, consisting of screen
displays, symbols, design layout, commands, menu systems,
other non-literal elements, etc.
• The back end consists of object code and source code and other
executable code.
• For the purpose of copyright both front end and back end are
copyrightable.
• In seventies in some judgments the court held that
the program was not protected by copyright as it
was not in a form in which it could be seen and read
with the naked eye.
Data Cash Systems Inc. vs J.S. & A. Group:
• The court held that for copyright protection, work
must exist in tangible form in which it could be seen
and read with the naked eye.
• The computer program does not exist in this form,
therefore, not entitled for copyright protection.
 Apple Computer Corpn. Vs Franklin
Computer Corpn.
• To achieve compatibility with Apple Computer’s ,
Franklin Computer copied Apple Computer’s
operating system programs.
• Plaintiff filed a suit in the District court for
infringement of copyright in computer software.
• Franklin argued that because Apple’s software existed
only in machine readable form and not in printed
form and some of the software did not contain
copyright notices, it could be freely copied.
• The judgment was in favour of Franklin.
• The US Court of Appeals held that both a
program existing only in a written form
unreadable to humans (object code) and one
embedded on a ROM were protected by
copyright.
• It also held that the operating systems were
also copyrightable.
 Sega Enterprises Ltd. Vs Richards
• The court held that the copyright subsisted in the
assembly code (source code) and that the object
code of the assembly code version was either a
reproduction or an adaptation and therefore, the
object code was also protected by copyright.
Computer Edge Pty Ltd vs Apple Computer Inc.:
• If there is no copyright in the object programs
which are a natural and necessary derivative of the
source programs then there is no point in protecting
the source programs.
 The Indian Copyright (Amendment) Act,
1994
Section 2:
• Computer Program means a set of instructions
expressed in words, codes, schemes or in any
other form, including a machine readable
medium, capable of causing a computer to
perform a particular task or achieve a
particular result.
 Copyright and Reverse Engineering in
Computer Software
• Breaking up an object into the constituent parts in order to
understand how it works for the purpose of its duplication or
enhancement.
• In case of software , it means reversing a program’s machine
code or object code back into the source code.
• Use:
 As a learning tool
 As a way to make new, compatible products that are cheaper than
what’s currently in the market
 For making software inter-operable more effectively or to bridge
data between different operating systems or databases
 To uncover the undocumented features of commercial products
• Computer programs are written in a high level
language that’s understandable by other
programmers.
• To run on a computer, they have to be translated
by another program called a compiler.
• Compiled code is incomprehensible to most
programmers, but there are ways to convert
machine code back to a more human- friendly
format by using a decompiler.
• By reverse engineering the existing program, the
object code can be transformed into a source code
in a high level language.
• This information can be used to create a
compatible interface between the existing and the
new program.
• If the creator of new program does not have the
copyright in the reverse engineered program then
there can be allegation of copyright infringement.
 Sega vs Accolade
• Whether the Copyright Act permits persons who are neither copyright
holders nor licensees to disassemble a copyrighted computer program in
order to gain an understanding of the unprotected functional elements of the
program.
• The plaintiff, Sega, the computer manufacturer also manufactured software
cartridges containing the initial code.
• The defendant, Accolade, Inc., was also computer game cartridge
manufacturer.
• The plaintiff sued the defendant on the ground that it has infringed plaintiff’s
copyright by dissembling the code contained in the game cartridge so as to
understand the interoperability of the cartridge with console. The defendant
copied some of plaintiff’s object code for the purpose of achieving
compatibility with plaintiff/s game console.
• The court concluded that such use by the defendant was permissible as fair
use and hence does not amount to infringement of copyright.
Sony Computer Entertainment vs Connectix
Corporation
• The plaintiff, Sony Computer Entertainment
Inc., produced and marketed the Sony
PlayStation console, a small computer with
hand controls that connects to a television
console and plays games that are inserted into
the PlayStation on CDs.
• Sony owned the copyright on the basic input-
output system or BIOS, which is the software
program that operates its PlayStation.
• The defendant, Connectix Corporation made and sold a software
program called Virtual Game Station that emulated on a regular
computer the functioning of the Sony PlayStation console, so that
computer owners who bought the Virtual Game Station could play
Sony PlayStation games on their computers.
• In the process of producing the Virtual Game Station, Connectix
repeatedly copied Sony’s copyrighted BIOS by reverse engineering that
it conducted in order to find out how the Sony PlayStation worked.
• The court held that the Connectix’s “intermediate copying” was not a
protected “fair use” under law.
• It prevented Connectix from selling the Virtual Game Station or from
copying or using the Sony BIOS code in the development of other
Virtual Game Station products.
• Reverse engineering in computer software is
permitted under Indian law.
 Patent issues in digital medium
• Patent: a set of exclusive rights granted by the
Government to a patentee (the inventor or
assignee) for a fixed period of time in
exchange for the regulated public disclosure of
certain details of a device, method, process or
composition of matter known as invention
which is new, inventive and useful or
industrially applicable.
• A person, who invents something, may make
an application to the patent office requesting
to give him a certificate of registration of the
patent that he has done some invention and
he is first and true owner of that invention.
Such certificate is called as patent.
• Rights of patent is created by invention. Where an
invention is made by two persons, the person who
first applies for the patent right would be the holder
of the patent.
• The registration is pre-requisite condition to hold a
patent right where as the registration is not a pre-
requisite condition to hold a copyright.
• A patent is used for limited period specified by law
and after expiry of such duration anybody else can
make use of the invention.
• The inventor getting patent is called patentee.
• The exclusive rights granted to a patentee is
the right to make, use or sell the invention
themselves and to prevent or exclude others
from making, using, selling, offering to sell or
importing the claimed invention.
 Scope of Patent Protection
• A patent is a monopoly right granted to persons, who
have developed a new invention as a result of their own
innovation and ingenuity.
• Such a monopoly right conferred by the statue allows the
holder the absolute legal right to prevent others from
making, using, or selling the service invention or any
product containing the invention for a specified period,
thereby, allowing the holder the right to commercially
exploit the invention and recover, to some extent, the
research and development costs incurred in developing
the invention.
• Patent holders would grant third parties, a
license to use the invention in return for an
agreed license fee or royality.
• The use of a particular invention would involve
multiple patents and a licensee would have to
obtain licenses from all these patent holders,
before using the invention.
 Requirement of a patent
• Novelity: inventor must prove that the
invention is novel and not was in public
domain earlier. Mere discovery is not eligible
for patent because it does not involve any
invention.
• Inventiveness: Invention must involve some
creativity and innovation which must add to
the knowledge of the society.
• Utility/Industrial application: invention must
be capable of industrial application or should
be commercially useful.
• Written description: it should be capable of
being described in written form. Where it is
not possible then it is not patentable.
 Features of a Patent
• It is a license.
• granted by the state
• In relation to a new invention or an
improvement in an existing article or a new
process of making the article.
• Confers an exclusive right on such person or
individual to use or exercise the invention
granted to him in consideration of such
disclosure of the invention.
• Invention should be useful or have a utility
and must be applicable to an industry.
• Granted for limited period.
• Assures protection from the state to use the
specified invention having a monopoly in it.
• There is a separate patent for every invention
applied for.
 Types of Patents
• Product Patent
• Process Patent
• Hybrid Patent
• Patent of Addition
International Law relating to Patent
• The Paris Convention, 1883
• The World Intellectual Property Organization (WIPO), 1967
• International Convention for the Protection of New Varieties of
Plants (UPOV Convention), 1961
• Patent Cooperation Treaty (PCT), 1970
• The Budapest Treaty on the International Recognition of the
Deposit of Micro-organisms for the purposes of Patent Procedure,
1977
• Eurasian Patent Convention, 1973
• Trade related aspects of Intellectual Property Rights (Trips)
Agreement, 1995
• The Rio Convention on Biological Diversity
 The Indian Patent Act, 1970
• An Invention (Section 2(1)(j): Invention means
a new product or process involving an
inventive step and capable of industrial
application.
• Requirements for getting Patent:
– Novelty
– Inventiveness
– Usefulness and industrial application
• Non-Patentable Inventions (Sections 3 & 4):
1. An invention which is frivolous or useless or
which involves mathematical formula
2. Invention relating to Atomic Energy
 1.
• That claims anything contrary to well established natural
laws
• That causes serious prejudice to human, animal or plant or
to environment
• The discovery of a scientific principle or the formulation of
any abstract theory or discovery of any living thing or non
living substance
• Discovery of new property or new use for a known process,
machine or apparatus unless such known process results in
a new product
• a substance obtained by mixing two or more components
• An agriculture or horticulture method
• Any process for the medicinal, surgical, curative,
prophylactic diagnostic, therapeutic treatment of humans
or animals
• Plants or animals in whole or any part thereof other than
microorganisms
• Mathematical, business or artistic work
• Literary, dramatic, musical work
• Scheme or rule or method of performing a mental act or
method of playing games
• Topography of integrated circuits
 Who are Entitled to Apply for Patents
• Any person claiming to be the true and first
inventor of the invention
• Any person being the assignee of the person
claiming to be the true and first inventor in
respect of the right to make such an application
• The legal representative of any deceased person
who immediately before his death was entitled
to make such an application
• Singly or jointly
 Form of Application (Section 7)
• Every application for a patent shall be for one
invention only and shall be made in the
prescribed form (Form I) and filed in the
patent office.
• Where an application is made by the assignee
then proof of the right to make the application
shall be furnished along with the application
or within such period as may be prescribed
after the filing of the application.
• Every application shall state that the applicant
is in possession of the invention and shall
name the owner claiming to be the true and
first inventor and where the person so
claiming is not the applicant or one of the
applicants, the application shall contain a
declaration that the applicant believes the
person so named to be the true and first
inventor.
• An Indian resident can file an application for
patent at the appropriate patent office under
whose jurisdiction he resides or has his principle
place of business.
• For non-residents, the address for service in India
or principle place of business of his agent
determines the appropriate patent office where
applications for patent can be filed.
• Patent offices are in Mumbai, Chennai, New Delhi
and Kolkata having specific territorial jurisdiction.
 Specifications/Disclosure (Section 9)
• Disclosing the details of invention as the
subject of its protection and utilization
• A written description of an invention
 Types of Specifications
• Provisional specification:
– Provisional intimation of the invention to
controller of patents
– Does not confer any legal patent rights to the
applicants
– Important to establish the earliest ownership of
an invention
– Gives priority over others engaged in same or
similar invention
– A patent cannot be granted on the basis of
provisional specification
– Must be followed by complete specification within
12 months of filing of provisional specification
– Where complete specification is not so filed then
the application shall be deemed to be abandoned
• Complete Specification:
– A complete document
– Defines the invention in both technical and legal
terms and includes claims that define the scope
and legal boundaries of the invention
– May include the improvements to the original idea
as mentioned in the provisional specification
 Contents of Specifications (Section 10)
• Every specification, whether provisional or complete, shall
describe the invention and shall begin with a title
sufficiently indicating the subject-matter to which the
invention relates.
• Where, in any particular case, the Controller considers that
an application should be further supplemented by a
drawing, model or sample of anything illustrating the
invention or alleged to constitute an invention, such model
or sample as he may require, shall be furnished before the
acceptance of the application, but such model or sample
shall not be deemed to form part of the specification.
• Every complete specification shall
– Fully describe the invention and its operation or
use and the method by which it is to be performed
– Disclose the best method of performing the
invention which is known to the applicant and for
which he is entitled to claim protection
– End with a claim/claims defining the scope of the
invention for which protection is claimed
 Date of Patent (Section 45)
• It is the date on which application for patent
was filed.
• No suit or other proceeding shall be
commenced or prosecuted in respect of an
infringement committed before the date of
publication of the application.
 Term of Patent (Section 53)
• Twenty years from the date of filing of the
application for the patent.
• In case of international application, limitation
period shall start from the date of international
filing under Patent Cooperation Treaty, 1970.
• Before expiry of twenty years, it could be renewed
in accordance with procedure laid down under law
for which renewal fee must be paid within
prescribed period which could be extended if the
request is made.
• Where fee is not paid within the prescribed
period or within extended period then the
patent shall cease to have effect on the
expiration of such period prescribed for the
payment of any renewal fee or extended
period.
 Patents of Addition (Section 54)
• Granted for any improvement in or modification of
an invention.
• Where an application is made for a patent in respect
of any improvement in or modification of an
invention described or disclosed in the complete
specification filed therein (main invention) and the
applicant also applies or has applied for a patent for
that invention or is the patentee in respect thereof,
then the Controller may grant the patent for the
improvement or modification as a patent of addition.
• When an invention, being an improvement in or
modification of another invention, is the subject of
an independent patent and the patentee in respect
of that patent is also the patentee in respect of the
patent for the main invention, the Controller may,
if the patentee so requests, by order, revoke the
patent for the improvement or modification and
grant to the patentee a patent of addition in
respect thereof, bearing the same date as the date
of the patent so revoked.
• A patent of addition shall not be granted
– unless the date of filing of application in respect of
improvement in or modification was the same as
or later than the date of filing of the complete
specification in respect of the main invention.
– Before the grant of patent for main invention.
Term of Patent of Addition (Section 55)
• Granted for a term equal to that of the patent for
the main invention
• Where the patent for the main invention is revoked
then the court or the Controller, as the case may be,
on request made to him by the patentee in the
prescribed manner, may order that the patent of
addition shall become an independent patent for
the remaining period
• No renewal fees shall be payable in respect of a
patent of addition
 Business Software patents
• The term “software” is basically used to describe all of
the different types of computer programs.
• Computer programs are basically divided into
“application programs” and “operating system
programs”.
• Application programs are designed to do specific tasks to
be executed through the computer and the operating
system programs are used to manage the internal
functions of the computer to facilitate use of application
program.
• The term ‘Software patent’ does not have a universally accepted
definition.
• One definition suggested by the Foundation for a Free Information
Infrastructure is that a software patent is a "patent on any performance
of a computer realized by means of a computer program”.
• According to Richard Stallman, the co-developer of the GNU-Linux
operating system and proponent of Free Software “Software patents
are patents which cover software ideas, ideas which you would use in
developing software.
• Thus, Software patents refer to patents that could be granted on
products or processes (including methods) which include or may
include software as a significant or at least necessary part of their
implementation, i.e. the form in which they are put in practice (or used)
to produce the effect they intend to provide.
 First Software Patent
• On 21st Sep 1962, a British patent application
entitled "A Computer Arranged for the Automatic
Solution of Linear Programming Problems" was
filed.
• The invention was concerned with efficient
memory management for the simplex algorithm,
and could be implemented by purely software
means.
• The patent was granted on August 17, 1966 and
seems to be one of the first software patents.
 Industries in which software patents are
being sought
• Generally, business method and software patents are being
sought by IT companies, Apps developers, and the proprietors of
online market and auction sites. Software firms dealing in web
based applications or providing web based support are among
the major filers.
• Recent trends show Indian software companies such as TCS,
Infosys and Wipro, actively applying for patent protection for
their innovations in India as well as abroad.
• Further, India being a hub for business process outsourcing
units, there are a number of companies in this sector wishing to
seek protection for their innovations.
• Even MNC, which outsources innovative business models in
India, is keen to protect its innovations by seeking patent
registration.
 Indian Patent Act, 1970 (Section 3(k))
• neither business methods nor computer programs are
patentable.
• While business methods will never be patentable, however,
computer programs operating on specific hardware may be.
• To be patentable, software must be used in relation to specific
hardware or, more precisely, a device or apparatus, and the
claim must be for the device or apparatus used in conjunction
with the software component.
• Besides novelty, inventive step and industrial applicability, the
applicant must prove that the technical effect of the invention
is substantial and that it results from the interoperability of the
hardware and software components.
• In 2008, the Indian Patent Office released a Draft Manual of Patent
Practice and Procedure providing guidelines on the types of claim allowed
in respect of software-related inventions.
• As per the guidelines, claims to computer programs , computer-readable
media with programs recorded thereon, methods implemented by
software that lack technical effect and methods with a technical effect but
lacking hardware support in the specification, are not patentable.
• The guidelines state that in respect of a method, “the method claim
should clearly define the steps involved in carrying out the invention.
• It should have a technical effect. In other words, it should solve a
technical problem.
• The claim orienting towards a ‘process/method’ should contain a
hardware or machine limitation.”
 Trend set by US in granting patent
• In 1972, in Grottschal vs Benson, the US Supreme
Court held that a computer program whose sole
objective is to generate numerical values according
to an algorithm would be unpatentable.
• The court held that algorithm is a mental act which
is not patentable.
• Software is a set of computer programs which
involve using algorithms to make the computer
function.
• In 1978, the US Patent Office Board of Appeals
deviated from the decision of the Supreme
Court in Benson’s case and held that a
software translates one language into another
and hence patentable.
• In 1981, in Diamond vs Diehr, the US court was
inspired by the decision of the US patent
office to grant patent to a software and held
that algorithm is patentable.
• The court defined the term algorithm as “a
fixed step by step procedure for accomplishing
a given result usually a simplified procedure
for solving a complex problem”.
• The court held that algorithm is a defined
process or set of rule that leads and assures
the development of a desired output from a
given input.
• After this decision, the courts in US granted
patent to software in number of cases.
• In 1992, in Arrythmia Research Technology
Inc. vs Carasonix Corp., a computer process for
diagnosing heart attack was given patent.
• In 1996, the US patent office gave new guidelines
which gave patent to software used for conducting
methods for doing business.
• In the case of State Street Bank and Trust Company
vs Signature Financial Corp., number of patents
were issued to number of softwares such as
method of advertising over internet, method of
placing an order online with a single mouse click .
• Both product and process patent can be claimed in
respect of a computer program.
• In majority of the countries including India,
the Intellectual Property protection for
software is still governed by copyright laws.
 Patent Protection of Computer Program:
View in favour
• If the software were to be granted Patent
Protection, then the holder of the patent
would be entitled to protection over the
software product and could consequently take
action against anyone who uses any form of
code to reproduce that software product,
regardless of the inventiveness of that
programmer in achieving the same result by
writing different lines of code.
 Patent Protection of Computer Program:
View against (1)
• Software by its nature is incapable of being separated
into separate parts.
• The location and demarcation of each patented
algorithm from the main program is highly impossible.
• Programmers find it difficult to program a new code
without the fear of violating already patent protected
algorithms that may be essential to their program.
• Software programmers might be discouraged to work
for improvements in related areas due to legal
restrictions.
 Patent Protection of Computer Program:
View against (2)
• Software generally becomes obsolete, old or
useless in a few months or years.
• The grant of protection to software for a
period of 20 years or more is irrelevant.
 Patent Protection of Computer Program:
View against (3)
• Grant of long monopoly period in respect of
software would harm the software industry
and retard further development.
• The holders of software patents would be
interested in actively preventing other persons
from developing improvements in violation of
their patent rights and would be least
interested in developing new software code
until the monopoly or protection period is over.
 Patent Protection of Computer Program:
View against (4)
• Software, by nature is extremely complex development of
technology.
• It may include several million lines of code all of which go
into the making of the final saleable software product.
• This complexity, however, has not been created by the effort
of only one programmer.
• Software is a string of algorithms that have been developed
by previous programmers and subsequently merged together.
• However, when one of the algorithms gets patented, no
other programmer can use that algorithm in his/her program.
 Solution?
• Development of a different system of
protection, developed solely for and in respect
of the software industry that
– Defines the types of software and the extent to
which such software can be protected
– Specifies a rational period of protection for such
software.
 Copyright vs Patent
• Copyright is granted for expression of
thoughts and not the original idea wheras
patent is granted for original idea capable of
having practical application.
• Abstract ideas are given copyright if expressed
in copyright form whereas such an idea which
is incapable of having practical application are
not given patent protection.
• Registration is not compulsory for copyright
protection whereas it is for patent protection.
• Subject matter of copyright protection is
literary, dramatic, musical, artistic work,
cinematographic film, sound recording and
computer program whereas that of patent
protection is a product or process that fulfills
the requirements of novelty, inventiveness,
utility and written description.
• The term of copyright is 60 years whereas that
of patent protection is 20 years.
• Copyright is not considered as a strong
protection like a patent whereas patent is a
strong protection.
 Domain Name Distribution
• Allocation of IP address and domain names worldwide is done centrally.
• The Network Solutions Inc. (NSI) was registering domain names from 1992 –
1998.
• In 1999, the Internet Corporation for Assigned Names and Numbers (ICANN)
took the responsibility of the domain name system management.
• Under the ICANN, there is the Central Internet Authority called the Internet
Assigned Numbers Authority (IANA) that allocates IP addresses and domain
names through Inter Network Information Centre (InterNIC).
• IANA allocates numbers to Regional Registries:
– The American Registry for internet number (ARIN) (N. America, the Caribbean and Sub-
Saharan Africa)
– The Roseau IP European (RIPE) (Europe, middle-east and parts of Africa)
– The Asia Pacific Network Information Centre (APNIC) (Asia/Pacific Region)
• These regional registries in turn assign the domain names to smaller service
providers and ultimately to the users through the Registrar.
• In India, the National Internet Exchange of India
(NIXI) has been set up to facilitate exchange of
domestic internet traffic within the country by
ISPs in India.
• It has also been entrusted with the responsibility
of setting up of <.in> country code top-level
domain Registry by the Government of India.
• <.in> registry does not carry out registration
itself. It is done through accredited Registrars.
 Accredited Registrars
• Alankit Technologies Ltd
• Business Solutions
• Cybersites India Technologies Pvt Ltd
• Data Infosys Ltd
• GoDaddy.com, Inc
• Rediff.com
• Sify Ltd
• Software Technology Parks of India
 Government Registrars
• National Informatics Centre (NIC) is the
exclusive registrar for gov<.in> and mil<.in>
domain names.
• ERNET is the exclusive registrar for ac<.in>,
edu<.in> and res<.in> domain names.
 Domain Name Disputes
• Cybersquatting
• Typosquatting
• Identical SLD in domain names registered by
different registries in different countries
• Reverse Domain Name Hijacking
 Cybersquatting
• Registering various famous names or trademarks
as domain names with the hope of selling them at
profit.
• A cybersquatter is an internet user who has
registered multiple domain names with the hope
of selling them to:
– The business house who owns trademarks identical to
registered domain names
– The famous person (celebrity) whose name is
identical to registered domain names
 Example
• Sony trademark
• French filmstars Isabelle Adjani and Alain
Delon
• McDonald and Coke
 Typosquatting
• Registering a domain name which is minor
variation or common typographical
permutations of already registered domain
names so as to divert internet users to their
website by typing errors.
• A typosquatter is a person who seeks to get
profit from controlling domain names and
obtain common typographical permutations of
already registered domain names.
 Example
• Registering www.radiff.com or redif.com
where www. Rediff.com is already registered.
• www.pesi.com where www.pepsi.com is
already registered.
• www.siffy.com where www.sify.com is already
registered.
 Identical SLD in domain names registered by different registries in different countries

• Different registries all over the globe are

registering the domain name and may provide
identical SLD.
• Example: www.nokia.com may already be
registered but still in India www.nokia.co.in
may be registered which is not affiliated to
www.nokia.com
 Reverse Domain Name Hijacking
• Depriving a domain name owner of his domain name.
• A powerful company tries to force a genuine domain name
user (owner) to give up his domain name which was acquired
by him in good faith.
• In Giacolone Network Solutions. Inc vs Ty, Inc, the defendant,
Ty, Inc, a toy company tried to purchase the domain name
from plaintiff. When it failed to do so, it threatened the
plaintiff to bring legal action for trademark infringement.
Plaintiff filed a suit for restraining the defendant from
interfering.
• The court granted permanent injunction restraining defendant
from interfering with the domain name of the plaintiff.
 Parties to domain name disputes
• Domain name owner (defendant)
• Trademark owner (plaintiff)
• Registration authority (defendant) - optional
Domain Name Disputes Resolution
• Domain name belongs to ?
The first person that registers it (defendant)
Trademark owner that has invested time and
money in developing goodwill and reputation
associated with the mark (plaintiff)
Types of Domain Name Dispute Resolution

• Non-Judicial Dispute Resolution

• Judicial Dispute Resolution
 Non-Judicial Dispute Resolution Policy of
Network Solution Incorporation (NSI)
• The owner of a federal trademark registration in
the U.S. or a registration in a foreign country may
challenge use of an identical second level domain
by submitting the registration certificate to NSI,
along with the proof that the trademark owner has
sent the domain name owner (defendant) written
notice of the trademark owner’s (plaintiff) claim
that the use and registration of the domain name
violates the trademark owner’s (plaintiff) legal
rights.
Non-Judicial Dispute Resolution under Uniform
Domain Name Dispute Resolution Policy (UDRP)
• Formulated by ICANN
• Comprehensive policy that covers domain name dispute
areas like trademark or service mark infringements.
• Created a basic global uniformity in the resolution of
domain name disputes.
• Approved dispute resolution service providers:
– Asian Domain Name Dispute Resolution Centre
– CPR Institute for Dispute Resolution
– National Arbitration Forum
– WIPO
 Procedure
• The complainants may initiate UDRP proceedings
directly with any one of the dispute resolution
service providers designated by ICANN.
• The dispute resolution service provider appoints
an Administrative Panel comprising of one or
three independent and impartial persons.
• The Administrative Panel is independent of the
dispute resolution service provider, ICANN, the
concerned registrar(s) and the parties.
• A panel is expected to issue its decision within 14 days of its
appointment.
• If the panel rules in the complainant’s favour, the only available remedy
is for the registrar to cancel the domain name registration or transfer it
to the complainant.
• A registrar may automatically implement a UDRP panel decision after 10
days unless the aggrieved registrant notifies the registrar within this 10
day period that it has “commenced a lawsuit against the complainant in
a jurisdiction to which the complainant has submitted” as required by
the UDRP rules.
• After notification the registrar “will take no further action” until it
receives “satisfactory” evidence of the resolution of the dispute, the
dismissal or withdrawal of the lawsuit, or a court order that the
registrant does “not have the right to continue using” the domain name.
 Microsoft Corp. vs Amit Mehrotra
• Complainant was the registrant of the trademark and
service mark “Microsoft”.
• Respondent registered domain name <Microsoft .org>.
• The panel held that the domain name <Microsoft.org> is
materially identical to the complainant’s trademark
Microsoft. The suffix “.org” distinguishes the domain name
sites of non-profit organizations and does not change the
likelihood for confusion.
• The respondent did not have any legitimate interest in the
name “Microsoft”.
• The domain name was transferred to the complainant.
 World Wrestling Federation Entertainment,
Inc vs Michael Bosman
• The domain name
<worldwidewrestlingfederation.com> was
registered by a resident of California, Michael
Bosman with an intention to sell it to the
World Wrestling Federation (WWF).
• The court directed him to transfer it to WWF.
Asian Paints (India) Ltd v Domain Admin
• The domain name <asianpaint.com> of respondent was identical and
confusingly similar to complainants mark and the domain name
registered by it <asianpaints.com>.
• The court observed that the respondent have no explanation for
registering the disputed domain name and has no right or legitimate
interests in it.
• It further held that the omission of the letter “s” is a deliberate attempt
to exploit users’ typographical errors when seeking the complainant’s
website www.asianpaints.com
• The absence of any legitimate interest in the disputed domain name and
the lack of association with paint on the respondent website
demonstrate registration and use in bad faith.
• The respondent was directed to transfer the domain name
<asianpaint.com> to the complainant.
 NIIT Ltd, India vs National Institute for
Information Technology, Israel
• Since its inception in 1981, the Complainant had been heavily
engaged in the business of education in the computer and IT fields.
• It had delivered IT education and training in India and had a million
alumni.
• It had also developed and marketed computer software in India
and elsewhere.
• It had exported its training programmes to many countries earning
huge amount.
• In addition to its educational centres in India, it had franchise
centres in several countries.
• The mark has been used since 1981 for all aspects of its business.
• The complainant had registered trademarks
for the word NIIT in India and in 17 other
countries.
• It had relevant registration for the words “NIIT
Ltd” in Israel registered on March 01, 1997.
• The complainant has domain name
registration for <niit.com> and for other
domain names incorporating the word “niit”.
• The disputed domain name <ni-it.org> was
registered on February 23, 2002 by the
respondent.
• The respondent was established in 2000 as a
specialized educational institute to deliver
training in IT.
• The respondent disputed that the mark NIIT has acquired
the status of “well-known mark” or is distinct.
• It contended that it has never been the intention of the
respondent to sell, rent or transfer the domain name <ni-
it.org> to the complainant or any competitor of the
complainant.
• The respondent has not been engaged in any pattern of
conduct resulting in the complainant not being able to
reflect its mark in a corresponding domain name. The
complainant is using the domain name <niit.com> to
reflect its mark.
• The court held that the respondent is not
interested to attract Internet users from
outside the Palestinian National Authority
Territories.
• The respondent does not find any commercial
gain by creating a likelihood of confusion with
the complainant’s mark with regard to its
domain name.
• The complaint was denied.
 Judicial Dispute Resolution: the Federal
Trademark Dilution Act, 1995
• Provides protection to famous trademarks.
• Defines dilution as the lessening of the capacity of a
famous mark to identify and to distinguish goods and
services.
• It provides injunction relief to the plaintiff when he
proves that:
– He is an owner of the famous mark
– That mark has been used by the defendant in commerce
– His mark became famous prior to the defendant’s use
– The defendant’s use resulted in dilution of the distinctive
quality of the mark
 Jews for Jesus vs Bradsky
• The court observed that the defendant’s domain
name <jewsforjesus.org> is identical with the
plaintiff’s trademark “Jews for Jesus” and its
website <Jews-for-Jesus.org>.
• The plaintiff’s trademark has become famous
because nearly half million dollars are being spent
per year on advertisement and information is
disseminated to the millions of people across the
globe.
• This resulted in dilution of plaintiff’s trademark.
 Playboy Enterprises, Inc vs Asia Focus
International, Inc
• The court ruled that the marks “playboy” and
“playmate” have become famous after acquiring
goodwill and secondary meaning through incessant
advertisements and because of the fame, people
generally associate playboy and playmate with the
plaintiff’s playboy.
• The distinctiveness of the plaintiff’s mark is likely to
be diluted by the defendant’s use of the domain
names <asian.playmates.com> and
<playmatesasian.com>.
Judicial Dispute Resolution: Anticybersquatting
Consumer Prevention Act (ACPA), 1999
• ACPA requires a “bad intent to profit” from the mark.
• 1. ACPA and Cybersquatting:
 Sporty’s Farm LLC vs Sportsman’s Market, Inc-
– Omega, a mail order catalog company used to sell mainly
scientific process measurement and control instruments
and registered the domain name “sportys.com” with NSI
in 1995.
– It sold the domain name to Sporty’s Farm LLC (plaintiff)
specializing in the sale of Christmas trees which started
advertising its Christmas trees on sportys.com web page.
– The defendant, Sportsman’s Market Inc, a mail
order catalog company provided aviation
equipment to pilots through its mail order
catalogue under the name “Sporty’s”.
– It tried to recover “sportys.com” domain name
from Sporty’s Farm LLC.
– The court determined that the plaintiff Sporty’s
Farm LLC acted with a “bad faith intent to profit”
from the domain name “sportys.com”.
• 2. ACPA and Typosquatting:
Electronics Boutique Holdings Corp (EB) vs
Zuccarini-
– Plaintiff EB registered “ebworld.com” domain name
in 1996 and “electronicsboutique.com” domain
name in 1997.
– In 2000, the defendant, Zuccarini registered the
domain names “electronicboutique.com” and
“electronicbotique.com”, ebworld.com” and
ebworl.com”.
• A potential or existing online customer attempted to
access EB’s website, mistakenly typed one
defendant’s domain name and visited his website.
• The internet user could not exit the Internet without
checking on the succession of advertisements that
appeared on screen.
• It was held by the court that defendant Zuccarini
acted in complete bad faith by knowingly and
intentionally trading on the goodwill and reputation
of EB in an attempt to mislead the public.