Dr.

SHAKUNTALA MISRA NATIONAL REHABILITATION UNIVERSITY

Lucknow

Faculty of Law

PROJECT ON

A STUDY OF DOCTRINE OF FAIR USE IN COPYRIGHT ACT.

For

COURSE ON LAW OF INTELLECTUAL PROPERTY RIGHTS I

Submitted by

GAURAV PANDEY

154140024

Academic Session: 2017-18

Under the Guidance of

Mr. Shail Shakya

Asst. Prof. in Law & Faculty for IPR-I
Faculty of Law
Dr. Shakuntala Misra National Rehabilitation University

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 TABLE OF CONTENTS
ABSTRACT
ACKNOWLEDGEMENT
1. COPYRIGHT
1.1 INTRODUCTION
1.2 HISTORY
1.3 SCOPE
1.4 EXCLUSIVE RIGHTS
1.5 DURATION
1.6 LIMITATIONS & EXCEPTIONS TO COPYRIGHT
1.7 FIRST-SALE DOCTRINE AND EXHAUSTION OF RIGHTS
2. FAIR USE AND FAIR DEALING
2.1 TRANSFER AND LICENSING
2.2 SIMILAR LEGAL RIGHTS
2.3 DEFINITION OF "COPY"
2.4 FAIR USE AND PRIVATE COPYING.
3. CASES OF DOCTRINE FAIR USE IN COPYRIGHT ACT.

3.1 CCH CANADIAN LTD. V. LAW SOCIETY OF UPPER CANADA (2004)

3.1.1 BACKGROUND
3.1.2 RULING
3.1.3 SIMILAR CASES
3.2 MGM STUDIOS, INC. V. GROKSTER, LTD. (2005)
3.2.1 BACKGROUND
3.2.2 RULING
3.2.3 EFFECTS OF THE DECISION
3.3 WARNER BROS. & J. K. ROWLING VS. RDR BOOKS (2008)
3.3.1 BACKGROUND
3.3.2 PLAINTIFFS ALLEGATION
3.3.3 DEFENDANTS CLAIM
3.3.4 THE TRIAL
3.3.5 VERDICT
4. CONCLUSION

5. ANNOTATED BIBLIOGRAPHY

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 ABSTRACT

Copyright represents a balance of the interests of owners and users, which recognises that the
owner should not be entitled to restrain use of copyright material, which does not harm the integrity
of the material and the owners commercial expectations which are legitimate

With the advance of technology, our economy has become increasingly dependent on the storage,
transfer, and manipulation of information. As a result, issues relating to copyright are taking on a
greater importance. However, the same technological advances have made violations of these
protections much easier to achieve, sometimes to the point of requiring only a trivial amount of
effort.

These forces have created two competing viewpoints in our society. The first viewpoint is typically
associated with the creators and distributors of copyrighted works, and holds that the relative
simplicity of violating a copyright requires strengthening of copyright laws and increasing the
severity of punishments for such violations. Opposed to this is the idea that technological advances
have made the concept of copyright protection obsolete, necessitating the abolishment of the legal
structures which enforce those protections. The battle between these views has become prominent
in recent years, with both sides using increasingly heated rhetoric to advance their viewpoint.

In this report, we analyze some of the cases of copyright , with a view to understand the various
factors that are at play and to further enhance the knowledge of protection of intellectual
property rights.

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 ACKNOWLEGEMENT

I, GAURAV PANDEY, I feel myself highly elated, as it gives me tremendous pleasure to come
out with work on the topic A STUDY OF DOCTRINE OF FAIR USE IN COPYRIGHT
ACT,.

First of all I express my sincere gratitude to my Professor MR. SHAIL SHAKYA SIR who
enlightened me with such a wonderful topic. Without Him, I think I would have accomplished
only a fraction of what I eventually did. I thank her for putting her trust in me and giving me a
project topic such as this and for having the faith in me to deliver. Her sincere and honest approach
have always inspired me and pulled me back on track whenever I went off-track. Sir, thank you
for an opportunity to help me grow. I also express my heartfelt gratitude to staff and help for the
completion of this project.
Next I express my humble gratitude to my parents for their constant motivation and selfless
support. I would thank my brother for guiding me.

THANKS YOU.

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 COPYRIGHT ACT

1.1 INTRODUCTION
Copyright has been internationally standardized, lasting between fifty to a hundred years from the
author's death, or a finite period for anonymous or corporate authorship; some jurisdictions have
required formalities to establishing copyright, most recognize copyright in any completed work,
without formal registration. Generally, copyright is enforced as a civil matter, though some
jurisdictions do apply criminal sanctions.

Most jurisdictions recognize copyright limitations, allowing "fair" exceptions to the author's
exclusivity of copyright, and giving users certain rights. The development of the Internet, digital
media, computer network technologies, such as peer-to-peer file sharing, have prompted
reinterpretation of these exceptions, introduced new difficulties in enforcing copyright, and
inspired additional challenges to copyright law's philosophic basis. Simultaneously, businesses
with great economic dependence upon copyright have advocated the extension and expansion of
their copy rights, and sought additional legal and technological enforcement.
The doctrine of fair use or fair dealing is an integral part of Copyright law. It permits
reproduction of the Copyrighted work or use in a manner, which, but for the exception carved out
would have amounted to infringement of Copyright. It has thus, been kept out of the mischief of
the Copyright law.1

In the United Kingdom and many other Commonwealth countries, a similar notion of fair dealing
was established by the courts or through legislation. The concept is sometimes not well defined;
however in Canada, private copying for personal use has been expressly permitted by statute since
1999. In Australia, the fair dealing exceptions under the Copyright Act 1968 are a limited set of
circumstances under which copyrighted material can be legally copied or adapted without the
copyright holder's consent.

Fair dealing uses are research and study; review and critique; news reportage and the giving of
professional advice (i.e. legal advice). Under current Australian law it is still a breach of copyright
to copy, reproduce or adapt copyright material for personal or private use without permission from
the copyright owner. Other technical exemptions from infringement may also apply, such as the
temporary reproduction of a work in machine readable form for a computer.
Educational use is regarded as fair use in most jurisdictions, but the restrictions vary wildly from
nation to nation.

Fairs use is also called Fair dealing .It means usage of copyrighted literary work (literary work
means not only literature but also include maps, diagrams and flow in for non-commercial

1SK Dutt v. Law Book Co and Ors , AIR 1954 All 570 at Para12 and Kartar Singh v Ladha Singh , AIR 1934 Lah
777.
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purposes.) For eg.Research, education or any other form of unprohibited usage is not the
infringement of copyright because the usage is covered under fair-dealing. Fair dealing include
proper acknowledgement. The right of fair dealing include assimilation and usage of information
for the purpose of general awareness.2

Copyright Law in India

In India, the Copyright Act 1957, was passed on 4th June, 1957, and came into force on 21st
January, 1958. Drastic Amendment in the Act was brought about by the Copyright (Amendment)
Act, 1983. Soon after, was introduced another major amendment, in1984. Then came into force
the Copyright (Amendment) Act, 1992, thereafter the Act was again thoroughly amended by the
Copyright (Amendment) Act, 1994, which came into force w.e.f.10.5.1995.The setting of
Copyright Office and Copyright Board assures full protection of all rights in relation to a work in
which Copyright subsists, whether of user or of licensee or of publishers. In 1999 an important
amendment is made and now the Indian Copyright law is equal to international standard.

1.2 HISTORY

1.2.1 STATUTE OF ANNE (1710)

The concept of copyright originates with the Statute of Anne (1710) in Britain. It established the
author of a work as the owner of the right to copy that work and the concept of a fixed term for
that copyright. It was created as an act "for the encouragement of learning", as it had been noted
at the time that publishers were reprinting the works of authors without their consent "to their very
great detriment, and too often to the Ruin of them and their Families". As such, copyright was first
created with the intention that authors might have some control over the printing of their work and
to receive some financial recompense, so that this would encourage them to write more books and
thus to aid the flow of ideas and learning. As the act itself says: "for the encouragement of learned
men to compose and write useful books". The Statute of Anne was the first real copyright act, and
gave the authors rights for a fixed period, after which the copyright expired. Copyright has grown
from a legal concept regulating copying rights in the publishing of books and maps to one with a
significant effect on nearly every modern industry, covering such items as sound recordings, films,
photographs, software, and architectural works.

2 https://en.wikipedia.org/wiki/Fair_dealing

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 1.2.2 BERNE CONVENTION (1186)

The 1886 Berne Convention first established recognition of copyrights among sovereign nations.
Under the Berne Convention, copyrights for creative works do not have to be asserted or declared,
as they are automatically in force at creation: an author need not "register" or "apply for" a
copyright in countries adhering to the Berne Convention. As soon as a work is "fixed", that is,
written or recorded on some physical medium, its author is automatically entitled to all copyrights
in the work, and to any derivative works unless and until the author explicitly disclaims them, or
until the copyright expires. The Berne Convention also resulted in foreign authors being treated
equivalently to domestic authors, in any country signed onto the Convention. The UK signed the
Berne Convention in 1887 but did not implement large parts of it until 100 years later with the
passage of the Copyright, Designs and Patents Act of 1988. The USA did not sign the Berne
Convention until 1989.3

1.2.3 OTHER INTERNATIONAL CONVENTIONS

The United States and most Latin American countries instead entered into the Buenos Aires
Convention in 1910, which required a copyright notice (such as "all rights reserved") on the work,
and permitted signatory nations to limit the duration of copyrights to shorter and renewable terms.
The Universal Copyright Convention was drafted in 1952 as another less demanding alternative to
the Berne Convention, and ratified by nations such as the Soviet Union and developing nations.

1.3 SCOPE

Copyright may apply to a wide range of creative, intellectual, or artistic forms, or "works".
Specifics vary by jurisdiction, but these can include poems, theses, plays, other literary works,
movies, dances, musical compositions, audio recordings, paintings, drawings, sculptures,
photographs, software, radio and television and broadcasts. Copyright does not cover ideas and
information themselves, only the form or manner in which they are expressed.

1.4 EXCLUSIVE RIGHTS

To produce copies or reproductions of the work and to sell those copies (mechanical rights;
including, sometimes, electronic copies: distribution rights)
To import or export the work
To create derivative works (works that adapt the original work)
To perform or display the work publicly (performance rights)

3 https://en.wikipedia.org/wiki/Fair_dealing

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 To sell or assign these rights to others
To transmit or display by radio or video (broadcasting rights)

The phrase exclusive right means that only the copyright holder is free to exercise those rights,
and others are prohibited from using the work without the holders permission. Copyright is
sometimes called a negative right, as it serves to prohibit certain people (e.g., readers, viewers,
or listeners, and primarily publishers and would be publishers) from doing something they would
otherwise be able to do, rather than permitting people (e.g., authors) to do something they would
otherwise be unable to do. In this way it is similar to the unregistered design right in English law
and European law. The rights of the copyright holder also permit him/her to not use or exploit their
copyright, for some or all of the term.4

There is, however, a critique that rejects this assertion as being based on a philosophical
interpretation of copyright law that is not universally shared. There is also debate on whether
copyright should be considered a property right or a moral right. Many argue that copyright does
not exist merely to restrict third parties from publishing ideas and information, and that defining
copyright purely as a negative right is incompatible with the public policy objective of encouraging
authors to create new works and enrich the public domain.

The right to adapt a work means to transform the way in which the work is expressed. Examples
include developing a stage play or film script from a novel, translating a short story, and making a
new arrangement of a musical work.

1.5 DURATION

Copyright subsists for a variety of lengths in different jurisdictions. The length of the term can
depend on several factors, including the type of work (e.g. musical composition, novel), whether
the work has been published or not, and whether the work was created by an individual or a
corporation. In most of the world, the default length of copyright is the life of the author plus either
50 or 70 years. In the United States, the term for most existing works is a fixed number of years
after the date of creation or publication. In some countries (for example, the US and the UK),
copyrights expire at the end of the calendar year in question.

In India, the duration of the copyright is the life of the author plus 60 years.

4 https://www.lexology.com/library/detail.aspx?g=4c426ccb-a002-4256-9a0a-36039b2856a3

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 1.6 LIMITATIONS & EXCEPTIONS TO COPYRIGHT

The expression limitations and exceptions to copyright refers to situations in which the exclusive
rights granted to authors, or their assignees under copyright law do not apply.

1.6.1 IDEA-EXPRESSION DICHOTOMY

The idea-expression divide or idea-expression dichotomy is a concept which explains the

appropriate function of copyright laws, which are generally designed to protect the fixed
expression or manifestation of an idea rather than the fundamental idea itself. The case of Baker
v. Selden was the first U.S. Supreme Court case to fully explain this doctrine, holding that exclusive
rights to the "useful art" (in this case bookkeeping) described in a book was only available by
patent; the description itself was protectable by copyright.

1.6.2 FIRST-SALE DOCTRINE AND EXHAUSTION OF RIGHTS

Copyright law does not restrict the owner of a copy from reselling legitimately obtained copies of
copyrighted works, provided that those copies were originally produced by or with the permission
of the copyright holder. It is therefore legal, for example, to resell a copyrighted book or CD. In
the United States this is known as the first-sale doctrine, and was established by the courts to clarify
the legality of reselling books in second-hand bookstores.
Some countries may have parallel importation restrictions that allow the copyright holder to
control the aftermarket. This may mean for example that a copy of a book that does not infringe
copyright in the country where it was printed does infringe copyright in a country into which it is
imported for retailing. The first-sale doctrine is known as exhaustion of rights in other countries
and is a principle that also applies, though somewhat differently, to patent and trademark rights. It
is important to note that the first-sale doctrine permits the transfer of the particular legitimate copy
involved. It does not permit making or distributing additional copies.

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 FAIR USE AND FAIR DEALING

Copyright does not prohibit all copying or replication. In the United States, the fair use doctrine,
codified by the Copyright Act of 1976, permits some copying and distribution without permission
of the copyright holder or payment to same.

The statute does not clearly define fair use, but instead gives four non-exclusive factors to consider
in a fair use analysis. Those factors are:

The purpose and character of the use

The nature of the copyrighted work
The amount and substantiality of the portion used in relation to the copyrighted work as a
whole
The effect of the use upon the potential market for or value of the copyrighted work

In the United Kingdom and many other Commonwealth countries, a similar notion of fair dealing
was established by the courts or through legislation. The concept is sometimes not well defined;
however in Canada, private copying for personal use has been expressly permitted by statute since
1999. In Australia, the fair dealing exceptions under the Copyright Act 1968 are a limited set of
circumstances under which copyrighted material can be legally copied or adapted without the
copyright holder's consent.

Fair dealing uses are research and study; review and critique; news reportage and the giving of
professional advice (i.e. legal advice). Under current Australian law it is still a breach of copyright
to copy, reproduce or adapt copyright material for personal or private use without permission from
the copyright owner. Other technical exemptions from infringement may also apply, such as the
temporary reproduction of a work in machine readable form for a computer.
Educational use is regarded as fair use in most jurisdictions, but the restrictions vary wildly from
nation to nation.5
2.1 TRANSFER AND LICENSING

A copyright, or aspects of it, may be assigned or transferred from one party to another. For
example, a musician who records an album will often sign an agreement with a record company
in which the musician agrees to transfer all copyright in the recordings in exchange for royalties
and other considerations. The creator (and original copyright holder) benefits, or expects to, from
production and marketing capabilities far beyond those of the author.

5
http://www.copynot.com/Copyrightlaw.html

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A copyright holder need not transfer all rights completely, though many publishers will insist.
Some of the rights may be transferred, or else the copyright holder may grant another party a non-
exclusive license to copy and/or distribute the work in a particular region or for a specified period
of time. A transfer or license may have to meet particular formal requirements in order to be
effective. Under Australian law, it is not enough to pay for a work to be created in order to also
own the copyright. The copyright itself must be expressly transferred in writing.

Under the U.S. Copyright Act, a transfer of ownership in copyright must be memorialized in a
writing signed by the transferor. For that purpose, ownership in copyright includes exclusive
licenses of rights. Thus exclusive licenses, to be effective, must be granted in a written instrument
signed by the grantor. Transfers of copyright ownership, including exclusive licenses, may and
should be recorded in the U.S. Copyright Office. (Information on recording transfers is available
on the Office's web site.) While recording is not required to make the grant effective, it offers
important benefits, much like those obtained by recording a deed in a real estate transaction.

Copyright may also be licensed. Some jurisdictions may provide that certain classes of copyrighted
works be made available under a prescribed statutory license (e.g. musical works in the United
States used for radio broadcast or performance). This is also called a compulsory license, because
under this scheme, anyone who wishes to copy a covered work does not need the permission of
the copyright holder, but instead merely files the proper notice and pays a set fee established by
statute for every copy made. Failure to follow the proper procedures would place the copier at risk
of an infringement suit. Because of the difficulty of following every individual work, copyright
collectives or collecting societies and performing rights organizations (such as ASCAP, BMI, and
SESAC) have been formed to collect royalties for hundreds (thousands and more) works at once.
Though this market solution bypasses the statutory license, the availability of the statutory fee still
helps dictate the price per work collective rights organizations charge, driving it down to what
avoidance of procedural hassle would justify.

2.2 SIMILAR LEGAL RIGHTS

Copyright law covers the creative or artistic expression of an idea. Patent law covers inventions.
Trademark law covers distinctive terms, marks, and names that are used in relation to products or
services as indicators of origin, as does (in a similar fashion), Trade dress and Design patents cover
the look or appearance of a manufactured or functional article. Trade secret law covers secret or
sensitive knowledge or information.

Although copyright and trademark laws are theoretically distinct, more than one type of them may
cover the same item or subject matter. For example, in the case of the Mickey Mouse cartoon, the

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image and name of Mickey Mouse would be the subject of trademark legislation, while the cartoon
itself would be subject to copyright. Titles and character names from books or movies may also be
trademarked while the works from which they are drawn may qualify for copyright.

Once the term of a copyright has expired, the formerly copyrighted work enters the public domain
and may be freely used or exploited by anyone. Courts in the United States and the United
Kingdom have rejected the doctrine of a common law copyright. Public domain works should not
be confused with works that are publicly available. Works posted in the internet for example, are
publicly available, but are not generally in the public domain. Copying such works may therefore
violate the author's copyright.

2.3 DEFINITION OF "COPY"

There are different approaches to the issue of what is a "copy" of a copyright-protected work. For
example, several important rights under United States copyright law exist only for copies of
works material objects in which the work is embodied. A three-dimensional counterpart of a
two-dimensional drawing is usually not a copy of the drawing, under United States copyright
law.

2.4 FAIR USE AND PRIVATE COPYING.

Fair use facilitates access to existing works. Copyrighted works are never simply outputs of the
creative process but are also an important input for subsequent works. It is logical to assume that
increasing the number of works available also stimulates the creation of more works. Fair dealing
is an important concept in Indian Copyright law6. Copyright does not prohibit all copying or
replication. In the United States, the fair use doctrine, codified by the Copyright Act of 1976,
permits some copying and distribution without permission of the copyright holder or payment to
same.

The statute does not clearly define fair use, but instead gives four non-exclusive factors to consider
in a fair use analysis. Those factors are:

The purpose and character of the use.

The nature of the copyrighted work.
The amount and substantiality of the portion used in relation to the copyrighted work as a
whole.
The effect of the use upon the potential market for or value of the copyrighted work.

6http://www.mondaq.com/india/x/299252/Copyright/Fair+Dealing+In+Copyrights+Is+The+Indian+Law+Competent+Enough+T

o+Meet+The+Current+Challenges

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 CASES

3.1 CCH CANADIAN LTD. V. LAW SOCIETY OF UPPER CANADA (2004)

CCH Canadian Limited v. Law Society of Upper Canada, is the landmark Supreme Court of
Canada case that establishes the bounds of fair dealing in Canadian copyright law. The Law
Society of Upper Canada was sued for copyright infringement for providing photocopy services
to researchers. The Court unanimously held that the Law Society's practice fell within the bounds
of fair dealing.

3.1.1 BACKGROUND

Since 1954 the Law Society of Upper Canada offered request-based, non-profit photocopying
services to students, members, judiciary, and authorized researchers at their "Great Library in
Osgoode Hall. The Law Society provided single copies of legal articles, statutes, and decisions to
those who requested.

The Law Society argued that the service they offer is necessary to providing equal access the
librarys collection of legal materials. Many of the materials are non-circulating which makes
access to the original copies difficult to those who do not work near-by.

Three of the largest publishers of legal sources, CCH Canadian Limited, Carswell Thomson
Professional Publishing and Canada Law Book Inc., sued the Law Society for copyright
infringement.

3.1.2 RULING

The unanimous judgment of the court was given by Chief Justice McLachlin. The Court held that
the Law Society did not infringe any copyright when single copies of decisions, statutes,
regulations, etc. were made by the library.

The court was asked four questions:

Are the Publishers' Materials "Original Works" Covered by Copyright?
Did the Great Library authorize copyright infringement by maintaining self-service
photocopiers and copies of the publishers' works for its patrons' use?
Were the Law Society's dealings with the publishers' works "fair dealing/s" under s. 29 of
the Copyright Act?
Did Canada Law Book consent to have its works reproduced by the Great Library?

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In referencing Thberge v. Galerie d'Art du Petit Champlain inc7., McLachlin emphasized the
importance of balancing the public interest in promoting the encouragement and dissemination
of works of the arts and intellect and obtaining a just reward for the creator.

1. SUBSISTENCE OF COPYRIGHT

To answer the first issue, the Court looked at what is considered the meaning of original
work.McLachlin rejected minimal degree of creativity test but agreed with the
assessment of the sweat of the brow approach and finds it too low a requirement. Instead,
McLachlin takes the middle ground by requiring that an original work be the product of
an exercise of skill and judgment. Most importantly, it is required that the work originate
from an author and is not copied from another work. In concluding, she noted that head
notes, summaries, and topical indices are sufficient exercises of skill and judgment that
they are original works. Thus, in copying the material the publishers could only enforce
infringements against copying. However, she also notes that the judgments themselves are
not copyrightable, nor are the typographical corrections done by the editors sufficient to
attract copyright protection.

2. AUTHORIZATION

The second issue asks whether, by providing library patrons with access to photocopiers,
the library was authorizing copyright infringement. McLachlin dismissed this argument by
stating that providing access did not suggest sufficient authorization to violate copyright.
It is presumed that a patron with access to the machines would use them lawfully.

3. FAIR DEALING

When claiming fair dealing the claimant must show that

1) The dealing was for the purpose of either research or private study and that
2) It was fair.

In interpreting research the Court states that it must be given a large and liberal
interpretation in order to ensure that users' rights are not unduly constrained.
Consequently, it is not limited to private and non-commercial contexts. Therefore, the
library made the copies for research purposes. McLachlin then examined the meaning of
fair in the contexts of dealings. She cited Lord Denning in Hubbard v. Vosper when
he describes fair dealing as being a question of degree that cannot be defined concretely.

7
https://spicyip.com/2008/01/are-indian-court-judgments.html

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 She follows this by adopting the reasoning of Linden JA, which incorporated English and
US views, in defining six factors to determine fairness.
the purpose of the dealing
the character of the dealing
the amount of the dealing
alternatives to the dealing
the nature of the work
the effect of the dealing on the work.

In application of these factors to the facts McLachlin found that, given the restrictions put
in place by the Law Society for copying the materials, the library was acting fairly.
McLachlin decided not to answer the fourth issue.8

3.1.3 SIMILAR CASES

Williams & Wilkins Co. v. United States9, was an important intellectual property decision by the
federal Court of Claims, later affirmed by a per curiam opinion from an evenly divided United
States Supreme Court, with only eight justices voting. The decision held that it was a fair use for
libraries to photocopy articles for use by patrons engaged in scientific research.

This decision, written by Judge Oscar Davis, has been cited as part of the trend in which the courts
will take a cautious approach to intellectual property issues raised by the advent of new technology.
Rather than enforce the rights of the author articles by placing a prohibition on such copying, the
Court in this case held that this was not prohibited by the law as written, leaving it to the United
States Congress to address the issue through legislation.

3.2 MGM STUDIOS, INC. V. GROKSTER, LTD. (2005)

A US Supreme Court decision in which the Court unanimously held that defendant P2P file sharing
companies Grokster and Streamcast (maker of Morpheus) could be sued for inducing copyright
infringement for acts taken in the course of marketing file sharing software. The plaintiffs were a
consortium of 28 of the largest entertainment companies (led by Metro-Goldwyn-Mayer studios).

8
http://www.copynot.com/Copyrightlaw.html

9 1975

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3.2.1 BACKGROUND

The case is frequently characterized as a re-examination of the issues in Sony Corp. v. Universal
City Studios10, a case that protected VCR manufacturers from liability for contributory
infringement. MGM wanted makers of file sharing technology held liable for their users' copyright
infringements. In Sony, the court held that technology could not be barred if it was "capable of
substantial non-infringing uses.

Grokster came before the Supreme Court having already won in two previous courts. The United
States District Court for the Central District of California originally dismissed the case in 2003,
citing the Betamax decision. Then a higher court, the Ninth Circuit Court of Appeals, upheld the
lower court's decision after acknowledging that P2P software has legitimate and legal uses.

Computer and Internet technology companies such as Intel, and trade associations including firms
such as Yahoo! and Microsoft, filed amicus curiae briefs in support of the file sharing companies,
while the RIAA and MPAA both sided with MGM. A list of briefs filed in the case is available at
copyright.gov and eff.org. Billionaire Mark Cuban partially financed Grokster's fight before the
Supreme Court

3.2.2 RULING

The opinion was authored by Justice Souter, who wrote: "We hold that one who distributes a device
with the object of promoting its use to infringe copyright, as shown by clear expression or other
affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by
third parties.

While the Court unanimously concurred that Grokster could be liable for inducing copyright
infringement, there was considerable disagreement over whether the case is substantially different
from the Sony case, and whether the precedent established by Sony should be modified.

The Court as a whole chose not to reexamine the Betamax precedent in the decision. It was
reviewed only as necessary to properly detail the issues involved in this case. Instead, a new and -
as several critics have contended - ambiguous test was developed to determine whether the
software in question is not protected by the Sony ruling. Briefly stated, it had to be shown that the
distributors of the program have advertised and/or otherwise induced its use for copyright
infringement; if this intent can be shown, additional contributory aspects may be relevant. For
example, MGM et al. had asserted that the defendants' refusal to incorporate protocols that would

10 1984

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filter copyrighted materials from the file-sharing network constitutes an intent to promote
copyright infringement.

Justice Souter notes that "...in the absence of other evidence of intent, a court would be unable to
find contributory infringement liability merely based on a failure to take affirmative steps to
prevent infringement, if the device otherwise was capable of substantial non-infringing uses. Such
a holding would tread too close to the Sony safe harbor.

Indeed, the decision does seem to leave sufficient leeway for developers in creating new products,
as it establishes guidelines to compliance with existing copyright law, and holds liable the
distributors rather than developers for copyright infringement.

3.2.3 EFFECTS OF THE DECISION

On November 07, 2005 Grokster announced that it would no longer offer its peer-to-peer file
sharing service. The notice on their website said, "The United States Supreme Court unanimously
confirmed that using this service to trade copyrighted material is illegal. Copying copyrighted
motion picture and music files using unauthorized peer-to-peer services is illegal and is prosecuted
by copyright owners."

As part of a lawsuit permitted by the MGM Studios v. Grokster Supreme Court decision, Grokster
was forced to pay $50 million to the music and recording industries. As of January 10, 2009,
visiting the Grokster website displays this message:

Fearing lawsuits similar to MGM v. Grokster, Mark Gorton, the CEO of the firm that produces
LimeWire, said that he planned to stop distributing his file sharing program. In order to download
the free LimeWire client, users must now first agree to the statement "I will not use LimeWire for
copyright infringement."

3.3 WARNER BROS. & J. K. ROWLING VS. RDR BOOKS (2008)

Warner Bros. Entertainment, Inc. and J. K. Rowling vs. RDR Books is a copyright lawsuit brought
on 31 October 2007 by the media company Warner Bros. and Harry Potter author J. K. Rowling
against RDR 0Books, an independent publishing company based in Muskegon, Michigan.
Lawyers for Rowling and Time Warner argued that RDR's attempt to publish for profit a print
facsimile of The Harry Potter Lexicon, a free online guide to the Harry Potter fictional universe,
constituted an infringement of their copyright and a violation of fair use. The trial was held from
1417 April 2008 in the United States District Court for the Southern District of New York. In
September, 2008, the court ruled in Rowling's favor, and publication of the book was blocked.

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3.3.1 BACKGROUND

J K Rowling is the author of the world famous Harry Potter Book Series. RDR Books is an
independent publishing company based in Muskegon, Michigan. In 2000, Steve Vander Ark, a
librarian from Grand Rapids, Michigan, created the Harry Potter Lexicon, an online encyclopedia
of the Harry Potter book series that collected and reorganized various facts from the novels into a
searchable form.

In August, 2007 Vander Ark was contacted by Roger Rapoport, President of RDR Books, and
asked about the possibility of publishing a for-profit print version of the site. Rapoport assured
Vander Ark that such a publication would be legal and he added an addendum to the contract that
stated that RDR Books would act to defend him in any future lawsuits.

On 31 October 2007, Warner Bros. and Rowling sued RDR Books to block the book's publication.

3.3.2 PLAINTIFFS ALLEGATION

Rowling referred to the Lexicon as "wholesale theft of 17 years of [her] hard work". Rowling, who
previously had a good relationship with Vander Ark, reiterated on her website that she planned to
write a Harry Potter encyclopedia, and that the publication of a similar book before her own would
hurt the proceeds of the official encyclopedia, which she planned to give to charity.

In their suit, Rowling's lawyers also asserted that, as the book describes itself as a print facsimile
of the Harry Potter Lexicon website, it would publish excerpts from the novels and stills from the
films without offering sufficient "transformative" material to be considered a separate work.

On 16 January 2008, Rowling and Warner Bros. filed their full, 1,100 page complaint against RDR
Books, citing that the book "compiles and repackages Ms. Rowling's fictional facts derived
wholesale from the Harry Potter works without adding any new creativity, commentary, insight,
or criticism. Defendant's attempt to cloak the Infringing Book in the mantle of scholarship is
merely a ruse designed to circumvent Plaintiffs' rights in order t0o make a quick buck."

JK Rowling and Warner Bros. claimed that RDR's argument that the book is transformative is
wrong because the book does not create "new information, new aesthetics, new insights and
understandings. The statement also claimed that the book is devoid of analysis, commentary or
anything else rising to the level of scholarship and that, "Of the book's 2437 entries, 2034 simply
lift information straight from the series."

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3.3.3 DEFENDANTS CLAIM

A group of intellectual property lawyers at Stanford Law School said they would help defend RDR
Books' right to publish. Fair Use Project Executive Director Anthony Falzone said the Lexicon is
protected by U.S. law that has long given people "the right to create reference guides that discuss
literary works, comment on them and make them more accessible."

RDR Books in their official memorandum stated that "[Rowling] appears to claim a monopoly on
the right to publish literary reference guides, and other non-academic research, relating to her own
fiction. This is a right no court has ever recognized. If accepted, the right would dramatically
extend the reach of copyright protection, and eliminate an entire genre of literary supplements.

David Hammer, lawyer for RDR, claimed that the need for a reference guide was greatest when
the work being discussed is most creative, and fantasy is presumably the most creative form of
literature

3.3.4 THE TRIAL

The trial began on 14 April 2008 in the United States District Court for the Southern District of
New York, Robert P. Patterson, Jr. presiding as the judge with Rowling testifying on day one and
Vander Ark testifying on day two. The plaintiffs made their closing remarks on the third day of
the trial. Rowling claimed that "This case is about an author's right to protect their creation." In
addition, she claimed that the Lexicon was "sloppy, lazy" and "filled with errors," though RDR
Books lawyer Anthony Falzone noted that "Copyright law does not permit an author to suppress a
book because she doesn't like it."

Each side employed a literary expert to testify whether or not the Lexicon had copied text without
attribution. Rowling's lawyers said that the Lexicon consists largely of information taken from the
books and contains little interpretation or analysis.

3.3.5 VERDICT

On 8 September 2008, Judge Patterson decided the case in Rowling's favor, claiming that "because
the Lexicon appropriates too much of Rowling's creative work for its purposes as a reference guide,
a permanent injunction must issue to prevent the possible proliferation of works that do the same
and thus deplete the incentive for original authors to create new works.

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Patterson awarded the plaintiffs $750 for infringement of each of the seven Harry Potter novels
and $750 for infringement of each of two official companion books11; the minimum amount
possible, "since the Lexicon has not been published and thus plaintiffs have suffered no harm
beyond the fact of the infringement. Patterson was careful to draw a distinction between the
Lexicon book and other potential guidebooks saying, "While the Lexicon, in its current state, is
not a fair use of the Harry Potter works, reference works that share the Lexicon's purpose of aiding
readers of literature generally should be encouraged rather than stifled".

Patterson ruled. "The Lexicons verbatim copying of highly aesthetic expression raises a
significant question as to whether it was reasonably necessary for the purpose of creating a useful
and complete reference guide."

Patterson rejected Rowling's argument that the book interfered with her plans to write a Harry
Potter encyclopedia, saying, "the market for reference guides to the Harry Potter works is not
exclusively hers to exploit or license, no matter the commercial success attributable to the
popularity of the original works."

3.3.6 IMPLICATIONS

Matthew Rimmer, an Australian law expert, commented that the ruling "is an important precedent
in respect of the defense of fair use and it represents a victory of authorial rights over the freedoms
of secondary users of copyright works. The case leaves the way open for future conflict over
derivative works, character merchandising and fan fiction based upon the Harry Potter series."

David Ardia of the Citizen Media Law Project opined that, "there is some good news in the opinion
for fair use advocates. First, the court concluded that reference guides such as the Lexicon are
transformative in character and in order to fulfill their purpose they must be able to "make
considerable use of the original works. Second, reference works don't lose their transformative
nature just because they lack analysis or commentary. The court rejected Rowling's argument that
the Lexicon is not transformative because it fails to add these elements. Third, copyright holders
cannot exert exclusive control over the market for reference works. According to Judge Patterson,
even a copyright holder as eager as Rowling is to control through licensing all related markets
must face limits."

11 i.e., Quidditch Through the Ages and Fantastic Beasts and Where to Find Them

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 CONCLUSION

The Doctrine of Fair Use developed over the years as courts tried to balance the rights of copyright
owners with society's interest in allowing copying in certain, limited circumstances. In the context
of computer technologies, the Fair Use Doctrine is often used in the context of Reverse
Engineering. Under Trade Secret Principles, it is generally accepted to "Reverse Engineering" a
product to determine how the product works. Reverse Engineering may involve analyzing circuit
board layouts, "peeling" back an integrated circuit chip, or decompiling computer software. It is
impossible to decompile software and then analyze the results without making a copy (or a
derivative work) of the software, the making of these copies in the context of reverse engineering
is a Fair Use and is not Copyright infringement. It is without dispute that the Indian Copyright
Act, purport to maximize the promotion of creativity and the dissemination of information at the
same time, but it is different from US counterpart which traces ultimately in the policy pre-
occupations of the Indian and US Courts. The provision for Fair Dealing in the Indian Act is brief
and does not define the meaning or the application of the defence. The provision for the Fair Use
in the American Act is more elaborate and extensive. The American Act is more flexible and open
for further advancement and is so intended by its legislators. Indian legislators, desiring certainty,
have chosen the conservative approach and the Indian judicial jurisprudence is reflective of this
approach. Considering the global nature of the digital environment, it is in the interest of both
right-holders and users that exceptions and limitation to the exclusive rights of reproduction and
communication to the public and provisions on applicable laws be harmonized as much as possible.
For an optimum development of the internet, harmonization should occur at international level,
Specific situations in various countries to be taken into account.

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 ANNOTATED BIBLIOGRAPHY

INDIAN PERSPECTIVE OF FEAR DEALING UNDER COPYRIGHT,INTELLECTUAL

PROPERTY RIGHTS VOL 14. AVAILABLE AT
http://nopr.niscair.res.in/bitstream/123456789/6706/1/JIPR%2014(6)%20523-531.pdf LAST
SEEN ON 26/10/2017

The author is an Assistant Professor at National Law Institute University Bhopal, the present
paper was published on Aug-Oct 2009 under Bharti Law Review basic purpose of this research
is to evaluate how Indian court have borrowed the factor analysis method in the assessment of
fair dealing in U.S and also have adopted a discipline approach in dealing with the defense. In
the article author have taking help of case Falsom v Marsh to address the fundamental issue
about the purpose meaning and application of the Indian law on fear dealing.

MICHAEL D. KING, EDUCATIONAL TECHNOLOGY AND THE FAIR USE

DOCTRINE. AVAILABLE AT
http://digitalsandbox.weebly.com/uploads/5/5/8/8/5588196/fair-use-doctrine.pdf LAST SEEN
ON 24/10/2017
The author of this article is Michael D. King. The author talks about the invention and the
technology which is used in copying the things. The Fair Use doctrine addresses four issues the
courts use to determine whether or not a copyrighted material has been used legally. First, they
will determine whether it has been used for nonprofit and/or educational purposes. Secondly, the
nature of the copyrighted work will be explored. Next, the courts will consider how much of the
work has been used as compared to how much of it exists. Finally, the courts will determine the
effect of the use on the potential market for or the value of the copyrighted work in question.

DR. B.L. WADEHRA, LAW RELATING TO INTELLECTUAL PROPERTY (5TH

EDTITION,2011)

The author of the book is Dr. B.L. Wadehra. Intellectual property rights (IPR) have become
important in the face of changing trade environment which is characterized by global competition,
high innovation risks, short product cycle, need for rapid changes in technology, high investments
in research and development (R&D), production and marketing and need for highly skilled human
resources. Regardless of what product an enterprise makes or what service it provides, it is likely
that it is regularly using and creating a great deal of intellectual property. This book provides an
insight into the laws related to intellectual property and the administration of these laws.

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VINOD V. SOPLE, MANAGING INTELLECTUAL PROPERTY: THE STRATEGIC
IMPERATIVE, 292, (5th ed.2016)

The author Vinod V. Sople, Director of ITMA-SIA Business School, the basic pupose behind this
is to understand how Intellectual Property (IP) turn out to be a valuable asset in this era of
completion. This book try to link IP right with the eyes of a business men that how IP gives you
substantial legal advantages, helps in gain long term profit and how IP right will exclude other
form competition. Chapter sixteen of this book IPRs in Pharmaceutical Sector helped me to gain
fundamental and basic knowledge about the pharmaceutical patent and give a brief about its
historical perspective.

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