Intellectual Property Law Notes

Intellectual Property Law Notes
Patents
What is a patent?
A patent is a limited monopoly granted in return for disclosure of technical information.
What is the origin of patent law and what is the justification for a patent?
The origins of patent law can be traced from the medieval times. It all started with the granting of “Letters
Patent” which were in effect open letters with king’s seal. The Letters Patent granted the rights to foreign
weavers/ craftsmen so that they can practice their trade.
Patent law deals with new industrially applicable inventions. It envisages a very powerful and special
mode of protection for inventions. The patentee is given a monopoly to work the invention for a period of
around 20 years. A patent is never granted in an automatic way, there is a structured procedure for obtaining
a patent.
The justification for obtaining patents is-

 It encourages research and invention
 Induces inventors to reveal their inventions instead of keeping them as a secret
 It offers a reward for the effort of developing inventions to the stage where it is commercially viable
 Provides inducement to invest money in new lines of production, which may not be profitable, if too
many people who venture into it.
What can be patented? What cannot be patented?

Patents can be granted for under Section 2(1)(j) for an invention which means, “Invention” means a new
product or process involving an inventive step and capable of industrial application.
Invention must-
 Relate to a Process or Product or both
 Be new (Novel)
 Involves an inventive step
 Be Capable of Industrial Application
 Not fall under Section 3 and 4
A feature of an invention is that it involves technical advance as compared to the existing knowledge or
have economic significance or both and makes the invention not obvious to a person skilled in the art.
(Inventive Step)
Industrial Application means that an invention is capable of being made or used in any kind of industry.
(Utility). Industrial application is another requirement for patentability. The invention has to be worked
industrially this requirement distinguishes patents from copyright. An invention is capable of industrial
application if it can be made or used in any kind of industry including agriculture.
Patents cannot be awarded for-
 The mere discovery of a known substance, which does not result in the enhancement of the known
efficacy of that substance.
 The mere discovery of any new property or new use for a known substance.
 The mere use of a known process, machine or apparatus unless such known process results in a new
product or employs at least employs one new reactant.
One can argue that a minor alteration to an existing drug molecule, resulting in "enhancement of its known
efficacy" could lead to the grant of a patent on that molecule.
Arman Sood 4th Year BA.LLB

Section 3 excludes certain things that cannot be patented-
Section 3(a) excludes frivolous inventions and inventions contrary to well-established natural law for
example, a machine that gives more than 100% performance or a perpetual machine.
Section 3(b) excludes commercial exploitation or primary use of inventions, which is contrary to public
order or morality for examples gambling machine or device for house-breaking or causes serious prejudice
to health or human, animal, plant life or to the environment for examples biological warfare material or
devices or weapons of mass destruction.
Section 3(c) bars the mere discovery of a scientific principle or formulation of an abstract theory or
discovery of any living thing or discovery of non–living substance occurring in nature for example
 Newton’s Laws
 Discovery of micro-organism
 Discovery of natural gas or a mineral
Genetically modified microorganisms are however patentable.
Section 3 (d) excludes the mere discovery of a new form of a known substance, which does not result in the
enhancement of the known efficacy of that substance for example crystalline forms of known substances.
The mere discovery of any new property or new use for a known substance or of the mere use of a known
process, machine or apparatus, unless such known process results in a new product or employs at least one
new reactant for example, new use of Aspirin for heart ailments, mere new uses of neem.
Section 3(e) bars substances obtained by mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substance for example Combiflam [Paracetamol
(Antipyretic) + Brufen (analgesic)]. However, a mixture resulting into synergistic properties of mixture of
ingredients however, may be patentable- Soap, Detergents, lubricants etc.
Section 3(f) bars the mere arrangement or re-arrangement or duplication of known devices, each functioning
independently of one another in a known way for example a bucket fitted with torch or an umbrella with fan.
Section 3(h) bars method of Agriculture or Horticulture for example producing new form of a known plant,
or preparation of an improved soil. However, agricultural equipment’s are patentable
Section 3(i) bars any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other
treatment of human beings or a similar treatment of animals to render them free of disease or to increase
their economic value or that of their products for example, removal of cancer tumor or Processes relating to
therapy. However, treatment performed on tissues or fluids permanently removed from the body and
surgical, therapeutic or diagnostic apparatus or instruments are patentable
Section 3(j) excludes patents on plants and animals in whole or any parts thereof, …… including seeds,
varieties and species and essentially biological processes for production or propagation of plants and
animals for examples clones and new varieties of plants a process for production of plants or animals if it
consists entirely of natural phenomena such as crossing or selection.
Section 3(k) excludes mathematical method or business method or algorithms or computer programme per
se however a new calculating machine, which is a combination of hardware and software, is patentable
Section 3 (p) bars inventions, which are traditional knowledge or an aggregation or duplication of known
properties of traditionally known component or components for example traditional knowledge already in
public domain like the wound healing property of Haldi. However, any value-addition using traditional

knowledge leading to a new process or product, which is novel with inventive step and industrial
applicability, extraction of Azadirachtin from Neem can be patented.
Write a note on Patent Infringement- Claims and Remedies.
What Is Patent Infringement?

Patent infringement is the commission of a prohibited act with respect to a patented invention without
permission from the patent holder. It occurs when someone violates the patent rights an inventor has in his
invention by making, using or selling the invention without the patent owner’s permission (or if the patent
has been licensed), in a way not permitted by the license.
Basic Features of Patent Infringement-

1. Must be the valid patents
2. Infringement must be patent infringements with the behavior purpose of operation or production
3. Violation of the behavior is carried out without the legal rules permission of patentees.
Patent Claims-
Define the scope of patent protection, the possible parts in a claim may be a preamble he recites the class of
the invention and optionally its primary properties or purpose followed by the various elements of the claim
as well as a set of limitations that describe the invention and optionally a purpose clause that describes the
overall use of the invention.
Remedies of Patent Infringement are-

1. Monetary Relief Equitable Relief Cost & Attorney’s Fees
2. Compensatory damages- Preliminary injunctions Costs are typically-- a patent owner may recover or
permanent injunctions recoverable and in rare lost profits or infringement cases where there has been
willful infringement
3. Increased damages attorney’s fees- up to three times the compensatory damages can be recovered in
cases of willful or deliberate infringement
What are overlapping patents?

While referring to overlapping patents one is usually referring to overlapping claims. Two claims will be
said to overlap if an embodiment falls within two separate claims. Put another way, two claims will overlap
if there could exist one product or process that would constitute an infringement of both claims.
Consider two claims, A and B. Logically; there are four possibilities for “overlap” of these claims:
(i) The scope of claim A subsumes the scope of claim B (“Type I: A subsumes B”);
(ii) The scope of claim B subsumes the scope of claim A (“Type II: B subsumes A”);
(iii) Part of the scope of claim A is common to part of the scope of claim B (“Type III: partial
overlap”); and
(iv) The scope of claims A and B are, or are effectively, identical (“Type IV: complete overlap”).
What is patent interference?
A patent interference arises when two or more pending patent applications, or at least one pending patent
application and an unexpired patent, contain patent claims covering the same or substantially the same
subject matter. An important point here is that a patent interference is appropriate only when both inventors
claim the same invention. It’s not enough that they describe the same subject matter. Unlike every other
country, the U.S. grants a patent to the party who invented first, rather than the party who filed a patent
application first. The determination of who invented first is known as "priority of invention." (Changed as
per AIA)
When two or more parties claim the identical or substantially identical inventions, the U.S. Patent and
Trademark Office may declare an interference proceeding to determine which party has priority of
invention. The party ruled to have priority obtains the right to the subject matter of the patent claims at issue,
although it may be necessary to return to ex parte prosecution to have an examiner review any remaining
issues before a patent actually issues. The other party does not get the patent claims and may be precluded
from practicing the invention because such conduct might infringe the patent claims of the party who
prevailed in the interference proceeding. Interference proceedings are often useful to consider as an
alternative to attacking a patent in district court during an infringement action. Indeed, district court
proceedings may be stayed pending the outcome of a concurrent interference.
Write a note of First to File v First to Invent under Patent Law?
First-To-Invent
Before addressing first-to-file, it is important to understand how the first-to-invent system, which we’ve
operated under for the last 200 years, works. Under the first-to-invent system, when two or more inventors
file a patent application for the same invention, the patent office should identify and award the patent to the
inventor who was first to conceive and diligently reduce the invention to practice, even if (subject to some
limitations) the first inventor was not the first to file a patent application. An example helps illustrate this
system:
In this scenario, inventor A would be entitled to receive the patent on her widget even though inventor A
filed her patent application after inventor B. Inventor A may need to “swear behind” inventor B’s patent
application by showing documentation regarding her earlier invention date of the widget, and that she
diligently worked to actually or constructively “reduce the invention to practice” (constructive reduction to
practice can be shown by preparing and filing the patent application). Under the first-to-invent system,
inventor B would not receive a patent on the invention.
First-To-File
The first-to-file system being implemented on March 16, 2013, attempts to further harmonize U.S. patent
law with that of most of the rest of the world by de-emphasizing the actual invention date.
A lot of informed people think that the change to first-to-file will be a boon to patent trolls because they will
be able to file patent applications on inventions released, but not yet filed on, by underfunded
startups. However, the term “first-to-file” is a bit of a misnomer. In the United States, whether under first-to-
invent or first-to-file, an inventor can publicly disclose their invention, such as in a blog post, and still file a
patent application within one year of that public disclosure. The system being implemented under the AIA
is not a true first-to-file system as in most foreign countries because this grace period on public disclosure
will remain. Thus, the new system can really be considered a “first-to-disclose” system.
The new system can really be considered a “first-to-disclose” system.
Inventors can attempt to market and sell their inventions and still file for a patent in the United States within
one year of the first public disclosure. However, they would not be able to pursue patents for the previously
disclosed invention in most foreign countries, because foreign countries that operate on the first-to-file
standard typically do not have this grace period for public disclosure. In these foreign countries, a public
disclosure prior to filing a patent application is an absolute bar on receiving a patent on the disclosed
invention.

Taking the disclosure grace period into account, under the first-to-file/first-to-disclose system being
implemented on March 16, the key question to consider is not when an invention was first conceived as in
the first-to-invent system, but rather when the invention was first publicly disclosed by another inventor or
first filed with the USPTO. Thus, while an inventor can publicly disclose his invention and still file a patent
application with the USPTO within one year of the disclosure, that disclosure would prevent any other
inventor from receiving a patent on the same invention, even if the other inventor invented the same
invention before the disclosure.
Similarly, if no previous disclosure were made, a filing at the USPTO by a later inventor would entitle that
later inventor to a patent even though a second inventor came up with the invention earlier than the second
inventor’s filing date. An example will better illustrate this scenario:
In this scenario, Inventor B would receive the patent, even though inventor A came up with the invention for
the widget first. Inventor A would therefore be prohibited from practicing the invention patented by inventor
B even though he came up with the invention before inventor B did.
Now consider a second, somewhat modified scenario:
In this modified scenario, Inventor A would be entitled to the patent even though Inventor B filed his patent
application first because Inventor A disclosed the invention before Inventor B filed his patent
application. Therefore, because Inventor A filed the patent application within one year of his public
disclosure, Inventor A will be entitled to receive the patent. Inventor B would therefore be prohibited from
practicing the invention patented by Inventor A.
In the case that a person learns of an invention that another inventor disclosed, copies the idea and attempts
to file a patent application under first-to-file, the copier could not receive a valid patent on the invention by
simply filing the patent application first because he did not “invent” the invention and is therefore not
entitled to receive patent protection (though if the USPTO grants a patent to a non-inventor, the burden of
proof would be on the other party to show that the non-inventor was not the true inventor of the patented
technology). Similarly, the non-inventor could not prevent the inventor from receiving a patent by publicly
disclosing the invention based on information obtained from the inventor because in this case, the inventor
will still retain the one-year grace period to file a patent application on the invention.
Write a note on Inventorship and Ownership of Patents? What are the rights of a patent holder?
Ownership of patents-
 Normally it is the inventor who owns the patent

 Incase the inventor has assigned the patent, the owner of the patent will be different
 Disputes mainly arise over ownership of inventions between employees and employers
 In India there is no provision which deals with employee-employer inventions
Inventorship and ownership of a patent are separate and distinct issues. Generally, the inventor owns a
patent. However, the inventor and the owner of the patent may be different. This typically occurs when the
inventor assigns the patent to an entity, such as a corporation or a university. Complex and serious legal
issues involving the ownership of a patent often arise when inventorship or the duty of an inventor to assign
the patent is not clearly defined.
With patents, the concepts of inventorship and ownership, though related, are distinct. Inventorship is a legal
concept that is based upon who meets the requirements to be an inventor. On the other hand, the concept of
ownership relates to who actually owns the legal rights associated with the patent. In the case of an
independent inventor, the inventor and the owner of a patent are usually the same. Often, especially in a
university or a corporate setting, the inventor does not own the patent. Rather, the university or corporation
is the owner.
Patent applications filed in the United States must be filed in the name of the person who invented the
invention. The act of invention has two parts, "conception" and "reduction to practice." Conception is the
formulation in the mind of the inventor of the complete means for solving a problem in such a way that a
person skilled in the relevant art could practice the invention by following the inventor's conception.
An invention is not complete following conception, however. It must further be reduced to practice. This can
be accomplished in one of two ways. There may be an "actual" reduction to practice, which is when the
invention is made and tested to determine that it works. However, reduction to practice does not require the
invention to be made. An invention can be "constructively" reduced to practice by filing a patent application
claiming the invention. For purposes of invention, a constructive reduction to practice is considered to be
equivalent to an actual reduction to practice.
The inventor is the individual who has conceived of the invention, provided of course that there has been a
reduction to practice. An individual who reduces the invention to practice by following the conception of the
inventor is not considered to be an inventor.
There may be only one inventor, which occurs when one person has conceived of the entire invention. Very
commonly, however, invention is a collaborative process involving two or more people. When more than
one person contributes to the conception of an invention, each is considered to be a joint inventor.
Joint inventors do not have to have physically worked together on the invention. There must have been some
collaboration, however, and each of the inventors must have worked on the same subject matter and must
make some contribution to the conception of the invention as it is claimed in the patent. All of the joint
inventors do not have to be inventors of every claim. Even if an individual contributes a conception to only
one claim in a patent, that individual is still a joint inventor of the entire patent.
Each of the joint inventors are named on the cover page of a patent. The order of the names of the inventors
has no legal significance. The rights in the patent of one named inventor are the same as those of each of the
other named inventors, irrespective of the order in which they are listed.
One final point concerning inventorship is that an individual who has not contributed to the conception of
the invention is not an inventor, and is not permitted to be listed on the patent as an inventor. Even if
someone has contributed a large amount of money to permit the inventors to work, or if someone heads the
research department in which the inventors work, that person is not an inventor. Inclusion of such a persons
name as an inventor on a patent, with knowledge that the person does not qualify as an inventor, can result
in invalidity of the patent. Therefore, that person name must not be listed as an inventor on the patent.
Absent any contrary agreement or duty to assign the patent, the named inventor is the owner of the patent.

As the owner of the patent, the inventor has the right to prevent others from making, using, selling, offering
to sell, or importing the patented invention.
If there are joint inventors, unless there is a contract to the contrary, each of the inventors has an undivided
interest in the entire invention as claimed in the patent. Therefore, each of the joint inventors may practice
the invention without consent of the other inventors and without any duty to pay the other inventors a
portion of the profits from the exploitation of the patent. There is no fiduciary duty between the joint
inventors. Also, each joint inventor may license the patent without approval of the other inventors and
without paying them a share of any royalties received from the licensee.
Because of this, in any situation involving more than one inventor, the inventors should agree by contract
how the rights in the patent will be apportioned. For example, the inventors may agree that all proceeds from
licensing the invention will be split regardless of which inventor actually licenses the invention, or that each
of the inventors will have separate exclusive rights to the patent in different geographical regions of the
United States.
Often, inventors assign their inventions to their corporate or university employers. When this occurs,
inventorship and ownership of the patent differs. Here, the corporate or university assignee, and not the
inventors themselves, owns the rights in the patent. Unless there is an agreement requiring it, the
assignee/owner does not have to make any payments to the assignor/inventor for exploiting the patent.
An obligation to assign a patent usually arises when there is a contract between the inventor and the assignee
requiring an assignment, such as when a contractor is hired to solve a particular problem, or when certain
employer/employee relationships exist. Generally, an employee must assign an invention to an employer if
the employee has a specific contractual obligation to assign or if the employee was hired to invent or is
directed by the employer to solve a particular problem. Although courts have divided on this issue,
employees who have been hired to do research in general usually do not have to assign their inventions to
their employers. Also, employees who have been hired for purposes other than to do research have no duty
to assign their inventions to the employers.
Of course, parties may define their rights by contract. It is a good idea for companies and universities to
have contracts in place with their researchers that require assignment of any invention discovered in the
course of their employment.
Another issue that frequently comes up is who owns an invention that is invented by someone who would
ordinarily not have a duty to assign to the employer, but where the invention was made using employer
resources or on company time.
Rights of a patent holder (Sec 48)

 When a patent is for a product the patent holder has the exclusive right to make, use, sell, distribute
such article or permit his agent to do so, or issue a license.
 A patent is always territorial in nature
 In case of a process patent the patent holder has the exclusive right to use or exercise the
method/process in India
 If any person violates any of these rights then there will be infringement
Write a note on assignment of patent rights and their implications?
A patent has many of the attributes of personal property. Patent law provides for the transfer or sale of a
patent by a written agreement called an "assignment" that can transfer the entire interest in the patent. The
assignee, when the patent is assigned to him or her, becomes the owner of the patent and has the same rights
that the original patentee had.

Legal Assignment- The owner can assign the legal rights of the patent to another. This is done with a formal
legal document.
Mortgage Assignment- A mortgage of patent property passes ownership to the mortgagee or lender until the
mortgage has been paid back and a retransfer from the mortgagee (linder) back to the mortgagor (the
borrower) is made. This situation is called a "conditional assignment" however; all patent rights are
transferred until the conditional assignment is canceled by both parties or by the decree of a competent
court.
Equitable Assignment- Patents may be owned jointly by two or more persons as in the case of a patent
granted to joint inventors, or in the case of the assignment of a part interest in a patent. Any joint owner of a
patent, no matter how small the part interest, may make, use, offer for sale and sell and import the invention
for his or her own profit provided they do not infringe another’s patent rights, without regard to the other
owners, and may sell the interest or any part of it, or grant patent licensing to others, without regard to the
other joint owner, unless the joint owners have made a contract governing their relation to each other. It is
accordingly dangerous to assign a part interest without a definite agreement between the parties as to the
extent of their respective rights and their obligations to each other if the above result is to be avoided.
Acquisition by the Government- Government use of inventions-
 The government is free to use a patented invention without running the risk of being sued for
infringement
 By virtue of Sections 99-103, the Central Government or any authorized person can use an invention
for the purposes of the Central Government/ State Government/ PSU, provided adequate
compensation is paid.
 Sec 47 also deals with government use of inventions and as per this provision a patented invention
may be imported or manufactured by or on behalf of the Government for its own use, here there is no
mention of any compensation to be paid to the patent holder
Write a note on Licensing of Patents?
A patent grants its owner the right to exclude others from practicing the patented invention, and it does not
give the patent owner the right to practice the patented invention. Licenses should be understood in this
context.
 Exclusive license: Under an exclusive license, a patent owner transfers all indicia of ownership to the
licensee only retaining the title to the patent. From the point of view of the patent owner, he
surrenders all rights under the patent (including the right to sue for infringement and the right to
license) to the licensee. In essence, the licensee steps into the shoes of the patent owner and acquires
the right to sub-license the patent and sue for patent infringement. However, a field of use can limit
the exclusivity. That means that the licensee gets a promise from the patent owner that the patent will
not be licensed to anyone else in a stipulated field of use.
 Non-exclusive license: By granting a non-exclusive license, the patent owner essentially promises
not to sue the licensee for patent infringement. Some people think that by acquiring a non-exclusive
license the licensee acquires the freedom to operate in the space protected by the licensed patent, but
this may or may not be the case. It depends on whether or not the licensee’s products infringe other
patents.
Indian Patent Act contains specific provisions with regard to licensing of patents. Broad features of the law
relating to patent licensing are as follows:

 An owner of a patent can grant license. However, a co-owner of a patent cannot grant license
without the consent of the other owner.
 A License or creation of any other interest in a patent is not valid unless the same is in writing.
 The Agreement between the parties should be documented.
 The agreement should be prepared on a stamp paper according to the Indian Law on Stamp
duties. The terms and conditions of the agreement should be explicit.
 An application for registration of that document should be filed with the Controller of Patents
within six months of the date of agreement.
 The document registered will be effective from the date of its execution and not from the date
of registration.
 An application by the licensor for registration of transfer of interest is also to be filed before the
Controller of Patents.
 The licensee of a patent shall apply to the controller for registration of his title.
 The terms of license shall be kept confidential by the controller, if requested by the patentee or
licensee.
Write a note on Compulsory Licensing in the Indian scenario?
The aim or purpose of this provision is to ensure hat the patented invention is worked on a commercial scale
in India to the fullest extend possible and also to protect the interests of people developing the invention.
The provisions for compulsory licenses are made to prevent the abuse of patent as a monopoly and to make
way for commercial exploitation of the invention by an interested person. Any interested person can make
an application for grant of compulsory license for a patent after three years from the date of grant of that
patent on any of the following grounds –
 The reasonable requirements of the public with respect to the patented  invention have not
been satisfied.
 The patented invention is not available to the public at a reasonably  affordable price.
 The patented invention is not worked in the territory of India. A licensee of the patent can
also make the request  for grant of a compulsory license. Application for compulsory
license should be made in Form 17 with the prescribed fee of Rs.1500 for natural person and
Rs.6000/- for other than natural person with a statement setting out the nature of the
applicant’s interest and the facts upon which the application is based.
Sec 84 deals with compulsory licensing on private grounds. After 3 years from the grant of the patent any
person shall apply to the controller to issue him a compulsory license to work the patent
The grounds for making such application are-
 The reasonable requirement of the public with respect to the invention are not satisfied
 Patented invention is not available to the public at a reasonably affordable price
 Invention is not worked in the territory of India
Thus if the controller is satisfied that these conditions are not being met, he will grant a compulsory license
upon the terms he may think fit. Sections 86-89 deal with the procedures to be followed while granting a
compulsory license.
Compulsory Licensing on Public Grounds-

If the central govt. is satisfied that a compulsory license shall be granted for any patent because of
circumstances arising out of national emergency/ extreme urgency/ public non-commercial use, then it shall
grant such license at anytime after the grant of the patent (Sec 92). If the controller feels that because of
national emergency, extreme urgency and public non commercial uses which includes cases like AIDS,
tuberculosis, Malaria, epidemics he shall immediately grant a compulsory license without following the
procedures provided under the Act. This beneficial provision can be really helpful in the case of
emergencies
Write a short note on revocation of patents?
A Patent may be revoked by High Court on any of the grounds stated hereafter, at any time during the life of
the patent.
 On the petition by any person interested

 On the petition by the Central Government by the Appellate Board
 On a counter claim by the defendant in a suit of infringement.
In a suit for infringement under Sec. 104 the defendant’s counter-claim for revocation of a patent, the High
Court may revoke a patent without any separate petition for revocation.
The following are the grounds of opposition
 Invention claimed is the subject of prior grant

 Patentee not entitled to the patent
 Patent was wrongfully obtained by a person other than the person entitled
 Subject of a claim is not an invention
 Invention is "lacking in novelty with regard to prior knowledge or prior use
 Invention is obvious or does not involve inventive step having regard to prior knowledge or prior use
 Invention is not useful.
 Invention is not sufficiently described.
 Claim not clearly defined and not fairly based or patent was obtained by false suggestion or
representation.
 Subject of claims not a patentable invention.
 Claimed invention was secretly used before the priority date.
 Failure to disclose information regarding Foreign Application.
 Non-compliance of secrecy direction.
 Inventions is Anticipated by traditional knowledge
Write a note on patent infringement?
Patent infringement generally falls into two categories: literal infringement and infringement under the
doctrine of equivalents. The term "literal infringement" means that each and every element recited in a
claim has identical correspondence in the allegedly infringing device or process. However, even if there is
no literal infringement, a claim may be infringed under the doctrine of equivalents if some other element of
the accused device or process performs substantially the same function, in substantially the same way, to
achieve substantially the same result. This "expansion" of claim coverage permitted by the doctrine of
equivalents, however, is not unbounded. Instead, the scope of coverage which is afforded the patent owner is
limited by (i) the doctrine of "prosecution history estoppel" and (ii) the prior art.
An infringement analysis determines whether a claim in a patent literally "reads on" an accused infringer's
device or process, or covers the allegedly infringing device under the doctrine of equivalents. The steps in
the analysis are:

 Construe the scope of the "literal" language of the claims.
 Compare the claims, as properly construed, with the accused device or process, to determine whether
there is literal infringement.
 If there is no literal infringement, construe the scope of the claims under the doctrine of equivalents.
The doctrine of equivalents is an equitable doctrine, which effectively expands the scope of the claims
beyond their literal language to the true scope of the inventor's contribution to the art. However, there are
limits on the scope of equivalents to which the patent owner is entitled.
In order to determine the scope of equivalents to which the patent owner is entitled, the doctrine of
prosecution history estoppel must be considered. Prosecution history estoppel limits the scope under the
doctrine of equivalents by preventing a patent owner from recapturing during litigation that which was given
up during prosecution of the patent to avoid prior art and obtain a patent, this portion of the analysis is
performed by obtaining and studying the patent application file.
Also, the scope of equivalents to which the patent owner is entitled is bounded by the prior art. The patent
owner cannot expand the claims for purposes of finding infringement if the scope of equivalency sought
would ensnare the prior art. Therefore, if infringement under the doctrine of equivalents is found, a prior art
search should be performed to determine if the scope of equivalency ensnares the prior art.
One of the principal concerns with relying on the literal language of the claims in a patent is that, even
though you avoid literal infringement, you may still infringe the patent under the "doctrine of equivalents."
The "doctrine of equivalents" is a judicially created doctrine having a three-part "function/way/result"
substantial identity test embodying the following steps:
 Determine whether the accused device or process achieves substantially the same result as the
claimed invention. If it does not, the infringement inquiry ends.
 Determine whether the accused device or process performs substantially the same function as the
 Determine whether the accused device or process operates in substantially the same way as the
In applying this test, each element of the claim must also be compared with the accused device or process to
determine whether the accused device or process contains each element or its substantial equivalent.
A substantial equivalent of an element is one that causes the accused device or process to operate in
substantially the same way as the claimed invention, considering the nature, purpose and quality of the
element and its corresponding structure in the accused device or process.
Another way of looking at this test is to determine if the differences between the claimed invention and the
accused device are so insubstantial that a fraud on the patent would result. This occurs when, for example,
changes are made solely to avoid the literal language of the claim, and the changes reflect little or no
advantage.
In short, in order to find infringement under the doctrine of equivalents, an element-by-element comparison
and not a "claim as a whole analysis", must be made between the claimed invention and the accused device.
In determining if a "substantial equivalent" exists for a claimed element or limitation, the three-prong test
can be used. However, even if a "substantial equivalent" can be found, there still can be no infringement if
the asserted scope of equivalency would encompass the prior art or be barred by the prosecution history of
the patent.
Note that the doctrine of equivalents presents a less demanding standard than that for literal infringement.

For literal infringement there must be identity of elements; for the doctrine of equivalents to apply, there is
only a "substantial" identity requirement. In applying the test, however, two principles are clear -- first, a
claim cannot be broadened so far as to read on the prior art, and second, a patentee cannot recapture what
was given up during prosecution of the patent. In other words, the "expansion" of claim coverage permitted
by the doctrine of equivalents is not unbounded. Instead, the scope of coverage which is afforded the patent
owner is limited by (i) prosecution history estoppel and (ii) the prior art.
When is Infringement Permitted under Patent Law? What are the defenses to patent infringement?
Some of the common situations where infringement is permitted under patent law are:
 Implied license - An authorized sale of a patented article gives the buyer an implied license to use it.
 First sale- An authorized sale of a patented article also gives the buyer the right to sell that particular
patented article to a third party.
 Repair - The owner of a patented article has the right to repair it, and to replace its unpatented
components as they wear out. However, the owner does not have the right to completely reconstruct
the article in its entirety after it has been used up.
 Experimental use - A person can infringe upon a patent if he does so for the purposes of pure
research and experimental use. Any commercial purpose for using the patented article will make the
experimental use inapplicable.
 Bolar Exception- Bolar Exception Sec 107A (a)- This provided for a research exemption as an
exception to the general rules of patent infringement. This research exception enables a manufacturer
of generic drugs to use a patented invention to obtain marketing approval without the patent owner's
permission before the patent expires. Thus even in cases where there is a product patent for a drug
molecule, an Indian generic drug maker can use the patented invention in order to gain marketing
approval for their own version of that drug molecule. The generic drug maker can then market their
own version of the patented drug as soon as the patent expires
Case Briefs-
Catnic Component Case-
Catnic Components had a patent for a steel lintel, used to provide structural support over a door or window
opening in a brick wall. The lintel is hollow, being made from sheet steel pressed into a rectangular or
trapezoidal shape with a wind to anchor the device to the surrounding brickwork. Part of the specification
required a bar to "extend vertically". Hill created a virtually identical invention that had a bar that extended
at an upward slant, only 6 degrees from being completely vertical. Despite the difference the device worked
entirely in the same way as Catnic's invention.
Catnic sued for patent infringement. At trial, the judge held there was an infringement under the "pith and
marrow" doctrine. The Court of Appeal of England and Wales overturned the ruling as it held that the
"vertical" requirement was an exact and essential element of the patent. The Law Lords reversed the
decision of the Court of Appeal finding that there was an infringement and affirmed the use of purposive
construction in patent interpretation.
Opinion of the Court
Lord Diplock held that a patent must be read in a "purposive" manner that focuses on the essential features
of the patent. He famously stated:
My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing,
addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the
art"), by which he informs them what he claims to be the essential features of the new product or process for
which the letters patent grant him a monopoly. It is called "pith and marrow" of the claim. A patent
specification should be given a purposive construction rather than a purely literal one derived from applying
to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to
indulge. The question in each case is: whether persons with practical knowledge and experience of the kind
of work in which the invention was intended to be used, would understand that strict compliance with a
particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential
requirement of the invention so that any variant would fall outside the monopoly claimed, even though it
could have no material effect upon the way the invention worked.
Diamond v Chakraborthy- Chakraborthy applied for a patent for genetically engineered bacteria that could
eat all the different components of oil. There were three parts to the patent:
a. Method for producing the bacteria,

b. Composition of a slurry of bacteria and carrier liquids, and
c. The bacteria themselves.
The USPTO allowed the first two claims, but denied the third. Chakraborthy appealed. The USPTO looked
to 35 U.S.C. §101 and found that living things are not patentable subject matter.
 §101 requires that an invention be manufactured or a composition of matter (or a machine, or a

process). Living things aren't manufactured, they are 'grown', and they aren't composition of matter,
they are living organisms. So they didn't fit under any of the definitions of things that are patentable.
 The USPTO had a rule saying that things like new strains of plants (aka 'products of nature') were
not patentable.
Chakraborthy argued that the genetic engineering he did on the bacteria was a form of manufacture
therefore it met the standard. The Court of Customs and Patent Appeals reversed and awarded the patent.
The USPTO appealed. The Supreme Court affirmed.
The US Supreme Court noted that laws of nature, physical phenomena and abstract ideas cannot be
patented. That includes plants and minerals you find in the environment, as well as mathematical formulas.
However, the Court found that genetically engineered organisms fall within the definition of manufactured.
"Chakraborthy’s claim is not to a hitherto unknown natural phenomenon, but to a non-naturally occurring
manufacture or composition of matter discovery is not nature's handiwork, but his own, accordingly it is
patentable subject matter under 35 U.S.C. §101."
Basically, 'products of nature' are not patentable because the discoverer isn't really an 'inventor' they didn't
do anything themselves, they just found something that preexisted. However, that argument doesn't apply to
Chakraborthy because he did work to create the new bacteria. The Court also found that bacteria could
technically meet the definition of a composition of matter.
The Court noted that Congress had in the past excluded certain inventions from patent (like nuclear bombs),
so if Congress didn't want people patenting genetically modified organisms they were free to change the
law. The Court felt that the patent system should be read broadly to encompass new fields that Congress
didn't foresee when they wrote §101. The Plant Protection Act and the Plant Variety Protection Act (see
25 U.S.C. §§161-164) were passed by Congress specifically to create a patent regime that would cover
living things, implying that Congress felt that the general patent system wouldn't cover living things. If
bacteria (and presumably plants) are covered by §101, then doesn't §§161-164 become superfluous? The
Court considered this argument, but rejected it.
Graver Tank v. Linde Air Products Co- Linde invented a welding process and received a patent on it.
Linde sued Graver for infringement for using a very similar process. Graver argued that it wasn't the same
process at all. Sure, 99% of the process was identical, but where the Linde patent specified a welding
compound that consisted of calcium and magnesium, the Graver process used calcium and manganese.
For all you non-chemists out there, magnesium and manganese are both elements on the period table that
have similar, but not identical properties. The Trial Court found for Linde. Graver appealed.
The Trial Court found that even though the Linde patent did not claim manganese, it was close enough that
it met the standard of non-textual infringement (aka the Doctrine of Equivalents). The Appellate Court
affirmed. Graver appealed.
The US Supreme Court affirmed. The US Supreme Court found that the Graver process infringed on the
Linde patent via the Doctrine of Equivalents. The Court found that there are two tests that courts could use
to determine non-textual infringement:
Under the triple identity test something is equivalent if:

 It performs substantially the same function,
 In substantially the same way,
 To yield substantially the same result.
Under the insubstantial change test, something is equivalent if there is only an insubstantial chance between
each of the features of the accused device or process and the patent claim. The Court found that the
substitution of magnesium for manganese was obvious to anyone working in the field, and was an
insubstantial change.
In a dissent it was argued that the courts should not expand the scope of the patent beyond what the USPTO
had determined. In the dissent's opinion, if Linde failed to claimed manganese, it was their own fault for
messing up their claims. There was nothing stopping them from claiming manganese. Note that the Doctrine
of Equivalents is a common law doctrine that doesn't have a statutory basis. It was developed because courts
understood that an infringer wouldn't be dumb enough to copy an invention exactly, they would make a
minor change here or there so they didn't literally infringe on the patent.
Festo Corp v SMC
This case mainly focuses on: -
a) Doctrine of Equivalence
b) The relationship between Doctrine of Equivalence and Prosecution History Estoppel.
Now let's understand what Doctrine of Equivalence and Prosecution History Estoppel is.
The doctrine of equivalence is a legal rule that allows a court to hold a party liable for patent infringmentt
even though the infringing device or process does not fall within the scope of a patent claim, but is
equivalent to the claimed invention/substantially the same.
Prosecution history estoppel is a term to indicate that a person who has filed a patent application, and then
makes narrow amendments to the application to accommodate the patent law, may be precluded from
invoking the doctrine of equivalents to broaden the scope of their claims to cover subject matter ceded by
the amendments.
Now in the present case, Festo Corp has invented two industrial devices and wanted to patent it. The
application for both the patents was not accepted and Festo decided to amend both the applications to
comply with the patent act and after making minor changes to the device and amending the application, the
patent office accepted their applications and granted them patents for both the devices.
Later on, SMC, another company, started to make similar devices as Festo and started selling in the market.
Festo filed suit claiming that SMC's product was very similar to what they sold and owned patents for, SMC
argued that prosecution history estopped Festo from saying that SMC's device is equivalent and also that
their device was not similar to what they had patents for. District court and Federal court held in favor of
Festo but Supreme Court over turned the judgment.
According to the Supreme Court, Festo had filed for the patents and when they were rejected, they had a
right to appeal to the patent office, which they decided not to. Instead, they amended their device and
application for it to comply with the patent act, so they could get the patents on both the devices. Now when
a person/company amends their original application, they cannot later claim doctrine of equivalence to hold
someone else of patent infringement based on the subject matter that they amended to comply with the
patent act.
Roche Products, Inc. v. Bolar Pharmaceutical Col., Inc.

733 F.2d 858 (Fed. Cir. 1984)
Roche had a patent for a drug called flurazepam. About a year before the patent was to expire, a generic
drug company, Bolar, began working on a process for producing the drug. Bolar experimented a bit, and
then submitted their work to the FDA for approval.
The FDA approval process took a long time, and Bolar wanted bring an approved generic drug to market the
day after Roche's patent expired.
Note that the first sale doctrine was not applicable in this case because Bolar bought the flurazepam they
were experimenting with from an overseas manufacturer. Roche sued Bolar for infringement. Roche argued
that Bolar violated their patent by experimenting with their patented drug. Bolar argued that they had no
intention of marketing the drug before the patent expired (and couldn't even if they wanted to because they
needed FDA approval). Bolar argued such experimental use should not be considered infringement. The
Trial Court found for Bolar. Roche appealed.
The Appellate Court reversed. The Appellate Court found that Bolar's experimental use was strictly for
commercial purposes. They were not experimenting for "amusement, to satisfy idle curiosity, or for
philosophical inquiry." Therefore it didn't fall under the common law experimental use exception, which
was intended to cover amateur hobbyists.
Experimental use goes all the way back to Whittemore v. Cutter. Bolar argued that there was a public
policy reason to allow for their experimental use exception, because if it legitimately took several years to
get FDA approval, that unjustly extended Roche's patent. However, the Court found that there was nothing
in the FDA Statutes that implied that Congress meant to rewrite the patent laws. The Court suggested that if
Bolar didn't like how long FDA took to approve a generic drug, they lobby Congress to change the law.
Note that Roche also had to get FDA approval, so is it really fair to say that their patent would be unjustly
extended by having Bolar go through the same process?
Congress listened, and passed the Drug Price Competition and Patent Term Restoration Act (aka the
Hatch-Waxman Act), which addressed some of Bolar's concerns.
Bayer v NATCO
The patentee M/s. Bayer Corporation is an internationally renowned manufacturer of innovative drugs,
invented a drug called ‘Sorafenib’ useful in the treatment of advanced stage liver and kidney cancer in the
1990’s. The patentee got regulatory approval for importing and marketing the drug in India and launched it
in India in the year 2008. The applicant in this landmark case was NATCO Pharma is a reputed Indian
generic drug manufacturer. The applicant developed the process to manufacture this drug and received the
license for manufacturing and marketing in April 2011. The main issues that came before the Tribunal

before granting the compulsory license were whether under Section 84 (1) the following conditions were
met-
a) The reasonable requirements of the public with respect to the patented invention have not be
satisfied.
b) The patented invention is not available to the public at a reasonably affordable price.
c) The patented invention is not worked in the territory of India.
Before dwelling upon the intricacies of the case the author will speak about TRIPS and the Indian Patent
Act. Till 2005 the Indian Patent Act did not contain any patent protection for pharmaceuticals. The national
law was adequately amended to comply with the TRIPS by adding Section 92A which provides for
compulsory license for export and manufacture of pharmaceuticals for the countries that granted compulsory
licensing. The Indian Patent Act of 2005 provided that a compulsory licence could be granted at any time
after the expiration of three years from the date of grant of a patent if the reasonable requirements of the
public have not been satisfied;   the patented product is not available at a reasonable price; or  the patent
is not being fully commercially exploited.
NATCO’s Arguments- Bayer patented drug had not been made available to the public at an affordable price
and that reasonable requirements of the public had not been met. NATCO argued through stastics gathered
by GLOBOCAN that the drug was made available to only 2% of the affected Kidney and Liver patients who
were numbered at 8,900 and 20,000 respectively. NATCO also argued that the drug was being imported into
India in small quantities even though manufacturing facility was available to them in the country. The drug
was priced at an exorbitant price of 2,80,000 Rs for one month dosage which was beyond the reach for most
people affected and thus not in public interest whereas Nexavar was made available by NATCO at Rs 8,800
only.
Mr. P.H Kurien while awarding the license to NATCO observed, “a right cannot be absolute. Whenever
conferred upon a patentee, the right also carries accompnying obligations towards the public at large. These
rights and obligations, if religiously enjoyed and discharged, will balance out each other. A slight imbalance
may fetch highly undesirable results. It is this fine balacne of rights and obligations that is in question in this
case.”
Bayers Arguments- Bayer argued before the IPAB that the drug was made available at a reasonably
affordable price by CIPLA but the argument worked agaisnt them because they were fighting a case in
another forum alleging that CIPLA had infringed their patented drug and the idea under Section 84 was that
the patentee provide the drug through its own supply at a reasonably affordable price. In the case at hand the
drug was neither affordable not accessible to a large number of patients and thus the public interest factor
was not being met which is a requirement both under Section 84 as well as under the TRIPS so that
pharmaceutical patents once granted are not misused by multinational corporations. The fact that the drugs
were still being imported and not manufactured in India even though manufacturing facilitles were present
went against Bayer since it did not satisfy Section 84 (3) which talks about working of a pateneded
invention in a given territory. The reasonable erequirements were not met and thus the complusory license
was granted in NATCO’s favor.
Novartis v Union of India
Novartis v. Union of India & Others is a landmark decision by a two-judge bench of the Indian Supreme
Court on the issue of whether Novartis could patent Gleevec in India, and was the culmination of a seven-
year-long litigation fought by Novartis. The Supreme Court upheld the Indian patent office's rejection of the
patent application.
The Supreme Court case hinged on the interpretation of Paragraph 3d. The Supreme Court decided that the
substance that Novartis sought to patent was indeed a modification of a known drug (the raw form of
imatinib, which was publicly disclosed in the 1993 patent application and in scientific articles), that Novartis
did not present evidence of a difference in therapeutic efficacy between the final form of Gleevec and the
raw form of imatinib, and that therefore the patent application was properly rejected by the patent office and
lower courts.
Thus in effect, Indian Supreme Court upheld the view that under Indian Patent Act for grant of
pharmaceutical patents apart from proving the traditional tests of novelty, inventive step and application,
there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing
drugs.
The Court also took care to state the decision was intended to be narrow: "We have held that the subject
product, the beta crystalline form of Imatinib Mesylate, does not qualify the test of Section 3(d) of the Act
but that is not to say that Section 3(d) bars patent protection for all incremental inventions of chemical and
pharmaceutical substances.
In Re Bilski- 545 F.3d 943 (Fed. Cir. 2008)
Bilski applied for a method of hedging risks in commodities trading. (aka a business method patent).
Basically, Bilski's method was to bill coal plants a fixed amount of money each month for the coal they
needed, instead of billing them a different amount each month based on fluctuations in the spot price of coal.
The USPTO rejected the patent. Bilski appealed. The USPTO found that "the invention is not implemented
on a specific apparatus and merely manipulates an abstract idea and solves a purely mathematical problem
without any limitation to a practical application, therefore, the invention is not directed to the technological
arts."
There was no physical transformation, so it was not patentable subject matter under 35 U.S.C. §101.
The Board of Patent Appeals and Interferences affirmed. Bilski appealed. The BPAI found that Bilski's
method was not patentable subject matter because it only involved an abstract idea, and those are not
patentable. The BPAI looked to State Street Bank & Trust Co. v. Signature Financial Group, Inc. (149
F.3d 1368 (1998)) and found that in order to be patentable, an application for a method patent must include a
practical application and a "useful, concrete, and tangible result."
The Appellate Court affirmed. Bilski appealed.
The Appellate Court rejected their previous decision in State Street and came up with a new test for
patentability (the machine or apparatus test). Under this new test, in order to be patentable subject matter a
patent for a method must:
 Be tied to a particular machine or apparatus, or
 Transform a particular article into a different state or thing.
The Court found that Bilski's method was not tied to a machine, and it didn't transform an article into a
different state. So no patent was granted.
The Court found that legal obligations and contracts are not 'articles' or representative of any physical object
or substance. Bilski claimed that the method was calculated on a computer, and that's a machine. However,
the Court found that just using a computer to make the calculations is not enough. The Court found that an
invention must be considered 'as a whole' when determining if it was patentable subject matter.
Mayo Collaborative Services v. Prometheus Laboratories, Inc
On March 20, 2012, in Mayo Collaborative Services v. Prometheus Laboratories, Inc, the US Supreme
Court handed down a noteworthy decision on the subject of patent eligibility. In a unanimous opinion
(authored by Justice Breyer), the Court held that certain method claims in two US patent, relating to a
process for determining proper patient dosages of a drug used to treat autoimmune diseases were not
patentable subject matter under Section 101 of the Patent Act. The Court explained that the claimed
invention did nothing more than reflect a fundamental “law of nature” and teach medical practitioners how
to use that law of nature to obtain beneficial results. Because the claims merely “inform a relevant audience
about certain laws of nature” and because “any additional steps consist of well understood, routine,
conventional activity already engaged in by the scientific community;” the Court concluded that the claims
were not patentable and were thus invalid.
The Supreme Court’s Unanimous Opinion
In a unanimous opinion authored by Justice Breyer, the Supreme Court reversed the Federal Circuit and held
that Prometheus’ patents are not eligible for patent coverage because they are directed to non-statutory
subject matter under §101. The Court characterized the Prometheus patent claims as an effort to preempt use
of a law of nature, i.e., the relationships between certain metabolite levels and the likelihood that a particular
dosage of thiopurine would prove ineffective or cause toxic side effects. Observing that laws of nature have
long been held ineligible for patent coverage, the Court then turned to whether the claim was eligible in light
of the additional steps of the claims—administering the drug to a patient, measuring the production of
specific metabolites, and using the ranges of metabolites disclosed by the inventors to determine a proper
dosage. The Court held that those steps were insufficient because they merely instruct doctors to gather data
from which they may draw inferences in light of the correlations. The “administering” step, noted the Court,
simply informs doctors of a law of nature. The Court thus concluded that the “wherein” clauses, suggest that
doctors consider the relevant natural law when treating patients. Likewise, the Court found that the
“determining” step “tell doctors to engage in well-understood, routine, conventional activity previously
engaged in by scientists who work in the field.” The Court found no need to look at the inventions as a
whole—an ordered combination of steps—stating that such an approach would add nothing to an
examination of the separate elements.
In reaching its conclusions, the Court expressed concerns as to the potentially damaging effects on
innovation if the claims were upheld. The Court suggested, for example, that rewarding with patents those
who discover laws of nature might discourage the discovery of such laws or inhibit future innovation, a
danger that becomes acute when a patented process is no more than a general instruction to “apply the
natural law” or otherwise forecloses more future invention than the underlying discovery could reasonably
justify. The Court also posited that telling a doctor to measure metabolite levels and consider the resulting
measurements in light of the teachings of the patent might inhibit subsequent experimentation to establish
more effective treatments based on subsequent discoveries.
The Court’s Consideration and Use of Precedents
In support of its conclusion of patent ineligibility, the Supreme Court relied primarily upon its earlier
decision in Parker v. Flook (1978) and distinguished its earlier decision in Diamond v. Diehr (1981), both of
which considered the patent eligibility of a process that implemented a natural law.
In Flook, the Supreme Court held a process for controlling alarms used in refining petroleum to be patent
ineligible, because the invention differed from the prior art only through the use of a mathematical formula
for calculating alarm limits. The Court agreed with the Patent Office’s analysis that since the mathematical
equation itself was not patentable, its use in a process was not patentable. Flook reasoned that the patent
application failed to disclose how to select the variables used in the formula, the chemical processes at work,
or the means for setting off or adjusting the alarm, leaving little to support patentability other than a
mathematical formula.
Many practitioners believed that Diehr, which was decided three years later, had limited Flook to its
somewhat unusual set of facts. In Diehr, the Court held that a process for curing molded synthetic rubber (in
which temperature readings were recorded and a disclosed mathematical equation was used to calculate the
time when curing would be complete) was patent eligible. The Court rejected the argument that the claim’s
use of an equation rendered it unpatentable, reasoning that the patent holder “does not seek to pre-empt the

use of that equation ... rather they seek only to foreclose from others the use of that equation in conjunction
with the other steps of their claimed process.” Distinguishing Flook, Diehr observed that “it is now
commonplace that an application of a law of nature or mathematical formula to a known structure or process
may well be deserving of patent protection.”
In Prometheus, the Supreme Court distinguished Diehr on the absence of any information whether the
additional steps of the molding process, e.g., installing the rubber in a press and constantly monitoring the
temperature, “were in context obvious, already in use, or purely conventional.” The Court thus concluded
that these other steps must have “transformed the process into an inventive application of the formula.” The
Court found that the claim here was different because all steps involved “well-understood, routine,
conventional activity previously engaged in by scientists who work in the field.”
Dimminaco AG v. Controller of Patents and Designs, 2002
The Calcutta High Court decision in Dimminaco AG v. Controller of Patents and Designs, 2002 relating
to patentability of biotechnological process with living end product is another milestone decision in Indian
context.
 Dimminaco A.G., a Swiss company applied for patenting the process for preparation of a live
vaccine for Bursitis, an infectious poultry disease and the invention involved a live (attenuated)
vaccine to combat the disease.
 The Controller of Patents refused to allow the application on the ground that the vaccine involved
processing of certain microbial substances; this was only a natural process devoid of any
manufacturing activities and hence not patentable. This was in consonance with the prevailing
practice that grants patents only to non-living and tangible inventions, even though the Patent Act
imposed no such limitation.
 However, on appeal, the Calcutta High Court diverted from the above position. It rejected the
contention of the controller that a patent is given only for a process that results either in an article,
substance, or manufacture and a vaccine with a living organism is not an article, substance, or
manufacture. Law does not bar processes where the end product is living. No statutory bar in the Act
to accept a manner of manufacture as patentable even if the end product contains a living organism.
 The Calcutta High Court held that, the Indian statute on patents does not put any restraints on
patentability of microorganisms developed in a controlled environment in the laboratories. The
Court also held that the process for creating a vaccine leads to a vendible product even if the end
product contains live material. The court said that if the invention results in the production of some
vendible items or improves or restores formal conditions of vendible item. Therefore since the claim
process for patent leads to a vendible product, it is certainly a substance after going through the
process of manufacture.
 The court concluded that a new and useful art or process is an invention, and where the end product
is a new article, the process leading to its manufacture is an invention. This decision on the Calcutta
High Court was in line with the position in US, most of the European countries as well as Japan,
since most processes in the biotechnology field will be patentable, irrespective of whether resultant
product is living or non-living. After the Dimminaco decision, the Indian law kept pace with the
needs of flourishing biotechnology industry
Intellectual Property Law Notes

Copyrights
What is Copyright?
A copyright protects the form of expression of a creator against copying. Literary, dramatic, musical and
artistic works are included within the protection of U.S. copyright law. Copyright protection is given to the
authors of "original works of authorship," including literary, dramatic, musical, artistic, and certain other

intellectual works. This protection is available for both published and unpublished works.
The owner of copyright has the exclusive right to do and to authorize others to do the following:
 Reproduce the work in copies or sound recordings.
 Make derivative works based upon the original.
 Distribute copies or sound recordings of the original to the public by sales, rentals, leasing, lending
or licensing.
 Perform the original publicly; and that would include the use of digital audio.
 Display the original publicly.
It is illegal for anyone to violate any of the above rights provided by the copyright law to the owner of
copyright. These rights, however, are not unlimited in scope. One specified exemptions from copyright
liability is called "fair use". Another exemption is "compulsory license" under which certain limited uses of
copyrighted works are permitted upon payment of specified royalties and compliance with statutory
conditions.
What is the subject matter of a copyright?

Original works of authorship including-
 Literary Works
Literary Works in UK are defined in S 3(1) of the 1988 Act as ‘any work, other than a DW or MW, which is
written, spoken or sung, and accordingly includes:
a) A table or compilation (other than a database),

b) A computer program
c) A preparatory design material for a computer program
d) A database
Literary Works are not limited to works of literature, but include all works expressed in print or writing
(other than dramatic or musical works). Also held, protection is not limited to words, but also includes
things such as symbols and numerals. The scope of the subject matter protected as a literary work is
enhanced by the fact that a work will be protected irrespective of the quality or style of the creation in
question.
 Musical Works, including any accompanying work
United Kingdom: Under the Act, Musical Work means a work consisting of music, exclusive of any words
or actions intended to be sung, spoken or performed with the music. Just like a literary work it needs to be
fixed.
Indian Act: Music Work means a work consisting of music and includes any graphic notation of such work
but does not include any words or any action intended to be sung, spoken or performed with the music.
The difference between the Indian and the UK act is there is no compulsion for fixation in India.
Test of Originality-
United Kingdom: It is not copied from anyone and skill and labour are involved.
US: Whether there is any creativity involved
India: Middle Path
 Dramatic Work, including any accompanying music

Dramatic Work includes any piece of recitation, choreographed work. Section 2(h) includes any piece of
recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting, form of
which is fixed in writing or otherwise.
Any piece of recitation:

 Something that you generally want to communicate.
 Like a play/poem
 Something that you can recite.
 Pictorial, graphic and sculptural works
It should be an artistic work and it should be original as defined in S. 2(c) of the Act, artistic work means a
painting, a sculpture, drawing, engraving, photograph whether or not such thing possesses artistic quality.
 Motion pictures
 Sound recordings
What are the pre-requisites of a copyright?

Fixation:
One of the methods of establishing whether or not there is a work is to find a recording, or fixation of the
expression, which constitutes the work. The UK opts for an explicit requirement for fixation for the work to
enjoy copyright protection.
Originality:
Another important test is the requirement of originality. To have a copyright in dramatic, literary, artistic
work they must all be original. Copyrights are not concerned with the originality of ideas but with the
expression of thought. The expression must however originate from the author and must not be copied from
another work. Originality is not a high standard for entry into copyright protection. No requirement for
aesthetic or intellectual quality.
Effort, Skill and Labor:

The expenditure of effort, skill and labor is often seen as the essence of originality in the field of copyright.
*Incase of derivative works originality is looked at the copiers use of independent skill and judgment and
labor in the choice and selection and expression of things that have been derived.
What is not protected by copyright?

Copyright law protects not everything; the following are categories of things not protected:
 Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, (but
written or recorded descriptions, explanations, or illustrations of such things are protected
copyright);
 Titles, names, short phrases, and slogans; mere listings of ingredients or contents (but some titles and
words might be protected under trademark law if their use is associated with a particular product or
service);
 Works that are not fixed in a tangible form of expression, such as an improvised speech or
performance that is not written down or otherwise recorded;
 Works consisting entirely of information that is commonly available and contains no originality (for
example, standard calendars, standard measures and rulers, lists or tables compiled from public
documents or other common sources);
What is the term of copyright protection in India?

Term of copyright- (Sections 22 to 29)

Copyright is not a perpetual right. It exists for a specific term. After the expiry of the term, the work falls in
the public domain and open to public to use without permission of the owner. For literary, dramatic, musical
and artistic works the term is 60 years from the death of the author; for photograph, cinematograph film,
sound recording 60 years from the beginning of the calendar year next following the year in which it is
published/ released.
What is Idea-Expression dichotomy in Copyright Law?

The idea-expression dichotomy was formulated to ensure that the manifestation of an idea (i.e. an
expression) is protected rather than the idea itself. The doctrine has been widely used in the United States
and is not really alien to Indian jurisprudence. Courts have repeatedly opined that ideas per se are not
copyrightable; only the expression of an idea is copyrightable. An idea is the formulation of thought on a
particular subject whereas an expression constitutes the implementation of the said idea. While many
persons may individually arrive at the same idea, they can claim copyright only in the form of an expression
to this idea. Such expression must be a specific, particular arrangement of words, designs or other forms.
Thus, such a doctrine allows for several expressions to be available for the same idea.
Case Law: Baker v Selden
The earliest case regarding the idea-expression dichotomy is the U.S. Supreme Court decision of Baker v.
Selden, which concerned the copyright over an account book. Selden had written a book, which described an
improved system of book keeping by a particular arrangement of columns, and headings, which made the
ledger book easier to read. Baker accomplished a similar result, but using a different means of arrangement
of columns and headings. The court held that while a copyright may exist over the publishing and sale of a
book, it does not extend to the ideas and “art” illustrated in the book. The U.S. Supreme Court created a
clear description between an idea and its expression, the primary reason being that otherwise, it would result
in providing an undue scope of monopoly to the copyright holder and would amount to anti-competitive
practice.
Case Law: R.G.Anand v Deluxe Films
Facts: The appellant, R. G. Anand, an architect by profession and also a playwright, dramatist and producer
of several stage plays, wrote and produced a play called ‘Hum Hindustani’ in 1953. It ran successfully and
was re-staged in 1954, 1955 and in 1956. Aware of the interest of the plaintiff in filming the play in view of
its increasing popularity, the second defendant, Mr. Mohan Sehgal, contacted plaintiff.
In January 1955, plaintiff met the second and third defendants and had detailed discussions about the play
and its plot and the desirability of filming it. However, after this discussion, the plaintiff received no further
communication from the second defendant. In May, 1955, the defendants started to make the film ‘New
Delhi’, which, the plaintiff gathered, was based on his play, “Hum Hindustani’. The defendant, however,
assured him that it was not so. In September 1956, the movie was released and after viewing it, the plaintiff
filed a suit for infringement of his copyright in his play ‘Hum Hindustani’. His claims included damages,
account of profits and a permanent injunction against the defendants restraining them from exhibiting the
movie.
Case History: Appellant filed a suit at the District Court and the learned trial judge held, in his wisdom, that
the movie ‘New Delhi’ made by the defendants does not infringe the copyright of the plaintiff. On appeal,
the Delhi High Court upheld the judgment of the district court. An appeal against the judgment of the Delhi
High Court was filed at the Supreme Court.
Issue: Whether the production, distribution and exhibition of the film ‘New Delhi’ made by the defendants
are in infringement of the plaintiff’s copyright in the play, ‘Hum Hindustani’?
Rule of Law: Unless there is any substantial resemblance between the original work and the alleged copy,
the play and the movie here respectively, in terms of scenes, incidents and treatment, and similarity between
the two is so much that a reasonable man would consider the ‘copy’ to be more or less an imitation of the

original, an infringement of copyright cannot be said to have taken place.
Analysis: It was argued by Anand that Delux Films and the other defendants were fully aware of the theme
of his play and its intricacies. He had had detailed discussions with them about the same. There were various
similarities between the play and the movie made by Delux Films in terms of the main theme of
provincialism, characterization and situations. Anand pleaded that he was the owner of the copyright in the
play ‘Hum Hindustani’ and that his copyright in the play had been violated. The Delhi High court
recognized the copyright of the plaintiff under the Copyright Act of 1911.
Delux Films and others, on the other hand, asserted that the movie was not substantially similar to the play
in terms of the themes it dealt with and there were lot of differences in terms of characterization and
treatment.
The court held that the film produced by the defendants can not be said to be a substantial copy of the play
and the defendants can not be held to have committed an act of piracy because of differences in story,
theme, characterization and climaxes. Moreover, copyright cannot be acquired in an idea; the idea being
provincialism in this case. A copyright offers protection only to the expression of an idea and not the idea
itself. The allegation by Anand that the defendants violated his copyright by copying his idea was held
invalid.
The plaintiff could not prove that the defendant had committed a colorable imitation of his play. Where
similarities between the copyrighted work and the copy are so many and the similarities between the two
works are not coincidental, a reasonable inference of colorable imitation can be drawn. The court held that a
case for infringement may be made out only when such infringement may be identifiable by a reasonable
man; and, in this case, the court observed, that no prudent person could get an impression that the film
appears to be a copy of the original play. The Supreme Court did not find any violation of copyright and
dismissed the appeal. The fundamental principles established in the case with regard to infringement of
copyright in case of substantial similarity still hold good.
What is Merger Doctrine?

While the idea-expressions dichotomy can be understood in practical terms, one may also contemplate a
situation were such a strict distinction couldn’t be made. On certain occasions, there may just be one way to
express an idea. In such cases, as per this doctrine of merger, the idea and its expression are said to be
‘merged’ and the work cannot be copyrightable. In such instances of merger, the expression is no longer
copyrightable because granting copyright over the expression will effectively confer the owner with a
monopoly over the idea itself, which was the avowed objective of creating the idea-expression dichotomy in
the first place. For example, an algorithm to add two numbers or print a number on the screen can be
expressed in only one way. Granting copyright over this will allow such right-owner to restrict anyone from
‘reproducing’ or even translate into another form of expression, in order to perform basic operations or.
Grant of such a broad monopoly will be against public good and therefore the law does not grant copyright
in cases where the doctrine of merger applies.
Write a note on the tests for originality highlighting the importance of Feist Publication, CCH Canada
v Law Society of Upper Canada and Eastern Book Company v Modak?
The contours of ‘wrong’ in copyright law have undergone drastic revision after the decision of the Supreme
Court in Eastern Book Company v. D.B. Modak, (2008) 1 SCC 1 (“Modak”). If the significance of a
decision may be gauged from its impact on subsequent trends in the same area of law, Modak stands out as
one of the most path-breaking judicial pronouncements of the last decade. Unfortunately, there has been
minimal inquiry into how this decision has led to a step-by-step approach in granting injunctions for
copyright infringement, with great emphasis being placed on the issue of copyrightability. Copyright
protection is available for literary, musical, artistic or dramatic works, and sound recordings and
cinematograph films that are ‘original’ in character. Registration is not mandatory and all that the author
need establish is that his work fulfills the standard of ‘originality’ required for copyright protection. The
difficulty arises when attempting to define ‘originality’. Does the umbrella of originality cover all works
from the above categories that are the result of time and effort, or does it recognize only those that rise
above the ordinary through a display of some creativity on the part of the author? It is this vexing question
of copyrightability that Modak sought to address, though in a particular factual setting.
Battle of the reporters- Eastern Book Company (“EBC”) is a leading law book publisher, and its popular
case reporter titled Supreme Court Cases (“SCC”) is prepared by procuring judgments and orders of the
Supreme Court and copy-editing them. Changes to the presentation and format render the reported
judgments an easy read. The respondents were admittedly digitizing the volumes of the SCC and selling
them in Compact Discs. EBC filed for an injunction restraining the respondent from doing so. They
contended that SCC, being a product of its skill, labour, and expertise, constituted an ‘original literary work’
in which copyright subsisted under Section 13 of the Copyright Act, 1957 (“the Act”). The respondents had,
by copying the sequencing, selection, and arrangement of the cases coupled with the entire text of copy-
edited judgments as published in SCC, allegedly infringed EBC’s exclusive copyright.
The respondents countered that judgments delivered by judicial authorities would be government works, as
defined in Section 2(k) of the Act, and that publishing such judgments would not constitute infringement by
virtue of the fair use exception provided in Section 52(1)(q)(iv). The respondents submitted that SCC was a
derivative work lacking the creativity required to qualify as an ‘original’ literary work. Seemingly divergent
tests enunciated by courts in various foreign jurisdictions were placed before the Supreme Court. It would be
worth examining them in brief before analysing the reasoning and conclusion of the Supreme Court.
‘Sweat of the brow’ standard- EBC primarily relied upon certain English judgments (Ladbroke v. Hill,
[1964] 1 All E.R. 465; Walter v. Lane, [1900] AC 539, and University of London Press Limited v.
University Tutorial Press Limited, [1916] 2 Ch 601) to contend that if a man expended time and effort in
first putting on paper something that was already out in the public domain, the copyright would vest in him.
In the judgment, Justice Naolekar (speaking on behalf of himself and Justice B.N. Agarwal) understands
these judgments to be consistent with the ‘sweat of the brow’ standard of originality. Many of these
decisions did not actually support a proposition as wide as that advanced by EBC. While the labour
expended on a project was mentioned as a material factor, the emphasis was certainly on the result produced
by this labour. It is also worth noting at this juncture that none of these judgments were delivered in the
context of a work such as a decision by a judicial authority, the copying of which was statutorily excluded
from the ambit of copyright infringement.
‘Minimal creativity’ standard- The respondents sought to rely on judgments delivered by the American
courts in the specific context of what they referred to as derivative works. In one of the most important of
such decisions, the U.S. Supreme Court, in Feist Publications Inc. v. Rural Telephone Service Co., 499
U.S. 340 (1991), (“Feist”), had rejected the ‘sweat of the brow’ approach on the ground that copyright
protection could not apply to facts themselves. As per this decision and the other decisions relied on by the
respondents, factual compilations were protected as long as the author had applied his skill and judgment in
selecting the facts for inclusion and deciding the order and arrangement of the collected data so that readers
may use them effectively. These choices as to selection and arrangement, so long as they were made
independently by the compiler and entailed a minimal degree of creativity, could be treated as sufficiently
original (See the Opinion of Justice Connor in Feist). The purpose of copyright law could not be to restrain
every subsequent compiler from relying on the facts as given in this compilation, thereby compelling him to
go back to the original facts by expending labour and time.
‘Skill and judgment’ test- One of the important decisions cited, which went a long way in influencing the
Supreme Court, was the Canadian Supreme Court’s decision in CCB Canadian Limited v. Law Society of
Upper Canada, 2004 (1) SCR 339. Here, while enunciating the test for determining ‘originality’, the
Canadian Supreme Court noted the conflicting views on this issue. Citing the decisions in University of
London Press Limited v. University Tutorial Press Limited, [1916] 2 Ch. 601, the Canadian Supreme Court,
said that at one end of the spectrum was the “sweat of the brow” or industriousness standard. A practical
consequence of adopting this standard was that the defendant would have to independently verify every

original source used in the plaintiff’s work. At the other end were those decisions, which insisted that a work
must be creative in order to be original. Rejecting the former as being too low a standard and the latter as
being too high, the Canadian Supreme Court took the view that to claim copyright in a compilation, the
author must produce a work with the exercise of his skill and judgment that may not be creative in the sense
of being novel or non-obvious, but at the same time, was not the product of mere labour and capital. The
skill and judgment required to produce the work could not be so trivial as to render it a purely mechanical
exercise.
The Supreme Court adopts the Canadian approach- The Supreme Court of India decided to apply the
test enunciated by the Canadian Supreme Court to resolve this dispute. In doing so, the Court was deeply
influenced by the fact that SCC was a derivative work, and that the copying of a judgment delivered by any
judicial authority would not constitute copyright infringement under Section 52(1)(q)(iv) of the Act. Due to
this reason, the Court took the view that copy-edited judgments would not be entitled to copyright
protection, merely by virtue of skill, labour, and capital being expended by EBC, and that the changes made
should be sufficient to impart to the copy-edited judgment some quality or character that the original
judgment did not possess and differentiated the original judgment from the printed one. Rejecting the ‘sweat
of the brow’ doctrine, the Supreme Court held that this would not apply to the judgments of courts because
there was no copyright in the judgments of the court, unless so made by the court itself. However, the
Supreme Court specifically clarified that this decision would be confined to judgments by any judicial
authority.
Applying the test of ‘skill and judgment’ to the case at hand, the Supreme Court concluded that changes
effected by EBC, such as adding cross-citations to the cited cases, the exact paragraph, and page-number of
the cited portion in these cases, marginal headings, names of the judges on whose behalf any opinion is
written, making corrections in the extracted portion as well as the main text, supplying ellipsis and words
that may have been missed out, re-numbering the clauses of the statutory provisions relied on, compressing
the information relating to the case-history, and changes of a similar nature, where capital and labour may
have been expended but were lacking in even minimal creativity, were not entitled to copyright protection.
On the other hand, the Court felt that EBC’s inputs in:
 Segregating the existing paragraphs in the original text by breaking them into separate paragraphs;
 Adding internal paragraph numbering within a judgment, after providing uniform paragraph
numbering to the multiple judgments; and
 Indicating in the judgment the judges who have dissented or concurred by introducing phrases such
as ‘concurring’, ‘partly concurring’, ‘partly dissenting’, ‘dissenting’, ‘supplementing’, and ‘majority
expressing no opinion’, were entitled to copyright protection. The Court opined that these inputs
were the product of skill and judgment, and involved knowledge of law as well as discernment.
As already mentioned above, one of the primary reasons behind the adoption of the Canadian standard was
the statutory fair use exemption as regards reported judicial pronouncements. However, subsequent judicial
pronouncements indicate intent to extend Modak beyond its specific factual setting to different kinds of
compilations, and possibly other kinds of works as well.
The Delhi High Court observed that the decision in Modak raises the standard for originality under
copyright law to a degree higher than the ‘sweat of the brow’ standard. In the words of the High Court:
“Originally, in University London Press v. University Tutorial Press, [1916] 2 Ch. 601 the Court formulated
the ‘sweat of the brow’ doctrine, to scrutinize whether a work was original or not. The Court emphasized
that the aesthetic content of the work, or its artistic appeal was irrelevant, so long as the author or creator
was able to show that some effort had been put in to create it. This test was discarded and a more exacting
creativity standard (‘the modicum of creativity’) was insisted upon by the US Supreme Court, in Feist
Publication Inc. v. Rural Telephone Service, 199 US 340 (1991). The Supreme Court recognized this shift
and in Eastern Book Company v. D.B. Modak (supra), following the approach laid down by the Canadian
Supreme Court in CCH Canadian Limited v. Law Society of Upper Canada (2004) SCC 13, rejected the
‘sweat of the brow doctrine’, (which conferred copyright on works merely because time, energy, skill and
labour was expended), and held that the work must be original ‘in the sense that by virtue of selection, co-
ordination or arrangement of pre-existing data contained in the work, a work somewhat different in
character is produced by the author’. Thus, in India, the test for creativity establishes a higher threshold
than the ‘sweat of the brow’ doctrine, but not as high as ‘modicum of creativity’. It acknowledges that not
every effort or industry, or expending of skill, results in copyrightable work, but only those, which create
works that are somewhat different in character, involve some intellectual effort, and involve a certain degree
of creativity.”
Write a note on ownership of copyrights and work for hire doctrine? Explain CCNV v Reid and
Amarnath Sehgal v Union of India?
Copyrights are generally owned by the people who create the works of expression, with some important
exceptions:
 If an employee in the course of his or her employment creates a work, the employer owns the
copyright.
 If the work is created by an independent contractor and the independent contractor signs a written
agreement stating that the work shall be “made for hire,” the commissioning person or organization
owns the copyright only if the work is (1) a part of a larger literary work, such as an article in a
magazine or a poem or story in an anthology; (2) part of a motion picture or other audiovisual work,
such as a screenplay; (3) a translation; (4) a supplementary work such as an afterword, an
introduction, chart, editorial note, bibliography, appendix or index; (5) a compilation; (6) an
instructional text; (7) a test or answer material for a test; or (8) an atlas. Works that don’t fall within
one of these eight categories constitute works made for hire only if created by an employee within
the scope of his or her employment.
 If the creator has sold the entire copyright, the purchasing business or person becomes the copyright
owner.
Who owns the copyright in a joint work? - When two or more authors prepare a work with the intent to
combine their contributions into inseparable or interdependent parts, the work is considered joint work and
the authors are considered joint copyright owners. The most common example of a joint work is when a
book or article has two or more authors. However, if primarily one author writes a book, but another author
contributes a specific chapter to the book and is given credit for that chapter, then this probably wouldn’t be
a joint work because the contributions aren’t inseparable or interdependent.
Can a copyright owner transfer some or all of his specific rights? - Yes. When a copyright owner wishes to
commercially exploit the work covered by the copyright, the owner typically transfers one or more of these
rights to the person or entity who will be responsible for getting the work to market, such as a book or
software publisher. It is also common for the copyright owner to place some limitations on the exclusive
rights being transferred. For example, the owner may limit the transfer to a specific period of time, allow the
right to be exercised only in a specific part of the country or world, or require that the right be exercised
only through certain media, such as hardcover books, audiotapes, magazines or computers.
If a copyright owner transfers all of his rights unconditionally, it is generally termed an “assignment.” When
only some of the rights associated with the copyright are transferred, it is known as a “license.” An
exclusive license exists when the transferred rights can be exercised only by the owner of the license (the
licensee), and no one else — including the person who granted the license (the licensor). If the license
allows others (including the licensor) to exercise the same rights being transferred in the license, the license
is said to be non-exclusive.
Case: CCNV v Reid

CCNV wanted a sculpture to illustrate the plight of the homeless. They contracted with a sculptor named
Reid to make the sculpture. CCNV paid for the materials, but Reid donated his time. CCNV provided input
on what the sculpture was to entail, but Reid retained significant creative control. Eventually the sculpture
was finished and CCNV paid $15k. However, when they announced plans to take the sculpture on a multi-
city tour, Reid refused to give up possession of it, and filed a certificate of copyright registration.
Reid argued that he was a co-author of the sculpture. CCNV argued that they paid for the sculpture and
were the ones who directed its creation. Therefore Reid's contribution did not make him a co-author since it
was just work for hire.
The Trial Court found for Reid. CCNV appealed. The Trial Court found that the sculpture was a work for
hire under 17 U.S.C. §101(1) because CCNV was the motivating force behind the sculpture's production.
The Appellate Court reversed. CCNV appealed. The Appellate Court found that Reid was not an employee
of CCNV, but instead was an independent contractor. Therefore it did not meet the definition of a work for
hire under §101(1) (works prepared by an employee). Note that Reid could not have been covered by
§101(2) (works prepared by an independent contractor), because under that clause the parties must
"expressly agree in a written instrument signed by them that the work shall be considered a work made for
hire."
The US Supreme Court affirmed. The US Supreme Court looked to bunch of different theories courts had
used to determine if something was a work for hire under §101(1) and decided that most of them were not
useful. The Court decided that they would fall back on the common-law doctrine of 'agency' to determine if
Reid was acting as an agent of CCNV when he made the sculpture. The Court found that there were a
number of factors in determining whether a hired party is an employee under the general common-law of
agency, including: Right to control work being performed, skill required, source of instrumentalities and
tools, location of work, duration of relationship, right to assign additional projects, hired party's discretion,
method of payment, role in hiring and paying assistants, regular course of employer's business, payment of
employee's benefits and taxes.
The Court weighed all the factors, and decided that Reid was an independent contractor, not an employee.
Therefore the sculpture was not a work for hire under §101. The Court found that the sculpture might be a
joint work since CCNV did contribute to its design.
Case: Amarnath Sehgal v Union of India
Most of the debate on the rights of the author revolves around the economic rights and consequently, the
moral rights have been overshadowed. Under the Indian Copyright law, the author has a life long, exclusive
right to (a) claim the authorship of the work (b) to restrain or claim damages in respect of any distortion,
mutilation, modification or other act in relation to the work which is done before the expiration of the term
of copyright, is such distortion etc. would be prejudicial to his honor or reputation. Even after parting away
with the economic rights, the author does not lose the moral rights over the work.
Factual Background- Mr. Amar Nath Sehgal is the world-renowned sculpturist and has been conferred
with several awards for his beautiful creations and contribution to the Indian heritage. In the year 1957, the
Government of India commissioned Mr. Sehgal for the creating bronze mural for the most prominent
International Convention Hall in the Capital of the Country. The Bronze sculpture of about 140ft. span and
40ft. sweep took five years to complete and was placed on the wall of the Lobby in the Convention hall.
This embellishment on a national architecture became a part of the Indian art heritage.
The background of the present dispute was set in the year 1979 when government pulled down the sculpture
from the walls of ‘Vigyan Bhawan’ and dumped it in the storeroom. When Mr. Sehgal came to know of this
ill treatment, he made representations to the government authorities for restoration of the mural.
Unfortunately, all his pleas fell on deaf ears. Aggrieved by the apathy of the government officials, Mr.
Seghal filed a petition in the Delhi High Court for recognition and enforcement of his rights on the mural.
Contentions of the parties- Mr. Seghal contended that the mural created by him was a part of the national
heritage and hence was valuable not only for him but for the entire country. The mutilation of the work was
prejudicial to his reputation as it reduced the volume of the corpus of his work. He further argued that where
the right to integrity is violated, the remedy is not limited to injunction or damages. The author has the right
to preserve the mutilated work as well. Mr. Sehgal contended that his suit was not barred by limitation as his
moral rights subsist throughout his life. All through the interposing period of 13 years, he was seeking
administrative relief.
Mr. Sehgal prayed for the relief of permanent injunction for restraining Union of India (hereinafter referred
to as UOI) from further distorting or mutilating the mural and a sum of Rs. 50 lac as compensation for
humiliation, hurt, injury and loss of reputation caused to him. Mr. Sehgal also prayed for a decree of
delivery-up, directing UOI to return the mural to him and also bear the cost of such restoration.
UOI, on the other hand, argued that it was the owner of the mural and had the right to consign the work to
the storeroom. The mural was taken from the Mr. Sehgal for a good consideration and therefore, he had no
right over the mural. Also the legal action was barred by limitation as the suit was filed after a period of 13
years from the date when cause of action arose.
Issues for determination- The main issues for determination before the Court were (a) whether the suit was
barred by limitation (b) whether Mr. Sehgal had moral right over the mural even when the copyright vested
with the UOI (c) Has UOI infringed moral rights of Mr. Sehgal (d) whether Mr. Sehgal has suffered any
damage (e) Relief.
Decision- On the question as to whether the suit was barred by limitation, the Court ruled that the
correspondence between UOI and Mr. Sehgal contain the acknowledgement by the former of the right of the
latter over the mural and therefore the suit is not barred by limitation. The Court examined at length the
national and the international framework for protection of the moral rights of the Author. The Court was of
the opinion that it is a narrow view the derogatory treatment of the creative work would mean deletion to,
distortion, mutilation or modification to, or the use of the work in setting which is entirely inappropriate.
The broad view is that mutilation is nothing but the destruction of the work as to render it imperfect and is
therefore prejudicial to the reputation of the author.
Recognizing the moral rights of the Mr. Sehgal over the Mural, Pradeep Nandrajog J. ruled:
"Mural whatever be its form today is too precious to be reduced to scrap and languish in the warehouse of
the Government of India. It is only Mr. Sehgal who has the right to recreate his work and therefore has the
right to receive the broken down mural. He also has the right to be compensated for the loss of reputation,
honor and mental injury due to the offending acts of UOI".
The Court passed mandatory injunction against the UOI directing it to return the mural to Mr. Sehgal within
two weeks from the date of judgment. Court passed a declaration transferring all the rights over the mural
from UOI to Mr. Sehgal and an absolute right to recreate the mural and sell the same. The Court also
granted damages to the tune of Rs.5 lacs and cost of suit to Mr. Sehgal against UOI.
Comments- The Court has given a wide construction to the moral rights of the author under the copyright
law. The Statute only provides for the grant of injunction and damages in cases where any distortion,
mutilation, modification or other act in relation to the work if such distortion etc would be prejudicial to his
honor or reputation. Court has read into the forgoing provision the ‘right of the author to receive the
copyrighted work for the purposes of restoration and sell it’. The ratio of the case is establishes the
proposition that ‘where the owner (not being the author) of the copyright work, treats the work in a manner
that is prejudicial to the reputation and honor of the author, the Court may transfer all rights over the work
to the author’.
Write a note on the exceptions to copyrights and the doctrine of fair use?
Some of the exceptions to copyright are private use, transformative use, criticism, news reporting or
teaching and research.
The fair use doctrine is an exception to copyright laws.
To successfully avail of the fair use defense in India, a parodist has to satisfy two conditions: (i) he must not
intend to compete with the copyright holder and (ii) he must not make improper use of the original. The first
condition, which is essentially the market substitution test, is easily proved, as most parodies do not seek to
compete with the original but merely to ridicule or criticize the original in a manner that exposes its flaws.
As far as the second condition is concerned, it is doubtful as to what is meant by improper use and whether a
parody is an instance of such use.
Exceptions form an important part of many national copyright regimes. Probably the best-known copyright
exception is the U.S. ‘Fair Use’ Doctrine. This provision was enacted as section 107 in the 1976 enactment
of Title 17, the U.S. Copyright Act but it has its origins in over a century of case law. It provides that a ‘fair
use’ is not an infringement of copyright. ‘Fairness’ is determined with reference to the following four
principles:
 The purpose and character of the use, including whether such use is of a commercial nature or is for
non-profit educational purposes;
 The nature of the copyrighted work;
 The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
 The effect of the use upon the potential market for or value of the copyrighted work.
Purposes such as ‘criticism, comment, news reporting, teaching (including multiple copies for classroom
use), scholarship, or research’ are suggested as possible ‘fair uses’ but these are not exclusive; other
purposes also fit within the fair use criteria. As such this allows for a potentially very wide (and ever
expanding) set of free uses covered by these exceptions.
First Factor: Purpose and Character- The first factor addresses the character and purpose of the use of the
work. The uses under Tipping Factor when combined with any of the uses in the Favors Fair Use column
strengthen the balance in favor of fair use.
Favors Fair Use Tipping Factor Favors Permission

Nonprofit Teaching Commercial
Educational Research Entertainment
Personal Scholarship For Profit
Criticism
Commentary
News Reporting
Second Factor: Nature of Work- The second factor looks at the creativity of the work. Creative works
have more protection than factual ones, so the more creative a work is the less likely the use will be
considered fair under this factor. Fair use tends to favor published works more so than unpublished
works. The rationale for this is that authors should be able to decide when to publish their work.
Favors Fair Use Favors Permission

Fact Fiction
Published Unpublished
Third Factor: Amount- The third factor looks at the amount of the work that is being used. A small
amount generally weighs in favor of fair use where a large amount would weigh more in favor of requesting
permission. However, there are times when the use of even a small amount of a work can be too much if it
can be considered the heart of the work. There are many published guidelines by various groups with
specific amounts recommended, but they can be misleading. They can provide a false sense of security.
Purdue University neither recognizes nor endorses any such guidelines. There is no magic number or
formula, which determines an acceptable amount.

Small Amount Large Amount
Amount used is not significant to work Amount used is heart
of work
Fourth Factor: Market Effect- The fourth factor takes into account how the intended use would impact the
market for the work. Generally, the more restricted the use, the less impact on the market. The use of some
works such as standardized tests or workbooks are very rarely found to be fair use because the works are
considered consumables, which are meant to be purchased.

No major impact Major impact
Licensing/Permissions
Licensing/Permissions unavailable
available
Work is made available to the
Limited/Restricted access to work
world
User/Institution owns legal copy Use is repeated or long term
Case: Campbell v Acuff Rose Music
The most comprehensive judicial analysis of the four fair use factors vis-à-vis parodies is found in Campbell
v. Acuff-Rose Music, Inc. (referred to as Campbell).
The facts of the case are as follows: In 1964, Roy Orbison and William Dees wrote and recorded “Oh, Pretty
Woman”. The rights to the song were assigned to Acuff-Rose Music Inc., which subsequently registered the
song for copyright protection. In 1989, Luther Campbell, lead vocalist and songwriter for an obscure band
called 2 Live Crew, wrote a version of the famous song, substituting its lyrics with ones, which were
obscene. Subsequently, Campbell’s music production company, Luke Records, released an album, which
included the parody. The credits on the album recognized Orbison and Dees as the writers and Acuff-Rose
as publisher of the original song. The general manager of Campbell’s music production company, Luke
Records, had offered to give due credit for ownership and authorship of the original song to Acuff-Rose
Music Inc., and also to pay a fee for its use, but Acuff-Rose declined to grant permission. Undeterred, 2 Live
Crew continued to sell the album. Acuff-Rose contended that the lyrics were either inconsistent with good
taste or would disparage the future value of its copyright.
The Court held that every parody must pass the test of fair use, and applied the factors set out in Section 107
of the Copyright Act to the parody in question.
Of the four fair use factors, it was the first one that the Campbell Court singled out for the most
comprehensive analysis. The Court defined parody as “the use of some elements of a prior author’s
composition to create a new one that, at least in part, comments on that author’s work.” According to the
Court, the relevant question is, to what extent the new work is transformative, i.e., and to what extent the
new work alters the original with new expression, meaning, or message. The more transformative the new
work, the less will be the significance of other factors that may weigh against a finding of fair use. Justice
Souter found that 2 Live Crew’s version rose to the level of parody by virtue of its comments on the naïveté
of the original; since it “juxtaposes the romantic musings of a man...with degrading taunts, a bawdy demand
for sex, and a sigh of relief from paternal responsibility.”
Downplaying the importance of the commercial use factor which the Sixth Circuit’s decision had stressed
upon, Justice Souter disapproved of the Sixth Circuit’s “elevation of one sentence from Sony to a per se
rule”. The Court was of the opinion that the correct interpretation of Sony is that a commercial use as
opposed to a non-profit use is merely “a separate factor that tends to weigh against a finding of fair
use...[and] the force of that tendency will vary with the context.”
The Court did not devote much attention to the second fair use factor, which called for an inquiry into the
nature of the copyrighted work, and held that this factor in the parody context was not much help “since
parodies almost invariably copy publicly known, expressive works.”
Regarding the third factor, which mandated an inquiry into the quantity of the work copied, the Supreme
Court agreed with the Sixth Circuit’s holding that 2 Live Crew had taken the heart of the original, but held
that this was permissible, since “the heart is also what most readily conjures up the song for parody.”
As far as the market substitution test was concerned, the Court held that a parody, “like a scathing theater
review”, does not fall foul of the fourth factor merely because it may have a detrimental effect on the market
of the original. Instead, the relevant enquiry is whether the parody can act as a substitute for the original and
therefore diminish demand for the original. The Court noted that such substitution was unlikely, since the
original and the parody usually serve different markets. Analyzing the facts of the case, the Court found that
2 Live Crew’s version did not harm the market for the original.
The Supreme Court majority thus found that the Sixth Circuit had erred on its analysis of three of the four
factors, and dismissed the other as being of little assistance to the fair use analysis of parody. Based on this
conclusion, the Supreme Court reversed the Sixth Circuit’s grant of summary judgment and remanded for
further proceedings consistent with the opinion. The Supreme Court’s unanimous opinion in Campbell has
been hailed as a “significant victory for would-be parodists”, having the potential to significantly advance
freedom of expression within the framework of constitutional and statutory copyright.
Case: Hustler Magazine v Moral Majority
In Hustler Magazine v. Jerry Falwell, the plaintiff was a well-known minister and political figure who had
been parodied in the defendant’s magazine as having engaged in sexual intercourse with his mother in the
outhouse. The plaintiff sued for libel and infliction of emotional distress. The lower courts dismissed the
libel claim but upheld the claim for infliction of emotional distress. The defendant appealed to the U.S.
Supreme Court.
The Supreme Court held that in order to protect the free flow of ideas and encourage public debate, the First
and Fourteenth Amendments restricted public figures from recovering damages when a caricature, such as a
parody, of them was published without additionally showing that the publication contains a false statement
of fact that might be believed by a reasonable individual. This would be the case even if the publication
were made with malice and hatred towards the targeted individual. The Court went on to state that public
figures had in essence made a social contract to be subjected to a greater level of scrutiny than the average
man being parodied or satired was merely one of the consequences of that contract. The Court noted that the
political cartoon and satire were ancient arts and went on to state:
“The fact that society may find speech offensive is not a sufficient reason for suppressing it. Indeed, if it is
the speaker’s opinion that gives offense, that consequence is a reason for according it constitutional
protection.”
Although, in this case, the defendant did not contend that his right of publicity was violated by the parody,
the Court has clearly laid down that public figures cannot recover damages when they are the subject matter
of a parody. The fact that this precedent is applicable even in when an action is brought on the basis of a
right of publicity is clear from the subsequent parody cases dealing with the right of publicity.
Case: Kelly v Arriba Soft
A federal appellate court has considered whether a website violated a photographer's copyright in its
creation of "thumbnail shots" of the photographer's works and also by framing the full-sized image of the
works.
Arriba Soft Corporation operated a website which contained an Internet search engine ("Website"). The
Website returned search results with small "thumbnail shots" of images found on the Internet. This
information was gathered by the Website's webcrawler program which would find images on the Internet,
download the images onto the Website's servers, reduce the images to a thumbnail size, and then discard the
full-size images from the Website's server.
Leslie Kelly ("Photographer") is a professional photographer who has copyrighted his photographs of
western America. Some of the photographs appear on his website, others appear on websites which had
received a license to use the images from the Photographer. In January 1999, the Website copied some of
the Photographer's works into its database without the Photographer's permission. When the Photographer
objected to the Website's use of his works, the Website removed the pictures obtained from the
Photographer's website and placed the Photographer's website on a list of sites on which its program would
not "crawl." When the Photographer discovered that some of his works were still appearing on the Website
after being downloaded from the licensed third-party sites, the Photographer filed a lawsuit against the
Website for copyright infringement. The trial court ruled in favor of the Website, and the Photographer
appealed.
The United States Court of Appeals, Ninth Circuit, partially reversed and partially affirmed the rulings of
the trial court. The court stated there were two issues before it: first, whether the creation of thumbnail shots
of copyrighted images constituted copyright infringement; and second, whether the framing of full-size
copyrighted images imported from other websites constituted copyright infringement.
To bring a lawsuit for copyright infringement, individuals must first show that they hold a copyright on
works, which were copied by another party. The Photographer met this requirement, and so the court had to
next determine if the "fair use" exception found in the federal Copyright Act permitted the Website's
copying of the Photographer's works. The Copyright Act sets forth four factors to evaluate in determining
whether a copying constitutes "fair use:" first, the purpose and character of the use, including whether the
use is for commercial purposes or is for nonprofit educational purposes; second, the nature of the
copyrighted work; third, the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and finally, the effect of the use upon the potential market for, or value of, the copyrighted
work.
The court first looked to see whether the creation of the thumbnail shots of the Photographer's copyrighted
works constituted a "fair use." Applying the first factor, the court found that the use of the images by the
Website had very limited commercial purpose, since the Website was not trying to profit from the use of the
images. The court also found that the creation of thumbnail shots was transformative, because it was using
the smaller images for purposes of displaying search results. This reduction made it unlikely that anyone
would use the thumbnail images for any other purpose, since enlargement of the thumbnail images would
cause the image to become distorted. Therefore, anyone who was interested in the full-size image would still
need to download the original. Thus, the court found that the first factor favored the Website.
The court found that the second factor, which considers the nature of the work, favored the Photographer,
since photographs are the type of creative works that the Copyright Act is designed to protect. Looking the
third factor (amount of copyrighted work used), the court found that the Website's copying of the work did
not favor either party because, even though the Website did copy the entire image, it used the image in a
manner, which still required the user to seek out the original image. Finally, the transforming of the images
into thumbnail shots did not harm the market for the Photographer's works and so favored the Website. The
court found that two of the four factors favored the Website, one favored the Photographers, and one factor
was neutral. Therefore, the court ruled that the Website's the creation of thumbnail shots constituted a fair
use of the Photographer's works and affirmed the trial court's ruling in favor of the Website on the issue of
the thumbnail shots.
Write a note on copyright infringement? Also explain the different types of remedies available?
The remedies for copyright infringement are:
a) Civil
b) Criminal, and
c) Administrative
It is only the first two remedies, namely civil and criminal, which are of any real practical importance.
Civil Remedies:
The most importance civil remedy is the grant of interlocutory injunction since most actions start with an
application for some interlocutory relief and in most cases the matter never goes beyond the interlocutory
stage. The other civil remedies include damages - actual and conversion; rendition of accounts of profits and
delivery up.
1) Interlocutory Injunctions
The principles on which interlocutory injunctions should be granted were discussed in detail in the English
case of American Cyanamid v Ethicon Ltd. [1975] AC 368 (HL (E)]. After this case, it was believed that the
classic requirements for the grant of interim injunction, namely,
a) Prima facie case

b) Balance of Convenience; and
c) Irreparable injury
had been modified and there was no need to establish a strong or even a prima facie case but it was
sufficient to show that there was a triable issue. Lord Diplock's often-quoted observations are as follows:
"Assessing the relative strength of the parties' cases, however, should be done only where it is apparent upon
the facts disclosed by evidence as to which there is no credible dispute that the strength of one party's cases
is disproportionate to that of the other party."
In Series 5 Software Ltd. v Philip Clarke & Others [1996] FSR 273, Laddie J re-examined the principles and
took a fresh look at what Cyanamid had actually decided. The learned judge held:
a) The grant of an interlocutory injunction was a matter of discretion and depended on all the facts of the
case
b) There were no fixed rules
c) The court should rarely attempt to resolve complex issues of disputed fact or law
d) Major factors the court should bear in mind were (i) the extent to which damages were likely to be an
adequate remedy and the ability of the other party to pay (ii) the balance of convenience (iii) the
maintenance of the status quo, and (iv) any clear view the court may reach as to the relative strength of the
parties' case.
Thus, this case places emphasis on the merits and the effect may well be to obtain a non-binding view by a
judge on the merits. This may lengthen the hearing of application for interlocutory injunction as parties may
lead evidence on the merits but it may have the overall effect of putting an early end to the main action.
2) Pecuniary Remedies
Under the Copyright laws of some countries like the United Kingdom it is essential for the plaintiff to elect
between damages and an account of profits although in the two recent cases, namely Baldock v Addison
[1994] FSR 665 and Island Records v Tring International [1995] FSR 560, the court held that there could be
a split trial and a procedure could be adopted by which the trial could be divided so that once liability has

been established, thereafter the plaintiff would be able to seek discovery in order for him to make an
informed decision on which of the two of the remedies to elect, namely damages or account of profits. In
Cala Homes (South) Ltd. v Alfred McAlpine Homes East Ltd [I995] FSR 818, Laddie J held that additional
statutory damages could be granted even where the plaintiff elected for account of profits.
Under Indian law, however, there is a departure made and the plaintiff, under sections 55 and 58, can seek
recovery of all three remedies, namely (a) account of profits (b) compensatory damages and (c) conversion
damages which are assessed on the basis of value of the article converted.
3) Anton Pillar Orders:
The Anton Pillar Order derives its name from a Court of Appeal decision in Anton Pillar AG v/s
Manufacturing Processes [1976] Ch55. An Anton Pillar Order has the following elements:
a) An injunction restraining the defendant from dealing in the infringing goods or destroying, them;
b) An order that the plaintiffs solicitors be permitted to enter the premises of the defendants, search the same
and take goods in their safe custody; and
c) An order that defendant be directed to disclose the names and addresses of suppliers and customers and
also to file an affidavit will a specified time giving this information.
4) Mareva Injunction:
Mareva Injunction is an order, which temporarily freezes assets of a defendant thus preventing the defendant
from frustrating the judgement by disposal of such assets.
5) Norwich Pharmaceutical Orders:
These are orders by which information can be discovered from third parties.
Criminal Remedies
Criminal remedies for copyright violation include:
i) Punishment through imprisonment, which, under Indian law, may not be less than six months but which
may extend to three years;
ii) Fines, which, under Indian law, shall not be less than Rs.50.000. and which may extend to Rs.200000.
ii) Search and seizure of the infringing goods including plates which are defined as including blocks,
moulds, transfers, negatives, duplicating equipment or any other device used or intended to be used for
printing or reproducing copies of the work.
Case: Walter v Lane
A reporter attended a speech by Lord Rosebery. His report of the speech was republished in the Times. He
claimed a copyright in the work he produced. The House considered what was required to establish
originality for copyright purposes. Held: Copyright subsisted in reports prepared by shorthand writers’ of
public speeches as “original literary” works. The Earl of Rosebery in public made the speeches when
reporters were present. The reporters made notes in shorthand, transcribed them, corrected, revised and
punctuated them and published them in newspapers as verbatim reports of the speeches. A speech and a
report of a speech are two different things. Lord Rosebery was the author of his speeches. The shorthand
writers were the authors of their reports of his speeches. They spent effort, skill and time in writing up their
reports of speeches that they themselves had not written. Even though the reporters had intended only to
reproduce the speeches as accurately as they could, the works they prepared remained original
works. Lord Halsbury LC said: The law does not permit: “one man to make profit and appropriate to
himself the labour skill and capital of another.”
Case: University London Press v University Tutorial Press
On February 24, 1915, the Senate of the University of London passed a resolution that “it be made a
condition of the appointment of every examiner that any copyright possessed by him in examination papers
prepared by him for the University shall be vested in the University, provided that the foregoing shall not
apply to copyright in drawings; and that it be a further condition of such appointment that the University
will raise no objection to the use by any such examiner, without payment, of the material of any paper set by
him for any purpose except the republication of such paper as a whole, and that the University shall, without
payment, have the right of reproduction of any drawing included in such paper.”
They were employed, for the particular examinations for which they were appointed, to prepare the
examination papers on the subjects in respect of which they were respectively appointed. The papers were
prepared in the examiners’ own time. They were free, subject to a syllabus and having regard to the
knowledge required from students, to choose their own questions. They perused the answers of students and
awarded marks. They were paid a lump sum as salary. They were not bound to give their services
exclusively to the London University. The examiners thus appointed prepared examination papers for
September 1915, and January, 1916. On July 26, 1915, the University entered into an agreement with the
University of London Press, Limited, the plaintiff company, by which it was agreed that as and when after
August 31, 1915, the University should from time to time prepare and issue or cause to be prepared and
issued any examination papers (other than papers not material to this report) the University agreed (subject
to the provisions and conditions thereinafter contained) from time to time to assign and make over to the
Press Company all such copyright and rights of publication (if any) as the University might have in such
respective papers (other than those as aforesaid) for the period of six years from the date of publication
thereof respectively, with a proviso for a further period in absence of notice. By an indenture of January 13,
1916, made between the University and the University of London Press, Limited, in pursuance of the
agreement of July 26, 1915, and for the consideration mentioned; the University purported to assign to the
Press Company all the copyright and rights of publication of the University in the papers of which
particulars were contained in a schedule for the period and subject to the terms and conditions contained in
the agreement.
The first question that is raised is. Are these examination papers subject of copyright? Section 1, subs. (1) of
the Copyright Act of 1911 provides for copyright in “every original literary dramatic musical and artistic
work,” subject to certain conditions which for this purpose are immaterial, and the question is, therefore,
whether these examination papers are, within the meaning of this Act, original literary works. The word
“literary” seems to be used in a sense somewhat similar to the use of the word “literature” in political or
electioneering literature and refers to written or printed matter. Papers set by examiners are, in my opinion,
“literary work” within the meaning of the present Act.
Assuming that they are “literary work,” the question then is whether they are original. The word “original”
does not in this connection mean that the work must be the expression of original or inventive thought.
Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and, in
the case of “literary work,” with the expression of thought in print or writing. The originality, which is
required relates to the expression of the thought. But the Act does not require that the expression must be in
an original or novel form, but that the work must not be copied from another work—that it should originate
from the author.
Case: Ladbrooke Football v William Hill
My Lords, the respondents are well-known bookmakers. Each week during the football season they have for
many years sent out to their clients—referred to as punters—a fixed odds football betting coupon. The
appellants are also old established bookmakers. They decided to enter this field of betting in 1959 and began
to send out coupons, which closely resembled the respondents’ coupons. The respondents claim copyright in
their coupons and allege infringement by the appellants. The appellants maintain that only certain parts of
the respondents’ coupons are copyright and they deny infringement.
A coupon is a sheet of paper on which are printed various lists of forthcoming matches between well-known
teams. One called “Nothing Barred” is a full list of some fifty matches. The others are shorter lists of
matches selected by the bookmaker from the full list. The bets offered in respect of these lists vary in
character. From some the punter must pick a certain number of ‘winners. From others he must pick so many
home or away wins or draws or a combination of these. And there are other kinds of bets offered. The
variety of bets offered is very great.
When the appellants decided to enter the field they had to devise a suitable form of coupon. Their manager
who was given this task was formerly employed by the respondents, but it appears that he tried to devise a
form of coupon substantially different from the respondents’ coupon. The coupons of some twenty other
firms in the business were produced at the trial, and, while they have a general similarity, they vary very
much in the nature of their lists and the variety of bets offered in respect of many of the lists. The appellants’
manager studied most of them, but his proposals were rejected by the appellants’ managing director, who
adopted a form closely similar to the respondents’ coupon.
The first question to be determined is whether or to what extent copyright attaches to these coupons. The
respondents say that a coupon must be regarded as a single work and that as such it is protected by
copyright. The appellants seek to dissect the coupon. They would not only dissect it into the sixteen lists but
they would further dissect each list into heading, selection of matches, and statement of odds offered for the
various kinds of bets. They admit that there is copyright in the selection and in the statements of odds
offered: they can safely do that because there they did not copy. But they deny any copyright as regards the
rest of the coupon.
The first question to be determined is whether or to what extent copyright attaches to these coupons. The
respondents say that a coupon must be regarded as a single work and that as such it is protected by
copyright. The appellants seek to dissect the coupon. They would not only dissect it into the sixteen lists but
they would further dissect each list into heading, selection of matches, and statement of odds offered for the
various kinds of bets. They admit that there is copyright in the selection and in the statements of odds
offered: they can safely do that because there they did not copy. But they deny any copyright as regards the
rest of the coupon.
As regards infringement, I have already indicated the extent to which the appellants copied from the
respondents’ coupon. That appears to me to amount to a very substantial part of the coupon both in quantity
and quality. In this connexion, I think that there is much wisdom in the reference by Peterson J. to the
“rough practical test that what is worth copying is prima facie worth protecting “—in University of London
Press, Ltd. v. University Tutorial Press, Ltd. I would therefore hold that there has been infringement, and
that this appeal should be dismissed.
Intellectual Property Law- Trademarks
Define Trademark?
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to
identify goods or services, or to authorize another to use it in return for payment, the mark of a person’s
trade, which signifies the brand name and credibility that the person has brought to his trade.
Exclusive Rights- In order to show that the plaintiff has exclusive rights he must show that the mark is
capable as a source identifier. To establish exclusive rights the plaintiff has to show that the mark has
acquired a secondary meaning i.e. a significant number of consumers use the mark to identify a single
source of product. It must serve the information transmission function. The rights attach as soon as the mark
is used in trade.

What are the functions of Trademark?
 The trademark performs the role of identifying the goods of a particular manufacturer and gives an
indication of its origin, or establishes a connection in the course of trade. (It must serve as a source
identifier depending on the meaning given to it by consumers)
 The Trademark assures quality of the product and acts as a symbol representing the goodwill of the
business. (Goodwill refers to a special value that a attaches to a brand when the sellers advertising
and investments generate a brand loyalty- capacity to attract customers over time)
 Also a Trademark advertises the product and creates an image in the mind of the ultimate purchaser.
(If consumers believe that all items bearing the symbol come from the same source, the symbol has
acquired the source identifying property of a trademark)
Write a note on consumer protection and trademark law?
By identifying the source of the goods or services, these marks help consumers to identify their expected
quality and assist them in making an informed choice as a consumer. The marks help distinguish between
the kind of products/services that they can expect. The only way a brand-goodwill can be appropriated is if
consumers are confused into believing that the defendant is selling the same brand of the same product. Any
symbol can serve as a source identifier depending on the meaning given to it by consumers. If consumers
believe that all items bearing the symbol come from the same source, the symbol has acquired the source
identifying property of a trademark.
What is the term of a registered trademark?
The initial registration of a trademark shall be for a period of ten years but may be renewed from time to
time for an unlimited period by payment of the renewal fees.
Case: Abercrombie and Fitch v Hunting World
To test "distinctiveness," courts will use the "Abercrombie Formulation."  
Abercrombie Formulation- The Abercrombie Formulation, developed by the 2nd Circuit Court of Appeals
in Abercrombie & Fitch Co. v. Hunting World, Inc., tests for distinctiveness by creating four categories:
 Generic—does not qualify for protection

 Descriptive—sometimes qualifies for protection
 Suggestive—qualifies for protection
 Arbitrary or fanciful—qualifies for protection  
The determination of whether a mark qualifies for protection is based, in part, on which category the
mark belongs to-
Generic  By their nature, generic marks are not distinctive. They do not warrant protection because if one
seller could trademark a generic name, other sellers would be unable to describe their products and would
thus be at a great disadvantage. For example, it is not permissible to trademark "Milk" brand milk or
"Hiking Boots" brand boots.
Suggestive-  A suggestive mark does not describe the product; it suggests its nature or characteristics.
Although an inference must be made about the product, the product must still bear some relationship to the
mark. For example, a Pathfinder suggests something that is at home off-road, but it has no inherent
relationship to a four-wheel- drive SUV made by Nissan. Similarly, "Titleist" has no inherent relationship to
a golf ball, but it does suggest championship sports equipment.
Descriptive- Descriptive terms and symbols generally identify anything about the product: purpose, size,
color, ingredients, origin, and so forth. Merely descriptive, general marks do not qualify for protection. To
qualify for protection, a mark must acquire a secondary meaning. To acquire a secondary meaning, the
public must associate the mark with the manufacturer or seller rather than the underlying product itself. For
example, "Jiffy Lube" describes a speedy lube and oil but has acquired a secondary meaning in the public
mind. A surname incorporated into a mark is treated as a descriptive mark—it does not qualify for
protection until it acquires a secondary meaning. Examples include McDonald's and Hilton Hotels.
Arbitrary and Fanciful  Marks that are arbitrary and fanciful do not describe or suggest any
characteristic of the product. The symbol's meaning is not inherently related to the product, so the product is
more likely to be associated with the symbol. Examples include Yamaha, Chevron, and Maytag. These
words have no inherent relationship with their products—motorcycles, gasoline, and appliances.
Write a note on Non-Traditional Trademarks?
Trademarks serve as source identifiers by distinguishing the goods and services of one person or company
from those of another. However, what is considered to constitute a trademark is defined differently
in trademark laws throughout the world.
Traditionally, a mark will consist of a word, logo, or a combination of both. The word or words may be
invented or may appear in dictionaries. A mark may also include letters, numerals, or combinations of both.
A logo may be an abstract design, stylization or simple reproduction of everyday objects or images.
However, over time other elements besides words, logos or graphic designs have served to identify the
source of goods or services, thus serving the function of marks. These are called nontraditional marks.
Different countries grant them varying levels of protection. What is considered a protectable
“nontraditional" mark in a country may not be granted any level of protection in another.
Appearance: This type of mark may include the color or combination of colors applied to the products
themselves or to the packaging in which they are sold. In the case of services, it could include the visual
appearance, externally or internally, of a store or restaurant or, for instance, the design of a menu.
Motion: This type of mark includes moving images, which can combine colors, sounds and aspects of
product designs. The motion of the “Lamborghini car door" may be considered an example of a motion
trademark in certain jurisdictions due to the unique movement of the door as the vehicle is opened or closed.
Shape: This type of mark may be a three-dimensional representation of the product itself, the container for
the product, or the architectural design of a store or sign-post, such as McDonald's Golden Arches. It may be
the shape of a label or tag and not simply the words or colors appearing thereon.
Sound: This type of mark may be a jingle or a piece of music or other sound, such as the "roar of the MGM
lion" or the "Tarzan yell." It may be a short extract from a composition or an entire musical piece. In some
cases, it may be a reproduction of an everyday sound, perhaps in an unusual circumstance.
Scent: Many smells are associated with a particular good or service. In some cases, such as perfume houses,
the particular scent is also the product itself. In other cases, it is a scent applied or added to the product, not
the natural smell of the product itself. For instance, The Smead Manufacturing Company is the owner of a
registered trademark in the United States consisting of a vanilla scent or fragrance for file folders.
Taste: In many cases it will be difficult to distinguish between the natural flavor of a product and the recipe
adopted by a manufacturer to distinguish its goods from those of competitors. The flavor of cola drinks is a
good example. The manufacturers of such goods would certainly consider the flavor of their products as
being a trademark of the company and the recipes are often closely guarded trade secrets.
Touch: It is possible for products to be manufactured in such a way that the product itself or its packaging
may have a particular sensation to the touch, which can distinguish it from those of competitors. For
example, the distinctive texture of certain bags and luggage sold under the Louis Vuitton brand may be
entitled to protection in some jurisdictions as a touch trademark.
Write a note on descriptive marks and inherently descriptive marks?
Descriptive Marks- Words or other symbols that describe aspects of the product, such as FISH-FRI for a
batter mix. To establish exclusive rights in a descriptive mark, the plaintiff must prove that the mark has
acquired secondary meaning. Secondary meaning exists when a significant number of consumers use the
mark to identify a single source of the product. In short, a descriptive mark is protectable only if it actually
serves an information transmission function.
Inherently Descriptive Marks- Exclusive rights attach as soon as the seller uses the mark in trade. This
category includes marks that are fanciful, arbitrary, or suggestive. A fanciful mark is a completely new word
or symbol created just to serve as a mark, such as KODAK for photographic supplies. An arbitrary mark is
an existing word or symbol that has no relationship to the product with which it is associated, such as
IVORY for soap. And a suggestive mark is an existing word or symbol that says something about the
product but only in a suggestive rather than clearly descriptive way. An example is COPPERTONE for
tanning lotion.
Write a note on Absolute and Relative grounds for refusal of registration of Trademark in India?
Any mark may be registered as a trademark unless a specific ground for refusal exists. The grounds for
refusal are divided into two classes: ‘absolute’, which relates to the intrinsic qualities of the mark, and
‘relative,’ which relate to conflicts with earlier trade mark rights belonging to third parties.
Absolute Grounds for Refusal:
According to the Trademarks Act, a trademark can only be registered if it is distinctive in nature and to a
certain extent unique. An invented word can also be registered as long as is not descriptive. There is a
provision in the Act which deals with well-known trademarks wherein a trademark which has become so
popular that the people immediately associate the product with the mark, then such a mark can be registered.
The Act also provides that the mark should not-
 Cause confusion
 Be devoid of distinction
 Marks which consists exclusively of marks or indications which have become customary in the
current language or in the bona fide and established practices of the trade
 Hurt religious sentiments
 Should not be obscene
 Marks, which are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950.
 A mark shall not be registered as a trade mark if it consists exclusively of -
(a) The shape of goods which results from the nature of the goods themselves; or
(b) The shape of goods which is necessary to obtain a technical result; or
(c) The shape, which gives substantial value to the goods.
Relative Grounds for Refusal:
Section 11 deals with the relative grounds for refusal of registration. The absolute grounds of refusal prevent
registration prima facie, whereas relative grounds for refusal deal with the mark in connection to other
marks. Section 11 provides that a mark can be refused because of its identity and association with an earlier
trademark or its similarity to an earlier trademark. This helps in reducing the confusion in the public who
would assume the newly registered mark is somehow connected to the previous trademark. It also provides
that objections can be raised in case of any similarity between the earlier marks. However, an applicant can
register such trademark if the proprietor of the earlier mark has given his approval.
It is the duty of the Registrar to protect a well-known trademark against the identical or similar trademarks.
Write a note on “Likelihood of Confusion” with emphasis on the Polaroid Test?
Assuming we have a valid registered mark, §1114 gives us the basics of trademark infringement. This
section essentially prohibits the use of reproductions, counterfeits, copies, or imitations of a registered mark,
when “such use is likely to cause confusion, or to cause mistake, or to deceive.” The infringer need not
be actually aware of the registered mark; registration imputes knowledge of the mark’s existence on all
second-comers. The mark doesn’t have to be used on the same goods and or/services, and the mark could
have been independently created (i.e., not physically copied).
The major question here, in theory and in practice, is how to determine whether or not a mark is likely to
cause confusion. One leading case on this issue is Polaroid Corp. v. Polarad Electronics Corp, where the
court provided 8 factors to consider:
 The strength of his mark.

 The degree of similarity between the two marks.
 The proximity of the products/services.
 The likelihood that the prior owner will bridge the gap.
 Actual confusion.
 The defendant's good faith in adopting its own mark.
 The quality of the defendant's product.
 The sophistication of the buyers.
Further, the factors mentioned by these courts are not necessarily exhaustive. That said, the first three factors
are often considered to be the most important.
Example: “Friggin’ Chicken” is a chain of fast-food restaurants known nationwide for its “Friggin’ Fries.”
By using the fanciful word “Friggin'” before each of their menu items, the company has established a link in
the public mind between that term and their restaurants. In 1985, the various Friggin’ menu item names,
along with the restaurant name, are placed on the primary register by the company’s corporate counsel. All
technical requirements, including affidavit of use and renewals are regularly met. In 1997, a Tennessee
retiree decides to market one of his favorite fly-fishing lures. Because the lure is so difficult to make, (hence
the high price he decides to charge,) he has always referred to it among his friends as that “Friggin’ fishin’
lure.” He decides this would be an excellent name to use on the lure’s package. Within a few months
Friggin’ Chicken’s legal department becomes aware of the retiree’s lure, and files a suit for infringement of
the registered mark “Friggin’ Fish Sandwich.”
How are the Polaroid factors applied here?
 The strength of the mark here is substantial. The company has spent years establishing the mark in
the nation’s mind, and the mark is used on all the company’s products, as well as in the name of the
restaurants themselves. This factor leans toward a finding of infringement.
 The marks here are clearly very similar. Although we have not taken into consideration the way in
which the words are written (e.g., font, color, etc.), nor have we considered any logos accompanying
the mark, the words “Friggin’ Fishing…” are almost identical to “Friggin’ Fish…” This factor leans
toward a finding of infringement.
 The products/services are not very similar at all. The registered mark covers restaurant services and
menu items, while the potential infringer is using the mark on sporting equipment. This factor leans
away from a finding of infringement.
 Although the plaintiff here might decide to offer a variety of products or services unlike its current
restaurant business, it is unlikely that Friggin’ Chicken would expand into the realm of sporting
goods. This factor leans away from a finding of infringement.
 In the hypothetical we have not said anything about actual customer confusion caused as a result of
the lure’s mark. This is an inherently factual question dependent on market studies and surveys. 
 There is nothing to indicate that the retiree intended to get a “free ride” on the plaintiff’s back by
using the mark. But despite this lack of bad faith, the adequacy of a defendant’s trademark search is
also relevant to the question of good faith. Although likely due to the retiree’s lack of sophistication,
the lack of any due diligence before embarking on this enterprise might count against the defendant
here.
 If the lures were of a high quality, the damage to the plaintiff would be less than if the retiree makes
junk. Generally, it is not good for the potential infringer if his goods are of lower quality than those
of the plaintiff's.
 Consumer sophistication might be argued either way, and the successful party will likely be the one
who provides the best study data. How sophisticated are fast-food restaurant patrons? How
sophisticated are fly-fishing lure purchasers? More sophisticated consumers are less likely to become
confused by similar marks.
Explain the concept of Trademark Dilution?
Trademark dilution is defined as the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of competition between the owner of the famous
mark and other parties or of likelihood of confusion. This typically occurs as the result of blurring or
tarnishment of the famous mark.
The law protects marks from the existence of subsequent “confusingly similar” marks. Claiming a likelihood
of confusion requires a showing of similarity of the marks in sight, sound or meaning, combined with
evidence that the marks being compared are associated with identical, competing, similar or related
goods/services. Under this analysis, similar and possibly even identical marks used with distinguishable
goods/services or goods/services traveling in different channels of trade may coexist in the same market.
Famous Marks- Dilution developed from the concept that some marks are so well known and “famous”
that they deserve an extra level of protection beyond the likelihood of confusion analysis. Dilution theory
seeks to prevent the coexistence of marks that are sufficiently similar to a famous mark regardless of the
goods/services associated with the allegedly diluting mark.
What are the types of Trademark Dilution? Explain.
Blurring- weakening the distinctiveness of a famous mark, this is the traditional notion of dilution – using
an identical or virtually identical mark on goods or services that may be completely different and unrelated
to the plaintiff’s product/service. The belief is that a mark that is highly similar or identical to the plaintiff’s
unique, distinctive and well-known mark can detract from consumers’ strong association of the plaintiff’s
mark with the plaintiff’s goods and services therefore lessening the strength or value of the plaintiff’s mark
as an identifier of its goods/services.

Tarnishment- weakening the distinctiveness of a famous mark, usually through inappropriate or
unflattering associations, examples include using a similar mark, or a term that plays on one’s mark, in
association with sexual or offensive content, with subject matter contrary to or critical of the mark owner
and its beliefs or philosophies or to attract the mark owner’s customers to directly criticize or attack the
mark owner or its product/service.
Write a note on Comparative Advertising and Disparagement?
The term ‘disparagement’ has not been defined in any statute, and what constitutes product disparagement is
derived from judicial pronouncements. The Trademarks Act, 1999, Section 29(8) enunciates a situation
where use of another’s trademarks in advertising can amount to trademark infringement, if such use does not
comply with the conditions laid down under the section.
A survey of advertisements reveals that there are three categories into which all advertisements fall:
 Advertisements that refer only to one brand of product and make no reference to competing products
either directly or indirectly – ‘non-comparative’ advertisements (‘NC’);
 Those that refer only to attributes of one brand of product but that refer indirectly to the attributes of
rival or competing goods – ‘indirectly comparative’ advertisements (‘IC’);
 Advertisements that directly compare attributes of one product with attributes of a specifically
named or recognizably presented, competing brand – ‘directly comparative’ advertisements (‘DC’).
The Delhi High Court was ceased with a dispute between Pepsico Inc and Hindustan Coca Cola Ltd,
wherein the Single Judge held that the mere mocking at a particular product by calling the plaintiff’s product
a drink meant for children was not by it disparaging. However, this judgement got reversed in appeal and the
Division bench of Delhi High Court held that it is not the mere terminology used in the commercial which is
relevant but also the manner in which the commercial is portrayed which is important. The expression used,
feelings portrayed, etc. in the above cases related to instances wherein the product which was compared was
clearly identifiable in the commercial and the competitor’s product was being specifically targeted.
However, the problem did not stop here.
Competitors found new ways of indulging in comparative advertising. They started condemning a whole
class of products of a specific competing product. This started a new species of disparaging advertising
called “Generic Disparagement”.
In this new form of comparative advertising, the competitor would not merely disparage a specific product
but would indulge in disparagement of a complete class of products. One of the first few cases of the
Generic Disparagement is the judgement of the Dabur India Ltd v. Emami Ltd. In this case the court was
concerned with a commercial wherein the entire class of products, namely, Chyawanprash was shown in a
negative campaign. One of the market leaders manufacturing Chyawanprash objected to the commercial by
filing a civil suit for injunction. The Court held that the plaintiff enjoyed a market share of more than 63%
for this class of products and thus has a vital interest in ensuring that its product/ class as a whole is not
condemned in any manner.
Thus the Plaintiff had a clear cause of action to maintain the suit irrespective of the fact that there may or
may not be a direct reference to the product of the Plaintiff but the reference to an entire class of
Chyawanprash. The Single Judge of the Court recognised the concept of Generic Disparagement and
granted an injunction. This was followed by another case decided by the Delhi High Court itself in the
Dabur India Ltd v. Colgate Palmolive India Ltd. In this case the defendant sought to disparage the tooth
powder manufactured by the plaintiff.
In another judgment, Justice Ravindra Bhat of the Delhi High Court had passed interim orders in
longstanding litigation between Glaxo Smithkline & Horlicks on one hand and Heinz, the manufacturers of

Complan, on the other hand. This particular ad-war took a rather ugly turn with the competitors called each
other’s product ‘cheap’. Hopefully Justice Bhat’s lucid order clarified the law to the advertising community.
Justice Bhat had very clearly ruled in favour of Horlicks since the ad-campaign against them was clearly
disparaging and also ordered Complan to pay Horlicks costs of Rs. 2.2 Lakhs only.
The most recent judgement on this issue is the case of where Hindustan Lever Limited (HUL) aired a
television commercial which depicted a child being sick because of the alleged use of Dettol as an antiseptic
liquid in bathing water whilst promoting the superiority of Hindustan Lever Limited’s Lifebuoy Soap. The
plaintiff, Reckitt Benckiser filed a suit for an ad interim injunction against the telecast of the television
commercial of defendant Hindustan Lever Limited’s Lifebuoy Soap, which was disparaging and denigrating
the reputation and goodwill of the plaintiff’s product Dettol in the commercial market. Justice Kailash
Gambhir of the Delhi High Court decided that the commercial telecast by the respondent indeed disparaged
the product of the plaintiff and granted an interim injunction to the plaintiff against the telecast.
Write a note on Passing Off?
Passing off is a form of tort, and its substantive part is founded upon the common law principles. The
general principle of passing-off states that no man can have any right to represent his goods as the goods of
another person. The gist of the concept of passing off is that the goods are, in effect, telling a falsehood
about themselves; they are saying something about themselves, which is calculated to mislead. The spirit of
law contemplates that unfair competition destroys honest business and should not be allowed.
The action against passing off is based on the principle that “a man may not sell his own goods under
the pretense that they are the goods of another man.” (N. R. Dongre v. Whirlpool Corporation, (1996)
5 SCC 714) Passing off is a species of unfair trade competition by which one person seeks to profit from the
reputation of another in a particular trade or business.
There are certain essential ingredients of a passing off action.
 The plaintiff has to prove that there is a similarity in the trade names;
 The defendant is deceptively passing off his goods as those of the plaintiff; or that there is bound to
be confusion in the minds of the customers.
 “What the plaintiff is required to prove is that defendant’s goods are so marked, made up or
described by him as to be calculated to mislead ordinary purchasers and to lead them to mistake the
defendant’s goods for those of the plaintiff. The test to be applied in such matters is as to whether a
man of average intelligence and of imperfect recollection would be confused.”
In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) SCL 534, the Supreme Court set out
factors that must be considered while deciding the question of deceptive similarity.
Factors such as the-
 Nature of the marks (word, label or composite) and goods,

 Similarity in nature, character and performance of goods,
 Class of purchasers likely to buy the goods and the mode of purchasing the goods, are essential
components with respect to the question of deceptive similarity in a passing off action.
Misrepresentation and loss or damage of goodwill are also essential elements for a successful passing
off action, both must be proved by the plaintiff for an interlocutory injunction. (Atheletes Foot
Marketing Adm. Inc. v. Cobra Sports Limited, 1980 RPC 343, P. Narayanan supra, at 531) In addition, the
goods of the plaintiff must have acquired distinctiveness and must be associated in the minds of the general
public as goods of the plaintiff. The nature of activity and the market of consumption of the goods of the
parties to the passing off action must be the same. Moreover, the use of the same trademark or trade name
by the defendant must be likely injure the business reputation of the plaintiff. (Hindustan Radiators Co. v.

Hindustan Radiators Ltd., AIR 1987 Del 353)
For the success of claim against passing off, the plaintiff has to pass the Classical Trinity test. This test was
used in Perry v. Truefitt and was later upheld in the landmark case of Reckitt & Colman Products Ltd. v.
Borden Incorporation. The test requires the plaintiff to prove the presence of the following three elements in
the act of the defendant:
(i) That the plaintiff had acquired a reputation or goodwill in his goods, name or mark,
(ii) There was a misrepresentation, whether intentional or unintentional, which was done by the
defendants by the use of mark of the plaintiff or by any other means (which includes use of
similar marks) and which led the purchasers/consumers to believe that the goods and services
which were being offered by the defendants are goods and services of the plaintiff or were
associated with the plaintiff’s goods and services,
(iii) That the plaintiff has already suffered damage or is likely to suffer damage due to such
misrepresentation.
The apex court of India has also upheld this test and has applied it in the case of Laxmikant V. Patel v.
Chetanbhat Shah.
Write a note on abandonment of trademarks?
The most common way to lose rights in a mark is to stop using it with no intention to use it again. This is
called “abandonment.” However, there are also ways in which trademark rights may be unintentionally lost.
For example, in some countries, it is possible to lose rights in a mark by licensing the mark to others without
controlling the nature and quality of the goods or services the licensee offers under the mark. This concept
often is referred to as “naked licensing.” Another way in which rights may be lost is if the trademark owner,
or third parties, improperly use the mark, so that the mark ceases to indicate the source of goods or services
and becomes a generic word (such as escalator and cellophane, which originally were trademarks but came
to be understood by the public as the generic names of the products for which they had been used as brands).
Write a note on civil and criminal remedies w.r.t trademark infringement?
The Trade Marks Act, 1999 prescribes relief in any suit for infringement of trademarks. It may include an
injunction and at the option of the plaintiff, either damages or an account of profit, together with or without
any order for the delivery-up of the infringing labels and marks for destruction or erasure. The order of
injunction may include an ex parte injunction or any other interlocutory order for discovery of documents,
preserving of infringing goods, documents or other evidence, which are related to the subject matter of the
suit. The order may also restrain the defendant from disposing of or dealing with his assets in a manner,
which may adversely affect plaintiff's ability to recover damages, cost or other pecuniary remedies, which
may finally be awarded to the plaintiff. The infringement of trademark are punishable with imprisonment for
a term which shall not be less than six months but which may extend to three years and with fine which shall
be between fifty thousand rupees and two lakh rupees. There is also a provision for enhanced penalty on
second and subsequent conviction.
Differentiate between passing off and infringement of trademarks?
 For a passing off action registration of trademark is not relevant. It is based on property in goodwill
acquired by use of the mark. On the other hand infringement is based on statutory right acquired by
registration of trademark.
 In case of a passing off action, the defendant's goods need not be same as that of the plaintiff, they
may be allied or even different. In case of an action for infringement, the defendant's use of the
offending mark may be in respect of the goods for which the mark is registered or similar goods. In
the claims of infringement based on well-known trademarks, the barrier of goods stands further
diluted in view of the provisions of the Trade Marks Act, 1999.

 Another difference between the two is that in passing off action identity or similarity of marks is not
sufficient, there must also be likelihood of confusion. But in case of infringement if the marks are
identical or similar no further proof is required.
Explain the meanings of the terms counterfeit, branding and grey and black market?
Branding: The process involved in creating a unique name and image for a product in the consumers' mind,
mainly through advertising campaigns with a consistent theme. Branding aims to establish a significant and
differentiated presence in the market that attracts and retains loyal customers.
Counterfeit means made in exact imitation of something valuable with the intention to deceive or defraud.
Grey Market: A grey market (also spelled gray market), or parallel market, is the trade of a commodity
through distribution channels, which, while legal, are unofficial, unauthorized, or unintended by the original
manufacturer. The most common type of grey market is the sale of imported goods (brought by small import
companies or individuals not authorized by the manufacturer), which would otherwise be more expensive in
the country they are being imported to. An example is drugs being imported into nearby wealthier nations
where the drug manufacturer charges a higher price for a similar or equivalent product.
Black Market: A black market or underground economy is the market in which goods or services are traded
illegally. The key distinction of a black market trade is that the transaction itself is illegal. The goods or
services may or may not themselves be illegal to own, or to trade through other, legal channels. Because the
transactions are illegal, the market itself is forced to operate outside the formal economy, supported by the
established state power.
Case: Cadila v Cadila
The facts of the case, in brief, were that the plaintiffs had filed an action before a Single Judge of the High
Court seeking directions restraining the defendants from using medicinal or pharmaceutical preparations, or
other products, under the trademark “HB TONE” or any other trademark deceptively similar to the
plaintiffs’ trademark, “RB TONE”. The defendants, incidentally, were only using the impugned trademark
for export purposes, and had no intention of selling their products under that name in India. The plaintiffs
succeeded. The defendants appealed to the Division Bench.
Before the Division Bench, the defendants had two contentions to make: firstly, as the goods bearing the
impugned trademark were meant for export, there was no question of infringement or passing-off of the
plaintiffs’ trademark; and secondly, Section 56 of the Trade Marks Act did not apply to passing-off actions
such as this one.
The first contention was rejected. The Court held that merely because certain goods were only meant for
export, it did not mean that the proprietor of the mark would not suffer damage to his property in the
goodwill of trademark. Exported goods may also be exposed to the citizens and residents of India.
Manufacturers of the labels containing the mark, the manufacturers of cartons on which the labels may be
applied, the transporters of the goods, and the various authorities that deal with the goods before they are
actually exported and are in the course of export, are all exposed to the trademark. The processes of
inspection, quality control, and export would involve the exposure of the infringing mark to employees,
workers, proprietors, and a variety of other persons.
The second contention, which involved a question of interpretation of Section 56 of the Trade Marks Act,
was also rejected. In plain language, Section 56 deems that the application of a trademark to goods to be
exported from India, which if it had been done to goods sold in India, would constitute “use” in India, will
be “use” for any purpose for which such use is material under the Trade Marks Act “or any other law”. It
thus puts goods to be exported from India at par with goods to be consumed in India. The defendants’

argument was that this Section did not apply to passing-off actions, where the trademark is not registered,
but where the complaint made is that goods of one person were being passed off as those of another person.
Dismissing the defendants’ arguments, the court held that in interpreting the Trade Marks Act, courts would
always “lean in favour of a construction which would confer the benefit of proprietorship in a trade mark
rather than deny the same”. Any ambiguity in the Act was to be construed in favour of the proprietor of the
trademark. Taking this into account, the court held that Section 56 must therefore apply to passing-off
actions just as it does to actions for trademark infringement.
Case: Whirlpool v N.R. Dongre
This is a landmark case concerning the trans-border reputation and good will of a company.
It so happened that in 1986 that Mr. N.R Dongre and his company filed for an application for registration of
trademark ‘Whirlpool’. Thereafter, when the registration application was published, Whirlpool Corporation
and TVS Ltd, under the banner of TVS Whirlpool Ltd opposed the granting of registration of the trademark.
However, the Assistant Registrar of Trade Marks dismissed the claims of TVS Whirlpool Ltd on the
following grounds:
i. Non-use and non-reputation of trademark ‘Whirlpool’ in India.

ii. There would not be any likelihood of any confusion arising if Mr. N.R Dongre and his company is
allowed to sell out products bearing the name’ Whirlpool’.
The TVS Whirlpool Ltd filed for an appeal against the order of the Assistant Registrar before the Delhi High
Court. They filed for a petition under Section 46 and 56 of the Trade Marks Act, 1958 seeking for
cancellation of registration of trademark for N .R Dongre and his company. And in July 1994 the TVS
Whirlpool Ltd came across an advertisement of the latter inviting dealers for ‘Whirlpool’ washing machines.
They bought a washing machine bearing the name with the mark ‘Whirlpool’ and found it be to inferior in
quality in comparison to their own washing machine.
Disturbed by this, the Corporation initiated a proceeding against the latter in the Delhi High Court seeking
permanent injunction on the latter from using the mark ‘Whirlpool’.
The Single Judge Bench of the court ruled in favor of the corporation and held that they were already
indulged in selling their products to the U.S embassy in India. And further that were advertisements in
various international magazines being circulated in India about the products sold by the corporation bearing
the trademark and name ‘Whirlpool’. Henceforth, the learned Single Judge granted a temporary injunction
in favor of the corporation stating that there were no reliable and conclusive evidence of Mr. N.R Dongre
and Co. having carried out marketing of their washing machines bearing the trademark 'Whirlpool' for any
considerable time prior to the date of grant of injunction.
It was taken in appeal before the division bench of the High Court. The decision bench upheld the decision
of the Single Judge bench.
Thereafter, in a Special Leave Petition before the Supreme Court under Article 136 of the Indian
Constitution, the court finally upheld the decision of the Learned Single Judge as well as that of the Division
Bench and reaffirmed the decision granted by the Single Judge bench of the Delhi High Court.
Thus, in this manner the Supreme Court recognized the concept of ‘Trans-Border Reputation’. And the
trademark 'Whirlpool' was deemed to have acquired trans-border reputation which enjoys due protection of
law in India as well, irrespective of its market base or registration in India.
Case: Daimler v Benz
The mark and word in the instant case is "Benz" and "Three Pointed Human Being in a Ring". The word
"Benz" has been associated with a Car ever since I remember. This car had a device upon it; a three pointed
star in a circle/ring. Both, the name and the device, have always, in my memory, been inextricably linked. I
am unable to ignore this connection. It was, however, registered in India in 1951. It is one of the most
famous marks of the world.
I think it will be a great perversion of the law relating to Trade Marks and Designs, if a mark of the order of
the "Mercedes Benz", its symbol, a three pointed star, is humbled by indiscriminate colorable imitation by
all or anyone; whether they are persons, who make undergarments like the defendant, or any one else. Such
a mark is not up for grabs -- not available to any person to apply upon anything or goods. That name which
is well known in India and world wide, with respect to cars, as is its symbol a three-pointed star.
There are marks, which are different from other marks. There are names, which are different from other
names. There are names and marks, which have become household words. Every family that has ever used a
quality car would know “Benz” as name of a Car. The name "Benz" as applied to a car, has a unique place in
the world. There is hardly one who is conscious of existence of the cars/automobiles, who would not
recognize the name "Benz" used in connection with cars. Nobody can plead in India, where "Mercedes
Benz" cars are seen on roads, where "Mercedes" have collaborated with TATAs, where there are Mercedes
Benz Tata trucks have been on roads in very large number, (known as Mercedes Benz Trucks, so long as the
collaboration was there), who can plead that he is unaware of the word "Benz" as used with reference to car
or trucks.
In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take the
benefit of somebody else's reputation with reference to goods, especially so when the reputation extends
world wide. By no stretch of imagination can it be said that use for any length of time of the name "Benz"
should be not objected to. We must keep in mind that the plaintiff company exists in Germany. An
insignificant use by too small a product may not justify spending, large amounts needed in litigation. It may
not be worthwhile.
It is not the case of the defendant that the defendant is only seeing underwear’s under the trademark "Benz".
It markets undergarments bearing different trade names, such as "VIP" etc. In my view, destruction of the
underwear’s, or non-use of the said goods should send a clear, message to persons, at least of the eminence,
of Hybo Hindustan, that they should not demean other people's name and reputation by using the name like
"Benz" with reference to the goods produced by them.
In my view, it is but right that the defendant should be restrained from using the word "Benz" with reference
to any underwear which is manufactured by them, and in my view, injunction should issue, restraining the
defendant to cease and desist from carrying on trade in any undergarments in the name of "Benz" and
"Three Pointed Human Being in a Ring", forthwith. So ordered.
Case: Amritdhara Pharmacy v Satyadeo
The Respondent (Satyadeo Gupta) had applied for registration of the trade name of a medicinal preparation
“Lakshmandhara” in relation to the medicinal preparation since 1923. It was admitted by the Respondent
that the Respondent’s product was mainly sold in the State of Uttar Pradesh and there were only sporadic
sales in other states. The Appellant (Amritdhara Pharmacy) opposed the registration of the mark
‘Lakshmandhara’ on the ground that it had an exclusive proprietary interest in the trade mark “Amritdhara”
in relation to a similar medicinal preparation which had acquired considerable reputation since 1901 and that
the respondent’s trade name “Lakshmandhara” was likely to deceive and cause confusion and therefore the
registration was prohibited by Sections 8 and 10(1) of the Trade Marks Act, 1940. In response to the same
the Respondent filed a counter affidavit, raising the defenses of honest concurrent user and acquiescence on
part of the Appellant as the Respondent was using the mark ‘Lakshmandhara’ since 1923.
The Registrar of Trade Marks held that There was sufficient similarity between “Amritdhara‘ and
“Lakshamandhara” so as to cause confusion and it was likely to deceive the public, but the acquiescence of

the appellant in the use of the trade name “Lakshmandhara” by the respondent in the relation to his product
for a long period to the knowledge of the appellant was special circumstance under S. 10(2) entitling the
respondent to have his name registered along with the appellant’s trade name. Registrar, however, confined
the registration to sales with the State of Uttar Pradesh only. As a result of this order, passed by the
Registrar, two appeals were filed. One by the Appellant seeking cancellation of Registration of
Respondent’s mark altogether and one by the Respondent seeking registration for other states apart from
Uttar Pradesh.
In appeals the Hon’ble Allahabad High Court, rejected the appeal of the Appellant and allowed the appeal of
the Respondent allowing the registration of the mark ‘Lakshmandhara’ for the whole of India. The Hon’ble
High Court held that the marks ‘Amritdhara’ and ‘Lakshmandhara’ are dissimilar and the words ‘Amrit’ and
‘Dhara’ being of common language cannot be made the monopoly of any individual and thus the Hon’ble
High Court found no reason to disallow registration of the trade mark ‘Lakshmandhara’. On the question of
honest concurrent use the Hon’ble High Court favored the Respondent but on the question of acquiescence
founded favour in the arguments of the Appellant and held in his favour.
Aggrieved by the order of the High Court, an Special Leave Petition (SLP) was filed in the Supreme Court
of India. The full bench of the Hon’ble Supreme Court held that the marks ‘Amritdhara’ and
‘Lakshmandhara’ are similar and thus overruled the decision of the Allahabad High Court and upheld the
decision of the Registrar of Trade Marks. In coming to the said conclusion, the Court relied on:
The test of comparison of marks, which states that the question of comparison of two marks has to be
approached from the point of view of a man of average intelligence and imperfect recollection. The
Court held that- “A critical comparison of two names may disclose some points of difference but an unwary
purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of
the two names having regard to the nature of the medicine he is looking for with a somewhat vague
recollection that he had purchased a similar medicine on a previous occasion with a similar name”
Case: Hoffman v Geoffrey Manners
In 1946 the trademark 'PROTOVIT' was registered for one of the vitamin preparations manufactured by the
appellant company. In 1957 the respondent company applied for registration of its mark 'DROPOVIT' in
respect of "medical and pharmaceutical preparations and substances". The application was granted. When
the appellant came to know about this trademark it asked the respondent to alter it. On the respondent's
refusal to do so, the appellant in 1959, applied to the Registrar for rectification of the Register of Trade
Marks by removal thereform of the respondent's trademark. Later the appellant amended its application by
adding the ground that DROPOVIT' was not an invented word. The Joint Registrar by letter dated August 5,
1961 rejected the appellant's application for rectification. The appellant went in appeal to the Bombay High
Court. During the hearing of the appeal the respondent restricted the designation of goods covered by the
mark 'DROPOVIT' to "medical preparations and, substances containing principally vitamins." The Single
Judge as well as the Division Bench decided in favor of the respondent.
The appellant came to this Court with certificate. The questions that fell for consideration were: (i) whether
the word 'DROPOVIT' was deceptively similar to the word 'PROTOVIT' and thus offended the provision of
s. 12(1) of the Trade and Merchandise Act, 1958; (ii) whether the word 'DROPOVIT' was an invented or a
descriptive word for the purpose of s. 9(1) of the Act.
HELD: The appeal must be dismissed.
In order that a trademark may be found deceptively similar to another it is not necessary that it 'should be
intended to deceive or intended to cause confusion. It is its probable effect on the ordinary kind of customers
that one has to consider. For this purpose it is necessary to apply both the visual and phonetic tests. It is also
important that the marks should be compared as wholes. It is not right to take a portion of the word and say
that because that portion of the word differs from the corresponding portion of the word in the other case
there is no sufficient similarity to cause confusion. The true test is whether the totality of the trademark is
such that it is likely to cause deception or confusion or mistake in the minds of the persons accustomed to
the existing trademark.
The terminal syllable 'VIT' in the two marks 'DROPOVIT' and 'PROTOVIT' was both descriptive and, as
the evidence showed common to the trade. If greater regard was paid to the uncommon element in the two
words it was difficult to, hold that one would be mistaken for or confused with the other. The letters 'D' and
'P' in DROPOVIT' and. the corresponding letters 'P' and 'T' in 'PROTOVIT' could not possibly be slurred
over in pronunciation and the words were so dissimilar that there was no reasonable probability of confusion
between the words either from the visual or phonetic point of view. This was all the more so because the
preparations from their very nature were likely to be purchased on the prescription of doctors, and under r.
61(2) of Drug Rules, 1945 could be sold only by licensed' dealers so that the possibility of confusion would
be reduced to a considerable extent.
It could not be accepted that the Word 'DROPOVIT' would strike an ordinary person knowing English as
meaning 'DROP OF VITAMINS'. The appellant's original application for rectification did not contain the
ground that the word 'DROPOVIT' was descriptive. It was therefore reasonable to presume that it did not
strike even the legal advisers of the appellant as descriptive. It was true that the word 'DROPOVIT' was
coined out of words commonly used by and known to ordinary persons knowing English. But the resulting
combination produced a new word, a newly coined word, which did not remind an ordinary person knowing
English of the original words out of which it was coined unless he was so told or unless at least he devoted,
some thought to it. It followed that the word 'DROPOVIT' being an invented word was entitled to be
registered as a trade mark and was not liable 'to be removed from the Register on which it already existed.

Intellectual Property Law Notes - Final

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Intellectual Property Law Notes - Final

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The justification for obtaining patents is-

What can be patented? What cannot be patented?

Patents cannot be awarded for-

Arman Sood 4th Year BA.LLB

Genetically modified microorganisms are however patentable.

Arman Sood 4th Year BA.LLB

Write a note on Patent Infringement- Claims and Remedies.

What Is Patent Infringement?

Basic Features of Patent Infringement-

Remedies of Patent Infringement are-

What are overlapping patents?

What is patent interference?

Write a note of First to File v First to Invent under Patent Law?

The new system can really be considered a “first-to-disclose” system.

Arman Sood 4th Year BA.LLB

Now consider a second, somewhat modified scenario:

 Normally it is the inventor who owns the patent

Arman Sood 4th Year BA.LLB

Rights of a patent holder (Sec 48)

Write a note on assignment of patent rights and their implications?

Arman Sood 4th Year BA.LLB

Acquisition by the Government- Government use of inventions-

Write a note on Licensing of Patents?

Arman Sood 4th Year BA.LLB

Write a note on Compulsory Licensing in the Indian scenario?

The grounds for making such application are-

Compulsory Licensing on Public Grounds-

Arman Sood 4th Year BA.LLB

Write a short note on revocation of patents?

 On the petition by any person interested

The following are the grounds of opposition

 Invention claimed is the subject of prior grant

Write a note on patent infringement?

Arman Sood 4th Year BA.LLB

Arman Sood 4th Year BA.LLB

Catnic Component Case-

a. Method for producing the bacteria,

 §101 requires that an invention be manufactured or a composition of matter (or a machine, or a

Under the triple identity test something is equivalent if:

Festo Corp v SMC

This case mainly focuses on: -

Roche Products, Inc. v. Bolar Pharmaceutical Col., Inc.

Arman Sood 4th Year BA.LLB

Novartis v Union of India

In Re Bilski- 545 F.3d 943 (Fed. Cir. 2008)

The Appellate Court affirmed. Bilski appealed.

Mayo Collaborative Services v. Prometheus Laboratories, Inc

The Supreme Court’s Unanimous Opinion

The Court’s Consideration and Use of Precedents

Arman Sood 4th Year BA.LLB

Dimminaco AG v. Controller of Patents and Designs, 2002