COPYRIGHT LAW AND INDUSTRIAL DESIGNS

MATERIAL

SL. NO. CONTENTS PAGES

PART I – COPYRIGHT

1. INTRODUCTION 3
2. BASIC CONCEPTS 4 - 11
3. RIGHTS 12 - 19
4. REGISTRATION 20
4. ADMINISTRATION OF COPYRIGHT 21 - 35
5. COPYRIGHT IN DIGITAL MEDIA 36 - 40
6. INTERNATIONAL COPYRIGHT 41 - 43

PART II – INDUSTRIAL DESIGNS

1. INTRODUCTION 44 - 45
2. FREQUENTLY ASKED QUESTIONS 46 - 51
 PART I – COPYRIGHT

1. INTRODUCTION

1.1 WHAT IS ‘COPYRIGHT’?

Copyright is a right given by law to creators of literary, dramatic, musical and artistic works and
producers of cinematograph films and sound recordings. It is a bundle of rights including, inter
alia, rights of reproduction, communication to the public, adaptation and translation of the work.

Initially copyright was only given to the author of a book to print copies of it. In course of time
other uses such as translations and derivative works were made subject to copyright. Now,
copyright covers a wide range of works including computer programs.

1.2 RATIONALE BEHIND COPYRIGHT LAW

The primary function of copyright law is to protect the fruits of a man’s work, labour, skill or
taste. Copyright ensures certain minimum safeguards of the rights of authors over their creations,
thereby protecting and rewarding creativity.

According to the US Copyright Law, “[Copyright] promotes the progress of science and useful
arts, by securing for limited times to authors and inventors the exclusive right to their respective
writings and discoveries”. (Article I, Section 8 Clause 8 of the US Constitution, Copyright
Clause)

According to the World Intellectual Property Organisation (WIPO) the purpose of copyright is
“to encourage a dynamic culture, while returning value to creators so that they can lead a
dignified economic existence, and to provide widespread, affordable access to content for the
public.”

1.3 HISTORY

Copyright originated in the 15th century, with the invention of printing, which introduced the
practise of royal ‘privileges’ or ‘monopolies’ to publishers to publish particular books. From 18th
century onwards, legal protection was accorded to the author instead of publisher. In 1709, the
Statute of Anne was passed in Britain. In 1793, ‘Declaration of the Rights of Genius’ was
enforced in France giving authors, composers, and artists exclusive right to sell and distribute
their works. The United States enacted the Copyright Act of 1790. Other countries followed
suit, with their own laws. East India Company’s 1847 enactment was the first Indian law on
copyright. The Copyright Act 1914 was based on the English law of 1911. The current
legislation, Copyright Act 1957 came into force on 21st January 1958 and has been several times,
most recent of which was by the Copyright (Amendment) Act 1999.

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 2. BASIC CONCEPTS

2.1 MEANING AND NATURE OF COPYRIGHT

The right which a person acquires because of his intellectual labour is called copyright. The
Copyright Act 1957 (hereinafter the ‘Act’) confers protection on all original literary, artistic,
musical or dramatic, cinematograph and sound recording works. Copyright protection
commences the moment a work is created, and its registration is optional. Copyright is a
negative right since it is in effect the right to stop others from doing a series of acts which
would constitute infringement. But certain uses covered under limitations and exceptions to
copyright, such as fair use, do not require permission from the copyright owner. All other uses
require permission and copyright owners can license or permanently transfer or assign their
exclusive rights to others.

2.2 SUBSISTENCE OF COPYRIGHT

According to the Act, copyright only subsists in works that fulfill the any of the following
conditions:

i) In case of a published work, (literary, artistic, dramatic or musical) it must first be

published in India [Section 5]; where it is first published outside India, author must have
been an Indian citizen on date of publication [Section 3]

ii) In case of an unpublished work, (other than a work of architecture) the author is a citizen
of or domiciled in India, on the date of making the work [Section 13 (2)(ii)]

iii) In case of an architectural work, if the work is located in India [Section 13(2)(iii)]

2.3 SUBJECT MATTER OF COPYRIGHT

Expression, not Ideas: Copyright protects works but not ideas. There is no copyright in mere
facts, content, schemes, systems or methods. It distinguishes between a work and the mere
content of a work. What is essentially protected is the way in which the content is expressed. The
principle behind this fundamental belief is to increase, and not impede the harvest of knowledge.
The purpose of copyright is not to created monopoly in ideas, but to extend protection to authors
and artists for their own expression of it.

An idea/expression dichotomy is created which can only be resolved by analyzing the work.
Idea which is a basic concept cannot be protected by copyright, but the protection is available to
the ideas which are applied in the exercise of giving expression to the basic concepts.

When a Court has to determine infringement, they consider if the alleged infringer actually
copied the work, i.e. the expression created by another author, or if he created his own work
merely using some of the same ideas and factual content

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Illustrations:

1. Baker v Selden 101 U.S. 99 (1879)

In 1859, Charles Selden obtained copyright in a small 20 page book he wrote called Selden's
Condensed Ledger, or Book-keeping Simplified where he described an improved system of
book-keeping. Later, Selden made several other books, improving on the initial system,
published through 6 editions. But there was no demand for the same. In 1867, W.C.M. Baker
produced a book describing a very similar system of book-keeping which was very successful
and was bought by 40 counties within five years. Selden's widow sued Baker for copyright
infringement. The US Supreme Court held that a book did not give an author the right to exclude
others from practicing what was described in the book. The court developed the theory of
idea/expression dichotomy distinguishing between patent and copyright law. Exclusive rights to
the ‘useful art’ described in the book, was only available by patent, whereas the mere description
was protectable by copyright law.

2. R.G. Anand v M/s. Delux Films AIR 1978 S.C.1613

Anand, a part time playwright and producer of stage plays alleged that the defendant, who was a
film-maker had copied substantial portions from his play “Hum Hindustani” and remade it into a
film titled “New Delhi”. The respondent denied this allegation and argued the theme of
provincialism used in the play and the movie was a common theme and was not an original idea
of the plaintiff.

The Supreme Court ruled that there can be no copyright in an idea, subject matter, themes, plots
or historical or legendary facts and violation of the copyright in such cases is confined to the
form, manner and arrangement and expression of the idea by the author of the copyright work.
Therefore, in this case, comparing the play and the film, the Court concluded that the film had
been presented and treated differently and that though there were some similarities appearing in
the two works, there were also material and broad dissimilarities which negated the intention to
copy the original and the coincidences appearing in the two works were clearly incidental. The
SC laid down a very elaborate test to resolve the idea/expression dichotomy.

2.4 FIXATION

A ‘work’ is something immaterial, existing independently of its different physical copies. The
copyright law requires that to qualify for copyright protection a work must have been fixed in
material form (though not necessarily by the author) in order to qualify for protection. e.g. a
literary work should have been written down or a musical work recorded in notation or
otherwise.
In case of ‘dramatic works’ for instance, section 2(h) of the Copyright Act 1957 requires the
work to be ‘fixed in writing or otherwise.’ It refers to a point of time prior to the acting or scenic
arrangement. The words ‘or otherwise’ only provides for the modern means of recording such as
tape-recorder or a Dictaphone and similar instruments.1

1
Fortune Films International v. Dev Anand AIR 1979 Bom 17 (DB)

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 2.5 ORIGINALITY
Copyright protects original works. This only means that to enjoy copyright in a work its author
should have created the work rather than reproducing another work. It does not mean that the
work has to be very novel or innovative: so we say that the standard of originality required for
copyright protection is low.
An author may borrow ideas and obtain factual content from any source including the works of
other authors, but if an author gives expression to such facts and ideas in a new work, it is an
original work: for example this course material contains no new ideas and no facts which will not
be found in other, existing published works, yet it is an original literary work. If a work could be
expressed in no other way, so that there is a convergence between its content and its expression,
it may not be protected by copyright. It is known as the ‘merger principle’.2
For any work to be ‘original’ for copyright purpose, there has to be some minimal creative,
intellectual contribution in the arrangement or presentation of material to make something
qualify as an original work.3
When there is an allegation of copying/reproduction: Since it is usually difficult to prove the
actual act of copying, the courts have to consider the similarities between works to decide
whether a work is original or has been copied from another. As a general rule, the courts will
consider the overall impression created by two or more works to decide whether a work is
original or is the reproduction of another.
Illustrations:

1. University of London Press v University Tutorial Press (1916) 2. Ch 60101

The question was whether ‘question papers’ set by examiners are "literary work" within the
meaning of the Copyright Act, 1911.

In this case, Examiners were appointed for a matriculation examination of the University of
London, a condition of appointment being that any copyright in the examination papers should
belong to the University. After the examination the defendant company issued a publication
containing a number of the examination papers, with criticisms and answers to questions.

It was held, that copyright subsisted in the examination papers as "original literary work" and
that the copyright vested in ‘examiners’ – but since the examiners were bound by their
appointment, to assign the copyright to the University, the copyright only vested with the
University and thus, the defendant company had infringed the copyright in the papers.

The De Minimus rule: Though a work might be very brief, some things are regarded as
insufficiently substantial to be treated as works. Thus a string of just a few words, or the title of
a work, or a name, would not normally be regarded as a work qualifying for copyright
protection.

2
Baker v Selden, Hollinrake v Truswell. 101 U.S. 99 (1879)
3
CCH Canadian Ltd. v. Society of Upper Canada [2004] SCC 13

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 2.6 WORKS

Types of work protected under the Copyright Act, 1957:

Section 13 of the Act specifies the classes of works in which copyright subsists. These are
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) sound recordings.’
Derivative Works: Secondary works based on existing subject matter, can also obtain protection
under the Copyright Act.

a. ‘Literary works’ include computer programs, tables and compilations including

computer databases [section 2(o)]. The basic form of literary work is something textual—
a piece of prose or verse, but this inclusive definition extends it to certain other things.
The word ‘literary’ is used in the same sense as literature and refers to written or printed matter –
irrespective of quality or style.
A ‘compilation’ is not necessarily a compilation of other literary works. A multimedia work is a
compilation that may incorporate literary, dramatic, musical and artistic works, films and sound
recordings; but the multimedia work as a whole is protected as a compilation, i.e. as a literary
work. For E.g. A Book on Mathematics which is a compilation of sums was held to be original
literary work since skill of author was required to select particular sums in a compilation.4
Some examples of literary works are Question Papers,5 Guide Books,6 Dictionaries,7 Catalogues,8
Tambola Tickets,9 Research theses and dissertations,10 Parodies,11 Translations of original works,
Compilations etc.
Written speeches and lectures only may form part of literary work if the lecture notes are
prepared in advance and written fixed in any definite way. Extempore speeches and lectures are
not protected by copyright.

b. ‘Dramatic work’ is given an inclusive definition [section 2(h)], under which it ‘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 but does not include
a cinematograph film’. A dramatic work typically involves not merely dialogue but a
series of incidents and situations; the definition extends to the whole composition of
arrangements for presentation on the stage, both visual and aural. It also extends to the

4
Misra Bandhu Karyalaya v. Shiv Ratan Lal Koshal, AIR 1970 MP 261
5
Jagdish Prasad v. Parameshwar Prasad Singh AIR 1966 Patna 33
6
E.M.Forster v. A.N.Parasuram AIR 1964 Mad. 331
7
V.Govindan v. E.M.Gopalakrishna Kone, AIR, 1955 Mad. 391
8
Collis v. Carter Stoffell & Fortt.Ltd. 1898 78 L.T. 613
9
Rai Toys Industries v. Munir Printing Press 1982 PTC 85 Del
10
Fateh Singh Mehta v. Singhal 1990 Rajasthan 1 PLR 69
11
Suntrust Bank v. Houghton Miffin Company, US 11th Circuit Court of Appeal, (dt. 10.10.2001) [Gone With the
Wind v. The Wind Done Gone].

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 screenplay used for a cinematograph film, but being textual in character are in any case
concurrently protected as literary works.
c. ‘Musical work’ [section 2(p)] means a work consisting of music and includes any
graphical notation of such work but does not include any words or any action intended to
be sung, spoken or performed with the music.
This definition was introduced by the amending Act of 1994 to extend protection to the notations
in which (mainly Western) music is recorded, which did not suit the needs of Indian music.
The author of a musical work is the ‘composer’ [S. 2(d)(ii)]. The ‘composer’ is the person who
composes the music regardless of whether he records it in any form of a graphical notation. [S.
2(ffa)].
Not only an original music composition, but any substantially new arrangement or adaptation of
an old piece of music is a proper subject of copyright.12 However, what is required to make
variations original is creative genius and not mere technical skill.13
A song does not enjoy copyright as a hybrid entity. The lyrics are protected as ‘literary work’,
while the music as a ‘musical work.’

d. ‘Artistic work’. The definition [section 2(c)] is exhaustive, not inclusive, and lists three
kinds of artistic works:
i) ‘a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an
engraving or a photograph, whether or not any such work possesses artistic quality’
It is not difficult to identify something as a painting, sculpture, drawing, engraving or
photograph. Importantly, artistic quality is immaterial. Section 2(za) clarifies that a ‘work of
sculpture’ includes casts and models.
ii) ‘a work of architecture’[section 2(b)]: any building or structure having an artistic character
or design, or any model for any such building or structure.
- the standard of originality remains low and
- artistic character does not mean artistic merit: an architectural work that most
people think is ugly might still be protected by copyright.
Section 13(5) further clarifies the nature of a ‘work of architecture’ by laying down that
‘copyright shall subsist only in the artistic character and design and shall not extend to
processes and methods of construction.
iii) ‘any other work of artistic craftsmanship’: Something that is not a painting, a sculpture, a
drawing, an engraving, a photograph or an architectural work, but which nevertheless
displays some artistic craftsmanship. Works of artistic craftsmanship may include such
everyday useful objects as furniture, pottery, cutlery, jewellery, etc.
Here the possession of some artistic quality or character is vitally important to distinguish a
copyrighted work from objects not protected by copyright. It does not mean artistic merit,
but some artistic feature or characteristic that does not arise purely from the use for which the
object is intended.
12
Redwood Music Ltd v. Chappell & Co.[1982] RPC 109.
13
Grignon v. Roussel (1991), 38 C.P.R. (3d) 4 (F.C.T.D.).

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However the law of copyright is not intended to protect mass-produced useful objects, even if
they possess original artistic character. The artistic design features of a useful object are
normally capable of registration under the Designs Act, 2000. Under section 15 of the Copyright
Act, copyright protection ceases if the copyright owner makes or authorises the making of more
than 50 copies of such a design by an industrial process; the protection available in such a case
would be that provided by the Designs Act.

2.7 AUTHORSHIP

Authorship under the Copyright Act, 1957: Section 2(d) of the Copyright Act defines what
the term ‘author’ means in relation to different kinds of work:
- In relation to a literary or dramatic work, the Act does not give any special definition, nor
is one necessary.
- The author of a musical work is the ‘composer’. Section 2(ffa) defines the composer as
‘the person who composes the music regardless of whether he records it in any form of
graphical notation.’
- The author of an artistic work other than a photograph is the ‘artist’. This refers to the
person who paints a painting, who sculpts a sculpture, who draws a drawing or who
engraves an engraving.
- The author of a photograph is the person who takes the photograph.
- The author of a cinematograph film or sound recording is the producer. A producer in
this context is defined in section 2(uu) as ‘the person who takes the initiative and
responsibility for making the work’. As we have seen, the producer of a film or sound
recording under our law may be either a natural or a legal person.
- The author of a literary, dramatic, musical or artistic work that is computer generated is
‘the person who causes the work to be created’.
In all cases, a person has to create an original work, in the copyright sense that we have
discussed, in order to enjoy the rights of an author in it.

2.8 OWNERSHIP OF COPYRIGHT

The essential purpose of copyright is, subject to the interests of the public, to protect the interests
of authors in relation to their works. Normally, the author is the first owner of copyright, and he
may exploit the work by assigning it, or by licensing the use of it, to others. However, in certain
circumstances, the law may provide for some other person (natural or juridical) to be the first
owner of copyright. In India, section 17 of the copyright provides for the following cases where
(in the absence of any agreement to the contrary) the first owner of copyright is someone other
than the author:
a.If an author creates a literary, dramatic or artistic work in the course of employment in a
newspaper, magazine or similar periodical, which is for the purpose of publication in the
periodical, then the proprietor is the first owner of copyright for the purpose of such
publication, though not for other possible uses of the work.

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 b. In the case of certain commissioned works—viz. a photograph, painting or
portrait, or engraving or cinematograph film made for valuable consideration at the
instance of another person—the first owner of copyright is the person commissioning the
work, not the author.
c.In all other cases where the author creates the work in the course of employment, i.e.
where he creates it while performing the job for which his employer has hired him, the
employer is the first owner: in other words, the limitation on the employers’ ownership in
the first case of above would not apply where the employer is not a newspaper or
periodical.
d. The person who delivers a speech, or where the speech is read out by someone
else then the person on whose behalf it is delivered, is the first owner of copyright, no
matter who actually drafted the speech.
e. In the case of works published by or under the direction or control of the
Government, or a Government undertaking, Government company or statutory body, or an
international organisation notified by the Government [section 41] the Government or
corresponding employer is the first owner of copyright.
In all the above cases, the stated rules are subject to any contractual agreement to the contrary.
Thus it is possible for an author to protect his rights, subject to what the other party will agree to,
by negotiating an agreement under which he retains copyright.

2.9 DURATION OF COPYRIGHT

The term of copyright under the Berne Convention and under the TRIPS Agreement is 50 years
post mortem auctoris (p.m.a.) i.e. after the author’s death.
- In fact this period is counted from the 1st of January following the author’s death, so that
it always ends on the 31st of December and we are all spared the need to remember so many
birthdays.
- In certain cases, like cinematograph films or where the author’s identity is not disclosed,
this period may be counted from the year of publication.
- There has been a tendency in some countries to extend this term, and in India also it was
extended to 60 years p.m.a. by the amending Act of 1992. The main arguments for and
against a longer period may be summarised as follows:

The term of copyright under the Copyright Act, 1957: Chapter V [sections 22-29] of the
Copyright Act, 1957 deals with the term of copyright. Needless to say, the term of copyright
begins the moment a copyrighted work is created; these provisions lay down the rules for
determining when copyright in a work ends and it falls into the public domain.

- Literary, dramatic, musical and artistic works (except photographs): The term is
generally sixty years from the beginning of the calendar year next following the year in

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 which the author dies. Thus if an author dies on 2nd January 2010, the term of copyright will
continue for sixty years from 1st January 2011, i.e. until 31st December 2061.
- If there are two or more authors, i.e. it is a case of joint authorship, the above term will be
determined by the date of death of the author who dies last.
- If the work is published pseudonymously or anonymously, the period of sixty years will
be counted from the beginning of the calendar year next following the year of publication.
- But if the identity of the author of such a (pseudonymous or anonymous) work is
disclosed before the work falls into the public domain, the term will be the usual one for
known authors.
- If such a (pseudonymous or anonymous) work is a work of joint authorship, and the name
of one or more of such authors is disclosed before the work falls into the public domain, then
copyright continues for sixty years from the beginning of the year following the death of the
last author whose name has been disclosed. [sections 23 (2) and 23 (3)]
- The explanation to section 23 lays down two circumstances under which the identity of
the author of a work published anonymously or pseudonymously is deemed to have been
disclosed:
• if it is disclosed publicly by both the author and the publisher or
• if the identity of the author is established to the satisfaction of the Copyright
Board by that author.
For either of these circumstances to exist, it is necessary for the author to make the claim,
which of course he can only do while he is still alive. It would, thus, appear to be the
intention of the statute that the benefit of extension of the term to sixty years p.m.a. rather
than from the date of publication should be available only if the anonymous or
pseudonymous author of the work—or at least one such author in the case of a work of joint
authorship—himself participates in the disclosure of his identity. It is reasonable that this
should be so, since it would be inconsistent with an author’s own decision, to conceal his
identity, to base the term of copyright on such identity rather than on the date of publication.

2.10 PUBLIC DOMAIN

We have been considering works protected by copyright. It is worth reminding ourselves how
much of the intellectual and cultural wealth of humankind lies in works which are not so
protected. This is called the public domain.
Much of it is folklore without an identifiable author. It is usually considered both natural and
desirable that works in the public domain should be freely available not only for reproduction but
for adaptation and other forms of exploitation for the creation of new works which, if they meet
the test of originality, will enjoy copyright.14
Once a work falls into the public domain, and is exposed to such use as well as direct
exploitation, it is not considered appropriate to bring it back within the sphere of copyright
protection.

14
Eastern Book Company v. D. B. Modak, (2008) 1 SCC 1.

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 3. RIGHTS

The exclusive rights enable an author to enjoy in respect of his work. Section 14 of the Copyright
Act, 1957, lists out the rights conferred by the said Act, is entitled ‘The meaning of copyright’.
These exclusive rights are negative in character, meaning that the author’s exclusive rights
enable him to prevent others from exercising them without his consent: his own right to circulate
or exhibit his work must remain subject to national law or regulation. Thus if the Government of
the author’s own or another country bans the circulation of a book, this will not be regarded as
infringement of the author’s copyright.
The author’s exclusive rights are, further, grouped under two major heads, economic rights and
moral rights. The term ‘copyright’ as used in the Copyright Act, 1957 and defined in section 14
is limited to the economic rights; moral rights are provided for separately in section 57 as the
‘author’s special right’.

3.1 ECONOMIC RIGHTS

3.1.1 Associated Economic Rights – as per the Berne Convention

i. The right of reproduction: This is the most basic of the author’s rights. An exclusive
right to authorise the reproduction of their works ‘in any manner or form’ and also specifies
that a sound or visual recording of a work is reproduction. Reproduction may be direct (i.e.
of a work) or indirect (of a reproduction of the work).
ii. The rights of adaptation and translation, and the cinematograph right: Any author of a
derivative work before creating such a derivative work from an existing work, requires
permission from the author of the existing work. or, in the case of a translation, an exclusive
‘right of translation’ which also specifically extends to the public performance of a
translation. The right to make a cinematograph film out of a pre-existing work by adapting
or reproducing it is of a similar character.
• The right of distribution: It is necessary for an author to enjoy an exclusive right over the
initial distribution of copies of his work; this flows logically from the right of reproduction.
After the first sale of a particular copy this right is normally said to have been exhausted: the
purchaser is free to resell or otherwise dispose of the copy he has bought.
• The right of public performance: The exclusive right to authorise the public perfomance of
a work including a translation of it, is of very basic importance to the authors of those works
—dramatic, dramatico-musical or musical—which are created primarily for such
performance.
The question as to what constitutes a public performance is very important, as there is no
restriction on private performances. The mere fact that the public does not have free
access to the venue of the performance is not sufficient to characterize it as a private
performance.

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• The broadcasting right: An exclusive right to authorise broadcasting of the work by radio or
television, or their communication to the public by wire. This right extends to rebroadcasting
and communication of the broadcast to the public by other means like loudspeakers: thus the
fact that an author has authorised a broadcast does not authorise, say, a shopkeeper or
restaurant owner to attract custom by making the broadcast available by such means. The
broadcasting right may, however, be subject to a compulsory license.

3.1.2 Changes in economic rights arising out of recent developments:

Advances facilitating the reproduction of works, as well as the advent of digital technology, have
also necessitated the improvement or elaboration of existing ones.
The right of reproduction has been elaborated in some national laws to make it explicit that the
storing of a work by electronic means amounts to reproduction of it.
Rental rights in respect of computer programmes and cinematographic works are required by the
TRIPS agreement. The introduction of rental rights marked a departure from the old exhaustion
doctrine; it has been necessitated by the ease with which the works to which it applies can be
copied and illegal copies put to profitable use.

3.1.3 Economic Rights available under the Copyright Act 1957

Section 14 of the Copyright Act, 1957: As already stated, Section 14 provides for all the
economic rights covered by the Berne Convention except droit de suite (special rights for
struggling artists for re-sale of their works) and all the rights, in the sphere of copyright as
distinct from neighbouring rights, required by the TRIPs Agreement. It goes further than Berne
Convention and the TRIPs Agreement in some respects.
In the case of a literary, dramatic or musical work, other than a computer program, the copyright
owner enjoys the exclusive right to reproduce the work in any material form, including the
storing of it in any medium by electronic means.
• The copyright subsists in original literary, dramatic, musical and artistic works;
cinematographs films and sound recordings. The authors of copyright in the aforesaid
works enjoy economic rights u/s 14 of the Act.
• The rights are mainly, in respect of literary, dramatic and musical, other than computer
program, to reproduce the work in any material form including the storing of it in any
medium by electronic means, to issue copies of the work to the public, to perform the work
in public or communicating it to the public, to make any cinematograph film or sound
recording in respect of the work, and to make any translation or adaptation of the work.
• In the case of computer program, the author enjoys in addition to the aforesaid rights, the
right to sell or give on hire, or offer for sale or hire any copy of the computer program
regardless whether such copy has been sold or given on hire on earlier occasions.
• In the case of an artistic work, the rights available to an author include the right to
reproduce the work in any material form, including depiction in three dimensions of a

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 two dimensional work or in two dimensions of a three dimensional work, to communicate
or issues copies of the work to the public, to include the work in any cinematograph
work, and to make any adaptation of the work.
• In the case of cinematograph film, the author enjoys the right to make a copy of the film
including a photograph of any image forming part thereof, to sell or give on hire or offer
for sale or hire, any copy of the film, and to communicate the film to the public. These
rights are similarly available to the author of sound recording.
• In addition to the aforesaid rights, the author of a painting, sculpture, drawing or of a
manuscript of a literary, dramatic or musical work, if he was the first owner of the copyright,
shall be entitled to have a right to share in the resale price of such original copy provided that the
resale price exceeds rupees ten thousand.

3.2 MORAL RIGHTS

The term “moral rights” is a translation of the French term “droit moral” which refers to the
author’s ability to control the eventual fate of their work.They protect the personal and
reputational value of a work and not merely its monetary value.
These rights are perpetual, inalienable (not transferrable), and at times descend to the heirs of
the author. Even after assignment/licensing of a work to another person, moral rights continue to
vest with the author subject to express waiver of the same in writing. The scope of these rights is
unclear and differs from work to work.
They arise from the French concept that a creative work contains the personality of its creator or
author. Personality is not transferable, which is why the author always retains moral rights. The
French term for copyright literally means ‘author’s right’. Article 6 bis of the Berne Convention
places high relevance on preserving integrity of the author’s creation by virtue of remedies
available to authors under their general law relating to such matters as contract, unfair
competition and defamation.
The Right of Paternity or Attribution
The right to claim authorship of the work; exercise of this right involves the author’s right to
have his name appear at an appropriate place on copies of the work (or not appear on them if he
prefers anonymity or use of a pseudonym) and a right to prevent others from claiming authorship
of his work. The main difference between right of paternity in common law and civil law
countries is that in the former the author’s right to accreditation is usually created by contract,
whereas in countries with express moral rights provisions it exists by law and may only be
waived (where this is permitted) by contract.
The Right of Integrity
The right to object to any distortion, mutilation or other modification of, or any derogatory action
with respect to the original work which would be prejudicial to the honour or reputation of the
author. It does not confer the authority to object to any alteration, adaptation or editing of the
work but only to those which are considered (by the author and then the court) to be derogatory.
This right has assumed great importance with increase in opportunity to manipulate any original
work by digital means.

15
Exceptions to the Rights of Paternity and Integrity
Exceptions and qualifications to the rights of paternity and integrity were introduced to placate
different copyright interests on the grounds that otherwise moral rights would cause greater
burdens than benefits. They are as follows:
1. Computer programs and computer generated works: None of the above rights apply to
computer programs because of practicality. Giving authors of computer programs
paternity right would be impractical. It is worth observing that even in France, where
legal recognition of moral rights is fully developed, there are no such rights in computer
programs.
2. Employees: Employees producing original work in the course of their employment
cannot exercise any paternity rights in anything done by or with the authority of their
employer or a subsequent copyright owner except if they are authorized to do so by
contract.
3. Reporting current events: The rights of paternity and integrity do not apply in relation to
any work made for the purpose of reporting current events.
4. Publishing in newspapers, magazines or similar periodicals; and publications in
encyclopedias, dictionaries, year-books or other collective works of reference also do not
attract these rights.
Illustration:
Frisby v. British Broadcasting Corp
The plaintiff was commissioned by British Broadcasting Corporation (BBC) to write a television
play. BBC contractually reserved the power to make minor non-structural alterations to the script
without the consent of the author. The dispute turned on whether the BBC could delete one line
of the script which it regarded as a minor alteration but which the author considered to be of
great importance to his play. The issue was whether the contract had effected limited assignment
of copyright putting BBC in a stronger position or it was merely a copyright license. The court
concluded that only a license had been granted, that it was proper to imply into it a term limiting
the right to make alterations, and that weight had to be given to the author's view that the line
was structural. So, the court indirectly protected the integrity interest of the author.15
Features of Moral Rights
• Right of disclosure: The author has the final decision on when and where to publish. In
French law, called ‘droit de divulgation’. The publisher cannot modify the author's work,
except with his written consent.
• Right to withdraw or retract: If the author’s views change, he can purchase at
wholesale price all the remaining copies of the work and prevent printing of fresh ones. It
is called ‘droit de retrait ou de repentir’.
• Right to reply to criticism: The author’s right to reply to a critic and have the reply
published in the same place as the critic's expression. It honors the doctrine of Justice
Brandeis that the proper remedy is ‘more speech’.

15
Frisby v. British Broadcasting Corp., 1967 Ch. 932 (Eng.).

16
Independence from economic rights: Moral rights being necessarily of a character personal to
the author, he retains them even if he has transferred his economic rights. 16 He must certainly
retain them during his lifetime; countries which do not provide for a longer term at the time of
accession to the Convention are exempt from the normal requirement that moral rights shall be
maintained at least until the expiry of economic rights.

Moral Rights in India

Section 57, Copyright Act: Section 57 of the Copyright Act, 1957 provides for the two forms
of moral right mandated by the Berne Convention in substantially the same terms as the
Convention. Under our Act, these rights are termed the ‘author’s special right,’ the term
‘copyright’ being reserved for economic rights. We may note the following additional points
about this provision:
• The right of integrity may be exercised only before the expiration of the term of
copyright, but there is no such restriction on exercise of the right of paternity.
• Failure to display a work, or to display it to the author’s satisfaction, is not an
infringement of the author’s special right (Explanation to section 57). The most obvious
application of this is to artistic works: a painter or sculptor, for example, would not be
able to complain that his work had not been displayed, or displayed with sufficient
prominence, by the owner of the original or any copy of it.
• The adaptation of a computer program to utilise it for the purpose for which it was
supplied (interoperability) or for purposes of backup would not infringe the author’s
special right. This may seem too obvious to have needed inclusion in the Act, but has
clearly been inserted to prevent any possible obstruction of such legitimate adaptations to
computer programs.

3.3 LIMITATIONS ON EXCLUSIVE RIGHTS

The traditional exceptions

Copyright confers a wide range of rights on authors. It is necessary, therefore, to allow for
exceptions, special cases where these rights do not apply: normal life would be difficult without
such exceptions. Some exceptions are as follows:
• News & quotations: These are the two exceptions, which the Convention provides for
directly rather than leaving the matter to national law. Article 2(8) excludes ‘news of the
day’ and ‘miscellaneous facts having the character of mere items of press information’
• Facts are not a subject matter of copyright anyway; the intention here is that a news
report must do something more than simply telling the facts for it to qualify as a work;
whether it shows sufficient intellectual contribution for the purpose must remain a
question for the courts to consider in a particular case.
• Reproduction of extracts is permitted (not necessarily verbal) from a work already
lawfully available to the public if (a) they are ‘compatible with fair practice’ and (b) they
are not longer or larger than necessary. An author can fairly use extracts from the work
16
Articles 6, 19, 29 of French Law No. 57-298 of 11 March 1957; Article 6bis of Berne Convention.

17
 of others to bring home or illustrate a point, not as a substitute for his own labour or want
of ingenuity.

Exceptions left to national legislation

Article 9(2) leaves it to national legislation to allow the reproduction of protected works ‘in
certain special cases’ subject to two further conditions, (a) that it does not conflict with a normal
exploitation of the work and (b) that it ‘does not unreasonably prejudice the legitimate interests
of the author’.
• The most obvious example that will spring to mind is the reproduction of a work, or part
of a work, for one’s own private reference or use.
• ‘Normal exploitation’ means the ways in which the author is normally able to use his
copyright: a novel is exploited by allowing the publication and sale of copies of it, or
permitting a film to be made of it; a cinematograph work in turn is normally exploited by
showing it in theatres, selling video rights and allowing it to be broadcast and transmitted
by cable, etc.
• The term ‘unreasonable prejudice’ implies that some prejudice is inevitable, and therefore
that it should be minimized, e.g. by restricting the number of copies that may be
reproduced, etc. The national legislature is obliged by the Convention to consider these
factors while enacting legislation on the subject.

3.4 THE ‘FAIR – USE’ EXCEPTION

Section 52 of Copyright Act, 1957

Section 52, entitled ‘Certain acts not to be infringement of copyright’ is the longest section in the
Copyright Act, far longer than section 14, which enumerates the exclusive rights of copyright
owners.
Sub-section (1) lists the non-infringing acts while sub-section (2) extends the applicability of the
exceptions listed in sub-section (1) to the same acts if done in relation to a translation or
adaptation, as may be the case, of a literary, dramatic, musical or artistic work.

The length of section 52 does not mean that there are too many exceptions, but is merely
because, while the rights conferred are general in nature (like the right to reproduce a work in
material form), the exceptions have to be specific (like the right to reproduce a work for personal
use, or the use of a legislature or a court, etc) and, therefore, have to be spelt out in full.

Fair dealing: The term fair dealing is used in clauses (a) and (b) of sub-section (1).
• The American term ‘fair use’, which is often used in discussion of copyright law, is
interchangeable with ‘fair dealing’.
• This is a general term, developed through case law, for cases where an author uses
another work, not to exploit the latter directly but to make an acceptable use of it for the

18
 purposes of his own work; it would not be fair dealing to use so much of the other work,
or to use the other work in such a way, as to create a substitute for it.
• Examples of such fair dealing include the use of quotations or extracts to illustrate or
corroborate a point being made in one’s own work: but a line would have to be drawn
between this legitimate activity and the inclusion of extracts from another’s work as a
substitute for creating one’s own expression.
• Another long-established form of fair dealing is parody: this is a legitimate form of
criticism, a parody is very much an original work, yet by its very nature it must make use
of the work parodied.

Section 52 should be referred to in detail. The exceptions it lists include:

 Fair dealing for private use including research, criticism or review, for reporting current
events, etc.
 In the case of computer programs, for purposes of interoperability, reverse engineering
and back-up; and any copies made for personal, non-commercial use.
 Reproduction for the use of courts and legislatures; the reproduction of public
notifications; the reproduction of Acts of legislatures with commentary.
 Use in educational institutions or in the course of education, in the specific cases spelt out
in section 52.
 ‘Cover versions’ referred to in section 52(1)(j); this is discussed further below.
 The playing of sound recordings as a common facility in non-commercial places of
residence or non-profit clubs etc.; amateur performances for non-paying audiences;
similar acts in the course of official functions.
 The two-dimensional reproduction of architectural works and of other artistic works if
they are permanently situate in public places.
 Various other uses of copyrighted works. The above list is purely descriptive and,
further, it should be noted that the precise scope of exemption would be limited strictly to
the actual language of the statute, which must be referred to.
 Cover versions (section 52(1)(j)) are an example of a statutory licence: i.e. an instance
where the law itself confers a licence for the use of a copyrighted work in certain
circumstances, and subject to certain conditions,. As the provision has been controversial
in India, it merits some discussion here.
 Under section 52(1)(j), if a sound recording of the work has been made with the consent
of the rights owner, then another person intending to make another sound recording of it
has only (subject to certain conditions that will be discussed below) to give the rights
owner notice of his intention, provide him with copies of all covers and labels, and pay
royalty as prescribed by the Copyright Board.
 The rationale for this provision is that once a sound recording of a musical work or of a
song—which is a musical work (the tune) combined with a literary work (the lyric)—has
been published, others should be able to record other performances of the same music or
song and sell such recordings; they must pay a royalty to the copyright owners but should
not be prevented from making such ‘cover versions’ and it must be reasonably
convenient for them to do so. This is one of the ways in which copyright law seeks to

19
 balance the interests of rights holders with those of the general public: popular songs are
part of the common popular culture and to that extent may be thought of as belonging in
some sense to the public, even though they may not have fallen into the public domain.
 The same objective can be achieved without a statutory licence if there is an effective
copyright society from which licences for ‘cover versions’ can be obtained without undue
difficulty. This is the case in many countries. However in the United States as well as in
India, the statutory licence for cover versions continues.
 In India the main criticism of the provision is that it is misused: the makers of the cover
version may (and in fact often do) grossly understate the number of copies they intend to
make, and thus fail to pay proper revenue. They also sometimes mislead the public into
buying their product under the impression that it is the original version.
 Some safeguards, to deal with this, are built into the statute: no misleading labels or
packaging; no cover version until two years after the first recording; the rights owner is
allowed to inspect the records and accounts of anyone making cover versions; and
recourse to the Copyright Board.

20
 4. REGISTRATION OF COPYRIGHT
(Section 44 to 50A)
Copyright comes into existence as soon as a work is created and no formality is required to be
completed for acquiring copyright. However, the Act provides for registration of copyright
which constitutes only prima facie evidence of the particulars entered in the Register of
Copyright. Section 44 mandates that a Register of Copyrights at the Copyright Office in which
the particulars relating to the work such as the names and addresses of the authors, publishers,
owners of copyright etc., may be entered. According to Section 48 of the Act the Register of
Copyrights shall be prima facie evidence of the particulars entered therein, or extracts thereof,
certified by the Registrar and sealed by the seal of the Copyright office shall be admissible as
evidence in all court of law without further production of the proof of original.

As per the ‘Handbook of Copyright Law’ published by the Government of India the following
are the guidelines registration of a work.
Chapter VI of the Copyright Rules, 1956, as amended, sets out the procedure for the
registration of a work. Copies of the Act and Rules can be obtained from the Manager of
Publications, Publication Branch, Civil Lines, Delhi or his authorised dealers on payment.
The procedure for registration is as follows:
a. Application for registration is to be made on Form IV ( Including Statement of
Particulars and Statement of Further Particulars) as prescribed in the first schedule to
the Rules ;
b. Separate applications should be made for registration of each work;
c. Each application should be accompanied by the requisite fee prescribed in the
second schedule to the Rules; and
d. The applications should be signed by the applicant or the advocate in whose
favour a Vakalatnama or Power of Attorney has been executed. The Power of
Attorney signed by the party and accepted by the advocate should also be enclosed.
Each and every column of the Statement of Particulars and Statement of Further Particulars
should be replied specifically.
Both published and unpublished works can be registered. Copyright in works published before
21st January, 1958, i.e., before the Copyright Act, 1957 came in force, can also be registered,
provided the works still enjoy copyright. Three copies of published work may be sent along with
the application. If the work to be registered is unpublished, a copy of the manuscript has to be
sent along with the application for affixing the stamp of the Copyright Office in proof of the
work having been registered. In case two copies of the manuscript are sent, one copy of the same
duly stamped will be returned, while the other will be retained, as far as possible, in the
Copyright Office for record and will be kept confidential. It would also be open to the applicant
to send only extracts from the unpublished work instead of the whole manuscript and ask for the
return of the extracts after being stamped with the seal of the Copyright Office.
When a work has been registered as unpublished and subsequently it is published, the applicant
may apply for changes in particulars entered in the Register of Copyright in Form V with
prescribed fee.

21
 5. ADMINISTRATION OF COPYRIGHT

Is there any advisory body on copyright matters?

Yes. The government has set up a Copyright Enforcement Advisory Council (CEAC). The
present composition of the CEAC is at Appendix- II.

Are there special courts for copyright?

No. There are no special courts for copyright cases. The regular courts try these cases. There is a
Copyright Board to adjudicate certain cases pertaining to copyright.

What are the powers of Copyright Board?

The Copyright Act provides for a quasi-judicial body called the Copyright Board consisting of a
Chairman and two or more, but not exceeding fourteen, other members for adjudicating certain
kinds of copyright cases. The Chairman of the Board is of the level of a judge of a High Court.
The Board has the power to:
1. to hear appeals against the orders of the Registrar of Copyright;
2. to hear applications for rectification of entries in the Register of Copyrights;
3. to adjudicate upon disputes on assignment of copyright;
4. to grant compulsory licences to publish or republish works (in certain circumstances)
5. to grant compulsory licence to produce and publish a translation of a literary or dramatic
work in any language after a period of seven years from the first publication of the work
6. to hear and decide disputes as to whether a work has been published or about the date of
publication or about the term of copyright of a work in another country;
7. to fix rates of royalties in respect of sound recordings under the cover-version provision;
and
8. to fix the resale share right in original copies of a painting, a sculpture or a drawing and
of original manuscripts of a literary or dramatic or musical work.

Has the Registrar of Copyrights any judicial powers?

Yes. The Registrar of Copyrights has the powers of a civil court when trying a suit under the
Code of Civil Procedure in respect of the following matters, namely,
1. summoning and enforcing the attendance of any person and examining him on oath;
2. requiring the discovery and production of any document;
3. receiving evidence on affidavit;
4. issuing commissions for the examination of witnesses or documents;
5. requisitioning any public record or copy thereof from any court or office;
6. any other matters which may be prescribed. One of the primary conditions for enforcing
your right in any property dispute is to establish a clear title of ownership. This is no
different in the case of intangible property as well.

22
 5.1 EXPLOITATION OF THE WORK: TRANSFER OF COPYRIGHT

Negative Right: The rights conferred under copyright are negative in nature. It enables the
copyright owner to stop others from exploiting the work without express consent. Copyright is a
bundle of rights, which can be exploited independently. The rights conferred under each category
of works can be utilized in exploitation of the work either separately or together.

Economic Rights: The rights conferred by section 14 are referred to as economic rights as the
transfer of these rights for exploitation of the work results in economic benefit to the author. The
owner of copyright may exploit the work herself or authorize others to do so by transferring one
or more of the rights for a consideration. Such consideration is referred to as royalty.

Exploitation of the Rights: Copyright is a bundle of rights. Each of these rights can be jointly
and severally exploited. For example, in the case of a novel, there are various rights which can be
separately exploited. It can be published as a book, or serialized in magazines or newspapers. It
can be translated, dramatized or made into cinematograph films. Each of these acts may involve
a right granted to the author by the law. Each of these rights can be transferred either wholly for
the term of copyright or for a limited term. They can also be transferred with geographic
restrictions; for example, film rights are often transferred territorially. Such transfer can be done
through assignment or through licensing. Both these terms have legally significant differences
and should be understood in that context.

5.2 ASSIGNMENT OF COPYRIGHT: SEE, SECTIONS 18, 19 AND 19A

An assignment of copyright is in essence a transfer of ownership in the copyright of the work.

An assignment may be for whole of the rights or for part only. A valid assignment of copyright
in any work can be made only in writing. An oral assignment is invalid in law. An assignment
should be in writing.

An assignment is a contract entered into between two parties and it need not be in any special
form and no particular words are required to constitute an assignment. But section 19 (1) of the
Act mandates that an assignment should be in writing and should be signed by the assignor or his
duly authorized agent. An assignment deed in relation to a work should specify the following
particulars:

1) identification of the work assigned, (19(2))

2) specify the rights assigned (19(2))
3) duration of the assignment (19(2))
4) territorial extent of such assignment (19(2))
5) specify the amount of royalty payable (19 (3)) and
6) shall be subject to revision, termination or extension on terms mutually agreed upon by
the parties(19(3)).

23
Where the assignee does not exercise the rights assigned within a period of one year form the
date of assignment, the assignment in respect of such rights shall be deemed to have been lapsed
after this period of one year unless otherwise specified in the assignment. If the period of
assignment is not stated it shall be deemed to be five years from the date of assignment. The
territorial extent of not specified shall be deemed to be the whole of India.
In respect to a particular work each of the rights specified in section 14 may be assigned to
different persons. Thus, assignment may be made either partially or wholly and either generally
or subject to limitations and either for the whole term of the copyright or any part thereof. It may
also be limited to a particular territory. A person who holds a right from the author himself may
further assign the rights.
An assignee can sue for infringement of rights without joining the assignor since he is the
exclusive owner of the rights subject to assignment. A partial assignee can also independently
sue for infringement.

An author of a work who has assigned some or all the rights does not enjoy those rights anymore
and cannot exercise them anymore without attracting the charges of infringement. If the author
infringes any of the rights assigned the assignor can sue the author for infringement.

5.3 FUTURE WORKS

Section 18 provides that copyright can be assigned even in respect of future works of the author
before their coming into existence. But in such cases the assignment will take effect only when
the work comes into existence.

5.4 DISPUTES WITH RESPECT TO ASSIGNMENT: SECTION 19A

If an assignee fails to make sufficient exercise of rights assigned to him, and such failure is not
attributable to any act or omission of the assignor, the Copyright Board may, on receipt of a
complaint from the assignor and after holding such enquiry as it may deem fit, revoke the
assignment.

However no order for revocation of the assignment will be passed unless it is satisfied that the
terms of the assignment are harsh to the assignor in case the assignor also is the author. Further,
no order of revocation will be passed within five years form the date of such assignment.

5.5 TRANSMISSION OF COPYRIGHT BY OPERATION OF LAW: SECTION 20

Copyright being in the nature of personal property right can be transferred by testamentary
disposition or by operation of law as in the case of real properties. Section 20 provides that the
manuscript of a literary dramatic or musical work or an artistic work has been bequeathed to a
beneficiary without specifically bequeathing the copyright the bequest will carry with it the
copyright also unless a contrary intention appears from the will.

24
5.6 RELINQUISHMENT OF COPYRIGHT: SECTION 21

The author of a work may relinquish all or any of the rights comprised in the copyright in any
work by giving notice to the Registrar of copyright in the prescribed form. The Registrar will
cause the notice to be published in the official gazzatte or in other ways.

5.7 LICENSES

A license is an authorization of an act, which, without such authorization becomes infringement.

In essence a license is a grant of authority to do a particular thing which other wise could not
have been done. It amounts to a consent or permission granted by the owner of copyright that the
licensee could carry out a restricted act which but for such permission could have been an
infringement.

The Act provides that the owner of copyright in an existing work or the prospective owner of
copyright in a future work ‘may grant any interest in the right by license in writing signed by him
or his duly authorized agent’ (Section 30). The license so granted should be in writing and
should be signed by the copyright owner or by his duly authosrised agent.

Exclusive and Non Exclusive Licenses

The licenses may be exclusive or non exclusive. Non exclusive license has not been defined in
the act. The term “exclusive license” has been defined in the Act in section 2(j) as a license
which confers on the licensee and persons authorized by him, to the exclusion of all other
persons (including the owner of the copyright), any right comprised in the copyright in the work.

A non exclusive license on the other hand does not convey any right of exclusion. It is only a
grant of an authority to do a particular thing which other wise would have constituted
infringement. When a right owner grants an exclusive right, he denudes himself of all the rights
and retains no claim on the economic rights so transferred. In the case of non exclusive license
the licensor retains the rights to grant further licenses.

License and Assignment

A license is different from an assignment. In an assignment there is transfer of ownership of the
rights. The assignment leaves nothing in the grantor qua the right assigned bestowing in the
grantee the whole of the legal interest in the right. Thus an assignee can sue for the infringement
of the right assigned.
Thus in an assignment, the assignee becomes the owner of the interest assigned whereas in the
case of a license the licensee gets the authorisation to exercise particular rights subject to the
conditions of the license but does not become the owner of the right. A licensee cannot sue for
infringement of copyright unless he joins the copyright owner as a co plaintiff in the action.
Section 61 of the Act provides that in every civil suit or other proceeding regarding infringement
of copyright instituted by an exclusive licensee, the owner of copyright shall be made a
defendant, unless the court otherwise directs. In such situations the owner of the copyright can
dispute the claim of exclusive license. This provision thus protects the interests of the right
holders.

25
Form and Content of License- Section 30, 30A: The provisions relating to assignment detailed
in sections 19 and 19A are applicable in the case of licenses also. Hence a license deed also
should be in writing specifying the rights so licensed. As drawn from section 19 relating to
assignment a license deed should contain the following particulars:

1) identification of the work licensed,

2) specify the rights
3) duration of the license
4) territorial extent of the license
5) the amount of royalty payable and
6) shall be subject to revision, termination or extension on terms mutually agreed upon by
the parties.

If the rights licensed are not specified it will be presumed that the licensor has granted all
rights under the Act. If the licensee does not exercise the rights licensed to him within one year
from the date of license, the license in respect of such rights will be deemed to have lapsed after
the expiry of one year unless otherwise specified in the license deed.

If the period of license is not stated it will be deemed to be five years from the date of
license. If the territorial extent is not specified it will be presumed to extent to the whole of India.

Revocation of License by the Board: If the licensee fails to make sufficient exercise of the
rights licensed to him and such failure is not attributable to any act or omission of the licensor
the licensor may make a complaint to the Copyright Board which after holding an enquiry may
revoke the license.

Kinds of Licenses:
Licenses contemplated in the Act fall under two categories:
1) licenses granted by the author or voluntary licenses
2) licenses granted under compulsion or as per the operation of law, or granted by the
copyright board under the terms of the Act, termed as compulsory license.
Voluntary licenses could either be exclusive license or non exclusive license as discussed in the
preceding paragraphs. In the second category, the Act provides for compulsory licenses in four
instances as set out below:

1. Compulsory license to republish or perform in public

‘Indian works” already published or performed in public, but thereafter withheld
from public. (Section 31).
The compulsory licensing contemplated under this provision is to republish or to allow the
republication of a work or to allow the performance of a work in public, or to broadcast a work.
Such licenses will be issued in case of unreasonable refusal of the owner of the copyright in the
work which had already been published or performed in public to allow its republication, or

26
performance or broadcast, resulting in the work being withheld from public. Upon receipt of a
complaint of such refusal he Copyright Board may hold an enquiry into the complaint and if
satisfied that the grounds of such refusal are not satisfactory, direct the Registrar to grant to the
complainant a license to republish the work, or to perform it in public or to broadcast it, subject
to the payment of such compensation to the copyright owner and subject to such terms and
conditions as the Board may determine. In order to protect the interest of the right holder, there
are built in safeguards like provision of reasonable opportunity for being heard in the enquiry
before the Board.

2. Compulsory licenses to publish unpublished ‘Indian works’ or their translations

(section 31A):

If in the case of a published or an unpublished Indian work (defined in section 31) or a

translation thereof in any language, if the author of the work is dead or unknown or cannot be
traced or the author of the work cannot be found, any person may apply to the Copyright Board
for a license to publish such work or a translation thereof in any language. Before making such
an application the person who wants to publish such work or translation thereof must first
advertise his proposal in a national English daily newspaper and in the case of translation, in a
regional language daily newspaper. Then an application in the prescribed form may be submitted
to the Copyright Board with a copy of the advertisement. The Board is empowered to conduct an
enquiry and direct the Registrar to grant the applicant a license to publish the work or the
translation, subject to the payment of royalty and compliance to such other terms and conditions
as the Board may determine.
Apart from the above compulsory licensing provision the Act empowers the Central
Government, if the original author of an unpublished work is dead, to require the heirs or legal
representatives of the author, to publish of such unpublished work, if such publication is
considered in national interest. Where any work is not published within the period specified by
the Central Government the Copyright Board may on an application made by any person to
publish such a work, permit the publication of the work on payment of such royalty as the Board
may determine.

3. Compulsory Licenses to produce and publish translations of literary or dramatic

works ( Section 32 of the Act):

This section empowers the Copyright Board to grant license to any person to publish a
translation of a literary or dramatic work in any language after a period of seven years from the
publication of the work. If the work is a non- Indian work and the application is for publication
in a language in general use in India which is not used in developed countries, then the above
period may be reduced to three years.
A broadcasting authority may also apply to the Copyright Board for a license to produce and
publish the translation of a non Indian work, or any text incorporated in audio visual fixations
prepared and published solely for the purposes of systematic instructional activities for
broadcasting such translation for the purpose of teaching or for dessiminating information on any
field to the experts in that field.

27
On receipt of an application the Copyright Board may grant a license, which is non exclusive to
the applicant to produce and publish the translation of the work in a language mentioned in the
application after hearing the parties and subject to certain conditions specified in Section 32. For
the sake of brevity such conditions are not reproduce here and you may refer to the provisions of
the section.

4. Compulsory license to produce and publish literary, scientific or artistic works

(section 32A):
This section contemplates the granting of compulsory licenses to reproduce and publish literary,
scientific or artistic works. An application for this compulsory license can be made after i)seven
years in the case of any work of or relating to, fiction, poetry, drama, music or art; ii) three years
in the case of any work of or relating to natural science, physical science, mathematics or
technology; and iii) five years in any other case. If after the expiry of the relevant period from
the date of first publication abroad, copies of such work are not available in India, or such copies
have not been put on sale in India for a period of six months, to the general public or in
connection with systematic instructional activities at a price reasonably related to those charged
in India for comparable works , any person may make an application to the Copyright Board
which may after holding necessary enquiries may issue a non exclusive license to produce and
publish such work.
The compulsory license granted in this section shall come to an end if the copyright owner or
any person authorized by him publishes the work in India at a price reasonably related to the
price normally charged in India for similar works and serves upon a notice on the person holding
the license in the prescribed manner. The termination takes effect after three months from the
date of service of the notice but does not affect the sale and distribution of the copies already
produced by the licensee before the termination took effect.

5. Compulsory license for the production of Sound Recordings (section 52 (1)(j)):

This provision which falls under the fair use section of the Act grants a compulsory license for
the production of sound recordings of literary, dramatic or musical work under certain
conditions. The difference in this section with the provisions discussed above is that it does not
require an application to the Copyright Board and that the license is automatic if the conditions
prescribed in the section are fulfilled. (However the section requires the Copyright Board to
determine the royalties payable in this regard). Hence this provision is at times referred to as
‘statutory license’.
This provision enables making of records of a sound recording by any person by giving the
prescribed notice of the intention to make the records and paying the prescribed manner royalties
in respect of all such records to the owner of copyright in the work. Such sound recordings shall
be made only after the two calendar years after the end of the year in which the first sound
recording has been made. Such licenses are permitted only in case of works that have been made
with the license or the consent of the owner of copyright in the work. The person making records
shall also provide copies of all covers or labels with which the sound recordings are to be sold.
The sound recordings shall not be issued in any form of packaging or with any label which is
likely to mislead or confuse the public so as to their identity. In making such records no
alterations or omissions of the work can be made unless such alterations or omissions have been
previously made with the consent or the license of the copyright owner or unless such alterations
or omissions are reasonably necessary for the adaptation of the work to the records.

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 5.8ENFORCEMENT OF COPYRIGHT

India follows a federal system of governance with Central Government for federal matters, State
Governments and Union Territories for state subjects. Courts are set up by State Governments
(except the apex court, the Supreme Court of India) and handle both State and Central laws. The
intellectual property laws, like other laws are enforced through the state government machinery.
The Copyright Act contains both civil remedies and penal provisions against infringement of
copyright. In addition to the Civil and Criminal remedies there are some administrative remedies
which right owners can resort to.
Enforcement of Copyright is resorted to when there is an infringement of the rights granted
under copyright law. Hence the starting point in understanding the enforcement provisions
clearly is an understanding of what constitutes infringement.
Copyright law confers upon the owner of the work a bundle of exclusive rights in respect of the
reproduction of the specific rights granted under the Act which enables the owner to reap
financial benefit out of the creation by exercise of these rights. If any of these acts are carried out
by a person other than the owner of copyright or without a license from the owner or a competent
authority under the Act, it constitutes infringement of copyright in the work.
Copyright means the exclusive rights granted under the Act in respect of the work or a
substantial part thereof. What constitutes the substantial part will depend on the facts and
circumstances of the case and is subject to judicial interpretation. The exclusive rights are
conferred under section 14 of the Act. These rights include, inter alia, reproduction of the work
in a material medium, storing of the work in any medium including electronic means, publication
of the work, communication of the work to the public, performance of the work in public,
making of adaptations and translations and doing any of these acts in relation to a substantial part
of the work. Whether a particular act constitutes infringement will depend on whether any of
these rights are infringed. Before one can decide whether a particular act constitutes infringement
one has to determine the meaning of expressions like ‘reproduction of the work in a material
form’, ‘storing of the work in any medium by electronic means, publication’, ‘communication to
the public and so on’. These words are not used in the Act in the same way it is used in the
ordinary sense. These expressions and many other expressions like these which appears in the
copyright act has special meanings in the context of copyright law. One should always look at
the definitions (section 2) carefully and also look at the judicial interpretations given to these
words to understand the correct meaning of the words in the context in which they are used.
In most cases there will not be any direct evidence of copying. Copying can only be deduced by
inference from the surrounding circumstances. In the case of infringement of literary works, the
defendants’ work containing the same errors as in the plaintiff’s work, similarity in language etc,
may provide some evidence of copying.
In R.G Anand v Delux Films (AIR 1978 SC 1613) the court has laid down the following general
propositions regarding infringement of a work.:
1. There is no copyright in an idea, subject matter, themes, plots or historical or legendary
facts, and violation of copyright in such cases is confined to the form, manner and
arrangement and expression of the idea by the author of the copyrighted work.
2. Where the same idea is developed in a different manner, it is manifest that the source
being common, similarities are bound to occur. In such a case the courts should

29
 determine whether or not the similarities are on fundamental or substantial aspects of the
mode of expression adopted in the copyrighted work. If the defendants work is nothing
but a literal imitation of the copyrighted work with some variations here and there it
would amount to a violation of copyright. In other words, in order to be actionable the
copy must be a substantial and material one which at once leads to the conclusion that the
defendant is guilty of an act of piracy.
3. One of the surest and safest test to determine whether or not there has been
violation of copyright is to see if the reader, spectator or the viewer after having read or
seen both the works is clearly of the opinion and gets an unmistakable impression that
the subsequent work appears to be a copy of the original.
4. Where the theme is the same but is presented and treated differently so that the
subsequent work becomes a completely new work, there is no question of violation of
copyright.
5. Where, however, apart from similarities appearing in the two works there are
material and broad dissimilarities which negatives the intention to copy the original and
the coincidences appearing in the two works are clearly incidental, there is no
infringement of copyright.
6. As a violation of copyright amounts to an act of piracy it must be proved by
clear and cogent evidence.
Chapter 11 of the Act deals with infringement of copyright. Section 51 of the Act details when
copyright is infringed. It defines infringement exhaustively, both direct and indirect. Direct
infringement is when a person without a valid license or in violation of the terms of the license
does anything, to do which is the exclusive right of the owner of copyright (section 51(a)(i).
Indirect infringement is when any person permits his place to be used for communication of a
work, which if communicated, would constitute an infringement of copyright (Section 51(a)(ii).
Thus the owner of a hall or an auditorium would be deemed to be doing an infringing act if he
lets out the place for any act which constitutes an infringement.

Further, if a person makes for sale or sells or hires or offer for sale or hire or display by way of
trade or by way of trade exhibit in public it constitutes an act of infringement (section 51 (b)).
Importing into India infringing copies of the work, other than in small quantities for private
domestic use of the importer also constitutes an act of infringement. Exhibiting an infringing
work and distributing copies for the purpose of trade or to an extent which prejudicially affect
the owner of copyright also constitute an act of infringement.

In sum, infringement of copyright consists of the following acts which if done without a license
granted by the owner of copyright or the Registrar of Copyright or in contravention of a license
so granted or of any conditions imposed by any authority under the Act:
i) The doing of any act the exclusive right to do which is conferred upon by the owner
of copyright under section 14.
ii) Permitting for profit a place to be used for the communication of the work to the
public
iii) Making for sale or hire, or selling or letting for hire any infringing copies of the work.

30
 iv) Distributing, either for the purpose of trade or to such an extent as to affect to
prejudicially affect the owner of copyright
v) Exhibiting by way of trade infringing copies of the work
vi) Importing into India of infringing copies of the work except one copy of any work for
the private and domestic use of the importer.
An infringing copy is defined in section 2 (m) of the Act. As per this section an infringing copy
means-
i) in relation to literary, dramatic, musical or artistic work, a reproduction thereof
otherwise than in the form of a cinematograph film;
ii) in relation to a cinematograph film, a copy of the film made on any medium by any
means;
iii) in relation to a sound recording, any other recording embodying the same sound
recording, made by any means;
iv) in relation to a programme or performance in which a broadcast reproduction right or
performers right subsists, a sound recording or a cinematograph film made of such
program or performance, if such reproduction or copy of the sound recording is made
or imported in contravention to the provisions of the Act.

5.8 ACTS NOT CONSTITUTING INFRINGEMENT: FAIR USE OR FAIR DEALING:

Copyright Act provides certain exceptions to infringement. The object of these exceptions is to
enable the reproduction of the work for certain public purposes for encouraging private study,
research and review, promotion of education etc. These exceptions work as statutory defence to
the claim of infringement of copyright.
Section 51 of the Act enunciates the situations in which copyright in a work shall be deemed to
be infringed. Section 52 enunciates the rule that certain acts does not constitute infringement of
copyright. This section thus lists out the instances where the exclusive rights of the copyright
owner can be infringed without attracting the charge of infringement. For example, while section
51 enacts the general rule that reproduction of the whole or substantial part of a work will
constitute infringement, section 52 provides that reproduction is not precluded and specifies the
instances where it is permitted.
Accordingly any fair dealing with a literary(other than a computer programme), dramatic,
musical or artistic work for the purpose of private use, research, criticism or review, reporting
current events, judicial proceedings and so on are exempted from the scope of infringement.
There are specific exemptions for educational activities and certain cultural activities like
performance during the course of a religious ceremony, marriage and so on.
In the case of computer programmes there are specific exemptions for reproduction for the
purpose for which the programme was purchased, making copies from legally obtained copy for
private personal use, reverse engineering to understand the principles underlying the program,
etc. There is a rather exhaustive list of exemptions provided in the Act and it is primarily to
ensure public access to copyright products. The purpose is to permit a free flow of cultural and
informational products within the society.

31
Students are advised to go through section 52 carefully so that they understand the nature of
exceptions provided in the Act.

5.9 REMEDIES FOR INFRINGEMENT

There are three types of remedies against infringement:
i) civil
ii) criminal, and
iii) administrative.
1. Civil Remedies
Sections 54 to 62 deals with civil remedies for infringement of copyright. Civil remedies include
injunction, damages and accounts, delivery of infringing copies and damages for conversion.
Who may sue: Section 55 provides that the owner of copyright (except other wise provided) will
be entitled to remedies by way of injunction, damages, accounts and otherwise conferred by law
for infringement of copyright. Hence the owner of copyright himself is normally the plaintiff.
But for the purposes of civil remedies section 54 defines the owner of copyright to include
i) an exclusive licensee;
ii) in the case of an anonymous or pseudonymous work the publisher of the work till
such time the identity of such anonymous or pseudonymous author is publicly
established.
However, section 61 provides that in a civil suit or other proceeding regarding infringement
instituted by an exclusive licensee, the owner of copyright shall be made a defendant unless the
court otherwise directs. In cases where the exclusive licensee makes the owner of copyright a
defendant, he shall have the right to dispute the claim of exclusive license.
There is a summary presumption in section 55(2) that in case of a literary, dramatic, musical or
artistic work, if a name purporting that to be the author or the publisher appears on the work,
such person shall for the propose of infringement action be regarded as the author or publisher of
the work, unless the contrary is proved. Thus this is a rebuttable presumption and when
challenged by the defendant he has to establish his claim of ownership and the subsistence of
copyright in it.
Costs: The costs of all parties in any proceedings in respect of the infringement of copyright
shall be at the discretion of the court.
Rights of the owner on infringing copies: Once infringement is established all infringing
copies of the work and all plates (see, definition) used or intended to be used for the production
of such infringing copies, shall be deemed to be the property of the owner of copyright. The
plaintiff may take proceedings for the recovery of possession or conversion thereof unless the
defendant proves innocent infringement (see, section 58).
Where can a suit be initiated: Section 62 deals with jurisdiction of the court in civil
proceedings. A suit in respect of infringement of copyright (or special rights conferred under the
Act like moral rights or resale rights) shall be instituted only in the district court having
jurisdiction. The district court having jurisdiction, according to 65(2) shall include the district

32
court having jurisdiction over the plaintiff. Thus the copyright owner suing for infringement can
initiate proceedings in his or her own jurisdictional district court and need not go before the
district court where the infringement is being committed.17

2. Criminal Proceedings:
The Copyright Act provides not only civil remedies against infringement of copyright but also
criminal proceedings. These two remedies are distinct and independent and can be availed
simultaneously. Criminal proceedings are detailed in chapter 13 titled ‘Offences’. Section 63
defines what constitutes a criminal offence.
Any person who knowingly infringes or abets the infringement of-
(a) the copyright in a work, or
(b) any other right conferred by the Act (except the right conferred by section 53A,
which is the right to share in the resale price of the original copy will be punished
with imprisonment for a minimum term of six months and a maximum of three
years and with a fine which may vary from a minimum of 50,000 rupees to two
lakh rupees.
Hence it is a criminal offence to infringe the copyright in a work. But the section also makes
infringement of any other right conferred by the Act an offence. The other rights conferred under
the Act include broadcast reproduction right (section 37) and performers right (section 38).
Infringement f these rights are made an offence.
Knowledge of the accused is an essential ingredient to constitute the offence of infringement for
criminal prosecution. This general rule is applicable to criminal proceedings under copyright law
also. The offence of infringement or abetment of infringement must be done knowingly, that is
with the knowledge that what is done is an offence, that the act in question would infringe the
copyright in a work or any other right conferred by the Act. A person will not be held guilt
unless he knowingly infringes or abets the infringement. Knowledge is the essence of finding of
an offence.
Burden of Proof: Section 101 of the Evidence Act lays down the general rule about the burden
of proof. Applying those principles the burden of proving the subsistence of copyright,
infringement or abetment of infringement as the case may be and the existence of guilty intention
is on the prosecution.
Seizure of Infringing Copies: Section 64 This section confers on Police officers not below the
rank of a sub inspector, if they are satisfied that an infringement or abetment of infringement of
copyright in any work has been or is likely to be committed, he may seize without warrant all
copies of the work and all plates used for the purpose of making infringing copies, wherever
found. The copies so seized should be produced before a magistrate as soon as practicable. The
use of the words “wherever found” indicates that not only copies fund in the premises of the
infringer but also those found in the premises of the retailers may also be sized.
Private infringers who might be possessing an infringing copy for their domestic use will not be
affected because section 51 excludes from definition of infringement the possession of an
infringing copy for private use.

17
Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1

33
Any person who has any interest in any copies of a work seized by the police may, within 15
days of such seizure apply to the magistrate for restoration to him of such copies. The magistrate
shall, after hearing the complainant and after making any enquiries if necessary, pass such order
as he may deem fit.
Possession of Plates for making infringing copies: As per section 65 of the Act any person
who makes, or has in his possession, any plates for the purpose of making infringing copies of
any work in which copyright subsists is punishable with imprisonment which may extend to two
years, and with fine.
The word “plate” is defined in section 2(t) of the Act as an inclusive definition. Hence it has a
broad meaning. As per the definition “plate” includes any stereotype or other plate, stone, block,
mould, matrix, transfer, negative, duplicating equipment or other device used or intended to be
used for printing or reproducing copies of any work, and any matrix or other appliance by which
sound recording for the acoustic reproduction of the work are or are intended to be made. This
elaborate definition is a potent tool in the hands of copyright owners to fight infringement as it
covers almost all-conceivable equipment, which can be used in infringement of a work.
Knowledge of the accused as to infringement appears to be necessary even in the case of mere
possession of any plates used for making infringing copies applying the general principles of
criminal law. Otherwise innocent persons who temporarily keep the plates with them may come
under the purview of this section.
Disposal of Infringing Copies: Section 66 : All infringing copies of the work in which
copyright subsists and all plates used or are intended to be used for the production of such
copies are deemed to be the property of the owner of the copyright in the work. In a civil
proceeding the owner has to initiate proceedings for the recovery of possession or in respect of
conversion thereof. However, in a criminal proceeding, section 66 provides that the court trying
the offence may order that all copies of the work which appears to be infringing copies or plates
for the purpose of making infringing copies in the possession of the accused be delivered to the
owner for copyright without any further proceeding.
Particulars to be included in recordings and video films: Section 52A of the Act requires that
certain particulars be displayed on the sound recording and any container thereof. The section
clearly prohibits publication of any sound recording in India unless the following particulars are
displayed either on the container or on the sound recording itself:
a) name and address of the person which has made the record,
b) the name and addresses of the owner of copyright
c) the year of its first publication.
In the case of video films the following particulars are required to be displayed in the video film
when exhibited and on the videocassette and on other container thereof:
a) if the work is a cinematograph film required to be certified by Central Board of Film
Certification, copy of a certificate thereof;
b) Name and address of the person who has made the video film and a declaration by him
that he has obtained the necessary license or consent from the owner of the copyright in
such work for making such video films; and
c) The name and address of the owner of copyright in such work.

34
Contravention of Section 52 A: What happens if someone does not comply with the provisions
of section 52A detailed above. Section 68A makes it a criminal offence to contravene the
provisions of section 52A of the Act. Therefore if anyone publishes a sound recording or video
film without furnishing the particulars required under section 52A he shall be punishable with
imprisonment which may extend to three years and shall also be liable to fine.
There are also penalties for making false in the Register of Copyright (section 67) and penalty
for making false statements for the purpose of deceiving or influencing any authority in relation
to the Act(Section 68).

3. Administrative Remedy –Against Importation of infringing copies:

The Act provides for an effective administrative remedy to prevent importation into India of
copies of a copyright work made outside India, which if made in India, would infringe the
copyright in the work. Section 53 of the Act empowers the Registrar of Copyright to make an
order prohibiting the importation into India of such copies on the application of the owner of the
copyright in any work, or his duly authorized agent, after making such enquiry as he deems fit.
The Registrar’s order prohibiting such import brings into play the provisions of the Customs Act
as goods the importation of which is banned in the Act. The only difference is that the copies
confiscated under this provision do not vest in the Government of India but are to be delivered to
the owner of copyright in the work.

5.10 COLLECTIVE ADMINISTRATION OF COPYRIGHT

Chapter 8 of the Act deals with collective administration societies. Section 33 of the Act
mandates that the business of issuing or granting licenses in respect of any work on behalf of the
author can only be done through a copyright society. However the owner of copyrights still
retains his authority to issue licenses in respect of his own works. The Act prescribes elaborate
procedures for forming a Copyright Society. The issuance of licenses by such societies on behalf
of its member right owners is called collective administration of copyright.

Collective administration of copyright is a concept where management and protection of

copyright in works are undertook by a society of owners of such works. These societies
undertake the task of administering the rights of the copyright owner. Obviously no owner of
copyright in any work can keep track of all the uses others make of his work. When he becomes
a member of a national copyright society, that society, because of its organisational facilities and
strength, is able to keep a better vigil over the uses made of that work throughout the country and
collect due royalties from the users of those works. So it will be in the interests of copyright
owners to join a collective administration organisation to ensure better protection to the
copyright in their works and for reaping optimum economic benefits from their creations.
Because of the country’s membership in international conventions, the copyright societies are
able to have reciprocal agreements with similar societies in other countries for collecting
royalties for the uses of Indian works in those countries. Users of different types of works also
find it easy to obtain licences for legal exploitation of the works in question, through such
collective administrative societies as they do not have to look around for authors all the time
when they need to use a work.

35
A copyright society is a registered collective administration society. Such a society is formed by
copyright owners following the procedures prescribed in the Act. The minimum membership
required for registration of a society is seven. Ordinarily, only one society is registered to do
business in respect of the same class of work. A copyright society can issue or grant licenses in
respect of any work in which copyright subsists or in respect of any other right given by the
Copyright Act.
As per section 34 of the Act , a copyright society may accept from the owner exclusive
authorization to administer any right in any work. A copyright society may:
i. Issue licenses in respect of the rights administered by the society.
ii. Collect fees in pursuance of such licenses.
iii. Distribute such fees among owners of copyright after making deductions for the
administrative expenses.
Examples of collective administration society functioning in India are:
i) Indian Performing Rights Society (IPRS) which administers public performance
rights of the authors in music.
ii) Phonographic Performance Limited (PPL) which administers the rights in the sound
records.
To understand how it works, let us imagine that you are running a restaurant and desire to play
the cassettes of popular songs. The Act requires you to take licenses form the authors. This
means you have to take permission of the lyricist for the literary work, composer for the music.
These rights are administered by IPRS. In addition you may have to take permission of the sound
recording producer. This is administered by PPL. By taking these licenses from these societies
for their published fees (which are not high) you comply with the provisions of the Act.

5.11 INTERNATIONAL COPYRIGHT

In general all Intellectual Property laws are territorial laws. Section 13 (2) of the Act discusses
the works in which copyright subsists. In case of published works the Act applies only to works
first published in India irrespective of the nationality of the author. In case of an unpublished
work copyright subsists only if the author at the time of making the work a citizen of India. And
in the case of a work of architecture the copyright subsist only if the work is located in India.

However, the section 40 of the Act gives the Government of India the power to extend the
benefits to all or any of the provisions of the Act to works first published in a foreign country.
This is done by notification in the official gazette of India of an order called International
Copyright Order. The countries mentioned in the International Copyright Order are countries
who are members of the Conventions in the field of copyright to which India is a party. One
common feature of international conventions in the field of IP is the requirement that all
members to provide protection to citizens of other member states as if they were national of the
country. Thus all citizens of a Bern Convention country will get their copyright protected as if
they were Indian citizens. Similarly, Indian authors get protection for their works in foreign
countries who are members of Bern Convention as if they are nationals of that country. This
principle is called national treatment. Berne Convention is the primary convention in the
copyright field. However, there is an exception to the national treatment rule. In respect of the
term of copyright it shall not exceed that enjoyed in the country of origin.

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 6. COPYRIGHT IN THE DIGITAL MEDIA

Internet and copyright infringement theories: The advent of information technology has made it
difficult to apply the traditional theories to various cyberspace entities and organizations. These
cyberspace players can be grouped under the following headings:

1. Internet Service Providers (ISPs)

2. Bulletin Board Services Operators (BBSO),
3. Commercial Web Page owner/operators, and
4. Private users.

(1) Internet Service Providers (ISPs): An ISP most often provides Internet access and he may
be held liable for copyright infringement. In Religious Technology Center v Netcom On-Line
Communication Services, Inc a former minister uploaded some of the copyrighted work of the
Church of Scientology to the Internet. He first transferred the information to a BBS computer,
where it was temporarily stored before being copied onto Netcom’s computer and other Usenet
computers. Once the information was on Netcom’s computer, it was available to Netcom’s
subscribers and Usenet neighbors for downloading for up to eleven days. The plaintiffs informed
Netcom about the infringing activity; nonetheless, Netcom refused to deny the subscriber’s
access because it was not possible to prescreen the subscriber’s uploads, and kicking the
subscriber off the Internet meant kicking off the rest of the BBS operator’s subscribers. Thus,
plaintiffs sought a remedy against Netcom for infringement under all three theories –direct,
contributory, and vicarious.

The court first analyzed whether Netcom directly infringed plaintiff’s copyright. Since Netcom
did not violate plaintiff’s exclusive copying, distribution, or display rights, Netcom was held not
liable for direct infringement. The court then analyzed the third party liability theories of
contributory and vicarious infringement. The court held that Netcom would be liable for
contributory infringement if plaintiffs proved that Netcom had knowledge of the infringing
activity. The court then analyzed whether Netcom was vicariously liable. Here, once again the
court found that a genuine issue of material fact supporting Netcom’s right and ability to control
the uploader’s acts existed. The court found that Netcom did not receive direct financial benefit
from the infringement. Thus, the court found that the Netcom was not liable for direct
infringement, could be liable for contributory infringement if plaintiffs proved the knowledge
element, and was not liable for vicarious infringement.

(2) Bulletin Board Services: The BBSs are more vulnerable to copyright infringement
litigations than the ISPs because they can operate independent of the World Wide Web.

The first case in this category was Playboy Enterprises, Inc v Frena.In this case, the defendant
operated a subscription BBS that allowed the subscribers to view, upload, and download
material. The court held that Frena had violated Playboy’s exclusive distribution right and their
exclusive display right. Because Frena supplied a product containing unauthorized copies of
copyrighted work, he has violated the distribution right. Moreover, because Frena publicly
displayed Playboy’s copyrighted photographs to subscribers, he violated the display right. The
court concluded that Frena was liable for direct infringement, though Frena himself never placed
infringing material on the BBS and despite his arguments that he was unaware of the

37
infringement. The court relied upon the strict liability theory and held that neither intent nor
knowledge is an essential element of infringement.

In Sega v Maphia the BBS was providing services to numerous subscribers who upload and
downloaded files to and from the BBS. The evidence clearly showed that the BBS operator knew
that subscribers were uploading unauthorized copies of Sega’s video games to and downloaded
from his BBS. The court held that since the BBS operators only knew and encouraged uploading
and downloading, but did not himself upload or download any files, he was not liable for direct
infringement. The court, however, found the BBS operator contributory liable. Regarding the
knowledge element, the BBS operator admitted that he had knowledge of the uploading and
downloading activity. The court rejected the BBS operator’s asserted fair use defense since their
activities were clearly commercial in nature. Further, the nature of the copyrighted games was
creative rather than informative and the entire copyrighted works were copied, uploaded, and
downloaded. This copying had adversely affected the Sega’s sale.

(3) Commercial Web sites: The Web Page owners must be cautious of the things they post on
their Web Pages so that they do not violate the stringent provisions of the copyright laws. A Web
Page owner cannot successfully plead and prove that they were unaware about the copyrighted
material because copyright notices are prominently given in authorized software. They also have
the controlling power over the content of their pages. The owner are usually the parties that
actually perform the uploads to their pages.

(4) Private Users: A computer user who uploads copyrighted material to the Internet is liable for
direct infringement. This liability could be avoided only if he can prove the fair use doctrine.
Thus, an Internet user should not post copyrighted material on the Internet in a casual manner.

ON-LINE COPYRIGHT ISSUES IN INDIA

The reference to on-line copyright issues can be found in the following two major enactments:

(1) The Copyright Act, 1957, and

(2) The Information Technology Act, 2000.

(1) Copyright Act, 1957 and on-line copyright issues: The following provisions of the
Copyright Act, 1957 can safely be relied upon for meeting the challenges of information
technology:

a) The inclusive definition of computer is very wide which includes any electronic or
similar device having information processing capabilities. Thus, a device storing or
containing a copyrighted material cannot be manipulated in such a manner as to violate
the rights of a copyright holder.
b) The term computer Programme has been defined to mean a set of instructions expressed
in words, codes, schemes or in any other form, including a machine readable medium,
capable of causing a computer to perform a particular task or achieve a particular result.
It must be noted that Section13(a) read with Section 2(o) confers a copyright in computer
Programme and its infringement will attract the stringent penal and civil sanctions.

38
c) The inclusive definition of literary work includes computer programmes, tables and
compilations including computer databases. Thus, the legislature has taken adequate care
and provided sufficient protection for computer related copyrights.
d) The copyrighted material can be transferred or communicated to the public easily and
secretly through electronic means. To take care of such a situation, the Copyright Act has
provided the circumstances which amount to communication to the public. Thus, making
any work available for being seen or heard or otherwise enjoyed by the public directly or
by any means of display or diffusion other than by issuing copies of such work regardless
of whether any member of the public actually sees, hears or otherwise enjoys the work so
made available, may violate the copyright. The communication through satellite or cable
or any other means of simultaneous communication to more than one household or place
of residence including residential rooms of any hotel or hostel shall be deemed to be
communication to the public
e) The copyright in a work is infringed if it is copied or published without its owner’s
consent. The Copyright Act provides that a work is published if a person makes available
a work to the public by issue of copies or by communicating the work to the public. Thus,
the ISPs, BBS providers, etc may be held liable for copyright violation if the facts make
out a case for the same.
f) The copyright in a work shall be deemed to be infringed when a person, without a license
granted by the owner of the copyright or the Registrar of Copyrights under this Act or in
contravention of the conditions of a license so granted or of any condition imposed by a
competent authority under this Act
i. Does anything, the exclusive right to do which is by this Act conferred upon the
owner of the copyright, or
ii. Permits for profit any place to be used for the communication of the work to the
public where such communication constitutes an infringement of the copyright in
the work, unless he was not aware and had no reasonable ground for believing
that such communication to the public would be an infringement of copyright.
g) The Copyright Act specifically exempts certain acts from the purview of copyright
infringement. Thus, the making of copies or adaptation of a computer Programme by the
lawful possessor of a copy of such computer Programme from such copy in order to
utilize the computer Programme for the purpose for which it was supplied or to make
back-up copies purely as a temporary protection against loss, destruction, or damage in
order only to utilize the computer Programme for the purpose for which it was supplied,
would not be copyright infringement. Similarly, the doing of any act necessary to obtain
information essential for operating inter-operability of an independently created computer
Programme with other programmed by a lawful possessor of a computer Programme is
not a copyright violation if such information is not otherwise readily available. Further,
there will not be any copyright violation in the observation, study or test of functioning of
the computer Programme in order to determine the ideas and principles, which underline
any elements of the Programme while performing such acts necessary for the functions
for which the computer Programme was supplied. The Act also makes it clear that the
making of copies or adaptation of the computer Programme from a personally legally
obtained copy for non-commercial personal use will not amount to copyright violation.
h) If a person knowingly makes use on a computer of an infringing copy of a computer
Programme, he shall be held liable for punishment of imprisonment for a term which
shall not be less than seven days but which may extend to three years and with fine which

39
 shall not be less than fifty thousand rupees but which may extend to two lakh rupees.
However, if the computer Programme has not been used for gain or in the course of trade
or business, the court may, for adequate and special reasons to be mentioned in the
judgment, not impose any sentence of imprisonment and may impose a fine which may
extend to fifty thousand rupees.
i) It must be noted that copyright can be obtained in a computer Programme under the
provisions of the Copyright Act, 1957. Hence, a computer Programme cannot be copied,
circulated, published or used without the permission of the copyright owner. If it is
illegally or improperly used, the traditional copyright infringement theories can be safely
and legally invoked. Further, if the medium of Internet is used to advance that purpose,
invoking the provisions of the Copyright Act, 1957 and supplementing them with the
stringent provisions of the Information Technology Act, 2000, can prevent the same.

(2) Information Technology Act, 2000 and on-line copyright issues: The following provisions
of the Information Technology Act, 2000 are relevant to understand the relationship between
copyright protection and information technology:

(a) Section 1(2) read with Section 75 of the Act provides for extra-territorial application of
the provisions of the Act. Thus, if a person (including a foreign national) violates the
copyright of a person by means of computer, computer system or computer network located
in India, he would be liable under the provisions of the Act.
(b) If any person without permission of the owner or any other person who is in charge of a
computer, computer system or computer network accesses or secures access to such
computer, computer system or computer network or downloads, copies or extracts any data,
computer data base or information from such computer, computer system or computer
network including information or data held or stored in any removable storage medium, he
shall be liable to pay damages by way of compensation not exceeding one crore rupees to the
person so affected. Thus, a person violating the copyright of another by downloading or
copying the same will have to pay exemplary damages up to the tune of rupees one crore
which is deterrent enough to prevent copyright violation.
(c) While adjudging the quantum of compensation, the adjudicating officer shall have to
consider the following factors:
ii. The amount of gain or unfair advantage, wherever quantifiable, made as the result
of the default;
iii. The amount of loss caused to any person as a result of the default;
iv. The repetitive nature of the default.

Thus, if the copyright is violated intentionally and for earning profit, the quantum of
damages will be more as compared to innocent infringement.

(a) A network service provider (ISP) will not be liable under this Act, rules or regulations
made there under for any third party information or data made available by him if he proves
that the offence or contravention was committed without his knowledge or that he had
exercised all due diligence to prevent the commission of such offence or contravention. The
network service provider under section 79 means an intermediary and third party information
means any information dealt with by a network service provider in his capacity as an
intermediary.

40
 (b) The provisions of this Act shall have overriding effect notwithstanding anything
inconsistent therewith contained in any other law for the time being in force.[55]

THE FUTURE OF COPYRIGHT IN INDIA:

The copyright laws in India are set to be amended with the introduction of the provisions for
anti-circumvention and Rights Management Information in the Indian copyright regime although
India is under no obligation to introduce these changes as it is not a signatory to WCT or WPPT.

With the amendment of the Copyright Act in 1994, which came into force on 10 May 1995, the
situation with regard to copyright enforcement in India has improved. According to Ramdas
Bhatkal of Popular Prakashan, Bombay, "We had problems of piracy relating to medical
textbooks before the law was amended. At that time we found that while the law may be on our
side, it was necessary to get a court order for search and this meant that there was sufficient
notice to the pirate to take defensive action before the court order could be implemented.
Therefore we preferred to accept the situation and did nothing. Since the changes which make
copyright violation a cognizable offence it has been possible to use the legal mechanism as a
deterrent."

Section 64 of the Indian Copyright Act 1957 provides that "Any police officer, not below the
rank of a sub-inspector, may, if he is satisfied that an offence under Section 63 in respect of the
infringement of copyright in any work has been, is being, or is likely to be, committed, seize
without warrant, all copies of the work, wherever found, and all copies and plates used for the
purpose of making infringing copies of the work, wherever found, and all copies and plates so
seized shall, as soon as practicable, be produced before a magistrate."

"Copying a book is similar to stealing somebody's jewellery. Large scale organized copying is
like robbing a jeweller's shop or a bank. But then, there is a major difference. In the case of a
bank robbery the newspapers are full of sensational news and the whole might of the State,
especially the police, jumps in to catch the culprit, there is pressure of public opinion even on the
judge trying the case. The effect is electric.

On the other hand, in the case of a book pirate, the police justify their inaction by pointing to
murder dockets; the State deflects the desperate appeals of Copyright owners with nonchalance
and the judge sits with a `so what' attitude while the man on the street remains in stark oblivion.

"The copyright does not protect the idea but it does protect the skill and the labour put in by the
authors in producing the work. A person cannot be held liable for infringement of copyright if he
has taken only the idea involved in the work and given expression to the idea in his own way.
Two authors can produce two different works from a common source of information each of
them arranging that information in his own way and using his own language. The arrangement of
the information and the language used should not be copied from a work in which copyright
subsists."

41
 7. INTERNATIONAL COPYRIGHT

A. Berne Convention: Works protected by copyright are transnational by nature; therefore,

merely protecting a work in one country is not enough. From early 19th century, bilateral
agreements have been executed between States for international protection. A movement for
international copyright developed involving the leadership, among others, of the great French
author Victor Hugo, and culminated in the negotiation of the first version (or ‘Act’) of the
Berne Convention for the Protection of Literary and Artistic Works on September 9, 1886.
The Berne Convention has since been revised a number of times, notably at Berlin in 1908, at
Rome in 1928, at Brussels in 1948, at Stockholm in 1967, and at Paris in 1971. Some further
amendments were made in 1979, but the current version of the Convention is referred to as
the ‘Paris Act’ of 1971.
India and Berne Convention: In the earlier Acts of the Berne Convention, before the 1948
Brussels Act, there was a ‘colonial clause’ under which ruling colonial power’s accession
applied to its colonies. Since Britain was a member of the Berne Union from inception, it
applied to India as well. However, Government of India acceded separately to the Rome Act
of the Convention and India has been a separate member of the Berne Union ever since. The
Berne Convention is administered by the World Intellectual Property Organisation (WIPO).
B. TRIPS Agreement: The environment of international copyright protection changed
considerably with the negotiation of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) flowing from the WTO, in 1994, which required adherence to the
substantive requirements of the Berne Convention and added some more — thus, it described
as being ‘Berne plus’. The protection of intellectual property, including copyright, is thus
now treated as an issue of international trade. This has two important consequences:
a. Copyright is no longer a sphere by itself; rather a country’s failure to meet the standards
of IP protection laid down in the TRIPS Agreement may invite sanctions going beyond
the sphere of copyright or even of intellectual property.
b. A country’s policy and its negotiating stance in respect of intellectual property issues is
now an important counter in the wider game of international trade negotiations.
How international copyright functions: The two basic principles of international copyright
are:

• National Treatment: This means treating foreign works as if they were national works.
Thus, since India and the U.K. are both members of the Berne Union, the U.K. is obliged to
give works created by Indian authors the same protection that it gives to works by British
authors, treating them within the U.K. as if they were British works; and vice versa.

 However there are a few exceptions to the rule of national treatment, where the
alternative principle of reciprocity is applied.
 The main exception relates to the term of copyright. Let us suppose country A protects
copyright for 70 years after the death of the author and country B for only fifty. This
means that country B will protect works by authors from country A for only fifty years.
Now if country A were to apply the national treatment rule, it would nevertheless be
obliged to protect works from country B for seventy years. However, Article 7(8) of the
Berne Convention provides an exception to the national treatment rule, laying down that

42
 ‘…the term shall be governed by the legislation of the country where protection is
claimed; however, unless the legislation of that country otherwise provides, the term shall
not exceed the term fixed in the country of origin of the work.’

• Minimum Standards: The principle of national treatment implies that a work will enjoy
varying standards of protection in different countries. To keep such variation within
reasonable limits, the Berne Convention and the TRIPS Agreement require all member
countries to incorporate certain minimum standards of protection in their laws. Thus the
basic minimum standard for the term of copyright is fifty years after the end of the year of
the author’s death, and member countries must provide for at least such a term.

The copyright symbol © and the Universal Copyright Convention: The origins of the ©
symbol are interesting.

One of the basic requirements of the Berne Convention is that there should be ‘no formalities’ in
respect of foreign authors, i.e. no author from a country of the Berne Union should be required to
fulfil any bureaucratic procedure (like registration of his work) to enjoy copyright protection for
it in another such country.

 (Of course, since it would be invidious to require formalities from one’s own authors that
one does not require from foreign authors, this has resulted in most countries’ dispensing
with formalities altogether.)

Now in the 1950s there were some countries, including the U.S.A., the then U.S.S.R., and a
number of developing countries, which were unwilling to adopt the standards of the Berne
Convention.

 Some of these countries (including the U.S.A.) also retained some ‘formalities’ as a
precondition for enforcing copyright in a work.

The Universal Copyright Convention (UCC), administered by UNESCO, was negotiated in 1951
to meet the needs of such countries.
 It had lower standards than the Berne Convention in various ways,
 and it addressed the question of formalities by laying down that the use of the copyright
symbol © on a work would be sufficient compliance with any requirement of formalities
in another member country.

Thus (India being a member of both conventions) the only legal advantage an Indian author
would obtain by using the © symbol on his work would be that of ensuring its copyright
protection in a country that was a member only of the UCC (such as the United States until it
acceded to the Berne Convention in 1976).

43
  Now that all countries that are members of the WTO are bound by the TRIPS agreement,
which incorporates all the substantive provisions of the Berne Convention, the UCC and
its © symbol have effectively lost their earlier significance.
 But the symbol remains useful as an indication that the author has asserted his copyright
in respect of the work on which it appears, and it continues to be used mainly for that
reason.

How do international conventions affect Indian law? The international conventions to which
India is party are not ‘self-enforcing’ in India as they are in some countries: that is, they do not
automatically become Indian law that can be enforced by Indian courts.
 Indian courts enforce only the laws enacted by Indian legislatures and, since copyright is
a Central subject in India, laws about it must be enacted by Parliament.

However, where a question of interpreting our copyright law is concerned, the provisions of a
relevant international convention to which India is a party may be of assistance: it is a reasonable
presumption (unless the language of the statutory provision is absolutely clear to the contrary)
that the legislature would not have intended to enact a law inconsistent with existing
international obligations.

44
 PART II – COPYRIGHT

INTRODUCTION

Industrial designs refer to creative activity which result in the ornamental or formal appearance
of a product and design right refers to a novel or original design that is accorded to the proprietor
of a validly registered design. Industrial designs are an element of intellectual property. Under
the TRIPS Agreement, minimum standards of protection of industrial designs have been
provided for. As a developing country, India has already amended its national legislation to
provide for these minimal standards.

The essential purpose of design law it to promote and protect the design element of industrial
production. It is also intended to promote innovative activity in the field of industries. The
existing legislation on industrial designs in India is contained in the New Designs Act, 2000 and
this Act will serve its purpose well in the rapid changes in technology and international
developments. India has also achieved a mature status in the field of industrial designs and in
view of globalization of the economy, the present legislation is aligned with the changed
technical and commercial scenario and made to conform to international trends in design
administration.

This replacement Act is also aimed to enact a more detailed classification of design to conform
to the international system and to take care of the proliferation of design related activities in
various fields.

Designs are used in different products and across the various industries like medical, handicrafts,
jewelry, electrical appliances etc. It precludes of any trademark or artistic type of work. In India
the ever first design related legislation was enacted by the British Government and was popularly
named as the Designs Act, 1911. The Hague Agreement in concern to the international deposit of
industrial designs, the WIPO administered treaty, the procedure of the international registration
has been laid down. The applicant intended to enjoy the industrial design rights can file the
application with the WIPO or in the national office of the nations which are member of the
treaty. Due to the application filing with the WIPO, the designs will be protected in various
member nations of the treaty. If the right holder wants to protect its rights in multiple
jurisdictions then it is required to seek protection separately from each nation. India has still not
accepted the Hague System for the International Registration of Industrial Designs, which offers
the industrial design owner the right of protecting its design product in various countries on mere
filling of the application with the international bureau of the WIPO.

ADVANTAGES OF INDUSTRIAL DESIGN RIGHTS

Industrial designs help in making any product or item more beautiful and appealing ,henceforth
they help in increasing commercial viability of product and increases its market potentiality. The
industrial design registration helps in safeguarding the ornamental or aesthetic elements of the
article. Whenever an industrial design is being registered it gives an exclusionary rights to owner
against unauthorized use like copying or imitation by third party without his consent. This in

45
turns facilitate fair flow of investment. An effectual system also helps in benefiting public by
encouraging fair and effective competition and trading practices which at large bolster the
creativity and the final result comes in the form of attractive and beautiful products.
Safeguarding of industrial designs help in the overall economic development which promote
creativity in the industrial arena.

INDUSTRIAL DESIGN RIGHTS IN INDIA

In present scenario, the Designs Act, 2000 and the Designs Rules, 2001 are governing the India's
design law. The industrial design registration grants the proprietor the exclusionary rights of
selling, importing and applying it to any product. India has adopted the 'first to file' system,
which means that the right holder should file the application on the earliest point of time to rule
out the possibility of any other person claiming for the rights of the intended designs. All such
persons can apply for the industrial design rights if they are the proprietor of the design and as
far as the design is new, not previously published in any nation, reproducible through the
industrial means, not against to the public order, distinct from the known designs, not consists of
any obscene material, eye catching. According to the designs law in India, the proprietor can file
for the design application only if they have their business center in India otherwise they are
required to file the application through the attorney/agent who will in turns design search,
prepare file and finally done the prosecution of the application. The applicant or its assignee can
also file the application directly with the filling of the requisite information. Applicants will be
examined by the design offices for ascertaining the availability of the intended designs.

The applicant must respond to any objection within the period of 3 months and if he fails to
comply with this time limit then the application would be considered to be rejected. Therefore,
on the basis of the responses of the objections filed by the applicant, the Controller of Designs
determines that whether the application should be accepted or canceled or should be put up for
the hearing. The registration of design is valid for the period of 10 years which can be extended
further for 5 years on the payment of renewable fees. One can transfer the rights of the industrial
designs to other person or party with the help of an assignment, transmission or license.
Registered designs are kept to be open for public inspection only after they publish in the office
gazette by paying the prescribed fees.

There are some artistic work which is not possible to be registered as the design- a painting, a
sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph,
whether or not any such work possesses artistic quality, a work of architecture, any other work of
artistic craftsmanship. In case of the piracy of the registered designs, then the person who has
contravene the copyright in the design would be held liable for the fine not exceeding to
Rs.25,000 and maximum to Rs.50,000. The registration of design can be canceled at any time
after filing the cancellation petition with the prescribed fees to the Controller of Designs.

46
What is meant by ‘Design’ under the Designs Act, 2000?
‘Design’ means only the features of shape, configuration, pattern or ornament or composition of
lines or colour or combination thereof applied to any article whether two dimensional or three
dimensional or in both forms, by any industrial process or means, whether manual, mechanical
or chemical, separate or combined, which in the finished article appeal to and are judged solely
by the eye, but does not include any mode or principle or construction or any thing which is in
substance a mere mechanical device, and does not include any trade mark, as define in clause (v)
of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or
artistic works as defined under Section 2(c) of the Copyright Act, 1957.
What is meant by an article under the Designs Act, 2000 ?
Under the Designs Act, 2000 the "article" means any article of manufacture and any substance,
artificial, or partly artificial and partly natural; and includes any part of an article capable of
being made and sold separately;
What is the object of registration of Designs?
Object of the Designs Act to protect new or original designs so created to be applied or
applicable to particular article to be manufactured by Industrial Process or me Sometimes
purchase of articles for use is influenced not only by their practical efficiency but also by their
appearance. The important purpose of design Registration is to see that the artisan, creator,
originator of a design having aesthetic look is not deprived of his bonafide reward by others
applying it to their goods.
What are the essential requirements for the registration of ‘design’ under the Designs Act,
2000?
1. The design should be new or original, not previously published or used in any country
before the date of application for registration. The novelty may reside in the application
of a known shape or pattern to new subject matter. Practical example:
2. The known shape of "Kutub Minar" when applied to a cigarette holder the same is
registrable. However, if the design for which application is made does not involve any
real mental activity for conception, then registration may not be considered.
3. The design should relate to features of shape, configuration, pattern or ornamentation
applied or applicable to an article. Thus, designs of industrial plans, layouts and
installations are not registrable under the Act.
4. The design should be applied or applicable to any article by any industrial process.
Normally, designs of artistic nature like painting, sculptures and the like which are not
produced in bulk by any industrial process are excluded from registration under the Act.
5. The features of the design in the finished article should appeal to and are judged solely by
the eye. This implies that the design must appear and should be visible on the finished
article, for which it is meant. Thus, any design in the inside arrangement of a box, money
purse or almirah may not be considered for showing such articles in the open state, as
those articles are generally put in the market in the closed state.
6. Any mode or principle of construction or operation or any thing which is in substance a
mere mechanical device, would not be registrable design. For instance a key having its
novelty only in the shape of its corrugation or bend at the portion intended to engage with

47
 levers inside the lock associated with, cannot be registered as a design under the Act.
However, when any design suggests any mode or principle of construction or mechanical
or other action of a mechanism, a suitable disclaimer in respect there of is required to be
inserted on its representation, provided there are other registrable features in the design.
7. The design should not include any Trade Mark or property mark or artistic works as
define under the Copyright Act, 1957.
Can stamps. Labels, tokens, cards, be considered an article for the purpose of registration
of Design?
No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal
or like material remains and the article referred ceases to exist. Article must have its existence
independent of the Designs applied to it. [Design with respect to label was held not registrable,
by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as
applied to an article should be integral with the article itself.
When does the Applicant for Registration of Design get the registration certificate?
When an application for registration of a Design is in order, it is accepted and registered and then
a certificate of registration is issued to the applicant.
However, a separate request should be made to the Controller for obtaining a certified copy of
the certificate for legal proceeding with requisite fee.
What is a Register of Designs?
The Register of Designs is a document maintained by The Patent Office, Kolkata as a statutory
requirement. It contains the design number, class number, date of filing (in this country) and
reciprocity date (if any), name and address of Proprietor and such other matters as would affect
the validity of proprietorship of the design and it is open for public inspection on payment of
prescribed fee & extract from register may also be obtained on request with the prescribed fee.
What is the effect of registration of design?
The registration of a design confers upon the registered proprietor ‘Copyright’ in the design for
the period of registration. ‘Copyright’ means the exclusive right to apply a design to the article
belonging to the class in which it is registered.
What is the duration of the registration of a design? Can it be extended?
The duration of the registration of a design is initially ten years from the date of registration, but
in cases where claim to priority has been allowed the duration is ten years from the priority date.
This initial period of registration may be extended by further period of 5 years on an application
made in Form-3 accompanied by a fee of Rs. 2,000/- to the Controller before the expiry of the
said initial period of Copyright.
The proprietor of a design may make application for such extension even as soon as the design is
registered.
What is the date of registration?
The date of registration except in case of priority is the actual date of filing of the application. In
case of registration of design with priority, the date of registration is the date of making an
application in the reciprocal country.

48
Is it possible to re-register a design in respect of which Copyright has expired?
No. A registered design, the copyright of which has expired cannot be re-registered.
How one can ascertain whether registration subsists in respect of any design?
For ascertaining whether registration subsists in respect of a design, a request should be made to
the Patent Office, Kolkata. If the serial number of the registered design is known, the request
should be made on Form 6, otherwise on Form 7, together with fee of Rs. 500/- or Rs. 1,000/-
respectively. Each such request should be confined to information in respect of a single design.
What is piracy of a Design?
Ans: Piracy of a design means the application of a design or its imitation to any article belonging
to class of articles in which the design has been registered for the purpose of sale or importation
of such articles without the written consent of the registered proprietor. Publishing such articles
or exposing terms for sale with knowledge of the unauthorized application of the design to them
also involves piracy of the design.
What is the penalty for the piracy of a registered Design?
Ans: If anyone contravenes the copyright in a design he is liable for every offence to pay a sum
not exceeding Rs. 25,000/- to the registered proprietor subject to a maximum of Rs. 50,000/-
recoverable as contract debt in respect of any one design. The registered proprietor may bring a
suit for the recovery of the damages for any such contravention and for injunction against
repetition of the same. Total sum recoverable shall not exceed Rs. 50,000/-as contract debt as
stated in Section 22(2)(a). The suit for infringement, recovery of damage etc should not be filed
in any court below the court of District Judge.
Is marking of an article compulsory in the cases of article to which a registered design has
been applied?
Ans: Yes, it would be always advantageous to the registered proprietors to mark the article so as
to indicate the number of the registered design except in the case of Textile designs. Otherwise,
the registered proprietor would not be entitled to claim damages from any infringer unless the
registered proprietor establishes that the registered proprietor took all proper steps to ensure the
marking of the article, or unless the registered proprietor show that the infringement took place
after the person guilty thereof knew or had received notice of the existence of the copyright in
the design.
Can the Registration of a Design be cancelled ?
The registration of a design may be cancelled at any time after the registration of design on a
petition for cancellation in form 8 with a fee of Rs. 1,500/-to the Controller of Designs on the
following grounds:
1. That the design has been previously registered in India or
2. That it has been published in India or elsewhere prior to date of registration or
3. The design is not new or original or
4. Design is not registrable or
5. It is not a design under Clause (d) of Section 2.

49
Is it mandatory to make the article by industrial process or means before making an
application for registration of design ?
No, design means a conception or suggestion or idea of a shape or pattern which can be applied
to an article or intended to be applied by industrial process or me Example- a new shape which
can be applied to a pen thus capable of producing a new appearance of a pen on the visual
appearance. It is not mandatory to produce the pen first and then make an application.
Why is it important for filing the application for registration of design at the earliest
possible ?
First-to-file rule is applicable for registrability of design. If two or more applications relating to
an identical or a similar design are filed on different dates only first application will be
considered for registration of design.
Can the same applicant make an application for the same design again, if the prior
application has been abandoned ?
Yes, the same applicant can apply again since no publication of the abandoned application is
made by the Patent Office, provided the applicant does not publish the said design in the
meanwhile.
How to get information on registration of design ?
After registration of designs the most relevant view(s) of the article alongwith other
bibliographic data will be available in the official gazette, which is being published on every
Saturday. However, such provision cannot be implemented at this stage due to insufficient
infrastructure.
Whether it is possible to transfer the right of ownership ?
Yes, it is possible to transfer the right through assignment, agreement, transmission with terms
and condition in writing or by operation of law. However, certain restrictive conditions not being
the subject matter of protection relating to registration of design should not be included in the
terms and condition of the contract/agreement etc. An application in form-10, with a fee of Rs.
500/- in respect of one design and Rs. 200/- for each additional design, for registration of the
transfer documents is required to be made by the beneficiary to the Controller within six months
from the date of execution of the instruments or within further period not exceeding six months
in aggregate. An original/notarized copy of the instrument to be registered is required to be
enclosed with the application.
What is meant by priority claim ?
India is one of the countries party to the Paris Convention so the provisions for the right of
priority are applicable. On the basis of a regular first application filed in one of the contracting
state, the applicant may within the six months apply for protection in other contracting states,
latter application will be regarded as if it had been filed on the same day as the first application.
How it is possible to restore the lapse design due to non-payment of extension fee within
prescribed time ?
A registration of design will cease to be effective on non-payment of extension fee for further
term of five years if the same is not paid before the expiry of original period of 10 years.
However, new provision has been incorporated in the Act so that lapsed designs may be restored
provided the following conditions are satisfied:

50
 1. Application for restoration in Form-4 with fee of Rs. 1,000/- is filed within one year from
the date of lapsed stating the ground for such non-payment of extension fee with
sufficient reasons.
2. If the application for restoration is allowed the proprietor is required to pay the extension
fee of Rs. 2,000/- and an additional fee of Rs. 1,000/- and finally the lapsed registration is
restored.
Can the name, address of proprietor or address for service be altered in the register of
design ?
Name of the registered proprietor, address or address for service can be altered in the register of
designs provided this alteration is not made by way of change of ownership through conveyance
i.e. deed of assignment, transmission, licence agreement or by any operation of law, for which
reference may be made to the answer against Q. 21. Application in form-22 with a fee of Rs.
200/- should be filed to the Controller of Designs with all necessary documents in support of the
application as required.
Are the registered designs open for public inspection ?
Yes, registered designs are open for public inspection only after publication in the official
gazette on payment of prescribed fee of Rs. 500/- on a request in Form-5.
Can the application for registration of design be filed by the applicant himself only or
through a professional person ?
The application for registration of design can be filed by the applicant himself or through a
professional person (i.e. patent agent, legal practitioner). However, for the applicants not resident
of India an agent residing in India has to be employed.
How does a registration of design stop other people from exploiting ?
Once a design is registered, it gives the legal right to bring an action against those persons
(natural/legal entity) who infringe the design right, in the Court not lower than District Court in
order to stop such exploitation and to claim any damage to which the registered proprietor is
legally entitled. However, it may please be noted that if the design is not registered under the
Designs Act, 2000 there will be no legal right to take any action against the infringer under the
provisions of the Designs Act, 2000.
The Patent Office does not become involved with any issue relating to enforcement of right
accured by registration, similarly The Patent Office does not involve itself with any issue relating
to exploitation or commercialization of the registered design.
What are the important criteria for determining a "set of article" ?
If a group of articles meets the following requirements then that group of articles may be
regarded as a set of articles under the Designs Act, 2000:
a. Ordinarily on sale or intended to be used together.
b. All having common design even though articles are different (same class).
c. Same general character.
Generally, an article having the same design and sold in different sizes is not considered as a set
of articles. Practical example: "Tea set", "Pen set", "Knife set" etc.

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What is an artistic work which are not subject matter of registration?
An artistic work as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter
for registration which reads as follows:
"Artistic works" means: -
i. A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving
or a photograph, whether or not such work possesses artistic quality.
ii. An work of architecture and
iii. Any other work of artistic craftsmanship.

What is meant by classification of goods mentioned in the Third Schedule ?

In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. The
classification is based on Locarno Agreement. Only one class number is to be mentioned in one
particular application. It is mandatory under the Rules. This classification has been made on the
basis of Articles on which the design is applied.
Practical Example: If the design is applied to a toothbrush it will be classified under class 04-02.
Similarly if the design is applied to a calculator, it will be classified in class 18-01. Subsequent
application by the same proprietor for registration of same or similar design applied to any article
of the same class is possible, but period of registration will be valid only upto period of previous
registration of same design.
What is meant by Property mark as per the Indian Penal Code (Sec. 479) ?
A mark used for denoting that movable property belongs to a particular person is called a
property mark. It means that marking any movable property or goods, or any case, package or
receptacle containing goods; or using any case, package or receptacle, with any mark thereon.
Practical example: The mark used by the Indian Railway on their goods may be termed as a
Property Mark for the purpose of easy identification of the owner.

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