COPYRIGHT

What is copyright?

Copyright law is concerned in essence with the negative right of

preventing the copying of physical material. It is not concerned with
the reproduction of ideas, but with the reproduction of the form in
which ideas are expressed. Today, not only is protection given to
literary, dramatic, musical and artistic works, but also to sound
recordings1, films, broadcasts, cable programs, computer programs
and the typographical arrangement of published editions.

The difference between a copyright and a patent is while a copyright

on the one hand is a limited monopoly having its origin in protection
closely analogous to patent rights, protecting the fruits of author's
exertions in literary, dramatic, artistic or musical compositions, the
protection afforded by the patents law is broader than in the case of
copyright. By grant of a patent, the patentee acquires an exclusive
right to make, use and vend the thing patented by copyright, while the
owner of the copyright acquires the exclusive right of multiplying
copies and doing other things analogous to this. The patent law
protects the production and use of the creative conception reduced to
practical shape in various forms; the copyright law protects publication
of the copies in the form of the creative conception in which it has
been expressed by the author. The right secured by the copyright is
the right to that arrangement of words which the author has selected

1
A sound recording may be of a literary work spoken or recited, the spoken dialogue of a dramatic work or
of a song. There may be copyright subsisting in the subject matter recorded. Since making of a sound
recording of a literary, dramatic or musical work constitutes infringement of that work a sound recording
made without the license of the owner of the copyright in that work will constitute infringement of that
work. A sound recording may be of a literary work spoken or recited, the spoken dialogue of a dramatic
work or of a song. There may be copyright subsisting in the subject matter recorded. Since making of a
sound recording of a literary, dramatic or musical work constitutes infringement of that work a sound
recording made without the license of the owner of the copyright in that work will constitute infringement
of that work.

1
to express his/her ideas. The fundamental purpose of copyright
protection, therefore is to promote societal development and thus the
improvement of all persons- by encouraging the production and
dissemination of creative works.

Copyright are exclusive rights subject to the provisions of the Act, to

do or authorize the doing of any of the acts laid down in the Act. These
rights include:
1. the right to reproduce the work,
2. to issue copies of the work to public,
3. to perform the work in public,
4. to communicate the work to public,
5. to make a cinematograph film or sound recording,
6. to make any translation or adaptation of the work,
7. to sell or give on hire any copy of the computer program or sound
recording2., and so on.

There is no copyright in ideas, subject-matter, themes, plots or

historical or legendary facts, however original or brilliant and is
confined to the form, manner and arrangement and expressions of the
idea by the author of the copyright work. What copyright protects is
not the raw materials from which the work is created but the skill and
labor employed by the author in the creation of the work. Any other
person can produce substantially the same work using the same raw
materials or even ideas without infringement if he/she does it originally
without copying from the other work. Suppose, I hold a copyright for
2
Dealers in musical records may have a record lending library, the subscribers to the scheme paying a
subscription and a borrowing fee. The subscribers may use the hired records for home taping. It has been
held that such activities of a dealer did not amount to authorizing infringement of copyright. The
defendant's had at the request of the plaintiff's displayed warning notices and attached stickers to the
records regarding the copyright position; See A. & M. Records v. Audio Magnetics [1979] F.S.R. 1; CBS
v. Ames [1981] R.P.C. 407.; CBS U.K. v. Amstrad [1988] R.P.C. 567; Cited from Cornish, W.R.,
Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet and Maxwell,
London, 1996, at 369.

2
the expression " Jack and Jill went up the hill", a copyright violation will
not be committed if the expression "Jack went up the hill along with
Jill” is used3. In determining whether there is an infringement, where
the subject matter of the work is not original, the question is how far
an unfair or undue use has been made of the work. If a person instead
of obtaining the subject matter from common sources avails
himself/herself of the labor of his/her predecessor, adopts his/her
arrangements and quotations, or adopts them with a colorable
variation it is an illegitimate use.

Another related concept is that of passing-off. Apart from statute, an

action will lie for the passing-off of a work as the work of the plaintiff, if
its title or appearance is such as to lead the public to believe that they
are purchasing, or using, a work of the plaintiff and injury is likely to
accrue to the plaintiff; it is not necessary to show an intention to
deceive. The thing said to be passed off must however, resemble the
thing for which it is passed off. Such an action may be brought by
publishers who have acquired the copyright in a work from the author,
to restrain a publication of a similar work using the author’s name so
as to induce the public to believe it was the same as the original work.4

Infringements of copyright may be divided into primary or direct

infringement, which consist of the unauthorized exercise by persons
(not being the copyright owners) of rights restricted by the Copyright
Acts, and secondary, or indirect infringement, which consist mainly of
unauthorized dealings with articles which were made in infringement
of copyright, together with various other acts. A basic distinction
between the two is that secondary infringement requires the
defendant to have some degree of knowledge that what is being done
3
Muralidharan, R., Legal Protection of Computer Software, at 3.
4
Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974,
at 513.

3
is an infringement, whereas in the case of primary infringement any
such knowledge is not an ingredient of the cause of action.

These are some of the basic preliminaries which need to be covered

before an intense discussion on the topic at hand can be commenced.

4
EVIDENTIARY ASPECTS
In a copyright infringement case, pre-trial pending work requires a lot
of evidential analysis on which to structure the suit. Some of the
important steps to be initiated and clarified are as follows:

Issues
In a suit for infringement of copyright the following issues arise:
1. Is the plaintiff entitled to file the suit? In other words is he/she the
owner of a copyright as defined in Section 54 of the Act?
2. Does copyright subsists in the work alleged to have been infringed?
3. Does what the defendant done, or proposes to do constitute
infringement of the copyright in the work?
4. Does the defendant's act come within the scope of any of the
exceptions to the infringement listed in Section 52?
5. What remedies the plaintiff is entitled to?

Evidence to be adduced
The plaintiff will be the one to adduce evidence to establish the
following:
1. The copyright work is original or otherwise qualifies for subsistence
of copyright under the Act.
2. The date of coming into existence of the work.
3. The term of copyright has not expired on the date of filing the suit
or on the date of committing the alleged infringement.
4. Particulars of the act done by the defendant, alleged to constitute
infringement, or the acts proposed to be done likely to constitute
infringement when completed.
5. The acts done or likely to be done by the defendant would
constitute infringement of the copyright work.

5
The defendant's evidence will depend upon how far the plaintiff
establishes a case of infringement. He/she may adduce evidence to
prove that the alleged copyright work is not original or that it is not
entitled to copyright, the term of the copyright has expires, the alleged
acts done by him/her were not done by him/her or if done by him/her,
they do not constitute infringement of copyright or that it comes within
the scope of one or other of the statutory exceptions and that the
plaintiff has not suffered or is likely to suffer any damages from the
activities of the defendant.

Direct Evidence
In most cases there will be no direct evidence of copying. Copying can
only be deduced by inference from all the surrounding circumstances.
In the case of infringement of literary works, the defendant's work
containing the same errors as in the plaintiff's work, similarity in
language and idiosyncrasies in style, may constitute some evidence of
copying.

When materials in which copyright is claimed are not produced at the

hearing then their nature must be proved by other evidence. As Lord
Esher M.R., said in Lucas v. Williams5: …to produce the original picture
and the alleged copy, so that the jury may compare the two, may be
the most satisfactory evidence of imitation, but it does not follow that
it is the only evidence of it which can be given, nor does it follow that
the evidence which was given in his/her case is only secondary
evidence. Primary evidence is evidence which the law requires to be
give first: and Secondary evidence is evidence which may be given in
the absence of the better evidence which the law requires to be given
first, when a proper explanation is given of the absence of that better
evidence.
5
(1892) 2 QB 113 at 116.

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In other words, what difference is there in principle between a man's
handwriting and a picture, which he/she paints? The witness says,
Looking at the picture which the defendant sold, I say it is exactly like
XXX's picture. When he/she is asked, How do you know that?, he/she
answers, Because I have seen XXX's picture. This is not secondary
evidence, but original evidence. Different kinds of evidence may be
used to prove the same fact, and this is another way of proving the
fact that, the picture which the defendant's sold is a copy of the
original picture in respect of which there is a copyright.

Burden of Proof
[The burden of proving infringement is on the plaintiff. In establishing
the defenses pleaded the burden is on the defendant. Where there is
substantial similarity between the plaintiff's copyright work and the
defendant's alleged infringing copy, that would be sufficient to raise a
prima facie case of actual copying and if the defendant did not call
evidence to rebut the prima facie case, then copying is proved. The
defendant may refute by evidence that notwithstanding the similarity
there was no copying but independent creation.

Evidence of access to the plaintiff's product and evidence of striking

general similarities between the products gives rise to a prima facie
case of infringement. But the defendant could give alternative
explanation of the similarities in a convincing manner.]

Expert Evidence
Expert evidence may be called to point out similarities, coincidences
and the like, in order to support a contention of copying, or the
converse, but the expert must stop short of giving his/her opinion that

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the work under criticism is in fact a copy. That is a question for the
judge.

Infringement of a musical work is not to be determined by a note for

note comparison, but should be determined by the ear as well as by
the eye. The question whether the defendant has copied the plaintiff's
work depends to a large extent on the judge's own impression and on
expert evidence.

In cases of technical and scientific works, to decide the question of

infringement of copyright, expert evidence may be necessary. Where
the case involves minute scrutiny of alleged similarities and
dissimilarities and extensive and lengthy comparison, it is not only
proper but essential, that the case should be tried with the aid of
experts who might be appointed commissioners to investigate and
report similarities. But the commissioner's evidence is no evidence.

A distinction between direct and indirect infringers has been already

drawn at the outset6, though it is an analysis disputed by the majority.
It differentiates between one who copies an original and one 'who
copies a copy, supposing it to be an original'. An indirect (or,
secondary) infringer should only be liable to an injunction and
compelled to return profits made on the infringement. The plaintiff
must prove that, directly or indirectly, the defendant's alleged
infringement is taken from the work or subject-matter in which he/she
claims copyright. Thus the two elements necessary to the plaintiff's
case in an infringement action are:
a. ownership of the copyright by the plaintiff, and
b. copying by the defendant.
OWNERSHIP:
6
In the Introduction, at 5.

8
Subject to certain exceptions7 the author of a literary, dramatic,
musical or artistic work is entitled to the copyright in the work. The
author is the person who actually writes, compiles, composes or draws
the work in question, although the idea of the work may have been
suggested by another, or the work may have been subsequently
altered in accordance with the advice of another.8

Where, however, the compiler of a directory or work of reference

collects written material from a large number of individuals and
arranges and publishes the result, the compiler and not the individuals
supplying the information, is the author of the work. A mere copyist or
a person to whom words are dictated for the purposes of being written
down is not an author; but a translator from one language into another
or a reporter of legal decisions or of a speech is an author. The author
of a photograph is the person who, at the time when the photograph is
taken, is the owner of the material on which it is taken. The author of
the design of a building in which copyright subsists is the architect who
makes the plans and supervises the work and not the builder

Joint Authors
Joint authors are in the position of tenants in common and not of joint
tenants. One joint author cannot lawfully reproduce the work
himself/herself or grant licenses to others to reproduce it without the
consent of the other joint author(s), but he/she may by himself/herself
take proceedings for infringement. Where copyright would not have
subsisted in a work if one of the joint authors had been the sole author
(or if more than one of the joint authors had been the sole joint
authors), the copyright is owned by the other joint author(s).

7
As to works by an author under a contract of service or apprenticeship, commissioned artistic works,
works of joint authorship, etc.
8
Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974,
at 548.

9
Ownership by the plaintiff (the copyright owner usually) breaks down
into the following constituent parts:9
1. Originality in the author.
2. Copyrightability of the subject matter.
3. Citizenship status of the author such as to permit a claim of
copyright.
4. Compliance with applicable statutory formalities.
5. (If the plaintiff is not the author), a transfer of rights or other
relationship between the author and the plaintiff so as to constitute
the plaintiff the valid copyright claimant.

With respect to most of the above elements of ownership, the

copyright registration certificate constitutes prima facie evidence, in
favor of the plaintiff. This is clearly true on the issue of originality, as
well as in establishing the copyrightability of the subject matter and
the citizenship status of the author. Satisfaction of the statutory
formalities is likewise presumed by reason of the registration
certificate, as is the plaintiff's chain of title from the author, where the
plaintiff obtained an assignment of rights prior to registration. By
reason of the benefit of such presumption, the only evidence required
of the plaintiff to establish prima facie ownership in addition to the
registration certificate is evidence of plaintiff's chain of title from the
original registrant. Once the plaintiff has established prima facie
his/her ownership, the burden of proof then shifts to the defendant to
counter this evidence.

COPYING
It has been accepted that copying could occur subconsciously where a
person reads, sees or hears a work, forget about it but then reproduces
9
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4.

10
it, genuinely believing it to be his/her own. In such cases, proof of
copying depends on…a number of composite elements; the degree of
familiarity with the plaintiff's work, the objective similarity of the
defendant's work, the inherent probability of coincidence…10

Also, a work may be copied by imitating a copy of it. If the plaintiff

owns a copyright drawing and then turns it into a three dimensional
article and this is copied in three dimensional by the defendant, the
causal connection for indirect copying of the drawing will be
established. Likewise, if a novel is turned into a play, which is in turn
converted into a ballet- but the causal chain must run in the right
direction.11

Where the defendant has reworked the plaintiff's material, there

comes a point beyond which the plaintiff has no claim. Whatever may
have been the position in the past, the fact that the defendant has
himself/herself added enough by way of skill, labor and judgement to
secure copyright for his/her effort does not, under the present law,
settle the question whether he/she has infringed; rather the issue is
whether a substantial part of the plaintiff's work survives in the
defendant's so as to appear to be a copy of it. 12 Thus, would book
reviews constitute a copyright infringement if we extended this logic?13

10
Per Wilberforce J., Francis Day v. Bron [1963] Ch. 587, at 614; cited from Cornish, W.R., Intellectual
Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet and Maxwell, London, 1996,
at 361.
11
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4.
12
In Joy Music v. Sunday Pictorial [1960] 2 Q.B. 60, a song lyric had been parodied in pursuit of Prince
Philip; but only one repeated phrase was taken, and that with pointed variation. There was held to be no
infringement as a way of emphasizing that nothing substantial must remain from the plaintiff's work: Cited
from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn,
Sweet and Maxwell, London, 1996, at 364.
13
In Warwick Film v. Eisinger [1969] 1 Ch. 508 where an author published an edited version of Oscar
Wilde's trials an earlier version previously having appeared, he acquired copyright in the whole by virtue of
his work in selecting and providing linking passages. But a defendant who took from large passages from
the transcript, but very little of his own work was held to infringe, thereby neatly adjusting the scope of
protection to the author's literary effort.

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Where the plaintiff's work records information, the use that a
defendant may make of it for his/her own purposes may not be a
substitute for exercising his/her own labor, skill and judgement, but is
to be taken as a starting point for his/her own collation of information
or as a means of checking his/her own independent research.

It is generally not possible to establish copying by direct evidence,

since it is rare that the plaintiff has available a witness to the act of
copying. Apart from the unavailability of witnesses, copying may occur
without any objective physical manifestation since copying from
memory is no less actionable than is copying from direct view.
Therefore copying is established indirectly by the plaintiff's proof of
access and substantial similarity- although proof of access and
substantial similarity are sine qua non to a finding of copying, such
evidence does not require the trier of fact to find copying.14

But, despite proof of access and substantial similarity, the trier of fact
may uphold a finding of no copying if such trier believed the
defendant's evidence of independent creation, except where the
similarity between the two works is such that no explanation other
than copying is reasonably possible. If the defendant in fact copied
from a work other than that of the plaintiff's (and such work was not
itself copied from the plaintiff's) it is irrelevant in plaintiff's
infringement claim that the defendant may have infringed the
copyright in such other work.

Since a plaintiff ordinarily can do no more than offer evidence of

access and substantial similarity in proving the act of copying, the
Courts have sought to give some measure of protection to the
plaintiff's against a trier's uncritical acceptance of the defendant's
14
.Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-6.

12
answering claim of independent creation. This has been achieved
through the imposition on the defendant of a high standard of proof of
independent creation where the plaintiff has clearly established access
and substantial similarity.

Where, however apart from the similarities appearing in the two works
there are also material and broad dissimilarities which negative the
intention to copy the original and the coincidences appearing in the
two works are clearly incidental, no infringement of the copyright
comes into existence.

Infringement of copyright being a tort, in the ordinary course, an

employer will be vicariously liable for any infringement committed by
an employee in the course of his/her employment and for the acts of
independent contractors which he/she specifically requested. In this
The Copyright, Designs and Patents Act, 1988 has introduced three
forms of infringement:
i. Authorizing infringement by others [section (16)(2)]
ii. Permitting a place of public entertainment to be used for
performance of a work [section 25]
iii. Providing apparatus for performing, playing or showing a work,
etc.[section 26]

Authorize has been read as bearing its dictionary meaning of sanction,

countenance or approve. In line with theses broad synonyms, it has
been said that indifference, exhibited by commission or omission, may
reach a degree from which authorization or permission may be
inferred.

Permitting performance is expressly stated to be subject to the

defense of reasonable belief that there would be no infringement,

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authorizing is not the subject of specific exceptions, but the meaning
given to the word excludes liability when the defendant could not
reasonably expect that another would infringe. It is also necessary to
show an act of infringement which has occurred as a result of the
authorization.

Look and Feel Test

One of the surest and safest test to determine whether or not there
has been a violation of copyright, is to see whether a reasonable man,
who is a spectator/viewer after having seen or read 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.

In Lotus Development Corp. v. Paperback Software International15 the

Court laid down the look and feel test as:
1. The decision maker must focus upon alternatives that counsel may
suggest, or the Court may conceive, along the scale from the most
generalized conception to the most particularized, and choose some
formulations- some conceptions or definitions of the idea- for the
purpose of distinguishing between the idea and its expression.
2. The decision maker must focus upon whether an alleged expression
of the idea is limited, to elements essential to the expression of that
idea (or in one of only a few ways of expressing the idea) or instead,
includes identifiable elements of expression not essential to very
expression of that idea.
3. Having identified elements of expression not essential to every
expression of the idea, the decision maker must focus on whether

15
740. F.Supp. 37 (D.Mass. 1990); wher it was held that Lotus' copyright in its popular 1-2-3 spread sheet
program protected the user interface and that Paperback in its spread sheet program had infringed Lotus'
copyright by copying a number of aspects; Cited from Gopalakrishnan, N.S., Intellectual Property and
Criminal Law, National Law School Of India University, Bangalore, 1994, at 165.

14
 those elements are a substantial part of the allegedly copyrightable
work.

But the Courts in the subsequent cases of Lotus Development Corp. v.

Borland International Inc16., and Apple Computer Inc. v. Microsoft
Corp.17 refused to rely on this test, but preferred the abstraction-
filtration test.

Abstraction-Filtration Test
In 1992, there was another test called the abstraction-filtration test,
which was an improvement18 over the previous look and feel test
developed in the case of Computer Associates International v. Altai.19
1. Breaking down the allegedly infringed program into its constituent
structural parts.
2. Examining each of the parts for such things as incorporated ideas,
expression that is necessarily incident to those ideas, and elements
that are taken from the public domain in order to sift out all non-
protectable material
3. Comparing whether 'creative expression' remains after following
this process of elimination, with the structure of the allegedly
infringing program. The result of this comparison- will determine
whether the protectable element of the programs at issue are
substantially similar, so as to warrant a finding of infringement.

16
788 F.Supp. 78 (D.Mass. 1992); Cited from Gopalakrishnan, N.S., Intellectual Property and Criminal
Law, National Law School Of India University, Bangalore, 1994, at 167.
17
24 UPSQ 2d 1081 (N.D.Cal. 1992); Ibid.
18
Tripathy, B.P. and P.K.Prabhat, A Case for Effective Legal Protection of Computer Programs in India- A
Panacea for the Paradox, 1 Crit Law (1998), 11, at 15.
19
23 USPQ 2d 1241 (2d. Cir. 1992); Cited from Gopalakrishnan, N.S., Intellectual Property and Criminal
Law, National Law School Of India University, Bangalore, 1994, at 166.

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But this test has been criticized on the ground that it is difficult to
apply in practice and it seems artificial to break up a program into such
constituent parts.

ACCESS
Some Courts have defined access as the actual viewing and knowledge
of plaintiff's work by the person who composed defendant's work. This
definition is submitted to be erroneous. Just as it is virtually impossible
to offer direct proof of copying, so it is often impossible for a plaintiff to
offer direct evidence that defendant (or the person who composed
defendant's work) actually viewed or had knowledge of plaintiff's work.
Such viewing will normally have occurred, if at all, in a private office or
home outside of the presence of any witnesses available to the
plaintiff. For this reason it is clear that even if evidence is unavailable
to prove the fact of actual viewing, if it can be shown that the
defendant had the opportunity to view, this (when combined with
substantial similarity) is sufficient to permit the trier to conclude that
copying has occurred. But this result is often reached through the
Courts reasoning that the opportunity to view creates an inference of
access, which in turn creates an inference of 'copying'.

Such an approach tacitly if not expressly adopts the actual viewing

definition of access; seeming more just in terms of plaintiff's burden of
proof20 to regard a reasonable opportunity to view as access in itself
and not merely as creating an inference of access. This approach is
20
Even if the plaintiff is unable to prove actual viewing by the defendant, but is able to establish the
reasonable opportunity to view, this should be regarded as a showing of access for the purposes of shifting
the burden to the defendant to establish independent creation. If the burden shifts to defendant where
physical possession of the manuscript is shown notwithstanding a claim by defendant that he/she had
forgotten its contents, or did not read it, the burden should likewise shift where the defendant denies that
he/she ever obtained physical possession although he/she had a reasonable opportunity to obtain such
possession. In each case the burden should shift because the plaintiff often can no more prove actual
physical possession than he/she can, assuming such possession, prove the act of reading and the memory of
such reading.; Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at
13-10.

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consistent with what is perhaps the more prevailing definition of
access, that is, the opportunity to copy. The trier of fact may conclude
that the person who created defendant's work had, but did not avail
himself/herself of the opportunity to view, but this conclusion is with
regards the ultimate issue of copying.

Reasonable opportunity as here used, does not cover any bare

possibility in the sense that anything is possible. Access may not be
inferred through mere speculation or conjecture. There must be a
reasonable possibility of viewing plaintiff's work- not a bare possibility.
Thus, the mere fact that plaintiff's manuscript is physically in the same
city as that in which the defendant resides does not give the defendant
an opportunity to view the manuscript notwithstanding the bare
possibility of such an access. On the contrary, the mere lapse of a
considerable period of time between the moment of access and the
creation of defendant's work does not preclude a finding of copying.21

When plaintiff must prove access:

The owner must show that a causal connection is the explanation of
the similarity between the work and the infringement- the other
possibilities being that he/she copied from the defendant, that they
both copied from a common source, or that they arrived at their results
independently. On the other hand, he/she does not have to show that
the defendant knew that his/her copying constituted an infringement.
As with other rights of property recognized at common law, the
primary exclusive rights may be asserted against even the defendant
who honestly believes that he/she purchased the right to reproduce
the work.

21
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-12.

17
Where there has been copying and all or virtually all of a work is taken
without emendation, the proof of infringement is straightforward;
difficulties arise to the extent that this is not the case. The Copyright,
Designs and Patents Act, 1988, Section 16(3)(a) requires that a
substantial part must be copied giving expression to a sense of fair
play. Thus this depends on the quantity rather than the quality of what
the defendant has taken. It has also been insisted that the copying
must be of the expression of ideas, rather than just of the ideas; but
this an ill-defined distinction. But Courts are inevitably pressed with
cases where the plaintiff's grievance is that he/she thought of the very
first instance of a whole type of work (a detective story, a restaurant
guide, et al) and wants rights over all subsequent variants. In relation
to infringement, the idea/expression dichotomy directs a necessary
enquiry to restrict copyright to a taking from the protected work, and
there seems no better indicator of the judgement called for.

But in the judges view if what is worth copying is prima facie worth
protecting, it may considerably stretch the notion of expression. Once
convinced that the defendant unfairly cut a competitive corner by
setting out to revamp the plaintiff's completed work, they will not be
easily dissuaded that the alterations have been sufficient. In this
approach, the taking of ideas alone, is confined to cases where the
defendant does not start from the completed work at all, save in the
sense that he/she goes through a similar process of creation (for
example where he/she draws his/her own cartoon for the same basic
joke)22

Ordinarily in order to prove copying by the defendant, the plaintiff

must prove access as well as substantial similarity. If, however, the

22
Cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd
edn, Sweet and Maxwell, London, 1996, at 363.

18
similarity between plaintiff's and defendant's work is sufficiently
striking and substantial, the trier of fact may be permitted to infer
copying notwithstanding the plaintiff's failure to prove access. Minus
access, the similarities must be so striking as to preclude the
possibility that the defendant independently arrived at the same result.
A defendant who is shown to have adopted the plaintiff's imaginative
embellishments or plain errors will be in particular jeopardy. It has
been said that although expert testimony is not required to establish
substantial similarity, it is required to establish striking similarity such
as to dispense with the need for proof of access. But the judges have
hesitated to fetter the assessment of each case on its facts by the
introduction of rules formally shifting the burden of proof from plaintiff
to defendant at any stage of the trial.

Even if there is a very striking similarity between the two works,

copying may not be inferred without proof of access in the following
circumstances:23
i. If both plaintiff's and defendant's works are trite or
commonplace.
ii. If plaintiff fails to establish prior creation.
iii. If the identity between the two works may arise from identical
functional considerations rather than from copying.
iv. Where the defendant offers direct and highly persuasive
evidence that access could not have occurred.

Where the works in question are non-dramatic, probably more by way

of detailed incident and language must be taken before there is
substantial copying. Where the works are artistic, and the Court is
testing sufficient similarity by appeal to the eye, stress is sometimes

23
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-15.

19
laid upon the feeling and artistic character of the plaintiff's work, an
idea that can be extended to the screen displays of a computer.

Suppose an author creates a work, and subsequently, at a time when

he/she does not own the copyright, he/she reproduces it in a second
work. Some concession in his/her favor seems called for, in order to
allow him/her to continue doing the kind of work at which he/she is
proficient. The relation between the two end-products would be
considered rather than the relation between the first work and what
has been copied from it. The fact that the author made his/her
reproduction unconsciously (if he/she can be believed) would probably
enhance any claim not to have infringed.

What constitutes proof of access

Evidence which directly tends to prove either that the defendant
viewed the plaintiff's work or had a reasonable opportunity for such a
view is admissible to prove access. Thus, from proof that a plaintiff
mailed the allegedly infringed material to the defendant's principal
office, it may be inferred that the material was in fact received , and
the trier of fact may infer therefrom (unless contradictory evidence is
to believed) that the persons responsible for defendant's work had
prior knowledge of plaintiff's work.24 Sometimes access may be proved
by mere circumstantial evidence. Therefore, unusual speed in the
creation of the defendant's work may constitute some evidence that
the defendant had access to and used the plaintiff's work, rather than
resorting to independent creation. Similarity between the plaintiff's
work and other materials created by the defendant which are not the
subject of litigation may likewise constitute circumstantial evidence
that the defendant had access with respect to his/her creation of the
work in issue
24
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-17.

20
KNOWLEDGE
The Court is not concerned with the knowledge of a reasonable man
but is concerned with reasonable inferences to be drawn from a
concrete situation as disclosed in the evidence as it affects the
particular person whose knowledge is in issue. One must consider the
concrete situation disclosed by the evidence and then decide what
knowledge is to be attributed to the defendant, either in the way of
express knowledge or knowledge that these particular defendants
must have inferred. The knowledge which has to be proved is actual
not constructive.

Once a plaintiff fixes a defendant with notice of the facts relied on as

constituting an infringement, the defendant cannot contend that
he/she is without knowledge because he/she has in good faith a belief
that in law no infringement is being committed.

ACQUIESCENCE/CONSENT
Beyond the limitation periods for particular wrongs lies a further
question: if a defendant has been left to pursue a course of
infringement for a substantial period of time, can the right-owner be
taken to have consented to its continuance? If so, no part of his/her
activity, even the most recent is actionable. This consent may be
expressly given or it may be implied from the circumstances; it may
occur before, at the time of, or after the infringing act. Conduct alone
can create an implied license in some circumstances where the
plaintiff represents, expressly or impliedly, that the defendant's
conduct is not an infringement, he/she will thereafter be estopped from
asserting his/her right. Where he/she both know, of his/her right
against the defendant and that the defendant mistakenly believes that
he/she is entitled to do what he/she is doing, yet he/she stands by

21
without asserting his/her right, he/she will be taken to have acquiesced
in the wrong. If all this can be proved, there is no need to show any
element of delay.

In Willmott v. Barber25 Justice Fry has set out five requisites to establish
acquiescence. They are as follows:
1. The plaintiff must have made a mistake as to his/her legal rights.
2. He/she must have expended some money or must have done some
act on the faith of his/her mistaken belief.
3. The defendant, the possessor of the legal right, must know of the
existence of his/her own right which is inconsistent with the right
claimed by the plaintiff, for the doctrine of acquiescence is founded
upon conduct with a knowledge of the legal rights.
4. The defendant, the possessor of the legal right must know of the
plaintiff's mistaken belief of his/her rights.
5. The defendant, the possessor of the legal right, must have
encouraged the plaintiff in the expenditure of money or in other
acts which he/she has done either directly or by abstaining from
asserting his/her legal right.

But Buckley LJ, in Shaw v. Applegate26 commented: "I do not think it is

clear that it is essential to find all the five tests set out by Fry J literally
applicable and satisfied in any particular case. The real test, I think
must be whether upon the facts of the particular case, the situation
has become such that it would be dishonest or unconscionable, for the
person having the right sought to be enforced, to continue to seek to
enforce it".

25
(1880) 15 Ch D 96 at p. 105; Cited from Narayanan, P., Law of Copyright and Industrial Designs,
Eastern Law House, Calcutta, 1995, at 237.
26
(1978) 1 All ER 1223 at 131.

22
FAIR DEALING
The requirement of substantial taking prevents the owner from
objecting to minor borrowings from his/her copyright work. The three
most important exceptions turn upon a qualitative assessment. They
exempt copying for certain purposes if it amounts to no more than fair
dealing. In these cases the Courts are left to judge fairness in the light
of all the circumstances. If there is substantial copying, it is a moot
point whether the use could nevertheless be justified for a reason
beyond the confines of the statutory exceptions.

1. Research or Private Study- This applies to the copyright in literary,

dramatic, musical and artistic works and published editions. The
role of these defenses is particularly important in the field of
Education. It is plain from the parliamentary evolution of this
defense that it may in principle cover research in commerce,
industry and government. What is fair will presumably vary to fit
each case.

2. Reporting Current Events- This permits all works, other than

photographs, to be used for reporting current events. Photographs
have been treated differently in order to preserve the full value of
holding a unique visual record of some person or event. To come
within the exception, the event itself must be current and not the
pretext for reviving historical information. A spate of photographs of
Princess Diana and the men in her life being published prior to her
untimely death (at the hands of the paparazzi?) was not justified by
the British tabloids with a copyright license, demanding professional
courtesy in the least. The exception must be read in conjunction
with a number of cognate provisions.27

27
The Copyright, Designs and Patents Act, 1988, Sections 31 (incidental inclusion), 58 (record of spoken
words), 62 (artistic works on public display).

23
3. Criticism or Review- This is the most general exception, allowing
works to be used for purposes of criticism or review (of themselves
or another work), one precondition of fairness being that the source
should be sufficiently acknowledged (as is the case with
footnotes/endnotes). It may concern the ideas expressed as well as
the mode of expression (particularly relevant in cases of book
reviews, as earlier mentioned) and the Courts will not permit
wholesale borrowing to be dressed up as critical quotation.

PUBLIC POLICY
The judges have kept the power to refuse protection to a copyright
owner on public policy grounds.
1. Policy Against Legal Protection- It justifies the refusal of relief on a
variety of grounds which express disapproval of the content of the
work; because it is obscene, sexually immoral, defamatory,
blasphemous, irreligious, heresy, or seriously deceptive of the
public. A work which satisfies the general criterion of originality
does not lose its copyright, or cease to be enforceable, because it
embodies another copyright work to an extent which requires a
license and that authority has not been obtained.
2. Policy Favoring Dissemination- The ability to protect confidential
information particularly in avoidance of breach of confidence cases
is of utmost importance here.

PRESUMPTIONS IN COPYRIGHT INFRINGEMENT ACTIONS

There are some statutory presumptions which throw the legal
(persuasive) burden of proof upon the defendant to infringement
proceedings. Where literary, dramatic, musical or artistic copyright is
concerned they are:

24
i. That a person named as author is the author of a work; and that
he/she did not produce it in circumstances (such as in the course
of employment) which would deprive him/her of the copyright
initially. If this does not apply, then
ii. That if first publication of a work qualifies it for copyright,
copyright subsists and was owned at first publication by the
person named as publisher.
iii. That, where the author is dead or unidentifiable when the action
is brought, the work was original and was first published where
and when the plaintiff alleges.
As regards copyright in sound recordings, films and computer
programs, there are presumptions that statements naming the
copyright owner, or giving the date or place of first publication, are
true.

25
REMEDIES
There are many instances where justice can only be done if the Court
acts to prevent further damage to the plaintiff pending trial, or to
prevent the defendant from doing something that would injure the
plaintiff’s chance of getting the relief he/she is entitled to at trial.

Ex Parte Injunction
An injunction will only be granted ex parte in cases where the plaintiff
has shown clearly that there is a real urgency, making it impossible to
give the normal notice and that he/she has not delayed in applying for
the injunction. They are normally granted for a short period, usually to
the first day on which there can be a hearing of the matter, immediate
notice to be given to the defendant.

Interlocutory Injunctions
It is often of importance for a plaintiff to obtain immediate protection
from a threatened infringement of his/her copyright. In such a case,
he/she should apply for an interlocutory injunction for the purpose of
preserving his/her rights from further interference pending the trial of
the action and if the granting of such an injunction will not seriously
interfere with the defendant, it may be granted although the plaintiff
does not fully prove his/her title to the right alleged to be infringement,
or has only an equitable title, or although the quantity of the
defendant’s work which constitutes the infringement has not been
ascertained.

An interlocutory injunction will not, however be granted, where the

defendant might suffer irreparable injury from an injunction restraining
him/her from publishing, pending the trial and the plaintiff can be
properly protected, by the defendant being ordered to keep an

26
account, nor will it normally be granted where a bona fide defense of
fair dealing has been pleaded, or if the plaintiff has been guilty of
undue delay in coming to the Court or his/her conduct has amounted
to acquiescence in the infringement, or if there is any substantial
doubt as to the plaintiff’s right to succeed.28

The application for the interlocutory injunction is made to the court by

notice of motion, which is served on the defendant. This must be
accompanied by written evidence supporting the plaintiff’s case and
must be sufficient to establish a prima facie case on each of the
requirements for the grant of such an injunction. The defendant has
the opportunity to submit written evidence in reply, if he/she wishes to
contest the motion, else he/she will normally resolve the matter by
giving the plaintiff an undertaking not to do the acts specified in the
notice of motion.

Anton Piller Orders29

The usual basis for claiming substantial damages for infringement
relates to the commercial value of the work; as with patents, the claim
is either for compensation for lost profits- because the defendant's
infringements have lost the plaintiff his/her own opportunities for sale.
How far this will be assumed from the very fact of the defendant's
piratical sales depends on the particular circumstances. Alternatively,
the claim is for the misappropriation- because the plaintiff has lost the
chance of licensing or selling his/her copyright to the defendant. As
part of such a claim, the plaintiff is entitled to show that the cheap or
vulgar form of the defendant's piracy, injured reputation and so lost
him/her sales.

28
Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London,
1974, at 610.
29
Based on the case decision in Anton Piller K.G. v. Manufacturing Process Ltd. (1976) RPC 719; see also
E.M.I. Ltd. and others v. K.N.Pandit.[1975] 1 All ER Ch D 418.

27
Purpose and Need
[The purpose of an Anton Piller order is that, in extreme cases where
there is very clear and strong prima facie evidence of an infringement
of copyright, trade mark or other rights, it enables the plaintiff to enter
the premises, first, to seize the infringing material and secondly, to
obtain information as to persons from whom the defendant obtained
the supplies of the infringing material and the persons to whom the
defendant in turn has supplied the infringing material.] But an Anton
Piller order will not be passed where the defendant are reputable
public companies and there is no reason for thinking that they would
not punctiliously comply with any order of the Court.

Anton Piller Orders have been a response to growing concern over the
current volume of sound recording, video and other copyright piracy
and the imitation of popular trade marks, but they are equally
available, for instance, in breach of confidence cases. They are
invaluable in cases where there is a real possibility that the defendants
may destroy such material before any application inter partes can be
made. In Anton Piller's case, the Court of Appeal approved a procedure
that is of major practical importance to some owners of intellectual
property rights. The plaintiff applies to the High Court in camera
without any notice to the defendant, for an order that the defendant
permit him/her (with his/her solicitor) to inspect the defendant's
premises and to seize, copy or photograph material relevant to the
alleged infringement. The defendant may be required to deliver up
infringing goods, keep infringing stock or infringing papers, and even
to give information, for instance, about his/her sources of supply, or
the destination of stock passing through his/her hands. An injunction
against infringement may be part of the order.

28
Technicalities
The form of the order makes it plain that the Court is not ordering or
granting anything equivalent to a search warrant. The Order is an
order on the defendant in personam to permit inspection. It is,
therefore open to him/her to refuse to comply with such an order, but
at his/her peril either of further proceedings for contempt of Court- in
which case, of course, the Court will have the widest discretion as to
how to deal with it and if it turns out that the order was made
improperly in the first place, the contempt will be dealt with
accordingly- but more important, of course, the refusal to comply may
be the most damning evidence against the defendant at the
subsequent trial.30

The order will be made if the plaintiff

i. Provides an extremely strong prima facie case of infringement,
ii. Shows that the damage, actual or potential to him/her is very
serious, and
iii. Provides clear evidence that the defendant has in his/her
possession incriminating documents or things and that there is a
real possibility that this material will be destroyed before any
application inter partes can be made. There are certain
safeguards which are said to distinguish this sort of order from a
search warrant which are:
1. The plaintiff's solicitor, who is an officer of the Court, must
attend.
2. The defendant must be given time to think and must be
informed of his/her right to consult his/her own solicitor and to
apply to discharge the order.
3. The plaintiff must also give a cross-undertaking in damages.

30
Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet
and Maxwell, London, 1996, at 48.

29
If consequent upon the grant of an Anton Piller order the evidence
shows that the order was in fact justified then the fact that the
evidence before the learned judge was not as strong as it ultimately
became, does not provide a ground for challenging the order itself.
However, it will not affect the situation if the order was obtained mala
fide or by some material non-disclosure. Where the Anton Piller order
has been obtained on the basis of non-disclosure of material facts, the
judge has a discretion to exclude evidence obtained as a result of the
order. Even if the non-disclosure was innocent, the Court will not lightly
allow a party to keep the benefit of it. Where the disclosure is serious
and substantial it should only allow use of the yield for good and
compelling reasons.

The proceedings turn upon the plaintiff's evidence alone and they
occur in camera. If a single judge is satisfied prima facie that there is
infringement and the likelihood of serious injury, the defendant will
know nothing until the inspection is demanded. It takes considerable
temerity then to challenge the findings on which the order was made.
The process has been labeled draconian and essentially unfair in that it
condemns a defendant without having been heard.

The Courts strive to be watchful for plaintiff's who go to excess,

seeking for instance, a means of shutting out the defendant from all
business, legitimate as well as illegitimate. The ground on which
defendants have challenged orders with some regularity is the
plaintiff's failure to fully disclose all material circumstances. This it has
been said, should err on the side of excess; for it is for the Court, not
the plaintiff's advisers, to decide whether the order is justified. It is no

30
answer to a charge of inadequate disclosure that enough was shown to
justify the making of the order.

Search and Seizure

Prior to the Copyright Amendment Act, 1984, seizure of infringing
copies by police was possible only after a magistrate had taken
cognizance of an offence relating to infringement under Section 63
[The (Indian) Copyright Act, 1957]. Moreover such seizure could only
be of infringing copies and did not extend to plates used for making
infringing copies. After the Act, the powers of the police have been
widened. Now Section 64 provides that where any police officer not
below the rank of sub-inspector of police is satisfied, that an
infringement or an abetment of infringement of copyright in any work
has been, or is likely to be committed, he/she may seize without any
warrant all copies of the work and all plates used for the purpose of
making infringing copies of the work, wherever found and the copies so
seized must be produced before a magistrate as soon as practicable.

Moreover, if business records have been seized, they should be

retained until trial, but should be returned after necessary information
has been extracted from them; and where infringing material has been
seized it should be handed over to the defendant's solicitor, once
he/she is on the record, upon his/her undertaking to keep it in safe
custody and produce it, if required, at the trial.

No Court inferior to that of a Presidency Magistrate or a Magistrate of

the First Class, can try an offence under the Act. Any person can make
a criminal complaint and a magistrate will be competent to take
cognizance of any offence upon receiving a complaint of facts which
constitutes such offence irrespective of the qualifications or eligibility
of the complainant to file a complaint. Ordinarily however, it is the

31
owner of the copyright or any person who has an interest in the
copyright, for example the licensee who files a complaint. A joint
author can also file a complaint. The conduct of the criminal
proceedings is governed by the Criminal Procedure Code.

The defendant is protected only by the discretion on costs and the

plaintiff's cross-undertaking in damages. If the order was not justified-
whether or not it is subsequently discharged- the defendant will be
entitled to compensatory damages for the contumely or affront in the
way the proceedings were used against him/her, and even to
exemplary damages.

Right against self-incrimination

The acute difficulties of balancing efficacy against fairness have
surfaced equally over the element of instant discovery in any Anton
Piller Order, which requires answers on sources of supply or customers.
Since these answers would in many cases furnish evidence of criminal
conduct, defendants at first sought to plead in response a privilege
against self-incrimination. The House of Lords uphold this plea in any
case where there is more than a remote or fanciful chance that a
serious charge, attracting heavy penalties might result. This meant
that the privilege was available to those who ran substantial piracy
operations and so were likely to be charged with conspiracy as to
defraud, as distinct from (say) a summary offence under the copyright
or trade descriptions legislation, which might be appropriate against a
street trader. Because the upshot was to offer a haven to those
apparently most culpable, Parliament proved willing to intervene. By
the Supreme Court Act 1981, Section 72, in proceedings for
infringement of intellectual property rights31 or passing off, a defendant

31
This, is the first statutory use of the term, encompassing 'patents, trademark, copyright, registered design,
technical or commercial information or other intellectual property ': Section 73(5).

32
may after all be compelled to answer a question or comply with an
order which would tend to expose him/her to proceedings for a related
offence or recovery of a related penalty. It is however, not possible to
use any statement or admission so procured in any equivalent criminal
proceedings.

Discovery of names
Sometimes the only lead that a right-owner can pick up about
infringing goods is that they are passing through the hands of some
person in the course of transit. That person may however not be
infringing or be likely to do so. The Court may order such a person to
disclose the names of the consignors or consignees responsible, if this
is the only way for the plaintiff to discover whom he/she should act
against and of the person against whom the order is made, is shown
(however unwittingly) to be facilitating the wrongful acts.

Discovery will not be ordered against anyone who can give information
as to the identity of the wrongdoer. But discovery to find the identity of
a wrongdoer is available against anyone whom, the plaintiff has a
cause of action in relation to the same wrong. It is not available against
a person who has no other connection with the wrong, than that he/she
was a spectator or has some document relating to it in his/her
possession.

Interlocutory orders to furnish the names and addresses of persons

responsible for supplying infringing copies to the defendant can be
obtained in suitable cases. The principle applied in such cases has
been stated as "where a person, albeit innocently and without
incurring any personal liability became involved in the tortious acts of
others, he/she came under a duty to assist one injured by those acts,
by giving him/her full information by way of discovery and disclosing

33
the identity of the wrongdoers, and for that purpose, it mattered not
that such involvement was the result of voluntary action or the
consequences of the performance of a duty statutory or otherwise.

There is no rule of evidence that evidence disclosed under compulsion

cannot subsequently be used against the person disclosing it either in
another civil action or in a criminal prosecution.

Mareva Injunction
[More in general evolution in interlocutory procedure: the Mareva
Injunction is directed, not to the uncovering of assets belonging to the
defendant which may be needed to satisfy judgement in the action,
particularly if they may otherwise be removed from the jurisdiction.
Orders are frequently made which contain both Anton Piller and
Mareva terms. These may relate to bank accounts and other financial
assets. Equally, there have been orders directed to the seizure of
specified valuables, in which according to the evidence, the proceeds
of infringement have been invested. Just as a defendant is permitted
an allowance for living expenses out of financial assets that are subject
to a Mareva order, so also, where the order relates to other assets,
he/she will not be deprived of things needed for living and conducting
legitimate trade.]

Discoveries, Interrogatories, Inspection

English Courts have generally been careful to protect defendant
against speculative suits that are no more than fishing expeditions-
proceedings begun to find out what, if anything might really be
claimed. Accordingly, infringement actions cannot be launched
effectively unless the plaintiff can specify, in his/her statement of
claims, particulars of at least one act of infringement. If he/she does
not give them and does not comply with any order for further and

34
better particulars he/she will be unable to defend himself/herself on a
motion to strike out pleadings or actions.

Provided that he/she can show enough to repel attacks on his/her

pleadings, the plaintiff will carry his/her case forward to the stage of
pre-trial preparations. As in other types of civil litigation, discovery of
documents and the administration of interrogatories are steps, which
on occasion may provide important evidence or admissions. In the
United States such steps have been inflated into a form of discovery
that allows wide-ranging preliminary cross-examination of party by
party. If the documents discovered contain confidential information the
other party may be restrained from using the information for other
purposes such as revelations in the press or further litigation.

Beyond this there are special procedures for cases involving industrial
techniques. The plaintiff may need to discover what the defendant is
doing; but the defendant may fear that the inspection by him/her will
reveal the defendant's own secrets- a fear that, in the race to get
ahead, is sometimes acute. The Court has power to order inspection
even against this sort of objection. But while it will not require first to
be satisfied prima facie that the defendant is infringing, it may need to
be shown that there are formidable grounds rather than a mere
suspicion. It may try to alleviate the defendant's anxieties by requiring
an independent expert to make the inspection, then it may have to be
done by the plaintiff and his/her advisers; but possibly on condition
that nothing is copied or taken away and that, all involved, are placed
under obligations to respect confidence.

In the main it is not isolated acts of infringement but runs of production

that provoke the owner of intellectual property rights into taking
action. Accordingly, a defendant's stake is likely to be high; and it may

35
well become higher if proceedings against him/her are delayed until
he/she has established commercial production and tied himself/herself
to distribution arrangements.

The question here is: within what period after a particular infringement
has been perpetrated must a writ be issued? The various infringement
actions in our field, being tortious in character, must normally be
begun within six years, of the wrongful act. The same applies to
actions based upon breach of contract. Only the actions for breach of
confidence may differ (when not founded in contract) because of its
equitable origin: probably the only principle is that a period of too
great delay (laches) must not be allowed to lapse.

An action, which is commenced within the limitation period, but then

allowed to stagnate, may be struck out for want of prosecution. But
under current practice, this will only be done if there is a real prejudice
to the defendant, as well as inordinate delay. Such prejudice might
arise if witnesses in a patent action would have to testify to the state
of an art which has receded a considerable distance in time.
Software Piracy: the norm or the exception.
Infringement of copyright in software occupies the pride of place
among all cases of copyright infringement. This problem is especially
rampant in all developing countries, with poor enforcement
mechanisms contributing in no small measure to it. More importantly,
it has to do with a situation wherein people are unable to afford them,
yet they are indispensable tools for their day to day operations in a
fast growing technological world. Such clandestine or covert dealings,
which are more the norm than the exception in countries like India and
China, costs the industry a good billion dollars every year. In fact, if the
author were to make a confession, the author is presently writing this
research paper on a pirated copy of Microsoft Word!

36
The process by which the piracy is effected is very simple and that
explains the all-pervasive nature of the same32. More importantly, the
lack of specially trained judicial machinery and a capable force to deal
with such complex and varied infringements, has not helped in any
manner33. In this context, it is necessary to understand as to what
constitutes software, as to understand what is being protected.

Computer Software: The Essential Ingredients-

Computer Software is explained to constitute the following three
elements34:
 ‘Computer Program’- which is a set of instructions capable, when
put in a computer, of causing a machine having information
processing capabilities to indicate, perform or achieve a particular
function, task or result;
 ‘Program Description’-which is a comprehensive procedural
presentation, in verbal, schematic or other form, in sufficient detail
to determine a set of instructions constituting a corresponding
computer program;
 ‘Supporting Material’-which is any material other than a computer
program or a program description, created for aiding the
understanding or application of a computer program, i.e. a problem
description and user instructions.

Computer Programs:

32
Dhar, P.M., “Intellectual Property in Computer Programs: Weaknesses of the Indian Copyright Act,
1957”, JILI, Vol.28, No.4, 1982, p.487.
33
Ibid.
34
World Intellectual Property Organisation (hereinafter referred to as WIPO), Model Provisions on
Protection of Computer Software, (1978). See also, Puri, Kanwal, Copyright in Software, National Law
School Journal,Vol.1, 1989,p.32.

37
The Indian Copyright Act defines a computer program as “a set of
instructions expressed in words, codes, schemes or in any other form
including the machine readable medium capable of causing computer
to perform a particular task or achieve a particular result.”

Computer programs are written in two ways:

 Object code, and
 Source code.

Statements written in machine language is written in object code and

language that is understandable only by the programmer is called
source code. A program called the Compiler translates the source code
into object code.35 Since programs in source code are not
comprehensible to the computer they are translated into object code
by another program.36

It is well settled that computer programs are subject to copyright37.

Source code satisfies the various tests and is thus subject to
copyright38. However, that is not of great relevance as the software is
distributed only in the object form. The underlying source code is
generally not available to the public. The ‘pirate’ would require a
compiler to convert the programme from source code to object code,

35
Ibid..
36
Supra, n.15, p.160.
37
See the decision of the Canadian High Court in Apple Computers v.Macintosh Computers. See also,
WIPO documents in this regard, the proposed protocol to the Berne Convention regarding copyright
protection for computer programs. The TRIPS agreement in the GATT final agreement also talks of the
same. c.f.Supra n.15.
38
Supra n. 34. However, there have been umpteen objections to making source code subject to copyright
on the grounds that There is a lack of accessibility. The tradition has been to protect works produced in a
written text .The main objection has been the absence of readability or appearance to the eye or visibility.
The question is whether the absence of these would present a difficulty in proving whether there was an
infringement.

38
which is not that easy. The only question is whether the object code is
subject to copyright39.
Proving Piracy:

Just as in the case of written works, there must be a manual

comparison of the two works in the case of software such a comparison
is possible. As per Section 45 of the Indian Evidence Act, an expert
may be employed to prove a point involving any “foreign law or
science” and since such a comparison involves an expert’s evidence an
expert may be employed.

Piracy in software can occur at two levels:

 At the object code level40, and
 At the source code level41.

In order to find out whether there has been a violation of the source
code, a process of "reverse engineering” is necessary. The
decompilation or disassembly of the object form is necessary. It is in
such situations that expert intervention is actually necessary.

39
The problem that is put forth which also seems to be a problem in proving piracy of works in the object
code seems to be that the object code is in the form of sequences of electrical impulses and that this is not a
material form. Since comparison is what is necessary it must be asserted that comparison is definitely
possible because programmes can be read out of ROM and therefore compared. The other problem is with
regard to the perceptibility –visibility question and he contention that an object programme cannot be
perceived by the senses and therefore must not be subject to copyright. This is warped logic because the
very reasons enumerated just now put forth the case that piracy of object code can be done by a person who
has no knowledge at all in the area and detection of such piracy is all the more difficult owing to these
reasons. This means a better way of policing such violations must be evolved. The ROM contains electrical
impulses that embody instructions that emanate from a written description. The computer can reproduce an
object code from a magnetic tape, floppy disk or ROM in a printed form. Object code is only a mechanical
translation of the source programme into another language. Besides if there is no protection to the object
code there is no point in protecting the source code. See, Supra n.34. Also, as per the Indian Copyright Act,
all programmes expressed in codes is entitled to protection if it can perform a particular task or achieve a
particular result, thus object code is covered. Besides India has signed the Berne Convention and the GATT
Final Act and the definition has to therefore be interpreted to include source code and object code. Also see
Apple Computer v. Franklin Computer Corp, 714 F.2d. 1240.
40
This is for those who require merely the executable program.
41
This is for competitors who seek to understand the structure and logic of the program.

39
Where object code has been blindly copied, all that is necessary is a
verification of the bar code with every copy of the original program,
and a violation can be detected.
""
Non-Literal Elements of Computer Software:

The non-literal elements of computer software are elements of the

software other than the source code and object code such as the
overall layouts, menus, structure and look and feel. At one point there
appeared to be a significant amount of protection for the non-literal
elements of computer software. The courts even went so far as to
apply the notion that taking the "total concept and feel" of a computer
program (which had been found to be illegal with respect to television
characters)42 constitutes a copyright infringement43.

In the 1990's the courts began restricting protection of non-literal

elements in computer programs under copyright law. The two leading
cases in this regard are Computer Associates, Inc. v. Altai, Inc44. and
Lotus Dev. Corp. v. Borland Int'l, Inc45.

In the Altai case, Computer Associates had developed a scheduling

program and, separately, an "ADAPTER" to allow the scheduling
program to be operated on a number of different operating systems.
Altai, a competitor of Computer Associates, desired to develop an
"adapter type" program to allow its scheduling program to be used on
an additional operating system. Altai hired an employee of Computer

42
See, Sid and Marty Krofft Television Productions v. McDonald's Corp., 562 F.2d 1152 (9th Cir. 1977).
43
See generally, Scott On Computer Law, Second Edition, Section 3.47(C)(1).
44
982F.2d 693 (2d Cir. 1992).
45
489 F.3rd 807 (1st Cir. 1995). See also, Softel, Inc. v. Dragon Medical & Scientific Communications,
Inc., 118 F.3rd 955 (2nd Cir. 1997).

40
Associates who, without Altai's knowledge, brought over code from the
ADAPTER program. After Computer Associates filed suit, Altai realized
what had happened, admitted liability for the direct copying and
reconstructed the program without any literal copying. The court had
to determine whether the non-literal copying constituted an
infringement. The Court of Appeals approved the statements of the
district court below that had said "references to structure, sequence,
and organization" are no longer necessarily relevant to how computer
programming is done. With object oriented programming, and
especially with Windows based object oriented programming, such as
Visual Basic, it is difficult to point to any particular sequence of a
computer program. The court went on to describe its three step test for
determining what, if any, of the non-literal elements of a computer
program are protectable under copyright law.

The first step is "abstraction" where the court goes through a sort of
"reverse engineering." The court determines what are the various
levels of abstraction of the program. At the lowest level are the actual
instructions organized into a hierarchy of modules. At a higher level
are the functions of each module. (Note that a selection and
organization of modules could involve creativity that is protectable if at
that level the program survives Step 2 "filtration" (discussed below), as
compilations may be protectable under the Copyright Act.)

The second step is filtration of each level of abstraction. Here the court
filters out the following at each level:

(a) Elements that constitute ideas or are

dictated by efficiency;

41
 (b) Elements dictated by external factors such
as standard techniques rather than creative
originality on the part of the programmer; and

(c) Elements taken from the public domain.

The third step is the comparison test. From the filtration step, the court
has determined what of the plaintiff's program is protectable
expression and then the court determines whether or not the
"defendant copied any aspect of this protected expression, as well as
an assessment of the copied portion's relative importance with respect
to the plaintiff's program." The Court of Appeals also held that the
district court's appointment of its own expert witness was appropriate.
Following these tests, the court held that there was no infringement.
The court did hold that there was a possibility of misappropriation of
trade secrets. The court said that state trade secret law is not pre-
empted under Section 301 of the US Copyright Act.

In Lotus v. Borland, Borland had developed a competitive spreadsheet

program that included an option which provided "a virtually identical
copy of the 1-2-3 menu tree" contained in the Lotus spreadsheet
program. There was no contention that the underlying code or
protected elements of computer screen displays had been copied.
Lotus' only contention was that Borland had unlawfully copied its menu
command hierarchy. The trial court concluded that Lotus' menu
hierarchy was protectable expression because, for example, many
different words could be used for the same commands. The Court of
Appeals reversed. Referring to 17 U.S.C. §102(b), the Court of Appeals
said:

42
We hold that the Lotus menu hierarchy is an
uncopyrightable method of operation. We do not consider
whether it could also be a system, process, or procedure.

The Supreme Court granted certiorari to Lotus on an appeal from the

First Circuit Court of Appeals decision, but the Supreme Court affirmed
by default when it turned out that the Justices were equally divided on
the issue.46

As courts became reluctant to protect non-literal elements of computer

programs under copyright law, courts, at the same time, became more
comfortable with granting patent protection to computer programs.

Shifting much of the protection for non-literal elements of computer

programs from copyright to patent law has created a situation that
makes it much more difficult for start up companies to protect their
software because of the much higher expense of filing for patent
protection. In the author's view it also allowed for monopoly protection
of some matters that would not have ever been protected by copyright
law that are too easy to create in the software context to fairly be the
subject of patent protection. There is so much programming code
created every day that much of the software for which patent
protection is granted is already being used by others in the industry
who just have not gone to the trouble of applying for a patent. The
author submits that a modified hybrid of trade secret, patent and
copyright law should be developed for the protection of computer
software.

46
116 S.Ct. 804 (1996).

43
INTERNATIONAL CONVENTIONS

The TRIP's agreement of Final Act embodying the results of the

Uruguay Round of Multilateral Trade negotiations to which India is a
signatory, has tried to adopt the regime of copyright protection
provided for in the Berne Convention. Article 9.1 of the TRIP’s
agreement obliges members to comply with Articles 1 to 21 of the
Berne Convention and the Appendix thereto. In other words it purports
to amend the Berne Convention. The latter provides its own
amendment procedures, requiring revision conferences in one of the
countries of the Berne Union with voting proceeding on the basis of
unanimity. As this procedure has not been followed, Article 9 is either
ultra vires or should be read with the prefatory words- for the purposes
of this Agreement...47

Under Article 7(1) of the Berne Convention, the general term of

protection is for the life of the author and 50 years. Article 12 of the
TRIP’s Agreement provides that whenever the term of protection of a
work, other than a photographic work or a work of applied art, is
calculated on a basis other than the life of a natural person, “such term
shall be no more than 50 years from the end of the calendar year of
authorize publication”, or where authorized publication does not occur,
50 years from the end of the calendar year of the making of the work.
TRIP’s provides under Article 61 for criminal remedies against the
infringement of intellectual property rights. In addition, Members shall
be free to provide for criminal procedures and penalties to be applied,

Consequently upon India signing the GATT and entering the global
market economy, a number of changes have been made in The

47
Blakeney, Michael, Trade Related Aspects of Intellectual Property Rights: A Concise Guide to the
TRIPS Agreement, Sweet and Maxwell, London, 1996, at 45.

44
(Indian) Copyright Act, 1957 by the Amending Act of 1994, to give
effect to the obligations arising from the signing of the GATT.

Finally, mention must be made here of the Model Law of Copyright

blessed by both UNESCO and WIPO for developing countries, was
finalized at Tunis.48 To cater for the specific needs of developing
countries and to facilitate the access of these countries to foreign
works protected by copyright, while ensuring appropriate international
protection for their own works, the two convention, that is - the Berne
Convention for the protection of literary and artistic works and the
Universal Copyright Convention were revised in Paris.

48
Jhala, H.M., Intellectual Property and Competition Law in India with Special Reference to Patents,
Trademarks, Copyrights, and Know-How Contracts, N.M. Tripathi Private Limited, Bombay, 1985, at 146.

45