Chapter-II

NATURE AND SCOPE OF

COPYRIGHT PROTECTION
 CHAPTER II

NATURE AND SCOPE OF COPYRIGHT PROTECTION

2.1 Nature of Copyright:

Copyright is a right which subsists in a number of different kinds of works,
such as literary, dramatic, musical or artistic works, sound recording, and
cinematograph films.1 The Copyright Act, 1957 (herein referred to as “the Act”)

governs the law relating to copyright in India. The exclusive rights are granted to
the owner of the copyright to do certain acts in relation to the copyright work. For
example, copying the work and use the copyright work in any other way including
issuing the work to the public, renting or lending copies of the work to the public,
performing, showing or playing the work in public, communicating the work to the
public. Further, the right extends to broadcasting of the work and the making
available to the public of the work by electronic transmission in such a way that
member of the public may access it from a place and at a time individually chosen
by them and adaptation of the work or doing any of the above in relation to the
adaptation.

These rights are referred as restricted acts under copyright law enabling the
owner to recoup his economic rights. No other person can copy that work which
has been produced by the author. Any person doing any of the acts restricted by
copyright without the licence of the owner, does or authorises another to do,
infringe the copyright in the work, for which civil and criminal liability can be
enforced under the Act. Hence, the owner of a copyright has to take action to
prevent others from engaging in specified kinds of activity infringing his rights.

Section 14 of the Act defines ‘copyright’ means an exclusive right to do or

authorise the doing of any of the works specified.2 Copyright is the term to

describe the bundle of rights which are granted by statute, for limited periods of
time and subject to certain exceptions, in respect of original literary, dramatic,
musical or artistic works, such as novels, plays, poems, musical compositions,
paintings, sculptures as well as of sound recordings, films broadcasts and

1 Section 14
2 Infra n. 143

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typographical arrangements of published editions. These are proprietary rights,
giving the owner the right to do or authorise other persons to do the acts restricted
by the copyright law.3 Copyright means the right to copy, specific, a property right

in an original work of authorship (including literary, musical, dramatic,

choreographic, pictorial, graphic, sculptural, and architectural works; motion
pictures and other audiovisual works; and sound recordings) fixed in any tangible
medium of expression giving the holder the exclusive right to reproduce adapt,
distribute, perform and display the work.4 “Copyright is a monopoly of limited

duration, created and wholly regulated by the legislature and an author has
therefore no other title to his published works than that given by statute.”5 “The

term means that the right to make copies of a given work- at first it meant simply
written work - and to stop others from making copies without one’s permission.”6

Atari Games Corp. and Tengen Inc. v Nintendo of America Inc.,7 8quoting

from the opinion of the New Kids on the Block v News Am. Publishing “The
copyright holder has a property interest in preventing others from reaping the fruits
of his labour, not in preventing the authors and thinkers of the future from making
use of, or building upon, his advances. The process of creation is often an
incremental one, and advances building on past developments are far more
common than radical new concepts.9 Where the infringement is small in relation to

the new work created, the fair user is profiting largely from his creative efforts
rather than free-riding on another’s work. A prohibition on all copying whatsoever

3 Copinger and Skone James P by Kevin Garnett, Gillian Davies and Gwilym Harbottle, 15th Ed.
2005, Vol. 1, p 2
4 Black’s Law Dictionary, Thomson, West group, 8th ed. 1999, p 361
5 Ethan S Drone, A treaties on the law of property in intellectual productions 2 (1879) cited at
Black’s Law Dictionary, Thomson, West group, 8th ed. 1999, 361
6 Paul Goldstein, Copyrights Highway Paul Goldstein, Copyright's Highway from Gutenberg to the
Celestial Jukebox 138 (Stanford Univ. Press 2003) (1994); “before the 1976 Copyright Act (US)
the term copyright implied a statutory right created by Congress in order to promote the progress of
science. In the beginning the first Copyright Act 1790 protected only maps, charts, and books.
Protection was gradually extended to musical compositions and graphic works. In the middle of the
19th century, photography was developed and then protected and at the end of the century by
motion pictures and the end of the 20,h century digital technology and multimedia forms of
authorship seriously challenge the gradual compartmentalised approach to granting new rights and
new subject matter...” William F Party, Copyright Law and Practice, Black’s Law Dictionary,
Thomson, West group, 8,h ed. 1999 p 361
7 24 U.S.P.Q 2d 1015 (Fed Cir. 1992)
8 1992 WL 171570 (9th Cir. 1992)
9 See Lewis Galoob Toys Inc. v Nintendo, No. 91-16205, slip op. at 5843 (9th Cir. 1992)

60
would stifle the free flow of ideas without serving any legitimate interest of the
copyright holder.”10

Copyright is defined as the exclusive right to make copies, licence and

exploit a literary musical or artistic work, whether printed, audio, video, etc works
generated, such right by law on or after the statute comes into force and are
protected for a period of time after his or her death.*11 Copying means an imitation,

reproduction or transcript of an original; written matter intended to be reproduced

in printed form; to make copy or copies.12

Copyright consists of making available multiple rights on the same work

normally referred as ‘bundle of rights.’ In a literary work for e.g. the author can
reproduce a hardback or paperback editions, the work may be converted into
dramatic and cinematographic versions and it may be used for adaptation,
abridgement and translation. A work may also be converted into a play or a
musical work which can be performed in public.

The computer software or computer program is considered as a literary

work and accepted by almost all the countries. Few countries have also recognised
the computer programs under patent law, for e.g. the United States (U.S).
Recognition of computer program as literary work has brought in various
questions of applicable legal principles of traditional/analog media and adoption of
such principles to the digital media and its implication. The researcher intends to
study the impact of this technological development and the changes that had to be
adopted into the copyright law.

w Sega Enterprises Ltd v Accolade Inc.,24 U.S.P.Q2d 1561 (9th Cir. 1992)
11 Webster’s Encyclopaedic Unabridged Dictionary of the English Language, Gramercy Books,
New York, 1996; ‘Copyright’ is an incorporeal right, being the exclusive privilege of printing,
reprinting, selling and publishing his own original work which the statute law first gave to an
author in 1709, by 8 Anne, c 19, for a particular time, cited at Wharton’s Law Lexicon with
Exhaustive Reference to Indian Case Law, Universal Law Publishing Co., 2009;
12 Ibid; ‘Copy’ means a copy which it substantially the same as the original variation in any form
the original should not be vital in nature or should not be such that can possibly mislead a
reasonable person in meeting to allegation. If the copy differs in material particulars from the
original the same cannot be cured after the period of limitation, Chandrakant Uttam Chodankar v
Dayanand Raju mandrakar, (2005) 2 SCC 188 cited at Wharton’s Law Lexicon with Exhaustive
Reference to Indian Case Law, Universal Law Publishing Co., 2009 407; ‘Copy’ in legal sense the
transcript of an original writing; reproduction of something; a writing like another from another as
opposed to an original; that which comes so near to the original as to give to every person seeing it
the idea created by the original; a reproduction or imitation, as of a writing, printing, drawing
painting or other work of art, so as to have another or other similar work to the original, Advanced
Law Lexicon, P Aiyar Ramanatha, Lexix Nexix, Butterworths Wadhwa, 3rd ed. Reprint 2009

61
2.2 Copyright is a Creation of Statute
Section 16 of the Act, makes it clear that there cannot be copyright which
exist in any work except as provided by the statute. There is no common law
copyright.13 Hence, any person shall be entitled to copyright or any similar right in
any work, whether published or not, within the provisions of the Act and none.14

Copyright subsist in every original literary, dramatic or musical work or adaptation

of every original artistic work; and in every sound recording, cinematograph film,
sound and television broadcast, and published edition of a literary, dramatic or
musical work. Copyright exist whether published or unpublished only in
accordance with the provisions of the Act or any other law in force. Ideas and
opinions are not the subject matter of copyright, but only the form in which ideas
and opinions are expressed, and then only to the extent that a substantial part of the
form must not be plagiarised.15

2.3 Copyright is a Negative Right

Copyright law is a negative right, which prevents the copying of physical
material existing in the field of literature and arts. The exclusive right is a negative
right, which is a right granted to the authors by preventing others not to copy or
reproduce his work without permission. The right is granted with a view of
preventing others to avail themselves of the work of others unfairly. Its object is to
protect the writer and the artist from the unlawful reproduction of exploitation of
his material.16 This negative right also extends by preventing others without the

consent or licence of the author to exercise any other form of right attached to
copyright. For e.g. any conversion into a cinematograph or adaptation into a
musical work of any literary work needs permission to do so.17

13 A property right that comes into existence when the work was created rather than when it was
published; In US the statute has retained the common law’s recognition the property right. The
common law copyright still applies in a few areas notably common-law copyright received before
January 1978 remains entitled to protection. Cited at Black’s Law Dictionary, Thomson, West
group, 8th ed. 1999
14 Manojah Cine Productions v Sundaresan, AIR 1976 Mad 22 (DB); Richmark Camera Services v
Neiison Horded (1981) FSR 413 at p 414, cited at Narayanan P, Law of Copyright and Industrial
Designs, 4,h ed. Eastern Law House, p 14
15 Me. Crum v Eisner, (1917) 87 L.J.Ch. 99
16 Supra n. 3, Para 2- 05 page 27
17 “Copyright law is concerned in essence with the negative right of preventing the copying
material. It is not concerned with the reproduction of ideas, but with the reproduction of the form in
which ideas are expressed. Ideas it has always been admitted... are free as air. A copyright is not a
monopoly unlike patents and registered designs, which are. Thus if it can be shown that two
precisely similar works were in fact produced wholly independently of one another, there can be no

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2.4 Registration not a Pre-Requisite
Copyright springs into life immediately on creation of the work. The work
is protected as soon as it is made, in writing or otherwise, on paper, canvas, tape,
disc film or other recording medium from which it is capable of being
reproduced.18 Unlike patents and trademarks, there are no formalities required for

copyright to subsist and no system of registration of rights. It is not necessary to

apply to any authority in order to enjoy copyright protection. Hence, the copyright
law lays a clear principle that anyone who by his or her own skill and labour
creates an original work enjoys an exclusive right to copy that work. The author
acquires a copyright in his work regardless of whether the work is registered or
not.19 The author will not lose his right to sue for remedies under copyright law
only because the work is not registered.20 Though, the Act makes provision for

registration of a creative work it is not an essential in a claim for copyright over

the work.21 The Act in no way indicates either individually or as a whole that,
registration is a condition precedent to subsistence of copyright.22 Registration is a

mere piece of prima facie evidence where a certain author starts claiming

infringement of copyright by one of the other. The position is that, if the ideas embodied in the
plaintiffs works is sufficiently general; the mere taking of that idea will not infringe. If however,
the idea is worked out in some detail in the plaintiffs work and the defendant reproduces the
expression of that idea, then there may be an infringement. In such a case it is not the idea which
has been copied but its detailed expression.” Supra n. 3, Para 2- 05, page 27
18 Article 5 Berne Convention, 1886, (1) Authors shall enjoy, in respect of works for which they are
protected under this Convention, in countries of the Union other than the country of origin, the
rights which their respective laws do now or may hereafter grant to their nationals, as well as the
rights specially granted by this Convention. (2) The enjoyment and the exercise of these rights shall
not be subject to any formality; such enjoyment and such exercise shall be independent of the
existence of protection in the country of origin of the work. Consequently, apart from the
provisions of this Convention, the extent of protection, as well as the means of redress afforded to
the author to protect his rights, shall be governed exclusively by the laws of the country where
protection is claimed.
19 Sundarsan v A. C. Tharulokchander (1973) 2 Mad L J 290
20 Satsang v Kiron Chandra Mukhopadhyaya, AIR 1972 Cal. 533; Sahitya Prakash v. Anand
Kumar, AIR 1981 All 200; Radha Krishna Sinha v State ofBihar, 1979 Cr. L. J. 757 at p 760 (pat)
21 Section 44- there shall be the Register of Copyrights in which may be entered the names or titles
of works and the names and addresses of authors, publishers and owners of copyright and such
other particulars as required. Section 45 (1) The author or publisher of, or the owner of or other
person interested in the copyright in, any work may make an application in the prescribed form
accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the
work in the Register of Copyrights; (2) On receipt of an application in respect of any work under
sub-section (1), the Registrar of Copyrights may, after holding such inquiry as he may deem fit,
enter the particulars of the work in the Register of Copyrights.
22 Manojah Cine Productions v Sundaresan, AIR 1976 Mad 22 (DB) at pp. 22 & 23

63
copyright over a work that, it is his work,23 entered in the office of Registrar of

Copyright. Thus, registration is not a sine qua non or a condition precedent for the
copyright to subsist or acquisition of ownership. The registration only provides a
prima facie evidence of the particulars entered in the register. Similarly, Section 13
of the Act also does not indicate the necessity of any registration. It only lists the
works in which copyright subsists and works in which no copyright can exist
unless certain conditions are satisfied. Hence, copyright comes into existence
immediately after creation without any formality, which is in conformity with the
Berne Convention, 1886.

2.5.1 Copyright Protects Original Works of Authorship

The copyright protection is basically granted to an author on three
fundamental standards. They are:
> Protection of expressions of ideas rather than the idea themselves
> Must be fixed in any medium
> work must be original24

A “copyright work” means any work in which copyright subsists. The

works must comply with the criterion of originality in order to be protected.
Original means that the work must originate from its author and must not be
copied from another work.25 Copyright is granted to creative expression. The

statute and courts have consistently excluded the idea or methods that might be
embodied in an expression of the work. It however, does not mean that the work
must be the expression of original or inventive thought, the originality required
relates to the expression of the thought. The standard of originality is low and
depends on the author having expended sufficient independent skill, labour and
judgement to justify copyright protection for the result.26

23 Section 48 Register of Copyrights to be prima facie evidence of particulars entered therein. -The
Register of Copyrights shall be prima facie evidence of the particulars entered therein and
documents purporting to be copies of any entries therein, or extracts there from certified by the
Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in
evidence in all courts without further proof or production of the original; See Glaxo v Samrat
Pharmaceuticals, AIR 1984 Del 265 at p 270
24 Mark A Glick, Lara A Reymann & Richard Hoffman, Intellectual Property Damages- Guidelines
and Analysis, John Wiley & Sons, Inc. part III at p 222
25 University of London Press Ltd v University Tutorial Press Ltd (1916) 2 Ch. 601 at 608
26 Kelly v. Morris 1866, L.R. 1 Eq 697) cited in Supra n. 3, p.23

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 One pervading essential element and a pre-requisite to copyright
protection, regardless of the work in question is that, copyright exists in original
works of authorship. However, what constitutes original work is undefined in the
Act. The courts have uniformly inferred the requirement from the fact that
copyright protection may only be claimed by authors or their successors in
interest.27 It was said so, because author is the beginner... or first mover of

anything... creator, originator, it follows that a work is not the product of an

author unless the work is original.28 Originality does not require that, the work be

unique or of a high quality. The work is protected if it is an original expression of

thought and the work has not been copied from another work. There is an
independent choice of selection and arrangement in the creation of the work. Thus,
a work can be original even if its ideas come from a pre-existing work.

The originality relates to the expression of thought by an author and the

work alleged to be copy of another should not be copied from another work. The
Berne Convention does not expressly make the requirement of originality for the
protection of any work. But invariably requires the work has to fulfil the
originality test as it will accord protection to authors in respect of their intellectual
creations. This means the work impliedly requires originality resulting from
individual’s own intellectual efforts. The originality requirement and its degree of
originality depend on the domestic laws of the Berne Convention countries. It also
depends on the type of work in question. For e.g. in the United Kingdom (U.K), it
has traditionally been regarded that, mere labour in the creation of a work is
sufficient to make it an original work, whether or not there is also skill involved.29

In University of London Press v University Tutorial Press Ltd30 “the work

original does not mean that the work must be the expression of original or
inventive thought. Copyright Acts in all the countries are not concerned with the
origin of idea, but with the expression of thought and in the case of ‘literary work’

27 Sec 17 USCA (1909 Act) Gladys Music Inc. v Arch Music Co. 150 U.S.P.Q 26 (S.D.N.Y. 1966)
Cited at Melville B. Nimmer and David Nimmer, Nimmer on Copyright, Matthew Bender &
Company, Rev. Ed. 2009, p 2-6
28 Remick Music Corp. v Interstate Hotel Corp. v Interstate Hotel Corp. of Neb., 523 (D. Neb.
1944) The preceding paragraph of the text is quoted in its entirety in Feist Publications Inc. v Rural
Tel. Serv. Co 499 U.S. 340, 351-352 (1991)
29 Macmillan & Co v Suresh Chunder Deb (1890) 17 Indian L.R. (Calcutta) 951 (PC) (Palgrave’s
Golden Treasury) Cited at Supra n. 3, Para 2- 05, Vol. 1, p 131
30 (1916) 2 Ch. D. 601

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with the expression of thought in print or writing. The originality which is required

related to the expression of the thought, but the Act does not require that the

expression must be in an original or novel form, but that the work must not be
copied from another work that it should originate from the author.” This principle

was approved in a Privy Council decision of Macmillan and Co. v K & J.

Cooper,31 where Lord Atkinson observed that, “the labour, skill and capital of one

man must not be appropriated by another and if he expended sufficiently to impart

to the work some quality or character which the other did not possess and which
differentiates the end result of the new work. By his skill and labour the author
brings in a work which is though not novel or ingenious, but claimants original
work which originated from him and not copied. Hence, providing others an
opportunity to produce a work though with the same result and though they are not
the first in the field, the work being independently made and was original within

the Act.”

As the Act, does not specify the originality test, the courts have held in
number of situations that the originality is not to be equated with the creation of
something new that had not existed at all, and it is the word used to describe the
casual relationship between an author and the material in which a work is
embodied.32

In Canada originality required more than mere labour. The Supreme Court
of Canada has held that, “the exercise of skill and judgment required to produce

31 AIR 1924, P.C.75

32 Whale on Copyright, 3rd ed. P 39 cited at Lai’s The Copyright Act, 1957 with Copyright Rules,
1958 and Neighbouring Rights, 4th ed. 2006, Delhi Law House; University of London Press Ltd v
University of Tutorial Press Ltd. (1916) 2 Ch. D. 601, J Paterson “in my view the words ‘literary
work’ cover work which is expressed in print or writing, irrespective of the question whether the
quality of style is high. The word literary seems to be used in a sense somewhat similar to the use
of the work ‘literature’ in political or electioneering literature and refers to written or printed matter
papers, set by examiners are, in my opinion, literary work’ within the meaning of the present Act.
The question papers set for examinations were literary works because they were work which is
expressed in print or writing irrespective of the question whether the quality or style is high; V.
Errabhadrao v B.N.Sharma AIR 1960 A.P. 415 held that, the original composition does not mean
that it is confined to an area which has never been navigated before by any other person.; C.
Cunniah & Co v. Balraj & Co. AIR 1966 Mad. Ill at 112 holding that the subject dealt with need
not be original, not the ideas expressed be something novel and it is sufficient that there is
expended original skill or labour in execution and not originality of thought; Jagdish Prasad Gupta
v Parmeshwar Prasad Singh, A.I.R. 1966 Pat. 33, the court held that picking out different
questions constituted only a work of compilation by the paper setters and such a mediocre work of
compilation could be deemed to be original work within the meaning of Section 13(1) (a) of the
Act; See also Daily Calendar Supplying Bureau, Shivakasi v United Concern, A.I.R. 1967 Mad.
381 at p 388

66
the work must not be so trivial that it could be characterised as a purely
mechanical exercise. While creative works will by definition be original and
covered by copyright, creativity is not required to make a work original.”33

There is no prohibition from taking old ideas and providing with a new
result altogether. The work though has taken ideas from common sources may
constitute a new work, if the work is independently carried out and sufficient skill,
labour and knowledge has been put into the work, without exposing himself into
the risk of piracy and making himself liable for the same. The amount of skill,
labour and knowledge bestowed is always a question of degree, depending on facts
of each case.

The real test in adjudging the originality of a work is whether it involved

skill, labour and knowledge of the author and that being fulfilled, he would be
‘protected by law,’ and no one else will be permitted to steal or appropriate to
himself the result of his labour, skill and learning... on the moral principle resting
on the Eight Commandant. Thou shall not steal...”34 In the case of compilations,

such as, dictionaries, gazetters, maps, arithmetic, almanacs, encyclopaedias and

guide books, new publications dealing with similar subject matter necessarily may
resemble existing publication, and the defence of ‘common source’ is frequently
made where the new publication is alleged to constitute an infringement of an
earlier one. Even though the amount of originality may be small, but it will be
protected by law.35

2.5.2 Originality Distinguished From Novelty

In the earlier stage of copyright protection the distinction of originality and
novelty was not recognised. In a matter of time, the legislative and judicial
interpretation accepted that originality which is necessary to support a copyright
merely calls for independent creation and not novelty.36 Hence, copyright will not
be denied protection simply because it is substantially similar to a work previously

33 CCH Canandian Ltd v Law Society of Upper Canada (2004) SCC 13 (Sup Ct of Can) cited at
Supra n. 3, p 120; Thus a higher test of originality than that laid down in University of London
Press Ltd v University Tutorials Press Ltd., and lower than the test laid down by the US court in
Fiest Publications Inc. v Rural Telephone Service Co 199 U.S. 340 (1991))
34 Mishra Bandhu Karyalaya v Shiratanlal Koshal, AIR 1970 M.P. 261 at 267
35 Supra n. 3, Vol. 1
36 E. Mishan & Sons, Inc. 662 F. Supp. 1339, 1340-43 ((S.D.N.Y. 1987) Cited at Supra n. 27, p. 2-7

67
produced by others, and is not novel. The test of prior art which normally in
challenged in patent law has no application in copyright cases.37 “We can observe

that the differentiation with authors and their writings from inventors and their
discoveries, where in invention carries an implication which excludes the result of
only ordinary skill, while nothing of this is necessarily involved in the former and
the constitutional makers never intended that copyright matter be strikingly unique
or novel.”38 However, Jerome Frank, J went on to say “although copyrights are

easier to obtain than patents, because originality is more proven than in novelty,
patents grant a greater monopoly than do copyrights. In other words, similarity
alone may constitute patent infringement, whereas only such similarity as is due to
copying rather than independent creation suffices to establish copyright
infringement.”39 It follows that a copyright is less vulnerable to an attack on its

validity than a patent. The scope of copyright owner is considerably more limited
than that of a patent owner as he has to establish both substantial similarity and
copying where as in patent infringement the owner has to prove only substantial
similarity. So a person who follows another is not an infringer unless he pirates
others work.40

Originality in the copyright sense means that, the work owes its origin to the
author i.e., it is independently created, and not copied from other works.41

Therefore a work is original and may command copyright protection, even if it is

completely identical with a prior work, provided it was not copied from such prior
work but is rather a product of the independent efforts of its author.42

The expression ‘originality’ and ‘creativity’ must be distinguished and

separated. The former does not connote novelty. But the latter does not mean an
inventive leap or new idea in the sense of never having been conceived before.43
Instead, it refers to matter bearing a spark of distinctiveness in copyrightable

37 Sheldon v Metro-Goldwyn Pictures Corp. 81, F.2d Cir. 1936; Key Publications, Inc v Chinatown
Today Pub Enters., Inc 945 F.2d 509, 513 (2d Cir. 1991) Supra n. 27, p 2-7
38 Judge Jerome Frank in Alfred Beii & Co. v Catalda Fine Arts 191 F.2d 99, 100 (2d Cir. 1951)
cited at Supra n. 27, p 2-8
39 Cited at Supra n. 27, p 2-8
40 Sheldon v Metro-Goldwyn Pictures Corp. 81, F.2d Cir. 1936
41 Feist Publications Inc. v Rural Tel. Serv. Co 499 U.S. 340, 351-352 (1991)
42 Mag Jewellery Co. Inc. v Cherokee, Inc. 496 F.3d 108, 116 (lsl Cir 2007); Novelty Textile Mills,
Inc. v Joan Fabrics Corp., 558 F.2d 1090 (2d Cir. 1977)
43 Lotus Dev. Corp. v Borland Int’l Inc.. 831 F. Supp 202, 218 (D. Mass. 1993) (though court
reversed on other grounds) 49 F.3d 807 (1sl Cir. 1995)

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expression. Hence, copyright may be denied in cases of fragmentary words or
phrases.44

If a work is copied without distinguishable variation from a prior work, but

that the making of the copy required the qualities of special skill, training and
knowledge, and independent judgment upon the part of the copyist. The copyright
protects only those qualities when exercised as acts of authorship and not any skill,
training, knowledge and judgment that will support a copyright. It is only the
authors who may qualify for copyright. For e.g. suppose a scholar explored the
museum for a number of years, and finally after much effort, found that there was
some manuscript which was unknown till then, such a person may well have
exercised much skill, training, knowledge and judgment, but will not be entitled to
have a copyright as he/she was never engaged in any act of authorship. Thus,
he/she has not created anything that “owes its origin” to him/her and has failed to
create a “distinguishable variation” involving or engaged in authorship. Meaning
thereby, one who has slavishly or mechanically copied from others may not claim
to be an author.45

Hence, a work is original if the resulting work is the product of one’s

independent effort. It has not been copied. Assuming such independent efforts,
authorship will be recognised in the resulting work even if, independently and
unknown to the creator, a similar, or even identical, work created by another can
be shown to have prior existence. Originality, then, may be said to be the essence
of authorship.46 There must be at least some substantial variation, not merely a

trivial variation such as might occur in the translation to a different medium. It

means that one, who copied from a work, adding his own physical skill, might

44 Arica Inst. Inc. v Palmer 770 F. Supp 188, 191-192 (S.D.N.Y. 1991) Non-creative variations of
musical compositions Northern Music Corp. v King Record Distribution Co. 105 F. Supp 393
(S.D.N.Y. 1952) Consolidated music Publishers v Ashley Publications, 197 F. Supp 17
(S.D.N.Y.1961) Numbers generated sequentially or randomly, Toro Co. v R & R Prods. Co. 787
F.2d 1208, 1212 (8th Cir. 1986) and to forms of expression dictated solely by functional
considerations. CMM Cable Rep. Inc. v Ocean Properties, Inc. 97 F.3d 1504, 1519 (lsl Cir. 1996)
Donald v Zack Meyer’s T. V. Sales & Services 426 F.2d 1027 (5th Cir. 1970) held that a work lacked
the requisite originality because it was quite similar to prior published forms, and concluded that a
distinguishable variation to be protectable “must be meaningful and must result from original
creative work on the author’s part... merely making trivial word changes by combining various
forms and servilely imitating the already stereotyped language found therein will not be protected.
Required creative lacking where “Word arrangements... merely a paraphrasing of earlier forms” M
.M. Business Forms Corp. v Uarco, Inc. 472 F.2d 1137 (6th Cir. 1973)
45 L Batlin & Sons Inc v Snyder 536 F.2d 48 (2d Cir) 1976
46 Supra n. 27, P 1-66

69
nevertheless be subject to a claim that a prior work had been copied, and as a
practical matter it might be very difficult to defend against such a claim. In order
to avoid such a claim, it would be necessary to avoid substantial similarity with
underlying work.47 Originality itself must exhibit a modicum of intellectual labour
in order to constitute the product of an author.48 Such intellectual labour may be of

a very minimal degree and yet be sufficient to establish authorship.

Determination of quantum of originality has never been a troublesome

question of degree inherent in copyright law, as the line to be drawn includes
almost any independent effort on the side of sufficient originality.49 Any

distinguishable variation of a prior work will constitute sufficient originality to

support a copyright if such variation is the product of the author’s independent
efforts, and is more than merely trivial.50 In Bleistein case though the poster

concerned was for advertisement per se, the reasoning of Justice Holmes refusing
to weigh the artistic quality of the work, provides the underlying rationale for the
prevailing rule as to the determination of the necessary quantum of originality.51

Subsequent case laws show that the author’s creative contribution will be of a
much humbler and more minimal nature. Originality for copyright purposes
amounts to “...little more than a prohibition of actual copying and no matter how
poor the author’s addition, it is enough if it be his own.”52

Hence, it may be said that an independent effort of the author containing

sufficient skill to motivating another to copying, is ipso facto a sufficient quantum
of originality to provide copyright protection.53 And the amount of time spent is
irrelevant, as copyright may inhere in “the work in an instant.”54 However, if the

work is deemed too trivial or insignificant, then the courts have invoked a minimal

47 Durban Indus., Inc. v Tomy Corp. 630 F.2d 905 (2d Cir. 1980); Gracen v Bradford Exch., 698 F.
2d 300 (7th Cir. 1983)
48 Baker v Selden, 101 U.S. 99(1879)
49 Warren Pub., Inc v Microdos Data Corp., 115 F.3dl509, 1524 (11th Cir) (1997)
30 Alfred Beii & Co. v Catalda Fine Arts 191 F.2d 99, 100 (2d Cir. 1951) the doctrine owns its
origin to Justice Holmes in Bleistein v Donaldson Lithographing Co. 188 U.S. 239, 250 1903.
Personality always contains something unique. It expresses its singularity even in handwriting, and
a very modest grade of art has in it something irreducible which is one man’s alone. That
something he may copyright unless there is a restriction in the words of the act.
31 Supra n. 27, P 2-13
52 Alfred Beii & Co. v Catalda Fine Arts 191 F.2d 99, 100 (2d Cir. 1951) Supra n. 27, P 2-13
33 Drop Dead Co. v S.C. Johnson & Son, Inc 326 F.2d 87 (9,h Cir. 1963), Cert Denied
54 Rockford Map Pub., Inc. v Directory Serv. Co. of Colo., 768 F.2d 145 (7th Cir. 1985)

70
requirement of creativity over and above the requirement of independent effort.55

This standard of originality does not include requirements of novelty, ingenuity or

aesthetic merit, and there is no intention to enlarge the standard of copyright
protection to require them.” This probably means that, the minimal requirement of
creativity extant under the Copyright Acts in countries is not to be enlarged, and
not that it is to be eliminated.56

In some cases an unintentional addition may still satisfy the requirements of

copyright, which is distinguished from too trivial. E.g. Copyists bad eyesight or
defective musculature, or a shock caused by a clap/thunder, may yield sufficiently
distinguishable variations. Having hit upon such a variation unintentionally, the
author may adopt it as his creation and claim copyright.57

It may be stated that, the independent effort may command copyright

protection, provided such independent effort is quantitatively more than minimal
i.e., even a short phrase may command copyright protection, if it exhibits
sufficient creativity and thus it appears that there is a reciprocal relationship
between creativity and independent effort. The smaller the effort (e.g. two words)
the greater must be the degree of creativity in order to claim copyright
co
protection. Neither original thought nor original research is essential for a literary
work to be original.59 Thus, it depends on the skill, labour knowledge of the

author.

The distinction between the original composition and a non original work
means:
> any new and original plan, arrangement or compilation or material
which will entitle the author to copyright therein whether the
materials themselves be old or new

55 Feist Publications Inc. v Rural Tel. Serv. Co. 499 U.S. 340, 358 (1991); Atari Games Corp. v
Oman 888 F.2d 878, 883 (D.C. Cir. 1989)
36 Ibid, Supra n. 27, p 2-14
57 Alfred Beii & Co. v Catalda Fine Arts 191 F.2d 99, 100 (2d Cir. 1951) cited at Supra n. 27, P 2-
14
38 Justice Jerome Frank in Heim v Universal Pictures Corp. Inc. 154 F.2d 480 n.17 (2nd Cir. 1946)
cited at Supra n. 27, p. 2-17; U.S. Copyright Office Regulation under 1909, Act provided that
following are not subject to copyright: Words and short phrases such as names, titles and slogans;
familiar symbols or designs; mere variations of typographic ornamentation, lettering or colouring;
mere listing of ingredients or contents. S 202.1(a) 1959
39 In Macmillan and Co. v K and J Cooper A.I.R. 1924 P.C. 75

71
 > that whosoever by his skill, labour and judgment writes a new work
may have a copyright therein unless it be directly copied or evasively
initiated from another’s work
> that to constitute piracy of a copyright, it must be shown that the
original has been either substantially copied, or to be so imitated as to
be a mere evasion of the copyright60

It does not prevent granting protection only on the fact that the work is
simple in its conception. In the case of compilations the originality lies in the
labour of selection and arrangement and not in the subject matter. Thus, if any
reasonable quantum of labour, judgment or skill, (whether literary or artistic) is
employed in creating the literary, artistic, musical or dramatic work as distinct
from the idea, the work will get protection as original work.

Originality can be claimed in encyclopaedia, dictionaries, compilations,

gazetteers, almanacs, guide books, maps, etc as they involve skill and labour in
compilation. Holding otherwise will lead to a situation that there will be only one
dictionary, gazetteer, grammar, map, almanacs, encyclopaedia, etc. creating
monopoly in the work, which the copyright Act does not provide for. Looking into
various dictionaries for e.g., Oxford, Webster or Chamber’s, we can look into the
differences in the manner in which it has been dealt. Each has considerable
difference in dealing with the subject matter.61 Similarly, some unoriginal works

as football coupons, lists of football fixtures, instructions for the use of weed
killers and examination questions are quite capable of being, in law original works.
By the same token, a photograph of scene which has been photographed before, is
not likely to be disqualified from copyright protection on the ground that it is not
original, for there is scope of originality in the way in which the photographer
exercises his skill through choice of position, modulation or otherwise of shadows,
etc., but any copy made or an original work is obviously not itself original.”62

In Government of West Bengal v Nitya Gopal Basak63 the Calcutta High

Court laid down the test of originality in the following words:

60 In Frederic Emerson v Chas Davies Story’s, United States Report. Vol. 3 p. 768
61 V Govindan v F.M. Gopalkrishna Kone A.I.R. 1955 Mad. 39
62 Whale on copyright, 3rd ed., p 39 cited at Lai on copyright at p 102
63 1985 Cr L J 202

72
 > If any person by pain and labour collected and reduced into the form
is sufficient to constitute an original work, of which the copyright
would be protected.
> Another person might originate another work in the same general
form, provided he did so from his own resources and made the work
he so originated a work of his own by his own labour and industry
bestowed upon it.
> In determining whether an injunction should be ordered the question
where the matter of plaintiffs work was not original was how far
unfair for undue use had been made of the work.
> If, instead of searching into the common sources and obtaining
subject matter from thence, any one availed himself of the labour of
his predecessor, adopted his arrangements and questions, or adopted
them with a colourable variation, it would be an illegitimate use.
> Falsely to deny that he had copied or taken any idea or language from
another work would be strong indication of animus furandi.
> If the court was led to the conclusion that there had been piracy, it
would not grudge any labour that might be requisite in order to
ascertain how far the injunction should extend, where certain distinct
parts of a work were unobjectionable and others contained piracies.
> The method of communicating information by questions and answer
being of unknown antiquity, plaintiff could not claim any originality
in the plan of his work.
> Questions of fundamental simplicity were not copyrightable.

The statutes have not defined the term originality and the evolution of what
constitute originality stems from few judgments of the court as discussed above.
Hence, it may be concluded that originality is not to be equated with the creation
of something which had not hitherto existed, it is the work used to describe the
casual relationship between an author and the material in which a work is
embodied. The owners of copyright have no monopoly in the subject matter. Any
other person is at liberty to produce the same result, provided that they do not copy
and do so independently, though not the first in the field, their work is nonetheless
original.64 The test of originality shall apply to computer programs, where the

author creating such work with his independent skill, labour and capital can obtain
copyright protection.

64 Hence a report of a speech, Walter v Lane (1900) A.C. 539, KL;A photograph of a picture
Graves Case (1869) L.R. 4 Q.B. 715; A sketch of a piece of machinery Morris Ltd. v Gilman Ltd
(1943) 60 R.P.C. 20; A translation of a foreign work; Byrne v Statist Co. (1914) 1 K.B. 622;
Information provided to race goers Portway Press Ltd. v Hague, (1957) R.P.C. 426, are protected if
independently worked out, even though the result of the later work is similar or identical to the
earlier work.

73
2.5.3 No Copyright in Idea- Idea/Expression Dichotomy
The law of copyright protects not the ideas or opinions, but the form in
which ideas and opinions are expressed. There cannot be a definition of what is
called protectable expression and non protectable idea’in accurate terms. This must
be decided from facts and circumstances on case to case.65 There is no mention of

the idea expression in the Berne Convention, but was recognised in the Agreement
on Trade Related Aspect of Intellectual Property Rights (TRIPS). It provided that
“copyright protection shall extend to expression and not to ideas, procedures,
methods of operation or mathematical concepts as such.”66 The WIPO Copyright
Treaty, 1996 also recognises similar principle of TRIPS Agreement.67

“Copyright is a right given to or derived from work, and it is not a right in

novelty of ideas, it is based on the right of an author, artist or composer to prevent
another person copying an original work, whether it is a book, tune or picture,
which he himself has created. There is nothing in the notion of copyright to
prevent a second person from producing an identical result (and he enjoying a
/o

copyright in that work) provided it is arrived at by an independent process.”

In Jefferys v. Boosey,69 the court held in the following manner:

“...copyright is not concerned with the reproduction of ideas, but with

the reproduction of the form in which ideas are expressed. Ideas it has
always been admitted... are free as air. A copyright is not a monopoly
unlike patents and registered design, which are. Thus, if it can be shown
that two precisely similar works were in fact produced wholly
independently of one another, there can be no infringement of copyright
by one of the other. The position is that, if the idea embodied in the
plaintiffs works is sufficiently general; the mere taking of that idea will
not infringe. If however, the idea is worked out in some detail in the
plaintiffs work and the defendant reproduces the expression of that
idea, then there may be an infringement. In such a case it is not the idea
which has been copied but its detailed expression”70

65 102 (b) of the US Act, “in no case copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation, concept, principle or discovery,
regardless of the form in which it is described, explained, illustrated, or embodied in such work.”
66 Article 9(2), TRIPS
67 Article 2 “Copyright protection extends to expressions and not to ideas, procedures, methods of
operation or mathematical concepts as such”
68 Whitford Committee Report Cited at P. Narayanan, Copyright and Industrial Designs, 4th ed.
Eastern Law House, p 15
69 (1855) 4 H.L.C. 815
70 See also Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd (1994) FSR 275;
Supra n. 3, Para 2- 05 Vol. 1, p 28

74
 In Whelan Associates Inc. v Jaslow Dental Laboratory Inc.,1' the Supreme

Court of U.S laid down the test to determine and distinguish the idea and
expression concept, holding that:
“...the line between idea and expression may be drawn with reference to
the end sought to be achieved by the work in question... the purpose or
function of a utilitarian work would be the work’s idea, and everything
that is not necessary to that purpose of function would be part of the
expression of the idea... where there are various means of achieving the
desired purpose, then the particular means chosen is not necessary to
the purpose; here there is expression, not idea...”

In R.G Anand v M/s Delux Films72 the Supreme Court of India held that,

emotions like mere ideas are not subject to pre-emption because they are common
property. The Court observed as follows:
“It is obvious that the underlying emotion reflected by the principal
characters in a play or look may be similar and yet that the characters
and expression of the same emotions be different. That the same
emotions are found in plays would not alone be sufficient to prove
infringement but if similar emotions are portrayed by a sequence of
events presented in like manner expression and form, then
infringement would be apparent.”

The Supreme Court further held that, it is also clear that it is not necessary
the alleged infringement should be an exact or verbatim copy of the original but its
resemblance with the original in a large measure, is sufficient to indicate that it is a

copy.

In the case of Hanfstaengl v W. H. Smith and Sons73 it has been held by

Bayley, J. that “a copy is that which comes so near to the original as to give to
every person seeing it the idea created by the original.” Only original works are
protected, but it is not requisite that the work should be the expression of original
or inventive thought, for Copyright Acts are not concerned with the originality of
ideas, but with the expression of thought, and, in the case of a literary work, with

71 Whelan Associates Inc. v Jaslow Dental Laboratory Inc. and Others, 797, F.2d 1222; 497 U.S.
1031 (1987) at 12.36, J.A.L Sterling World Copyright Law, 2nd ed. Sweet & Maxwell, 2003, p 221;
However see Computer Associates Int 7 Inc v Altai Inc. 982 F.2d 693, declined to adopt the Whelan
test and used instead the abstraction-filtration-comparison test. This will be discussed in the later
chapter.
72 AIR 1978 SC 1613; 1978 (4) SCC 118, Quoting from the Law of Copyright and Movie-Rights
by Rustom R. Dadachanji
73 1905 (l)Ch(D) 519

75
the expression of thought in print or writing... There is copyright in original
dramatic works and adaptations thereof, and such copyright subsists not only in
the actual words of the work but in the dramatic incidents created, so that if these
are taken there may be an infringement although no words are actually copies.
There cannot be copyright in mere scene effects or stage situations which are not
reduced into some permanent form.74

Similarly, what is protected is not the original thought but expression of

thought in a concrete form. In this connection, the following observations can be
referred:
“What is protected is not original thought or information, but the
original expression of thought or information in some concrete form.
Consequently, it is an infringement only if the defendant has made an
unlawful use of the form in which the thought or information is
expressed. The defendant must to be liable, have made a substantial use
of this form; he is not liable if he has taken from the work the essential,
ideas however original, and expressed the idea in his own form, or used
the idea for his own purposes.”75

The United States Supreme Court in Bobbs-Merrill Company v Isidor

Straus and Nathan Straus,76 held that, in the American Jurisprudence also it is

pointed out that the law does not recognise property rights in abstract idea, nor is
an idea protected by a copyright and it becomes a copyright work only when the
idea is given embodiment in a tangible form. In the case of Harman Pictures N. V.
v Osborne77 Coff, J. observed:

“There is no copyright in ideas or schemes or systems or methods; it is

confined to their expression... But there is a distinction between ideas
(which are not copy right) and situations and incidents which may be...
one must, however, be careful not to jump to the conclusion that there
has been copying merely because of a similarity of stock incidents, or
of incidents which are to be found in historical, semi-historical and
fictional literature about characters in history. In such cases the
plaintiffs, and that includes the plaintiffs in the present case, are in an
obvious difficulty because of the existence of common sources”.

74 Halsbury’s Laws of England by Lord Hailsham, 4lh ed. Referred in R.G Anand v M/s Delia
Films, (1978)4 SCC 118; AIR 1978 SC 1613
75 Supra n. 3
76 (1907) 210 US 339
77 (1967) 2 A11ER 324

76
 Similarly, in the case of Donoghue v Allied Newspapers78 it was pointed out

that there will be no copyright in an idea and in this connection Farwell, J. observed
as follows:
“...This beyond all question that there is no copyright in an idea, or in
ideas... of the idea, however brilliant and however clever it may be, is
nothing more than an idea, and is not put into any form of words, or
any form of expression such as a picture or a play, then there is no
such thing as copyright at all. It is not until it is (If I may but it in that
way) reduced into writing, or into some tangible form, that you get any
right to copyright at all, and the copyright exists in the particular form
of language in which, or, in the case of a picture, in the particular form
of the picture by which, the information or the idea is conveyed to
those who are intended to read it or look at it.”

Hence, Judge Hand observed that “But it is convenient to define such a use
by saying that others may “copy” the theme or “ideas,” or the like, of a work,
though not its “expression.”79 It is the intellectual production of the author which
the copyright protects, and not the particular form which such production
ultimately takes.

The Supreme Court of India in R.G. Anand case80 laid down seven basic

propositions to identify the infringement of copyright. The first two propositions

are related to idea- expression dichotomy, which can be mentioned here:
> 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.
> Where the same idea is being 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 determine whether or not the
similarities are on fundamental or substantial aspects of the mode of
expression adopted in the copyright work. If the defendants work is
nothing but a literal imitation of the copyright work with some

78 1937 (3) All ER 503

79 Sheldon v Metro-Golden Pictures Corporation, (1793) 81 F 2d 40
80 R.G Anand v M/s Delux Films, AIR 1978 SC 1613; 1978 (4) SCC 118, Held that, “the
fundamental fact which has to be determined where a charge of violation of the copyright is made
by a owner is to determine whether or not the alleged infringer not only adopted the idea of the
copyrighted work but has also adopted the manner, arrangement, situation to situation, scene to
scene with minor changes or super additions or embellishment here and there. Indeed, if on a
perusal of the copyrighted work the alleged infringer’s work appears to be a transparent rephrasing;
or a copy of a substantial and material part of the original, the charge of plagiarism must stand
proved. Care however must be taken to see whether the alleged infringer has merely disguised
piracy or has actually reproduced the original in a different form, different tone, and different tenor
so as to infuse a new life into the idea of the copyrighted work adapted by him. In the latter case
there is no violation of the copyright.”

77
 variations here and there it would amount to violation of the
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

It is now well known that copyright law does not grant the author of a
literary work protection on ideas and facts.81 It is only the creative expression of

ideas which is conferred exclusive privilege (to exploit, the various rights
emanating from it) for a limited time. Copyright does not extend to every
expression, but those which are fixed in a medium and are “original.” Section 13
of the Act provides that only “original, literary, artistic, dramatic and musical
works” are entitled to copyright protection. Any literary work, in order to qualify
as work in which copyright can subsist, must therefore be original. Originally in
o->
University London Press v University Tutorial Press, the court formulated the
“sweat of the brow” doctrine, to scrutinise whether a work was original or not. The
Court emphasised that the aesthetic content of the work, or its artistic appeal was
irrelevant, so long as the author or creator was able to show that some effort had
been put in to create it. This test was discarded and a more exacting creativity
standard (“the modicum of creativity”) was insisted upon by the U.S Supreme
Court, in Fiest Publication Inc. v Rural Telephone Service,83 The Supreme Court
of India in Eastern Book Company v D.B Modaku following the principles laid

down by the Canadian Supreme Court in CCH Canadian Ltd., v Law Society of
Upper Canada*5 rejected the “sweat of the brow doctrine,” which conferred

copyright on works merely because time, energy, skill and labour was expended.
The Supreme Court held that, the work must be original “in the sense that by

81 Baker v Seldon, 101 US 99 (1879); Nichols v Universal Pictures Corp ., 45 F.2d (2d Cir. 1930);
RG Anandv M/s Delux Films, (1978) 4 SCC 118
82 (1916) 2 Ch. 601
83 199 US 340 (1991) at 345 A copyright does not protect an idea, but only the expression of the
idea. Copyright protection is afforded only to original works. The mere fact that a work is
copyrighted does not mean that every element of the work is protected. There is infringement of
copyright only when protected element of a work is copied. A discovery even if it were not merely
an idea would be denied protection as it is not original work. Warren Publishing v Microdos Data
Corp. 115 F.3d 1509, 1524 (11th Cir) (en banc) cert. Denied; Hence, the discovery of scientific fact
as to the nature of the physical world, historical fact, a contemporary news event, or any other fact
may no claim to be the author of that fact. So discovery is merely finds and records the fact, Miller
v Universal City Studios Inc, 650 F.2d 1365 (5,h Cir. 1981); thought there is originality in reporting
the facts or the manner of reporting, Rubin v Boston Magazine Co 645 F.2d 80 (1st Cir. 1981);
hence, discoveries as facts per se may not be the subject of copyright, New York Mercantile
Exchange Inc. v Intercontinental Exchange, Inc. 497 F 3d 109 114 2d Cir. (2007) cited at Supra n.
27, p 2-36.4
84 2007 INDLAW SC 1341
83 (2004) SCC 13 (Supreme Court of Canada)

78
virtue of selection, co-ordination or arrangement of pre-existing data contained in

the work, a work somewhat different in character is produced by the author.”

Thus, in India, the test for creativity establishes a higher threshold than the “sweat
of the brow” doctrine, but not as high as “modicum of creativity.” It acknowledges
that not every effort or industry, or expending of skill, results in a copyright work,

but only those, which create works that are somewhat different in character,
involve some intellectual effort, and involve a certain degree of creativity. The
idea-expression criteria is a difficult task in relation to a computer program, which

the researcher will make this attempt in the next chapter wherein the courts have
adopted number of tests in identifying the same. The “Abstraction-Filtration-
87
Comparison” test adopted in the Computer Associates International v Altai, Inc
is one of the most important cases to understand the idea-expression standards in

copyright protection.

2.5.4 Fixation- Expression to be in a Particular Form

Copyright comes into existence when it is put into or represented in a
material form. The fixation of the work is an important element in copyright law.
The subject of copyright work must exist in some permanent form. This is a

86 Servewell Products Private Limited and another v Dolphin, 2010 1NDLAW DEL 1082, the Delhi
High Court has referred as follows: “The US Federal Court of Ninth Circuit in Herbert Rosenthal
Jewellery Corporation v Kalpakian 446 F.2d 738 (1971) rejected the claim for protection, starting
as follows:
“The critical distinction between “idea” and “expression” is difficult to draw. As Judge Hand
candidly wrote, “Obviously, no principle can be stated as to when an imitator has gone beyond
copying the ‘idea,’ and has borrowed its ‘expression.’” Peter Pan Fabrics Inc. v Martin Weiner
Corp., 274 F.2d 487, 489 (2d Cir.1960) At least in close cases, one may suspect, the classification
the court selects may simply state the result reached rather than the reason for it. In our view, the
difference is really one of degree as Judge Hand suggested in his striking “abstraction” formulation
in Nichols v Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930). The guiding consideration
in drawing the line is the preservation of the balance between competition and protection reflected
in the patent and copyright laws.
What is basically at stake is the extent of the copyright owner’s monopoly- from how large an area
of activity did Congress intend to allow the copyright owner to exclude others?... Plaintiff seems to
agree, for it disallows any claim that defendants cannot manufacture and sell jewelled bee pins and
concedes that only plaintiffs particular design or “expression” of the jewelled bee pin “idea” is
protected under its copyright. The difficulty, as we have noted, is that on this record the “idea” and
its “expression” appear to be indistinguishable. There is no greater similarity between the pins of
plaintiff and defendants than is inevitable from the use of jewel-encrusted bee forms in both.
When the “idea” and its “expression” are thus inseparable, copying the “expression” will not be
barred, since protecting the “expression” in such circumstances would confer a monopoly of the
“idea” upon the copyright owner free of the conditions and limitations imposed by the patent law;
Baker v Selden, 101 U.S. 99, 103, (1879); Morrissey v Procter & Gamble Co., 379 F.2d 675, 678-
679 (1st Cir. 1967); Crume v Pacific Mutual Life Ins. Co., 140 F.2d 182, 184 (7th Cir. 1944); See
also Continental Cas. Co. v Beardsley, 253 F.2d 702, 705-706 (2d Cir. 1958)
87 982 F.2d 693 (1992)

79
principle upshot of the principle that the protection goes only to the particular
expression of idea.88 The copyright does not exist in ideas and subsists only in the
material form in which those ideas are translated. The Berne Convention provides
that member countries have been given right to prescribe that, the works shall not
be protected unless they have been fixed in some material form.89 The civil law

countries have exempted from applicability of fixation in a material form in order

to get copyright protection. Whereas, the common law countries including U.S,
U.K and India have fixation criteria i.e. any work can claim protection only when
it is fixed in some material form.

The Act provides that in the case of literary, dramatic or musical work, not
being a computer programme, to reproduce the work in any material form
including the storing of it in any medium by electronic means.90 The criterion of

fixation is required at establishing the copyright. Copyright in the work once fixed
will continue even if the fixation itself is destroyed.91 The advantage of fixation is

that the author will know where the copies of the work are made available. This in
fact, will provide some scope of control of the work in such use or dissemination.
However, this is not the true position as even a copied work get fixation in a
particular form but cannot claim copyright protection. It may also have an
advantage of preserving original work which will benefit the future users and by
providing value or incentive to the author.92

88 Cornish & Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights,
Thomson Sweet and Maxwell, 5th ed. 2003; in most cases of artistic work like painting, photograph
etc it gets protection only when it is put into particular permanent form. Merchandising Corp of
America v Harpbond (1983) F.S.R 32 CA; Komesaroff v Mickle (1988) R.P.C.204; hence until
there is no fixation there exists no copyright and may seek copyright through other ways like
performers protection and contract. P 405
89 Article 2(2), Berne Convention
90 Section 14 (1) (a) (i)- The medium of fixation includes a wide range of media, including print
materials, films, microfilm, CDs, DVDs, audiotapes, etc. The US Copyright Act, anticipating
technology progress includes within copies any work fixed by any method now known or later
developed. See 17 USC section 101. Broadcasting or other means of simultaneous transmission of
work also qualifies as adequate fixation. (A work consisting of sounds, images or both that are
being transmitted is fixed for purposes of this title if a fixation of the work is being made
simultaneously with its transmission.) Mark A Glick, Lara A Reymann & Richard Hoffman,
Intellectual Property Damages- Guidelines and Analysis, John Wiley & Sons, Inc. part III at p 222
91 Gendreau, “The criterion of fixation in copyright law” (1994) 159 R I D A. 110, cited at J.A.L
Sterling World Copyright Law, 2nd ed. Sweet & Maxwell, 2003, p 285.
92 Mark A Glick, Lara A Reymann & Richard Hoffman, Intellectual Property Damages- Guidelines
and Analysis, John Wiley & Sons, Inc. part III

80
 In a literary work the words chosen by an author expressing the ideas are of
his own which is peculiar to him. There is no chance of two descriptions of the
same idea or fact which will be in the identical words. “The order and arrangement
of each man’s words is as singular as his countenance. Although, if two authors
composed originally in the same order of words each would have a property in the
composition, still the probability of such an occurrence would be less than there
should be two countenances that could not be discriminated. It is true that property
in the order of words is a mental abstraction, but so also are many other kinds of
property.”93 However, there is no boundary fixed between idea and expression.94

The expression of idea is that the idea and expression merged and will not be the
subject of copyright.95

In the digital technology also this concept of fixation becomes important.

Any electronic incorporation of literary work, pictures, movie, songs, etc, in the
RAM or hard Disk of a computer will constitute a fixation. However, the decision
of the duration of preservation in the electronic memory which will be sufficient to
constitute fixation criteria is a matter for courts to decide upon. It is stated that
preservation which enables the signals representing the subject matter to be
transmitted or perceived (whether by a human or a machine) will suffice to fulfil
the criteria.96 In U.K where the representation of a work is retained even

transiently in a computer memory, there has been sufficient recording to constitute

subsistence of copyright (where the other criteria are fulfilled).97 It is suggested
that a momentary storing covers electronic representation for even an insignificant
fraction of a second, if something is noticeable and it can be transferred to another

93 Jeffreys v Bossey, (1854) 4 HLC 815 at p 868

94 Nichols v Universal Pictures (1930) 45 F (2d) 119; Ibcos Computers v Barclays, (1994) FSR 275
at p 291
95 Lotus Development Corp. v Paperback Software International, 740 F. Supp 37
96 Supra n. 91, p 285, U S Law does not specify minimum time of fixation, see Intellectual Property
And The National Information Infrastructure: Report Of The Working Group On Intellectual
Property Rights (the Lehman Report, US patent and Trademark office) 1995 pp 25-28
97 CDPA, Section 17 (2) provides that copying in relation to literary, dramatic, musical or artistic
work means reproducing the work in any material form and that this includes storing the work in
any medium by electronic means. Section 17(6) provides that copying in relation to any work
includes the making of copying in relation to any work includes the making of copes which are
transient or are incidental to some other use of the work.

81
medium will be sufficient to bring about protection.98 The U.S also provides for
the same law.99

In June 1982, a WIPO/UNESCO Committee of Governmental Experts

clarified that storage of works in an electronic medium is reproduction. The
Diplomatic Conference adopted an agreed statement which reads as follows: “The
reproduction right, as set out in Article 9 of the Berne Convention, and the
exceptions permitted there under, fully apply in the digital environment, in
particular to the use of works in digital form. It is understood that the storage of a
protected work in digital form in an electronic medium constitutes a reproduction
within the meaning of Article 9 of the Berne Convention.”100

It follows from this first sentence that, Article 9(1) of the Berne Convention
is fully applicable. This means that the concept of reproduction under Article 9(1)
of the Berne Convention, which extends to reproduction “in any manner or form”
irrespective of the duration of the reproduction, must not be restricted merely
because a reproduction is in digital form through storage in an electronic memory,
and just because a reproduction is of a temporary nature. It also follows from the
same first sentence that Article 9(2) of the Convention is also fully applicable,
which offers an appropriate basis to introduce any justified exceptions such as the
above-mentioned cases of transient and incidental reproductions in national
legislation, in harmony with the “three-step test” provided for in that provision of
the Convention.

An intellectual creation that is merely in the mind of the author may not be
regarded as property capable of copyright. To state this proposition, however,
amounts to nothing more than an intellectual exercise because, practically, there

98 Supra n. 91, p 286

99 USCA, Section 102 (a) provides that copyright protection subsists “in original works of
authorship fixed in any tangible medium of expression, now known or later developed, from which
they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a
machine or device.” USC A, Section 101 provides “a work is fixed in a tangible medium of
expression when its embodiment in a copy or phonorecord, by or under the authority of the author,
is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise
communicated for a period of more than transitory duration.
100 Article 9 (1), Berne Convention, Authors of literary and artistic works protected by this
Convention shall have the right of reproduction in any manner or form, which includes any sound
or visual recording. Cited at International Treaties and Conventions on Intellectual Property,
chapter 5

82
could be no copying and hence, no need to invoke copyright of a work that has
never been expressed in any form.101 The more difficult issue is as to whether a

work expressed only in oral or other non-tangible form may claim common law
copyright.

If a work is embodied in either written or spoken language, it assumes the

attribute of literary property for the purpose of copyright protection. However,
it is otherwise said that only the “concrete” i.e., tangible expression of works may
claim copyright protection.103

Drone stated with an unquestioned premise that, copyright is an intangible

right separate from any ownership in the tangible expression of the copyright
work.104 From this indisputable premise, it is not logically necessary to conclude

as he apparently does stating therefore that copyright may be claimed, even if the
work has never been expressed in tangible form. However, this is a non sequitur
which is best illustrated by statutory copyright recognises that copyright is distinct
from property in the object of copyright. But nevertheless, it requires as a
condition to claim copyright, the work to be expressed in a tangible writing.

The contrary proposition that only concrete or tangible expressions may

claim common law copyright is often defended on an erroneous or at least
inapplicable premise. It is a fundamental precept of copyright that only the
expression of ideas and not the ideas themselves are entitled to copyright.
However, this principle relates to the content not the form, of expression.105

Work of authorship to be eligible for statutory copyright, must be fixed in

any tangible medium of expression, now known or later developed, from which
they can be perceived, reproduced, or otherwise communicated, either directly or
with the aid of a machine or device.106 This fixation requirement is consistent with
the governing provision of the Berne Convention.107

Supra n. 27, p. 2-21

102 Drone, The Law of Property in Intellectual Productions 6-8 (1879) cited at Supra n. 27, p 2-21-
22.
103 Palmer v De Witt 47 N.Y. 532 (1872)
104 Hughes Tool Co. v Fawcett Publications, Inc. 315 A.2d 577, 580 (Del. 1974)
105 Nichols v Universal Pictures Corp. 45 F.2d 119, 121 (2nd Cir. 1930)
106 17 USCA Section 102
107 Cited at Supra n. 27, p 2-32

83
 Fixation in tangible form is a statutory condition. The U.S Federal copyright
protection does not extend to oral presentations that are not themselves based on
antecedent fixations. The fixation requirement will be satisfied if the work as fixed
can be perceived ‘either directly or with the aid of a machine or other device.’
Thus, unless a work was embodied in a form that one could “see and read” with
the naked eye, it was not deemed to be in ‘copies’ capable of deposit and
registration, and hence was not regarded as entitled to copyright protection.
Presently however, the law definitively removes this restriction. It is now clear
that “it makes no difference what the form, manner, or medium of fixation may be,
whether it is in words, numbers, notes, sounds, pictures, or any other graphic or
symbolic indicia, whether embodied in a physical object in written, printed,
photographic, sculptural, punched, magnetic, or any other stable form, and
whether it is capable of perception directly or by means of any machine or device
now known or later developed.109

In Mathew Bender & Co., Inc. v West Publishing Co (WPC),110 WPC argued

that Bender’s CD-ROM case compilations constitute a copy of WPC’s reporters,

given that their order could be perceived with the aid of machine. Although,
Bender had encoded cases on its ROM in chronological order rather than in the
order in which they appeared in WPC’s rival products, a user could manipulate
their contents via her own computer, WPC maintained, to perceive cases in the
order in which WPC had arranged them. That argument misconstrues this
provision of the statute not simply as an attempt to overrule White-Smith,*111* but as

a new statement of when substantial similarity takes place. The court rejected that
construction holding that:
“We conclude that a CD-ROM disc infringes a copyrighted
arrangement when a machine or device that reads it perceives the
embedded material in the copyright arrangement or in a substantially
similar arrangement. At least absent some invitation, incentive, or
facilitation not in the record here, a copyrighted arrangement is not
infringed by a CD-ROM disc if a machine can perceive the
arrangement only after another person uses the machine to re-arrange
the material into the copyright holder’s arrangement. The U.S.

108 Ibid p 2-32.1

109 Ibid p 2-32.1
1,0 158 F.3d 693 (2nd Cir. 1998) Cert Denied.
111 White-Smith Music Publishing Co. v Apollo Co 209 U.S. 1 (1908) (rejecting the extension of
copyright to player piano rolls).

84
 copyright law provides the basic criteria for determining a work as a
whole qualifies as copyrightable subject matter.”112

The work must be original work of authorship, fixed in a tangible medium of

expression from which it can be perceived, reproduced or otherwise
communicated and protection of the work must not extend “to any idea, procedure,
process, system, method or operation, concept, principle or discovery... in such
work.113 Works in the digitalised form comprising of texts, images, sound,

animation, and photograph can be transformed, manipulated or mixed to create a

completely new work.114

The digital form can be replicated in such ease, that it poses a difficult
problem to handle. Perfect copies can be generated by the same technology which
is employed for the use of the digital work. This has made the task of the copyright
owner more difficult to control over reproduction and claiming damages for
unauthorised use of such work. The traditional method of photocopying and taping
allowed only mechanical copying by a person, but was limited in quantities, which
required considerable time and was only to get a lower quality of work than the
original. The new form of transmission has been replaced by material-less
diffusion, through computer bits and bytes.115 Online transmission of works like

books, music, movies, computer software can be transmitted and used by multiple
users, compared to paper and analogue versions of the works.116 Hence, in the
digital world, a person may make unlimited number of copies, that too
instantaneously, without losing the quality of the work.

2.6 Object of Copyright Protection

The copyright law encourages authors, composers and artists in creation of
original work by incentivising them with an exclusive right to reproduce the
works. The creation by the author and protection of their creative works is the
whole and prime concern of the object of copyright law. The right is granted to the
author for a limited period of time. Copyright rest on the basic principle that the
creativity needs to be rewarded and authors who produce such work should be able

112 17 USCs 102 (a)

113 17 USC s 106, The Law of Computer Technology, Westlaw p 1-30
114 S.K.Verma and Raman Mittal, Legal Dimensions of Cyber space, Indian Law Institute, 2004 p.
115
115 Ibidp. 116
116 Ibid P. 116

85
to live by their creative skills and efforts. Copyright ensures to balance the
interests of society as a whole to fully participate in the scientific and cultural
progress of mankind by two means firstly, limiting the duration for which a work
enjoys copyright protection and secondly, allowing certain uses without specific
authorisation by the owner of copyright, known as fair use.117 Whereas, the Act

provides for exclusive rights in favour of owners of the copyright, there are
provisions where it has been recognised that public has also substantial interest in
the availability of the works.

Copyright is granted to authors and artists to protect their creative expression

against unauthorised copying or reproduction. However copyright does not
establish monopoly relating to the contents of the creation as patent does. Ideas
and thoughts remain in the public domain and can be freely used in different forms
of expression. A person who independently creates a work identical or similar to
that of the first author is entitled to produce and distribute his or her independent
creation.118 Protection granted by copyright is of longer duration than under the

patent law, which is justified, as copyright, is considered weaker than patent as it

does not preclude independent creation. It is the long term of protection which
encourages the authors to create more works of literature, music and art.

The Act seeks to maintain a balance between the interest of the author/owner
of the copyright in protecting his works on the one hand and the interest of the
public to have access to the works, on the other. What requires protection is
unlawful reproduction of the author’s work by others. The extent to which the
owner is entitled to protection in his work and the interest of the public are matter
which would depend upon the statutory provisions.

There is no doubt whatsoever that a literary, artistic or musical work is the

creative work of an author, the fruit of his labour and thus, considered to be his
property. A copyright is a right created under the Act, as is evident from Section
16 thereof. When an author of a copyright claims a copyright, it is subject to the

117 Verma S.K. and Raman Mittal, Legal Dimensions of Cyber space, Indian Law Institute, 2004 p.
114
118 Frederick Abbot, Thomas Cottier and Francis Gurry, The International Intellectual Property
System, Commentary and materials, Kluvver Law International, The Hague, 1999. P 81

86
provisions of the Act. The rights and obligations of the author ought to be
established within the four comers of the Act.

2.7 Copyright- Right to Property

The freedom to contract is the foundation of economic activity and an
essential aspect of several Constitutional rights including the freedom to carry on
trade or business guaranteed under Article 19(1) (g) and the right to property under
Article 300A of the Constitution of India, 1950. But the said right is not absolute.
It is subject to reasonable restrictions. An owner of a copyright indisputably has a
right akin to the right of property. It is also a human right. Property rights vis-a-vis
individuals are also incorporated within the ‘multiversity’ of human rights. As, for
example, any claim of adverse possession has to be read in consonance with
human rights.119

In Gramophone Company of India Ltd. v D.B. Pandey120 the Supreme Court

of India held that, “An artistic, literary or musical work is the brain-child of an
author, the fruit of his labour and, so, considered to be his property. So highly is it
prized by all civilized nations that it is thought worthy of protection by national
laws and international conventions relating to copyright.”

In P.T. Munichikkanna Reddy v Revamma, the Supreme Court of India

recognised need of incorporating the same principle stating:
“But the right of property is no longer a fundamental right. It will be
subject to reasonable restrictions. In terms of Article 300A of the
Constitution, it may be subject to the conditions laid down therein,
namely, it may be wholly or in part acquired in public interest and on
payment of reasonable compensation. The right to property, therefore,
is not dealt with its subject to restrict when a right to property creates a
monopoly to which public must have access. Withholding the same
from public may amount to unfair trade practice. In our constitutional
Scheme of statute monopoly is not encouraged. Knowledge must be
allowed to be disseminated. An artistic work if made public should be
made available subject of course to reasonable terms and grant of
reasonable compensation to the public at large”.121

119 This approach of the European Court of Human Rights in Beauiane properties Ltd. v Palmer
2005 EWHC 817(Ch.); J. A. Pye (Oxford) Ltd. v Graham, 2002 (3) All E R 865
120 1984 INDLAW SC 336 at 549
121 AIR 2008 SC 261, 2007 (6) SCC 59

87
 On the similar premise the author of a computer program (as it is a literary
work) establishing originality and fixation can claim the copyright and shall be
considered to be the owner of a property.

2.8.1 Justifications for Copyright Protection:

There are various arguments for the justifications of copyright protection. In
R.G Anand v M/s Delux Films, the Supreme Court of India held:
“... the fundamental idea of violation of copyright or imitation is the
violation of the Eighth Commandment: “Thou shall not steal” which
forms the moral basis of the protective provisions of the Copyright
Act. It is obvious that when a writer or a dramatist produces a drama it
is a result of his great labour, energy, time and ability and if any other
person is allowed to appropriate the labours of the copy-righted work,
his act amounts to theft by depriving the original owner of the copy­
right of the product of his labour...”12

The copyright law makes reward to the owner a secondary consideration,

like the patent laws. It provides for valuable, enforceable rights to authors,
publishers etc., without burdensome requirements in order to afford greater
encouragement to the production of literary or artistic works of lasting benefit to
the society. The Philosophy beneath the law granting copyright with economic
benefit lies in the conviction of encouraging the individual effort by personal gain
and it is the best way to advance public welfare through the talents of authors. The
jurisprudence of copyright that has evolved attempts to balance protection with
dissemination: fostering an environment that ensures a fair return to authors and
inventors while simultaneously promoting learning, progress and development.124

According to S.M. Stewart, fundamental principles on which the copyright

and authors rights is founded are generally considered to be for four reasons;
natural law, just reward for labour, stimulus to creativity and social
requirements.125

AIR 1978 SC 1613; 1978 (4) SCC 118, holding that the work must be original and mere idea is
not protectable copyright
123 Laura Lee Stapleton, E-Copyright Law Handbook, p. 1-3
124 Mazer, at 219, Laura Lee Stapleton, E-Copyright Law Handbook, p. 1-3
125 Supra n. 3, p 27

88
 Firstly, an ancient adage said “to every cow its calf.”126 The rights are

protected by natural law as the author has an exclusive natural right of property for
his labour and has a right to object to any unauthorised modification or other
attack on the integrity of his work. Once the authors work is recognised as a form
of property the concept of theft is applied, condemning, the stealing or
misappropriation of that which belongs to another person. The reason copyright is
protected is because it is right and proper to do so. In turn the public will also
benefit from copyright law. Copyright is the right to recognise a property right as
the work originates from the mind of an individual author. Hence, a book written
by an author will be seen as the product of his mind, the intellectual effort and
inspiration and hence should be treated as their property and copying as equivalent
to stealing.127 The work created by an individual reflects the unique nature of them

as an individual, the natural rights arguments require that law allows the creator by
protecting the work, because it is an extension of the persona of its creator. 128

Secondly, the principle of just reward for labour expects the author’s merits
to be remunerated when their work is exploited. The labourer is entitled to
payment for his labour, and copyright provides the means for the author to obtain
economic benefit for his/her production.129 Thus, copyright provides the economic

basis for the investment required to create some works such as films, sound
recordings and works of architecture and publish them. The investments will not
be made unless there is a reasonable expectation of obtaining some return on
investment. The argument in favour of this is that it is fair to reward an author for
the effort expended in creating a work and giving it to the public. It is a legal
expression of gratitude to an author for doing more than society expects or feels
that they are obliged to do.

125 L. Bently and B.Sherman, Intellectual Property Law, 2nd ed. Oxford University Press, p 34
127 Ibid P 35 Hoggs v Scott, (1874) L.R.18 Eq. 444, Hall V-C held, “The true principle in these
cases is that the person copying is not at liberty to use or avail himself of the labour which the
plaintiff has been at for the purpose of producing his work; that is merely to take away the result of
another man’s labour or in other works his property,” cited at Supra n. 91, p 62
128 Supra n. 126, P 35
129 Supra n. 91, p 62 see also Jefferys v Boosey (1854) 1V H L C 815- justifying literary property to
“justice and convenience” and “the most elementary principles of securing to industry its fruits,
and to capital its profits”.

89
 Thirdly, it provides stimulus to creativity.130 It is based on an idea of what is

good for society or the public in general. Copyright presupposes that the guarantee
of protection and the possibility of controlling and being paid for the exploitation
of works encourage authors to create. It would not take place at a finest level if it
is not incentive based. It is also because the works are very costly to produce and
once produced they can be easily and readily copied. Hence, the law affords to
provide a legal means by which those who invest time and labour in producing
cultural and informational goods can be confident that they will not only be able to
recoup the investment, but also to reap a profit proportional to the popularity of
their work.131

Lastly, it is considered a social requirement and the public interest that,

authors and other right owners should be encouraged to publish their works so as
to permit the widest possible dissemination of works to the public at large. The
WCT refers to the need to maintain a balance between the rights of authors and the
larger public interest, particularly education, research and access to information as
reflected in the Berne Convention. The public is benefited through such right in
the following ways:
>■ encouragement of learning
> promotion of the economy by providing economic incentives and benefits
not only to authors but to industry commerce and society as a whole
> promoting cultural development and
1 T9
> promotion of international understanding

These four fundamental principles are cumulative and inter-dependent and

are applied in the justification of copyright in all countries, although different
1TT
countries give varying emphasis to each of them. In Copinger and Skone James
justifies the protection of copyright in the following statement:
“...it is considered a social requirement in the public interest that
authors and other rights owners should be encouraged to publish their
work so as to permit the widest possible dissemination of works to the
public at large. These four fundamental principles are cumulative and
inter-dependent and are applied in the justification of copyright in all
130 The Preamble of W1PO Copyright Treaty, 1996, states that the Contracting Parties emphasis
“the outstanding significance of copyright protection as an incentive for literary and artistic
creation.”
131 Landes W and R. Posner, ‘An Economic Analysis of Copyright Law ’ (1989) 18 J. Lee, Stud 325
cited at supra n. 38 P35.
132 Supra n. 91, p 64
133 Supra n. 3, Para 2- 05, page 27

90
 countries, although different countries give varying emphasis to each of
them. To generalize, it is true to say that in the development of modem
copyright laws; the economic and social arguments are given more
weight in Anglo- American laws of common law tradition, whereas, in
Continental law countries with civil law systems, the natural law
argument and the protection of authors are given first place. The
protection of copyright, along with other intellectual property rights, is
considered as a form of property worthy of special protection because it
is seen as benefiting society as a whole and stimulating further creative
activity and competition in the public interest.”

The economic importance of copyright protection can be traced namely to

the following:
> the amount of royalties and other payments by users
> employment in users industries (manufacturing, broadcasting
electronic dissemination) and collecting societies
> value of sales of products and services and consequent benefits and
> protection against unfair competition

However, the value of the rights in controlling the exploitation of particular

products cannot be accurately estimated.134

Sterling refers to two examples by demonstrating the financial importance

of the rights involved. Firstly, the mind of Walt Disney created copyright in most
countries of the world, in the form of cartoons, pictures, stories, books films and
associated material: without copyright, it is doubtful whether effective legitimate
international exploitation of the material could have been secured, and the
resultant royalties and licence fees are no doubt of an extensive order. Secondly,
he refers to the creative mind, which of Bill Gates who was responsible for
evolution of computer program system used throughout the world, building
protection of the computer programs on the law of copyright. The financial returns
of the exercise of copyright in these cases are probably to be calculated in terms of
billions of dollars per annum.I3*
S.K.U.L I B R A R Y
Acc. No..f-???.?.......
134
Supra n. 91, P 24-25 Call.No.........................
135The economic value of a traditional literary work, say a story involving picturesque characters,
may be mentioned. The work may be exploited as such, in the form of a book, or as adapted for
film, sound radio or television. But there are also “merchandising rights” under which copyright in
the depictions of the characters forms the basis of licensing rights for the use of the images on
clothing, toys, articles of clothing and many other consumer items. The holder of the copyright
will be able to charge license fees for the use of the images, often bringing in millions of dollars in
revenue, especially where a famous character and international exploitation are involved. Supra n.
91, P25

91
 Thus, copyright law has created rights and regularly adapted the law to
provide authors with protection and the development of technology has further
taken the step towards creation of new laws. The law provides for certain rights
and at the same time impose conditions and limitations on these rights. The
protection of copyright, along with other IPR, is considered as a form of property
worthy of special protection because it is seen as benefiting the society as a whole
and stimulating further creative activity and competition in the public interest.

2.8.2 Criticism for Grant of Copyright:

There are various criticisms for grant of copyright to the author. The
argument against granting copyright is that, it facilitates for unjustified monopoly
by restricting the freedom to access. According to them, the work should be freely
made available to the public which would be in the interest of the society as a
whole. It is an implied wealth creation for the industrial and commercial entities
exploiting the individual creative work of authors. Copyright royalties represent a
tax on knowledge with high prices of copyright material which is essential for the
dissemination of knowledge. There are authors who compose a work irrespective
of whether the grant of copyright are made or not and who are ready to
disseminate without any expectation of any return. If author is in need he would
enter into a contract in remunerating himself with the publisher of the work.
Hence, commercial entities should not be allowed to profit from grant of copyright
to the creator when they do not want to exercise. Copyright is used by developed
countries in exporting the educational scientific and entertainment material to
extract revenue from the developing countries importing the materials. Copyright
has resulted in an unwarranted restriction of trade and is thus, detrimental to the
world economic development.136 There is another argument that the term of
copyright is too long a period. It extends to life of the author plus sixty years,
which provides benefit to a person who has not made the creative contribution in
creation of the work, i.e. his legal heirs or assignees.

The argument against grant of copyright in the digital technology including

internet scenario are increasing contending that it represents an unjustified

136 Supra n. 91, p 68-70

92
restriction on the “rights” of the public to access. The copyright is not compatible
with the twenty first century realities requiring new set of laws.

Even with these criticisms, copyright laws have regularly adapted the law
to provide authors and other owners of rights. The protection of authors even in
this new technology driven economy has continued, which includes the protection
of computer programs. But, at the same time conditions and limitations have been
imposed on these rights. A legal title is only as good as its capacity for
enforcement in real world. This aspect actually causes a problem for intellectual
property in cyberspace. Apart from the fact that manifold laws and jurisdictions
around the globe make the enforcement of legal title quite cumbersome, the
national and, to the extent available, the international legal sources do not properly
address the new issues of ‘ownership’ protection in world-wide networks.

The recognition of a copyright and the practice of paying royalties emerged

with the printing press. With the arrival of electronic reproduction, these practices
become unworkable. The print shop of the eighteenth century is not analogous to
electronic publishing where the communication was managed by words of
mouth.137

The statement of John Perry Barlow, the great engineer and lyricist, will
summarise the whole idea of copyright protection in the digital media, as he said
that “on the one hand whatever the human mind may create, can be reproduced
and distributed infinitely at no cost and that on the other hand the global
conveyance of thought no longer requires ... factories to accomplish.”138

2.9 Overview of the Indian Copyright Act, 1957

The Copyright Act was enacted in the year 195 7139 Chapter I of the Act

makes provision for the definitions, publication of the work in question explaining

137 The futurist Ithiel de Sola Pool wrote as long ago as 1983:(fn7) Ithiel de Sola Pool, The
Freedom of Technologies, Cambridge, Mass. (1983), 214.refered International Journal of Law &
Information Technology/2001, Volume 9/June/Articles/Does Intellectual Property Become
Unimportant in Cyberspace?- IJL&IT 2001 9 (171) Rolf H. Weber.
138 John Perry Barlow, A Declaration of Independence of Cyberspace, of February 8, 1996,
available at http://www.eff.org./pub/Misc/Publications/John-Perry-Barlow/barlow-0296
139 Applies to whole of India and which came into force on 21st. January, 1958. The objects and
reasons stated that in the light of growing public consciousness of the rights and obligations of
authors and in the light of experience gained in the working of the existing law during the previous
copyright law new and advanced means of communications also call for certain amendments in the
existing law. Adequate provisions have to be made for fulfilment of international obligations in the

93
the making of that work available to the public by issue of copies or by

communicating the work to the public. Chapter II of the Act establishes Registrar
of Copyright with other officers.140 Copyright Board shall ordinarily hear any

proceeding instituted before it, which may exercise and discharge powers and
functions.141

Chapter III provides for different classes of works in which copyright

exists. The works protected are, the original literary, dramatic, musical and artistic
works, cinematograph films and sound recording.142 Copyright means where the

exclusive right is given to the author to do or authorise the doing of any of certain
things.143

The Act makes it clear that, no person shall be entitled to copyright or any
similar right in any work, whether published or unpublished, otherwise than under

field of copyright law. Hence a complete revision of copyright was inevitable and thus the
Copyright Act was enacted.
140 Section 10
141 SS 11& 12
142 Section 13
143 Section 14 a) in the case of literary, dramatic or musical work , not being a computer
programme, (i) to reproduce the work in any material form including the storing of it in any
medium by electronic means; (ii) to issue copies of the work to the public not being copies already
in circulation; (iii) to perform the work in public, or communicate it to the public; (iv) to make any
cinematograph film or sound recording in respect of the work; (v) to make any translation of the
work; (vi) to make any adaptation of the work; (vii) to do, in relation to a translation or an
adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);
(b) In the case of a computer programme, (i) to do any of the acts specified in clause (a) and (ii) to
sell or give on commercial rental or offer for sale or for commercial rental any copy of the
computer programme. However, such commercial rental does not apply in respect of computer
programmes where the programme itself is not the essential object of the rental.
(c) in the case of an artistic work,- (i) to reproduce the work in any material form including
depiction in three dimensions of a two dimensional work or in two dimensions of a three
dimensional work; (ii) to communicate the work to the public; (iii) to issue copies of the work to
the public not being copies already in circulation; (iv) to include the work in any cinematograph
film; (v) to make any adaptation of the work; (vi) to do in relation to an adaptation of the work any
of the acts specified in relation to the work in sub-clauses (i) to (iv);
(d) in the case of a cinematograph film,- (i) to make a copy of the film, including a photograph of
any image forming part thereof; (ii) to sell or give on hire or offer for sale or hire, any copy of the
film, regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to
communicate the film to the public;
(e) In the case of a sound recording- (i) to make any other sound recording embodying it; (ii) to sell
or give on hire, or offer for sale or hire, any copy of the sound recording regardless of whether such
copy has been sold or given on hire on earlier occasions; (iii) to communicate the sound recording
to the public.
Explanation: For the purposes of this section, a copy which has been sold once shall be deemed to
be a copy already in circulation.

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and in accordance with the provisions of this Act or of any other law for the time
being in force. Hence, there is no copyright except as provided in this Act.144

Chapter IV makes for provisions relating to ownership and right of such

owners of the creative work. The author of the work shall be the first owner.
However, different consideration applies in case of the author is under a contract
of employment. The contract will govern such authorship.145

The Act also makes provision for assignment of the creative work which
the author may assign to any person.146 The assignment shall be made in
accordance with the Act, which shall be subject to revision, extension or
termination on terms mutually agreed upon by the parties.147 The Act provides that

the author may make testamentary disposition or may relinquish all or any of the
148
rights comprised in the copyright in the work.

Chapter V provides for the term during which copyright shall subsist in any
literary, dramatic, musical or artistic work. The copyright shall subsist in any work
when published within the lifetime of the author until sixty years from the
beginning of the calendar year next following the year in which the author dies.149

The Act provides for the term in case of anonymous and pseudonymous and
posthumous works.150 Separate provision is made for work of photograph,

cinematograph, and sound recordings. Government work, works of public

undertakings and international organizations also been placed in the Act.151

Chapter VI of the Act consists of provisions relating to licencing of

copyright work. The author or owner may grant any interest in the right by licence
in writing signed by him or by his duly authorised agent to any person.152 This

chapter also consists of provisions relating to compulsory licencing. When the

owner of copyright has refused to re-publish or allow the performance in public of

144 Section 16
145 Section 17
146 Section 18
147 Section 19
148 Section 20 & 21
149 Section 22
130 Section 23 & 24
151 Sections 25 to 29
152 Section 30

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the work and is withheld from the public The Copyright Board shall after making
inquiry, may if satisfied that the grounds for such refusal are not reasonable, direct
the Registrar of Copyrights to grant the work to the public by broadcast, with
terms and conditions including for payment of compensation to the owner of
copyright.153 Licence may also be granted to translate any creative work with
certain terms and conditions.154

Copyright societies may be registered for administration of copyright

licences which is provided under Chapter VII. They can carry on the business of
issuing or granting licences in respect of any work in which copyright subsists or
in respect of any other rights conferred by this Act. A copyright society may
accept from an owner of rights exclusive authorisation to administer any right in
any work by issue of licences or collection of licence fees or both. An owner of
rights shall have the right to withdraw such authorisation without prejudice to the
rights of the copyright society under any contract. Copyright society shall be
subject to the collective control of the owners of rights under this Act, whose
rights it administers and shall obtain the approval of such owners of rights for its
procedures of collection and distribution of fees, to obtain their approval for the
utilisation of any amounts collected as fees for any purpose other than distribution
to the owner of rights and to provide to such owners regular, full and detailed
information concerning all its activities, in relation to the administration of their
rights. 155

Chapter VIII provides for rights of broadcasting rights and performer’s

rights. Broadcasting organisation shall have “broadcast reproduction right” in
respect of its broadcasts and shall subsist until twenty-five years from the
beginning of the calendar year next following the year in which the broadcast is
made. These rights were popularly known as ‘neighbouring rights’ now recognised
as ‘Related Rights.’156 Section 38 provides for the performer’s right, where in any
performer appears or engages in any performance gets protection. No person
without the consent of the performer in relation to any of his performance, make a

153 Section 31
154 Section 32
155 Section 33
156 SS 37 & 39

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sound recording or visual recording of the performance or reproduce a sound
recording or visual recording of the performance and made for purposes different
from those permitted. Similar provision is applicable to broadcast of the
performance and communication of performance.157

Chapter IX provides for protection of international copyright. The Central

Government by official notification grant protection for the works first published
in any territory outside India or to any unpublished works, or any class thereof, the
authors were at the time of the making of the work, subjects or citizens of a
foreign country. The Act shall apply to those works subject to this chapter
accordingly. The Central Government shall grant taking into consideration the
principle of national treatment under the Berne Convention, 1886. The Act
provides certain rights and obligation to broadcasting organisations.158

Registration of copyright are made possible under Chapter X. The

Copyright office shall register any copyright work with the names or titles of
works and the names and addresses of authors, publishers and owners of copyright
being kept in a register. Such registration shall be prima facie evidence and shall
be admissible in evidence in all courts without further proof or production of the
original.159 However, it is to be noted that registration of copyright is not

mandatory and irrespective of any registration the author is still entitled to

copyright protection.

Chapter XI provides for one of the most important aspect of copyright law,
i.e. infringement of copyright and the fair use of any work. Copyright in any work
shall be infringed when any person does anything the exclusive right to do is
conferred upon the owner of the copyright or does 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, without a
licence granted by the owner or Registrar of Copyright or in contravention of the
conditions of a licence. Similarly, when any person makes for sale or hire, or sells
or lets for hire, or by way of trade displays or offers for sale or hire, or distributes

SS 38 & 39
158 Section 40A to 42A
159 SS. 44 to 50A

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either for the purpose of trade or to such an extent as to affect prejudicially the
owner of the copyright, or by way of trade exhibits in public, or imports into India,
any infringing copies of the work shall be liable under the Act.160

Section 52 is a provision balancing the individual property rights of the

owner of the copyright and public right of making use of that work. The section
provides for fair use of certain work under certain circumstances which is not to be
considered as infringement of copyright. Broadly speaking a fair dealing with a
literary, dramatic, musical or artistic work for the purposes of private use,
including research, criticism or review shall not constitute an infringement of
copyright. The Act also makes specific provision for fair use of computer

programs.

Chapter XII and XIII provides for the remedies available for the copyright
owner in cases of his rights being infringed. The owner has both civil and criminal
remedies against the infringer. Where copyright in any work has been infringed,
the owner of the copyright shall be entitled to all such remedies by way of
injunction, damages, and accounts as are or may be conferred by law for the
infringement of a right. Section 57 of the Act provides one of the significant rights
(author’s special rights) to the author which is popularly known as moral rights.
The moral right is that where, the author of a work shall have the right to claim
authorship of the work and to restrain or claim damages in respect of any
distortion, mutilation, modification or other act in relation to the said work which
is done before the expiration of the term of copyright if such distortion, mutilation,
modification or other act would be prejudicial to his honour or reputation. The
Berne Convention makes provision for such protection. However, one significant
departure is the TRIPS Agreement does not grant protection of the moral right of
the author (which was basically facilitated the United States).

The owner of copyright may take proceedings for the recovery of

possession of infringing copies or in respect of the conversion of such work. The
suit or other civil proceeding in respect of the infringement of copyright in any

160 Section 51

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work or the infringement of any other right conferred by this Act shall be instituted
in the district court having jurisdiction.161

The Act provides the owner of copyright to bring the criminal law into
motion. Any person who knowingly infringes or abets the infringement of the
copyright in a work or any other right conferred by this Act shall be punishable
under the Act.162 Any person who knowingly makes use on a computer of an
infringing copy of a computer program shall be punishable.163 It must be noted that

today there are plenty of works made available in the internet or the public
domain, which any person can use it freely. But however, that does not excuse the
user for the infringement of copyright.

The Act provides for enhanced punishment for the second and subsequent
conviction.164 The Act makes provision for seizure of infringing copies, when 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, and all plates used
for the purpose of making infringing copies of the work.165 The Act also provides
for penalties under certain circumstances.166

Chapter XIV and XV provides appeal provisions167 and conferring certain

powers to the Registrar of Copyright and the Copyright Board.168 The Central

Government has power to make rules relating to the Act.

The Copyright (Amendment) Act, 1994 brought in protection to satellite

broadcasting, computer software and digital technology. Earlier to 1994
amendment, the Copyright Act of 1957 had provided protection to all original
literary, dramatic, musical and artistic works, cinematography, films and sound
recordings. It now covers sector such as satellite broadcasting, computer
programme and covering some digital technology under Indian law.

161 Section 62
162 Section 63 -Imprisonment for a term which shall not be less than six months but which may
extend to three years and with fine which shall not be less than fifty thousand rupees but which
may extend to two lakh rupees
163 Section 63 B
164 Section 63 A
165 Section 64
166 SS 65-68A
167 SS 71 to 73
168 SS 74 to 78

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 The Copyright Amendment Bill, 2010 is in the making. The Amendment
Bill seeks to protect the computer program in accordance with the WCT and
performer and phonogram under the WIPO Performers and Phonogram Treaty
(WPPT). The Bill also intends to provide the technological measures adopted by
the owners to get protection by Digital Right Management system (DRM).

Thus, copyright exists in original work of the author with his skill, labour
and capital. The copyright being a creation of the statute has to be claimed within
the four corner of the Act. Copyright is a negative right which will not allow to
copy but may create similar work without copying. To claim copyright in the first
instance the three requirement of law are, ideas are not protected and only ideas
put into a particular expression, it should have a fixation and it should be original
work derived from the author and which is not copied from some other work. In
the digital era the concept of idea, fixation and originality requirements have come
to the fore which are major challenges to be tackled. The computer program is
considered to be a literary work, which the researcher will refer in the following
chapters and hence, presently courts are recognising the traditional principles of
idea-expression dichotomy as far as possible. As to fixation is concerned, even a
transitory storing of a copy of a work is sufficient to involve an infringement of
copyright. And lastly, the originality requirement should also fulfil the test
followed in traditional method. In the next chapter the researcher will study the
subject matter protected under the Copyright Acts including countries from U.S,
U.K and ECD under analog and digital method. The computer program is now
protected as a literary work and this is the testing time for the Indian legislative
and judicial system to deal with these challenges. The U.S and U.K has to some
extent protected the computer program and software through legislative action and
judicial interpretation. The main thrust of the next chapters will be concentrating
these issues.

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