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Baker v. Selden (101 U.S.

This is the first US Supreme Court case which dealt with the idea-
expression dichotomy.
The facts of the case are that Selden devised a new method of
financial accounting for his business. His new scheme made it possible
to record the entire operations of the business for a given period of
time on either a single page on two facing pages. He published a short
book explaining his new system, along with accompanying forms that
would be used in putting the system into operation. Baker
subsequently prepared forms that were not identical to Selden’s but
were similar to them and were tailored using Selden’s system. Selden
sued Baker for infringement.

The Supreme Court rejected the infringement argument. The court

held that the Plaintiff’s copyright in a book describing a new system of
bookkeeping extended only to his verbal description of the system,
and not the system itself. Therefore, Selden’s copyright did not give
him exclusive right in the system of accounting he had developed.
Thus, according to the court, since the defendant had used the idea
and the bookkeeping method of the plaintiff with slight variations, he
had expressed the idea by way of a different expression and therefore
his work did not amount to copyright infringement.

Responding to the fact that the Defendant had used diagrams used by
the Plaintiff in his work, the court stated that, “the very object of
publishing a book on science or the useful arts is to communicate to
the world the useful knowledge which it contains. But this object would
be frustrated if the knowledge could not be used without incurring the
guilt of piracy of the book. And where the art it teaches cannot be used
without employing the methods and diagrams used to illustrate the
book, or such as are similar to them, such methods and diagrams are
to be considered as necessary incidents to the art, and given therewith
to the public; not given for the purpose of publication in other works
explanatory of the art, but for the purpose of practical application.”
Thus, if a diagram is the practical use of the idea, it cannot be
Najma Heptulla v. Orient Longman Ltd. & Ors. AIR 1989 Delhi
Judge: B.N. Kirpal J.
The facts of the case:
This case concerned publication of 30 pages (erstwhile undisclosed) of
the book, India wins Freedom, written by Maulana Azad. While writing
the book, Maulana Azad was aided by Prof. Humayun Kabir. The
process by which the book was written by the two was that Maulana
Azad had, during his life time, dictated and given certain notes to Prof.
Humayun and out of that material Prof. Humayun had composed the
book which had been approved by the late Maulana Azad.

The manuscript of this book was ready for publication sometimes in

November, 1957. Given the personal nature of certain incidents, the
Maulana did not want a part of the book (30 pages) to be published in
the present (1958), but wished that it should be published 30 years
after his death. Maulana Azad died on 22nd February, 1958. Given this
arrangement, the National Archives and National Linrary, Calcutta
acted as trustees for copies of the complete manuscript, including 30
pages which have not been published till today but were required to be
published after 30 years of Maulana Azad’s death i.e. after 22nd
February, 1988.
Close to 22nd February, 1988, the publishers, Orient Longman Ltd.,
dispatched letters to the legal heirs of Maulana Azad informing them
that they would be publishing the 30 pages as soon as possible after
the stipulated date and as per the earlier arrangement, the legal heirs
would continue to get royalty from the sale of the book.
Najma Heptulla, the legal heir of Maulana Azad, stated that Orient
Longman had no right/ authority to publish the concerned pages and
that Maulana Azad being the sole author of the book, any agreement
entered into by Prof. Humayun relating to publication of the book and
the undisclosed material with Orient Longman was invalid and
unenforceable, as Prof. Humayun had no right to enter into such an
agreement. Also, given this situation the copyright in the said work
rests in the legal heirs, who ought to decide when to publish the
concerned material. Consequently, the Plaintiff prayed for an injunction
under Order 39 Rules I and 2 restraining the defendants from breaking
the seals of the covers in which the complete book India Wins
The defendants argued, using the Donoghue case that Prof Humayun
was the author of the book, or in the alternative, Azad and Prof.
Humayun were joint authors of the book. Consequently, the
agreements and arrangements entered into by Prof. Humayun in
relation to the book were valid and enforceable. Thus, given the
agreement entered into by Prof. Humayun and Orient Longman, the
latter has the right to publish the book and the undisclosed material.

While deciding, the Court considered the definition of an “author” and

came to the conclusion, that Azad and Prof. Humayun were joint
authors of the work as between the two of them there was “joint
labouring in furtherance of a common design…” Borrowing from the
dicta of a leading English case on the point, the Court further explained
the concept of “joint authorship” by stating that, “If two persons
undertake jointly to write a play, agreeing in the general outline and
design, and sharing the labour of working it out, each would be
contributing to the whole production, and they might be said to be joint
authors of it. But, to constitute joint authorship, there must be a
common design. However, it is not necessary that each of the two
should put in the same amount of work or labour.” Thus, applying the
dicta to the facts of the case, the Court concluded that, it is clear that
there was active and close intellectual collaboration and cooperation,
between Maulana Azad and Prof. Humayun which resulted in the book
India Wins Freedom. There was a reconverted joint design between the
two in the writing of the book. The material for the book was supplied
by Maulana Azad with a clear understanding that Prof. Kabir will
describe those thoughts and conversation and write the same in
English language. It is not as if Maulana Azad did not know English. The
preface itself shows that Maulana Azad, along with Prof. Kabir, read
every word of the manuscript and made alterations, additions,
omissions and corrections.

Thus, the court held that Prof. Kabir should have consulted the legal
heirs/representatives of Azad before entering into an agreement with
Orient Longman. A letter/document to this effect was examined by the
court, whereby the Grandmother of the Plaintiff had agreed to the
arrangement between Prof. Kabir and Orient Longman, being entitled
to receive a share of royalty from the sale of the book. The court used
this document as the basis of stating that the consent of the legal
heirs/representatives of Azad had been validly obtained. Consequently,
the agreement entered between Prof. Kabir and Orient Longman was
valid and the Plaintiff’s application for injunction was dismissed.

R.G. Anand v. Delux Films & Ors. AIR 1978 SC 1613

Judges:Jaswant Singh, R.S. Pathak and S. Murtaza Fazal Ali, JJ.
Judgment delivered by Fazal Ali J.
The facts of the case are as follows:
The Plaintiff was a playwriter and had written, directed and produced
the play “Hum Hindustani” in Delhi in 1954. The story of the play
revolved around the love story of a Madrasi boy and a Punjabi girl and
the opposition to any union between them by their parents due to
provincialism and parochialism. At the end of the play, on finding the
suicide notes left by the children, the parents realise their mistake and
that the happiness of their children is more important than the petty
beliefs of provincialism. This play was well received in the theatre and
literary circles. Subsequently, the one of the Defendants (Mr. Mohan
Sehgal) got in touch with the Plaintiff asking him for the copy of the
play for the purposes of seeing the viability of converting the play into
a movie. However, the project never went beyond preliminary
negotiations. Subsequently, the Defendants produced a movie titled
“New Delhi”. The Plaintiff was informed that the movie was similar to
the play “Hum Hindustani.” When the Plaintiff saw the movie himself
he found that the movie was based on similar themes as that of the
play and was in fact an imitation of the play. The movie had the
Punjabi boy and a madrasi girl falling in love. It is pertinent to note that
the detailed facts of the movie were different from that of the play
apart from the problem of provincialism in regard to marriage and in
regard to renting out accommodation, other evils of a caste ridden
society, and the evils of dowry were also explored. However, on the
alleged similarity between the film and the play the Plaintiff sued the
Defendants for copyright infringement. The Defendants argued that
though the movie and the play made use of the common idea of
provincialism, and the Plaintiff cannot be said to enjoy copyright over
the concept of provincialism in general. Moreover, the development of
themes, characters, sequences etc was different in the movie as
compared to the play. On these grounds the Defendant stated that
they were not liable for copyright infringement.

The idea – expression dichotomy becomes important in such

infringement cases because there cannot be any infringement of ideas,
however, there can be infringement (literal or substantial) of the
tangible expression of the idea. Thus, if the similarities in two works
stem due to the existence of similar ideas behind the works, then there
is no copyright infringement. However, as opposed to such
unintentional similarities, if there is literal or substantial copying by the
alleged infringer, proven by similarity in details, then a case of
infringement would possibly hold good. For instance in the instant
case, while determining the question of copyright violation, the Apex
Court held that, “the fundamental fact which has to be
determined where a charge of violation of the copyright is
made by the plaintiff against the defendant is to determine
whether or not the defendant 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.”
While attempting to answer the abovementioned question, the Apex
Court reiterated and summarized the law on the idea-expression
dichotomy and copyright infringement by stating the following points:
1. 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 copyrighted work.
2. 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 copyrighted work. If the defendant's work is
nothing but a literal limitation of the copy-righted work with some
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 defendants is guilty of an act of piracy.
3. One of the surest and the safest test of determine whether or not
there has been a violation of copyright is to see if the reader, spectator
or the viewer after having read or seen both the works is clearly of the
opinion and gets an unmistakable impression that the subsequent
work appears to be a copy of the original.
4. Where the theme is the same but is presented and treated
differently so that the subsequent work becomes a completely new
work, no question of violation of copyright arises.
5. Where however apart from the similarities appearing the two works
there are also material and broad dissimilarities which negative the
intention to copy the original and the coincidences appearing in the
two works are clearly incidental no infringement of the copyright
comes into existence.
6. As a violation of copyright amounts to an act of piracy it must be
proved by clear and cogent evidence after applying the various tests
laid down by the case-law discussed above.
7. Where however the question is of the violation of the copyright of
stage play by a film producer or a director the task of the plaintiff
becomes more difficult to prove piracy. It is manifest that unlike a
stage play a film has a much broader prospective, wider field and a
bigger background where the defendants can be introducing a variety
of incidents give a colour and complexion different from the manner in
which the copyrighted work has expressed the idea. Even so, if the
viewer after seeing the film gets a totality of impression that the film is
by and large a copy of the original play, violation of the copyright may
be said to be proved.

Applying these points to the facts at hand the Apex Court concluded
that the movie and the play explored the similar idea and problem of
provincialism. However, the movie also explored other themes.
Moreover, the details of the movie relating to the manner,
arrangement, situation to situation, scene to scene with minor changes
or super additions or embellishment here and there, made the movie a
different expression of the similar idea in comparison to the play.
Consequently, any overlap stemmed from the fact of similar ideas and
thus the movie could not amount to literal or substantial copying of the
play. Based on this decision, the Apex Court confirmed the dicta of the
lower courts and dismissed the appeal.

Herbert Rosenthal Jewelry Corp. v. Kalpakian, 379 F.2d 675 (1st

Cir. 1967)
In this case the Plaintiff alleged that the Defendant’s product infringed
his copyright registration of a pin in the shape of a bee formed of gold,
encrusted with jewels. The Defendant alleged that they manufactured
and sold a line of jeweled bee pins which they had designed
themselves after a study of bees in nature and in published works and
did not copy plaintiff's copyrighted bee. It is pertinent to note that the
Plaintiff’s bee had nineteen small white jewels on its back, while
defendants' entire line of a score or more jeweled bees was in three
sizes decorated with from nine to thirty jewels of various sizes, kinds,
and colors. Thus, the Plaintiff argued that in spite of the differences,
the Defendant’s work was substantially similar to that of the Plaintiff,
and therefore infringed the Plaintiff’s copyright.
While addressing these arguments, the court referred to the doctrine
of merger. The court held that with regard to details, the Defendant’s
pin was substantially different from the Plaintiff’s design. Moreover, the
court also opined that in its arguments the Plaintiff had attempted to
give a very broad interpretation to his copyright so as to cover largely
every kind of jeweled pin. In spite of these observations, the court felt
that the problem of subconscious copying, which would also amount to
infringement was not addressed. Thus, the court reasoned that there
are only a limited number of ways to make a jeweled pin that looks like
a bee, and that any subsequent design of such a pin would bear a
close resemblance to the Plaintiff’s pin. If everyone else’s pins were
found to infringe the Plaintiff’s, the Plaintiff would be the only person
allowed to make pins in the shape of a bee. Thus, the court held that,
“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.”
As regards Burden of Proof the Court held that “when there is
only a limited number of ways to express an idea the burden of proof is
heavy on the plaintiff who may have to show 'near identity' between
the works at issue.”

University of London Press, Limited v. University Tutorial

Press, Limited, [1916] 2 Ch. 601.
This is an English case decided by the Chancery Division in United
Kingdom. The case involved the question whether papers set by
examiners are “original literary work” within the meaning of the
Copyright Act, 1911. The case was an infringement suit filed by
the University of London Press against the Defendants for
publishing a series of question papers, for which the copyright
had been assigned from the University of London to the

The facts of the case are as follows: Certain persons were appointed as
examiners for matriculation examination of the University of London on
a condition that any copyright in the examination papers should belong
to the University. The University assigned the copyright to the plaintiff
company. After the examination, the defendant company brought out
a publication containing a number of the examination papers, including
three which had been set by two examiners appointed by the
University. The plaintiff company brought a case of copyright
infringement against the defendant company. It was argued that since
the setting of the papers entailed the exercise of brainwork, memory,
and trained judgment, and even the selection of passages from other
author's work involved careful consideration, discretion and choice
they constituted original literary work. On the other and, the
defendants claimed that what they had done was fair dealing for the
purposes of private study which was permissible under the law.
The court agreed that the material under consideration was a literary
work. According to the court, “The words 'literary work' cover work
which is expressed in print or writing, irrespective of the question
whether the quality or style is high. The word 'literary' seems to be
used in a sense somewhat similar to the use of the word 'literature' in
political or electioneering literature and refers to written or printed
matter.” The court noted that the definition of literary work is
not restricted to novels or other great works of literature but
also extends to maps, charts, tables and compilations. Thus,
there isn’t any need for any literary style for the purposes of
attaining copyright protection. Consequently, the court
concluded that “literary work” covers work which is expressed
in print or writing, irrespective of the question whether the
quality or style is high and papers set by examiners are, in the
court’s opinion, "literary work" within the meaning of the
Copyright Act.
With respect to the originality issue, the Court held that the term
'original' under the Act does not imply original or novel form of ideas or
inventive thought, but the work must not be copied from another
work - that it should originate from the author.
The next question which followed was whether question papers
satisfied the requirement of originality. In this regard the court held
that, “The word “original” does not in this connection mean that the
work must be the expression of original or inventive thought. Copyright
Acts are not concerned with the originality of ideas, but with the
expression of thought, and, in the case of “literary work,” with the
expression of thought in print or writing. The originality which is
required relates to the expression of the thought. But the Act
does not require that the expression must be in an original or
novel form, but that the work must not be copied from another
work - that it should originate from the author. In the present
case it was not suggested that any of the papers were copied. The
professors who set the papers proved that they had thought out the
questions which they set, and that they made notes or memoranda for
future questions and drew on those notes for the purposes of the
questions which they set. Thus, the papers which they prepared
originated from themselves, and were, within the meaning of the act,
original and could be subject matter of copyright. – Thus the work
originated from the author.

Feist Publications, Inc., v. Rural Telephone Service Company,

Inc., 499 U.S. 340.
The facts of this case are as follows: Rural TS provided telephone
services in the District and as per the State law brought out a
telephone directory of the area, which it distributed free of charge. The
Directory consisted of white pages and yellow pages. The white pages
listed in alphabetical order the names of Rural's subscribers, together
with their towns and telephone numbers. The yellow pages list
Rural's business subscribers alphabetically by category and
feature classified advertisements of various sizes. Rural
distributes its directory free of charge to its subscribers, but earns
revenue by selling yellow pages advertisements. Similar to this
Directory the Appellants (defendants originally), a publishing house
released a directory. This directory also has white and yellow pages
and the division of details was also similar. Prior to publishing its
directory Feist approached each of the 11 telephone companies
operating in northwest Kansas and offered to pay for the right to use
its white pages listings. However, Rural refused to license its listings to
Feist. Rural's refusal created a problem for Feist, as omitting these
listings would have left a gaping hole in its area-wide directory,
rendering it less attractive to potential yellow pages advertisers. Given
this situation, Feist used the listings without Rural's consent. The court
also noted that though Feist had added details to these entries, the
basics about the contacts were identical to the entries in Rural’s
directory. The Defendants argued that they are not liable for copyright
infringement as a directory cannot enjoy copyright protection as it
does not qualify as an original work.
The court addressed this contention of the by dividing it into two
factions, one that facts themselves are not copyrightable. However,
compilations of data or facts generally are. Working these two ideas in
a consistent manner is quite difficult. Given this problem, the court
interpreted originality as “the term is used in copyright, means only
that the work was independently created by the author (as opposed to
copied from other works), and that it possesses at least some minimal
degree of creativity.” It is pertinent to note that the level of creativity
required is extremely low. Thus the court went on to say that,
“Originality does not signify novelty; a work may be original even
though it closely resembles other works so long as the similarity is
fortuitous, not the result of copying.”
Thus, facts in the directory cannot be subject of copyright. However,
the Directory as a compilation of facts can be the subject matter of
copyright because, “The compilation author typically chooses which
facts to include, in what order to place them, and how to arrange the
collected data so that they may be used effectively by readers. These
choices as to selection and arrangement, so long as they are made
independently by the compiler and entail a minimal degree of
creativity, are sufficiently original that Congress may protect such
compilations through the copyright laws.” Thus, minimal degree of
creativity evidenced by selection and arrangement of facts is required
for such compilations to be protected by copyright
Eastern Book Company and Others v. D.B. Modak and Anr.,
2008 (1) SCC 1
Bench: B. N. Agarwal & P. P. Naolekar, (2007 INDLAW SC 1341)


In the case before the High Court, the Plaintiff had sued the Defendant
for copyright infringement. Plaintiffs (Appellants) were involved in
publishing businewess of printing and publishing of various books
relating to the field of law. The plaintiffs publish the SCC, journals and
also are proprietors of the SCC online database. In these works the
Plaintiffs claimed copyright in the headnotes, in the selection,
manner of arrangement and in the manner of presentation of
the judgments in both printing and electronic form in the
introductory line appended by them before each judgment
which reads "The judgment of the Court was delivered by", in
the paragraph numbering introduced by the editorial staff, in
the copy-edited portions judgment of the Supreme Court and
in the style and form of printing adopted by them for
publication of the judgments of Supreme Court of India in the
law reports.
The Defendants have developed a software package called "THE
LAWS", published in two CD ROMs and also a software package called
"GRAND JURIX" published in three CD-ROMs. It is alleged by the
plaintiff that the short notes and head notes of the
defendants' software in both the cases were identical to the
short notes and headnotes published in the plaintiffs S.C.C.
and the defendants had not only slavishly copied the head
notes, but had also copied the entire text of the copy-edited
judgments verbatim as published in the plaintiffs' law report
SCC alongwith and including the style and formatting, the copy
editing, the paragraph numbers, footnote numbers, the cross
references etc.
The defendants argued that the judgments of courts are in public
domain and were not capable of exclusive appropriation by any one
party. Moreover, the format and style of presentation of the
defendants is also stated to be completely different from that of the
plaintiffs. It is also stated that there could not be any copyright in mere
typographical arrangement and standard formats.
The court stated that, “there cannot be any monopoly in the subject
matter which the author has borrowed from public domain. Others are
at liberty to use the same material. Material in which no one has a
copyright is available to all. Every man can take what is useful from
them, improve, add and give to the public the whole comprising the
original work with his additions and improvements. Under the guise of
the copyright, the plaintiffs cannot ask the Court to restrain
the defendants from making this material available to public.
Therefore, of the judgments/orders published by the plaintiffs
in their law reports "Supreme Court Cases" is not their original
literary work but has been composed of, compiled and
prepared from and reproduction of the judgments of the
Supreme Court of India, open to all. Thus, merely by correcting
certain typographical or grammatical mistakes in the raw
source and by adding commas, full stops and by giving
paragraph numbers to the judgment will not their work as the
original literary work entitled to protection under the
Copyright Act. Plaintiffs, therefore, have no copyright in the
judgments published in their law reports.”
More specifically with regard to head notes - S.K. Mahajan, J. held that,
“A genuine abridgment of judgments of the Court is an original work
and can be the subject-matter of infringement of a copyright even if
the amount of originality is very small. However, in case the head-
notes are verbatim extracts from the judgments of the Courts,
there is no amount of skill or labour involved in preparing the
head-notes and no person can claim a copyright therein. I have
not gone through the head-notes of each and every judgment
published in the journal of the plaintiffs nor I have gone
through each and every head note of the judgments in the
data base of the defendants and I am, therefore, not in a
position at this stage to comment as to whether or not these
head-notes are verbatim extracts from the judgments of the
Court or whether any labour or skill of the plaintiffs is involved
in preparing the head-notes. But, in case, the head-notes have
been prepared by the plaintiffs with their own labour and skill
and there is originality and creativity in the preparation of
head-notes, there cannot be any dispute that the party which
has produced the head-notes will have a copyright therein. Re-
production of either a few sentences from the judgments of the Court
or the entire paragraph or the joining together of some of the
sentences of the judgment in the head-note, in my opinion, cannot be
said to be either the creative or the original work or the abridgment of
the judgment of the Court.”
In the appeal before the Apex Court, the Court held that the
questions which require determination by the Court are: (1) What
shall be the standard of originality in the copy-edited
judgments of the Supreme Court which is a derivative work
and what would be required in a derivative work to treat it the
original work of an author and thereby giving a protected right
under the Copyright Act, 1957 to the author of the derivative
work? and (2) Whether the entire version of the copy-edited
text of the judgments published in the appellants law report
SCC would be entitled for a copyright as an original literary
work, the copy-edited judgments having been claimed as a
result of inextricable and inseparable admixture of the copy-
editing inputs and the raw text, taken together, as a result of
insertion of all SCC copy-editing inputs into the raw text, or
whether the appellants would be entitled to the copyright in
some of the inputs which have been put in the raw text ?
The Apex Court went on to define ‘derivative works’ as works that are
based on existing subject-matter. With regard to copyright in
judgments in general, the court held that in light of Section 2(k) of the
Copyright Act, the judgments delivered by the Supreme Court would
be a government work and the government is the first owner of the
copyrighted material. The court went on to state that, “Section 52(1)
expressly provides that certain acts enumerated therein shall not
constitute an infringement of copyright and sub-clause (iv) of clause
(q) excludes the reproduction or publication of any judgment or order
of a Court, Tribunal or other judicial authority, unless the reproduction
or publication of such judgment or order is prohibited by the Court, the
Tribunal or other judicial authority from copyright. Thus, the judicial
pronouncements of the Apex Court would be in the public
domain and its reproduction or publication would not infringe
the copyright.”
Given this legal set up, it is clear that no one else can claim copyright
over the judgment itself in the course of publishing the judgment. The
question then is whether the publishing companies enjoy any degree of
copyright over the material. It is pertinent to note that the Court
treated the judgments published by the Plaintiffs as derivative
works and went on to state that such works in order to be
copyrightable should exhibit originality and there should the
required exercise of independent skill, labour and capital in its
creation by the author to qualify the work for the copyright
protection. Moreover, the court also held that such skill, labour
and capital so spent on creating the derivative work should not
be negligible. – not merely mechanical
Based on this legal position, the respondents argued that in
introducing corrections, punctuations, paragraph numbers, cross
citations and head notes, etc. the Plaintiffs have exercised sufficient
independent skill, labour and capital to bring forth a derivative work
which is original in comparison to the primary work.
On the other hand the Defendants argued that, “the judgments
published in the Supreme Court Cases is nothing but merely a
derivative work based upon the judgments of the court, which lacks
originality as it does not depict independent creation even a modicum
of creativity.” It is pertinent to note that the Defendants refuted the
application of the “sweat of the brow” theory propounded by the
Plaintiff, according to which if the work was had minimal creativity and
was not a mere copy of the primary work, and in making such work the
author had put in skill and effort, the author was entitled to copyright
protection. The Defendants argued there was lack of originality in the
said derivative works. Moreover, they also stated that, “the inputs
put by the appellants were nothing but expressing an idea
which can be expressed in a limited way and as such there
cannot be a copyright. Filling the blanks or gaps by providing
names of the parties or citations of the judgments, both of
which are well known and unchangeable parts of that idea, are
not original work. These are not creative at all to warrant
copyright protection, either singly or in combination. The
additions made in the reported judgment by the editors of the
Supreme Court Cases are only the well known extensions of
the reported decision. These extensions lack even the minimal
degree of author's creativity or originality or intellectual
labour. These additions do not create additional knowledge,
the protection of which is the very basis of the copyright
protection.” Thus, we see that the Defendants have brought forth
shades of the idea–expression dichotomy and merger doctrine.
Moreover, they claim the requirement of minimal degree of creativity
in a derivative work, in the absence of which the same is not original
and is a mere copy of the primary work. Given these arguments, the
Defendants stated that, “the copy-editing inputs of the
appellants are only discoveries/facts and there are limited
ways/unique of expressing the various copy-editing inputs and
thus no copyright can subsist in such limited/unique
expressions. The facts which are discovered could be
expressed in limited ways and as such ways adopted cannot
give copyright protection to the inputs or the judgments as a
whole.” Also that, while creating derivative works, “he
exercise of skill and judgment required to produce the work
must not be so trivial that it could be characterized a purely
mechanical exercise. The work should be independently
created by the author as opposed to copied from the other
works and that it possesses at least some minimal degree of

In the light of these arguments the Apex Court held that, “the judicial
pronouncements of the Apex Court would be in the public domain and
its reproduction or publication would not infringe the copyright. That
being the position, the copy-edited judgments would not satisfy the
copyright merely by establishing amount of skill, labour and capital put
in the inputs of the copy-edited judgments and the original or
innovative thoughts for the creativity are completely excluded.
Accordingly, original or innovative thoughts are necessary to establish
copyright in the author's work. The principle where there is common
source the person relying on it must prove that he actually went to the
common source from where he borrowed the material, employing his
own skill, labour and brain and he did not copy, would not apply to the
judgments of the courts because there is no copyright in the
judgments of the court, unless so made by the court itself. To secure a
copyright for the judgments delivered by the court, it is necessary that
the labour, skill and capital invested should be sufficient to
communicate or impart to the judgment printed in SCC some quality or
character which the original judgment does not possess and which
differentiates the original judgment from the printed one. The
Copyright Act is not concerned with the original idea but with the
expression of thought. Copyright has nothing to do with originality or
literary merit. Copyrighted material is that what is created by
the author by his own skill, labour and investment of capital,
maybe it is a derivative work which gives a flavour of
creativity. The copyright work which comes into being should
be original in the sense that by virtue of selection, co-
ordination or arrangement of pre-existing data contained in
the work, a work somewhat different in character is produced
by the author.
To claim copyright in a compilation, the author must produce
the material with exercise of his skill and judgment which may
not be creativity in the sense that it is novel or non- obvious,
but at the same time it is not a product of merely labour and
capital. The derivative work produced by the author must have
some distinguishable features and flavour to raw text of the
judgments delivered by the court. The trivial variation or
inputs put in the judgment would not satisfy the test of
copyright of an author.”
Applying this law to the facts the Apex Court concluded that,
“Arrangement of the facts or data or the case law is already included in
the judgment of the court. Therefore, creativity of SCC would only be
addition of certain facts or material already published, case law
published in another law report and its own arrangement and
presentation of the judgment of the court in its own style to make it
more user- friendly. The selection and arrangement can be viewed as
typical and at best result of the labour, skill and investment of capital
lacking even minimal creativity. It does not as a whole display
sufficient originality so as to amount to an original work of the author.”
However, as regards paragraph numbering and other such details, the
court held that, “However, the inputs put in the original text by the
appellants in (i) segregating the existing paragraphs in the original text
by breaking them into separate paragraphs; (ii) adding internal
paragraph numbering within a judgment after providing uniform
paragraph numbering to the multiple judgments; and (iii) indicating in
the judgment the Judges who have dissented or concurred by
introducing the phrases like 'concurring', 'partly concurring', 'partly
dissenting', 'dissenting', 'supplementing', 'majority expressing no
opinion', etc., have to be viewed in a different light. The task of
paragraph numbering and internal referencing requires skill and
judgment in great measure. In these inputs put in by the appellants in
the judgments reported in SCC, the appellants have a copyright and
nobody is permitted to utilize the same.
Consequently, the Apex Court concluded that, “For the reasons stated
in the aforesaid discussion, the appeals are partly allowed. The High
Court has already granted interim relief to the plaintiff- appellants by
directing that though the respondent- defendants shall be entitled to
sell their CD-ROMS with the text of the judgments of the Supreme
Court along with their own head notes, editorial notes, if any, they
should not in any way copy the head notes of the plaintiff-appellants;
and that the defendant-respondents shall also not copy the footnotes
and editorial notes appearing in the journal of the plaintiff-appellants.
It is further directed by us that the defendant-respondents shall not
use the paragraphs made by the appellants in their copy-edited
version for internal references and their editor's judgment regarding
the opinions expressed by the Judges by using phrases like
'concurring', 'partly dissenting', etc. on the basis of reported judgments
in SCC. The judgment of the High Court is modified to the extent that
in addition to the interim relief already granted by the High Court, we
have granted the above-mentioned additional relief to the appellants.”

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569.

The Plaintiff in that case owned the copyright to the popular tune Oh
Pretty Woman. Defendants, the rap Group 2 Live Crew, without
securing the permission of the Plaintiff, prepared an alleged parody
version of the song, entitled Pretty Woman. Defendant’s version, unlike
the original, was a rap song, and had substantially different words from
the plaintiff’s “sweet, not to say syrupy” original, but plainly used
much of the Plaintiff’s original melody and some of the original words.
While deciding the case the US Supreme Court referred to the Fair use
doctrine enunciated in Section 107 of the US Copyright Act, and listed
the four factors which help in determining a ‘fair use’. These four
factors are as follows: (1) the purpose and character of the use,
including whether such use is of a commercial nature or is for nonprofit
educational purposes; (2) the nature of the copyrighted work; (3) the
amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and (4) the effect of the use upon the
potential market for or value of the copyrighted work. While explaining
the methodology of applying these factors to any given fact situation,
the Supreme Court stated that, “the four statutory factors may not be
treated in isolation, one from another. All are to be explored, and the
results weighed together, in light of the purposes of copyright.”

Thus, the court interpreted the Purpose and character of the use
parameter under the fair use doctrine, and stated that, “the central
purpose of this investigation is to see ... whether the new work merely
supersedes the objects of the original creation, or instead adds
something new, with a further purpose or different character, altering
the first with new expression, meaning, or message; it asks, in other
words, whether and to what extent the new work is transformative.” If
the work is found to be transformative, it would go on to satisfy the
doctrine of fair use. On this basis the court concluded that the work of
the Defendant’s was clearly transformative, as Live Crew added
substantially new words to the original tune and changed the format
from ballet to rap. Given the transformative nature of the Defendant’s
work, the same was not a copyright infringement of the Plaintiff’s work.
Also, addressing another factor in the application of the fair use
defence, the court stated that the commercial nature of the parody did
not make it unfair or an infringement of the Plaintiff’s work.

41. MGM Studios, Inc. v. Grokster, Ltd., 125 S. Ct. 2764

The facts which led to the case were similar to the other two, apart
from one crucial difference i.e. the technology in question. Grokster
and StreamCast, the defendant companies, in contrast to Napster and
Aimster, operated through a decentralized P2P network.
In this case the Ninth Circuit Court again reiterated the parameters of
contributory and vicarious infringement by stating that, “one infringes
a copyright contributorily by intentionally inducing or encouraging
direct infringement and infringes vicariously by profiting from direct
infringement while declining to exercise a right to stop or limit it.”
The Court recognized that since the software was capable of being
used for infringing and non-infringing uses, the Sony doctrine, would
apply even if a majority of the use were infringing, as under the
doctrine, the product had to merely be capable of non-infringing use.
(This is a clear change from the position in Aimster). The Sony
doctrine, as interpreted in Napster, required actual knowledge of
infringement, if the product was capable of both uses. Relying on that,
the Court held that since the defendants operated through a
decentralised network and that the defendants lacked any means to
stop the infringement once the programme was installed; the
knowledge requirement was not met and hence the defendants were
not liable. Moreover, there was no material contribution either, as
there was no provision of any sites or facilities for infringement.
This decision of the Ninth Circuit was appealed to the Supreme Court
and the court gave a unanimous verdict against the defendants. SOUTER,
J., delivering the opinion of the Court, held the defendants liable on the
basis of the “inducement theory” of contributory copyright liability.
Accordingly, as per the theory, one who distributes a device with the
object of promoting its use to infringe copyright, as shown by clear
expression or other affirmative steps taken to foster infringement, is
liable for the resulting acts of infringement by third parties.
The Court clarified that mere knowledge of infringing potential or of
actual infringing uses or ordinary acts incidental to product distribution
like offering technical support, updates, etc., would not be enough to
bring about liability. As regards liability under the inducement theory,
the court stated that, “Where evidence goes beyond characteristics of
product that may be used to infringe copyrights or knowledge that
such product may be put to infringing uses, and shows statements or
actions directed to promoting infringement, the staple-article rule set
forth in Sony Corp. of America v. Universal City Studios, Inc., limiting
the imputing of culpable intent as a matter of law from the
characteristics or uses of a distributed product, will not preclude
liability for inducing copyright infringement.” Thus, based on this
doctrine, the Court cited three reasons to hold the companies liable.
First, there was evidence to prove that the defendants positioned
themselves as the “next Napster” and thereby aimed to satisfy a
known source of demand for copyright infringement. Second, neither
company attempted to develop filtering tools or other mechanisms to
diminish the infringing activity of the software. Third, the business
model of the two companies was such that the companies, by selling
advertising space, would gain more revenue the more the software
was used, and high volume use of the software would tend to be
infringing use.
The Court clarified that the last two reasons added weight to the
inference of unlawful intent, but would not be enough if considered in
isolation. With respect to the Sony doctrine, the Court held that the
doctrine was still good law, however, it would not apply in cases where
the object of promoting infringement was manifest. Ginsburg, J., wrote
a concurring judgment with respect to the extent of the Sony doctrine.
She considered a survey commissioned by the plaintiffs according to
which the overwhelming use of the software was for infringing
copyright, and held that the Court of Appeals erred in not taking it into
account while deciding whether the software was capable of
substantial non-infringing uses. Breyer, J., wrote a concurring opinion,
agreeing with Souter, J., while disagreeing with Ginsburg, J. He
emphasised on the potential of non-infringing uses of a product, and
according to him, Sony didn’t mandate a high number of non-infringing
uses to be shown. Thus, we see that the Court was divided with
respect to the interpretation of Sony as Breyer, J., favoured the stand
taken in Napster and Grokster-1, while Ginsburg, J., favoured the stand
taken in Aimster
1. Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC

The Appellant was the proprietor of the medicinal preparation called
“Amritdhara”. As per the Appellant the medicinal preparation was
prepared and marketed by them in as early as 1901. The Respondent
claimed to be the manufacturer of “Lakshmandhara” (a similar
medicinal preparation) and applied for registration of the trade mark
for the same. The plaintiff opposed the registration of trade name
“Lakshmandhara” on the ground that “Lakshmandhara” was used to
denote the same medicine as “Amritdhara” and the word ‘dhara’ was
first used in conjunction with “Amritdhara” and hence, in view of the
similarity in names, and the likelihood of confusion to the public, their
plea of refusal of registration should be upheld. They contended that
the similarity goes on to deceive the public, as the ultimate purchaser
would be confused between the two goods due to the similarity.
Therefore, registering of the trade name “Lakshmandhara” would
amount to sanctioning passing off.
The respondent denied that such confusion could take place. He
argued that the composite “Lakshmandhara” taken as a whole cannot
cause any possible confusion with “Amritdhara”. The respondent also
claimed that he had been marketing the said drug under the name
“Lakshmandhara” since 1923 and the Appellant had not raised any
claim of passing off or deception earlier.
In the case it was held that the question whether a trademark is likely
to deceive or cause confusion by its resemblance to another already
registered is a matter of first impression and one for decision in each
case and has to be decided by taking an over all view of all the
circumstances. Second, the standard of comparison to be adopted in
judging the resemblance is from the point of view of an unwary
purchaser of average intelligence and imperfect recollection. Third,
while deciding whether such confusion or deception exists one should
consider the two names as a whole and not merely the component
words thereof separately, i.e., one should consider overall structural
and phonetic similarity.

2. Shield Mark v. Joot Kist, 2004 IPLR 141.

Shield mark havng 14 sound marks or products and services appealed
against the decision of the Trial Court reusing to grant relie on
Trademark infringement. The Appellate court referred the matter to
the ECJ for its opinion on the question of distinctive nature adn
graphical representations of sound marks.
The ECJ held that: A Trademark may consist of a sign which is not in
itself capable of being perceived visually, provided that it can be
represented graphically, particularly by means of images, lines or
characteristics, and that its representation is clear, precise, self-
contained, easily accessible, intelligible, durable and objective.
In the case of a sound sign, those requirements are not satisfied when
the sign is represented graphically by means of a description using the
written language, such as an indication that the sign consists of notes
going to make up a musical work, or an indication that it is the cry of
an animal, or by means of a simple onomatopoeia, without more, or by
means of a sequence of musical notes, without more. On the other
hand, those requirements are satisfied where the sign is represented
by a stave divided into measures and showing, in particular, clef
musical notes and rests whose form indicates the relative value and ,
where necessary, accidents.

3. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159.

In this case in the United States Supreme Court held that a color could
meet the legal requirements for trademark registration under the
Lanham Act, provided that it has acquired secondary meaning in the
Plaintiff Qualitex Co. had used a green-gold color for the pads which it
sold to dry cleaning firms to use in their dry cleaning presses. The
Defendant Jacobson Products Co. was a rival of Qualitex. In 1989,
Jacobson began selling their own pads to dry cleaners which were a
similar color to those of Qualitex. In response, Qualitex filed a lawsuit
against Jacobson in the United States District Court for the Central
District of California for unfair competition. In 1991, Qualitex registered
the green-gold color of its pads with the United States Patent and
Trademark Office as a trademark, and subsequently added a
trademark infringement count to its lawsuit. The District Court found
for Qualitex, but the United States Court of Appeals for the Ninth
Circuit set aside the judgment, on the grounds that color alone could
not be registered as a trademark.
Justice Breyer, writing for a unanimous court, overturned the Ninth
Circuit’s decision, holding that the Lanham Act was very broad in its
definition of what a trademark could be. The definition section of the
Lanham Act, 15 U.S.C. § 1127, defines trademarks as including “any
word, name, symbol, or device, or any combination thereof”. Breyer
reasoned that colors could constitute descriptive trademarks, because
while colors do not automatically evoke a connection to any product by
themselves, they could take on secondary meaning over time, in the
course of use in the marketplace. In this way, a color could serve the
chief purpose of trademarks, that of identifying the source of a
particular product.
Breyer also determined that that the functionality doctrine was no bar
to the registration of the plaintiff’s color as a trademark. He
determined that a product feature is only functional “if it is essential to
the purpose of the article or if it affects the cost or quality of the
article”. In relation to such functionality, he held that refusal on this
ground is acceptable if exclusive use of the feature would put the
competitors at a significant non-reputation related disadvantage. In
this case, the colour acted purely as a symbol, and served no other
purpose. Jacobson argued that there are only a limited number of
colors that could be used for the products at issue here, and that many
colors are very similar looking, thus a trademark over colour would
lead to shade confusion and colour depletion from the public domain.
However, Breyer dismissed this concern, saying that if the defendant’s
concerns were proven to be valid, the functionality doctrine would then
come into play. Breyer further held that a color could be trademarked
separately from any trade dress protection. Thus, the green-gold
colour is a symbol, has acquired secondary meaning, serves no other
functions and is therefore a valid trad
4. Satyam Infoway v. Sify Net Solutions, AIR 2004 SC 3540.
The principal question raised in this appeal is whether internet domain
names can be subject of trademark protection and whether an action
of passing off could be maintained in the case of a domain name. The
Appellant had registered several domain names as www.sifynet,, with internationally
recognized registrars, viz, Internet corporation for assigned names and
numbers (ICANN) and world intellectual property organization (WIPO)
in June 1999. The Appellant claimed the invention of word ‘Sify’ by
using elements of its corporate name, Satyam Infoway. On the other
hand, the Respondent claimed registration of its two domain names and from 5.6.2001. On getting to
know that the Respondents were using ‘sify’ in their domain name the
Appellants issued a cease and desist notice to the Respondents asking
them to restrain from either carrying on business in names of siffynet
solutions (P) ltd. or siffynet corporation and to transfer domain names
to appellant. The Respondent’s refused to do so and consequently a
suit was filed by appellant on ground of passing off its business and
services by using appellant’s name and domain name. The Trial Court
granted a temporary injunction in favour of the Appellant on ground
that appellant was prior user of trade name ‘Sify’ and that confusion
would be caused in mind of general public by deceptive similarity
between two domain names. The Respondents appealed to the High
Court which allowed the appeal on the ground that the business of the
Respondent was different from that of the Appellant, and there being
no similarity between two businesses, there was no question of
customers being misled.
An appeal to Supreme Court followed. The Apex Court stated that
domain names reflected the business reputation and business interests
of the proprietors of the domain name. Thus, the court reasoned that
the use of same or similar domain names may lead to diversion of
users which could result from such users mistakenly accessing one
domain name instead of another. Thus, a domain name may have all
characteristic of a trade mark, could found an action for passing off. In
terms of satisfying the criteria of passing off, the court held that there
was no dispute as to appellant’s claim of being leading information
technology services company and one of largest internet services
providers in country. Further, the evidence on record showed the
existence of goodwill and reputation claimed by Appellant in
connection with trade name “Sify”. Apart from the existence of
goodwill, in terms of the names themselves the court found that apart
from there being close visual similarity there was also phonetic
similarity between “Sify” and “Siffy”. (Refer to the decision of the
Hoffman case, where the Apex Court in 1970 had used the visual and
phonetic tests)
Thus, in the absence of any evidence to prove that respondent
company unaware or ignorant of use of trade name “Sify” by Appellant
or the fact that the Appellant prior user of trade name “Sify” and in
light of the evidence which showed that the public associated trade
name “Sify” with Appellant, the action of passing off was maintainable.
Thus, the Appellant was entitled to relief claimed and the impugned
judgment of High Court was liable to be set aside.
Also, given the fact that the internet allows for access without any
geographical limitation, a domain name is potentially accessible
irrespective of the geographical location of the consumers. The court
opined that the outcome of this potential for universal connectivity is
not only that a domain name requires world wide exclusivity but also
that national laws (relating to Trademark) might be inadequate to
effectively protect a domain name.

1. GRAHAM V. JOHN DEERE, 383 U.S. 1.

Graham was concerned with the construction of a plow that would not
break upon striking the soil obstructions such as rocks. In 1950, he
obtained the ‘811 patent, directed towards a plow with a spring clamp.
The device featured an upper plate secured to the lower flange of the
H-beam of a plow frame. A hinge plate was pivoted to the upper plate,
with one end of the plow shank resiliently and frictionally held between
the upper and hinge plates. An opening in the shank allowed a rod to
extend through it. A coil spring was around the rod and seated on the
upper plate. When the plow hit an obstruction, the shank moved
downward against the tension of the coil spring and pivoted the hinge
plate. This pivoting action allowed the plow to pass over obstructions
and increased the resiliency of the shank. In 1950, Graham modified
the ‘811 structure and filed for a patent. That patent, granted in 1953,
was the one litigated upon in the present suit. The invention differed
from the earlier invention in two ways:
(1) the ‘798 invention featured a stirrup and bolted connection of the
shank to the hinge plate, and (2) the ‘798 invention placed the shank
below the hinge plate. These changes permitted the plow shanks to be
pushed upward when they struck obstructions in soil and to spring
back into normal position when obstruction was passed over.
Subsequently, in an infringement suit, the Defendants challenged the
validity of the ‘798 Graham patent on the ground of obviousness.
Thus, in this case the US Supreme Court dealt with the parameter of
obviousness and reiterated the parameters laid down in the doorknob
case. Clark J. delivering the opinion of the court stated that,
“innovation, advancement, and things which add to the sum of useful
knowledge are inherent requisites in patent system which by
constitutional command must promote progress of useful arts; such is
the standard expressed in the Constitution and it may not be ignored.”
In light of this background the court enunciated the Graham test,
wherein to determine obviousness one had to follow the four step test.
As per this four step test, first, the court was to examine the scope and
content of prior art. Second, differences between prior art and claims
at issue were to be ascertained. Third, the level of ordinary skill in
pertinent art is to be resolved and lastly, against this background
obviousness or non-obviousness of subject matter is determined. Along
with the four step test the Apex Court also laid out a set of exemplary
secondary considerations that could be used to negate a prima facie
case of obviousness, some of these secondary considerations being
commercial success, long felt but unsolved needs, failure of others,
Applying these factors to the invention at hand the court concluded
that the patent is invalid under s.103 and, therefore, and affirmed the
judgment of the Eighth Circuit
2. KSR V. TELEFLEX, 127 S.CT. 1727.
The KSR International case provided the Supreme Court with its first
opportunity to review the TSM test created and promulgated by the
Federal Circuit and the CCPA.
Teleflex, Inc. (“Teleflex”) sued KSR International Co. (“KSR”) in the U.S.
District Court for the Eastern District of Michigan for infringement of a
patent over which Teleflex held an exclusive license. The patent
(“565”) disclosed a position-adjustable vehicle pedal assembly that
Teleflex accused KSR of making. KSR then filed a Motion for Summary
Judgment on the invalidity of the '565 patent. The District Court
disposed of the case by granting KSR's Motion for Summary Judgment
on the invalidity of the '565 patent on the ground that the '565 patent
was obvious based on these findings under the TSM test. Teleflex
appealed the District Court's decision to the Federal Circuit
complaining that the district court used an “incorrect teaching-
suggestion-motivation test” in its decision. The Federal Circuit
reviewed the facts of the case de novo, reapplying the TSM test. In its
application, the court agreed with Teleflex that the district court “did
not apply the correct teaching-suggestion-motivation test.”
It is pertinent to note that the District Court held that the motivation to
combine was deemed necessary under the test for combining the
“pedal assembly in which the pivot does not move with pedal
adjustment” with the “modular pedal position sensors” and the same
was evident from the knowledge that a person with ordinary skill in the
art would have of the applicable prior art. Moreover, the court also
found “express teachings with respect to the desirability” of combining
a pedal assembly with a sensor in prior art. Hence, revoking the
patent granted on the ground of obviousness.
The Federal Circuit did not agree with the District Court's application of
the test because, according to the Federal Circuit, the TSM test
requires the court to “make specific findings as to whether
there was a suggestion or motivation” to combine the prior art
and there is no space for common knowledge. The court found
that the two pieces of prior art the District Court combined were not
addressing the same problem. Therefore, according to the Federal
Court, the District Court could not have used the nature of the problem
to be solved as the motivation to combine. The Federal Circuit also
took issue with the express teachings the District Court found in
another piece of prior art because that piece of prior art did not relate
to adjustable pedal assemblies but to wire chafing in pedal assemblies.
Hence, the court concluded that there was nothing that would result in
a PHOSITA cross referencing form one claim to another. Thus, the
Federal Circuit vacated the grant of summary judgment in favor of KSR
and remanded to the district court for a new determination under the
teaching-suggestion-motivation test on January 6, 2005.
KSR then petitioned the Supreme Court for a writ of certiorari on April
6, 2005. The Supreme Court granted certiorari to hear KSR
International Co. v. Teleflex, Inc. on June 26, 2006. Before the
Supreme Court, after hearing the arguments, Kennedy J.,
delivering the decision on behalf of the Apex Court agreed with
the decision of the District Court and held that the patent was
invalid as it was obvious. More importantly, the Apex Court
critiqued the rigid application of the TSM test by the Federal Circuit
and stated that, “in determining whether subject matter of patent
claim is obvious, neither the particular motivation nor the avowed
purpose of patentee controls; what matters is the objective reach of
the claim.” It also stated that while the TSM test can only be used as
useful indicia to help in determining such objective reach, the Graham
test remains the primary test of obviousness of a claimed invention.
On reviewing the TSM test, the Supreme Court analysed the manner in
which the Federal Court applied the TSM test and decided the KSR
International decision as given by the Federal Court was a textbook
example of rigid application of the TSM test and the problems that the
same can create.
The Apex Court severally critiqued the decision of the Federal Court,
and stated that Graham’s case had laid down an ‘expansive’ and
‘flexible’ approach to the obviousness question, and the rigid
application of the TSM test is inconsistent with the same. Addressing
the Federal Circuit’s assertion that on correct application of the TSM
test, prior art references from other areas (those other than the area of
claimed invention) cannot be adopted in order to prove obviousness of
a claimed invention in a given field, as no teaching, suggestion or
motivation teaches, motivates or suggests combination of such
references from varying fields when an individual is addressing a
specific problem in a specific field, the Apex Court stated that such
rigid application of the TSM test is wrong because when a work is
available in one field, design incentives and other market forces can
prompt variations of it, either in the same field or in another and a
PHOSITA has sufficient creativity to recognize such variations and
utility of the same.
Moreover, the Apex Court also held that with the creative background
of the PHOSITA and allowance of mosaicing prior art references and by
drawing inferences from the same, one need not seek out precise
teachings directed to the challenged claim’s specific subject matter in
order to prove obviousness. Further, clearly rejecting the Federal
Circuit’s approach, the Apex Court also cautioned against placing
overemphasized importance on published articles and the explicit
content of issued patents.
However, it is pertinent to note that though the Apex Court critiqued
the rigid application of the TSM test by the Federal court, in principle it
accepted the TSM test within the jurisprudence of the obviousness
parameter. The court stated that the TSM test captures a helpful
insight, especially with regard to combination patents. This helpful
insight made by application of the test was to an extent evident from
Adams case, where the fact that prior art taught away from the
claimed invention clearly proved that the invention was non obvious.
Also, another parameter of the TSM test, i.e., the need or problem
known in any field being a motivation to combine prior art references
in the manner claimed is helpful, as it helps prove obviousness in the
face of a finite number of known solutions to the given problem.
Having accepted the test, the court attempted to give guidelines
regarding its application such that it would be in consonance with the
test laid down in Graham’s case. The Court stated that the TSM test
was to be restricted to be treated as a helpful insight in application of
the Graham’s test and cannot be made the primary test to decide on
the obviousness of a claimed invention. This statement was based on
the reasoning that, “the diversity of inventive pursuits and of modern
technology counsels against limiting the analysis only to the TSM test.
In many fields there may be little discussion of obvious techniques or
combinations, and it often may be the case that market demand,
rather than scientific literature, will drive design trends. Sole
application of the TSM test, in a rigid manner, would result in grant of
patent protection to such advances which are without real innovation
resulting in retardation of progress and in case of patents combining
previously known elements, deprivation of value or utility of prior
inventions.” Thus, the Court's decision confirmed that the TSM test
remains good law, but the ruling clarified that “an expansive and
flexible” type of approach is to be used when applying the test.


U.S. 722
Kennedy J. begins the opinion by stating that, “This case requires us to
address once again the relation between two patent law concepts, the
doctrine of equivalents and the rule of prosecution history estoppel.
The Court considered the same concepts in Warner-Jenkinson Co. v.
Hilton Davis Chemical Co., 520 U.S. 17, 117 S.Ct. 1040, 137
L.Ed.2d 146 (1997), and reaffirmed that a patent protects its holder
against efforts of copyists to evade liability for infringement by making
only insubstantial changes to a patented invention. At the same time,
we appreciated that by extending protection beyond the literal terms
in a patent the doctrine of equivalents can create substantial
uncertainty about where the patent monopoly ends. If the range of
equivalents is unclear, competitors may be unable to determine what
is a permitted alternative to a patented invention and what is an
infringing equivalent.
To reduce the uncertainty, Warner-Jenkinson acknowledged that
competitors may rely on the prosecution history, the public record of
the patent proceedings. In some cases the Patent and Trademark
Office (PTO) may have rejected an earlier version of the patent
application on the ground that a claim does not meet a statutory
requirement for patentability. 35 U.S.C. § 132 (1994 ed., Supp. V).
When the patentee responds to the rejection by narrowing his claims,
this prosecution history estops him from later arguing that the subject
matter covered by the original, broader claim was nothing more than
an equivalent. Competitors may rely on the estoppel to ensure that
their own devices will not be found to infringe by equivalence.”
In the present case: the Federal Circuit held that by narrowing a
claim to obtain a patent, the patentee surrenders all equivalents to the
amended claim element. The petitioner argued that such an
interpretation was a deviation from the earlier cases, where PHE
created a flexible bar, which applied only when amendments were
made to avoid prior art or earlier inventions. Thus, the petitioner
challenged the dicta of the Federal Circuit on the ground that by
replacing the flexible bar with a complete bar the Court of Appeals cast
doubt on many existing patents that were amended during the
application process when the law, as it then stood, did not apply so
rigorous a standard.
The matter came before the Supreme Court which considered two
important questions in the decision:
• What kinds of claim amendment will cause prosecution history
• When there is estoppel, what range of equivalents will be available?
As regards the relationship between the two doctrines the court stated
that, “Prosecution history estoppel ensures that the doctrine of
equivalents remains tied to its underlying purpose. Where the original
application once embraced the purported equivalent but the patentee
narrowed his claims to obtain the patent or to protect its validity, the
patentee cannot assert that he lacked the words to describe the
subject matter in question.”
Going on to address the questions, the court ruled that any claim
narrowing amendments made to comply with the patent statute, not
just amendments made to prior art, will give rise to prosecution history
estoppel. This means that amendments to satisfy § 112 of 35 U.S.C.
(rules relating to enablement, best mode, adequate description) also
could provoke prosecution history estoppel. The court stated that,
“Estoppel arises when an amendment is made to secure the patent
and the amendment narrows the patent's scope. If a § 112
amendment is truly cosmetic, then it would not narrow the patent's
scope or raise an estoppel. On the other hand, if a § 112 amendment
is necessary and narrows the patent's scope-even if only for the
purpose of better description-estoppel may apply. A patentee who
narrows a claim as a condition for obtaining a patent disavows his
claim to the broader subject matter, whether the amendment was
made to avoid the prior art or to comply with § 112.”
However, the court rejected the "complete bar" rule that had been
adopted by a majority of the Federal Circuit, and instead supported the
"flexible bar" by holding that the scope of an estoppel "requires an
examination of the subject matter surrendered by the narrowing
The Supreme Court also made it clear that since a patentee's decision
to narrow his claims through amendment may be presumed to issue a
general disclaimer of the territory between the original claim and the
amended claim. The patentee then has the burden of showing that the
amendment that gave rise to the estoppel "does not surrender the
particular equivalent in question.
In order to rebut the presumption that the estoppel bars all
equivalents, the court reasoned that "the patentee must show that at
the time of the amendment one skilled in the art could not reasonably
be expected to have drafted a claim that would have literally
encompassed the alleged equivalent".
The court identified three situations where an estoppel might not
eliminate all equivalents: the patentee can avoid the bar by providing
that, at the time of the amendment was made, the alleged equivalent
was not foreseeable, or that claiming or describing the equivalent
would not have been possible or reasonable.
In addition, the court stressed the notice function of claims, holding
that claims are supposed to give notice to others of what activities
they can permissibly engage in. It also explained that it would be
unfair to change routinely the boundaries of those claims through the
liberal application of the doctrine of equivalents.


In this case the Plaintiff-appellant Roche Products, Inc. (Roche), a large
research-oriented pharmaceutical company, wanted the United States
district court to enjoin Bolar Pharmaceutical Co., Inc. (Bolar), a
manufacturer of generic drugs, from taking, during the life of a patent,
the statutory and regulatory steps necessary to market, after the
patent expired, a drug equivalent to a patented brand name drug.
Roche argued that the use of a patented drug for federally mandated
premarketing tests is a use in violation of the patent laws.
Basically Roche held patent rights over flurazepam hydrochloride
(flurazepam hcl), the active ingredient in Roche's successful brand
name prescription sleeping pill “Dalmane.” The patent over the same
was to expire on January 17, 1984. In early 1983, Bolar became
interested in marketing, after the '053 patent expired, a generic drug
equivalent to Dalmane. Because a generic drug's commercial success
is related to how quickly it is brought on the market after a patent
expires, and because approval for an equivalent of an established drug
can take more than 2 years, Bolar, not waiting for the '053 patent to
expire, immediately began its effort to obtain federal approval to
market its generic version of Dalmane. In mid-1983, Bolar obtained
from a foreign manufacturer 5 kilograms of flurazepam hcl to form into
“dosage form capsules, to obtain stability data, dissolution rates,
bioequivalency studies, and blood serum studies” necessary for a New
Drug Application to the United States Food and Drug Administration
(FDA). As stated above, Roche argued that the use of a patented drug
for federally mandated premarketing tests is a use in violation of the
patent laws.
The District Court held that, “Bolar's use of the patented compound for
federally mandated testing was not infringement of the patent in suit
because Bolar's use was de minimis and experimental.”
On appeal before the CAFC, Bolar argued that its intended use of
flurazepam hcl is excepted from the use prohibition. It claims two
grounds for exception: the first ground is based on a liberal
interpretation of the traditional experimental use exception; the
second ground is that public policy favors generic drugs and thus
mandates the creation of a new exception in order to allow FDA
required drug testing.
Tracing the history of the experimental use doctrine, the Court of
Appeals stated that, “The aim to impose liability for infringement is to
prevent promotion of interest by the wrongful employment of the
invention which is hostile to the interest of the patentee. The interest
of the patentee is represented by the emoluments which he does or
might receive from the practice of the invention by himself or others.
These, though not always taking the shape of money, are of a
pecuniary character, and their value is capable of estimation like other
property. Hence, acts of infringement must attack the right of the
patentee to these emoluments, and either turn them aside into other
channels or prevent them from accruing in favor of any one. An
unauthorized sale of the invention is always such an act. But the
manufacture or the use of the invention may be intended only for other
purposes, and produce no pecuniary result.
Thus, where an invention is made or used as an experiment,
whether for the gratification of scientific tastes, or for
curiosity, or for amusement, the interests of the patentee are
not antagonized, the sole effect being of an intellectual
character in the promotion of the employer's knowledge or the
relaxation afforded to his mind. But if the products of the
experiment are sold, or used for the convenience of the
experimentor, or if the experiments are conducted with a view
to the adaptation of the invention to the experimentor's
business, the acts of making or of use are violations of the
rights of the inventor and infringements of his patent.”
Thus, applying this reasoning the CAFC refused to interpret
experimental use in a broad manner and held that experiments [which]
are in keeping with the legitimate business of the [alleged infringer]
are infringements for which “[e]xperimental use is not a defense. The
CAFC also held that “we cannot construe the experimental use rule so
broadly as to allow a violation of the patent laws in the guise of
‘scientific inquiry,’ when that inquiry has definite, cognizable, and not
insubstantial commercial purposes.” Thus, the court concluded that,
“Bolar may intend to perform “experiments,” but unlicensed
experiments conducted with a view to the adaption of the patented
invention to the experimentor's business is a violation of the rights of
the patentee to exclude others from using his patented invention. It is
obvious here that it is a misnomer to call the intended use de minimis.
It is no trifle in its economic effect on the parties even if the quantity
used is small.”