Chapter I

Introduction
1.1. INTELLECTUAL PROPERTY

The intellectual property belongs to the class of incorporeal property as it has no corpus i.e.,
no physical form. Intellectual property refers to those products that are primarily creations of
the mind. Black’s Law Dictionary defines ‘intellectual property’ as a ‘category of intangible
rights protecting commercially valuable products of the human intellect.’ They may be
manifested as inventions, literary and artistic works, symbols, names, images and designs
used in commerce, protected in law as patents, copyrights, trademarks, industrial designs and
others. The Law of Intellectual Property pertains to the legal mysteries behind this universe
of ideas.

‘The term 'intellectual property' can be, and is, used to mean a number of different things.
The different senses in which the term is used are not always explained, and indeed are not
always recognized, by those using it. As a general rule, lawyers use the term 'intellectual
property' to mean three different, but related, things’.1 Accordingly, it refers to the subject
matter which consists of intangible stuff with special feature. It also refers ‘certain legal
entitlements that exists in relation to intangible stuff which is the subject matter. The
entitlements are more concerned with the ‘rights’ associated with the intangible subject
matter. The third approach to the intellectual property indicates to the particular laws that
give rise to intellectual property rights in respect of particular intangible laws. In precise, the
phrase ‘intellectual property’ refers to three important components – intangible subject
matter, the law under which the rights are created and protected and the entitlements of the
rights. It means in the broadest sense, all rights resulting from intellectual activity in the
industrial, scientific, literary, or artistic fields. Thus, the intellectual property belongs to class
of intangible property and rights and law associated with them.

1
Andrew F. Christie, ‘Intellectual Property and Intangible Assets: A Legal Perspective’ in Bosworth D.
and Webster E. (eds), The Management of Intellectual Property, 2006, Edward Elgar, Cheltenham, UK
and Northampton, USA.
1
1.1.1. INTELLECTUAL PROPERTY: MEANING AND NATURE

Intellectual property (IP) belongs to the class of intangible property. Property, according to
Salmond, a legal philosopher, includes all of a person’s legal rights, of whatever description.
‘Property’ is defined as ‘the rights and interest, which a man has in lands and chattels to the
exclusion of others’2. It is used to denote everything, which is the subject matter of
ownership. The Law Lexicon defines the concept of property as: “something that is, or may
be owned or possessed; an estate; intangible assets or intangible rights; and exclusive right to
possess, enjoy and dispose off; a quality or trait belonging to a person or thing.” The property
is either corporeal or incorporeal, otherwise referred to as tangible and intangible property,
respectively. Corporeal property refers to the rights of ownership in material things.
Corporeal/tangible property is divided into movable and immovable property.3 Movable
property relates to things like a watch, television or car that can be moved from one place to
another. Immovable property stands for land, buildings or other things rooted to the earth and
which are incapable of being moved.4 Incorporeal property refers to proprietary rights in rem
that relate not to material objects but to intangibles like ideas. Incorporeal property itself is of
two kinds - jura in re aliena and jura in re propria. Jura in re aliena stands for
encumbrances, whether over material or immaterial things while jura in re propria stands for
rights over immaterial things, for instance, intellectual property rights. A legal right is a
creation of law and stands for a ‘legally protected interest’. A right vested in one always has a
corresponding duty cast on another. The Supreme Court of India, in R.C. Cooper v. Union of
India5 described the property as -

‘Property means the highest right a man can have to anything, being that right which
one has to lands or tenements, goods or chattels which do not depend on another’s

2 P. Ramanatha Aiyar, The Law Lexicon (New Delhi: Wadhwa & Co., 1997) at 1539; Hereinafter, The Law
Lexicon
3 The distinction between movable and immovable property was explained in an old case, Sukry Kurdepa
v. Goondakull (1872) 6 Mad. HC 71, as follows: movability may be defined to be the capacity in a thing
of suffering alteration of the relation of place immovability in capacity for such alteration. If however, a
thing cannot change its place without injury to the quality by virtue of which it is, what it is, it is
immovable. Other things such as trees attached to the ground are, so long as they are so attached,
immovable; when the severance has been affected they become movable.
4 Immovable property is defined as follows in the General Clauses Act: Immovable property shall include
land, benefits arising out of land, and things attached to the earth, or permanently fastened to anything
attached to the earth. The Transfer of Property Act, 1882 does not specifically define immovable
property but excludes standing timber, growing crops and grass from the purview of immovable
property.
5 AIR 1970 SC 564
2
 courtesy: it includes ownership, estates and interests in corporeal things and also
rights such as trademarks, copyrights, patents and even rights in personal capacity,
capable of transfer or transmission, such as debts and signifies a beneficial right to or
a thing considered as having money value, especially with reference to transfer or
succession, and of their capacity of being injured.’

Thus, the intellectual property rights belongs to class of incorporeal property having the
recognition and protection under separate set of law known as the intellectual property law.

1.1.2. Objectives of Intellectual Property Law

The WTO’s social purpose of intellectual property, is to provide protection for the results of
investment in the development of new technology, thus giving the incentive and means to
finance research and development activities.6 Countries have laws to protect intellectual
property for two main reasons. One is to give statutory expression to the moral and economic
rights of creators in their creations and the rights of the public having access to those
creations. The second is to promote, as a deliberate act of Government policy, creativity and
the dissemination and application of its results and to encourage fair-trading, which would
contribute to economic and social development. Generally the IP law aims at safeguarding
creators and other producers of intellectual goods and services by granting them certain time-
limited rights to control the use made of those productions. It applies not to the physical
object of the creation but to the intellectual creation as such. It is aimed at fine-tuning the
balance that has to be found between the legitimate interests of right holders and users.

The Preamble to the TRIPS agreement clearly spells out the economic objectives of
protection of IPRs as - ‘the member states, in adopting the treaty were to take into account the
need to promote effective and adequate protection of intellectual property rights, flowing
from their desire to reduce distortions and impediments to international trade, and to ensure
that measures and procedures to enforce intellectual property rights do not themselves
become barriers to legitimate trade.’

The economic objectives of IP protection may be looked at from the following angles:

6 http://www.wto.org/english/tratop_e/trips_e/intel1_e.htm
3
a) IPRs as financial assets in business- Traditional assets of company are property,
furniture, computers, clients and inventory. The recent inclusion is ‘Intellectual capital’.
Intellectual capital has been identified as a key asset of business from only about a decade or
so7 and comprises intangible assets that include market, infrastructure, human centered assets
and most importantly, intellectual property. The last two decades witnessed rapid
technological changes and it is acknowledged that capital is no longer in the Banks but in the
minds. In service organizations and some companies that are dependent on Information
technology, intangible assets greatly outweigh tangibles in their importance to the
organization. It is traditionally covered under the inadequate blanket of goodwill8 as an asset.
A lot of attention is being paid presently by corporations to develop systems to identify, value
and manage intellectual capital.9

b) IPRs as stimulants to the national economy- IPRs are territorial as they are created by
national laws therefore standards of protection of IPRs tend to differ from country to country.
The standard of IP protection in any given country is correlative to economic development
and its historical and cultural circumstances. For instance the least economically developed
have least standard of protection whereas countries moving up the development ladder, adopt
higher standards of protection because they have more resources devoted to the creation of
intellectual property and they represent more attractive markets for industrial countries and
thus face growing pressures for stronger protection from other countries.10 The significance
of intellectual property rights in economic activity differs across countries and depends on:
The amount of resources countries devote to creating intellectual assets and the amount of
protected knowledge and information used in production and consumption. The more benefits
of stronger intellectual property protection include better access to technology by developing

7 In 1994 Fortune magazine carried several articles about intellectual capital or brainpower based on
pioneering efforts operating in the United States and Scandinavia. The results demonstrated that the gap
between a company’s market value and the value of all its tangible assets has broadened significantly
over the past two decades. http://www.klcpas.com/news&articles/articles/intellectual_capital.htm
8
‘Goodwill’ is the benefit, which arises from the establishment of particular trades or occupations,
intrinsic value of the good repute and custom of an established trade or business; the goodwill of a
business means every affirmative advantage as contrasted with negative advantage that has been acquired
in carrying on the business, whether connected with the premises of the business or its name or style and
everything connected with or carrying with it the benefit of the business. It includes reputations,
connections of the firm or the owner, which induces customers to deal with a particular firm or concern.
It is treated as part of the assets of the firm. The Law Lexicon, Supra n.1 at 792.
9 Yogesh Malhotra, Knowledge Assets in the Global Economy: Assessment of National Intellectual
Capital 8(3) Journal of Global Information Management, 5-15 (2000) on www.brint.com/ym.html
10 Knowledge Gap Widens Between Developed and Developing Countries, (5) Intellectual Property Rights
(A Bulletin from Technology, Information Forecasting and Assessment Council – TIFAC) 1999
4
countries, strengthening of an entrepreneurial culture, greater incentives to inventors and
individual or corporate owners of intellectual property and increased foreign and domestic
investment in critically important Research and Development (R&D) efforts.11 Equally
important is the facilitation of international technology transfers and diffusion of new
technologies within a country, allowing inventors to share their research without fear of
piracy. Strong protection of IP provides incentives to domestic researchers to invest in new
innovations and technologies. It further encourages investment in solutions to problems
indigenous to emerging market countries. Domestic R&D investment is also encouraged and
enhanced by better protection. Strong protection for intellectual property helps patents,
trademarks, and copyrights achieve status as significant economic assets. Banks and investors
will assign value to these assets, and offer loans to startup as well as established ventures
based on them. This change in financial structure will result in increasing domestic
investment in scientific research, creative authorship, and entrepreneurial development and
commercialization of these assets. Many developing countries, notably china, often accused
of rampant piracy and counterfeiting of intellectual property, are now introducing strong
intellectual property protection on par with international standards and reaping in the
economic rewards in terms of strengthened local initiatives and increased inflow of foreign
capital and technologies.12

c) Intellectual Property has significant impact on international trade flows affecting the
market in several ways. For example if a firm wants to export its patented goods into a
foreign market and if the pirates or violators of IPR’s can diminish the profitability of the
firm’s activity in the market just because of a weak IPR’s regime then it may be hesitant to
export the patented goods. If a country’s IP protection regime is strong it increases imports as
foreign firms would face increasing net demand for their products reflecting the displacement
of pirates. Also on the other hand, a firm may reduce its sales in a foreign market as a
response to stronger IPR protection because of its greater market power in an imitation safe
environment. These opposing considerations of market expansion and market power
demonstrate at the theoretical level that the real interface between IPRs and bilateral trade are
at best ambiguous. The empirical studies suggest that on an average, higher levels of

11 Griffith B. Price Jr., Protecting Intellectual Property: How New Democracies Stand to Gain (3)
Economic Reform Today (1995). www.cipe.org/publications/fs/ert/e19.

12 www.china-laws-online.com/china-WTO/impact-WTO-Chinese-system,htm
5
protection of IPRs have a positive impact on international trade.13 The increasing share of
knowledge, intensive products in international trade and the inclusion of trade related IPRs on
the agenda of trade regulating bodies like the WTO have made IPRs an important issue in
trade. It is seen that international agreements like TRIPS that reflect the political and
economic considerations of the member states favor higher levels of IPR protection. The links
between international trade and IPR protection can be easily understood if one looks at the
background events that led to the adoption of the TRIPS agreement. At Uruguay in 1986, the
United States International Trade Commission complained that the US firms were losing
upwards of 50 billion dollars a year due to weak intellectual property protection regimes
abroad, especially in such sectors as computer software and microelectronics, entertainment,
chemicals, pharmaceuticals, and biotechnology.14 This was well received by the other
developed industrialized nations and the idea of IPRs as an important facilitating factor in
international trade took definite shape, culminating in the adoption of the TRIPS agreement.
Globalization is the process in which national and regional markets are more tightly
integrated through the reduction of state-imposed barriers to trade, investment and technology
flows.15 In the globalized economy, the creation of knowledge and its adaptation to products
in the form of designs and production techniques are increasingly essential for commercial
competitiveness and economic growth. It is against this backdrop that increasing levels of
protection of intellectual property gains significance. The move towards international
protection of IPRs is inevitable in the face of the growing phenomenon of economic
globalization.

The protection of IP is at three levels, the international, the regional and the national levels.
As a general rule, IPRs are country-specific i.e., granted in each country by its laws. To
overcome the difficulties inherent in having to seek separate IPR protection in the different
countries of the world, there are multilateral treaties that provide for harmonization of

13 For an empirical study on the actual effects of IPRs on international trade, see, Carsten Fink, Carlos A.
Primo Braga, How Stronger Protection of IPRs affects International Trade Flows (Washington DC: The
World Bank, 2000).
www.worldbank.org/html/dec/Publications/Workpapers/wps2000series/wps2051/wps 2051.pdf
14 A.O. Adede, The Political Economy of the TRIPS Agreement: Origins and History of Negotiations
(Washington DC: International Centre for Trade and Sustainable Development, 2001).
www.ictsd.org/dlogue/2001-07-30/Adede.pdf
15 Keith Maskus, The Role of IPRs in Encouraging Foreign Direct Investment and Technology Transfer
(Washington DC: The World Bank, 1997). www.worldbank.org/wbiep/trade/e_papers/maskus2.pdf
6
standards either at the regional level16 (within a given geographical area) or at the
international level.17 The international exploitation of intellectual property is central to trade,
foreign direct investment and licensing across borders. As technology blurs borders and
globalization unifies the world markets, the field of intellectual property, as also the field of
piracy becomes international in character thereby necessitating the need for an international
regime to administer and enforce IPRs. International protection of intellectual property can be
traced back to 1883 when the Paris Convention for the protection of Industrial Property,
designed to help people of one country obtain protection in other countries for their
intellectual creations in the form of industrial property rights, was born. The treaty i.e Berne
convention came into force in 1886 and has hence been witness to the birth of international
organizations like the World Intellectual Property Organization that administers some 23
international intellectual property treaties and the World Trade Organization that administers
the TRIPS agreement. A broad understanding of mandate of the international bodies may be
formed from the following stated functions of the WIPO: harmonize national intellectual
property legislation and procedures, provide services for international application of
copyrights and industrial property rights, exchange information on intellectual property,
provide legal and technical assistance to developing and underdeveloped countries, facilitate
the resolution of private intellectual property disputes and to marshal information technology
as a tool for storing, accessing and using valuable intellectual property information.18

1.1.3. INTELLECTUAL PROPERTY LAW REGIME

In good olden days, the knowledge is considered as the divine gift and property of the
society. The knowledge is considered as the goddess ‘Sarswathi’ and with her blessings only,
the people believed, that the knowledge is created. The person bestowed with the knowledge
is considered as the ‘Sarswathi Puthra’ and they used to get reverence from the society. The
concept of divine nature of the knowledge was prevailing in all most all the religions and
faiths across the globe. All the people living in the society used to share and use the
knowledge created by way of oral teachings and later with the change in the socio-economic
situations in the society, the concept of the knowledge creation and usage is also equally
transformed. Gradually it is considered as a commodity exchanged for money and the creator

16 The European Patent Convention or the Eurasian Patent Convention

17 The Patent Co-operation Treaty and the TRIPS agreement
18 Article 4, the WIPO Convention
7
as the owner. The process of sale and purchase of the knowledge created is started and thus
there is a paradigm shift in the approach to the intellectual property.

The commercial exploitation of the different kinds of intellectual property is made in

different ways.19 In case of patent, the patentee may himself exploit the patent or assign his
rights or license to industrialists for a lump sum payment or on a royalty basis. A registered
design can be similarly exploited by assigning or licensing the rights to others capable of
exploiting it on a royalty or lump sum basis. Copyright can also be exploited in a similar
manner, the scope of assignment or licensing being much wider having regard to the variety
of rights conferred on the copyright owner. Commercial exploitation of a registered trade
mark by licensing others to use it on a royalty basis is not permissible except by registration
of the licensee as a registered user under very stringent conditions prescribed by the statute.
Unfettered licensing of trade mark in the same manner as licensing of a patent, design or
copyright will destroy the property rights in the trade mark. This is a very vital difference
between a trade mark and other forms of intellectual property.20

‘Ownership of intellectual property is similar to ownership of other forms of property. For

example, the owner of a home has the right to exclude others from trespassing or converting
the house property. The owner of intellectual property also has the right to exclude others
from infringing or taking the property. The homeowner can lease, sell or transfer the home
through a will or deed. The intellectual property owner can license, sell or transfer the home
through a will or deed. The intellectual property owner can license, sell or will the patent
copyright or trademark. Like the homeowner, the owner of intellectual property is subject to
rules regarding government registration, recordation, abandonment and forfeiture’21.

The commercialization of intellectual property further prompted the owners to take utmost
care to protect the products from misuse or unauthorized use. As intellectual property has
entered the global markets and cannot remain territorial in nature any longer the IP rights of
owners are now protected at the global level as well as within regional and local frameworks
of law. Further by granting protection to intellectual property rights the law makers have

19
P Narayanan’s, “Intellectual Property Law” Second Edition- 1997, Page 3, Published by Eastern Law
House Private Ltd.
20
Ibid
21
Richard Stim, Intellectual Property: Patents, Trademarks and Copyrights’, Cengage Learning, First
Indian Edition 2012
8
defined the boundaries to the knowledge and its dissemination by fixing the legal framework.
Intellectual property is an area of law that is growing rapidly in this 21st century to
accommodate the ever increasing range of ideas that are conceived to make our lives easier
and more fulfilled. Globally it is realized that future prosperity of nations will depend more
upon their intellectual property than others, as the economy of this century will be knowledge
based.22

The commodification of the knowledge has created a new legal regime where the intellectual
property is sold and transferred. Commercialization of intellectual property demands
protection against the illegal and unauthorized usage of the same by non-owners or strangers.
The property law extends the rights to the owners and protection against the unauthorized use
and unjust enrichment. The owner of the property seeks exclusive rights upon his intellectual
property and the demand for exclusiveness transformed the rights into monopoly rights. The
monopoly rights are further getting modified to wrap the economic rights with it so as to help
the owners to commercialize and gain economically. In today's knowledge driven economy,
innovations and knowledge creations are the most valued assets. A new legal regime is in
operation with a bunch specifically drafted laws to protect the rights of individual owners of
the intellectual property. The current intellectual property regime is wide to include various
subsets of intellectual property created.

1.2. INTELLECTUAL PROPERTY: COMPONENTS

The convention establishing the World Intellectual Property Organization23 defines intellectual
property in a broad sense. It says intellectual property shall include the rights relating to
literary, artistic and scientific works, performances of performing artists, phonograms and
broadcasts; inventions in all fields of human endeavor; scientific discoveries; industrial designs;
trademarks, service marks, and commercial names and designations; protection against unfair
competition and all other rights resulting from intellectual activity in the industrial, scientific
literary or artistic fields. The Trade Related Intellectual Property Rights called TRIPS 1994,
22
In USA tangible assets formed 62% of the value of industrial companies in 1982 whereas in 1992 it got
reduced to 38%, Similarly the share of knowledge intensive industries increased from 21% of GNP in
1982 to 27% in 1992 in USA. See Michael K Kirk, Intellectual Property – A Development Perspective.
The Role of Intellectual Property System in Promoting Creativity, Technology Development and
Transfer, Trade and Investment paper presented at WIPO/Asia-Pacific Regional Forum on Policy
Imperatives and Role of Institutions in Implementing a public outreach strategy for Intellectual Property
organized by ministry of commerce et al WIPO/IP/DEC/02/6(d)ii,2(Sep4-6,2002)
23
Signed at Stockholm on July 14, 1967 See www.wipo.int
9
which is one of the significant agreements under World Trade Organization, classifies IPR into
seven important components namely:

i. Copyright and Related Works

 Rights of artists, painters, musicians, sculptors, photographers and authors for
copyright in their works;24
 Rights of computer programs whether in source or object code for a copyright
in their programs and compilation of data;25
 Rights of performers, producers of phonograms (sound recordings) and
broadcasting organizations for a copyright in their work;26
ii. Rights of traders in their Trademarks27

iii. Rights of manufacturers and producers for Geographical Indications in relation to

such products and produce28
iv. Rights of designers for their distinctive Industrial Designs29
v. Right of inventors to be granted Patents for their inventions30
vi. Rights of computer technologists for their Layout Designs of Integrated Circuits31

vii. Rights of businessmen for protection of their Undisclosed Information of

Technology and Management i.e., trade secrets/confidential information or simply
‘know-how’32.
The IPR legal regimes in all most all the countries of the world have settled to harmonize the
existing local laws with that of laws of other countries under the guidelines of the TRIPS
Agreement. Thus, the intellectual legal regimes are under consolidation phase and have
accepted the Patents, Trademarks, Copyrights, Geographical Indications, Designs, Layout
Designs of Integrated Circuits and Confidential information as their important components.

24 Part II, Section I, Art. 9 of the TRIPS agreement states that the member states shall comply with the
provisions of the Berne Convention; the provisions listed above are the general categories to which
copyright protection extends under the Berne Convention, Article 2(1)
25 Part II, Section I, Art. 10, TRIPS Agreement.
26 Part II, Section I, Art. 14, TRIPS Agreement.
27 Part II, Section II, Art. 15, TRIPS Agreement.
28 Part II, Section III, Art. 22, TRIPS Agreement.
29 Part II, Section IV, Art. 25, TRIPS Agreement.
30 Part II, Section V, Art. 27, TRIPS Agreement.
31 Part II, Section VI, Art. 35, TRIPS Agreement.
32 Part II, Section VII, Art. 39, TRIPS Agreement.
10
1.3. COPYRIGHTS

Copyright is an important component of intellectual property. There are certain

considerations and principles, which run through the whole of copyright law. The copyright
law is governed by a statute. In India copyright comes in existence as soon as a work is
created and no formality is required for acquiring copyright. The vesting of copyright in a
work is thus automatic. The procedure for registration is optional and not mandatory.
Registration is only intended to provide a prima facie evidence of the particulars entered in
the register.33 Copyright system performs a number of functions in the society. According to
Neil Weinstock,34 copyright system performs the following functions in a civil society. i)
Production function, ii) Structural function and iii) Development function.

Copyright is considered as an individual personal property in the modern world. It is a legal

right to exclude others, for a fixed time, from copying, selling, performing, displaying or
making derivative versions of a work of authorship. Unauthorized use of a work protected by
copyright is known as the infringement of copyrights. “Copyright can be most simply defined
by using its two root terms. It is the right to control copying”. In Pacific Film Laboratories v.
Commissioner of Tax35 Windeyer J defined copyright as: “It is not a right in an existing thing.
It is a negative right, as it has been called, a power to prevent the making of a physical thing
by copying.” The word copyright originated from the words “copier of words”. Copyright
according to Black’s Law Dictionary is the right to literary property as recognized and
sanctioned by positive law. The Oxford Dictionary defines copyright as an exclusive right
given by law for a certain term of years to an author, composer, etc., to print, publish and sell
copies of his/her original work. The copyright is granted to maps, charts, plans, tables and
compilations and are treated as part of literary works. Forms, coupons designed and having
originality are also protected as copyrighted material36. Copyright is also granted to
compilations of known knowledge having some specific original contribution. Copyright
laws provide for the protection of the literary works which include novels, short stories,
poems, dramatic works, musical works whether serious or light, songs, choruses, operas,

33
The Copyright Act 1957, Section 48.
34
Netanel Neil Weinstock, Copyright and Democratic Civil Society,106 The Yale Law Journal (1996)
p.283
35
(1970) 121 CLR 154,
36
Ladbrije (Football) Ltd v William Hill (Football) Ltd. 1964 (1) All.E.R 465 (HL)
11
artistic works whether two dimensional or three dimensional, maps and technical drawings,
photographic works, motion pictures, sound recordings, computer programmes, etc.

The essential elements for grant of copyrights for works are: originality, fixation of idea in a
tangible form and the work should have ‘expression’. Therefore, this provision may be broken
down into three basic requirements to achieve copyright protection: (a) the work must be
original, (b) the work must be an expression, rather than an idea and (c) the work must be fixed
in tangible form. Originality is required and involves something other than ingenious and novel
material37. The original work is the criteria for the protection under the copyright law. Feist
determined that there was a constitutional requirement of creativity38. Originality was defined
as comprising both creativity and the absence of copying39. The copyright vests in original
literary, dramatic, musical and artistic works. The idea of originality is to protect works that
have originated from the author himself and are not copied from another. Copyright protection
is given to original literary, dramatic, musical and artistic works and not to ideas and therefore
it is original skill and labor in execution of the work, and not originality of thought, which is
required. A Telephone Directory has the copyrights as the compiler of the telephone directory
has spent his time and labour in setting the things in a sequence of necessity where the
originality is observed. Originality in work relates to expression of thought40. The expression is
considered as original as long as it is not copied from some other work and as long as there is a
degree of intellectual effort, labour, and skill involved in the creation. There is no requirement
of passing a test of inventive step and need not be novel. Thus, the principle of ‘originality’ is
not stringent in its exclusiveness. It should be understand with reference to the expression.

Article 2 of the Berne Convention specifically states that ‘the expression in literary and
artistic work’ and ‘whatever mode or form of its expression’ is the requirement for the
providing protection under the copyright law. The TRIPS Agreement specifically states that
‘Copyright protection shall extend to expressions and not to ideas, procedures, method of
operation or mathematical concepts as such’41. There is a dichotomy of protection under the

37
Julia Reytblat, Is Originality In Copyright Law A "Question Of Law" Or A "Question Of Fact?": The
Fact Solution 17 Cardozo Arts & Ent. L.J. 181, 183 (1999),
38
499 U.S. 340 (1991).
39
Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663, 668 n.6 (7th Cir. 1986).
Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 350–51 (1908)
40
AIR 1960 AP 415
41
Article 9(2) of the TRIPS Agreement
12
copyright law. The protection is available to expression and not for the idea. Ideas are
abstract concepts. The expressions should be clear and original. The copyright law protects
any kind of original ‘works’.

The other important factor that is required for providing the copyright protection is the
‘fixation of expression in tangible form’. An author may have idea about a story and he will
not get copyright protection to that idea, but, when the author expresses the same into
readable form, may be book or paper format, gets the protection. The tangible form enables to
find out the ‘material’ that is created. ‘In the analog world of bricks and mortar, a work might
commonly be fixed by printing it on paper, or, embodying it in a vinyl record, or, recording it
on videotape. Note that any tangible medium will suffice, so long as the work, can be
perceived, reproduced or otherwise communicated, either directly or with the aid of a
machine or device. A book, for example, can be perceived directly, while a song on a vinyl
record can be perceived only with the aid of a record player. Although the internet may seem
less tangible than a book, digital works stored on hard drives and perceivable via the use of a
computer are considered fixed and are therefore eligible for copyright protection’42. Thus,
copyright protection will only be accorded to an original work of authorship that is fixed in "a
tangible medium of expression."43 A mere copyist does not obtain copyright in his copy.44 A
work like abridgement, compilation, translation etc. are, however, original even though the
author has drawn on knowledge common to him and others.45 or has used already existing
material. The word “original” is not prefixed with cinematograph films and sound recordings
as they are derivative works.

Copyright is a bundle of rights.46 It refers to bundles of rights under the copyright legislation.
i) The exclusive economic rights such as
a) The reproduction right
b) The adaptation right

42
Gerald R Ferrera, Margo E.K. Reder, Robert C Bird, Jonathan J Darrow, Jeffrey M Artesty, Jacqueline
Klosek, Stephen D Lichtenstein, ‘Cyber Law – Text and Cases’, 3rd Edition, Cengage Learning, New
Delhi
43
17 U.S.C.A. § 102(a) (1996)
44
Lord James in Walter v.Lane (1900) A.C.539 at 554; Barfield v.Nicholson (1824) 2 Sim and Stu;Leslie
v.Young J. (1894) A.C.335.
45
University of London Press v. University Tutorial Press (1916) 2 Ch. 601; Rupendra Kashyap v. Jiwan
Publishing House 1996 PTC 439 (Del)
46
Alka Chawla’ s Law of Copyright Comparitive Perspectives, First Edition 2013 , Published by
LexisNexis , page 7.
13
 c) The distribution right
d) The public performance right
e) The broadcasting right
f) The cable casting right
g) The rental right
ii) Moral rights or special rights of the author: a) the paternity right or the right to claim
authorship of the work; and b) integrity right or the right to object to any distortion,
mutilation or other modification of the work. Now a new section is inserted section 38B
whereby moral rights have been ascribed to the performers also.47 The two rights granted are
the right of identification as a performer of his performance and integrity right. In a recent
case Shivaji Rao Gaikwad v Varsha Productions48 the plaintiff seeks ,injunction against the
use of his name/image/caricature/style of delivering dialogues in the forthcoming film “Main
Hoon Rajnikanth”the plaintiff claims that his irrefutable acting ability ,charisma, distinct
personal style, mannerisms and stylized delivery of diologue in films have contributed to his
mass popularity and appeal and attained status of a well known personality and any
use/misuse of above amounts to infringement of his personality right and copyright thereof
and such use would cause considerable confusion amongst the trade and public. Plaintiff
further claims that defendant has exploited the superhero image portrayed by the plaintiff in
various movies, for the benefit of the defendant, by embodying the same in the defendant’s
forthcoming feature film, which has scenes of immoral nature without his consent. Defendant
claims the film is not a biopic of the plaintiff and has not put the plaintiff in bad light. He
further claims the only place where the plaintiff has anything to do with the movie is in the
title “Main Hoon Rajnikanth” and denies any such exploitation, nor does that film defame or
invade the piracy and goodwill of the plaintiff. The Court held that on seeing the title of the
impugned movie, it could be easily inferred that the public perspective about the
movie,appears to be only with reference to the plaintiff herein alone and not connected to any
other person, which is evident from the website pages hosted by various persons making
comments on the plaintiff with regard to the title of the impugned movie. Hence injunction
granted.

47
Section 38B of the Copyright Amendment Act 2012
48
2015(62) PTC351(Mad)
14
iii) Neighbouring or related rights: Special rights are given to broadcasting organizations
and performers under sections 37 and 38 of the Copyright Act 1957.
Copyright imposes a negative duty on others, that prohibits others from exploiting the work
of the author for their own benefit without the consent or license of the author. Copyrights are
part of the natural law. The natural law and equity bestow the owner to possess and protect
his own creation from commercialization by others. The knowledge created is in intangible
form and it becomes incorporeal property of the creator. As an owner of the created work, he
has a right to print and reprint, distribute, disseminate and transfer his work. Once printed, the
intangible nature of the work takes a tangible shape and is considered as property on par with
that of real property and the owner is empowered to enjoy the property like any other real
property. The owner is entitled to exclusive rights. Though the term denotes ‘exclusive
rights’ denotes the monopoly of the rights, but in reality they are not. These rights are subject
to the provisions of the Act49. The provisions relating to ownership of copyrights explicate
the situations where the first ownership of the copyrights is recognized.50 The monopolistic
nature is diluted by assignment and license. By way of assignment, the original owner
transfers all the rights or permit others to use the copyrighted material exclusively or non-
exclusively, whereas under the process of licensing, the licensee gets the rights for certain
specific purpose and period and are known as non-exclusive rights. As such the monopoly of
the owner/author is limited and the assignee or the licensee has a right to use the works
assigned or licensed. The copyright is granted for a certain period and once that tenure51
expires, it will not be the property of the individual who created and devolves into the public
domain unlike the real property. This process of automatic transfer of rights from private to
the public domain checks the monopoly and converts them to limited monopoly. The statute
also permits the transfer of rights of the copyright owner, under the provisions of compulsory
licensing52 and in the public interest even if he refuses to grant license voluntary. Apart from
these, the exceptions to the infringement of copyrights provide a check to the monopolistic
nature of copyrighted works.

Copyright means the sole right to produce or reproduce the work or any substantial part
thereof in any material form what–so-ever. Copyright is not a single right but it is a bundle of

49
Section 14 of the Copyright Act 1957
50
Section 17 of the Copyright Act 1957
51
Section 22-29 of the Copyright Act 1957
52
Section 31 and 31A of the Copyright Act 1957
15
rights. The bundle of rights include the acts of reproducing the works, making and issue of
copies, performance, making of cinematograph films, translation and adoption of the works,
and in the case of software programs, using the copies of programs for the purposes for which
they are purchased. Thus the subject matter of copyright is wide and any individual act of
copying in respect of work or any substantial part thereof, if not authorized or recognized
under the provisions of the Act, amounts to violation of the copyrights. Thus with the
expanded horizons and varied subject matter, the copyright law inter-wines with the
industries such as print and electronic media, broadcasting, music recording, film industries
and educational and research institution, etc. The copyright in a work shall be deemed to be
infringed by any person, who without the consent of the owner of the copyright, does
anything to it for which sole right is conferred on the owner of copyright. The remedy
available to the holder of copyright against the infringer is civil, criminal as well as
administrative remedy. But in implementation of these due to widened portfolio the scope of
enforcement of copyright has become a challenging job.

1.4. STATEMENT OF PROBLEM AND RATIONALE OF STUDY AND

MOTIVATION

Copyrights law recognizes and protects property rights in original expressive works by
granting exclusive rights to reproduce, adapt, distribute, publicly perform and display
copyrighted works. The objective of the copyright law is to reward and recognize creators
and to provide incentives for creation and investments in copyright material. It helps them to
create new works and thus knowledge base is enriched. With this the knowledge created is
commodified and treated as personal property as against the age old concept – knowledge is
divine property and is of everyone in the society. Thus monopoly rights are bestowed on the
creator/author of the works. The arguments of ‘sweat of brow’ have gained momentum and
monopolies of the rights are being created. The advent of technology has further strengthened
the arguments for bringing the knowledge into personalized domains. Digital revolution
demanded changes in the copyright law as piracy of copyrighted works has been increasing
day by day. A conflict between owners and users aggravated because of digitalization for
example the Napster53 case where the court granted injunction to stop the piracy of music as
the network service provider had facilitated the downloading of copyrighted works freely to
53
Dr. T.Vidya Kumari’s Copyright Protection current Indian & International Perspectives, Ed 2004,P-240-
246
16
millions of users without payment of any royalty. Controlling piracy of works with new
technologies became necessary.

There is an increased argument against the monopolistic rights envisaged by the copyrights.
The social scientists started arguing for facilitating the new works for the benefits of the
society as the author is part of the society. Agreements and disagreements on the accessibility
of knowledge against the monopolistic nature of the copyright law surfaced. Academicians,
intelligentsia and industrialists, by way of conferences, seminars and workshops are forced to
revisit the copyright law to further ease the accessibility of the knowledge without causing
the damage to commercial interests of the owner. Conflicts between the social and personal
interests are further aggravated, ending in the ambit of litigations. Policy makers and
judiciary started to make efforts to maintain balance between private interest of copyright
holder and the public interest in seeking new information is becoming difficult.

The Berne Convention while granting the exclusive rights to the owners/authors of the works,
permitted nations to make their own laws according to the existing customs either to exclude
or permit the accessibility and allowed free access of certain works for the benefit of the
society. The copyright law of many countries is under terrific pressure to have amendments
to meet the needs of the day. Many countries have incorporated exceptions in the copyright
law and eased out the monopolistic rights of the individual authors/creators of work to
facilitate free access of the copyrighted materials within the certain framework. These
modifications are made with an intention to balance between the personal interest and social
obligations of the author/creator of the work.

Thus, the copyrights today are not absolute. The copyright law now discharges two functions
– one being providing the protection to the owner’s rights and second function is to facilitate
the use of work by the society, by legitimizing certain unauthorized uses by incorporating
some general exceptions in the copyright law. It aims to fulfill certain broader social aims
importantly to increase public access to a broader range of creative material. The society
recognizes the contribution of the author for their valuable contributions to the knowledge
base and places him on high pedestal in the society. The recognition brings reputation and
social status and it also imposes a responsibility upon the author. He is expected to discuss
and expose social evils in order to protect the public interests and is bound not to inject
immoral and unsocial practices into the society. Thus the copyright law triggers commercial
17
benefits, social benefits and impose responsibilities upon the creators not to misuse and
misunderstand objectives.

The general exceptions incorporated in the legislations facilitate the access of the copyrighted
material for certain acceptable purpose and directs the user to deal or access the material
fairly. The concept of ‘fair use’ or ‘fair access’ or ‘fair dealing’ of the copyrighted material is
evolved. If the use/deal /access of material is not fair, it amounts to infringement of rights.
The copyright law in most of the nations stated specifically what amounts to be the ‘fair use’
or ‘fair dealing’. Though, fair dealing provisions in the copyright law permit the
dissemination and access of the knowledge, it is realized that they are not shackle free as they
are allowed for specified purposes. Application of fair dealing doctrine has become so
unpredictable that users cannot rely on this doctrine with confidence.

However, the line of fair dealing is very thin, as such, many a time, the accessing of
copyright material lands in the litigation. Fair dealing plays an important role in balancing the
interests of the copyright owner and the interest of society in general. A question arises as
whether fair dealing is really fair or not? Does this doctrine dilute the copyright protection
provided to the owner? As it is well established principle that the ‘fair dealing’ is applicable
for the private use more particularly for the purpose of criticism, review and research. Here
the purpose is said to be most important and it is for non commercial purpose. It is very
difficult to monitor the fair access of the copyrighted material by users across the globe and
find whether the access is really fair or not.

Intellectual property, therefore, started assuming a new centrality in the international

community bringing IPR to the forefront of socio-economic and legal structures. 54 Copyright
law calls for being less nationalistic and more global in scale, in order to respond to digital
age. The increase in income from copyright industries is a result of expansion of markets
national as well as international. Studies conducted in different countries have concluded that
newly emerging copyright industries are having tremendous impact on the growth of national
economies.55 The copyright industries contribute 10% to GDP in Australia and USA, 8.5% of

54
Shahid Ali Khan, Socio-Economic Benefits of Intellectual Property Protection in Developing Countries.
(Geneva: WIPO, 2000) p-8.
55
WR Cornish, Intellectual Property: Patents, Copyright, Trademarks and Allied rights (London Sweet &
Maxwell 2nd ed.,1995) p.258
18
GDP in Korea, 6% of GDP in Netherlands.56 Intellectual property is given high importance in
the world economy by the World Trade Organization. Because of its economic angle, the
copyrights are very important as they contribute to the nation’s economy. If the copyrighted
material allowed or permitted for free access or fair dealing it triggers the piracy in the
disguise of ‘fair use/fair dealing’ doctrine which is against the interest of the owners and
objectives of the Copyright Law. As such, there is a need to study whether the ‘fair use/fair
dealing’ is really fair as explicated in the legislation and judicial decisions? If so fair, to
whom it is fair? … the author? or user? or the society? Whether there is any machinery to
understand the fairness? Is there any method to find the purpose for which it is used? Are
there any matrices to find out the commercial loss to the author/owner? This research is a step
forward to analyze critically, the existing provisions of the copyright law to find out whether
the provisions are self controlled to know the answers for the above questions.

1.5. LITERATURE SURVEY

The need for copyright protection arose after the introduction of printing. International
treaties such as Berne Convention, Universal Copyright Convention, WIPO Convention,
TRIPS Agreement and other international agreements and conventions have helped in
evolving the copyright law. Article 2 of the Berne Convention empowers the countries to
decide about the extent of protection available to the copyrights and incorporate the same in
the local laws. Accordingly, the copyright law is subject matter of the national laws and in
order to harmonize with the global laws, under the guidelines of the TRIPS, the countries
made amendments to the local laws. Thus, the international treaties and local laws play vital
role in the evolution of the copyrights.

The development of copyright in India is closely related to the evolution of the same in the
United Kingdom. ‘In England for the first time, in the year 1534, the Crown provided
56
WIPO studies on the Economic Contribution of the Copyright Industries (2012) at
htpp://www.wipo.int/ip-
development/en/creative_industry/pdf/economic_contribution_analysis_2012accessed on February 1
2013. 6.6% of the GDP in Sweden (in 1970s); 3.6% of GDP in United Kingdom (in 1990); 2.9% of GDP
in Germany (1996); 5.2% of GDP in Netherlands (1994); 4.3% of GDP in United States (1997); 5.24%
of GDP in United States (2001); 4.1% of GDP in Finland (1997) is due to Copyright Industries. Henry
Olsson, Intellectual Property and Trade, WIPO/IP/DEL/02/6(d) ii (August 29-31,2001); Shahid Ali
Khan, Intellectual Property and its Role: key message, WIPO/IP/DEL/01/4, Delhi (August 29-31,2001);
Prabudha Ganguli, Intellectual Property Rights Unleashing the Knowledge Economy (New Delhi; Tata
McGraw Hill 2001) p.xxi; Study conducted by International Intellectual Property Alliance, Copyright
Industries in the US Economy, The 2011 Report available at htpp:www.iipa.com/copyright_us_economy
html last visited on 1 Feb 2013.
19
protection to stationers (the forefathers of the modern publishers)’ against importation of
foreign goods.Later, a Charter was issued in the year 1556 which provided for the destruction
of books which were published flouting the existing proclamation. It can be said to be the
first ever kind of licensing system which required lawfully printed books to be entered in the
register. In the year 1710, The Statute of Anne is the first to grant formal legal protection for
literary works. After the Statute of Anne, the Imperial Copyright Act 1911 and later the
Copyright Act 1956 was enacted which provides for general exception under section 6 of the
Act (UK Copyright Act 1956) and accordingly a literary, dramatic or musical work for
purposes of research or private study; purposes of criticism or review if accompanied by
sufficient acknowledgement; if it is for the purpose of reporting current events by sufficient
acknowledgment; if it is for purposes of a report of a judicial proceeding or if reading and
recitation in public by one person of any reasonable extract from a published literary or
dramatic work, if accompanied by a sufficient acknowledgement shall not constitute an
infringement of the copyright in the work. Further copyright in a published literary or
dramatic work is not infringed by the inclusion of a short passage there from in a collection
intended for the use of schools if is sufficiently acknowledged. By virtue of an assignment or
licence a person is authorized to broadcast a literary, dramatic or musical work from a place
in UK or in another country to which Sec 2 of the UK Act applies. But the copyright in the
work is not infringed by his making such a reproduction of the work solely for the purpose of
broadcasting of the work at the same time this section does not apply if the reproduction is
used for further reproduction or any other than the purpose of broadcasting as per
assignment/licence and further the reproduction is not destroyed before the end of the period
of 28 days beginning with the day on which it is first used for broadcasting the work in
pursuance of assignment/licence as agreed upon. Sections 7 to 9 of the UK Act provide for
special exceptions which do not constitute infringement. Section 7 of the UK Act deals with
special exceptions with respect to libraries and archives. Section 8 is with respect of records
of musical works, Section 9 is for protection of artistic works.57 Now British government
enacted the Copyright Designs and Patents Act 1988 which incorporated in it many of the
international agreements provisions and European Directives. Chapter III of Part I of the Act
provides for fair dealing defenses, which means permitted acts which do not fall under

57
www.legislation.gov.uk last visited on 29.11.2013
20
infringement. Sections 29 to 30 of this act provides for general exceptions of fair dealing and
Sections 31 to 74 deals with special exceptions which do not constitute infringement.

In US the first law relating to copyright can be traced to Copyright Act 1790. The Statute of
Anne was used as the Model for the US Federal Copyright Act 1790. Later it is amended
many a time in 1831, 1870, 1891 and 1909 and in 1976 and 2011. The Copyright Act 1976
chapter VII Section 107 of the Act provides limitations on exclusive rights. Notwithstanding
the provisions of Sections 106 and 106 A, the fair use of a copyrighted work, including such
use by reproduction in copies or phonorecords or by any other means specified by that
section, for purposes such as criticism, comment, news reporting, teaching-including multiple
copies for classroom use, scholarship, or research, is not an infringement of copyright. It
legitimizes certain unauthorized uses of copyright works to secure a delicate balance between
rights of owners/authors and the society. In determining what is fair use in a particular case
depends on four factor test that was laid down in Falsom v Marsh case. 58 The term fair use is
undefined in the Act. It is said to be the most important and troublesome doctrine in
copyright law. US approach to fair use concept is said to be an open ended one because the
US Court’s find defendant’s use to be fair, non-infringing even when the use falls outside any
specifically delineated defenses. The above specified purposes criticism, comment, news
reporting, teaching and research are only illustrative purposes and does not provide for a
closed list of defenses unlike fair dealing. Copyright defenses are territorially confined. This
doctrine is highly criticized by scholars of copyright because of its application because of its
flexibility, uncertainty and unpredictable nature that would-be-fair uses can rarely rely on the
doctrine with any significant level of confidence.59 The US fair use application is said to be
an open ended concept as it embraces any kind of use which can be potentially be a fair one.
Though a list of categories are provided under section107 of the Copyright Act 1976 such as
criticism, comment, news reporting or teaching they are illustrative only. It provides “very
little guidance for predicting whether a particular use will be deemed fair”60. The Act is
amended recently in 2011 to capture significant changes in technology. The 2011 Act
provides for specific exceptions from section 108 to section 122. Apart from this the US
National Commission on New Technological issues of Copyrighted Works has submitted a

58
www.copyright.gov
59
Robert Burrell and Allison Coleman, Copyright Exceptions; The Digital Impact –p.249-50, (2005)
60
Michael W. Carroll, Fixing Fair Use, 85 N.C.L Rev.1087,1106(2007)
21
report in the year 1979 to enact a separate legislation – Software Protection Act to provide
protection to the software programs. The other related Copyright Act in US is the Digital
Millennium Copyright Act 1988.

Almost all the countries have enacted special legislations to deal with the copyright issues as
compliance of the Berne Convention. The domestic laws governing the development and
protection of intellectual property have grown under the shadow of international conventions
and treaties. The international treaties like the Berne Convention 1948 (Brussels text),
Universal Copyright Convention 1952, later the recommendations of these two conventions
was adopted by the Paris Convention 1971. Recently in the year 1996 the WIPO Copyright
Treaty and the WIPO Performances and Phonograms Treaty provided for copyright
protection to solve the problems related to the digital age revolution.

In India the first copyright law applied was The English Copyright Act 1842. After that the
Copyright Act, 1911 of England was made applicable to the Indian Territory too. In 1914 the
Indian Copyright Act was passed. This Act had around 15 sections. This Act took a bold step
by introducing criminal sanctions for copyright infringement. Section 4 of the Act introduced
the ‘sole right’ concept. This granted the author the right to produce, reproduce, perform or
publish a translation of the work until a period of ten years from the date of publication of the
work. This Act was a modified version of the Copyright Act, 1911. The Act provided that
registration of the work was not necessary and the right of the author came into existence as
soon as the work was created. Protection as per the Act was granted to the material form in
which it was expressed. To be eligible for protection the work had to be original. This Act
continued till 1957 until it was revamped again. The revised Act i.e., Copyright Act 1957
came into force in the year 1958. The Act ushered in it the Copyright Office and Copyright
Board in order to smoothen the progress of the registration process. It also provided for,
copyright term, assignment and licensing of copyright including compulsory licensing in
certain circumstances. The exceptions to copyright infringement that is fair dealing is
provided under section 52 of the Act which says an act of fair dealing with literary, dramatic,
musical or artistic work not being a computer program for the purpose of private use
including research, criticism or review, whether of that work or of any other work shall not
constitute infringement of the original work. Further an act of fair dealing for the purpose of
reporting current events in a newspaper, magazine or similar periodicals or by a broadcast or

22
in a cinematograph film or by means of photographs of literary, dramatic, musical or artistic
works does not amount to infringement.

The Indian Copyright Act became one of the most progressive copyright laws with the
introduction of these amendments with respect to the rights of authors, performers and
producers of phonograms etc. These provisions are at par with that of the collective
administration of the authors’ rights obtaining in other countries. India is a signatory to two
international copyright conventions viz. Berne Convention and the Universal Copyright
Convention. By virtue of the provisions contained in these two multilateral Conventions, the
works of Indian nationals are entitled to copyright protection in all the countries which are
signatories to these two Conventions. Foreign authors from the member countries are entitled
to similar Copyright Protection in India which is accorded to the works of Indian authors
under the domestic law. India is also signatory to some other conventions such as the
“Convention for Protection of Producers of Phonogram against Unauthorized Duplication” of
their PHONOGRAMS and convention relating to the distribution of program carrying signals
transmitted by satellites, and also the Rome Convention for Protection of Performers,
Producers, Phonogram and Broadcasting Organization. These conventions are administered
by WIPO and UNESCO, who are specialized agencies of the United Nations.61India’s
copyright law, laid down in the Indian Copyright Act, 1957, fully reflects the Berne
Convention on Copyrights, to which India is a party. Additionally, India is party to the
Geneva Convention for the Protection of Rights of Producers of Phonograms and to the
Universal Copyright Convention. India is also an active member of the World Intellectual
Property Organisation (WIPO), Geneva and UNESCO.62

The Copyright Act 1957 with its amendments is being considered as a well drafted piece of
legislation in the area of intellectual property law capturing the inputs from various
international conventions and treaties. It also captured the general exceptions in the name of
‘fair dealing’ envisaged by the Berne convention to balance the author’s interests and social
interests. The concept of fair dealing explicated in Section 52 of the Copyright Act 1957
permits the access of the copyrighted material fairly. There are conflicting arguments against
the ‘fair dealing’. Some scholars argue that the fair dealing is essential for benefit of the

61 http, ://www.singhania.com/lawguide
62 http://www.saarcnet.org/newsaarcnet/countryprofile/India/india20.htm
23
society and also check the monopolistic nature of the copyrights. They further argue that the
horizons of the ‘fair dealing’ have to be increased or expanded to balance the rights and
obligations of authors. The other school of scholars argue that the introduction of general
exceptions to the copyrights in the name of fair dealing is causing concern to the authors
commercially as it is difficult to measure and monitor the usage of ‘fair dealing’. Whether the
fair dealing is really fair? If so, to whom?

Since the inception of the doctrine, throughout the world, neither the courts nor the legislature
have provided useful definition of fair use/fair dealing nor they have devised a meaningful
method for determining which uses are fair.63 There exists uncertainty in its application is
actually shielding the unauthorized users and is more misused. The Berne Convention laid
three- factor-test to understand whether the act of the user amounts to ‘fair dealing’ or not.
The US court laid four-factor-test for the first time in Falsom v Marsh64 case and later the
same is incorporated in the US Copyright Act. The US Supreme Court in Sony Corporation v
Universal City Studios65 recognizes the recording of free air to air television shows
broadcasted, to watch the program at a later time considered it as act of time shifting and for
the use of private home viewing and as non commercial and non-profit activity. The Act does
not explain as which test is to be given priority in case of conflict between them. Because of
its uncertainty the judiciary while applying the doctrine decided differently in different cases.
The judges in Harper and Row Publishers case66 said that its application depends on the
specific facts of individual case. Apart from satisfying the domestic law it is necessary for the
member countries that they comply with the international standard the three step test of Berne
convention. Art 9(2) and Art 13 of the TRIPS agreement permits the member countries for
reproduction of copyrighted works on satisfaction of three step test. It says permission is
granted to use copyrighted works in certain special cases, and the reproduction does not
conflict with a normal exploitation of the work or subject matter and it should not
unreasonably prejudice the legitimate interests of the author.

In India, the Copyright Act 1957 section 52 provides for certain acts of fair dealing. An act of
fair dealing with any literary, dramatic, musical or artistic work for the purpose of ‘private

63
Pierre N Leval, Toward a Fair Use Standard,103 Harv.L.Rev.1105,1105-06(1990)
64
Falsom v Marsh 9 F.Cas 342(C.C.D.Mass.1841) (No.4,901) at 348.
65
464 US 417,104 S.Ct 774 (1984)
66
Harper & Row, Publishers v Nation Enters., 471 U.S.539,552 (1985)
24
 67
use including research’ is not considered as infringement. But the term private use is not
defined, as such, it is difficult to fix the scope. It further explains that using the copyrighted
material for the purpose of research, criticism and review are part of private use. But,
precisely it can be stated that the private use is for the use of individuals or for the purpose of
his own activities and not for commercialization and circulation among the people whether
that group is private or formed for public purpose. Depending on the circumstances, time and
needs, the meaning of the phrase ‘private use’ changes and is extendable unlimitedly. The
acts of fair dealing also includes the use of copyrighted material in relation to literary,
dramatic, musical or artistic works for the purpose of reporting ‘current events’ in a
newspapers, magazine or similar periodicals by means of broadcasting, cinematograph film
and or photographs. The important element to consider is the purpose and usage for which
reporting is done, the limitation for such usage is that the subject matter should be of ‘current
events’ in nature. The provisions are silent on the extent of usage and the scope of ‘current
events’. The doctrine is equally applicable for the broadcasting and cinematograph reporting.
The report of performance of performers is also protected under the coverage of fair dealing
doctrine. The proviso to the exception limits the application of doctrine to the activities of
compilation of addresses or speeches delivered in the public places’. Therefore it limits the
application of doctrine of fair dealing.

The supporters of this doctrine are increasing because of its limited applicability to certain
classes of works. They squabble for expanding the horizons of fair dealing to all other areas
of the works in the light of digitalization of the knowledge and electronic databases. They
argue to insert the term ‘fair access’ in addition to ‘fair dealing’ so that the accessing of the
electronic databases, user generated contents on webs, contents posted on websites for the
specific non-commercial purposes does not amount to the infringement. The increased use of
internet, without application, the doctrine of ‘fair accesses’, shall face constraints in the
enforcement of copyright law. The evolution of the concept shows that there is wide
expansion of the scope of the doctrine and even further expansion with enough restrictions on
the ‘purposes of use’ will not adversely affect the copyright owners/authors. In no way has
the doctrine acted against the interests of the owner/author. In addition it provides for better
check in commercialization of the works by others.

67
Section 52 (1)(a) of the Copyright Act 1957
25
It is difficult to understand the doctrine of fair use/fair dealing without fair access of the
works. The copyright owner in the first phase regulates the unauthorized ‘access’ and later
prohibits the unauthorized ‘use’ or dealing with the works. There are enough arguments
against and in favour of this fact in the circles of the scholars. Some of them argue by
presenting possibilities of interaction between the ‘use and access’ and states that they are
quiet separate and independent. The second possibility they point out is ‘a use that would
usually be fair - a book review would lose that status if the book was stolen. The state gets to
put the burglar in jail for the theft and author can sue for infringement.68 Third possibility of
interaction between the ‘use and access’ is the ‘Fair-use Trumps’ which says that ‘we use the
fact that the use would not be copyright infringement because it would be fair to trump the
punishment that could attach to the method used to acquire access.69 The above said
possibilities are presumed with a premise that ‘the author would give access to the work even
without the contract limiting use’. Even without going into details of the above said
possibilities, it can be said that copyright law has not focused on the ‘access’ issue of the
copyrighted material without considering the threat of ‘access’ of the copyrighted material on
the potential income of the author more particularly in the digital world. Sometimes the
access of the work may not be prejudicial to the author, but in many a times it may lead to
generate further ideas and also derivative works and cause commercial loss to the author. In
that sense, accessing the software programs or music may provoke reverse engineering and
end up with another competitive product. It is more so in the case of access to cinematograph
films. On the other hand, restricting the access to the copyrighted material including the
software programs or music may prejudice the interests of the author and the society. As the
activities ‘access’ and ‘use’ cannot be one and the same, the copyright law should focus on
the aspects and impacts of ‘access’ by inserting the phrase the ‘fair access’ in addition to the
‘fair use’ so that other works such as ‘broadcasting, performance, cinematograph films, and
the digital contents will be accessed and then used for the broader benefits of the society. It
has to be remembered that the fair use exception will not protect the acts of accessing of the
copyrighted material with a ploy that the fair access is bundled with fair use/fair dealing. Use
of a copyrighted work and access to it are two different concepts. US Copyright law focuses
almost exclusively on user rights and does not create general positive access rights. Of

68
Randal C Picker, ‘Fair use Vs Fair Access’,(March 1,2008). U of Chicago Law & Economics,Olin
Working Paper No.392 htpp://papers.ssrn.com
69
Ibid
26
course, use rights will nonetheless be effective if authors choose to give access to works
through wide distribution of those works through publication.70

Therefore, it is necessary to understand the concept of ‘fair dealing/fair use/fair access’ of the
copyrighted material to assess if it is ‘really fair’ and ‘if so to whom?. This research study
will help to analyze the importance and working of three-factor-tests and four-factor-test in
the light of the general exceptions available in the Indian Copyright Act 1957.

1.6. CONTRIBUTION OF THE RESEARCH

The study on the research topic, with reference to provisions of law in other countries and
international treaties, help the literature to bring out some vital facts on this topic and also
makes SWOT analysis71 of the general exceptions available under Section 52 of the Indian
Copyright Act 1957. It helps in understanding the inputs required to strengthen the law
further to achieve the dual objectives of the copyright law – protection of interests of the
owner/author and the society. It also makes some suggestions that may lead to further
research in this and other related topic for the benefit of the academicians and policy makers.

1.7. THE OBJECTIVES OF THE PRESENT STUDY

The present research study is undertaken with the following objectives:

 To find whether the general exceptions provided in Section 52 of the Copyright

Act 1957 are sufficient for the benefit of the society,

 To find out whether the general exceptions incorporated under the statute for the
benefit of society are used properly or misused.

 To find whether the general exceptions stated in Section 52 of the Copyright Act
dilutes the exclusive rights granted to the author/owner of the works.

 To find whether fair dealing under Copyright Act 1957 is really fair.

70
Ibid
71
SWOT Analysis is a useful technique for understanding one’s Strengths and Weaknesses, and for
identifying both the Opportunities open to one and the Threats one face. Used in a business context, it helps you
carve a sustainable niche in market.
27
  To find whether fair use/fair dealing provisions in legislations of other countries
help us to understand the scope of the general exceptions provided in the name of
‘fair dealing’ in the Indian Law.

1.8. HYPOTHESES

 The limitations embedded with the general exceptions stated in Section 52 of the
Copyright Act 1957 amounting to acts of fair dealing fade away the thin line between
the fair use and infringement, causing commercial loss to the owners.

 The general exceptions provided under Section 52 of the Copyright Act 1957 are not
sufficient to protect the interests of the users.

 The outcome of the three-factor-test envisaged by the Berne Convention and

exception that comes under the scope of ‘fair dealing’ have similarities.

1.9. RESEARCH METHODOLOGY

The present study involves the doctrinal method of research. This method is considered
appropriate in view of the nature of the topic and the complexities of the problem. The
following are the sources from which data is collected.

a. Primary Sources: International Organizations such as World Trade Organization, World

Intellectual Property Organization established in 1967 are some of the important sources of
the study. International treaties such as the Berne Convention 1887, Universal Copyright
Convention 1952, International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations(Rome convention) 1964, WIPO Copyright
Treaty 1996, WIPO Performances and Phonograms Treaty 1996 and other treaties /
Conventions relating to Copyrights and its components help to undertake the research study.
In addition, the provisions available in the Convention for the Protection of Producers of
Phonograms against Unauthorised Duplication of their Phonograms, Convention relating to
the Distribution of Programme - carrying signals transmitted by Satellite (Brussels
Convention) signed on1974. The treaty on International Registration of Audio-Visual Works
(Geneva) came into force 1992. The International Trade Agreements – Agreement on Trade
Related Aspects of Intellectual Property Rights (TRIPS Agreement) 1994 also help in
achieving the objectives. And various Copyright legislations enacted in USA, UK, Canada
28
and Australia help in understanding the concept and application of ‘fair-dealing’/fair use/fair
access concepts vis-à-vis the Indian copyright regime. The judicial decisions/case laws shall
strengthen the research study.

b. Secondary Sources: Various Committee reports and study survey reports prepared and
published by the statutory and non-statutory bodies in US, UK, Canada, India and Australia.
The articles of eminent academia and researchers published in various international refereed
journals and websites which are helpful to understand the doctrine of fair use/fair dealing.
The information available on the websites of the WTO, WIPO and Indian Copyright Office,
US, UK, Canada and Australia official copyright sites provides valuable inputs to the study.

1.10. RESEARCH TOOLS

The important research tools used in the research are the law libraries, law journals and
Digests of case laws. The internet and Web-sites of research houses, copyright offices and
international organizations like the WTO, WIPO and UNO etc help to analyze the existing
legal regime with reference to the doctrine of fair use/fair dealing of copyrights.

1.11. LIMITATION OF THE STUDY

The present study is limited to the general exceptions with its specific limitations and
infringements defined under the Indian Copyright Act 1957

1.12. THE SCHEME OF THE STUDY

The present research study contains five chapters. In addition to the first chapter which is a
curtain raiser, the research study report is designed to contain the findings shown as below.

a. Chapter II: The Chapter explains the evolution of the copyright concepts, provisions
of various international treaties such as Berne Convention, Universal Copyright
Convention, WIPO Copyright Treaty, WIPO Performer’s and Phonogram’s treaty and
extracts from other related international treaties and regional treaties and agreements
to understand the evolution of the Copyright law and its important components.

b. Chapter III: This chapter discusses the various copyrightable works under the Indian
copyright law and international Conventions, and about ownership and the rights

29
 granted to the owner and its infringement and challenges, along with case laws to
understand the concepts and about enforcement of the these rights .

c. Chapter IV: The chapter deals with critical analysis of important provisions of
Copyright Act 1957 in India along with recent amendments carried to the Act with
case studies.

d. Chapter V: In this chapter the meaning, nature and evolution of the doctrine/concept
of ‘fair dealing’ is dealt with. It contains the provisions of ‘fair dealing’ under the
domestic laws of US, UK, Canada, Japan and Australia. It also discusses the
provisions of general exceptions along with specific limitations explicated in S 52 of
the Copyright Act 1957.

e. Chapter VI: It contains the critical analysis of fair use doctrine, three factor test
under Berne Convention with reference to the objectives of the study and
proves/disproves the hypotheses.

f. Chapter VII: The chapter contains the conclusions, comments and suggestions based
on the analysis of the research topic.

30