Chapter III

Indian Copyright Law: Conceptual Contours

3. 1 INTRODUCTION

In the Knowledge driven economy, the law of copyright provides the legal framework not
only for the protection of the traditional beneficiaries of copyright, the individual author,
composer or artist, but also for the investment required for the creation of works by the major
cultural industries, the publishing, film, broadcasting and recording industries, and the
computer software industry. 1 The protection of these copyrighted material assumed
significant importance nationally as well as internationally since 19th century.

“Copyright protection provides artists, the means to secure the rewards of intellectual and
aesthetic efforts from those who use artists’ work in ways that have commercial
significance.”2 “Copyright, is one of the four cornerstones of this emerging new world
economic order.”3 John Oswald opined that, “If creativity is a field, copyright is the fence.” It
gives rights to the creators of certain kinds of material to control the various ways in which
their material may be exploited. It grants protection to the way an idea is expressed in a piece
of work, and not to the idea itself. “The purpose of copyright is to allow creators to gain
economic rewards for their efforts and so encourage future creativity and the development of
new material which benefits us all. Copyright material is usually the result of creative skill
and/or significant labor and/or investment, and without protection, it would often be very
easy for others to exploit material without paying the creator. ”4 In order to come under the
purview of copyright protection, the work must be an original creation. The scope of these
works has been the subject of various judicial interpretations.

Copyright protects also everyday items, including for example on the private level letters,
photographs and home videos, and if in business, it is advertisements brochures, designs,
documents, graphics, manuals and reports published or used by every firm in the country. No

1 Narayanan P “Law of Copyright and Industrial Designs” Fourth Edition, 2007, Page 1.
2 www. medicalart-copyright. org
3 http://www. culturaleconomics. at freeweb. com/cpr3. htm
4 http://www. intellectual-property. gov. uk/std/faq/copyright/what. htm
67
business can afford to be ignorant of the implications of copyright in its daily work.5 The
unique and fragile nature of these rights and their easy availability to the public resulted in
theft and exploitation throughout the world.6 The entry of internet is the reason and it proved
to be beneficial as well as detrimental to the interests of the copyright holders. 7 It encouraged
publishers and writers to the electronic media. It also created fear in the minds of owners that
they would lose control on their works and that it would be difficult to protect their works
from being pirated unless laws are effective and stringent machinery is provided to curb
piracy. This made the developed and developing countries to take serious note of the
necessity to protect these rights by international cooperation and by necessary legislation in
respective countries. 8

3.2 COPYRIGHT : NATURE AND SCOPE

In essence, copyright is the right of an author to control the reproduction of his intellectual
creation. As long as he keeps his work in his sole possession, the author’s absolute control is
a physical fact. When he discloses the work to others, however, he makes it possible for them
to reproduce it. Copyright is a legal device to give the author the right to control his
intellectual creation’s reproduction after it has been disclosed. Generally, copyright is termed
as a bundle of rights. It marks out the rights of copyright owners by reference to certain acts
which only the owner can do or authorize; he is given exclusive rights in respect of these
acts; termed as acts restricted by copyright. These exclusive rights can be classified into six
rights – reproduction, distribution, rental or lending, performance, broadcasting, adaptation or
to do any of the above acts in relation to an adaptation. There are no formal requirements to
obtaining copyright protection – it arises upon the fulfillment of certain criteria and does not
require a registration process. Copyright is available for original works of authorship fixed in
any tangible medium of expression.

Copyrights do not protect ideas, procedures, processes, systems, etc. but only their physical
representations. Anything unrecorded is not copyrightable, i. e., dances and improvisations
themselves are not copyrightable but their visual recordings or written descriptions are

5 Copinger and Skone James : Copyright,15th Ed.2005, Para 1. 02

6 Dr. G. B. Reddy’s Intellectual Property Rights and the Law , Reprint ED 2013 , Published by Bharat Gogia for
M/S Gogia Law Publications,-p-11
7 Dr. T. Vidya Kumari’s Copyright Protection Indian and International Perspective, ED 2004, Published by Asia
Law House,Preface, p-7
8 Dr. G. B. Reddy’s Intellectual Property Rights and the Law , Reprint Ed 2013 , Published by Bharat Gogia for
M/S Gogia Law Publications,p -11
68
copyrightable. The basic requirement for a work to be qualified for copyright protection is
that it should be “fixed in a tangible medium of expression”. This means that the work must
exist in some physical form for at least some period of time. The time can be brief or lengthy.
Almost any form of expression will qualify as a tangible medium, including a computer’s
Random Access Memory (RAM), the recording media that capture all radio and television
broadcasts, and the scribbled notes on the back of an envelope that contain the basis for an
unrehearsed speech. Copyright is a protection that covers published and unpublished literary,
scientific and artistic works, whatever the form of expression, provided such works are fixed
in a tangible or material form. Copyright protection begins when a work is actually created
and fixed in a tangible form. Copyright is automatic and only two requirements need to be
satisfied. First, the work needs to be an original work of authorship and secondly, the work
needs to be in a tangible form. In a recent case Catherine Conrad v A.M Community Credit
Union9 widely known as “Banana Lady Case” plaintiff performed a song and dance
routine wearing a banana costume, sued members of her audience for taking pictures of her
and uploading them to the internet, alleging such conduct was a violation of her copyright.
Justice Posner dismissed her claim and opined “The performance itself was not copyrighted
or even copyrightable, not being “fixed in any tangible medium of expression,” to comply
with the requirement of fixity she would have had either to have recorded the performance or
to have created a written “dance notation” of it. The US Court of Appeals for the seventh
circuit affirmed the district court’s decision dismissing a copyright infringement claim and
holding that the organizers of an event at which plaintiff performed a singing telegram
dressed in a banana costume did not infringe or induce infringement of plaintiff’s asserted
copyrights because immediately after her performance the organizers told the attendees that
photographs of the performance may only be taken for personal use, as permitted by plaintiff.

The following types of works which do not fall under the category of subject matter of
copyright:

 Works that are not fixed in a tangible form of expression (for example,
choreographic works that have not been notated or recorded, or improvizational
speeches or performances that have not been written or recorded).

9
Case.No 13-2899, US 7th Circuit Court of Appeals, 14th April 2014 refer htpp://media.ca7.uscourts. gov/cgi
bin/rss exec.pl or htpp://www.natlawreview.com

69
  Titles, names, short phrases, and slogans; familiar symbols or designs; mere
variations of typographic ornamentation, lettering, or coloring; mere listings of
ingredients or contents.

 Ideas, procedures, methods, systems, processes, concepts, principles, discoveries,

or devices, as distinguished from a description, explanation, or illustration.

 Works consisting totally of information that is common property and containing

no original authorship (for example: standard calendars, height and weight charts,
tape measures and rulers, and lists or tables taken from public documents or other
common sources.10

The protection of Copyrights is at the international and the national levels. As a general rule,
11
copyrights are country-specific i. e., granted in each country by its laws. To overcome the
difficulties inherent in having to seek separate copyright protection in the different countries
of the world, there are multilateral treaties that provide for harmonization of standards at the
international level. 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. According to WIPO, “Copyright and its related rights
are essential to human creativity, by giving creators incentives in the form of recognition and
fair economic rewards. Under this system of rights, creators are assured that their works can
be disseminated without fear of unauthorized copying or piracy. This in turn helps increase
access to and enhances the enjoyment of culture, knowledge, and entertainment all over the
world”.

The statutory definition of Copyright12 provided in the Act is ‘the exclusive right to do
certain acts in relation to 1) literary, dramatic or musical works, not being a computer
programme, 2) computer program, 3) artistic work, 4) cinematograph film and 5) sound
recording. Basically copyright means the right to copy or reproduce the work in which
copyright subsists. The various acts for which copyright extends is listed in Section 14 of the

10 http://www. keytlaw. com/Copyrights/basics. htm#What%20is%20a%20Copyright

11 Copyrights in India are granted and governed under the Indian Copyright Act 1957
12 Section 14 of the Indian Copyright Act 1957
70
Copyright Act 1957. The definition is exhaustive and copyright does not extend to any right
beyond the scope of S. 14. The exclusive right for doing the respective acts extends not only
to the whole of the work, but to any substantial part thereof or to any translation or adaptation
thereof. Copyright is said to be a creation of the statute and section 16 says no copyright
exists in any work except as provided in the Act. As such, there is no such thing that is
recognised as a common law copyright. Copyright law is therefore divided into two
categories a) Copyright law in the strict sense of the word, i. e., the protection of intellectual
creativity in literary, artistic and musical works, etc., and b) the law relating to neighbouring
rights, namely the rights of performing artists, producers of phonograms and broadcasting
organizations. Section 14 of the Copyright Act, 1957 gives a perception on what the meaning
of copyright is. “Copyright” means the exclusive right subject to the provisions of the Act, to
do or authorize the doing of any of the following acts in respect of a work or any substantial
part –In the case of a literary, dramatic or musical work not being a computer program to
reproduce the work in any material form including the storing of it in any medium by
electronic means; to issue copies of the work to the public not being copies already in
circulation; to perform the work in public, or communicate it to the public; to make any
cinematograph film or sound recording in respect of the work; to make any translation of the
work; to make any adaptation of the work; The act also grants the following rights in relation
to a translation or an adaptation of the work like right to reproduce; to issue copies; to
perform in public; to make sound recording or a cinematographic norm in relation to a
translation or an adaptation of the work, any of the Acts specified in relation to the work
mentioned above. In the case of a computer program to sell or give on hire, or offer for sale
or hire any copy of the computer program, regardless of whether such copy has been sold or
given on hire on earlier occasions. In the case of an artistic work to reproduce the work in any
material form including depiction in three dimensions of a two dimensional work or in two
dimensions of a three dimensional work; to communicate the work to the public; to issue
copies of the work to the public not being copies already in circulation; to include the work in
any cinematograph film; to make any adaptation of the work. In case of an adapted work the
copyright holder also has the right to reproduce the work; communicate the work; make a
cinematographic work; issue copies of the work. In the case of a cinematograph film to make
a copy of the film including a photograph of any image forming a part thereof: to sell or give
on hire or offer for sale or hire, any copy of the film regardless of whether such copy has

71
been sold or given on hire on earlier occasions; to communicate the film to the public; In the
case of a sound recording to make any other sound recording embodying it; to sell or give on
hire, or offer for sale or hire, any copy of the sound recording regardless of whether such
copy has been sold or given on hire on earlier occasions; to communicate the sound recording
to the public.

In short, copyright enables the authors to control the use of the work for a certain period of
time. By authorizing others to use the work in certain manner which otherwise would not be
possible because of copyright, authors can get financial benefit from their works. Thus,
copyright is a tangible and incorporeal property. The ultimate objective of copyright is to
promote the creation and propagation of intellectual works for the public welfare and to give
the authors the reward that is due to them from the society.

3.3 SUBJECT MATTER OF COPYRIGHT

The subject matter of copyright protection includes every production in the literary, scientific
and artistic domain, whatever the mode or form of expression. Although specific enumeration
of the subject matter of copyright protection is the domain of national legislation, in general
the following areas of creative work are protected by national laws in most countries of the
world. 13

 Original Literary Work : Novels, short stories, poems, dramatic works and any
other writings, irrespective of their content (fiction or non-fiction), length,
purpose (amusement, education, information, advertisement, propaganda, etc.),
form (handwritten, typed, printed, book, pamphlet, single sheets, newspaper,
magazine); whether published or unpublished; in most countries “oral works”,
that is, works not reduced to writing, are also protected by the copyright law;
literary works like instruction manuals, computer programs, lyrics for songs,
articles in newspapers, some types of databases; original dramatic works, which
include works of dance or mime.

 Original Musical Works: whether serious or light; songs, choruses, operas,

musicals, operettas; if for instructions, whether for one instrument (solos), a few
instruments (sonatas, chamber music, etc.), or many (bands, orchestras);

13 Fundamentals of Copyright Protection at <http://gil. com. sg/education/general/copyright-fundamentals. htm>

72
  Artistic Works: whether two-dimensional (drawings, paintings, etchings,
lithographs, etc. or three-dimensional (sculptures, architectural works),
irrespective of content (representational or abstract) and destination (“pure”art,
for advertisement, etc.);

 Maps and technical drawings;

 Photographic Works: irrespective of the subject matter (portraits, landscapes,

current events, etc.) and the purpose for which made;

 Motion pictures (“cinematographic works”): whether silent or with a sound

track, and irrespective of their purpose (theatrical exhibition, television
broadcasting, etc.), their genre (film dramas, documentaries, newsreels, etc.),
length, method employed (filming “live”, cartoons, etc.), or technical process
used (pictures on transparent film, video tapes, DVDs, etc.);

 Computer programs (either as a literary work or independently);

 Works of Applied Art: Many copyright laws also protect “works of applied art”
(artistic jewelry, lamps, wallpaper, furniture, etc.) and choreographic works.
Some regard phonograph records, tapes and broadcasts also as works;

 Related Rights: another important feature of protection of artistic works are the
rights ‘neighboring on or ‘related to’ copyright which are generally called
‘Related Rights’. It is generally understood that there are three kinds of related
rights: the rights of performing artists in their performances, the rights of
producers of phonograms in their phonograms, and the rights of broadcasting
organizations in their radio and television programs. Protection of those who
assist intellectual creators to communicate their message and to disseminate their
works to the public at large is attempted by means of related rights. sound
recordings, which may be recordings on any medium, for example, tape or
compact disc, and may be recordings of other copyright works, for example,
musical or literary; films, including videos; and broadcasts and cable program.

New Areas of Copyright Protection: Article 10 of the TRIPS agreement provides that
computer programs, whether in source or object code, shall be protected as literary works
under the Berne Convention. Compilations of data or other material, whether in machine or

73
readable or other form, which by reason of the selection or arrangement of their contents
constitute intellectual creation and shall be protected as such, as provided for by Article 10.
Such protection is not extended to the data or material itself and is not to prejudice any
copyright subsisting in the data or material itself. Article 11 provides for ‘Rental rights’in
respect of computer programs and cinematographic works. Member States are charged with
providing authors and their successors in title, the right to authorize or to prohibit the
commercial rental to the public of originals or copies of their copyright works. A member is
not to be exempted from this obligation in respect of cinematographic works unless such
rental has led to widespread copying of such works and is materially impairing the exclusive
right of reproduction conferred in that state on authors and their successors in title. In respect
of computer programs, this obligation does not apply to rentals where the program itself is
not the essential object of the rental.

Copyright protection also extends to work which is not literary, dramatic, musical and artistic
work. It protects movies, computer programs, software code, sheet music, and almost every
other tangible form of communication. It grants protection to the author of the work such
that, if anyone, other than the author copies the work without permission it would amount to
infringement and the copyright holder has the right to proceed against him for infringement
of copyright. Copyright also extends to the acts of making translations of a literary work,
performing a work in public and other acts relating to technology development which include
broadcasting the work or storing it in a computer. In US, copyright protection is granted to
the authors of “original works of authorship”, including literary, dramatic, musical, artistic,
and certain other intellectual works. This protection is available to both published and
unpublished works. The work that has to come under copyright protection must be original.
In order to be original, a work need not necessarily have novelty, artistic merit, truth, or
lawful content. Some amount of minimal degree of creativity by the author has to go into the
work to be treated as sufficiently original. 14An original work that closely resembles other
works can be copyrighted so long as the similarity between the two works is not the result of
copying.

14 Connor J, in Feist Publications Inc. v Rural Telephone Service Co, 499 U. S. 340(1991)
74
3.3.1 Literary Works

The Berne Convention gives a collective definition of the expression ‘literary and artistic
works. The expression “literary and artistic works” is defined as including every production
in the literary, scientific and artistic domain, irrespective of the mode or form of the
production’s expression15. It encompasses every original work of authorship, regardless of
16
the work’s literary or artistic merit. According to Article 2(1) of the Convention, literary
and artistic works include “books, pamphlets and other writings; lectures, addresses, sermons
and other works of the same nature; dramatic or dramatico-musical works; choreographic
works or entertainments in dumb show; musical compositions with or without words;
cinematographic works to which are assimilated works expressed by a process analogous to
cinematography; works of drawing, painting, architecture, sculpture, engraving and
lithography; photographic works to which are assimilated works expressed by a process
analogous to photography; works of applied art; illustrations, maps, plans, sketches and three
dimensional works relative to geography, topography, architecture or science. “The
dictionary meaning of the word “literary” is, ‘well versed in or connected with literature”.
The Judiciary has given a very wide meaning to the expression “literary”. In the year 1916, in
University of London Press v. University Tutorial Press17 Justice Peterson opined that any
work which is expressed in print or writing irrespective of the question whether the quality or
style is high is literary work. In India too the Courts have adopted this view and held in
Rupendra Kashyap v. Jiwan Publishing House18 that the literary merit or quality is not a pre-
requisite for a work to be a literary work under the Copyright Act 1957. The Courts in several
cases gave a wide definition of literary work by including mundane compilations of
information such as time tables,indices19, examination papers20, directories21, football fixture

15 Article 2(1) of the Berne Convention

16 Essential Elements of Intellectual Property , Overview of Basic Notions of Copyright and Related Rights and
Treaties Administered by WIPO, CD-ROM published by the WIPO Academy, World Intellectual Property
Organization. 1
17 (1916) 2 Ch 601
18
1996 PTC 439(Del)

19 Blacklock v. Pearson (1915) 2 Ch. 376.

20 University of London Press Ltd. v. University Tutorial Press Ltd. (1916) 2 Ch. 601; Aggarwala Publishing House
v. Board of High School and Intermediate Education AIR 1967 All. 191, U. P. AIR 1957 All 9; Jagdish Prasad v.
Parameshwara Prasad AIR 1966 Pat, 33.
21 Kelly v. Morris(1886) L. R, I Eq, 34;Morris v. Ashbee(1868) L. R, 7Eq. 634; Gleeson v. Denne 1975 (RPC) 471.
75
lists22, panchang (almanac)23, applications24, contract forms25, mathematical tables26,guide
books27,telegraph codes28, railway time tables29 and tambola tickets30 under the expression
“literary work”. The Rajasthan High Court held that literary work includes
“dissertation”submitted by a student in Fateh Singh Mehta v O. P. Singhal case31. The
Calcutta High Court held in Satsang v. Kiran Chandra Mukhopadhyay32, that writings,
sermons and sayings of a religious preacher also fall in the definition of “literary work”. In
Pepsico Inc. v Hindustan Coca Cola33 the Delhi High Court held that the advertising slogans
like “Yeh Dil Mange More” are not protectable under the Copyright Act.

The Indian Copyright Act 1957 does not define “literary work” except to state that under
section 2(o) that it includes computer programs, tables and compilations including computer
data bases. Again 2(ffb) and 2(ffc) defines ‘computer ‘and ‘computer programs’34
respectively but not ‘computer database’ but this definition can be found in the Information
Technology Act, 2000. Both the Berne Convention and the Copyright Act, 1957 give an
inclusive definition of the expression “literary work” without actually giving the meaning to
the word “literary’ and “work”. In a broader perspective, there would be two classes of work,
the primary or prior works which are not based on existing subject matter and the other
literary works called the secondary or derivative works which are based on the existing
subject matter. The secondary or derivative works are based on existing writings, such as
translations, adaptations, compilations, guide books and new editions. The primary work is
given protection under copyright law but the derivative work does not enjoy the same
protection unless the labor is of the right kind, the effort must bring about a material change
in the work, the change must be of right kind, the raw material i.e the prior work used shall be

22 Football League v. Littlewoods (1959) Ch, 637; Ladbroke v. W. M. Hill (1964) 1 W. L. R 273, H. L.
23 Vishwanath Iyer v. Muthukumaraswami, AIR 1948 Mad, 139.
24 Southern v. Bailers(1894) 38 501 to 681;
25 Real Estate of New South Wales v. Wood (1923) 23 S. R. (N. S. W. ) 349(Aus)
26 Bailey v. Taylor(1824) 3 L. J. O. S. 66
27 E. M. Forster v. A. N. Parasuram AIR 1964 Mad, 391; N. Ramaiah v. K. Lakshmaiah 1989 PTC 137(A. P)
28 Anderson & Co. Ltd v Lieber Code Co. (1917) 2 K. B. 469.
29 Blacklock & Co. Ltd v. Pearson Ltd, (1915) 2 Ch, 376; Leslie v. Young (1894) A. C. 335 H. L.
30 Rai Toys Industries v. Munir Printing Press 1982 PTC 85 Delhi.
31 AIR 1990 Raj. 8.
32 AIR 1973 Cal. 533
33
2003 (27) PTC 305 Del
34 Section 2(ffb)”computer”includes any electronic or similar device having information processing capabilities.
”and section 2(ffc) computer programs “means a set of instructions expressed in words, codes, schemes or in any
other form, including a machine readable medium, capable of causing a computer to perform a particular task or
achieve a particular result.
76
different from the end product that is the secondary work produced and the test of sweat of
the brow is applicable in most of the cases. In the case of compilation of copy-edited
judgments the minimum creativity test is looked upon. According to Article 2(3) of the Berne
Convention, translations, adaptations and other alterations of a literary work shall be
protected as original work without prejudice to the copyright in original work. The Indian
Copyright Act, 1957 does not have a similar provision but since India is a party to Berne
Convention it follows the principles in the convention.

3.3.2 Dramatic Works

The ‘dramatic works’ is defined under section 2(h)35 includes any piece for recitation,
choreographic work or entertainment in dumb show, the scenic arrangement or acting form of
which is fixed in writing or otherwise but does not include a cinematographic film. The
words otherwise found in the definition are only to provide for the modern means of
recording such as tape recorder or a Dictaphone and similar instruments36.In this case,
Bombay High Court held that the performance of a film actor would not qualify as a dramatic
work, following the Supreme Court’s decision in Indian Performing Rights Society (IPRS) v.
Eastern India Motion Pictures (E. I. M. P)37, The definition is not exhaustive. The script or
scenario for a cinematograph film is a dramatic work. Throughout the Act, the relevant
provisions dealing with rights, infringement or acts not amounting to infringement, the words
“literary”and “dramatic” are used together whether under the concept of rights, infringement
or fair dealing etc. Therefore the principles applicable to literary work will also be applicable
to dramatic work. In a recent case Institute for Inner Studies v. Charlotte Anderson38the Delhi
High Court held that Pranic Healing Techniques and also performance of the Asanas relating
to pranic healing techniques cannot be protected as dramatic works under the Copyright Act,
1957. Cinematographic films are not included under the dramatic as they form a separate
category of work. “Choreography” is said to be an art of arranging or designing a ballet or
stage dance in symbolic language. There are various systems used for this purpose; the
shorthand notations of Benesch, the longer, more academic and elaborate Laban system etc39,
or even a choreographer’s personal notes in his own invented system. The requirements of

35 Indian Copyright Act 1957

36 Fortune Films International vs Dev Anand, AIR 1979 Bom. 17.
37 AIR 1997, SC 1443
38
2014 (3) RAJ 29 (Del).
39 Flint A User’s guide to Copyright (3rd Edition) p. 187
77
fixation has been specifically provided for recitation, choreographic work, dumb show, scenic
arrangement or acting. If these works are “fixed” then they will be treated as merely
performance having lesser duration of protection under section 38.

3.3.3 Musical Works

Musical works according to WIPO is a work, whether serious or light, songs choruses,
operas, musicals, operettas, if for instructions, whether for one instrument (solo), a few
instruments (sonata, chamber music etc. ) or many (bands, orchestra) are included within
40
musical work. In India, the author in relation to a “musical work” is the composer
according to section 2(d)(ii). Under section 2(ff), the composer in relation to musical work
means the person who composes the music regardless of whether he records it on any form of
graphical notation. The author of the words of song is the lyricist and the same is provided
under Section 2(p) of the Act. The “musical work” as amended in 1994 to mean a work
consisting of music and includes any graphical notation of such work but does not include
any words or any action intended to be sung, spoken or performed with the music41. This
definition will give copyright protection to a musical work which has not been reduced to any
material form. This is said to be permissible under Art. 2(2) read with Art. 2(1) of the Berne
Convention. The definition of ‘composer’ in section 2(ffa) of the Act is said to be in
conformity with this concept as a composer in relation to a musical work is one who
composes the music regardless of whether he records it in any form of graphical notation. In
Gramophone Co. India Ltd., v Super Cassette Industries Ltd 42, the issue that came up before
the Delhi High Court was whether a combination of melody/harmony, unless reduced to
writing or graphically produced or reproduced would be a “musical work” under the Act. The
plaintiff in this case had produced audio records of Hum Aapke Hain Kaun (HAHK) under
the rights assigned to it by Rajshree Productions Pvt. Ltd who are the copyright owners of the
cinematograph work. Fifty five lakh audio cassettes and 40, 000 compact discs titled HAHK
were sold by the plaintiff and had a plan to sell equal number of cassettes in future.
Meanwhile M/S Super Cassettes Industries Ltd too have launched an audio cassette by
adopting the same title with its design, color scheme and get up and even used a photograph
of salman khan and madhuri dixit on the inlay cards. The plaintiff prayed for permanent

40 WIPO , Reading Material, (Geneva, October 1. 1995)

41 Section 2(p)
42 1996 PTC (16) 252
78
injunction restraining the defendants from manufacturing, selling or passing of audio
cassettes under the said title or from using a carton or inlay card identical or deceptively or
confusingly similar to design, color scheme, layout and get-up to the packaging used by the
plaintiff. It was opined by the justice that the defendants were making only a version
recording which is sound recording made of an already published song by using another
voice or voices and with different musicians and arrangers. Thus version recording is neither
copying nor reproduction of the original recording. However the court directed the
defendants not to use in the carton or inlay card or any other packaging material a design
color scheme and lay out etc. similar to that of the plaintiff’s and not to use the same title.
The defendants were directed to use an unoffending alternative title. But in another case43
between the same parties, the Delhi High Court issued an interim injunction against the
defendants from issuing any sound recordings of the audio-cassette titled “Ganapati Aarti
Ashtvinayak Geeta” which infringes the copyrights of the plaintiff till the disposal of the suit.
Musical work is not merely a combination of melody and harmony or either of them, it must
necessarily also have to be printed, reduced to writing or otherwise graphically produced or
reproduced. 44

This new amended definition in 1994 had omitted the words, “printed, reduced to writing or
otherwise graphically produced or reproduced45”.The amendment to the definition was
intended to protect Indian classical music. According to the unamended definition fixation of
music was essential before it could be protected. There are number of examples from the
Indian classical music and the music industry wherein it can be shown that the composer of
music and performer of music are the same person, such a person improvises within the
framework of a highly developed discipline on a pre selected traditional theme without
fixation of his composition on a piece of paper. The amendment was brought in 1994 to
protect such Indian classical music and folklore, which descends from generations without
fixation and without anyone claiming a right over the music. Western classical music is
created by composers who conventionally record the composition in writing on a paper using
an elaborate well established system of musical notations. Performers who can read the
notations then perform the music. This composer performer dichotomy which is so casual

43 Gramophone Co. of India Ltd. v Super Cassette Industries Ltd. 1999 PTC 2 (Delhi) Vol. XIX.
44 Gramphone Co. v Super Cassette Industries. 1996 PTC 252 (Delhi)
45 Supra note 50
79
under the western classical music is absent in case of Indian classical music and folklore.
Music is an integral part of Indians and we have three categories namely classical music,
traditional or folk music and Hindi film music. Today we have new trend of ‘remixes’ in
music industry. Remix is a song where music in the yester years is marketed with
contemporary beats46.This was criticized by original composers like Naushad etc., they felt
that their music was ‘distorted’ by the new generation of musicians. It was argued by them
that soft old Hindi film music into loud beats is plagiarism. But plagiarism is not the same as
“copyright infringement” provided by the Copyright Act 1957. It was argued that remixes can
be covered by the term “adaptation” which attracts its own copyright. Adaptation of musical
work is protected under section 14(a)(vi). Adaptation of musical work means “any
arrangement or transcription of the work”(section 2(a)(iv). Transcription means ‘arrangement
of a musical composition for some instrument or voice other than the original. ‘Copyright
subsists in arranging music by adding accompaniments, new harmonies, new rhythm and the
like and transcribing it for different musical forces47. In cases of western music there are
many decided cases in Darryle Neudorf vs Nettwerk Productions Ltd.,48 the Supreme Court
of British Columbia said in one sense an arrangement of music referred to a musical work
which resulted from the rearrangement of an existing musical work and there could be a
copyright in the rearrangement independent of the existing musical work. In another sense
‘arrangement’ referred to contribution of original expression to a musical work before it was
completed such as the composition of an instrumental accompaniment or an instrumental
passage that linked verse and chorus. In Redwood Music v Chappell49, it is opined that if a
musical arranger so decorates, develops transfers to a different medium or otherwise changes
the simple music of popular song as to make his arrangement fall within the description of an
original musical work, such arrangement or adaptation is capable of attracting an independent
copyright. There is no need for the ideas embodied in the arrangement to be novel. According
section 2(a)(v) ‘adaptation’ in relation to any work includes any use of such work involving
its rearrangement or alteration, which will apply to musical work as well. As per Indian
music is concerned till 2007, there are no reported cases as to what constitutes an
arrangement of a musical work. The western cases can be applied with care in relation to

46 Examples are Shefali Jariwala’s ‘Kanta lage’; Meri beri Ke ber mat todo, Jhole Lalan etc
47 W.R. Cornish , Intellectual Property : Patents, Copyrights,Trademarks and Allied Rights ,Published by Sweet
&Maxwell , 4th Ed. , para 10. 12
48 Darryle Neudorf v Nettwerk Productions Ltd(2000) RPC 935 (Supreme Court of British Columbia)
49 Redwood Music v Chappell(1982)RPC 109 at p. 119.
80
Indian music which is different from it. It is said that Indian music contains tunes or songs
written in terms of swaras in a particular notation. The nuances in the notation will not be the
same when it is sung vocally or when played in a particular instrument. There is no special
arrangement of the song written down required for playing the song in different instruments.
A new arrangement of the composition may happen if the composer tries to change or modify
the swara structure or the emphasis given to some of the swaras to produce a modified time.
‘Transcription’ in relation to music is defined as an arrangement of a musical composition for
some instrument or voice other than the ‘original’50 A musical work has to be original in
order to qualify for copyright protection. Original work whether musical, literary or dramatic
depends on skill, labour or talent to get protection under the act. There is no copyright in a
song as such because a song is not one of the type of work in which copyright subsists
because a song has its words written by one man and its music by another, its words have a
literary copyright and so has its music. But these two copyrights are entirely separate from
each other and cannot be merged. Therefore the song itself has no copyright51. In the
exceptional case where its words and music are written by the same man he would own the
copyright in the song. Copyright is not the tune or super singing it is the melody and harmony
reduced to printing, writing or graphic form. Author as defined in section 2(d) in relation to a
musical work is only the composer and section 16 confines copyright to these works. The
composer alone has copyright in a musical work. The singer has none, although the major
attraction which lends monetary value to a musical performance is not the music maker, so
much as the musician. 52 In most cases of remixes in India the subsequent company borrowed
songs from the original music company on payment of royalty. The result is the music
composers who had assigned their rights in the original music company did not get any share
from the sale of remix song. It resulted in unfair treatment to the original composers. But now
this position is changed by the introduction of section 31C and deletion of section 52(1)(j)
Prior to the amendment of 2012 of section 52(1)(j) permitted any song older than two years to
be used for ‘version recording’ if a notice of intent was given to the copyright holders,
composers and lyricists, along with 5% royalty and an advance. It was called by industry
players and the Indian Music Industry (IMI) for the deletion of section 52(1)(j) as companies

50 Webster’s Collegiate Dictionary.

51 Chappell v Redwood Music (1981) RPC 337 at p. 346 (Lord SALMON, HL)
52 Indian Performing Rights Society v Eastern India Motion Pictures Association AIR 1977 SC 1443 at p.
1453(Krishna Iyer , J)
81
producing cover versions and remix music paid only a nominal amount to the music
companies owning to the copyright. No royalty for subsequent album sales. According to
IMI, at a minimum, the version recording should be permitted after a period of ten years
while the royalty should be increased to 15% as the music company promoting the cover
version of a successful album incurs no significant production costs53. Section 52(1)(j) was
deleted by the amendment of 2012 and inserted section 31C providing for grant of statutory
license for cover versions. The amendment made production of cover version more difficult.
The time period after which a cover version can be made increased from two years to five
years. The statutory requirement is that all cover versions must state that they are cover
versions. No alterations are allowed from the original song, and alteration is qualified as
“alteration in the literary or musical work”. Therefore no imaginative covers in which the
lyrics are changed or in which the music is reworked are allowed without the copyright
owners’ permission. Only note for note and word for word covers are allowed. Again
alterations were previously allowed if they were "reasonably necessary for the adaptation of
work” now they are only allowed if it is “technically necessary for the purpose of making the
sound recording”. Earlier it was prohibited to mislead the public i. e, pretend the cover was
the original, or endorsed by the original artists, now cover versions are not allowed to
“contain the name or depict in any way any performer of an earlier sound recording of the
same work or any cinematograph film in which sound recording was incorporated”. Another
requirement is the cover version can be released only in the same medium as the original. So
if the original is on a cassette, the cover cannot be released on a CD. Payment has to be made
in advance, and for a minimum of 50,000 copies. This can be lowered by the copyright board
having regard to unpopular dialects.

3.3.4 Adaptation of literary and dramatic Works

“Adaptation” as per section 2(a) of the Copyright Act, 1957 is in relation to dramatic work
the conversion of a work into a non-dramatic work; in relation to literary work or artistic
work , the conversion of the work into a dramatic work by way of performance in public or
otherwise; in relation to literary or dramatic work any abridgement of the work or any version
of the work in which the story or action is conveyed wholly or mainly by means of pictures in

53 FICCI, Ernst &Young , The Indian Entertainment Industry: Emerging Trends and opportunities. , FRAMES
2004 Global Convention in the Business of Entertainment. for version recording also refer , Gramophone Co.
Ltd, v Super Cassette Industries Ltd. 58 (1995) DLT 99.
82
a form suitable for reproduction in a book, or in a newspaper, magazine or similar periodical;
in relation to musical work, any arrangement or transcription of the work; and in relation to
any work any use of such work involving its re-arrangement or alteration. For eg: A writes a
novel in English in which he has a copyright and assigns his right of making an adaptation to
say Y who, converts the work of A into a drama to be performed in theatre, Y is said to have
a copyright in the drama as original dramatic work but copyright in the novel to make a
cinematograph film or sound recording or translation etc. remains with A.

Further abridgement is an adaptation of literary work defined under section 2(a) (iii) of the
Copyright Act 1957, which states that abridgement is created when an existing work is
condensed by another in a manner that the precise import of the work is preserved yet an
original work is created. An abridgment of a literary work which means ‘shortening’ or
‘condensing’ a written work for eg, a book in shorter form to make it more accessible to a
54
wider audience is discussed in Macmillan and Company Limited v K. &J. Cooper case in
which the plaintiff had brought an abridged edition “North’s Translation of Plutarch ‘s Life of
Alexander”. The defendant came out with another abridged version but admittedly relied on
the plaintiff’s version. The plaintiff filed a suit for infringement against the defendant but he
took the defense that it was the result of his independent skill and judgment. Privy Council
held that plaintiff was not entitled to any copyright in the text but it felt that the notes in the
abridged version of plaintiff would be copyrightable material.. The Privy Council opined that
an abridgement of an author’s work , strictly speaking, meant a statement designed to be
complete and accurate of thoughts, opinions and ideas by him expressed therein, but set forth
much more concisely in the compressed language of the abridger. It said a publication like
that of the plaintiff, the text of which contained a number of detached passages selected from
an author’s work, which were often not contiguous but separated from those which preceded
and followed them by considerable bodies of print, and knitted together by a few words so as
to give these passages, when reprinted, the appearance as far as possible of a continuous
narrative, was not an abridgment at all. Privy Council relied on the meaning provided in the
55
edition of Copinger and Skone James on Copyright . Lord Atkinson held that to constitute a

54 AIR 1924 PC 75, (1923) LR 51 IA 109, 1924-19 LW 299.

55 Editions of Copinger’s Law of Copyright, published in 1904 and 1915 before and after Copyright Act 1911-p-
39- “To constitute a true and equitable abridgment, the entire work must be preserved in its precise import and
exact meaning, and then the act of abridgment is an exertion of the individuality employed in moulding and
transfusing a large work into a small compass, thus rendering it less expensive and m ore convenient both to the
83
true and equitable abridgement, the entire work must be preserved in its precise import and
exact meaning. The act of abridgement is an exertion of the individuality employed in
moulding and transfusing a large work into a small compass, thus rendering it less expensive
and more convenient both to the time and use of the reader, Independent labour must be
apparent. The reduction of the size of the work by copying some of its parts and omitting
others confers no title to the authorship, and the result will not be an abridgement entitled to
protection. To abridge in the legal sense of the word is to preserve the substance, the essence
of the work in language suited to such a purpose, language substantially different from that of
the original. To make such an abridgement requires the exercise of mind, labour, skill and
judgment brought into play and the result is not mere copying. To copy certain passages and
omit others so as to reduce the volume in bulk is not such an abridgement as the court would
recognize as sufficiently to protect the author.

With regard to translation it is not defined in the Copyright Act 1957. According to Black’s
Law Dictionary ‘translation’ means the reproduction in one language of a book, document or
speech in another language. According to the shorter Oxford dictionary, ‘translate’ means, to
interpret, explain, also to express one thing in terms of another. Here the right to translate
vests with the author of the work. The translation of a literary work is itself a literary work
and is entitled to copyright protection56. for eg: Y after taking permission from X translates
the novel of X written in Hindi to English. Y has copyright in the English version of the
novel whereas, copyright in the novel in Hindi continues to be with X. When it comes to
works relating to Compilations and collective works, the copyright in a collective work
subsists in the individual items of the collection as well as in the collection itself. A
compilation on the other hand is a work in which copyright subsists in a compilation of facts
or information which are themselves not copyrightable, for example, a catalogue of detailed
57
items sold by a trader. According to the Berne Convention, as per Article 2(5) the
collections of literary or artistic works such as encyclopedias and anthologies which, by
reason of the selection and arrangement of their contents, constitute intellectual creations

time and use of the reader. Independent labour must be apparent and the reduction of the size and work by
copying some of the parts and omitting others confers no title to authorship, and the result will not be an
abridgment entitled to protection. To abridge in the legal sense of the word is to preserve the substance, the
essence of the work in language suited to such a purpose, language substantially different from that of the
original. To make such an abridgment requires the exercise of mind, labour, skill and judgment brought into play,
and the result is not merely copying.
56 Blackwood vs. Parsuraman AIR 1959 Mad. 410
57 Collis vs. Carter (catalogue of medicines held to be copyrightable) (1898) 78 LT 613.
84
shall be protected as such, without prejudice to the copyright in each of the works forming
part of such collections. The Indian Copyright Act does not specifically deal with
compilations but judiciary has followed the definition laid down in the Berne Convention and
treated compilation and collective work as original literary work. The Privy Council in
Macmillan & Co. vs Cooper58 while approving the decisions of Supreme Court of U. S. in
Emerson v Davies (1845)59 held that it is necessary that to secure copyright for a product
compilation, labour, skill and capital should be expended sufficiently to impart to the product
some quality or character which the raw material did not possess and which differentiates the
product from the raw material. However, what is the precise amount of the knowledge, labour
judgment or literary skill or test which the author of any book or other compilation must
bestow upon its composition in order to acquire copyright in it cannot be defined in precise
terms. It must depend largely upon the special facts of each case and it is very much a
question of degree. In another case Hogg vs. Scott60 it was held by Justice Hall that the true
principle in all these cases is that the defendant is not at liberty to use or avail himself of the
labour which the plaintiff has put in for the purpose of producing his work; that is infact,
merely to take away the result of another man’s labour or, in other words his property. In
Macmillan vs Suresh Chander Deb61 case Sir Arthur Wilson stated that the above principles
applies to maps, guide books, street directories, dictionaries and to compilations of scientific
work and other subjects, selection of poems etc. The Calcutta High Court in Jagdish Chand
vs Mohim Chandra62 held that the reporter has copyright in the selection and arrangement of
the judgments but not in the reports of the judgments. As per section 13(1) of the Copyright
Act 1957, copyright subsists in original literary, dramatic, musical and artistic works,
cinematograph films, and sound recordings. Again sub section (2) of the same section states
that copyright shall not subsist in any work specified in sub section (1) , other than a work to
63
which the provision of section 40 or section 4164, apply, unless in the case of a published
work, the work is first published in India, or where the work is first published outside India,
the author is at the date of such publication, or in a case where the author was dead at that
date, was at the time of his death, a citizen of India; in the case of a unpublished work other

58 1924, Privy Council, 75.

59
1845, 8 F.Cas.615
60
95-10918 (5th Cir. 1996
61 ILR 17 C, 951
62 AIR 1981 (Cal) 112.
63 Power to extend copyright to foreign works. See Copyright Act 1957, Section 40
64 Provisions as to works of certain international organizations. refer Copyright Act 1957 , section 41.
85
than an (work of architecture65), the author is at the date of the making of the work a citizen
of India or domiciled in India; and in the case of an (work of architecture), the work is
located in India.

Though the word, “original” is not used to qualify a ‘cinematograph film’ or a ‘sound
recording’ section 13(3) explains it. The basic requirement of a work is that the work, must
be original, but then a question arises as what level of “originality” in a work is sufficient for
copyright protection. This was discussed by the Supreme Court recently in Eastern Book
66
Company vs D. B. Modak as to the standard for copyrightability of works. This case
became a precedent for other cases in deciding as what works are ‘original’ works. The
Supreme Court in this case lays down the standard for copyrightable in as clear terms as
possible. It held that the test of “minimum skill and judgment’ would be applicable for
determining whether copyright subsists in any derivative works. It opined that that mere
selection is not sufficient, a modicum of creativity is necessary to transform mere selection
into copyrightable protection in the case of copy-edited judgments. The Court held that
“minimum of creativity” test and the ‘skill and judgment’ test is applicable and expressly
rejected the “sweat of the brow” test (on reporting or compilation of judgments). This case
became a precedent for other cases in deciding as what works are ‘original’ works. In this
case the appellant, The Eastern Book Company (EBC) was a leading law book publisher, and
its reporter titled “Supreme Court Cases”. The SCC cases were copy-edited by procuring
judgments and orders of the Supreme Court by making changes to the presentation and
format which made it easy for the reader. The respondents were admittedly digitizing the
volumes of SCC and selling them in Compact discs. EBC filed for injunction restraining the
respondents from doing so. The contention of EBC is that, SCC being a product of its skill,
labor and expertise constituted an ‘original literary work’ in which copyright subsisted under
Section 13 of the Copyright Act, 1957 67. EBC alleged that the respondents had, by copying
the sequencing, selection and arrangement of the cases coupled with the entire text of copy-
edited judgments as published in SCC, infringed EBC’s exclusive copyright over the same.
The head notes prepared by EBC was not the issue in this case as it is already admitted by the

65 Subs. by Act 38 of 1994, S. 2, for “architectural work of art”(w. e. f. 10-5-1995)

66 (2008) 1 SCC 1, AIR 2008 SC 809, (2007) 13 SCR 182, 2008(36) PTC 1.
67 Section 13(1) of the Act “subject to the provisions of this Act , Copyright shall subsist throughout India in the
following classes of works, that is to say –a) original literary, dramatic, musical and artistic
works;b)cinematograph films; and c) sound recording. ”
86
respondents in the High Court that EBC owned the copyright in it. The respondents
contention is that judgments delivered by judicial authorities are government works as
defined in section 2(k) of the Act and that publishing such judgments would not constitute
infringement by virtue of Section 52(1) (q)(iv). It was submitted by respondents that SCC
was a derivative work lacking the creativity required to qualify as an “Original”literary work.
SC had to look into foreign judgments placed before it. The EBC relied on certain English
judgments on ‘Sweat of the Brow’ standard to contend that if a man expended time and effort
in first putting on paper that was already out in public domain, the copyright would vest in
68
him. The judges felt that these judgments to be consistent with the ‘sweat of the brow’
standard of originality. But then these decisions did not actually support the contention of
EBC. It was opined that while the labour expended on a project was a material factor, the
emphasis was certainly on the result produced by this labour. The judges noted that none of
the judgments were delivered in the context of a work relating to decision by any judicial
authority, the copying of which was statutorily excluded from the ambit of copyright
infringement. The judges then looked into the ‘minimal creativity’ standard. The respondents
too relied on judgments of American courts in the context of what they referred to as
derivative works. In one of the important judgments, US Supreme Court rejected the ‘sweat
of the brow’ approach stating that copyright protection could not apply to facts themselves. 69
As per the decisions relied by the respondents, factual compilations were protected as long as
the author had applied his skill and judgment in selecting the facts for inclusion and deciding
the order and arrangement of the collected data so that they may be used effectively by
readers. These choices as to selection and arrangement, so long as the they were made
independently by the compiler and entailed a minimal degree of creativity, could be treated as
sufficiently original70. Then the Supreme Court dealt with the test ‘skill and judgment’
standard. While dealing with this test the Canadian Supreme Court decision in CCH
71
Canadian Ltd vs Law Society of Upper Canada was referred by Indian Supreme Court. In
this case the Canadian SC while determining the test of originality noted conflicting views.

68 Judgments relied on by EBC were Ladbroke v Hill (1964) 1 All E. R. 465; Walter v Lane (1900) AC
539;University of London Press Limited v University Tutorial Press Limited (1916) 2 Ch 601.
69 Feist Publications Inc. v Rural Telephone Service Co. 499 U. S 340 (1991),
70 Connor, J, in Feist. Publications Inc. v Rural Telephone Service Co, 499 U. S. 340(1991)
71
2004(1) SCR 339.
87
According to it, at one end was the ‘sweat of the brow’ or industriousness standard72.The
practical consequence of adopting this standard was that the defendant would have to verify
every original source used in the plaintiff’s work. At the other end were those decisions
which insisted that a work must be creative in order to be original. The Canadian SC rejecting
the former standard as too low and latter as being too high it took the view that to claim
copyright in a compilation, the author must produce a material with exercise of skill and
judgment that may not be creative in the sense of being novel or non-obvious, but at the same
time was not the product of mere labour and capital. The skill and judgment required to
produce the work could not be so trivial as to render it a purely mechanical exercise. The
Supreme Court of India decided to apply the principle laid down by Canadian SC for
resolving the dispute. In doing so , the Court was influenced by the fact that SCC was a
derivative work, and that copying of a judgment delivered by any judicial authority would not
constitute copyright infringement under section 52(1)(q)(iv) of the Act. This made the Court
to take the view that copy-edited judgments would not be entitled to copyright protection
merely by virtue of skill, labor and capital expended in the inputs by EBC and that the
changes made should be sufficient to impart to the copy-edited judgments some quality or
character which the original judgment did not possess and which differentiated the original
73
judgment from the printed one. Rejecting the ‘sweat of brow’ doctrine, the SC held that
this would not apply to the judgments of courts because there was no copyright in the
judgments of the courts, unless so made by court itself. Applying the test of ‘skill and
judgment’ the SC concluded that changes effected by EBC such as adding cross-citations to

72 The Canadian Supreme Court cited the decisions in University of London Press Ltd v University Tutorial Press
Ltd( 1916) 2 Ch. 601, and U & R Tax Services Ltd v H & R Block Canada Inc. (1995) 62 CPR (3d) 257 (FCTD)
as illustrative of this standard.
73 In the words of the Court “It is admitted position that the reports in the Supreme Court Cases of the judgments of
the Supreme Court are a derivative work in public domain. Sub-clause (iv) of clause (q) of section 52(1) 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. 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 copy-edited judgments when the
original or innovative thoughts for 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 and 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 with the printed one.
–The derivate work produced by the author must have some distinguishable features and add flavour to the raw
text of the judgments delivered by the court.
88
the cited cases, the exact paragraph and page number of the cited portion in these cases,
marginal headings, names of the judges on whose behalf any opinion is written , making
corrections in the extracted portion as well as the main text , supplying ellipsis and words that
may have been missed out, re-numbering the clauses of the statutory provisions relied on,
compressing the information relating to the case- history, and changes of a similar nature on
which capital and labour may have been expended but lacking in even minimal creativity,
were not entitled to copyright protection. On the other hand, the inputs introduced to the
original text by way of 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 had dissented or concurred, by introducing phrases such as
‘concurring’, ‘partly concurring’, ‘partly dissenting’, ‘dissenting’, ‘supplementing’, ‘majority
expressing no opinion’, etc were held entitled to copyright protection. On the basis that these
tasks require the exercise of skill and judgment in great measure, the ability to display
knowledge, sound judgment, legal skill and discernment and did not amount to a mere
mechanical process. The court found the requisite minimum amount of creativity to be
present in such tasks, for the purpose of conferring copyrightability on the end result of such
tasks. Recently in (2012) Eastern Book Company v Thomas Reuters74 the District judge of
Lucknow passed exparte injunction he found that the defendant had, in its online database
www.Westlawindia.com, unauthorisedly reproduced the editorial notes found in Supreme
Court Cases and other law reporters published by the plaintiff. The judge relied on the
decision in Modak to hold that copyright vested with the plaintiff in so far as the editorial
notes were concerned, since this part fulfilled the test of skill and judgment. In subsequent
case in Dr. Reckeweg & Co. GmBH v Adven Biotech Pvt. Ltd75. the Delhi High Court applied
the ‘Modak case’ test of ‘skill and judgment’ and minimal creativity standard test in deciding

74
O.S 115/2012
75 2008 (38) PTC 308. Here the plaintiff asserted copyright protection in the catalogues prepared for its R-series of
homeopathic drugs. The defendant had come out with it’s A-series of homeopathic drugs, which the plaintiff
contended was nothing but a slavish limitation of its R-series, except for the replacement of the alphabet ‘R’with
‘A’. The plaintiff also contended that the defendant had copied the detailed catalogues prepared by the plaintiff in
respect of the R-series, as evidenced by the presence of common mistakes in both the plaintiff’s and the
defendant’s catalogue. The plaintiff further alleged copyright infringement by the defendant on the ground that
they were reproducing unique compositions of the plaintiff’s medicines, the proprietary rights in which were
vested with the plaintiff by virtue of the registered copyright in the medical literature. The High Court was called
upon to discuss the issue of copyrightability in relation to the nomenclature of drugs, the listing of medicines in a
particular fashion, and the compilation containing the description and the curative effect of each of the R-series
drugs.
89
copyrightability/protection of works in compilations and information lists. The court applied
the test of skill and judgment to each of the copyrightable components, and concluded that
the nomenclature of the drugs as alphanumeric series did not reveal any amount of creativity
or exercise of skill and judgment on the part of the plaintiffs and that the curative element
compilation by plaintiff is also lacks skill and judgment in describing the curative elements.
The court observed that compilation of names, the series of the medicines, its curative
elements etc were not individually capable of copyright protection. It observed that where
several components of copyright protection were claimed, the court had to examine each of
them and also the impact of protection/denial of each on the whole, while assessing the
impact of the ‘overall’ assessment. But the Bombay High Court in Alcon Inc vs Ajanta
76
Pharma Ltd observes that copyright protection is available in the case of product inserts
enclosed along with the bottle inside the packing, which were purely descriptive in character
and without much creativity involved in their wording as most of the language is purely
technical. This decision raises a question as whether Modak case created a standard of
originality for any kind of work to be entitled to copyright protection or not ? or whether it is
misapplication of principle laid in Modak in subsequent cases. In recent case the Delhi High
Court in Emergent Genetics India Private Limited vs Shailendra Shivam case77 observed that
the standard for judging “originality” had undergone a radical change from the time, a work
was deemed original if it was the product of the ‘sweat and brow’. It is further observed that
Indian copyright law mandates that not every effort or industry, or expending of skill, results
in copyrightable work, but only those which create works that are somewhat different in
character, involve some intellectual effort, and involve a minimum degree of creativity. 78

The copyrightability of works of text books and question papers arose in the case of The
Chancellor Masters and Scholars of The University of Oxford vs Narendera Publishing
House79 the issue in this case is about the student text books published by the plaintiff for
XIth Standard students of J&K State Board and that it holds the copyright for the literary

76 2009 (39) PTC 489(Bom)

77 2011(47) PTC 494, 2011(125) DRJ 173
78 Applying this test to the facts, the High Court concluded that sequences obtained from nature (eg. , the sequence
for a gene) could not per se be original. The role of the microbiologist or scientist involved in gene sequencing
was to discover facts. Such a scientist merely copied from nature , genetic sequences that contained codes for
proteins. Hence there was no independent creation of a ‘work’, essential for fulfilling the originality requirement
and for meeting the standard of minimum creativity.
79 2008(38) PTC 385, 2008(106)DRJ 482, MIPR 2008(3) 402.
90
work and has alleged copyright infringement of their text books including the questions
therein, because of the inordinate effort it put in presentation of information in a lucid manner
and its over all scheme in the text books. The defendants published guide books that gave
detailed step-by-step solutions to the questions contained in the plaintiff’s text books and for
this purpose, were reproducing the questions as given in the latter’s text books in the same
order and sequence. The single Judge opined that the sequencing and arrangement of the
questions fitted the correct fashioning of the ‘learning curve’ and could be the subject matter
of copyright protection and regarding the skill & judgment involved the involvement of the
J&K State Board and its mandatory instructions to the plaintiff in this regard disregarded the
plaintiff’s efforts in this direction of any skill and judgment. The Delhi High Court referred to
its prior judgments80 wherein it held that an examination question paper was a ‘literary work’
within the purview of Copyright Act 1957 81. But the division bench of Delhi High Court in
its common order in Cambridge University v B D Bhandari82 & O. U. P v Narendera
Publishing House83 has differed from the view of single Judge on the issue of
copyrightability, though confirming its refusal of injunction on the ground of fair use84. The
Division Bench said that, though mathematics is the expression of laws and nature, but if a
person writes a book adopting his own innovative methods in making the subject easily
understandable, such a work would be result of his creative thinking and would become

80 Rupendra Kashyap v Jiwan Publishing Ho use 1996(16) PTC 439, Where HC relied on its earlier decisions in
Agarwala Publishing House v Board of HS & I Education AIR 1967 All 91 and University of London Press Ltd
v University Tutorial Press Ltd 1916 2 CH 601.
81 In University of London Press Ltd v University Tutorial Press Ltd Peterson J commented that ‘If an author, for
purposes of copyright, must not draw on the stock of knowledge which is common to himself and others who are
students of the same branch of learning, only those historians who discovered fresh historical facts could acquire
copyright in their work. If time expended is to be the test, the rapidity of an author like Lord Byron in producing a
short poem might be an impediment in the way of acquiring copyright, and the more complete his mastery on his
subject , the smaller would be the prospect of the author’s success in maintaining his claim to copyright. The
preparation of a question paper by any examiner involves selection, judgment and experience. The questions are
prepared to test the students’acquaintance with the book thus question papers are original literary works. (1916
2Ch. D. 601. )
82
2005 (31) PTC 58 Del
83
I.A. 9823/2005, 51/2006 and 647/2006 in CS(OS) 1656/2005
84 The Division Bench said “It is Mathematics which is the expression of laws and nature. However, there can be
different ways of explaining and touching this subject. If a person writes a book on Mathematics adopting his
own innovative methods in making the subject easily understandable, such a work would be the result of his/her
creative thinking and would become a subject matter of copyright protection…It would be equally a matter of
creativity to devise and think of such questions in the field of Mathematics that may give better understanding of
the subject to the readers/students. Therefore, according to us, doctrine of ‘modicum of creativity’is present when
even mathematical questions are framed by the author of the book to test the knowledge and understanding of the
students. In the area of Mathematics itself, a particular topic can be in the course at different levels….. How this
very topic is to be taught to the students at lower level and higher level would itself be a matter of challenge and
creativity for author.
91
subject matter of copyright protection. According to US, doctrine of ‘modicum of creativity
is present when even mathematical questions are framed by the author of the book to test the
knowledge and understanding of the student.

Whether commentaries on Act are copyrightable works? It is said that copyright subsists in
commentaries on Acts because the author of a commentary on an Act makes considerable
effort by his skill, labor and knowledge and judgment in selecting materials from a large
number of judgments which are spread out in many volumes, by arranging and editing them
for the purpose of stating the principles of law and practice as enunciated in the judgments
and for interpreting the various sections of the Act as opined by the judge in Sampath
Ayyangar vs Jamshedji Kanga case 85.

Historical works are not copyrightable because it is general designed to convey information
to the readers. Though there is no copyright in information. But the manner in which it is
presented makes it an original literary work. A book of history not only contains bare facts
but also inferences drawn by the author’s own efforts on the facts narrated and their
relationship.

Copyright subsists in private letters, commercial letters and government letters as they are
original literary works. In case of private letters, the author is the owner of copyright and in
case of commercial or government letters written by employees in the course of employment
the copyright in the letter belongs to the employer as per section 17(a) of the Indian
Copyright Act. When a person sends a letter to the newspaper, the newspaper gets a implied
licence to publish it and also a right to edit or alter it so long as it does not affect the literary
86
reputation of the writer. In Walter v Lane it was held that the letters addressed by one
person to another person is said to be the original literary works entitled to copyright. The
recipient of the letter becomes the owner of the letter but he has no right to publish the letter
without the consent of the writer87. If a letter is dictated to a stenographer or typist the
copyright in the letter belongs to the person who has dictated the letter.

Whether the ‘databases’ are included in the definition of ‘literary work’? Databases are
included in the literary works by virtue of Section 2(o) by an amendment in Indian Copyright
Act 1999. The Act does not define database. It is defined in the Information technology Act

85 Sampath Ayyangar vs Jamshedji Kanga C. S. No. 350 of 1951 dt. 26. 4. 52(Madras)
86 Walter v Lane (1900) AC 539; British Oxygen v Liquid Air(1925) Ch 383.
87 Macmillan & Co. vs Dent (1907) 1 Ch D 107.
92
 88
2000. Whether lectures delivered by a person is an author of a literary work or a
performer? The Berne Convention in Article 2(3) states: “It shall, however, be matter for
legislation in the countries of the Union to prescribe that works in general or any specified
categories of work shall not be protected unless they have been fixed in some material form”.
In the US, copyright protection is provided for works of authorship fixed in any tangible
medium of expression, now known or later developed from which they can be perceived,
89
reproduced or otherwise communicated directly or with the aid of machine or device. In
UK, the Copyright, Designs and Patents Act, 1988 makes fixation an essential requirement
90
for a work to be called a literary work. In India, the position is very ambiguous. This is
evident from section 2, 14 and 17. Section 2(qq) treats a person delivering a lecture as a
“performer” whereas Section 17 proviso (cc) provides that a person delivering the lecture in
public holds a copyright in his literary work and is thus an “author” but when the lecture is
delivered to a private audience then the Act is silent. The inclusive definition of literary work
section 2(o) is silent about lectures but the reproduction right under the section 14 (a) (i) is
applicable when a work is produced in a material form thus making requirement of fixation
as mandatory. For eg If a person reads a paper to an audience, he is said to have a copyright
in the paper, it being a literary work and performer’s right in the performance as delivery of
lecture is a performance. Another example is if X delivers a lecture to a private audience X is
a performer under section 2(qq) as section 17 proviso (cc) has deliberately omitted private
lectures. X does not have a copyright but has performers right in his performance by virtue of
section 38 as conferred by Copyright Amendment Act 1994. Now if Y, a part of audience
publishes the lecture of X then X cannot file a suit of infringement of his copyright. X,
however, can use his right to restrain a breach of trust or confidence against Y as there is a

88 ‘As a representation of information, knowledge, facts, concepts or instructions in text, image, audio, video that are
being prepared or have been prepared in a formalized manner and have been produced by a computer, computer
system or computer network and are intended for use in a computer, computer system or computer network.
89 US Code Title 17 as cited in Jeffrey M. Samuels, Patent Trade Marks and Copyright Laws (2001 Ed)
90 Section 3 of CDP Act 1988 : “Copyright does not subsist”, In this part-‘literary work’means any work , other
than a dramatic or musical work, which is a written, spoken or sung, and accordingly includes-a) a table or
compilation other than a database; b) a computer programme, c) preparatory design material for a computer
program and d) database.
‘dramatic work’includes a work of dance or mine; and ‘music work’means a work consisting or music, exclusive
of any works or action intended to be sung, spoken or performed with the music. Copyright does not subsist in a
literary, dramatic or musical work unless and until it is recorded , in writing or otherwise; and references in this
part to the time at which such a work is made are to the time at which it is so recorded. It is immaterial for the
purposes of sub section (2) whether the work is recorded by or with the permission of the author; and where it is
not recorded by the author, nothing in that sub- section affects the question whether copyright subsists in the
record as distinct from the work recorded.
93
trust between the speaker and the audience that the audience will not make use of the lecture
91
for any purpose other than the one which it is delivered. If Y makes a sound recording or
visual recording of X’s lecture for commercial gain without his authorization then, X can file
a suit for infringement of his performer’s right under section 38A or for breach of confidence
under section 16.

3.3.5 Artistic works

According to section 2(c) of the Copyright Act 1957 , Artistic work means i)a painting, a
sculpture, a drawing (including a diagram, map, chart or plan) , an engraving or a photograph,
whether or not any such work possesses artistic quality; ii) a work of architecture92 and iii)
any other work of artistic craftsmanship. Only requirement is, it should be original work.
Artistic work is any color scheme or get up or layout or arrangement of any alphabets or
features is undoubtedly an artistic work. The artistic work or the color scheme get up, layout
of arrangement of distinctive features including the style of the letters or alphabets confer the
copyright upon the owner and thereby entitles him to protect the same by way of statutory
93
remedy provided under the Copyright Act. WIPO guide observes “the category of visual
arts covers virtually all artistic works whether in two dimensions (drawings, engravings etc.)
or in three (sculptures, statutes etc.) independent of their nature (figurative or abstract) and
their intention (pure or commercial art)94.Section 2(i) defines engravings to include etchings,
lithographs, wood-cuts, prints and other similar works not being photographs. Section 2(s)
defines a photograph to include photo-lithograph and any work produced by any process
analogous to photograph but does not include any part of a cinematograph film. The word
drawing is not defined in the Act except that drawing of any kind whether or not it possesses
any artistic quality would be covered by the term ‘artistic work’. This means that even
mechanical or engineering drawings are “artistic work” entitled to copyright protection. The
requirement in respect of painting, sculpture, drawing, engraving or a photograph, the work
need not have an artistic quality that is not required to meet any aesthetic standard but should

91 Section 16 of copyright Act 1957 reads : No person shall be entitled to copyright or any similar right in any work,
whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or of
any other law for the time being in force , but nothing in this section shall be constructed as abrogating any right
or jurisdiction to restrain a breach of trust or confidence.
92 Substituted by Act 38 of 1994, w. e. f 10. 5. 1995.
93 Glaxo India Ltd v Akay Pharma Pvt. Ltd. , 2002(2) Raj. 275
94 WIPO, Guide to the Berne Convention for the Protection of Literary and Artistic: Works (Paris Act, 1971) (1978)
p. 16.
94
be an original work and not a copy of any other work. The fundamental principles applicable
for literary work should also be applicable to dramatic, musical and artistic works. In all these
categories the derivatives are also held to be ‘original’ if the author has applied sufficient
labour and skill. In each case it depends on facts. Derivative drawings are not to be dissected
into what was original and what had been reproduced from previous drawings, but to be
considered as a whole. The work of architecture is defined in section 2(b) of the Copyright
Act, 1957 -as “any building or structure having an artistic character or design or any model
for such building or structure”. A number of steps are involved in creating a work of
architecture. An architect designs and supervises the construction of a building. The first step
is the making of a plan, which is treated as ‘drawing’ or an “artistic work”, that is, protectable
subject matter under section 2(c) of the Copyright Act. Some process or method of
construction is then employed in order to erect a structure on the basis of plan. Section 13(5)
clarifies that the process or method of construction does not form protectable subject matter.
The structure or the building does not form protectable subject matter unless it has an artistic
character or design that is, has some aesthetic value95. The work of artistic craftsmanship
refers to the quality of being artistic. Firstly the work has to be of a craftsman and secondly it
has to be of artistic value. Under section 14 of the Act, in respect of the artistic work, the
copyright extends to reproduction of the work in any material form including 2-dimensional
or 3-dimensional work.; communication of the work to the people; issuing copies of the work
to the public whether already in circulation or not; inclusion of the work in any
cinematograph film; making any adaptation of the work reproduced and communicated etc.

3.3.6 Cinematograph Films

According to section 2(f) of the Copyright Act, 1957 “Cinematograph film” as amended by
the amendment of 2012, means any work of visual recording including any work produced
by any process analogous to cinematography including video films. The protection is
extended to the sound recording accompanying such visual recording96. According to Berne

95 Section 2(b) of the Copyright Act, 1957. In US an Amendment to Copyright Act in 1990 extended protection to
architectural works including protection for the overall form as well as the arrangement and composition of
spaces and elements in the design but excluded protection for individual standard features (Article 101)
96 In Restaurant Lee v. State of Madhya Pradesh AIR 1983 MP 146, it was held that the exhibition of movies by
playing back pre-recorded cassettes in restaurants falls within the ambit of “Cinemas’ under the Madhya Pradesh
Cinema (Regulations) Act 1952 that when a video cassette recorder is used for playing pre-recorded cassettes of
movies on the television screen, it is certainly used as an apparatus for the representation of moving pictures or
series of pictures. In Balwinder Singh v. Delhi Administration AIR 1984 Del 379(DB) (referred to in Tulsidas v
Vasantha Kumari (1991) 1LW(Mad) 220 at 229) it was held that video and television are both cinematograph
95
Convention Article 2(1) which states “works expressed by process analogous to
cinematography”under “cinematographic works”. It includes films or videotaped fixations of
traditional dramatic works such as plays, comedies, documentary films, cartoons, regardless
of the technical process employed97. The US Copyright Act of 1976, section 101 defines
motion picture “as audio visual works consisting of series of related images which, when
shown in succession, impart an impression of motion, together with accompanying sounds, if
any. “According to UK, Copyright, Designs and Patent Act 1988, section 5B provides that
the term (1) “film” means a recording on any medium from which a moving image may by
any means be reproduced. (2) The sound track accompanying a film shall be treated as part of
the film. Without prejudice to the generality of sub-sec (2) where that sub-sec applies –
references in this part to showing a film include playing the film sound track to accompany
the film, and references to playing a sound recording do not include playing the film sound
track to accompany the film. 4) copyright does not exist in a film which is, or to the extent
that it is a copy taken from a previous film. 5) nothing in this section affects any copyright
subsisting in a film or sound track as a sound recording.

Copyright subsists in a film if it is made by an Indian Citizen. If it is not made by Indian

citizen then, it should have been first published in India. If it is a foreign film it gets
protection in India if they fulfill certain requirements like, if the film is unpublished, then it
should have been made by a citizen of a Berne Convention country as per section 3(c),
International Copyright Order, 1999 and if the film is made or published by a corporation
incorporated in a convention country or the film is first made or published in the convention
country. Further the owner of a copyright in a film, i. e the producer as per section 2(d)(v) has
a bundle of rights in his film. Cinematograph films are available in the market in video
cassettes and ‘optical discs’ which includes VCD’s (Video Compact Disc), DVD’s (Digital
versatile disc) and LD’s (Laser Disc). Again the copyright shall not subsist in any
cinematograph film, if a substantial part of the film is an infringement of the copyright in any
other work according to section 13(3) of the Copyright Act. Sub-sec (4) of the same section
says that the copyright in a cinematograph film or a (sound recording)98 shall not affect the
separate copyright in any work in respect of which or a substantial part of which, the film, or

and that both are jointly and severally apparatus for the representation of moving pictures of series of pictures and
come within the scope of section 2(e) of the Cinematograph Act.
97 WIPO, Guide to the Berne Convention for Literary and Artistic works.
98 Subs. By Act 38 of 1994, for word ‘record’, w. e. f. 10-5-1995
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as the case may be, the (sound recording) is made. The sound track in the film is included in
the copyright protection.99 In Fortune Film International v Dev Anand100 case Justice
Krishna Iyer explains about cinematograph as Cinematograph is a felicitous blend, a beautiful
totality, a constellation of stars. Cinema is more than long strips of celluloid, more than
miracles in photography, more song, dance and dialogue and, indeed, more than dramatic
story, exciting plot, gripping situations and marvelous acting. But it is that ensemble which is
the finished product of orchestrated performance by each of the several participants, although
the components may, sometimes, in themselves be elegant entities. Copyright in a cinema
film exists in law, but S. 13(4) of the Act preserves the separate survival, in its individuality,
of a copyright enjoyed by the ‘work’ notwithstanding its confluence in the film. The making
of a film involves performance by various actors, dancers etc. Once such performers
consented to the incorporation of their performance in a film, they lost their performer’s
101
rights in their performance prior to the 2012 amendment. The amendment of 2012 has
deleted section 38 and introduced a new section 38 A that has brought changes for the rights
of audio visual performers102. With regard to photograph in Star India Private Ltd. v Leo
Burnett (India) Pvt. Ltd103, the Bombay High Court held that section 2(s) provides that where
anything which forms a part of or is included in a cinematographic film does not fall within
the definition of ‘photograph’ under the Act. Under section 2(s), ‘a frame or image which
forms a part of the film is excluded from photograph’. Hence such image does not fall within
the meaning of photograph in section 14(d)(i).

With regard to sound recording, Section 2(xx) of the Copyright Act 1957, “sound recording
means a recording of sounds from which such sounds may be produced regardless of the
medium on which such sound recording is made or the method by which sounds are
produced”. It includes an ordinary disc, cassette, tape, compact disc, digital audio tape and
any future technical developments. In the year 1984, section 52 A(1) was introduced by the
amendment which requires the following particulars to be displaced on sound recording and
on any container thereof i.e., the name and the address of the person who has made the sound
recording; the name and address of the owner of the copyright in the work, the year of its first

99 Indian Performing Rights Society v. Eastern Indian Motion Pictures Association AIR 1977 SC 1443.
100 AIR 1979 Bom 17 at 21(DB)
101 Section 38(4) of Copyright Act prior to 2012 amendment.
102 Section 38 A in realtion to the changes made by the amendment of 2012 with respect to the rights of the audio
visual performers.
103 2003 (2) RAJ 518(Bom)
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publication. According to UK, CDP Act 1988, section 5 (A) defines “sound recording” as a
recording of sounds from which the sounds may be reproduced or a recording of the whole or
any part of a literary, dramatic or musical work, from which sounds reproducing the work or
part may be produced regardless of the medium on which the recording is made or the
method by which the sounds are reproduced or produced. Copyright does not subsist in a
sound recording which is or to the extent that it is a copy taken from a previous sound
recording. The more recent technological developments in sound recording are Direct Metal
Mastering (improving sound quality and preventing its deterioration over a great number of
play backs), Compact Digital Discs (CD, enabling digital play back with laser optics), Digital
Audio Tapes, and small digital audio cassettes.104

Section 2(dd) of the Indian Copyright Act 1957 defines “broadcast”105 means communication
to the public- i) by any means of wireless diffusion, whether in any one or more of the forms
of signs, sounds or visual images; or ii) by wire, and includes a rebroadcast. In Garware
Plastics and Polyester Ltd. Bombay v M/s. Tele Link and Others106, the Bombay High Court
dealt with the concept of Broadcast and communication under the Copyright Act, it was
observed by Justice Manohar as “to consider whether by showing video films over Cable
T.V.Network to various subscribers, the defendants are broadcasting video films to the public
and thereby infringing the copyright of the plaintiffs. The contention by defendants is that by
means of a Cable T. V. Network, a film is shown only inside the private homes of various
subscribers. It may be watched by the members of subscribers household or his guests. Such
a viewing cannot be considered as broadcasting to the public.. Therefore there is no breach of
copyright in video films. There is no dispute that the defendants are showing cinematograoph
films over Cable. T. V. Network, the question is whether it amounts to a broadcast i.e
whether it amounts to communication of the film to the public or not. Whether a
communication is to the public or whether it is a private communication depends essentially
on the persons receiving the communication. If they can be characterized as the public or a
portion of the public, the communication is to the public. This test has been applied in a
number of cases decided by English Courts under the English Copyright Act 1911. The
language of English Act 1911 is somewhat different from the language of our Act. Hence to

104 J. Glusman Lawrence, It’s my Copyright ? Music Industry Power to Control Growing Resale Markets in Use
Digital Audio Recordings, 70 Wisconsin Law Review(1995) p. 20.
105 Section 2(dd), inserted by the Copyright (Amendment) Act 1983.
106 AIR 1989 Bom. 331
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be applied with caution. In the case of Messenger v. British Broadcasting Company Ltd107,
the plaintiff who was a composer of a well- known comic opera called “The Little Michus”
gave to a theatrical producer the right to perform the opera. The theatrical producer in turn
gave a licence to the BBC to broadcast the performance. The plaintiff sued the BBC for an
infringement of his copyright in the opera. One of the defences taken by the BBC was that the
broadcast was not a performance in public within the meaning of the Copyright Act 1911. It
contended that the performance was in the private studio of the BBC where public was not
admitted. By mechanical and electric devices the performance was heard by the public who
possessed radios. The Court however negatived the contention. It said that to broadcast an
opera by wireless telephony was to “perform” it “in public” with in the meaning of English
Copyright Act, 1911. It said that whether a performance is in public or not must depend on
the circumstance of each case. A purely domestic or private performance will not amount to
an infringement of copyright. It said that by broadcasting the opera, the defendants clearly
gave a public performance. Instead of gathering the public into a vast assembly room, they
set in motion certain either waves knowing that millions of receiving instruments in houses
and flats were turned to the waves sent forth, and knowing and intending also that acoustic
representation of the opera would thereby be given to an enormous number of listeners. Then
the decision was reversed by the Court of Appeal on other grounds relating to the nature of
the agreements between the plaintiff, the theatrical producer and the BBC. 108

3.4 ‘Idea’ and ‘Expression’ Dichotomy

The copyright law clearly states that there is no copyright in an idea but it is the expression of
an idea that is protected. 109 The Indian Copyright Act, 1957 is silent on this. But we find the
same rule in international conventions. The TRIPS agreement Article 9(2) states that,
“Copyright protection shall extend to expressions and not to ideas, procedures, methods of
operation or mathematical concepts as such”. The World Copyright Treaty 1996, Article 2,
also uses the same language as in TRIPS agreement. The Indian Courts held in several cases
that there is no copyright in an idea or ideas, the copyright vests in the expression of an idea.
It is difficult to say where an idea ends and as where the expression begins, as it depends on

107 Reported in 1927, 2 KB 543

108 Vide 1928 , 1KB 660
109 Jeffrey’s vs. Boosey (1854) 4 HCC 815; Deeks vs. Wells AIR 1933 PC; Black’s Law Dictionary, 8th ed. , p. 761.
99
facts of each case. In R. G. Anand v. Delux Films110 case the plaintiff is playwright, dramatist
and producer of stage plays who wrote a play entitled “Hum Hindustani” based on the idea of
provincialism and parochialism. The defendants made the film “New Delhi” which portrays
three main themes. Two aspects of provincialism, one the role of provincialism with regard to
marriage and other in renting out accommodation the third aspect was evils of dowry. After
the picture released there were comments in newspaper that the picture is very much like the
play. The Court observed that after a close perusal of the film, it clearly shows that all the
three aspects mentioned above are integral part of the story and it is very difficult to divorce
one from the other without affecting the beauty and the continuity of the script of the film. It
appeared that the treatment of the story of the film is in many respects different from the
story contained in the play. A close comparison of both the film and the play except for the
central idea of provincialism which is not protected by copyright the picture is different from
the play in every aspect. It is in this case, the Supreme Court had laid down the following
propositions. a) That there can be no copyright in an idea, subject matter, themes and plots or
historical or legendary fact 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. b) If the same idea is developed in a different manner, that the source being common,
similarities bound to occur in such 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 defendants work is a literal imitation of the copyrighted work
with little variation then it amounts to violation of the copyright. To be actionable, the
defendant should be guilty of act of piracy. c) Another test to determine violation of
copyright is to see if the reader, spectator or viewer after having read or seen both the works
is clearly of the opinion and gets an unmistakable impression that the work appears to be a
copy of the original. d) where the theme is the same but is presented and treated differently so
that the work becomes a completely new work, no question of violation of copyright arises.
e) Apart from the similarities appearing in the two works there are also material and broad
dissimilarities which negative the intention to copy the original and the coincidences
appearing in the two works are clearly incidental no infringement in copyright comes into
existence. f) Violation of copyright amounts to act of piracy and therefore must be proved by
clear and cogent evidence after applying the various test laid down by the case law. g) where

110 AIR 1978 SC 1613

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the question is violation of copyright of a stage play by a film producer or a director the task
of the plaintiff becomes more difficult to prove piracy. Because unlike the stage play, a film
has much broader perspective, wider field and a bigger background where the defendants can
be introducing a variety of incidents to 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 copyrighted might be said to be proved.

Recently because of territorial expansion of television at a faster pace in our country there
had been numerous instances where an individual has thought of an idea or a plot or a theme
to be shown on television in the form of a serial but lacks resources to make it. A person
approaches a channel with a production plan and intends to sell his idea to the television
production house. Instead of material gain that person’s idea gets picked up by the production
house on the ground that there is no copyright in an idea, theme or a plot. But where the
person who thought of the idea or a plot for the television show conceptualizes that idea in
the form of a concept note and gives it to a TV channel to consider the option of converting
the idea into work then the problem arises and copyright law comes into play. This problem
has been discussed in several cases.111 The Courts have held that in the modern day, when the
small screen has taken over the earlier means of the mass communication like radio,
idea/concept/script of a broadcaster has wider potentiality of capitalizing revenue and if that
idea/ concept /script is not protected then in a given case, a person who has conceived an idea
to be translated into a reality TV show which could be key to its success with the audience
then the channels with their enormous resources could always be in a better position to take
the idea/theme/concept from any author and then develop at their own end and the original
author of the concept will be left high and dry. In such cases interlocutory injunction may be
issued restraining such breach of confidentiality of the theme, concept or scripts otherwise it
would be catastrophic for the television industry.

3.5 Types of Copyrights

The owner of copyright is bestowed with several rights under the Act. In general, the
following are the two types of rights that are granted by way of copyright protection – moral
and economic rights. The term “moral rights” is a translation of the French term “droit

111 Anil Gupta v Kunal Dasgupta2002 (25) PTC 1 (Del) ; Zee Telefilms Ltd v Sundial Communications 2003 (27)
PTC 457(Bom) (DB); Urmi Juvekar Chiang v. Global Broadcast News Limited 2008 (36) PTC 377(Bom)
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moral”,refers not to “morals” as advocated by the religious right, but rather to the ability of
authors to control the eventual fate of their works. Moral rights are personal rights of the
author. It cannot be transferred to other people including heirs. They exhaust at the death of
the author, but, moral interests of the late author are protected to some extent by the
Copyright Law even after his/her death. An economic right on the other hand, is transferable.
It can be transferred by way of sale, assignment, succession, etc. Therefore, if an economic
right is assigned to someone, the assignee will become the “copyright owner” although the
original author continues to be the “author” with moral rights.

Under the Berne Convention for the Protection of Literary and Artistic Works ‘moral rights’
are the un assignable personal rights of a creator of a work or maker of a film to:

 be acknowledged as the creator of the work or film (right of attribution);

 object to derogatory treatment of the work or film (right of integrity).

Moral rights are non-economic rights, as they do not directly confer a financial return on
copyright creators or owners. In addition they may not be traded, sold or bequeathed in a will.

Types of Copyright

Moral Rights Economic Rights

 Right for divulgence  Reproduction

 Right for authorship  Right of public communication by
 Right for integrity receiver
 Right of public display
 Right of public exhibition
 Right of public performance
 Right of public recitation
 Right of transfer of ownership
 Right of public rental
 Right of public lending
 Right of distribution
 Right of adaptation
 Right of exploitation of derivative
works
I. Moral Rights: (a) Right for Divulgence: This right gives the author the authority to
control the act of making an unopened work open to the public. He is the sole authority to
decide whether it should be opened or not and when and how to make it open to the public.
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(b) Right for Authorship: The author of a work or the copyright holder has the right to
decide as to whose name should appear in the work, whether it should be real name or
pseudonym, etc. (c) Right for Integrity: Copyright holder has the right to control the act of
distorting, mutilating or modifying a work. This right is available to him even after the
economic rights. In Arun Chadha vs OCA Productions Private Ltd112 it was held that where
there is an agreement between the author of a book and the producer to produce a television
series; and subsequently the government has proposed to fund the venture in return of which
the producer assigned copyright in the serial to the Government ; any subsequent telecast of
the serial by changing its name ; and without giving credit to the producer , director
,cameraman and the editor ;would amount to infringement of special rights of the author. In a
landmark judgment the Delhi High Court in Amar Nath Sehgal vs Union of India113 dealt
with moral rights of artists under section 57 of the Act. In this case the petitioner allowed a
bronze mural sculpture manifesting itself having 140 feet span and 40 feet sweep 1 to be kept
on the walls of Vigyan Bhavan, New Delhi, on the request of the central public works
department, in 1957. According to the artist, the mural acquired the status of a national
treasure, representing the essential part of Indian art heritage. Later on, the mural was put in
the godown of the Government of India. The request of the artist to restore the mural to its
original place in Vigyan Bhavan fell on deaf ears. Aggrieved by this ,he approached the Delhi
High Court by filing a suit contending that his special rights under section 57 of the
Copyright Act ,1957 were violated by the Government , in so far as , his right to reputation as
the artist, integrity right and paternity right were violated by the Government which only
acquired the copyright in the work. The Delhi High Court delivered a landmark judgement in
this case by holding that, whatever be its form today, the mural is too precious to be reduced
to scrap in the warehouse of the Government. While holding that the plaintiff/artists moral
rights are violated by the government action,the count ordered the return of the broken –down
mural to the artist and also directed that he be compensated with a sum of Rs. 5 lakhs.

II. Economic Rights: a) Right of Reproduction: The copyright holder is the sole authority
to control the act of making copies of his work. Copying can be by such means as printing,
photography, reprography, sound recording, visual recording, downloading, etc. b) Right of
Public Transmission: The copyright holder can control the act of publicly transmitting a

112
2013 (53) PTC 401 (Del.) and also Amar Nath Sehgal v. Union of India 2005(30) PTC 253(Del) and
C.N.Ramappa Gowda v. C.C. Chandregowda, 2012 (4) Scale 541
113
2005(30) PTC 253(Del)
103
work by means of TV, radio, the Internet, telefax, etc. , including the act of both “making
available” in a server and “transmission” from the server upon access. c) Right of Public
Communication by Receiver: The right to control the act of publicly communicating a
transmitted work by means of a receiving apparatus lies with the copyright holder. d) Right
of Public Display: The act of publicly showing his work by means of an equipment whether
moving or non-moving image lies with the copyright holder. e) Right of Public
Performance: The copyright holder has the right to control the act of publicly performing his
work. f) Right of Public Recitation: The right to control the act of publicly reciting a work
lies with the copyright holder. g) Right of Public Exhibition: The right to control the act of
publicly exhibiting the original of an artistic work or an unpublished photographic work rests
entirely in the hands of the copyright holder. h) Right of Transfer of Ownership: The
copyright holder has the authority to transfer his rights to anyone either fully or partially. i)
Right of Public Rental: A copyright holder has the right to rent copies of his work. j) Right
of Public Lending: A copyright holder is entitled to lend his cinematographic work for
certain remuneration. k) Right of Distribution: A copyright holder is entrusted with the right
to control the act of transferring ownership or renting his cinematographic work. l) Right of
Adaptation: The right to control the act of adapting a work by such means as translation,
musical arrangement, transformation, dramatization, cinematization, etc., lies with the
copyright holder. m) Right of Exploitation of Derivative Works: The author also has the
right to control all the acts in terms of derivative works. The exclusive rights to the work
belong only to its creator or author and violation of any of the exclusive rights constitutes an
infringement. Once created, the creator has protection for both published and unpublished
works. The right to make a copy, is infringed when a substantial part and not necessarily the
entire part of the work is copied by someone apart from the copyright owner. Apart from the
exclusive right, the law also recognizes that a copyright owner of a work has the moral right
to be identified as the owner and to object to any distortion, mutilation or other modification
of his work that would be prejudicial to his reputation. In a recent case Sholay Media and
Entertainment Pvt.Ltd & Anr v Parag Sanghavi and Ors114 the defendants no.3 to 6 have
intentionally and deliberately brought the movie in violation of plaintiff’s exclusive moral
rights of copyright and passing off. On the relevant date they were aware about the rights of

114
O.S 1892/2006 decreed on 24th August 2015

104
the plaintiff, their ownership and authorship as well as use of unauthorized copyright.
Plaintiffs are granted a sum of Rs 10,00,000 as punitive damages as against defendants no-3
to 6 i.e Ram Gopal Verma, Mr.Madhu Verma, M/S RGV productions Pvt Ltd as well as
Verma Corporation Ltd.In this case permanent injunction was passed restraining the
defendants, their partners or proprietor, as the case may be, their principal officers, servants
and agents from manufacturing, selling, offering for sale, distributing, advertising including
on the internet and in any other manner using the SHOLAY,GABBAR,GABBAR SINGH
trademarks or any other deceptively similar mark amounting to infringement of the plaintiff’s
registered trademarks and from infringing the copyright of the plaintiff’s in the
cinematographic film SHOLAY by substantially reproducing the film SHOOLAY or the
constituent parts of the film SHOLAY i.e the script, screenplay, sound recordings, lyrics
musical works, art works amounting to infringement of copyright in the works of the plaintiff
from passing off their film or other production ,using the mark SHOLAY or any other
deceptively similar mark , or by using the characters or names thereof from the plaintiff’s
work, or in any other manner, as to pass off or enable others to pass off the defendant’s
production or work as that of the plaintiffs and from distorting, mutilating, modifying or
doing any other act that is prejudicial to the honour and reputation of the work as well as to
the plaintiffs and their work. Plaintiffs claim infringement of copyright, dilution, tarnishment
and passing off the impugned film as associated with the plaintiffs.

3.6 Limitations on Copyright Protection

From the Copyright Act, it is clear that there are limitations on copyright protection and they
are temporal limitation, geographical limitation, permitted uses and others. i) Temporal:
Copyright does not continue indefinitely. The law provides for a period of time, a duration,
during which the rights of the copyright owner exist. The period or duration of a copyright
begins with the creation of the work and continues until a prescribed date after the death of
the author. The purpose of this provision in the law is to enable the author and after his death,
his successors to benefit from his creative activity. In countries, which are party to the Berne
Convention, and in many other countries, the duration of copyright provided for by national
law is the life of the author and not less than fifty years after his death. In recent years, the
tendency is to lengthen the term of protection. ii) Geographic: The second limitation or
exception to be examined is a geographical limitation. The owner of the copyright in a work
is protected against violations of his rights by the national laws of the country where such
105
violation takes place. For protection against such acts done in another country, he must refer
to the law of that other country. If both countries are members of one of the international
conventions on copyright, the standards applied in their national laws are likely to be similar
and therefore the limitation of geographical limits would not apply in practice. iii) Permitted
Use: Certain acts that would normally constitute a violation of copyright are permitted under
enumerated circumstances in the national laws and are generally referred to as ‘fair use’
provisions. These include reproduction of a work exclusively for the personal and private use
of the person who makes the reproduction; the making of quotations from a protected work,
provided that the source of the quotation, including the name of the author, is mentioned and
that the extent of the quotation is compatible with fair practice. iv) Non-Material Works: As
mentioned before most national laws do not protect works that are not fixed in a material
form. In some countries, the texts of laws and decisions of courts and administrative bodies
are excluded from copyright protection while in some others they are not. In the later case,
the government is the owner of copyright in such official documents, and exercises those
rights in accordance with the public interest. v) Others: In addition to exceptions based on
the principle of ‘fair use’ other exceptions are to be found in national laws and in the Berne
Convention. For example, when the broadcasting of a work has been authorized, many
national laws permit the broadcasting organization to make a temporary recording of the
work for the purposes of broadcasting, even if no specific authorization of the act of
recording has been given. The laws of some countries permit the broadcasting of protected
works without authorization, provided that fair remuneration is paid to the owner of the
copyright. This system, under which a right to remuneration can be substituted for the
exclusive right to authorize a particular act, is frequently called a system of ‘compulsory
licenses’. Such licenses are called ‘compulsory’ because they result from the operation of law
and not from the exercise of the exclusive right of the copyright owner to authorize particular
acts.

3.7 Registration of Copyright

In general, copyright registration is a legal formality intended to make a public record of the
basic facts of a particular copyright. The Act does not say that registration of copyright is
mandatory. The importance of registration arises in a situation wherein legal remedies are
sought for. Even though registration is not a requirement for protection, the copyright law
provides several advantages to encourage copyright owners to make registration. Registration
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may be made at any time within the life of the copyright. Rule 16 of the Copyright Rules,
1958 lays down the procedure for registration of a copyright. There is no blanket protection.
Registration covers only the particular work deposited for the registration. It does not give
any sort of “blanket” protection to other works in the same series. For example, registration
of a single cartoon or comic strip drawing does not cover any earlier or later drawings. Each
copyrightable version or issue must be registered to gain the advantages of registration for the
new material it contains. However, as per the conditions described above, under “Published
Works” and “Group Registration of Contributions to Periodicals, “certain group
registrations may be made with one application and fee”. 115

An application for registration of copyright is to be made in Form IV. If any changes are to
be made in the application filed in Form IV, another application in Form V as to be filed
incorporating the changes. Each application filed in Form IV should be for a single work.
These applications should be made in triplicate along with the prescribed necessary fee.
While having a copyright registered, the applicant is required to give notice to all interested
persons who claim or has interest in the subject matter of the copyright. Thereafter, if no
objection is received, the Registrar within thirty days of receipt of the application, if he is of
the opinion that the statements made in the application are true, enters the particulars in the
register of Copyright. On the other hand, if the Registrar receives some objection or if he is
not satisfied with the particulars given in the application he has the right to conduct an
enquiry. After the enquiry is conducted and the Registrar is satisfied, he has to enter the
particulars relating to the copyright in the register. The Registrar then has to send a copy of
the entries made in the register to the applicant. Section 45 of the Act provides that any
author has the right to get his literary, artistic, dramatic works registered. But in case of an
artistic work which is used or is capable of being used in relation to any goods, the
application must also include a statement from the Registrar of Trademarks referred to the
effect that no trademark identical with or deceptively similar to such artistic work has been
registered under that Act either in the name of, or that no application has been made under
that Act for such registration by, any person other than the applicant.

115 http://www.copyright.gov/circs/circ40.pdf
107
3.8 Infringement of Copyright

Every person has a right to create his work and also to protect the work so created. When a
party uses the intellectual property of a person without his permission it amounts to
infringement. The owner of the copyright is given the right to reproduce and sell his work. If
any person does an act, which the owner of the copyright can only do then such a person is
said to have infringed the copyright of the author. In order to prove copyright infringement,
the ownership must be established. A suit for copyright infringement can be initiated by: a)
the owner of the copyright b) an exclusive licensee. Section 51 of the Copyright Act 1957,
provides that Copyright in a work will be considered to be infringed: If any person, without a
licence granted which is either granted by the owner of the Copyright or the Registrar of
Copyright under this Act or in contravention of the conditions of a licence so granted or of
any condition imposed by a competent authority under this Act:

 does act which is supposed to be done only by owner of the copyright116, or

 permits for profit any place to be used for the communication of the work to the
public where such communication constitutes an infringement of the copyright in
the work, or

 when any person makes for sale or hire, or sells or lets for hire, or by way of trade
displays or offers for sale or hire, or

 any person distributes either for the purpose of trade or to such an extent as to
affect prejudicially the owner of the copyright, or by way of trade exhibits in
public, or imports into India, any infringing copies of the work:

116
World Wrestling Entertainment v SavioFernandes & Ors 2015 (62)PTC 573(Del) case Plaintiff offers a
variety of consumer products in the form of mementos/soveneirs including ,but certainly not limited to apparel
and he has common law rights and has obtained registrations of the mark World Wrestling Entertainment and
WWE scratch logo in relation to various goods in different countries worldwide. Plaintiff is also the owner of
pictorial representations of the World Wrestling Entertainment and WWE wrestlers and the WWE scratch logo
and plaintiff does extensive business on the internet. Defendant no.1 is the proprietor of the defendant no.2 and
3,who are engaged in selling apparel and merchandise bearing the registered trademark WWE and other
copyrightable content of the plaintiff. Defendants additionally sell their products online through their websites
www.wrestlezone.co.in, www.wrestlezoneindia.com,www.wrestle.com. The defendants are using the
trademarks,logo and copyrightable content of the plaintiff,without their authorization and permission, with a
view to making illegal profits by using reputation of the plaintiff’s trademarks. Illegal trade activities of the
defendants caused incalculable harm and injury to the business goodwill and reputation of the plaintiff’s .
Plaintiff was entitled for a decree of permanent injunction and a sum of Rs 5 lakhs is awarded as damages
.(section 29 and 51 were dealt)
108
It would not amount to an infringement if the imported copy of the work is for the private use
of the importer. The forms of copyright are diverse. Hence the acts that amount to
infringement depend on the type of the copyright work. In Sid & Marty Krofft Television v
McDonald’s Corp117 the Ninth Circuit delineated a three part test for copyright infringement.
First, a plaintiff must establish ownership of a copyright. Second, the plaintiff must prove
“copying” on the part of the defendant. Finally, the plaintiff must establish “illicit copying”,
i.e., the copying of protectable material. 118 With regard to the infringement of a
cinematographic work no copyright infringement lies on copying a film on live events. A
copyright will not be granted for a film on live events. If a cinematographic work is based on
any other work without the license from the owner, it will amount to an infringement. A film
based on other films will amount to an infringement. The making of a cinematographic work
based on a stage play will amount to an infringement if the permission to do so is not granted.

“A person copying, distributing, publicly performing, or publicly displaying a copyrighted

work or creating a derivative work based on the original copyrighted work each without the
permission of or a license from the copyright owner will be a direct infringer”119.
“Infringement of copyright happens when works – such as paintings, books, computer
software, films and music are reproduced without permission from the copyright owners.
Infringement can also occur when works such as plays and films are performed, screened or
made public in other ways without permission from the copyright owner. A person who sells
infringing versions of a work, even if somebody else has made them, is also in breach of
copyright, as is a person who authorizes someone else to make an infringement. If a work is
very distinctive and original, reproducing part of it may be a breach of copyright. ”120

Copyright infringement occurs when one person copies another person’s copyrighted works
without permission. Copyright infringement occurs when a person other than the copyright
owner exploits one or more of the copyright owner’s exclusive rights without the owner’s
permission. In case of infringement of copyright, the liability is on the plaintiff to prove that
his work has been copied directly or indirectly from the work matter for which he has the
copyright. In R. G. Anand v Delux Films121 The Supreme Court of India has subsequently

117 562 F. 2d 1157 [ 196 USPQ 97 ] (9th Cir. ),

118 http://www. 413. com/appeal/Raz. htm
119 http://www. uoregon. edu/~copyrght/Docs_Html/VI. htm
120 http://www. dcita. gov. au/Article/0, , 0_1-2_1-4_14314, 00. html
121 AIR 1978 SC 1613
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enunciated various governing principles when it comes to substantial similarity of
infringement of copyright with regard to plays and cinematographic films. It had laid down
122
seven important guidelines while assessing copyright infringement. In Associated
Electronic and Electrical Industries (Bangalore) Pvt. Ltd sv M/s. Sharp Tools, Kalapatti123
for determining infringement of copyright in the case of artistic works, the Karnataka High
Court followed the basic test i.e the ‘lay observer test’. It said as one of the surest tests to
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 would be clearly of the
opinion and get an unmistakable impression that the subsequent work appears to be a copy of
the original. “Dealing with the infringement of applicant’s work by the respondent’s work,
the court is to test on the visual appearance of the object and drawing, design, or artistic work
in question and by applying the test i. e the ‘lay observer test’ whether to persons who are not
expert in relation to objects of that description, the object appears to be a reproduction. If to
the ‘lay observer’, it would not appear to be reproduction, there is no infringement of the
124
artistic copyright in the work. In Divya Sood vs Renu Bajaj case, it was said that it is not
necessary that the allegedly infringing artistic work should be an exact or verbatim copy of
the original work in order to constitute infringement of a copyright. It would be sufficient if
shown that though not a verbatim copy of the original work, the latter work resembles the
original to a substantial degree by extensive use of the main feature found in the copyrighted
work. It said that this is so because any intelligent person copying a work would make some
minor changes so as to guard his work against a possible charge of copyright infringement. In
Hope Bromfield Stevens vs. Aeonian Press, Inc.,125 the court held that the defendant wilfully
infringed the copyrights of the plaintiff. They had been doing the act for the past twenty-one
years prior to the filing of the suit. The defendants had knowledge of the infringing act, so the
court ordered them to pay damages for the work infringed along with the cost and fees. In
Asian Paints (I) Ltd. vs. Jaikishan Paints and Allied Products126case, the plaintiffs allege
copyright infringement in respect of their label ‘Utsav’ and its related artwork by the
defendants’ label ‘Utkarsh’ and its related artwork. The defendant’s contention is, firstly, that

122 Supra note 106

123 1993(13) PTC 85.
124 2011 (45) PTC 307, 178(2011) DLT 736, MIPR 2011(1) 295
125 No. 00 Civ. 6330 (S. D. N. Y. Oct. 22, 2002).
126 [2002] 1 ILD 228 (Bom. )
110
the Bombay High Court has no jurisdiction in the case and secondly, that there is no
infringement of copyright as their label and art work has been registered under the Copyright
Act, 1957. The plaintiffs sought a perpetual injunction against the defendants from using the
label and also sought to refrain the trademark. The court held that the defendant had copied
the work of the plaintiff and therefore, ordered the defendant to pay damages. In Creative
Width Design Solutions vs Print Adda & Others127case, a suit for permanent injunction was
filed by the plaintiff. The plaintiff has been engaged in the business of manufacturing artistic
wall decals and wall stickers under the brand name ‘Creative Width’. The defendants have
copied the features of the plaintiff’s artistic works such as the unique and artistic wall decals,
the arrangement of furniture in the sample room in the image, the colors of the walls and the
other features of the rooms, the colors of the decals and the unique name given to each
design. The defendant goods are being sold through some trade channel as that of the plaintiff
and defendants infringing products are often listed along with the plaintiff’s designs.
Defendants have priced their infringing products at lower prices then those of the plaintiff,
thereby resulting not only in likelihood of confusion, but also loss of business and profit
which rightfully would accrue to the plaintiff. Plaintiff has been able to make out a strong
prima facie case in their favour and balance of convenience also lies in favour of the plaintiff
and against the defendants. Defendants are restrained from making, selling, offering for sale.
In another case Barbara Taylor Bradford vs. Sahara Media Entertainment Ltd128, The
Supreme Court stayed a Calcutta High Court order giving the go ahead for telecast of the
mega serial “Karishma - A Miracle of Destiny” on Sahara TV in an copyright action
pertaining to the alleged infringement of copyright in the book named “A Woman of
Substance” The New York based novelist Barbara Taylor Bradford, had sought stay of the
airing of the serial alleging that the serial was based on her novel “A Woman of Substance”.
M/s Sahara Media Entertainment Ltd, produced “Karishma the Miracle of Destiny” and was
ready to telecast about 300 episodes. The Sahara TV moved the Division Bench of the High
Court and got stay of the injunction order. Barbara, filed an appeal and the Supreme court
stayed the airing of the serial. In a recent case Beyond Dreams Entertainment vs Zee
Entertainment Enterprises Ltd129 in this case confidential information was shared by the
plaintiff with the representatives of defendant one . The defendant promised that the

127
2015(62) PTC 601(Del)
128 2004 (28) PTC 474 (Cal. ) (DB)
129
2015 (62) PTC 241(Bom)
111
television series would be produced by plaintiff number one and telecast by defendant
number one based on the plaintiff’s concept notes. There was copyright in the material of the
plaintiff’s particularly character sketches in the concept notes, the detailed setting of the
dramatic material, overall tracks, plots, family tree is sufficiently developed into a concrete
literary work capable of having its own life as a copyrighted materials. Elements of
expression in the plaintiff’s concept notes are copied in the defendant’s work. Variety of
incidents which gave a certain different color and complexion to the defendant’s work than
the plaintiff’s copyrighted work. In totality by and large the former work is a copy of the
latter the court held plaintiff’s have a stable case even of a breach of copyright and that at the
ad-interim stage, the material in which they claim such copyright ought to be protected.

3.8.1 Test to determine Infringement

To determine whether an act has the elements of an infringement certain factors are to be
taken into consideration. a) Substantial copying or similarity. b) Direct evidence of copying
from the source in which copyright subsists.

Substantial Copying or Similarity

There must be substantial copying of the work to constitute an infringement. Substantial

copying involves many factors. The amount of the material copied is one factor. In
Landbroke Ltd vs William Hill130 it was held by the court that the substantiality is a question
of fact depending upon the material copied. Whether the substantial copying was intended for
the purpose of saving himself of the labor is to be looked into? Another test is the
determination as to whether there is a substantial similarity as to the general ideas contained
in the two works involved. If a substantial similarity of ideas is found, then the next test must
be applied. This test involves the application of the ordinary observer test, which is whether
the average reasonable person, on examining the two works, could detect without any help,
suggestion, or critical analysis that there is substantial similarity in the expressions of the
ideas in the two works so as to constitute infringement. The criteria set forth for the “extrinsic
test” by one court was “type of art work involved, the materials used, the subject matter, and
the setting for the subject”. The US courts in assessing the amount of proof required to show
access and substantial similarity, some courts have adopted the “inverse ratio rule”. Under the
rule, when the quantum of proof of similarity between plaintiff’s work and defendant’s work

130 (1964) 1 WLR 273

112
is very high, the degree of access required to be shown may be relatively low. For example, if
clear and convincing evidence of access is presented, the quantum of proof required to show
substantial similarity may be lower than when access is shown merely by a preponderance of
the evidence.131 In Blackwood and Sons Ltd vs A. N. Parasuraman132 the Madras High Court
has explained the test for determining similarity between two different works, in the context
of guide books. The defendant in this has come out with guides to certain popular novels in
English literature, the copyright to which were vested with the plaintiff. The defendant took
the plea only portions of the literary works were reproduced in their guides, that too for
instructive purposes and therefore no infringement. The Madras High Court relied on
Copinger’s Treatise on Copyright Law and held that the questions to be considered while
determining infringement were a) Whether there is a reproduction of a substantial part of the
copyrighted work quantitative and b) What is the quality of the work abstracted and does it
constitute a valuable portion of the copyrighted work. The defendant contention is that only
4000 words from the original work which contained 1,64,000 words were reproduced in its
guide and hence, there was no quantitative reproduction, was rejected as being misleading,
since the portions of the literary work that were essential for the narration of the story were
copied in the guide. The Judge said ‘if the defendants’ work consisted of a string of passages
from the plaintiff’s work, copied mostly in the author’s own words but knit together by a few
sentences omitting colorful descriptions, I am unable to hold that this did not constitute an
infringement of the copyright. There might not be any intention to compete with the sale of
the plaintiff’s publication but the intention of the defendants in such matters is nearly
irrelevant. I cannot, therefore, overrule the possibility of competition and that is all that is
necessary for determining infringement of copyright”.133 Again in Mary P. Marshall v Ram
Narain Lal134, the Allahabad High Court held that the test for infringement was whether or

131 http://www. ibslaw. com/melon/archive/205_qANDa. html

132 AIR 1959 Mad 410
133 Ananth Padmanabhan’s Intellectual Property Rights Infringement and Remedies, First Edition 2012, Published
by LexisNexis Butterworths Wadhwa , Nagpur, p. 308.
134 AIR 1934 All 922, 1934 AWR(H. C. )3255 Here, the plaintiff was the widow of the late Professor Marshall,
whose treatise titled “Principles of Economics”, was a well-known text book. The 4th Edition of the book was
published in 1898 and the 5th Edition was brought out in 1907. In 1908 Rev Dr King, the Principal of a College
brought out a treatise which he called “A Digest of Marshall’s Principles of Economics”, This was printed and
published by a press in Ajmer, No objection was taken on behalf of an agent of Professor Marshall at that time. In
1912, the defendant purchased the supposed copyright to this digest from Dr. King. By that time Professor
Marshall’s book had run into several editions, including the 8th edition of 1927. The defendant, in the meantime,
reprinted the digest of 1908 and published it in 1926. It was in respect of this reprinting of the earlier edition of Dr
113
not there was a reproduction of the work or a substantial part of it in any material form
whatsoever. When an abridgment was on such an extensive scale as to amount to a
reproduction of a substantial part of the original work in a material form, it would
undoubtedly be an infringement of the copyright. Based on the facts the court however in this
case came to a conclusion that there was no infringement of copyright, more so because the
treatise itself had undergone many changes, none of which were reflected in the defendant’s
reprint. In Borroughs Wellcome (India) Ltd vs Uni-Sole Pvt Ltd & Anr135 the dispute was
regarding the cartons of two antibiotic tablets with the name ‘Septran Tablets’ and ‘Simptran
Tablets’. Other than the different color of the script there was similarity between the two
tablets which would mislead an ordinary person. The court held that there existed substantial
similarity between the two tablets. A substantial similarity existed between the two cartons
both in the nature of get up and, color combination and essential similarity. On a bare perusal
of two strips, other than the color, everything was similar.

Many of the copyright infringement cases arising in respect of artistic works is said to be a
composite suit for trade dress and trademark infringement where it claimed by the plaintiff
that the trade dress, consisting of a combination of colors and some innovative design or
drawing, is an ‘artistic work’ for the purpose of copyright infringement. It is felt that courts
must exercise great care and caution when dealing with the issue of copyright infringement in
such cases as there is bound to be some confusion generated by the two different standards of
deceptive similarity for the purposes of trade dress infringement and substantial similarity for
the purposes of copyright infringement. The standard for deceptive similarity is lower than
substantial similarity as in the case of the former type of similarity, the marks are perceived
from the standpoint of a customer of average intelligence and imperfect recollection, who
sees it in the marketplace and has to be protected from deception. The purpose of the
‘substantial similarity’ test is totally different, and is only to protect the owner of the
copyright in so far as his creative efforts are concerned by asking whether there is an
imitation of such effort.

King’s Digest that the plaintiff sued the defendant for copyright infringement. The trial court decreed the suit. On
appeal, the Allahabad High Court reversed the trial court’s decision.
135 1999 (PTC) (19)188 Bom
114
In Ram Sampath v Rajesh Roshan136, the High Court expressed the principles governing the
determination of similarity of musical works for the purpose of copyright infringement as –
the true test in deciding whether the later musical work is a copy or plagiarism of the former
is whether the later musical work is a copy or plagiarism of the former is whether a person
illiterate in music on listening to the later musical work would say to himself “Hey! I have
heard this tune before”. If on hearing the later musical work he is not only reminded of the
former which he might have listened several days before but thinks that he has heard the
same tune before, the later is a copy of the former. The judge said there are three
circumstances for coming to the conclusion that the musical works titled as “KRAZZY 4”
and “Break Free” are copies of the plaintiff work “The THUMP” and they are (i) An expert
feels that they are copies as can be seen from the expert opinion of Mr. M (ii) There is a tacit
admission in the affidavit of defendant 1 that his songs contain copy of a small portion of six
seconds which is repeated four to five times. (iii) A man, illiterate in music, on hearing the
two songs feels that the later is a copy of or plagiarism of the former work. Therefore judge
holds the defendant’s work infringes copyright of the plaintiff in his musical work “The
THUMPH.”

Direct Evidence of Copying: It was held in Shyam Shah vs Gaya Prasad Gupta137, if a
person tries to save his time and labor by copying from another’s work, he is guilty of
infringement. To establish infringement it must be shown that the supposed infringing work
closely resembles the original work. If the person has only taken the essential ideas of a work
and expressed it in an original manner it does not constitute an infringement. In general the
factors that are considered while determining an infringement are: a) Ownership of the
original work: Copyright in a work gives rights that are distinct from ownership of the
physical embodiment of the original work138. The ownership of the copyright is to be
established as a first step towards determination of infringement. b) Causal connection: It
must be proven beyond doubt that the supposed infringement is taken from the work in which
the person claims ownership. It can be either a direct or an indirect connection. If prominent
similarities are shown between the alleged copied work and the original work it will be
presumed that an infringement has taken place. c) Sub-Conscious Copying: In Rees v.

136 2009 (40) PTC 78, 2009 (2) Mah LJ 167. The matter was settled between parties and the order of injunction is
vacated subsequently.
137 AIR 1971 Allahabad 192
138 W. R. Cornish Intellectual Property, IIIrd Edition, Pg 359
115
Melville139 the court held that “copying could occur subconsciously where a person reads,
sees, or hears a work, forgets about it, later on reproduces it genuinely believing it to be his
own. “In such situations proving an infringement depends on a number of elements. These
elements include degree of familiarity with the owners’ work, the character of the work, the
objective similarity of the infringers’ work etc.

Indirect copying

An infringement can take place if a copy of a work is made from another copy of the same
work. It is an infringement to produce a work similar to the original copyrighted work even if
the defendant had no opportunity to have a look at the original work. In Schlesinger v
Tunrner140, it was held that plays based on novels which in turn were based on original plays
constituted infringement of the original play. In British Leyland vs Hamstrong141, it was
observed that in a situation wherein the plaintiff in a case owns a copyright drawing and then
turns it into a three dimensional article and that is in turn copied in three dimension by the
defendant the causal connection for the indirect copying will be established. The basic
principles to be followed while deciding infringement of copyright where clearly laid down
in Anand vs Deluxe Films142.

3.9 Piracy and Infringement of Copyright: The rights of a copyright owner are infringed
when an act requiring his authorization is done by someone, without such authorization or
consent. The unauthorized copying of copyright materials for commercial purposes and the
unauthorized commercial dealing in copied materials is known as ‘piracy’. Piracy in recent
times has been made easier with the incidence of technology that has made it easier and
cheaper to produce and disseminate copies of copyright works. While consumers may
sometimes see short-term benefits in the availability of cheaper works as a result of piracy,
the quality of reproductions made by pirates is often very inferior. Consumers are also
disadvantaged in the long-term by piracy as a result of the absence of remuneration given to
authors and performers by pirates, and of the misappropriation of the economic returns to
publishers and producers. This diversion of economic rewards from authors and their

139 (1911-1916) Mac. C. C 168

140 (1890)63 LT 764
141 (1986)RPC 279 , HL
142 AIR 1978 SC 1613 (1627)
116
business partners to pirates remove the incentive to the investment of time, effort, skill and
resources in the creation of new works.

3.10 Remedies for infringement

Remedies for infringement of copyright or for violation of related rights consist of civil
redress, where infringers are obliged by court to cease the infringement and to undertake
reparatory action by any appropriate means, for example, rectification in the press or liability
for damages. Some laws also provide for penal remedies in the form of fines and/or
imprisonment. Infringing copies, receipts resulting from infringement and any implement
used for the same are usually subject to seizure. There are various remedies available for
copyright infringement. The Act of 1957 provides for: a) Civil remedies; b) Criminal
remedies; c) Administrative remedies. In Mishra Bandhu Karyalaya v Shivaratan Lal
Kaushal143, it was held that a plaintiff has to establish the following in order to seek any of
the remedies:- i) He is the owner of the copyright; ii) A copyright subsists in the work
infringed at the time the defendant committed the infringement; iii) Particulars of the
infringement complained; iv) The nature of the damage if any suffered by him or likely to
suffer; and what the defendant has done or is proposing to do constitutes infringement of the
copyright144.

3.10.1 Civil Remedies: The Act provides for certain civil remedies in situation wherein
copyright infringement has taken place. Section 54 specifies that only an “owner of
copyright” which includes an exclusive licensee can file a suit for civil redress. It also
specifies that in case of anonymous or pseudonymous literary, dramatic, musical or artistic
works, “publisher” is the owner till the identity of any of the authors is disclosed. Sections 55
to 62 deals with civil remedies and Sections 63 to 70 deals with criminal remedies. The
copyright owner has to decide which remedy he wants to seek. A civil suit is normally
instituted by way of filing of a plaint in the District Court or High Court. Section 62 of the
Act allows a plaintiff to sue for infringement in a court within whose jurisdiction the plaintiff
resides or carries on business or works for gain and not necessarily where the infringement
takes place. The plaintiff may also file an application for interim relief pending trial, which
may include an interlocutory injunction, appointment of Court Commissioner/ Receiver to

143 AIR 1970 MP 261

144 Bharat’s ‘Law and practice of Intellectual Property in India” Pg 832
117
visit the defendant’s premises to take stock or make an inventory of infringing rights of the
owners. The court has been liberal in granting injunctions where there has been a prima facie
case of piracy or counterfeiting. In a recent case in Pranda Jewelry Pvt. Ltd & Ors. Vs Aarya
24 Kt &Ors145 there was a delay on the plaintiff ‘s part in approaching the court and it was
held that claim of interim reliefs delay per se is never considered as a ground in itself to
refuse relief in an action to protect intellectual property. Defendant must allege a case of
acquiescence or estoppel or special equities arising in favour of the defendant as a result of
such delay. Adoption of these artistic works for producing their goods by the defendants is
prima facie suggestive of dishonesty. Similarities in the two works are a matter of chance.
The plaintiff’s have an arguable case that the defendants changed their designs later. Plaintiff
ave noticed the offending use of the artistic works in August 2010. There is no case of any
culpable delay and absolutely no case of intentional abandonment of the plaintiff’s right or
acquiescence or any special equities. Adoption by the defendants is prima facie dishonest.
Defendants have changed their designs and have been imitating plaintiff’s artistic works only
since 2010 and can always go back to their original designs or adopt new designs for similar
images of deities and religious signs. Interim injunction granted against the defendant.

Section 55 of the Copyright Act 1957 provides that where copyright in any work has been
infringed, the owner of the copyright is entitled to remedies like: a) Injunction (interlocutory
or permanent); b) Damages; c) Accounts and costs.

The Act specifically provides by way of Section 56 that if the rights comprising the copyright
in any work are owned by different persons, the owner of any such right to the extent of that
right, will be entitled to the remedies. He can also individually enforce such right by means of
any suit, action or other proceeding without making the owner of any other right party to such
suit, action or proceeding. Section 60 of the Act provides certain specific remedies with
regard to groundless threats. It provides that any person who is the owner of copyright in any
work (by circulars, advertisements or otherwise) threatens any other person with any legal
proceedings or liability in respect of an alleged infringement of the copyright, the aggrieved
person can institute a declaratory suit. This declaratory suit can be initiated stating that the
alleged infringement to which the threats related was not in fact an infringement of any legal
rights of the person making such threats. He is also entitled to: obtain an injunction against

145
2015 (62) PTC 254 (Bom)

118
the continuance of such threats; and recover such damages, if any, as he has sustained by
reason of such threats. In Super Cassettes Industries Ltd vs. Bathla Cassettes (India) P Ltd146
it was held that the moment a suit is filed for infringement of copyright by a person who has
given the threat, the suit under Section 60 becomes infructuous. It would be helpful to
understand the need for remedial measures if we take a quick sneak at the Anton Piller Order.
A new type of protection for copyright had evolved in courts of England. This order was
granted by the court to give better protection to copyright as well as other forms of
intellectual properties. With Anton Piller Order, the court, in addition to granting an
injunction against the defendant, also orders the defendant to allow the plaintiff’s solicitors to
enter its premises to look for, inspect and take away any infringing items and documents
relating to the defendant’s infringing acts. In case the defendant refuses to obey the order it
will be in contempt of court and calls for imprisonment. The defendant is at liberty to
approach the court to discharge the order after it has complied with it. If the order is
discharged all items and documents seized should be returned to the defendant. This type of
order is available where there is clear evidence that the defendant has incriminating evidence
and may destroy such evidence before an application can be made to the court. Once an
injunction is granted the plaintiff must either proceed to trial or negotiate a settlement with
the defendant. A defendant can agree to settle the matter rather than to prefer trial. As part of
any settlement, plaintiff can require the defendant to pay legal costs and damages, surrender
all infringing goods, give full disclosure of its suppliers and customers and agree to a
permanent injunction being granted by the court. It could be termed as a preventive relief
similar to an exparte interlocutory order. The Anton Piller Order has constituted an important
weapon as against piracy. Since it is granted on an ex parte basis, there is possibility to open
to abuse. The Division Bench of the Delhi High Court in Autodesk Inc. vs A. V. T
Shankardass147 issued guidelines for the issue of Anton Piller Order in case of software
infringement to prevent abuse of this order. The court heard the recommendations of both
parties for guidelines to be set, and observed that it was neither feasible nor practical to lay
down guidelines, which would cater to numerous and all the situations that may arise.

146 PTC (Suppl)(1) 142 Del

147 2008 (37) PTC 581.
119
3.10.2 Jurisdiction

Section 62 of the Copyright Act 1957 provides that the District Court has the jurisdiction to
try the cases relating to copyright infringement. The Copyright Act 1957 operates only within
the territory of India. In order to constitute infringement activity under the Act, it must be
shown that such activity had taken place within the territory of India. Thus, in Blueberry
Books v. Google India Pvt. Ltd148,the Delhi High Court held that where a website
(Amazon.com) made it clear that the facility is available only in USA and not elsewhere , and
the alleged downloads took place in USA and not in India , no cause of action arose in India,
therefore Indian Courts have no jurisdiction to try infringement suits.149

The court limits/jurisdiction is decided as per the local limits of court within whose
jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting
the suit or other proceeding or, where there are more than one such persons, any of them
actually and voluntarily resides or carries on business or personally works for gain. It was
held in Mohan Meakin Ltd vs Kashmir Dreamland Distilleries and Anr150, that Section 62
will not oust the jurisdiction of High Court to try a suit. The District Court referred to in this
section is that which is defined in the Civil Procedure Code. The District Court defined under
the Act is the Principal court of the district as also High Court which has original jurisdiction
over a district or more districts. In a recent case in Indian Performing Rights Society Ltd vs
Sanjay Dalia & Another151 territorial jurisdiction was raised. The Appellants have head office
at Mumbai and a branch office at Delhi, entire cause of action arised in Mumbai and no cause
of action arose in Delhi then the question is whether a suit can be instituted in Delhi?-
Appellants contended that section 62 and section 134 provide an additional forum to institute
a suit that is where plaintiff actually and voluntarily resides and carries on business or
personally works for gain and cannot be whittled down by combining it with the cause of
action; statute is clear and unambiguous and Heydon’s rule of mischief doesn’t apply; section
62& section 134 confers a special right to the plaintiff to file in Delhi. Respondents contend
abuse of S.62& S.134 cannot be permitted to harass defendants for suit filed by corporation.
Section 20 CPC is not applicable. Object of S.62 & S.134 to enable plaintiff to institute suit at

148
2014 (2) RAJ 344 (Del.)
149
Also refer Smithkline Beecham PLC v. Sunil Singhi, 2001 PTC 321: 2001 (2) RAJ 446(Del.), and Dodha
House v. S.K.Maingi,(2006) 9 SCC 41=2006(1) RAJ 22.
150. AIR 1990 J & K 42
151
2015 (63) PTC 1(SC)
120
place where he resides or carries on business, not to enable them to drag defendant further
away from such a place.

3.10.3 Injunction

An injunction can be either interlocutory or permanent injunction. Issuance of injunction is

always at the discretion of the court, therefore it cannot be demanded as a right. But again
such issuance has to be guided by legal principles which cannot be arbitrary and vague. An
interlocutory injunction is granted under Rules 1and 2 of Order XXXIX of the Code of Civil
Procedure. In order to seek an interlocutory injunction, the plaintiffs have to prove the
following: a) That there exists a prima facie case; b) That the balance of convenience is in the
favor of plaintiff; and c) That the refusal to grant the injunction will cause irreparable loss to
him. The Delhi High Court in Penguin Book Ltd. vs. M/s India Book Distributors152 and the
Bombay High Court in N. T. Ragunathan v All India Reporter153, while following English
principles laid down that since most infringements of copyright consist of a continuous
process of successive infringing acts, injunction is not only the most important but also the
only effective remedy. The court felt that in cases of infringement of copyright, award of
damages in most cases would not be a proper remedy, as it is difficult to quantify such
damages as harm to property, goodwill and economic returns would be difficult to ascertain.
An interlocutory injunction may be refused by the court in the following situations: i) If the
plaintiff’s interest can be protected by ordering the defendant to keep an account of profits.
ii)If the defendant is able to establish that his copying will fall under the concept of fair use.
iii) If the plaintiff is under undue delay to approach the legal machinery. iv) If the plaintiff’s
conduct amounts to acquiescence in the infringement. v) If there is substantial doubt about
the plaintiff’s right to succeed in the action. The concept of injunction can be better explained
by certain cases. In Media Transasia Ltd. & Anr. vs Indian Airlines Ltd. & Ors154, the
appellants, inspite of possessing the information regarding respondents’activities, did not take
immediate legal action. The suit was filed by the time a new contract was born and third party
rights had been created in favour of the respondent. By that time respondent had made
substantial investment as it was obliged under the new contract. The delay in filing the suit,
therefore, proved fatal and interim injunction was denied to the appellants. In Mirabai Films

152 AIR 1958 Del. 29

153 AIR 1971 Bom. 48
154 2003 (26) P. T. C. 294(D. B) (Del.)
121
Pvt Ltd vs. Siti Cable Network and Others155, Mirabai Films, the appellant is the producer of
the movie ‘Monsoon Wedding’. The respondents are cable television network operators who
provide cable television network, cable internet access and other related works throughout the
country through their franchises, assignees, distributors, etc. The appellants hold the
copyright for the film and have the exclusive rights of marketing, distribution, exhibition,
makings of its copies and selling these or giving on hire. The respondents were habitual
offenders in telecasting pirated copies of films. The appellants were concerned about this
reality. If their movie was to telecast without permission, it will cause irreparable loss to
them. So before the film was released the appellants filed an injunction suit as a pre-emptory
action to restrain the respondents, which also include the franchisees, assignees, etc., from
unauthorized telecast of the film. The lower court declined the grant of injunction on the
ground that since the contents of the satellite TV channels were decided by the entities who
owned them and that of the local cable channels by the local cable operators who generally
broadcast their own programs by using video cassette player, digital video disk, etc,. The
respondent had no direct control over the matters that were telecast by the latter. On this, the
appellant preferred an appeal to the High Court of Delhi. The main issue before the High
court was, that even after sufficient proof was put forward relating to the irreparable loss that
would be suffered by the appellant the, court declined to grant an injunction. The chief
contention of the appellants was that although they had established that there existed balance
of convenience on their side and that they would suffer irreparable loss and injury if the film
were telecast for a single time, they were denied injunction. The lower court ignored their
own restraint orders, which were passed relating to the film “Lagaan”. They also contented
that the court did not grant them the opportunity to produce some vital documents, which
would have clearly depicted the kind of relationship the respondents and their
distributors/franchisees shared. The appellants alleged that there was a joint venture
agreement between the respondents and their franchisees, assignees and distributors. This
indicated that the signals were transmitted or retransmitted by the consent of the respondents.
They were running their operation through related companies. They were also holding shares
in these companies. The respondents contented that they provide two categories of feed
signals i.e., one to satellite television channels received by them via satellites and
retransmitted by them to their distributors and franchisees and the next category is their two

155 2003 (26) PTC 473 (Del) DB

122
channels ‘Cine Cable Channel’ and ‘Win Cable Channel’ owned and operated by them. They
do not have any control over the local cable operators and they are separate legal entities. The
court observed that the lower court had ignored the settled principle relating to the grant of
interim injunctions like whether there was a prima-facie case, the balance of convenience and
irreparable loss. The court observed that even if the franchisees and distributors were separate
legal entities they still were using the same feed signals of respondents for transmitting their
programmes. The illogicality lies in the fact that what the respondents cannot do their
franchisees, distributors are able to do. The court set aside the lower court orders and held
that the respondents be temporarily restrained from telecasting/screening, exhibiting the film
‘Monsoon Wedding’ on their network.

Mareva Injunction: Mareva injunction restrains the defendant from disposing of assets
which may be required to satisfy the plaintiff’s claim or removing them from the jurisdiction
of the court. In CBS vs. Lambert156 the principal assets were cars, the order included a
provision requiring the defendant to disclose their whereabouts. The prevention of disposal is
not of much use if the plaintiff cannot locate the assets when it comes to seek to enforce the
final judgment. The combination of Anton Piller Order and Mareva injunction can destroy the
defendant’s business.

Permanent Injunction

The perpetual injunction which lasts up to the unexpired term of the copyright, is granted in
order to prevent any further repetition of the infringing action. In order to make the injunction
effective, it is often coupled with an order for the delivery by the infringer of all infringing
copies of the copyright work. All infringing copies are deemed to be the property of the
owner of the copyright, who accordingly may take proceedings for the recovery of possession
157
thereof. The plaintiff need not prove actual damage for the entitlement of the final
injunction but he has to prove that his copyright has been infringed. The judges have to be
convinced that the defendant is likely to continue with the infringement before they grant
permanent injunction. In K. P. M Sundaram vs M/s Rattan Prakashan Mandir158 the plaintiff,
who was author of several books instituted the suit against defendants for injunction,
restraining them from printing, publishing and selling the specified books, rendition of

156 1983 F. S. R. 127

157 Section 58, Indian Copyright Act, 1957
158 AIR 1983 Del. 461
123
accounts for the illegal gains made by them and for damages under the provision of sections
55 and 57 of the Act. The court held that the plaintiff had a strong prima facie case with a
probability of success and the balance of convenience was also in his favour. Further,
withholding of injunction would be more injurious to plaintiff’s right than the grant of
injunction would impose burden on defendants. In Hawkins Cookers Ltd. vs Magicook
Appliances Co.159, also the court granted permanent injunction to the plaintiff by restraining
defendants from dealing in any manner, whatsoever with their cookbooks having passages
reproduced from the cookbooks of the plaintiff. The problem faced in those cases where only
a part of the work in which copyright subsists has been duplicated and included in the alleged
infringing work. The courts have to decide whether injunction to such part would mutilate the
entire work of the infringer. If the infringing part can be separated from other parts of the
infringing work, the injunction should be confined to the infringing part since it may be
possible for the infringer to rearrange his material and reap the fruits of his labor by
publishing his work after omission of the infringing part. But, if infringing material is so
inextricably intermingled that the pirated work cannot be separated from the rest, then the
infringer who made improper use of what which did not belong to him must suffer the
consequences of his wrong doing. In Celador Productions Ltd vs Gaurav Mehrotra &
Anr160,the plaintiff filed a suit seeking permanent injunction to restrain: i)–the defendants
from running any website using the name crorepatikaun.com or KAUN BANEGA
CROREPATI as their second level domain name ii) or using the name in any other manner.
iii) the defendants from advertising directly or indirectly or running any website containing
pictures screen shots with or without the circular logo having the distinctive lay out and color
arrangement of Amitabh Bachan as the host of the game show KAUN BANEGA
CROREPATI, iv) the defendants from advertising any game show having the same format of
the programme, questions, lifeline, money tree. Along with these they sought for damages.
The court found that the defendants were using the circular logo as well as the money tree
which is similar to that of the plaintiffs. It also has four possible lifelines. Along with that it is
projecting the photograph of Amitabh Bachan. The defendants were also using the domain
name crorepatikaun. com. All these put together the court came to the conclusion that the
defendants were indeed infringing the copyright of the plaintiff. The court granted permanent

159 AIR 2003 Del. 191 and refer Shashank Shekar Misra v. Ajay Gupta, O.S NO 1144/2011
160 2003 (26) PTC 140 (Del)
124
injunction to the plaintiff. In Exphar SA and Others vs Bharat Shah and Another161, the
plaintiff filed a suit seeking decree for permanent prohibitory injunction restraining the
defendants from passing off and infringing its copyright. The plaintiff company is a foreign
company based in Belgium. The alleged suit was filed in respect of goods traded outside
India. The court held that since the supposed infringement did not take place within the
territorial limits of any court in India an injunction relief cannot be granted. Yet in another
case Reckit Benckisser (India) Limited vs. Naga Limited and Others162, the Reckit Benckisser
(India) Limited filed a suit for grant of permanent and mandatory injunction. The plaintiff
was distressed by a television commercial, which illustrates a pregnant woman who needs
medical attention during a train journey. A doctor attends to her and asks for hot water and
soap. She was handed over a cake of soap, which she refused stating “at times like this, you
do not need just an antiseptic, you need a protector”. The soap that the doctor rejected was
easily identifiable as ‘dettol’ soap. After this another soap was displayed and at the same time
as it was in display it was stated that it is the first ayurvedic soap i.e., a body ‘rakshak’ soap
capable of removing all seven kinds of germs and protecting from infection. The plaintiff
bought this action alleging that the commercial was intended at disparaging its ‘Dettol soap’.
The plaintiff contends that the intention behind bringing out such a commercial is to ridicule
or deride their product i.e., Dettol soap. This was supported by a trade literature, which shows
that Dettol brand sales are about Rs.30-35 crores out of total sales of Rs.230 crores. They also
asserted that the consumers recognize Dettol soap as strong and effective in maintaining
personal hygiene and considers it as an efficient antiseptic soap that kills harmful germs and
bacteria and ensures good health and hygiene. They argue that Dettol soap confirms to the
standards laid down by the Bureau of Indian Standards (BIS). It was held by the plaintiff that
an order of restriction was issued against the defendants from broadcasting any commercials
containing a soap of saffron color. The defendant contended that the Dettol soap is marketed
as toilet soap. It is not labeled as an anti-bacterial soap or as an antiseptic soap. Hence it falls
under the category of cosmetic soap as per Section 3(aaa) of Drugs and Cosmetics Act. The
defendant’s product ‘Ayush’ soap is an ayurvedic preparation and is manufactured under a
drug license granted by Director of Drugs, Tamil Nadu. The defendant alleged that the
commercial was broadcast since June 2002. To this, the plaintiff contended that they

161 2003 (26) PT 461 (Del) (DB)

162 2003 (26) PTC 535 (Del)
125
preferred to conduct a market survey on this issue and then seek legal remedies. The court
observed that Dettol soap was not an antiseptic soap but the consumers perceived it to be one
of those kinds. So in the present situation the defendant by means of the commercial, making
the consumer aware of their mistaken impression. If anyone helps in correcting a mistake, it
will not amount to an illegal action. It was the plaintiff who was claiming false qualities for
its product. It also came to the notice of the court that the plaintiff had filed a complaint on
30.11.2002 with the Advertising Standards Council of India relating to the same grievance,
which was rejected on 17. 1. 2003. This matter was not disclosed by the plaintiff. The court
observed that under the Specific Relief Act 1963, injunctory relief will not be granted if an
equally effective alternative remedy is available. The court held that the injunction could not
be granted on the merits of the case. In Aasia Industrial Technologies Limited v Ambience
Space Sellers Ltd163,the first plaintiff is the sole agent who procures advertisement in India
for the channel. The second plaintiff is a company incorporated under the provisions of the
Companies Act 1956 and the owner of copyrights in various programs which are produced in
India. The third plaintiff is a body corporate constituted and existing in accordance with the
laws of the British Virgin island and conducting the business of a satellite TV Channel in
Hong Kong. Zee TV Channel is the third plaintiff. Zee TV is the exclusive licensee of the
copyright in programs telecast on Zee Channel which was granted by the second plaintiff.
These programs were being broadcast from Hong Kong and were free to air programs. The
defendants are cable network operators who use the most modern technologies. By using
those technologies they are able to block or switch off the advertisements that are broadcast
and interpose their own local advertisement by means of their video film. The defendants
have admitted and they stated that they have the right to do so. The court held that as per
subsection 37(3) of the Copyright Act 1957, no one without licence of the owner of the right
has right to rebroadcast or cause the broadcast to be heard or seen by the public for a fee. If
such an act occurs, then it will amount to infringement. So the defendants are not legally
granted any right to broadcast the third plaintiff’s program nor can they cause the plaintiffs to
be heard or seen by the public on payment of charges without license from the plaintiffs.
Even though the programs aired are ‘free to air’ programs they can only be aired by satisfying
the conditions laid down by the broadcasters/plaintiff. So the defendants are bound to telecast
the programs of the plaintiff in their entirety. As discussed in earlier case in Asian Paints (I)

163 1998 PTC (18) (DB)

126
Ltd. vs Jaikishan Paints & Allied Products164: The Plaintiffs contend copyright infringement
in respect of their label ‘Utsav’ and related artwork by defendants’ label ‘Utkarsh’. The
Defendant’s contention is, firstly, that the Bombay High Court has no jurisdiction in the case
and secondly that there is no infringement of copyright as their label and art work has been
registered under the Copyright Act, 1957. The main issue relates to the question whether
registration of copyright is optional and also whether registration of copyright raises a
conclusive presumption in respect of the particulars entered in the Register of Copyright. In
case of doubt as to who is the original creator, where two differing claims are raised, the
person who got the registration earlier should be presumed to be the original creator of the
artistic work. The plaintiff was seeking a perpetual injunction against the defendant from
using the label and also to refrain the defendant from passing off its goods as those of the
plaintiff. The defendant claimed that their work has been already registered under the said
Copyright Act 1957 and there is no question of an infringement arising. Section 48 of the Act
lays down that it is not compulsory to register a copyright. So even if the plaintiff has not
registered their work, if they can establish that they had created it prior to the defendant, the
defendants claim does not have any stand. Since the plaintiff has already registered its work it
is a clear case of infringement.

John Doe Injunction: The term ‘John Doe Injunction’ order is used in UK to describe an
injunction sought against someone whose identity is not known at the time it is issued. It is an
ex parte preliminary injunctions obtained against unidentified defendants, used to restrain
and mitigate anticipated copyright infringements. The first time this form of injunction was
used in 1852 in UK and in 2005 when lawyers acting for JK Rowling and her publishers
obtained an interim order against an unidentified person who had offered to sell chapters of a
stolen copy of an unpublished Harry Porter novel to the media165. The John Doe order has
been passed by Delhi High Court in a number of cases against anonymous offenders. For
example, Mirabhai Films got a John Doe Order against all cable operators before the release
of “Monsoon Wedding”. It was again passed against various cable operators as they were
showing pay channels using illegal decoders imported from gulf and were not paying any

164 [2002] 1 ILD 228 (Bom.).

165 Bloomsbury Publishing Plc, JK Rowling v. Newsgroup Newspapers Limited (2003) EWHC 1087 Ch.
127
subscription money to these channels. 166 In Reliance Big Entertainment Ltd. vs Multivision
Network and Ors167same order was passed for movie “Don 2” against unnamed and
undisclosed persons. Recently the Chennai High Court passed a John Doe Order against M/s
Fifteen Major ISPs and Mr. Ashok Kumar that they should not infringe the copyright of the
film “3”. In recent times we have witnessed the Chennai and Delhi High Courts passing John
doe orders suddenly at an alarming regularity to movie producers in a bid to attack piracy of
up coming releases through different mediums168. On 14th May, 2015, the Delhi High Court
granted an ad-interim ex-parte injunction to Fox Star Studios India Ltd. and Phanton Films,
the producers of the movie ‘Bombay Velvet’. The order restrains websites from downloading,
showing or providing online access, without permission, to this Bollywood crime drama
Bombay Velvet, starring Ranbir Kapoor and Anushka Sharma. The High Court has restrained
named defendants and “unknown parties” or John Does from “hosting, streaming, making
available for viewing, downloading, providing access to, sharing without authorization on
their website, in any manner, the film Bombay Velvet. On May 1st, a similar restraining
order was granted to the producers of ‘Piku’ which released last week. The plaintiff, Multi
Screen Media Pvt. Ltd., had filed the suit against 100 defendants which included websites
engaged in “uploading pirated and unlicensed content”, namely, Vimeo.com,
Thepiratebay.org, Torrentz.eu, Thiruttuvcd.biz, Merotv.net, Novamov.com, Videotanker.co,
Cloudy.ec, Vidto.me, Zuzvideo.com, Video.tt, Kickasstoreents.com and Torrentfunk.com;
the other defendants included ISPs, DoT, various cable operators who were not licensed to
distribute/broadcast Piku and unknown parties (John Does).169

Damages: Damages are another type of remedy available in case of a copyright

infringement. Damages, is the sum of money, the law imposes for a breach of some duty or
violation of some right. The object of an award of damages is to restore the copyright owner
to the position had his copyright not been infringed. The difficulties often encountered in
obtaining a satisfactory judgment in damages is the production of evidence as to the extent of
sales which have taken place and thus the extent of damage which has been caused to the

166 ESPN Software v. Tudu Enterprises CS(OS) 384/2011, also Singham case CS(OS) 384/2011;Tej Television
Limited v. Rajan Mandal (2003) F. S. R 24; Satellite Singapore PTE Ltd v. Star Cable Network &Ors (F. A.
O(OS)211/2010)
167
CS(OS) 3207/2011
168
Juhi Gupta , John Doe Copyright Injunctions in India JIPR Vol.18(4) (July 2013)
http://www.gnlu.ac.in/bc/JOHN%20DOE%20ORDERS%20%20A%20TOOL%20TO%20CURB%20PI
RACY,%20Soaham%20Bajpai.pdf.
128
plaintiff’s copyright. It is for this reason that the Anton Piller Order, which are aimed at
enabling a plaintiff to acquire evidence of infringement became important. Damages can be
of many types. Damages are divided into a number of categories upon which the recovery
may be based, such as: a) Compensatory Damages for the purpose of making a person “whole
again” (put back in the position which existed before the loss or harm). b) General Damages
which necessarily result from the act or omission – the amount needed to restore the fair
market value of the property to its owner (the injured party). c) Special Damages which do
not arise as a result of the wrongful act or omission itself but arise due to the circumstances
after the loss or harm has occurred. Special damages include out-of-pocket items that can be
documented such as the need to rent a property (such as a car rental) or the cost of services
(such as the cost to have property valued or appraised). d) Consequential Damages which
flow from the loss or harm – consequential damages are of the same nature as special
damages. e) Future Damages that are certain to occur in the future as a result of the loss or
harm, are recoverable so long as there is a satisfactory basis for which the future, anticipated
losses or harms can be determined. Without a satisfactory basis, reasonable charges,
expenses, or other costs which flow from the loss or harm – such as delivery expenses and the
cost of photocopies. f) Punitive Damages can be assessed against the party at fault to punish
the wrong-doer for his/her willful, malicious, or oppressive behavior and to deter others from
acting in a similar manner. 170 In some cases like Aktiebolaget Volvo & Ors v A. K. Bhuva and
Ors171 and Microsoft Corp. v Deepak Raval and Ors172 the Delhi High Court followed the
principle of additional damages. It was observed that the Courts in India treaded the same
path and applied the same principles as applied by US, UK and Australian Courts in awarding
the damages and have recognized that compensatory as well as punitive damages are to be
awarded. The justification for award of compensatory damages is to make up for the loss
suffered by the plaintiff and the rationale behind granting punitive damages is to deter a
wrong doer and the like minded from indulging in such unlawful activities that happens when
an action has criminal propensity. While awarding punitive damages the Courts have taken
into consideration the conduct of the defendants. In Microsoft case, the plaintiff was famous
for its software business such as Microsoft Windows, Microsoft Office etc., which have been

170 http://injury-law.freeadvice.com/property_damage/damages_type.htm
171 CS(OS) No. 808/2005 decided on 05. 05. 2006
172 2006(33) PTC 122(Del); and also Hero Honda Motors Ltd. v. Shree Assuramji Scooters 2006(32) PTC
117(Del.); Time Inc. v Lokesh Srivastava 2005(30) PTC 3(Del); Microsoft Corporation v. Vijay Kaushik &
Anr. 2011(48)PTC 127(Del)
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installed and used by millions of computers all over the world. The defendant infringed the
plaintiff’s copyright in software by loading unlicensed and/or pirated versions of plaintiff’s
software onto the hard disc of computers assembled and sold by them. The defendants
infringed the copyright of plaintiff under 14(1)(a) and (d). The amount of damages depends
on situation to situation. In Universal Music Group Inc vs MP3.Com173, was a landmark case
the Federal Court of USA ruled that MP3.com Inc. willfully violated the copyright of the
Universal Music Group Inc. and was required to pay damages of at least $118 million, or
$25,000 for each of Universal’s estimated 4,700 CD collections. MP3.com's have
unauthorized duplication of essentially every music CD ever made for the purposes of
launching a service entitled My.MP3.com or "Beam-it", which allowed users to access their
private music collections online from anywhere in the world. The court drew a distinction in
this case between time shifting and space shifting, which had previously been allowed, and
"virtual" space shifting as practiced by My.MP3.com. Before accessing a song from
MP3.com’s servers, a subscriber first had to “prove” that he already owned the CD by
placing his copy of the commercial CD into his computer’s CD-ROM drive for several
seconds or by purchasing the CD from one of defendant’s cooperating online retailers. Id.
However, it was MP3.com doing the copying from the CDs onto their servers, and the court
found this copying not a fair use.UMG argued, in part, that the copying was not covered by
fair use because entire CDs were copied (instead of excerpts) and that the use was a
commercial one (even though no fee was charged, it was supported by ad revenue). MP3.com
defended, in part, that “consumer protection” concepts supported MP3.com's unauthorized
use of the intellectual property of the major record labels and music publishers. In ruling, the
court indicated that "stripped to its essence, defendant's 'consumer protection' argument
amounts to nothing more than a bald claim that (the) defendant should be able to
misappropriate (the) plaintiff's property simply because there is a consumer demand for it.
This hardly appeals to the conscience of equity."U.S. District Judge Jed S. Rakoff held that
“There is no doubt in the court’s mind that the potential for huge profits in the rapidly
expanding world of the Internet is the lure that tempted an otherwise generally responsible
company like MP3.com to break the law, and that will also tempt others to do so, if too low a
level is set for the statutory damages in this case”.

173
92 F. Supp. 2d 349 (S.D.N.Y. 2000)

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Actual Profits: The defendant may be asked to account to plaintiff the profits earned by him
on account of infringing the copyright of plaintiff. For this purpose, there has to be an
investigation of actual accounts of defendant. In M.L.Gupta v The Board of School
Education, Haryana174 the defendant was ordered to pay 20% of the profits to the plaintiff, as
the matter copied was less than one-tenth of the book. In Lakshmikantham v Ramkrishna
Pictures175, the court held that the remedy of injunction can be joined either with that of the
damage or accounts, but the remedies of accounts and damages can in no case be joined.

There are certain defenses that are available to the defendants in a suit for copyright
infringement. Common legal defenses to copyright infringement are: i) too much time has
elapsed between the infringing act and the lawsuit (the statute of limitations defense); ii) the
infringement is allowed under the fair use doctrine (discussed further below); iii) the
infringement was innocent (the infringer had no reason to know the work was protected by
copyright); iv) the infringing work was independently created (that is, it was not copied from
the original), or v) the copyright owner authorized the use in a license.176 Few of the
defenses available which can be set up by the infringer/defendant. a) There is no copyright
existing in the work which was supposed to be infringed. If the author is not the rightful
copyright owner then the question of infringement does not arise. b) The owner of the
copyright is not the actual owner. Hence the plaintiff who has initiated the case does not have
any right to sue. c) The copied or infringed work was used for ‘fair use’ purpose as provided
by the Act. d) The work on which the copyright infringement is supposed to have taken place
is in itself a copied work. e) The work that was granted copyright was a work which was
against the public policy or is immoral or seditious. f) The defendant can also claim that his
work is original and it was not copied from any other work. g) The suit by itself is barred by
limitation. h) The person who initiated the suit/plaintiff is guilty of estoppel, consent or
acquiescence. i) It was an innocent infringement. The infringer as on the date of infringement
was not aware of the existence of a copyright for that particular work. j) Copyright misuse is
also in certain situations taken up as a defense for infringement. In general the copyright
owner has the right to reproduction, adaptation, distribution, and public performance and
display of their work. There are situations wherein the copyright owners try to use their

174 1978 I. P. C. R. 83
175 AIR 1981 AP 224
176 www.nolo.com/ChunkPCT/PCT23.HTML
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exclusive rights to gain more protection than is granted under the copyright laws. Therein
comes to play the perception of ‘copyright misuse’. Under the Copyright Law of USA, the
primary defense available for a defendant in case of an infringement suit is that of ‘fair use’.
In deciding whether a copier’s actions were fair, judges will consider: the purpose and
character of the copying (certain types of educational copying is allowed); the nature of the
original (originals made for commercial reasons are less protected from copying than their
purely artistic counterparts) the amount and substantiality of the portion copied (one may not
copy the “heart” of a work without the author’s permission); and the effect that such copying
may have on the market for the original (copying may be permitted if it is unlikely to cause
economic harm to the original author).

3.10.4 Civil Remedies under International Conventions: The enforcement of IPRs is dealt
in Part III of TRIPS agreement which provides eight Articles, dealing comprehensively with
civil and administrative procedures and remedies. There are no corresponding provisions in
the treaties administered by WIPO. Articles 44 to 66 specifically require the member States
to endow its judicial authorities with the power to issue order of injunction, power to order
payment of damages adequate to compensate the right holder where the infringer knowingly,
or with reasonable grounds to know, engaged in the infringing activity and to order an
infringer to pay the right holder’s fees. To deter infringement, Article 46 provides that a
member must endow its judicial authorities with the power to order that infringing goods, and
materials and implements used in their creation, be disposed of or destroyed without
compensation, taking into account the need for balance between the seriousness of the
infringement and the remedies ordered and the interests of third parties.

3.10.5 Criminal Remedies

Apart from the civil remedies, the copyright holder is entitled to seek criminal remedies too.
Both these remedies can be initiated simultaneously. Imprisonment of the accused or
imposition of fine or both, seizure and delivery-up of all infringing copies to the owner of
copyright are the criminal remedies. Infringement of copyright is a cognizable offence. Here,
mensrea in the form of knowledge of the accused is an essential element to constitute the
offence of infringement for criminal prosecution. In Cherian P. Joseph v K. Prabhakaran
Nair177 it was held that neglect to ascertain the facts relating to copyright will not tantamount

177 AIR 1967 Ker 234

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to knowledge. There should be clear and cogent proof of knowledge necessary to establish
the commission of offence. A criminal complaint cannot be dismissed on the ground that the
dispute is civil in character178. The pendency of civil suit does not justify the stay of criminal
proceedings in which the same question is involved. A criminal court may not give a finding
on the question of infringement if the same issue is pending for decision in a civil suit. In
Sumeet Machines v. Sumeet Research and Holding179, it was held that no prejudice is likely
to be caused to any of the parties in as much as both the actions are not mutually exclusive
but clearly co-extensive and quite different in content and consequence.

3.10.6 Criminal Remedies under International Conventions: The TRIPS agreement

provides for “criminal procedures” under Part III, Section 5 and Article 61 which contains
principles that pertain to criminal procedures for certain forms of infringement. The TRIPS
agreement requires it member countries to provide for criminal procedures and penalties in
cases on a commercial scale. Such penalties must include imprisonment and/or monetary
fines sufficient to deter infringement and, in appropriate cases seizure, forfeiture and
destruction of the infringed goods and related materials and implements. The WIPO treaties
did not mention about criminal procedures and penalties.

3.10.7 Administrative Remedies: The Copyright Act provides for the establishment of
offices and institutions like the Registrar of copyrights, Copyright Board and Copyright
Societies. Generally the remedy consists of asking the Registrar of Copyright to ban the
import of infringing copies into India if the cause of infringement is by way of such
importation.

3.11 Offences of Copyright: Section 63 of the Copyright Act lays down provisions relating
to offences of copyright. Any person who knowingly infringes or abets the infringement of:
a) the copyright in a work, or b) any other right conferred by this Act, commits an offence
under the Act except the right conferred by Section 53A. However, construction of a building
or other structure which infringes or which, if completed, would infringe the copyright in
some other work shall not be an offence under this section. The offences are punishable under
the Act with imprisonment for a term not less than six months and may extend it three years
and with fine not less than fifty thousand rupees but may extend it to two lakh rupees. But if

178 Cherian P. Joseph v K. Prabhakaran Nair AIR 1967 Ker 234

179 1993 PTC 75 (Mad)
133
these infringements were not made for gain on the course of trade or business the court is at
liberty to impose a sentence of imprisonment for a term of less than six months or a fine of
less than fifty thousand rupees. In Jitendra Prasad Singh v State of Assam180 the offence
under Section 63 of the Copyright Act, 1957 is cognizable and non-bailable. No court inferior
to that of a Metropolitan Magistrate or a Judicial magistrate of the First Class can try any
offence under this Act. 181Section 63A provides that if anyone has already been convicted of
an offence under the Copyright Act and is convicted again of such offence he is punishable
with imprisonment for a term which shall not be less than one year and which may extend to
three years. A fine of not less than one lakh rupees and two lakh rupees can also be imposed.
The Copyright (Amendment) Act, 1994 inserted a new section i.e., Section 63B which
provides that if any person who intentionally uses an infringing copy of a computer program on
a computer he is punishable with imprisonment for a term which is not less than seven days but
may extend up to three years and also with fine which is not less than fifty thousand rupees but
may extent up to two lakh rupees. If these computer programs are not used for gain or in the
course of trade or business, the court is at liberty to impose any sentence of imprisonment and
also impose a fine which may extend to fifty thousand rupees. Section 64182 of the Act
provides that any police officer, not below the rank of a sub-inspector can seize without
warrant, all copies of the work, and all plates used for the purpose of making infringing
copies of the work, wherever found, and all copies and after the seizure of such infringing
works if any person is interested in the copies of a work, or plates that are seized he has to
within fifteen days of such seizure, make an application to the Magistrate for such copies or
plates being restored to him. The Magistrate, after hearing the applicant and the complainant
and making such further inquiry, is empowered to take necessary decision and give an order
to that effect. Other than this as per Section 65 of the Copyright Act it is an offence if any
person who knowingly makes, or has in his possession, any plate for the purpose of making
infringing copies of any work in which copyright subsists. Such an offence is punishable with
imprisonment which may extend to two years and a fine can be imposed. Section 65A183 is a

180 2003 (26) PTC 486 (Gau)

181 Section 70 of the Indian Copyright Act 1957
182
Subs. by Act 65 of 1984, sec.7,(w.e.f.8-10-1984)
183 Section 65A (1) Any person who circumvents an effective technology measure applied for the purpose of
protecting any of the rights conferred by this Act, with the intention of infringing such rights , shall be punishable
with imprisonment which may extend to two years and shall also be liable to fine. (2) Nothing in this section shall
prevent any person from doing anything referred to therein for a purpose not expressly prohibited by this Act-
provided that any person facilitating circumvention by another person of a technological measure for such a
134
new provision inserted by the amendment of 2012 which deals with protection of
technological measures. Section 65B184 is also a new provision introduced by amendment Act
of 2012 which provides for protection of rights management information.

Section 66 of the Act provides that while trying any offence, the court is entitled to order that
all copies of the work or all plates in the possession of the alleged offender, which appear to
it to be infringing copies, or plates for the purpose of making infringing copies, be delivered
to the owner of the copyright. A person can be penalized for making false entries in register.
Section 67 of the Act provides that any person who: a) makes or causes to be made a false
entry in the Register of Copyrights kept under this Act, or b) makes or causes to be made a
writing falsely purporting to be a copy of any entry in such register, or c) produces or tenders
or causes to be produced or tendered as evidence any such entry or writing, knowing the
same to be false, will be punishable with imprisonment which may extend to one year, or
with fine or with both. According to Section 68 of the Act any person will be punishable with
imprisonment which may extend to one year, or with fine, or with both if he makes a false
statement: a) with a view to deceive any authority or officer in the execution of the provisions
of this Act, or b) with a view to procure or influence the doing or omission of anything in
relation to this Act. Section 68A clearly lays down that any person who publishes a record or
a video film in contravention of section 52A which pertains to particulars to be published on
records, or their containers or in video films in respect of any work without displaying a) the
name and address of the producer who has made the record; b) the name and address of the
owner of the copyright in such work; and c) the year of its first publication, will be
punishable with imprisonment which may extend to three years and shall also be liable with
fine. Another most important category of offence is related to a company. As per Section

purpose shall maintain a complete record of such other person including his name, address and all relevant
particulars necessary to identify him and the purpose for which he has been facilitated; or doing anything
necessary to conduct encryption research using a lawful obtained encrypted copy; or conducting any lawful
investigation; or doing anything necessary for the purpose of testing the security of a computer system or a
computer network with the authorization of its owner ;or operator; or doing anything necessary to circumvent
technological measures intended for identification or surveillance of a user; or taking measures necessary in the
interest of national security.
184 Section 65B -Any person, who knowingly-removes or alters any rights management information without
authority or distributes, imports for distribution, broadcasts or communicates to the public, without authority
copies of any work, or performance knowing that electronic rights management information has been removed or
altered without authority, shall be punishable with imprisonment which may extend to two years and shall also be
liable to fine; provided that if the rights management information has been tampered with in any work, the owner
of copyright in such work may also avail of civil remedies provided under Chapter XII against the persons
indulging in such acts.
135
69(1) of the Act, if an offence is committed by a body corporate which includes a firm or
other association of persons, the following person will be held liable to be proceeded against
and punished. The persons are every person who at the time of the offence was committed
was in charge of, and every person who was responsible to the company for, the conduct of
the business of the company, and the company. If a person can prove that such offence was
committed without his knowledge or that he exercised all due diligence to prevent the
commission of such offence he will not be held liable. Section 69(2) provides another
important aspect is that if it is proved that an offence under this Act has been committed by a
company, and that the offence was committed with the consent or participation of, any
director, manager, secretary or other officer of the company, or by their negligence such
director, manager, secretary or other officer will also be deemed to be guilty of that offence
and will be liable to be proceeded against and punished. The offences committed by a
company can only be tried by a court which is not inferior to that of a Metropolitan
Magistrate or a Judicial Magistrate of the First Class. If a person is aggrieved by the order of
either a Magistrate or the Registrar he can prefer an appeal to the higher authority. The
Copyright by way of Section 71 and 72 makes available the provisions for appeals. Any
person who is aggrieved by an order made by a Magistrate within thirty days of the date of
such order, may appeal to the court to which appeals from the court making the order
ordinarily lie, and such appellate court may direct that execution of the order be stayed
pending disposal of the appeal. If any person is aggrieved by any final decision or order of
the Registrar of Copyrights, he can within three months from the date of the order or
decision, appeal to the Copyright Board. If any person is aggrieved by any final decision or
order of the Copyright Board, an appeal can be made within three months from the date of
such decision or order, to the High Court within whose jurisdiction the appellant actually and
voluntarily resides or carries on business or personally works for gain. An appeal will not lie
against the order made by the Copyright Board if the copying of any literary, dramatic, musical
or artistic work issued to the public in a manner sufficient to satisfy the reasonable requirements
of the public; if any records are issued to the public in sufficient quantities; if the term of
copyright for any work is shorter in any other country than that provided in respect of that
work under the Act. In a recent case Phonographic Performance Ltd & Ors v Union of India

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& Ors185 the Appellants and the respondent number 3 in each of the appeals respectively had
entered into copyright license agreements for separate radio stations. Respondent no.3 in each
of the appeals had subsequently been granted radio license to run/operate FM Radio. It was a
term of each of the said copyright license agreement that the tariff being paid there under was
subject to adjustment as per final order of the Copyright Board. Institution of the writ
petitions from which these appeals arise itself was misconceived, once the order dated 25th
August 2010 of the copyright board, in compliance of which the impugned compulsory
licenses were issued, was subject matter of the statutory appeals. Section 72(2) confers a right
on any person aggrieved by any final decision or order of the copyright board, to appeal to
the High Court. Jurisdiction of the High Court in such appeals is not circumscribed to
questions or substantial question of law or in any other manner. High Court, is exercising
appellate powers under section 72(2) of the Copyright Act, has jurisdiction to go into the
question of fact as well as questions of law which may be arising in the license.

3.12 Enforcement of Copyright: Copyright is a negative right granted to the owner of a

creative work. It is essentially a private right to decide how to enforce the rights that is what
to do when the copyright work is used without permission. These rights are exclusively
granted to the copyright owner. The owner has the right to resort to both civil and criminal
remedies. If someone violates the rights of a copyright owner, the owner is entitled to file a
lawsuit against the infringer in the court to issue orders (restraining orders and injunctions) to
prevent further violations and award monetary damages if suitable. In India, copyright
enforcement improved with the amendment of the Copyright Act in 1994, w.e.f 10-5-1995 by
making punishments for offences more stringent and provided for enhanced convictions in
cases of continuing convictions. It also declared infringement of copyright as an economic
offence so that the period of limitation as provided in the Criminal Procedure Code is not
applicable to these offences. The amendment made infringement of copyright as cognizable
and non-bailable offence. Section 64 of the Indian Copyright Act 1957 provides that “Any
police officer, not below the rank of a sub-inspector, may, if he is satisfied that an offence
under Section 63 in respect of the infringement of copyright in any work has been, is being,
or is likely to be, committed, seize without warrant, all copies of the work, wherever found,
and all copies and plates used for the purpose of making infringing copies of the work,

185
2015(63) PTC 178 (Del) (DB)

137
wherever found, and all copies and plates so seized shall, as soon as practicable, be produced
before a magistrate. Even though this provision is made available in the Act, it is difficult to
actually implement it. To have a better understanding regarding the copyright enforcement it
will be better to take a look into a specific problem i. e., piracy in the film industry. The
Indian film industry is largely threatened by cable piracy, video piracy, CD and VCD piracy.
Films appear on cable without any authority as soon as they are released in the theatres, or at
times even earlier. Overseas rights of Indian films are sold simultaneously along with the
release in India. Films are copied and ‘punched’ on Beta recording machines abroad from
where they are then copied onto VCDs. Several copies are made and sent back to India. This
is not a problem faced exclusively in India but throughout the world. This problem to a
certain extent has been aggravated by the advancement in the technology. The Government of
India has taken some severe and bold steps towards an efficient enforcement of Copyright.
The government has taken measures for better enforcement of copyright laws: a) The
Department of Education, Ministry of Human Resource Development, Government of India
has constituted a Copyright Enforcement Advisory Council (CEAC). The CEAC is
reconstituted from time to time to review periodically the progress of enforcement of the
Copyright Act and to advise the government on measures for improving the enforcement. The
Copyright Enforcement Advisory Council (CEAC) was set on 6 November, 1991 which has
members from various State Governments. Senior IG and DIG level police officers,
representatives from different Central Government ministries, all of whom are concerned
with the enforcement of the provisions of copyright law in an official capacity in one way or
the other. Moreover, the Copyright Enforcement Advisory Council also has members from
the industry and copyright societies like Indian Music Industry (IMI). The whole purpose of
the advisory council is for the members to interact with each other and drawing from their
vast experience to find out and plug any lacuna in the existing copyright law and thereby to
enhance enforcement. Several ideas were mooted by the council like special courts to try
separately copyright offences, special police force for enforcement, creation of separate cells
in state police headquarters. Special cells for copyright enforcement have so far been set up in
the following States and Union Territories: Andhra Pradesh, Assam, Andaman & Nicobar
Islands, Chandigarh, Dadra & Nagar Haveli, Daman & Due, Delhi, Goa, Gujarat, Haryana,
Himachal Pradesh, Jammu & Kashmir, Karnataka, Kerala, Madhya Pradesh, Meghalaya,
Orissa, Pondicherry, Punjab, Sikkim, Tamil Nadu, Tripura and West Bengal. States have also

138
been advised to designate a nodal officer for copyright enforcement to facilitate easy
interaction by copyright industry organizations and copyright owners. For collective
administration of copyright, copyright societies are set up for different classes of works. At
present there are three registered copyright societies. These are the Society for Copyright
Regulations of Indian Producers of Films & Television (SCRIPT) for cinematographic films,
Indian Performing Rights Society Limited (IPRS) for musical works and Phonographic
Performance Limited (PPL) for sound recordings. 186 The Copyright (Amendment) Act, 1994
provides for setting up of separate copyright societies for different categories of works.
Around three copyright societies have been registered so far: one each for cinematograph,
musical works and sound recordings. Even though the copyright owner is granted some right
unless, it can be properly enforced, it is equivalent to not having any right at all. There have
been very few prosecutions under the Act and the cases that have gone to appellate courts
show that the High Courts do not view criminal prosecution for infringement of copyright
with due seriousness as it is reflected in judgments of Delhi High Court and Bombay High
Court. 187

3.13 Conclusion

Our domestic and international Copyright Acts and Conventions have defined copyrightable
works and their scope as what constitutes literary works, musical works, dramatic works and
artistic works, as well as sound recordings and cinematography works and we find that there
are several decided cases interpreting and defining and redefining the scope of these works in
several situations which again depends on the circumstances of each case. The scope of rights
enjoyed by the copyright owner in the case of literary, musical and dramatic works differs
slightly from those in case of cinematograph films and sound recordings. There are statutory

186 www. filmpiracy. com

187 Sitaram Silk Mills v. State 91 (2001) DLT 369, 2001 (58) DRJ 692and Gulfam Exports and others v. Sayed
Hamid & Ors 2000 (2) BomCR 619, 2000 (3) MhLj 183.In Sitaram Silk Mills case bassed on the complaint of
owner of Copyright a prosecution was initiated for copyright infringement under section 63 of the copyright Act
1957and trademark infringement under sections 78 and 79 of the Trade Marks Act 1958 ( previous to Trade
Mark Act 1999) read with sections 420, 489 and 486 of IPC. A search was conducted in pursuance of the
directions of the magistrate and infringing goods were seized. The magistrate also took cognizance of the offence.
But a petition was filed before the High Court under section 482 of Criminal Procedure Code for compromise of
the criminal case. In Gulfam Exports case, the respondent ,owner of copyright filed a private complaint in the
court of Magistrate in 1991 alleging violation of copyright and after enquiry process was issued to the petitioner.
The petition filed a petition for quashing of the process on the ground that the copyright was not registered and a
civil suit was pending. Even after repeated notice, the respondent did not appear in the matter. The Court after
hearing the petitioner concluded that the complaint must be quashed since the copyright was not registered and
the civil suit was pending and there was delay in filing the criminal case.
139
barriers on copyrightability provided in section 13 of the Act itself. The reasons are firstly,
copyright does not subsist in any published work unless the author of the work is a citizen of
India at the time of publication, or in the event of him dying before the publication was
effected, he remains an Indian citizen at the time of death. Copyright does not subsist in an
unpublished work, other than a work of architecture, unless the author is at the time of
188
making the work a citizen of India or domiciled in India . In the case of joint authorship,
these conditions have to be satisfied by all the authors of the work. Apart from this, copyright
can subsist in a work of architecture only if the work is located in India. Section 13(5) also
provides that in the case of an architectural work, copyright shall subsist only in the artistic
character and design of the work and not extend to the processes or methods of construction.
Section 13(3) provides that in the case of a cinematograph film, copyright shall not subsist if
a substantial part of the film is an infringement of the copyright in any other work. Similarly,
copyright does not subsist in any sound recording made in respect of a literary, dramatic, or
musical work, if in making the sound recording, the copyright in such work has been
infringed. Again it is opined by experts that the purpose of copyright law could not be to
restrain every subsequent compiler from relying on the facts as given in this compilation,
thereby compelling him to go back to the original facts by expending labour and time. In this
chapter, the rights of authors and the concept of infringement are explained along with the
several remedies that are available to the owner of copyright in case if his right is infringed
and also how he can safeguard his rights and seek justice are discussed with the help of
several case studies. From the research, it is found that it is often civil remedies like
injunction is sought by the right holder and though criminal cases are filed often the result
would be not satisfactory and the enforcement authorities under the Act end up filing cases
with great difficulties but the infringer escapes with fines in the court (mostly in piracy
cases). In the current digital era, the number of infringers are increasing due to technology
development and it has been tough task for the enforcement authorities. Unless infringement
is viewed strictly and infringers are taken seriously by enforcing authorities and the Courts
penalize them heavily the existing copyright law will fail to protect the intellectual property
of the owner serving no purpose of its legislative existence to the right holder.

188 The limited exceptions to these requirement are contained in Sections 40 and 41 of the Act. As per these
provisions, copyright protection can be extended by the Central Government by way of an order published in the
Official Gazette (which has been so done and is known as the International copyright Order, 1958) to works that
were first published in any territory outside India, or to works of authors who are not Indian citizens.
140