TRADE SECRETS

(first introductory class)

Protective Environment – to avoid unfair competition – market players must play by rules –
the secret must have the commercial value, such that if the competitor gets it, he/she is in a
position to abuse it for unfair advantage – there must be a reasonable sincere effort to protect
the secret, irrespective of the value it holds for the company.
Information is not in public domain, which is opposite of patent system – In patents, first the
information is released and then only monopoly is granted – Ayyangar Committee Report on
Patents (before TRIPS) – having patent system indicates towards the R&D of the company –
the system incentivises inventions – the IPR regime could be curated as per the requirements
of the particular country.
GI system is followed in Europe, but in US it is subsumed in Trademark only.
Patent has 3 requirements – novelty, inventive step and industrial application – idea of
novelty varies from country to country – product and process patent
Novartis case – to prevent evergreening of patents – Germany amended the law according to
India’s approach
In India we rely on contracts to determine if the trade secreted is violated, we do not have any
specific act as such – check Article 39 of TRIPS
Nothing is defined in TRIPS in light of protecting the country’s sovereignty – countries are
free to frame their laws according to their needs
If the information is patented – the person enjoys supreme monopoly over the commercial
exploitation of information – whereas, there is no time limit as such in case of TS
TS is an easy escape route if one does not wish to qualify the invention as patentable – no
need to satisfy three pillars of patentability – for instance, coke’s recipe might not fulfil the
require of inventive step – another reason to go for TS is when the information could not be
extracted by reverse engineering – if the product is easily reverse engineerable, one should go
for patent to enjoy monopoly at least for 20 years
Coke’s formula is protected in a Vault in Atlanta – only two persons can know the formula at
a given time – only these persons can oversee the preparation of coke – shows the strength of
the TS about how it is protected
Ted Banner v. DVD case (in course outline) – to prevent the duplication of DVD, every
consumer was contractually bound to not reverse engineer it – if a secret is no longer a secret,
the person has no right over it
Check the US Trade Secrets Act
Hegel’s concept of IPR – every creation is an extension of creator’s personality – what if
someone creates a very similar product like coke – coke cannot have a contract with the
people to prevent reverse engineering of its product – the contract cannot withstand, as no
additional benefit is given to the people – free flow of information cannot be prevented –
check Article 19 of the ICCPR – flow of information could be restricted by law to maintain
the public order Read the case on industrial espionage – Google Classroom – Violation of TS
is usually hushed up.
December 15, 2020
Paris Convention – check
Industrial Espionage case – General Motors and Adam Opel v. Ignacio Lopez – Ignacio
Lopez brought in huge profits for GM – he knew about a lot of things about the company –
knew a lot of secrets in 1992-93 – He was then poached to Volkswagen in Germany – GM
proved beyond reasonable doubt – he carried 20 cartons papers worth of secrets – these
papers were put in the system before they were shredded.
Did the US legal system could have protected this – GM was American – Defendants were
European – Is Lanham Act applicable – the act very narrowly defines unfair competition –
Opel tried to invoke Section 44B of Lanham Act - I, as a German, am entitled to the
protection of the Lanham act as well as the additional protection of Paris convention (Article
10 bis) – Protection of Lanham Act+ provisions of this special treaty – Unfair competition
was very narrow - it is too restrictive on the account of what unfair competition is – Lopez
could have been let free if he would have been tried under Lanham Act only
Opel argued that both the countries were party to Paris Convention – Section 44b of the
Lanham Act - foreigner will get benefits of Lanham act as well as the special treaty, Paris
convention – Article 10 bis of Paris Convention of unfair competition was relied on to bypass
the narrow definition of Lanham act's unfair comp – avenue of national treatment was opened
– Article 10 bis is very wide – it provides for ‘contrary to honest practices- in business and
commerce’ – defendant wanted applicability of Lanham Act – enforcement problem faced by
the Court – Paris Convention was read in the Lanham Act – if interests of the company lies in
foreign land, the judgment would be accordingly applicable – but the case was settled by
NDA and Volkswagen had to buy assets worth 1 billion from GM
Problem: GM could not have been allowed to invoke Paris Convention – Opel was included
as the plaintiff to go beyond the Lanham Act and bring in Paris Convention, as Opel was the
European partner of GM – The case highlights the importance of Trade Secrets back then
Germany didn’t want to recognize the judgment – sovereign war – America wanted to save
the interests of GM by holding Volkswagen liable, whereas Germany wanted to protect
Volkswagen – brings in issues of sanctions and trade war – US 301 List
Philips Morris Uruguay case – tobacco packaging
UNFCH provided for 80% of packaging of tobacco to be a health advisory – Phillips was
unhappy about it as he thought his profits would take a hit – to bring the dispute he set up the
company and forced to file the case before ICSID.
Trade Secret – IP or not IP – there is a debate if TS constitutes IP or not – TS mostly
constitutes information – TS has nothing to do with expression of information (hence, it
cannot be protected as copyright) – commercial use of information is focused upon - Mark
Lemley v Robert Bone debate
Article 31 bis of TRIPS – allows compulsory licensing to developed countries – the primary
criticism is that this deepens the discrimination of sub-Saharan countries that have poor
infrastructure – but why not provide these poor countries with infrastructure so that the make
their own medicines - https://www.mondaq.com/patent/728020/article-31bis-of-trips-how-
can-african-countries-benefit-from-this-amendment
Evergreening by Pharma Plus – happens in pharmaceutical sector – Tyco tiles case – Novartis
case in India
December 17, 2020
IPR is a bundle of rights – one can negatively enjoin others from using the IP – in case of
Trade Secrets some information can be used for commercial advantage – however, one
cannot ask others to not reverse engineer to know about the contents of the product –
Lockean labour theory comes into play w.r.t. other forms of IP, except TS – In case of TS
only unethical misappropriation can be protected
For an information to be a TS the information must have commercial value – but if the
information is secret how do we determine it has commercial value? – what is the
commercial value we are looking for? – Value of TS is dependent on its usage
Bridgestone v. Firestone – Relating to TM – continuous usage is required – if the mark is
not used, registration does not hold any value and the infringer would not be liable
However, in case of TS continuous usage is not required – Dr. Pepper used to sell cola –
couldn’t function during world war – sought to sell the production along with TS – does TS
holds any value? – TS does not require continuous usage
Peabody v Norfolk – Price of goodwill and trade secrets can be added – the case was
followed till 1868 – till positivism
Realism school came and denied the value of intangible property – affected the protection of
TS as property – it was sought to be protected under the umbrella of unfair competition - sui
generis scheme of protecting TS - uniform trade secrets act
Nemours Powder v. Masland – check the case – you do not know the commercial value of
the info. – it is the duty of the establishment to keep the information secret – the value is not
determined by the contents of the information, but by the attempts undertaken to keep the
information secret – the focus is on the secrecy of information, instead of the contents of the
secret recipe – only treated as IP when there are attempts to misappropriate the property
It is treated as property because of the interests of the competitors to know the contents – this
thus, attracts the negative right which makes it a property – ‘situational’ property
Vickery v. Welch, 1837 – check case (missed 15 mins – erratic internet – ask for
recording)
.
Is TS an intellectual property or not?
The notion of IP is based on the idea of quid pro quo – information is released for the society,
and in return the society gives the monopoly to the producer for exploitation of the
information
Nemours Powder v. Cristopher – construction of manufacturing unit was going on – a
person was taking the ariel pictures of the manufacturing unit – unethical in nature – the case
was based on the idea of trespass and nuisance (connotation of the law of torts) – Robert
Bone argued for the scheme of TS to be the creation of our imagination – there is no
“normative justification” for enforcing TS – a method for enforcement of common law rights
– this is before the sui generis protection of TS
Argument for TS to be considered as a separate branch of IP – TS is some form of quasi-
property – if there are attempts to steal it, the owner is deemed as the owner of the property -
but at the same time the owner cannot injunct the world at large to investigate the contents of
the information, but can injunct against the spies – majority of litigation in IP is for protection
of TS – ‘quid pro quo’ is based on the idea that people should invest in knowledge and build
their own ideas
Opposite idea (against Robert Bone’s idea) – the case would not have come forth, if the TS
would not have been misappropriated – now there is a sui generis protective scheme
December 18, 2020
Classification of TS as a property – there are certain justifications for the same – property
connotes the idea of bundle of rights in case of IP – negative right to enjoin others from
violating the IP rights – but in case of TS secrecy is maintained – cannot enjoin others from
reverse engineering the product to know the formula
Gives the idea that TS is a quasi-property – can enjoin the stealing of information – there is
no quid pro quo in case of TS, like there is in copyright, trademark and patent – According to
Robert Bone, if quid pro quo is the determining idea, then why TS is an intellectual property
India still harps upon the idea of non-disclosure agreements (that becomes operational after
information has been disclosed) instead of favouring sui generis protection for TS
Ruckelshaus v. Monsanto – when Monsanto applied for market approval, it was required to
give some documents which were TS for Monsanto to environmental inspector – the
information was published along with TS and Monsanto sued the inspector – in India we
don’t have information or data exclusivity – the court sided with Monsanto and approved
compensation – but the question was id appropriate compensation can be decided for
something that is to be kept secret for perpetuity – the SC had no answer – the inspector was
the organ of the state, so the compensation was only available for the information that was
solemnly sought to be kept secret – SC observed that TS is not an IP, because TS is not a
negative bundle of rights (others can’t be enjoined from reverse engineering) – SC was
criticised
Argument against this – In product patent the owner does not want to exercise negative
bundle of rights – does this make patent a not IP
Pharmaceutical authorities need to give data for market approval – the data is very
confidential – no data exclusivity in India – market approval takes around 7 years after patent
grant (leaves only 13 years for monopoly) – data is available for generic producers, who
release cheap drugs as soon as 13 years end
https://www.bbc.com/news/uk-england-tyne-40416049 - The IP holder was criticised for
exercising negative right – anti-people attempt
L’Oréal v Bellure – secret contents of the perfume – Bellure came up with same kind of
scent and advertised it as just like L’Oreal – unfair competition was invoked – when
information of TS is under attack, it assumes the role of super property – TS has a protection
of its own
Theory of integration – demands for TS to be considered as IP, as per Lockean labour
theory – society has free resources, which we can use and come up with something new –
protection is available for such inventions – but by this logic any information could become
IP (demerit) – such an approach makes IP exclusionary if information is so rampantly treated
as IP – hindrance to the engine of freedom of speech and expression
Therefore, the middle ground was suggested by Pamela Samuelson – we never follow
inclusionary or exclusionary policy in toto for TS – in the case of Vickery v. Welch (sold
factory along TS – TS was sold for higher value – after sale he told everyone the secret –
sued – the court observed that there was an implied non-disclosure, considering higher value
was paid for the info.) – Pamela argues that TS is to be treated as an intellectual property –
calls the ethical practices and morality of the society to not meddle with the secrecy of the
information and not indulge in misappropriation (social obligation) – it is not about the
contents of the information – most of the scholars thought that it is the contents of the
information that hold commercial value as against the idea of Pamela
December 22, 2020 (Integration and Exclusivity approach)
Pamela argues that commercial value is derived by the marketability of the information (it is
not about the content of the information) – this makes trade secret a property – there should
not be unjust enrichment
Feist v. Rural Telephone – Company B reproduced the same information produced by
company A (that has invested labour – integration approach was followed, which falls
under the sub-school of Lockean labour theory) – argued for copyright violation – Court
said this would give Company A exclusivity over information, but protection is only
available for innovation – it was observed that this would stifle freedom of speech and
expression
When Locke formed his theory, he might have not thought about IPR – he might have
focused on exclusivity taking into consideration the physical property – IPR information is
non rivalrous (knowledge is non-rivalrous – someone else can use my copyrighted work) –
whereas, physical possession is rivalrous – meddling with private property gives birth to
claim of trespass
Trade Secret is slightly rivalrous – my use of information does not allow others to use it –
further, it cannot made public – trade secret has to be treated as conventional property in
accordance with integration approach, that falls under Lockean labour theory
However, it is not a property as per the exclusivity approach (negative bundle of rights) –
in other forms of IPR reverse engineering is prohibited by virtue of monopoly – however, in
case of TS reverse engineering cannot be prohibited (one does not have negative bundle of
rights – only available if one tries to misappropriates the property)
Exclusive Justification of property (first justification)
Integration Approach/Lockean Labour (second justification)
Third Justification (philosophical) – Veil of Ignorance Approach (by John Rawls)
When society is developing the protection policy without thinking the outcome, such that the
person with least resources gets the benefit (on account of redistribution of resources)
This has to be connected with the sui generis approach for protection of TS – because it
was not known if keeping the information would benefit the society – what if the person who
came up the information uses the information in such a manner so as to monopolize the
production at the cost of others – to keep this in check, reverse engineering of the secret was
not prohibited (would help in avoiding the harm)
Social bargaining took place – gives protection to the innovators, who will in turn do not
prevent reverse engineering of the product
Economic and Innovative Justification of TS by Mark Lemley (the surprising virtue of
TS as an IPR) – TS should be recognized, because otherwise people will invest massive
amount of money to keep the method secret, which could otherwise have been channelized in
R&D – the idea is to lower the cost of keeping the information secret
Innovators must continue to innovate without fearing that the information would later be
disclosed.
TS should not be studied in isolation, but must be studied in comparison with Patent – it is
difficult to satisfy three pillars of patent, which is not required to be done in case of TS –
Patent serves as a demoralising and demotivation force, which puts tremendous amount of
R&D at stake (Section 3 of Patents Act, section 3(d)), whereas, TS on the other hand comes
out as a saviour – this gives choice to the investor
January 4, 2021
Mark Lemley’s theory – in support of TS as an intellectual property – challenged the theory
of Robert Bone
He took the idea of Bone who said that TS is extrapolation of torts and contracts and
criticized it – questioned regarding protection of secret (example of Du Pont v. Christopher
case – aerial pictures of the plant) – Lemley argued that TS if only studied from the angle of
IP, then only it could be useful in promoting invention and creativity – protection under
existing law does not help in promoting invention – torts only deals with giving
compensation, and contracts only gives damages – but it misses the whole point why the
information is being protected
What is the reason for reading the confidentiality in protection (as victim is given
protection for breach of duty of confidentiality)? – why the common law is upholding the
relation of confidentiality between two strangers (the idea is presupposed under the common
law) – this is because TS is based on the idea to inherently uphold confidentiality and
promoting creativity and innovation in the society
In case of contract law – contract is dependent on the principle of privity (right in personam)
– if you accidently get the recipe of coke, contractually you are not obligated to not use it –
but you are barred from using it based on the principle of equity and unfair competition (tort)
In case of property (reference to Ruckelshaus v. Monsanto) – a private company that has
given information to environment watchdog, and he publishes it – can an action be taken
against this? – the idea is that physical property is rivalrous, but in case of TS the information
is protected to enhance the level of technology and innovation in the society – knowledge is
non-rivalrous
Apart from tort, property and contract law, even the criminal sanctions are involved – all
these arms only focus on the remedy
Issues with the approach: Interplay of different laws created vagueness and hotchpotch –
resulted in dearth of certainty in the subject matter – creates a problem about which actions
must be punished and the kind of punishment – in this sense, TS suffers from uncertainty as
you don’t know what kinds or forms of misappropriation are actionable – initially, it was
sought to be protected as a property
Lemley argued that TS law is sought to protect commercial morality – read Article 10bis. of
Paris Convention – argued that TS cannot be studied in isolation
Argument – patent law is based on disclosure, that has also helped in increasing innovation –
but patent is based on 3 pillars, which at times are difficult to satisfy and may disincentivize
the innovator – TS fills in this vacuum and gives reward to the innovators (e.g. a new
technique of surgery can be protected under TS) – In India, where there is no sui generis TS
regime – doctor would only employ 2-3 persons, and would rely on non-disclosure agreement
– increase of legal cost – this would hinder the benefit that could have been given to masses –
thus, in a way, even if the idea is kept secret, it would still help people
Section 3(j) has hindered R&D in biotechnology – we lose the first mover’s right because we
don’t have sui generis Trade Secret regime – society suffers as a result of this – this example
challenges the argument by Bone
Protections that could be reverse engineered shall not be protected as TS – since TS give the
monopoly for lifetime, Bone was against the idea of keeping the information secret
Take the example of Keewanee Oil v. Bicron Corp. – comparison between TS and Patent –
check the case – subject of Patent and TS are different – one pillar supports the other – IPR is
based on free flow of information – TS is also in support of disclosure of information
January 5, 2021 (revision of previous class)
After the ONCO Mouse case in Canada, the R&D dropped to 1/3 rd – Section 3 of the Patents
Act has similar effect in India – many of the inventions are not patentable under Section 3 –
in addition, many inventions fail to satisfy the three pillar test of patent – this affects the
disclosure of information, as there is no consideration flowing from the government – this is
where the TS comes in as it makes the technology accessible (fills the void) – TS gives the
backdoor entry – over the years, society becomes smart enough to figure out the technology –
this process incentivizes innovation (first arm)
Incentivizes Disclosure of information (second arm) – it discloses the information, but
keeps it secret – information is valued because of its secrecy (little convoluted)
Information paradox – the buyer wishes to get the information before he purchases, but the
seller does not wish to disclose this information, in order to preserve its commercial value –
in this situation, the TS comes in play to preserve the competitive edge of the seller – implied
confidentiality kicks in – one who gets the information in the form of business proposal has
the obligation to keep it secret
For TS, one has to show that the information was intended to keep secret and efforts were
done in that regard – however, laws like torts, contract law, etc. only focus on remedy when
the duty of confidentiality is breached – do not focus on why the information is being
protected
If A tells idea (TS) to B and B does not find it worthy of investing – the information appears
in newspaper next day – if B uses the information now, he is not liable under sui generis TS
protection, however, he is liable under torts law on account of breach of confidentiality – this
shows that the allied laws only focus on remedy, and not on why the remedy is being given
Incentive to Disclose – disclosure protects business intelligence and competitive edge – this
saves the cost of the manufactures to put employees under surveillance – saves legal cost also
Secrecy is central core to the TS litigation – litigations are very cheap as compared to Patent
violation litigations
Can companies put the obligation on people through the contractual route to keep the
TS information secret? – No, this route is not permissible – producers have to put the efforts
to keep the information secret – because if this is allowed, no one would go for patent – as
everyone would choose this route and enjoy the monopoly forever.
January 7, 2021
In India, sui generis protection of TS is still not available – reliance is placed mostly on tort
law and competition law (relating to unfair competition) for extending protection
India is a party to TRIPS – Article 1, 2 and 39 of TRIPS focus on protection of undisclosed
information – Article 39 incorporates the essence of Article 10.bis of Paris Convention that
deals with unfair competition – according to Article 10.bis nothing is allowed that is contrary
to honest business practices – India has not followed this approach – India stated to GATT
in 1989 that non-disclosure of information hinders innovation
Brady v. Chemical Processes Pvt. Ltd. – Fodder processing units were sought to be created
by thermal processing plants – defendant was made aware about the blue print of the plant –
defendant denied that he could not make the product – however, after 6 months the defendant
launched his own similar kind of product for fodder processing – the Court read implied
confidentiality in the business transaction (contractual route)
However, contractual transactions presuppose relationship between parties – for instance, if
defendant had passed the information to third party, who would have launched the product,
the Court in such a situation could not have given the remedy – this is because there was no
privity between the plaintiff and third party – this is a loophole – as suggested by Lemley, the
law of contract was not formed to protect confidential business information – the approach
cannot give the remedy is information is leaked to the third party
Simone v. Pharmaceutica Situation – Patent is awarded to innovator A in US, but he does
not have money to launch the product in the market – A goes to investor B and signs the
special technical know-how to produce the product – the product is launched in the market –
the product was sought to be produced in India – the license agreement was signed with
Dabur, which contained technical know-how clause for production of product – After 20
years the Patent expires and Dabur cancels the agreement and started to sell the product
individually – but the technical know-how information was never released in public domain
through Patent – this sensitive information was sought to be protected as TS by the innovator
The policymakers in India are very anti-TS – it was argued before the Delhi HC that technical
know-how should have been disclosed before the Patent office – in India either-or approach
is followed – if one invokes Patent, he cannot invoke TS – this approach is antithetical to the
idea of innovation – because of this embargo, innovators would not work to come up with
efficient ways for production of product – no innovation would bring the product to a
standstill
Judiciary has majorly mistaken the approach that it should have taken with respect to
protection of TS – stifles the innovation for efficient production – the product would never
attain perfection, as no one in this situation would be interested in innovating the product –
artificial embargo on genuine innovators – advancement in technology weighs over freedom
of free speech – this sets back R&D in the country which affects the public database of
knowledge
In 1995, when India was given flexibility to not give product patent to pharmaceutical
drugs for a period of 10 years – only process patents and exclusive marketing rights were
given (mailbox application system)– it is easy to reverse engineer these drugs – India became
powerhouse of generic drugs – but this affected the R&D in pharma sector – India failed to
come with new medicines in the race to make the medicines cheaper – this increased the cost
of technology in the years to come
Copyright – natural right – the product is to be fixated and published for exercising the right
Govindan v. Gopalakrishnan (1955) – the Court argued for protection of TS information
within the ambit of copyright – TS deals with commercial viability of information, if the
information is kept secret – but CR protects unique form of expression, once it is published in
public domain – dichotomy
Information is not copyrightable – only the unique expression of information could be
protected – TS is also the mixture of information, but it is to be kept in the folds of secrecy –
Google uses cookies to create a profile of the user – cookies are raw data, is TS for google –
the profiling of user based on processing of data is unique expression information, but google
wishes to protect it as TS – google does not want to protect this information within the ambit
of CR, as it would require google to publish this information – however, this would reduce
profitability of google – secrecy is more commercially valuable for google
What if in the absence of NDA, an employee releases the information in public – this
would cause huge losses to google – google can argue CR protection – but what is value of
data if it cannot be used? Thus, TS is more suitable.
Generics v. Shailendra – the Court asked the secret information to be published in written
pleading – this approach is again against the idea of TS
Ritika and Biba case – the freelance designer was working independently – when she was
working at Biba, her ideas were stolen – clothes were produced by Biba – Court suggested
that plaintiff should used CR on artistic work – it also insisted the plaintiff to produce all her
designs to show ownership – also, she lost protection for industrial design, as more than 50
copies were produced
America wants Indian IP regime to be in line with it, but it could not impose direct
sanctions - Special 301 list by US – contains the names of countries that are dubious w.r.t.
implementation of IP rights – India is also present in this list
January 11, 2021 (missed starting 10 mins – result – ask for recording)
Laitram v. Deepsouth – innovation for deveining of shrimp – it was a combination patent,
as different units were not patentable, whereas the whole setup qualified for the requirement
of inventive step – the product was reverse engineerable – some people started manufacturing
individual components and exported them to different countries – these components were
reassembled by the importers and final product was sold in the market
Commercial monopoly – in the form of social bargain – rights are to be read liberally,
because if you read the right strictly, there is no limit to extension of rights – and this
extension of rights beyond a certain limit will go beyond the social bargain – it was argued
that if the interpretation is being upheld in such a manner, it violates the rights of the
innovator – Court was fearful that expansion of right would open the pandora box and stifle
innovation
Every form of IP is subject to some form of abuse – it is on the innovator to make the
innovation in such a way that he can milk maximum amount of money
Congress cam up with the amendment to rectify the error made by the Court (condonation of
infringement) – extraterritorial commercial infringement – person is liable, as the act of
infringement began in America itself, which formed the basis for infringement in another
country
Microsoft v. ATNT Homes – ATNT has some speech recognition software – the patent
could only be infringed if it could run in the computer program (product patent) – Microsoft
made the software in America but did not use it – but they sent the software to Country A
where it was replicated in thousands – sent to Country B where it was eventually sold to the
people and downloaded in computers (actual infringement)
Manufacture of certain products in America, facilitated infringement in another country – but
the infringement did not occur in Country A, as only copies were made – infringement was
done in country B – however, the court could not give relief, as there was no infringement in
country A and Court was not willing to expand the rights further – ATNT argued that the
same product was duplicated in country A, but Microsoft argued that infringement could only
happen, if physical copies are made, but in this case, it was only w.r.t. to soft copies
The Congress came up with other amendment to cover the duplication of soft copies as well
Shield and Sword Petitions:
Shield: involve preventing others from divulging or using alleged trade secrets
Sword: TRP case – Arnab Goswami undertook nefarious activities to promote his channel –
employees are bound by non-disclosure agreements – when police investigates, they found
about the activity – an employee gave the testimony against the employer – employer started
a petition against the employee for violation of NDA – an example of sword or ambush
petition
Slapp suits are also an attempt to ambush the participants – defamation suits are filed to stifle
speech
Example: L&L filed TS suit against Manan Lahoti, who joined Indus Law – Lahoti had
sensitive information about L&L, which was valuable for the competitor Indus – an attempt
by L&L to affect the employability of Lahoti – vulnerability of the employee is exploited,
who are not in a position to contest – in this way TS becomes a negative entitlement, as it
becomes a burden on the society – ideally suits shall be filed to protect the TS, but not as a
method to ambush employees so that they return back – thus TS should only be used as a
shield, and not as a sword
January 14, 2020
Whether TS has an adverse impact on free speech within the society? – there is a tendency of
the innovator to abuse the reward that he gets in the form of bargain (example is evergreening
of patents) – this affects the competition within the society – the competitors are not allowed
to explore the know-how – stifle free speech in the society – this works in favour of scholars
who do not support TS as a form of IP
It is the tendency of the innovator to generate maximum possible profit – they try to go
around the monopoly to generate profits – however, this is a problem with all the forms of IP
– whenever there is a leakage of secret information, the society gets access to technical know-
how – the information irreversibly becomes the part of public domain – costs millions of
dollars of R&D to the innovator – innovator tries to cover up the negligence with innovative
excuses to pin the burden on the society – this approach results in abuse of system
If an employee discloses the technical knowledge of an innovator out of grudge – the
court will grant an injunction to the innovator – the right to keep the information secret would
triumph over the employee’s right of freedom of speech – because the employee got access to
information subject to confidentiality agreement – the right of freedom of speech of
employee is significantly subdued – information was only received on know-how basis, and
nothing more – the employee himself had bartered the right of making the information public
– he could not have published the information
When employer tries to restrict the information from becoming public, it goes against the
interests of masses that was waiting to receive information – the public interest only comes
into the picture, if the information is leaked in legal manner
Ford v. Robert Lane – a car enthusiast student maintained the website regarding car models
and technological know-how – one day he anonymously he received a folder that contained
sensitive information regarding R&D of Ford and other related stuff – he put some
information on the website – Ford threatened to sue him – however, on being threatened he
put more information – suit was filed against Robert Lane – since Robert was not an
employee, he had not bartered his right – innovator’s right to keep the information secret v.
public interest (that deals with interest of public to know the information) – defendant was
exercising the first amendment right, that paved way for the interest of the public at large
who wanted to consume this information – it could not be proved that information was
revealed in breach of confidentiality agreement – in this situation the right of public interest
is at loggerheads with the right of the innovator to keep the information secret – Ford asked
for an injunction, to pre-empt Robert Lane from publishing more and more information –
pure instance of TS v. free speech – but we do not know what information Lane possesses - it
is not possible to determine if it is TS or not – if it is not TS, Lane could not be injuncted -
made it difficult for the Court to give remedy to Ford (dichotomy) – information could not be
supplied to the court to determine the nature of information, as the information is supposed to
be kept a secret – right to information is on a higher pedestal, then the right to keep
information secret – right of innovator was sacrificed, to uphold the constitutional right
Prior restraint doctrine – I (Ford in this situation) try to restrict your freedom of expression,
before you express yourself – not compatible with the society – detrimental to the idea of
freedom of speech and expression – court will only give the remedy of injunction, if the
disclosure causes more harm to the idea of freedom of speech and expression, as against
giving an injunction in the first place
Issue – the information is something, that does not belong to the public in the first place – it is
covered within the ambit of TS
In TS, compensation is not an adequate remedy – which was also the reason to move towards
sui generis protection regime of TS
Religious Technology Centre v. Lerma – a religious organisation was attacked by the
people because of radical stance – certain writings of Mr. Hubbard faced backlash from the
community – provocative writing - the documents were unpublished and the information
belonged to the organization – argued that the information was TS – argued that people
belong to different religion, and they misunderstood the information – injunction was sought
against everyone who wished to publish the information - people’s right of keeping the
information secret v. right of the centre to keep the information secret
Primary purpose of the concerned litigation – to protect the TS or prevent backlash? –
court refused to grant the injunction, as the primary intention was to prevent backlash instead
of protecting the TS – balanced approach by the Court
January 15, 2020
In Ford v. Robert Lane case, Ford Motors had the right to keep the information secret –
however, it is commonly argued that TS affects the right to free speech
The main purpose of TS is to incentivize innovation – but the innovator’s invention is kept
secret.
Illustration - Owner of a business entity committed tax fraud – prima facie evidence – no
direct and substantial evidence regarding fraud – testimony demanded from the accountant –
but injunction filed against the accountant to stop him from revealing information (argued the
NDA clause) – injunction can’t be granted (facts are broadly in line with Farmers' Group v
Lee case)
Religious Technology Centre v. Lerma case takeaway – an injunction puts the idea of free
speech at peril – it shall not be granted if the litigation is not undertaken to protect the TS – in
USA first amendment right and Article 19 is taken very seriously – importance of this is
reflected in Ford Motors case – in order to protect the freedom of speech, the court went
ahead with disallowing the injunction even though it appears that prima facie the information
was commercially sensitive – the case would have been different if the defendant had been
the employee of the Ford Motors – innovator’s right to keep information secret prevails over
the employee’s right to make the information public, because of the barter employee has
entered into with the employer
TS infringement could only be proved if there is some evidence – post infringement remedy
is worthless in case of TS – value of property is lost if the information is made public – still
the court could not grant an injunction against the person belonging to general public –
Lane’s right of freedom of speech was kept at the highest pedestal – the court does not know
the kind of information that was possessed by Robert Lane, which acted as a hindrance
The judiciary outrightly denied the innovator’s right to secrecy, placing reliance on prior
restraint doctrine – Ford’s right to free trial was severely compromised, in order to protect the
society’s right of free speech – this also goes against the idea of incentivising innovation
Balanced approach in this case would have been to allow the injunction – the idea of TS is
irreparably hurt, if the information is revealed – non granting the remedy of injunction affects
the related rights of compensation as well – plaintiff did not get the best possible remedy
Approach suggested by scholars – first grant the injunction, and then analyse if the
injunction should have been allowed or not – if later the court believes that there was no need
for an injunction, exemplary cost could be imposed against the plaintiff
Second approach – first the onus shall be put on the company to prove that the information
is TS + the company was not negligent that resulted in leakage of information – in the second
stage, the defendant shall prove that the information was not acquired illegally – this
approach opens up the possibility of levying penal charges (in the form of compensation)
against the defendant
Abuse of these kinds of litigation shall be kept in check, as was done in the case of Religious
Technology Centre v. Lerma case
Three prong test of granting an injunction is to be taken into consideration – if information is
revealed, it results in causing irreversible harm – thereby injunction shall be granted in the
first instance – if injunction is not granted, and the information is released, all subsequent
remedies fall flat – the corpus of the litigation is to be protected by the court by passing an
order of injunction
CBS v. Davies – footage of malpractices was recorded, which were sought to be made public
by the telecaster – an injunction was sought against the telecaster, arguing that the telecast
contains information about TS – it is argued by CBS that the right to telecast is a political
right – appears that the company is abusing the process, however it could be correct also
The best way to address this situation is to grant an injunction first, and then assess the
situation – if it is later found that the process was abused, the court can impose costs on the
plaintiff – contents of the information are not to be revealed during litigation – other party has
to prove that the information was not acquired illegally say by reverse engineering, Ethical
investigative journalism, etc. – the defendant would argue that it does not want to reveal the
secrets of the company, instead it is its political right to reveal the malpractices
January 19, 2020
Two classes of victims (in case of keeping the information secret v. keeping it public):
people who had prior relationship with the innovator, implied confidentiality is read into –
the right of information of these people is affected
An ordinary person belonging to the society – no implied confidentiality agreement – this
makes it a fair battle that is based on several factors – but the judiciary always leans towards
making the information public, but the concept of TS is based on keeping the information
secret – public interest and individual’s right to make the information public, overshadows
the innovator’s right to keep the information secret
Religious Technology Centre case – the injunction was sought on the ground to keep the
documents of their founder secret – did not wish the society to get access of those documents
– it was argued that the concerned documents constitute TS – three grounds of granting an
injunction are difficult to satisfy, considering the information is kept secret
R&D has to be valued, as it is integral in the path of development of the country – the state
has the obligation to protect the rights and information of the investors
Article 31 Bis of TRIPS – compulsory licensing – done in the cases, when the invention is
too costly, that it becomes inaccessible – royalty is paid to the innovator – if the innovation is
very niche, the innovator takes the benefit of it – at times the government can’t even use
compulsory licensing on account of lack of infrastructure and R&D to produce the product –
to address this situation Article 31 Bis Amendment was introduced – in accordance with this
provision, an underdeveloped country can contact another country, that can make the product
for the underdeveloped country – this is hypocritical stand, as it widens the gap between
developed and underdeveloped country – instead of focusing on the means, to make it
possible for the underdeveloped countries to produce the products on their own, it focuses on
developed countries to act as cost-effective means of production – makes poorer countries
dependent on the richer countries
January 21, 2021
Idea expression dichotomy – the expression is in such a form, that it cannot be expressed in
any other form (a mathematical equation could be an example) – this affects the
copyrightability of the expression
TS litigation – sword and shield petitions – in the instance of Starktek employee case, the
employee joined a competitor, wherein the shield petition was filed to protect the TS -
Religious Technology Centre v. Lerma is an example of sword petition, wherein the sword
petition was filed to stifle the right of freedom of speech – protection of TS in bad faith
CBS v. Davies case – there was no intention of protecting the TS – the idea was to prevent
the backlash – litigation was in bad faith – petitioner has first amendment right to petition the
government without any fear of exemplary costs – these bad faith litigations are bound to
arise, because of this first amendment right
Test of bad faith litigation:
1. The plaintiff would not get the desired remedy – only nuisance is caused
2. No object of protecting TS, but the idea is to advance selfish interests
TS litigations at times protect the interests of people who file petitions in bad faith – this
disincentivises the new entrants in the market to compete at the same level with the
established competitor, who already has the TS
For instance, say Blueberry produces water proof jeans - company B is a new entrant who
sells the same product at one-fourth the price after it successfully reverse engineers the
product – now if a TS litigation is used as a threat against the new entrant, it would
disincentivize the new entrant to continue with the production, as it does not have resources
to defend the litigation and– court cannot ask the petitioner to pay huge cost to the defendant,
as it might be in violation of first amendment right – such a situation promotes malafide
protection of TS, which is against healthy competition in the market
Sovereign always favours the big players in the market, that invest in the R&D and contribute
in the economic development of the country
In Ignazio Lopez v. GM – the information was leaked to another competitor – America’s
loss was in favour of German competitor – that’s why protection was extended to GM.
However, in case of Ford Motors v. Robert Lane, the American government did not protect
the interests of Ford motors because the leakage of information was internal, and could have
helped the development of R&D in America on a macro level
Illustration: Employee working at KFC knows the secret formula – the freedom of speech
and expression is limited – the employee cannot work with a competitor – however, what if
the information is traded to a third party, who in turn makes it public – can this employee
now go ahead with the startup, considering the information is public now? – if the
information is not traced back to the employee, he can use it, because the public nature of
information renders the NDA ineffective
January 25, 2021
Inbuilt mechanisms in TS to balance the rights of the society and the innovator – TS as a
IP has not been fully developed in terms of commercial viability – the conflict of TS v. free
speech will continuously rise – principles of TS that come into play to protect the right of the
society and keep in check the abuse of TS – the mechanisms are ingrained in the TS
jurisprudence itself, but they are not sufficient – for example, something that is put on in
internet is communicated to the world at large, because of which the damage is irreversible –
5 limiting principles – system of TS will take care of itself in case there is any conflict with
the rights of the society:
1. Principle of Reverse Engineering - Chicago Locks v. Fanberg – misappropriation of the
TS by Fanberg – the product was reverse engineered and the key codes were published – the
court was reluctant to give remedy to Chicago locks – no illegality was involved, and there
was no mala fide intention – if the court would have given the remedy, it would have
amounted to giving a commercial monopoly, which is at the pedestal of the patent – in the
patent there is a bargain, wherein monopoly of 20 years is awarded on making the invention
public, which is not the case with TS – hence, the protection was not given
2. Principle of Pre-emption – De Simone v. Farmaceutica – TS and Patent protection is
either or approach (case discussed above) – extreme fallacy – because Delhi HC believes that
once the patent is filed, there could be no further innovation in it – the approach arrests the
development right of the innovation – innovator is not supposed come up with a better
production technique – minor modification is permitted [check Section 3(d) of the Act]
Kewanee v. Bicron – Kewanee produced crystals, and Bicron was constituted by the past
employees of Kewanee and came up as its competitor in the market – misappropriation of TS
was agued – Bicron argued that manufacture of crystals fulfils the three requirements of
patentability – it was argued that Kewanee was duty bound to file for the patent, and if patent
is not taken, you cannot claim protection under TS – further, you are further estopped from
getting the patent, as the monopoly was being enjoyed for such a long time without disclosing
the invention to the public – the question is if you fulfil the requirement of patent, are you
pre-empted to take protection under TS regime – in the decision, the court appreciated the
idea of pre-emption, and observed that the innovator is not obligated to go for patent
registration – it was observed that two regimes are very different, and the innovator is free to
chose one of the two – not similar to Delhi HC decision in De Simone case
If after filing the patent, the innovator gets some subsequent information, he can choose to
protect the information as a TS – he is not bound to protect this information as a patent
3. Principle of Accidental Disclosure – the onus is always on the innovator to make sure
that the information is not made public even accidently – in case the information is leaked
negligently, he is estopped from claiming the protection – mediating principle – accidental
disclosure is irreversible
4. Limiting Liability against Third Party Disclosures – Robert Lane v. Ford – Robert
Lane was a third party – the primary mis-appropriator is always liable for leakage of
information (direct case of infringement) – however, the liability of the secondary mis-
appropriator is very limited in case of TS – for the secondary mis-appropriator, if it could not
be proved that misappropriation was mala fide, there could not be any liability – if this
approach is not followed, it would mark the death of free speech – this is an uneven barter,
that is need to be digested – bias against TS, wherein leakage of information is not frowned
upon
January 27, 2021
5. Cause of Social Concerns – If there is a direct clash between keeping the information
secret and socialistic concerns (public interest) – if the public is interested and there is hue
and cry, the court might bend in favour of public support – in Robert Lane v. Ford case , the
public was in favour of release of information, on account of jobless growth – the judiciary
acted as a conduit to release the information, in order to quell the rising animosity between
the entrepreneur and the working class of the society – there was no inherent loss the
sovereign, as the information was consumed by the American citizens only
Argument by Pamela Samuelson - If the information that is so technical, that the people
won’t understand, there is no need to release the same, because in such a case information
will only benefit the competitors – if the information is not comprehensible, it shall not be
released on account of public interest
There was an alleged claim against Coke for using pesticide in the production process –
petition was filed for revealing the TS on account of public interest relating to health – this
acted as a sword petition against coke – however, later the Bombay HC permitted withdrawal
of petition and upheld the role of FSSAI certification – these kinds of campaigns at times are
supported by the competitors who wish to leech the R&D of the competitor, in the garb of
public interest
January 29, 2021
TS information is rivalrous – public always wants to know what it is, considering the amount
of revenue it generates for the innovator – innovators, in order to deter the society from
accessing the information, started to use mix of strategies:
If Google stores the cookies, and forms raw data, known as data A – on the basis of this data
A, google predicts consumer behaviour, which is known as data B (this data B is easily
readable, but since it is unique expression, it is a CR) – however, copyright is only available
on the expression, which is not a good method to protect the information – companies in
order circumvent this, converted the data into data C and secured it by encryption – this
makes it a unique expression – now they are trying to protect data C as a unique expression
under CR law – this creates an embargo on the society from figuring out the expression of
data – bypasses the idea expression dichotomy, because the expression is unique and it
cannot be comprehended – the encrypted data could only be read by the system – through the
CR, the companies are trying to protect the information that is also protected as TS – this
becomes ultimate TS – amounts to fraud, as attempt is done to go beyond the IP bargain,
which is a social contract
Advancement of technology to such an extent was not contemplated – encryption for CR
becomes a shield, as it is not possible to reverse engineer the encrypted data – level of
innovation is raised to commercial monopoly – amounts to fraud, as it could only be achieved
(theoretically) by virtue of a patent
February 1, 2021
TS was always considered antithetical to the idea of innovation – because it was believed that
TS does not incentivise innovation, as the information is not released in the public domain –
because of this TS was not granted the status of IP – reliance was placed on other laws like
torts, contracts, etc.
If TS is seen from the perspective from Contracts and Tort Law – we are only focusing on the
remedy, instead of focusing on why the information is being protected – this opened up the
idea for considering the prospects of a new law for regulation of TS, which also boosted the
R&D investment in the country.
Because of the increase in amount of money invested in the R&D the society became
suspicious, as it was believed that TS was prioritised over patent, even though the
information was kept a secret.
February 4, 2021
TS was earlier an issue between two individuals, but now the rights of the TS are pitted
against the society, on account of rise and advancement of R&D – innovator is questioned for
his intentions
N2H2 case/Edelman case – a computer program censored some material so that students
could not access it – Edelman wanted to know how the censorship works, for which a legal
notice was served to him by N2H2
Edelman wanted a declaratory judgment, that his idea to decrypt the software to understand
how the software works is not in violation of copyright and trade secret – by Court observed
that decryption would result in misappropriation of TS – the Court downplayed this by
treating the issue as a private dispute between the parties – biased approach was taken to
protect the right of the innovator against the rights of the society – has the effect of
destroying the political rights of the society – this also goes against the moral justification
The judiciary didn’t want to see beyond the traditional echelons of mundane arguments –
right of the society was sacrificed to protect the interests of the innovator – this is a loophole,
as under this practice, any information could be treated as TS and protected under the garb of
it
DMCA mandate against circumvention/ anti-circumvention rules – stops someone from
decrypting some data that is encrypted – mechanical reversal of the product is prohibited
YouTube under the garb of community standards has come up with own sets of principles for
regulating fair use of content, that affects the collection of royalty – YouTube is downplaying
sovereign’s regulation to harmonise the usage of copyrighted material – the usage is based on
US copyright jurisprudence – immunity is claimed in functioning based on the idea of
community standards, which is protected under the scheme of TS
America does not recognize the moral rights of the author, for regulating the usage of
copyrighted material – YouTube’s T&Cs are not enforceable, as it amounts to contracting put
of the law of the land – even if the T&Cs are agreed to, they are not enforceable
Microsoft v. Kerberos – a security system was floated by Microsoft – commercial monopoly
was sought to be created –the software could not be patented, but it was reverse engineerable
(preventively threatening the consumers) – mass market license (services were sought to be
extended to only those people who would never reverse engineer it) – artificial monopoly –
fraud on the society (as TS was never intended to be used in such a manner)
An engineer gained access to the software, without signing the NDA – the reverse
engineering bar did not hold against him – however, the engineer was severely bullied by
Microsoft – increased public pressure, led Microsoft to pull out of the litigation – PR pressure
If reverse engineering is not allowed, it is being raised at the level of patent – distinction
between TS and Patent falls flat – if this system is encouraged, everyone will go for a TS to
enjoy monopoly for an indefinite period – we need to incentivise Patent over TS for
disclosure of information.
February 5, 2021

This module discusses how conflict between TS and FS been amplified and how the conflict
will rise due to evolution of technology in the years to come. TS is vulnerable as a form of IP,
once it is disclosed there is no point in keeping it as a secret we see innovators relying on TS
and betraying society ato get more protection than what society had gained. We see constant
conflict and animosity by society itself . we see trajectory of TS there is mediating principles,
they are a set of principles which limit the conflict between society’s interest in free flowing
infor and innovator’s right. It is done to see in which circumstance what trumps what. To
adjudicate during ipso facto conflict.

Free speech and TS is at loggerheads and the animosity was clear from the very beginning.
From TS not being seen as legitimate IP we moved where society sought to protect new
innovations ans innovators began to protect through TS. TS represented gradually a chunk of
R&D investment and money. Kind enough to bring technology in the forefront but has not
disclosed full info so minimum protections. This standoff has often resulted into malafide
practices- not one inch of further right than the collective bargain already given to you. When
it comes to judiciary they are in a fix. In the beginning the court was lenient in the interests of
innovators it was before innovator’s right versus another citizen and not innovator versus
whole of society. The classic example is Edelmen v. N2H2

Courts suffer from inhibitions in granting declaratory judgments because they are giving
conclusive judgment on rights of people against people they don’t know because everyone
has a right to be heard and the judgment can be enforced against anyone.

Microsoft v. Kerbaros- public importance is of relevance- Microsoft try to bring in mass

market license to give an embargo- cyber security program (X) and the people can use it if
they agree to not reverse engineering it. Use is conditional on agreeing not to reverse
engineer. An engineer found a way to access the product without having to subscribe to the
condition to not reverse engineer. So will he be bound by the NDA?

When Microsoft went against this person, there was a massive outcry bec they were seen
asant-technology anti-innovation fraudulently not giving access to tech. no bec he was a
genuine person who through novelty accessed it without going through the non-participatory
clause. Microsoft fearing public perception and public outcry

A mass market license to protect TS is redundant – TS being pushed artificially to the

pedestal of patent. Then the next line of innovators would go for patents. Protection of R&D
require

When we protect the level of info that the innovator has brought to society through his
technology, we need to make sure that the meditating principles are string such that any
innovator negligence is monitored diligently and info is extracted. So cant just focus on
innovator right.

AT&T vs. People’s network- AT&T came out with a software programme which was mktd
to the public, it had a utility in terms of running codes. It was well rcvd but also complains
that it was not as well customised and implemented as was expected from AT&T. So they did
mass mkt license to insulate themselves from criticism. But they said if they are using this
cannot test this program for benchmark results and cant publish the data of the benchmark
results. So cant criticise or review the product effectively, cant comment on the efficacy of
the product. It was not to protect TS as much as trying to protect reputation. It is my right to
review products- fair opinion- free speech. But the secondary aspect is the use of trademark
and goodwill- goodwill is trying to be artificially spiked by way of mass market license.
Goodwill perpetuates through quality of the product, the mark is as valuable as the
manufacturer of the mark the goodwill of the consumer section is being invested into the
manufacturer. The goodwill of the people spike the value of the company- it is a part of the
value of the company itself. Fraudulently trying to hold onto the value of the mark by
restricting the goodwill from ever deteriorating. Using TS as a mode to promote another
illegality- artificially arresting the decline of goodwill and engaging in speculative trading
which promotes the goodwill or value of the trademark not actually commensurate to the
actual value.

This is over and above the cause of FS. AT&T is committing a social fraud. So when AT&T
went to court it said there is no locus to stifle FS, to throttle goodwill which is a free flowing
entity under TM itself.

DVD CCA v. Bunner- It was a dispute going on between consumers and producers of DVD.
With tech age people started to copy expensive CDs into readable discs the profitability of
making discs came to a standstill. So, to stop this piracy the DVD people made a Copy
Control Association. So they went to DVD player maker saying your business depends on us
profitability, so we will only allow our DVD to be played in your player if you install CSS-
content scramble system – which shields the data of the DVD and copying it would be
difficult. Now there was mass market license can use it only if you agree to not decrypt it. 
February 8, 2021
In case of TS, the only benefit that the society gains, is the use of invention. The money flows
to the investor only. If the reverse engineering is not allowed, the only thing that takes place
is the buying and selling of product. If reverse engineering is not allowed, the society won’t
recognise the protection of investor against the misappropriation of TS, which would also
affect the monopoly enjoyed by the innovator. If society does not retain the right to reverse
engineer the product, it puts TS on a higher pedestal against patent, which is a foolish
bargain.
In the TS v. free speech debate, information is published under the garb of public interest.
Once the secret is disclosed on the internet, it cannot be the TS again. In the digital age, the
society is much more powerful than the innovator. This is the reason why innovators rely on
practices like mass market licensing. To counter this, the society has come up with the sword
of public interest, after being irked by the innovator.
The state is obligated to ensure the plurality of opinion – one should be free to form an
opinion – it is a personal right to form and express an opinion. Freedom of opinion of every
individual within the state is non-derogable. There is a certain embargo on expressing of
opinion – can be limited if there is a necessary circumstance – the limitation has to be backed
by law (in accordance with Art. 19(2) or (3) of the ICCPR.
Dred Scott v. Sandford – a slave owner bought an action, stating that property rights
extends to the slave – negative entitlement – slave right was sought to be justified within the
ambit of human right of right to property (dichotomy – as the human rights of a slave was not
recognized) – the assertion is arbitrary and unreasonable – the right should not be stretched to
such an extent that the human right of the other person is left redundant
Similarly, the economic rights of an innovator must not be stretched to such an extent, that
the society’s right to interest is rendered redundant. An example of this is, when ITC didn’t
allow people to write the reviews of Vivel soap – against the idea of freedom of expression –
could not suppress the right under the garb of trade secret
February 9, 2021
When a capitalist enters into a contract with a labourer for 16 hrs. work shift, the arrangement
is celebrated for advancement of human rights, taking into consideration the equality in
entering into a contract – however, the arrangement does not take into consideration unequal
bargaining power – the worker does not have any other option, but to survive.
If TS becomes a negative entitlement instead of human right, it becomes a liability for the
other right-holders in the society – humanity is denied to certain section of the society - their
right to political identity is compromised – if you do not have the right to express yourself, it
goes against the human rights.
Meaning of human rights is different for different humans – it is different for people
belonging to LGBT group, mentally challenged people, etc. In the case of TS, when the
innovators try to gag up the society, it is done one the pillar of economic disparity. In the case
of Robert Lane v. Ford Motors, Ford Motors tried to suppress the voice, because it was in a
position to do so – disparity in resources keeps litigating individuals at bay, because they lack
the resources to defend themselves – only people with huge resources could battle it out in
the court of law
Economic interest v. public interest fragments the society – poor litigants cannot afford to
battle in the court of law, whereas, rich litigants can.
Suggestion: (i). The need is to raise awareness among the individuals about the mediating
principles, such that it is clearly specified where the right of the innovator ends.
(ii). The onus is on the judiciary to impose a heavy cost on the innovators, if they try to gag
the society’s right to free speech – fraudulent methods adopted by the innovators must be
kept in check u
DVD Copy Control Association v. Bunner – usage of encryption to protect the underlying
information, that is a trade secret – the information is non-discernible, which is further
protected by copyright as an additional layer of protection
Level 1 – encryption, Level 2 – copyright of encryption
DVD Players came into an arrangement with DVD players for incorporating CSS (content
scramble system) software, such that the data of DVD players is not copied and piracy is
prevented
The audio-visual data is protected as copyright – the CSS software could be protected as TS,
because if this is reverse engineered, it would result in copying again – the DVD companies
were using TS to stop copying
In case of copyright, expression is protected, whereas a TS is used to protect the information
February 11, 2021
DVD Copy Control Association v. Bunner – DVD consortium were suffering massive
losses because of piracy – partnered with the manufacturers of DVD players – CSS software
was embedded in DVD Players – the software was to keep in check the copying of expression
that was in the DVD
However, the concerned software was not immune from reverse engineering (apprehension)
Usually, the conventional approach was to use CR for keeping the underlying information
secret – however, in this case CSS (that was a TS) was protecting the expression that was
copyrighted – if the work is replicated, the author is disincentivised from publishing the work
– is the practice of using TS to protect copyright fraud on the society? – the goal in this
situation legal – can mass market licensing for not reverse engineering the software be used
to protect copyright? – artificial embargo on reverse engineering (which is usually not
permissible, because then TS elevated at the level of patent) – however, since the goal is legal
in this situation can this practice be considered as legal?
It seems like a fraud on the system of TS itself – the exception cannot be allowed, as this will
set a precedent for usage of mass market license by innovators – the long-term impact of this
is legal, but the means of achieving the goal goes above what is acceptable by the society –
limiting the privilege of reverse engineering is outrightly illegal – there is no incremental
benefit that is flowing to the society, in case this situation is accepted
February 15, 2021
DVD Copy Control Association v. Bunner - Mass market license (MML) to protect the
software from reverse engineering, which in turn is used to prevent piracy, which is an attack
on expression – using MML is beyond the scope of law – but here the MML is used to
protect the copyright, is this also against the scope of law? Also, what if the DVD is sold with
MML to not engage in piracy – this is within the confines of law
If reverse engineering is prohibited, it results in monopolising information which sets a bad
precedent – if this is permitted, people will always choose TS over Patent – using TS is
merely subject to internal assessment, as it does not satisfy the three pillars that are required
for obtaining the Patent.
TS is not a conventional property, as it does not put an embargo on the society from studying
the contents of the product – this idea supports the privilege of reverse engineering – only
unethical misappropriation of information is protected, and only for this restricted purpose,
the society loses the right of reverse engineering (Nemours Powder v. Cristopher).
DeCSS – Decryption CSS software released by John Doe (anonymous identity) – accessed
by a lot of people – blame could not be attributed to a particular person – the one who had
uploaded the software was liable, but the people who were downloading it were not
responsible – after few months Ted Bunner produced the similar code on his website so that
the software could be decrypted – he effectively competed with the manufacturer or the
owner of the CR material – profitability of the owner of the CR is compromised – suit was
filed against Ted Bunner – in the first instance the Court (the Court of first instance) ignored
the first amendment right and approved the injunction – this resulted in raising TS to a level,
that was highly equivalent to the patent – ambivalent nature of TS as a property was not
acknowledged – the court re-engineered the scheme of IP – also approved the idea of MML
Prior restraint doctrine in Robert Lane case – utmost importance was given to the commercial
interests of the owner, at the cost of rights of the society
Chicago Locks v. Fanberg – if privilege of reverse engineering is taken away, TS is
elevated at the level of patent.
February 18, 2021
This is a peculiar circumstance bec we are using TS to protect CR and not CR protecting
underlying TS which is mostly the case. Twin purposes of CR- people in society given
confidence that their acceptable expression will be there in society and more people will be
incentivised to disclose information. Economic interest of author and marketplace of ideas
need to be seen.
In the Bunner case as between John Doe publication and TB publishing there was a duration
of 6 months, but there could not be a claim of TS for those months because it was not a secret
anymore. When it went to court it was almost waiting for it, it did not once go for the idea of
TS protection in the traditional jurisprudence. The protection of TS is lost as soon as it is
published and especially publishing it on the internet it is irreversible so it is confusing why
this court went the way it did. The court didnt even hear TB, or first amdt, it just said info
was being protected for TS and there was misappr so CCA must be compensated. if we look
at Mark Lemley and Robert Boone, ML says if we look at TS through those other areas of
law the focus is on remedy and not why it should be protected. We don’t even see if info is
valuable, other ppl are interested so as to make them unjust enrichment, in here it is exactly
this, there was misappr of info so take remedy not even whether the info was even TS
anymore. Neither do they look into the mediating principles. Court does not even treat it as
TS but treats it as property. TS ppl are which is why astonished – how come the court didn’t
go into the idea of first amdt. TS is not just supposed to be about remedy the court has to go
into the analysis if it is secret, here the court didn’t do so. Disclosure to society rescinds its
status as TS once it is disclosed cant a citizen come and publish this publicly disclosed info
in their blog. Ex- A’s TS leaked to society fully, B the next day publishes that disclosed info
on her online blog. Mr. Bunner published an info 7 months later of the “TS” already being
published/revealed to the society plus CCA sat for 7 months not doing anything thinking a
target will just crop up, did nothing to find out who the John Doe is. What Bunner published
was not a secret anymore. There needs to be logic even when you sympathise with innovator.
After 6 months the Court grants an injunction- it is not an actual remedy bec there is no secret
to protect but it is actually a gag order on FS of Bunner. It is just a tyrannical exercise of
power by judiciary just to give a remedy it is saying yes your property misappr so remedy but
TS is not a property at all and TS misappr was done 7 months ago when nothing is done by
CCA at all for 7 months not a single step- it is clear favouritism to the innovators.
(Court of first instance- bunner 1) If we contrast Bunner 1 with Robert Lane in there the idea
of TS took a backseat, there the info was treated as TS in itself which is why it discussed the
prior restraint doctrine. In Bunner 1 there was no disc on this, no first amdt disc too. In prior
restraint- speech is curtailed if the repercussion of expressing my speech is more harmful than
the judicial embargo on my freedom of speech and expression. In B1 TS was not considered
as a branch of IP but as a branch of traditional property.
Bunner 2- Court of Appeal- In CoA it dd not consider info at all. It says how a judicial body
can ignore a citizen’s right of free speech. It goes to the other end- the FS always trumps
economic interest of a person. Any injunction which has the consequence of not disclosing
info, speak his mind, curb first amdt is ipso facto ultra vires the constitution. We are a
constitutional court our job is to protect their constitutional rights, so all injunction are aimed
at gagging fse of members of society will possibly be an abrogation of the constitution itself.
There is a difficulty here too.
Bunner 3- We cant render a prelim injunction void on account of predisposed towards idea of
FSE, obvs it is imp but cant invalidate all claims of TS, the labour of innovator due to FS. But
there was a problem in B3 because of this hypothesis - Whenever TS has been raised which
has been prima facie proved in the litigation the notion of prelim injunction will be saved
from the defence of first amdt. This blanket immunity we are ignoring the mediating
principles (public interest, TP, accidental disclosure)
February 19, 2021
Discussion of the ruling of the Court of first instance (Ted Bunner case) - Conventional
tangible property is rivalrous, which cannot be shared with others – conventional IP on the
other hand is non-rivalrous, as knowledge can be shared with others. In case of TS, however,
the information is kept secret as there is no disclosure involved, which is not the case with IP
– the society holds the right to reverse engineer the product in order to access the
information. Approving MML gags the right of the society of reverse engineering the
product.
Copyright incentivises the members of the society to express their work, irrespective of the
quality of work – this enhances the idea of speech and expression – but if the right to reverse
engineering is taken away, people can’t even express something that they have studies (the
CSS software in this case) – this is against the right of freedom of expression enshrined under
the law of copyright, that incentivises expression of information
The judiciary failed to discuss the repercussions of its decision. It was not even considered if
the information was secret. The information was already discussed first anonymously by
John/Jane Doe – it was only disclosed later under a name, which was not appreciated by the
Court. The Court created a situation, wherein any kind of disclosure is being barred.
Eldred v. Ashcroft – how can the CR protection be increased if there is no additional benefit
that is flowing from the authors to the society?
CBS v. Davies (discussed earlier) – footage of malpractices was recorded, which were
sought to be made public by the telecaster – an injunction was sought against the telecaster,
arguing that the telecast contains information about TS
The argument was raised to protect the commercial interests of the producer, which should
not be the case – TS protection shall not be used as a negative entitlement, which was sought
to be done in Bunner case – this goes against the right of free speech and expression, that is
protected under the Constitution.
February 23, 2021
Court of Appeal acted in the sense of overcompensation – there is a direct relation
between new ideas and freedom of speech and expression – one cannot survive without
another
Anything that requires injunction, is in violation of free speech and expression – this
approach demonises the trade secret – injunction is extremely important in case of TS, as not
other remedy is more effective.
Competitors incentivise misappropriation of TS – information only carries value, if it is kept
a secret – it is very difficult to determine the damages in terms of monetary value based on
books of accounts – this is because information is never sold as a vendable concern
Overarching dependence on constitutional rights destabilizes the regime of IP – it shall be
noted that IP rights are also guaranteed under the constitutional mandate.
New Appeal (California Supreme Court) – if there is a prima facie consideration that the
issue is in regard of TS violation – preliminary injunction is to be given as a matter of rule,
without taking into consideration other aspects, like the defence of first amendment – this
pushes the idea of investor community over the interests of the society.
This is a problematic observation by the Court – the Court has to first take into consideration
the repercussions
New York Times v. USA – a reporter was researching on the Vietnam war – the illegally
occupied information was sent to NY Times and Washington Post – once the authenticity of
the document was determined, one third information was published – it was argued that
information was against the national security – however, the court did not grant an injunction
on account of freedom of press – freedom of speech may prevail over national security
concerns – it was observed by the Court that public had interest in the information regarding
the history of the company
Thus, in line with this, freedom of speech and expression could triumph even over national
security concerns – but the Supreme Court said that preliminary injunction is available as a
matter of rule in case of TS violation, which in itself is problematic.
IP is put a higher pedestal, then the constitutional right – public interest did not dominate, as
was the case in Robert Lane situation – public interest should not come in the fore, if the
information is technical and not easily decipherable – this was the deciding point in this case
– it is an argument that public interest angle should come into display, only if the majority of
public takes active interest in it – small share of people should not be the only ones who are
affected.
In the process of the litigation, it was realized that DVD CCA does not have a claim on the
information as TS – the information was released on the internet 6 months before it was
released by Ted Bunner.
February 25, 2021
Bunner v. CCA
Court of first instance - If remedy is given for dispossession of property – the idea of
incentivizing the invention takes a backseat – amounts to treatment of TS as a conventional
property – this approach is disastrous for the R&D company.
IP plays the role of improvement and enhancement of work – standard of work is directly
proportional to the incentive given by the society
First limb of IP – to enhance the quality of work along with increase in volume of work
Second limb of IP – freedom of speech and expression
There is no point of having free speech and expression, if the marketplace of ideas is not
conducive for new ideas and innovation.
The court of first instance protected the marketplace of ideas, but failed to protect free speech
and expression, whereas, court of appeal did the opposite.
Court of the third instance – provided for a middle way – observed that it is wrong to
sacrifice marketplace of ideas, for having free speech and expression
Check the previous class discussion regarding veracity of preliminary injunction and defence
of first amendment – analogy with national security v. free speech conflict – repeat
discussion
Public knowledge and private technical knowledge – the Court opined that information
about CSS software was technical knowledge
In the instances when the information is not required to be accessed by a larger section of the
society, it does not amount to public interest – in such situations, morality of judges affects
the outcome of the case – this creates a space in TS of Tier I (highest level of protection) and
Tier II (lower level of protection)
Tier I and Tier II trade secret owners are providing the same benefits to the society – ideally
same level of protection must be given by the society
Creation of two tiers would result in channelising the R&D in sectors where the information
is relating to private technical knowledge – court failed to consider this
Bunner’s upload regarding the decryption of CSS software threatened the monopoly of
Microsoft and other silicon valley industries – the observation by the court for permitting
preliminary injunction, with first amendment taking the backseat calmed the nerves of
innovators, but this was too harsh on the society.
 February 26, 2021
From protecting the interest of investors at cost of society, to protecting the right of society
till the death bed of the investors this is how the change has happened. If investors are not
creating more work- what will society ideate about, these things were not considered.
Without market place of idea- no point, no bargain. Californian SC tried taking a balanced
approach because they were reeling under tremendous stress- big wigs had their displeasure
known post the court of appeal order. This disturbance- pre-judicial bias against free speech
and expression. If prime facie case of TS misappropriation, then not to take infringement of
first amendment seriously. Taken example- how free speech triumphing National security
then how it cannot triumph Trade Secrets. National security also depends on preventing
information from being freely circulated, Like Mukherjee committee- finding information as
to death of Netaji and then I as an intern get hold of information which is incriminating
against Govt and therefore- give to TOI and NDTV. Court will assess qualitatively the
repercussions of the disclosure- whether disclosure is more harmful than the prospect of
keeping the information secret. Judicial doctrine of prior restrain 
NY Times v USA- an employee revealed documents related to Vietenamm war, how it was
not very responsible of govt. Court said interest of people far outweighs the minor
embarrassment of the govt. Throttling of the right of freedom of speech and expression can
be only done when cost of disclosing is more harmful than keeping it secret. You are creating
a burden on society and thus your right of IP does not make sense and the fact that SC is
doing it making it more difficult.
Public v Private- Judiciary has a free hand whether should do this or that-
If no information as to private and public- judge can choose for himself what outcome he
wants and that can make me question his morality. He does not know how repercussions of
R&D spending are going to work. The importation of test is difficult for the society to
comprehend, it creates two levels of information. Highest level- Private information no public
angle involved and Second- public information. These levels of de factor segregation accord
arbitrary level of protection for same bargain in the society.  They are creating a sense of
detachment- For public TS protection is lower and for private -higher protection. Two levels-
Level 1 higher- private knowledge. Does the level also create diff level of social obligation-
should you not have a lower level of reciprocal obligation- but not happening so unfair to
investor community.  Basically, artificially promoting them to develop only private
information.
Difference between Private and Public knowledge
Robert Lane- public interest angle -doomed the hopes of TS owners- now if we are going to
fight against massive public interest angle we will never win. The other class of information-
private technical knowledge.
If protecting the interest of TS owner we need to protect from frivolous claims. Public
interest can only be invoked- public knowledge. This was never used in a case; however,
burner bought this test to people at large. In absence of objective test- the concept of test of
passement makes it an aspect of their entire nature- this is entirely bad. Demerit- creates two
levels of protection.
Which kind of information is going to receive the highest form of R&D. Society is putting an
obligation without reciprocal condition?
Problematic for society as well- differentiated sense of freedom of speech and expression-. It
is going to flood society- with lesser work- no ideas of private knowledge.
Repercussion-
When Burner says- no need to go into 1 st amendment defense- creates a dichotomy between
interest and has major repercussions. The test should be whether information should be
released in the form of news.
Public and private-
Morality, subjective analysis- uncertainty and creates arbitrary level of protection. 
March 8, 2021
California Supreme Court created artificial segregation - Those trade secrets that deal
with private information enjoy a higher level of protection, whereas TS that deal with public
information enjoy a lesser level of protection – in such a scenario R&D investment is
diverted towards the TS that is based on private knowledge. As a corollary, free speech and
expression is higher in cases where the TS deals with public information. Because of this
segregation, market place of idea and technology suffers significantly.
To address this, the need is to give the innovator fair share of protection that was earlier
promised in the social contract – there is no objective test about what is private and public, it
solely depends on the morality of the judge (which is already preconceived even before the
judgment is passed) – if public interest doctrine is invoked in every case, it would impact the
rights of the innovator. Hence, the need is to keep a balance and demarcate, what is public
and private.
Suggested test – (a). If the society is interested in the information, it is called informational
secret – the information is to be of the nature of news.
(b). If the disclosure is not done by the person who misappropriated it (third party disclosure)
– the owner of TS in such a situation has to prove that there was some sort of connivance
between the primary and secondary mis-appropriator (causa causans) – this is very difficult to
establish – contentious in nature.
TS regime works on balance between the rights of the innovator and free speech and
expression.
(c). The disclosure should be of the nature of news for public awareness – should not result in
commercial gain by the one who discloses it.
It shall be taken note that court cannot ask the third party to disclose the source from whom
the information is obtained – if disclosure is permitted, it would affect the freedom of press –
this mechanism is called source protection – protection is only given if the information is
news worthy – if the information is news worthy, test of public interest doctrine is imposed.
In such a situation, the TS owner will argue for foul play, but then again, it is the failure and
incompetency of the employer that resulted in the leakage of information – if the employee
turns against the employer, it is assumed that the employee was not treated properly.
O'Grady v. Superior Court – A blogger used to run the page giving information about
technology – he shared some information about an apple product – but this was a third party
disclosure – Apple was sure that information was leaked by some employee, but didn’t know
who was the employee – Apple launched litigation against certain John Doe(s) for which it
was reprimanded by the Court.
Apple requested for the subpoena to check the correspondence of O’Grady and to ascertain
the primary mis-appropriator – the Court of first instance issued the subpoena, but in the
appeal the verdict was overturned – this is because it is solely the responsibility of the owner
to determine how the misappropriation took place.
Whether the court should have helped the owner to ascertain the primary mis-
appropriator of the information? (check last 15 mins)
The information is only newsworthy, when the public absorbs the information or it is likely to
be absorbed by the public. It is to be checked if the employer has exhausted all the measures
to ascertain who is the mis-appropriator – this factor went against Apple.
If the information is not newsworthy, it is merely theft of information – but when it comes to
apple, everyone wants to know about every possible information – this factor went against
apple.
Subpoena is crucial for apple to identify the mole + there is a prima facie case against apple =
two of the five factors were not in favour of apple. Since, the blogger was acting like a
journalist it was difficult for apple to build a case against him.
March 9, 2021
The loose import of public interest was an issue with the TS litigations. In Bunner v. DVD
CCA, the distinction between private and public knowledge was highlighted.
Limitation of informational trade secret in case of third-party disclosures – information is
only termed as a news, if it results in increasing public awareness. It shall not be used
commercially. Further, the public shall also be interested in consuming the information
readily.
The society has an upper hand in unravelling the secret, whereas, the owner tries to protect
the information. In O'Grady v. Superior Court, the defendant was a blogger who shared the
information about the product, before its official launch. Apple requested for a subpoena to
determine the correspondence between the primary mis-appropriator and the third party. The
judiciary grants the permit, only when this information is absolutely crucial. It had to be
ensured if Apple has exhausted all the opportunities to find out the mole.
Journalistic freedom of speech – Public interest is never invoked in the battle of TS v. free
speech, unless the information is news worthy. The preliminary injunction is given when
three conditions are satisfied (prima facie case, balance of convenience and irreparable
injury). The problem is, if the injunction is granted, it will be restricting the fundamental right
of freedom of speech. Is there a need to import a higher threshold, as the injunction results in
denial of the constitutional right of the other party, that also involves public interest? Broadly,
there could be three instances:
1st instance - is when i seek preliminary injunction without any constitutional right at stake
2nd instance - when i seek pi and constitutional right is at stake
3rd instance - when i seek pi, constitutional right of myself is at stake, and public interest
also an issue
The highest threshold of checks and balances should be higher in case of third instance.
When public interest is not an issue, it is the battle between constitutional right of the
innovator and the public. The right of the innovator is to keep the information secret (also
covered in freedom of speech). However, the Court usually takes into consideration the loss
of economic value to the innovator, while deciding such cases. Three factors to be considered
(as suggested by David Green):
1. The threshold of proving that TS is a TS should be of a very high threshold.
2. Serious irreparable damage.
3. The serious irreparable damage shall incorporate something more than loss of commercial
value.
4. The need is to limit economic interest and advance civil liberty.
March 11, 2021
Whenever public interest angle is invoked in FS v. TS, FS will win because it goes beyond
economic and commercial interests. The only right granted to these inventors is that they
wont be subjected to the unethical or unscrupulous misappr by society. The innovator keeps
the information secret and not the technology secret and society gives the right in return. This
barter suffers from real time threat of constitutionalism. Economic interest is manifested from
John Loke’s theory- human right leads to economic interest in the technology possessed by
the innovator and this is pitted against the interest of the society.
Bunner 1 focused on creation of quality work and in protecting his intellectual resource we
deny the idea of accessing the information. This is a classic case of fallacy where you
incentivize one limb of IP- cause the aim of creating new quality work is to motivate society
to create more and more work- you are restricting people from accessing that public domain
of knowledge and thus restricting them from creating new work.
Let’s take example of Gitanjali- his idea is revolutionary. CR incentivizing the creation of
such level of quality of work, this aim of CR Law is done with the aim that everyone in
society gets access to this work to form the basis of creation of new and new work. Burner 1
upheld the incentivization of Gitanjali and did not focus on people ideating upon it, which
ultimately will get perfected.
Burner 2 also failed for it failed to grant some economic reward to the creator. This stops
literature from soaking into the society and leads to lower dimension of quality of work. They
have to ensure that free speech does not take a downfall so Californian SC redeemed itself on
one issue and one thing went wrong. Went back to court of appeal- said whatever the district
court has done should not be done at all and wrong in saying that whenever TS case, to
minutely observe and criticize the dictum of district court goes a long in ensuring that
judiciary does not go into hindering the economic interest of the society. This aspect of
monitoring and ensuring is revolutionary. So that courts just don’t abandon. This mechanism
of IP is important for any law. It is very important to bridge the gap between free speech
enthusiast not for commercial purpose but to make it available to society.
Scholars were little sceptical, saying how to determine public interest after Ford Motor Case,
to answer this public v. private knowledge test was introduced. This was loosely applied by
Californian SC. This separation is good; however, ambiguity is delirious. The entire
application of test is based on judge’s morality. If judge who swears with constitutional
rights, he will be swayed to free speech. His morality enters the debate rather than the nature
of information. 
David v Goliath- IT company said we are the Goliath. They continue to act in whatever way
they please.
I write a book and extremely important to legal situation and I know everyone will photocopy
it, I introduce an additional clause saying every individual who makes use of this book is not
protected by section 52 of Copyright Act of India. Can I contract out of a common law
provision? Is that against public policy or is that okay. Can I Contract out of law?  An author
cannot continue enjoying the benefit of Copyright Law and take away our rights. Bunner 1
did exactly that by taking away mass-market license- it is akin to some court upholding this
clause introduced by the author of the book.
I have 10 employees and manufacture jeans using certain technical knowledge and that
reduces my cost b 10 times, now Levis wants to know it. So, asks one employee to join them.
This is a case of TS misappropriation so unscrupulous way of getting hold of information.
Imagine, Levis asks a blogger to collect the information by giving 5,00,000 each to the
employees. Would this be a case of TS misappropriation? We have to also consider, how
blogger communicated this information whether as news or for commercial interest. Levis
has orchestra the entire game. We can see how Levis has used the loopholes of the system to
not be in the system at all and use it on a much larger scale. Is this unfair or fair? In the
blogger cloaked use, Levis has hit the nail on th head and extracted information for its own
use. This is where IP enthusiast say where is the balance. Isn’t the right to trade and carry on
also a constitutional right. If you are not forth coming at all, then why put this façade.
Prior restraint doctrine (disclosure of information is more harmful than prevention of
disclosure), if we apply to TS again. Usage of improvisation, that is being killed right at the
stage of its birth. The information is being linked by influencer. You as a company have to
show that disclosure of information more harmful than protecting it. Going on issue of free
speech will not make much sense, but arguing on IP can. Can say I am disincentivizing the
creation of new novel work. Debilitating impact on the society by disincentivizing them for
thinking out of the box.  No person having such ideas will come out for they will believe that
loopholes in TS will make them sink in debt. This doctrine is a good innovation, it is
inadequate representation of the issue of things here. For if only looking from perspective of
free speech and not commercial interest then even free speech will dry up. 
Whether a judge wants IP over consti is central to the debate rather than TS v. FSE
 March 12, 2021
In Ford Motors case, public interest was used in the form of a shield, which became
problematic for the people. The disclosure of information in the earlier days was not as rapid,
as it is today. The information today absolutely loses its value once it is posted on the
internet. Injunction in current scenario has lost its efficacy. Innovators are trying out the other
methods to keep the information secret, one of these methods is a mass market license.
The competitors could reach out to the TS owner via indirect means. For instance, an
Instagram influencer (paid by the competitor) reaches out to an employee, obtains the
information and publishes it on his page. This is in the form of third-party disclosure, and is
not a TS violation. However, the employee was bound by the non-disclosure agreement. The
proprietor can only go against the influencer, only if he is able to show that the employee
breached the contract and colluded with the third party (difficult to satisfy the causa causans
rule). However, it is very difficult for the owner who employs thousands of employees. If the
information is per se news worthy, the influencer enjoys the absolute immunity.
The disclosure is especially beneficial for the competitor. The information is in the public
domain. The discourages the new set of innovators from entering into the market. The cost is
paid by the consumers, as they are also devoid of the new technology. Manufacturers also
lose out on cost effective methods of manufacturing.
March 16, 2021
Fair Use – limited use of IP without permission
IP grants monopoly over the potential commercial use of technology. If the monopoly is
violated, claim of infringement can be filed against the infringer. The idea of fair use only
considers the idea of accessing the information. An example is usage of information for
training and research. One can further develop the information. The information cannot be
recreated such that it is competitively used against the patent or the copyright holder,
whatever the case maybe.
Legitimate expectations are protected under the TRIPS agreement. Stockpiling by the generic
drug manufacturers is not permitted under the fair use. If stockpiling is allowed, the
competitive drug is released in the market as soon as the monopoly ends. The IP regime does
not allow this, as it amounts to competitive use of drugs, even during the sustenance of
monopoly, which goes against the legitimate expectations of the intellectual property holder.
The action is not protected under the fair use exception, because it is used for the commercial
purpose by the generic drug manufacturers.
Fair use is strictly interpreted where the monopoly is stronger, which is usually the case with
patents. Monopoly is only enjoyed in the case of TS till the secret is protected by the
innovator. Since the information is never published, society does not accord a higher level of
monopoly to the owner of the TS. Society only accords minimal rights to the innovator, that
does not guarantee the monopoly.
Codification of fair use is done to create a sense of certainty in law. This also ensures that
public interest defence is not used as a shield against the owner of the TS.
March 18, 2021
Whether fair use is a plausible regime for TS. Sui generis fair use scheme for TS. Greater the
Monopoly the necessary is the allied scheme of fair use. Can fair use act as a replacement for
fair dealing? Although is there a difference, both deal with the idea of increasing accessibility
and incentives innovation. Monopoly should not be misused. Fair dealing originated from
UK, common law countries however Fair use is a USA concept.
Can we say both are same?
Fair use is essentially a balancing principle to Ensure the Monopoly of the IPR is not misused
and that accessibility is maintained. The notion of accessibility should not be compromised
under both the concepts. There is only slight difference between the two. Fair use is a
principle is a defense whereas fair dealings is an exception. 
Is there a difference between defense and exception? Like a section of copyright says it's a
defense and one say it's an exception. Fair use is a defense and fair dealing is an exception.
When fair use is a defense which means I am justifying the violation of law as opposed to me
creating an exception for violation of law. Now which one is broader. Fair use is broader.  
Now what categorizes the difference between the two. Why is IPR taken too seriously in
America. Why do they take it seriously, Constitution of America is lauded and that is called
the IP clause? Article 1(8) clause 8- "To promote the progress of science and useful arts, by
securing for limited times to authors and inventors the exclusive right to their respective
writings and discoveries."
This clause presents the notion of incentivizing the author. The R and D spending in America
is maximum.  It is because judiciary has implemented this clause in the constitution very
brilliantly
Diamond v R Chakraborty- manifestation that we can draw is that forefathers and legislators
want us to secure the right of exclusive ownership of the IPR). They took it to another level
and this robustness was cross cutting other constitutional rights. Copyright began to
dominate, free speech. Constitutional clause has it somehow kept IP at higher level where
other constitutional rights affected.  
Acuff Rose v Campbell (fair use)- perfect valance case, cutting down on Copyright for
ensuring first amendment issues do not suffer. If you draw a parallel similarly important in
TS 
Harry Potter v RDR- Copyright and incentive clause of IPR, has a friction. A guy used to run
a website called Harry Potter lexicon, kind of an encyclopaedia. Had parts of books and
movies also. Longest time JK Rowling did not have a problem with it. In 2007, RDR books
approaches Steve Vandeer and says let's get your website printed. Steve was reluctant and
RDR said we will indemnify you and we have Standford to help which had a fair use project
going on. Copyright is all about original expression
Can we say that only JK Rowling has the right to explain/ or have exclusive right to access
the market for all Harry Potter related books. Does it mean since you have written, society
cannot accept any reference book apart from the one written by me. Copyright vests with JK
Rowling, there was sampling in this case, now we have to consider to what extent, how much
are you copying.  The right to debate or argue or discuss the matter falls under the notion of
transformative derivative work. Harry potter lexicon is a transformative derivative work.
Because this a derivative work, Steve needs a license from Rowling before beginning to
publish a book. This lexicon is nothing but a debate or a reference guide and it does borrow.
But can qualify under the de minis rule as well. Court very irresponsibly argues that this
lexicon is Rowling’s right to adapt to that book. If I extrapolate this. Facsimile version. Since
infringement has not perpetuated so not that much damages were awarded.  
Let’s say Upendra Baxi writes an article and he has Copyright over it and I want to critique it
does it mean I will have to ask for a license. This Harry potter case, creates this assumption
that we will need a license to critique. This is where Free speech advocates come. Now, no
author will agree to this. That’s why this case is cited to say that you forgot about countries
philosophies only.
Even Rowling is known to have lifted her candidates, she cannot become a Copyright
advocate now and also there is concept of estoppel. Can CR force you to publish their work,
in the Swamvayar case could court have forced them to publish their work to see whether
infringement or not.
Pretty Women by Roy Orbison was a hit single. We have a set of rappers True Life crew who
wanted to create parody of the song and they asked for a license which was rejected. They
released it nonetheless and the claim was only brought when a quarter of million albums were
sold. For parody there is some referencing for sure. They changed the lyrics and included a
raunchy rap- that’s when things got interesting. Does parody cater to the same audience or
different. True life crew raises the defense of fair use.  The nature of the work was
commercial interest, one of the factors not a conclusive test. Lower courts said no fair use
cause of commercial use, SC says we have three other tests also apart from commercial
nature and focused on the character of work- stating parody is it separate category or copy- it
is separate.
March 19, 2021
We are dealing with the overview of fair use and seeing whether these principles can be
applied- will it be futile or will act as checks and balances. We debated on the idea if we need
a framework for fair use or fair dealing. Fair use is a principle of established checks and
balances so that the monopoly granted by society does not lead to abuse and society continue
to have access info and expression and they protect it through the strategic principle of fair
use. The requirement of checks and balances grows with monopoly, the more severe
monopoly is the more robust framework of fair use we need. For ex- patent for life-saving
drug and he refuses to give it to society sitting tight on his monopoly, wont produce more
than 100 vials will do lottery to see who gets at high price we do have compulsory licensing,
use by govt for it, but the underlying info/expression is not accessible so to access it is
through fair use.
Practise of fair use and how it came into being-
S.8. Cl.8 Constitution of USA- They are blinded that author’s expression should be protected.
So, they kept the pedestal of IP constitutional clause over other constitutional clauses- that’s
when problems came in and society rebelled and this is where fair use was born. It is a
defence that the monopoly given does not lead to a sense of abuse or deprivation of info and
expression accessible to society. The need for it that bargain of society was not tilted against
the society and IP clause trumped in US.
Protecting IPR for the sake of first amdt- so this is what came about as fair use –
India etc. do not believe in fair use but believe in fair dealing. Fair use is a broader principle-
it is a defence which says that infringement has occurred but I won’t punish it bec the defence
invalidates/condones infringement occurred. On the other hand, fair dealing creates an
exception- I will not allow IPR to be enforced where I have made out a case of fair dealing.
Fair use as a defence is a principle, fair dealing as an exception is a codification by the
legislators in the IP statute. These circumstances are codified in the statute itself wherein IPR
enforcement is not used. Section 52 of CR uses the word “fair dealing”. Fair dealing gives
one step beyond fair use and says these are exceptional circumstances where IPR cannot be
enforced so I don’t need to take a defence bec the law itself gives me circumstances where
the ip rights don’t apply. Fair use is an uncodified judge made law, fair dealing is codified
within statute. In the debate of accessibility, fight between society and IP owner what is more
desired- fair use is more broader, fair dealing has more certainty, but it is not flexible, less
ambiguous therefore it is more confined than fair use. Since fair use can be anything the
judge wants it to be, no definitiveness to limit its broadness, this uncertainty resulted in a
scheme IPR being administered at the whims and fancies of the judges. We have one case
involving Harry Potter- Warner Bros. and JK Rowling vs. RDR Books which held only JK
Rowling can make a lexicon Harry Potter – the idea of transformativeness was not satisfied,
– lexicon is a derivative work (impinges on adaptation right of JKR) lexicon needs to take
permission before making. So any reference books of HP in the market is exclusively with
JKR. Stanford Law fair use project termed this as the dark days of IPR and fair use. If the
court’s argument is brought, we cant even critique or any improvisation which refers to
original work would be a derivative work and derivative work right can only be exercised by
JKR. So every time one needs to get license every time they want to write a review on the
book- which author will grant a license who will critique the author- free speech takes a very
bad hit. Fulfilling objective of CR but denying society and there will be an embargo on new
works because quality new works result from ideating, discussing, reviewing etc. of existing
work.
Acuff Rose v. Campbell – the test of fair use- the nature of purpose of use of the work-
commercial or private is just one aspect. Lexicon creation was for commercial use to compete
but it is not the determining factor in seeing fair use. Stanford says it was nothing but exercise
of 1st amdt. Also IPR litigation is expensive- lay persons cant continue it. This case did not
consider Acuff Rose v. Campbell.
In this case original composition of pretty woman, parody was created, in order to create
parody need license but license was denied, so they went ahead with it anyway. Parody is
poking fun, so they take diff lyrics used the same music and published as a remix. This remix
was very well accepted by the public- quarter of a million. Until then OG composer did not
do anything. The parody people had free speech to make parody, but most imp it was the
conflicting nature of the primary purpose of the work. In this the case analysed a fact scenario
where the primary purpose was not educational, research, private but commercial bec they
were selling it. This was commercial purpose but fair use continues to be a valid defence –
roy obirosns’ music operating in a market which is separate from the market of parody. If the
market was same then the anaylsis would have been more complicated. The test for
commercial purpose – it is ti determine what is the primary purpose- the nature here was for
commercial purpose but this doesn’t mean full fair use defense will be defeated. It is just one
part of the test. The primary purpose is to connect with the public and make free expression
with the public.
Nature of work- to create a parody -exercis eof 1 st amdt work- not to copy infringement of
work but
The amount of the song copied- a significant chunk of the song is copied but was the
intention of copying to cause infringement or to use expression/communicating the parody
which is exercise of 1st amdt. It needs to be copied bec it is a parody.
So apart from 1st test, 2nd/3rd for the parody people.
Impact on the OG composition- commercial viability – the parody does not operate on the
same market as OG composition, does it affect the sales – it didn’t intersection of users can
be but thos does not result in the absolute decline in the demand of the OG composition – so
this is the perfect balance as between IP clause in Consti and other cosnti clauses such as 1 st
amdt- nicest codification of fair use.
Fair use is a judgment law. So when we compare this with HP case that case does not live
upto it. We see the divergence in which judiciary operates viz a viz their ethics. Therefore we
see an effort to codify judge laws, as seen in patents act. Otherwise fair use is too broad for
maintaining the balance. It continues to remain broad but there is effort to restrain it and the
way to do it is to codify it and it is something needed to maintain the balance.
Fair dealing on the other hand is too restrained- apart from the 13 grounds mentioned in S.52
nothing else flies- indiatv v yash raj- famous singer invited to pay tribute to a singer, s the
channel when the singer was humming alonf to a particular song it would flashback to the
clip of the movie wherein the song was played- that is when a producer slapped a notice
saying infringement of work- communication of public impinged wrt audio-visual – so if we
go to CR Act we cant find a way to save india tv- so bad that while a singer talking about her
song cant have flashback- the judges also showed sympathy- this is when judges moved to
notion of fair use- the delhi HC passed a notice (Still subjudice)- s. 52 of the CR Act is not
exhaustive wrt circumstances in which fair dealing can be used- but if this is accepted and
goes beyond the section to import more circumstance he is creating a regime of fair use, it is
not just fair dealing then – s.52 requires liberal interpretation to see a factual analysis of what
can be condoned – then herein they are elevating it to a fair use- not wrt exceptions but fair
use codified to reduce its breadth but now fair dealing is now resembling fair use. So fair use
tightened to represent fair dealing and fair dealing loosened to represent fair use. But fair use
is defense and fair dealing is codified law. The point is in order to maintain checks and
balances cant be so restricted by fair dealing neither such loose interpretation of fair use.

March 22, 2021

Fair use is a broader principle, whereas, fair dealing is very restricted in usage. Broad
application of fair use and its vagueness has resulted in divergence of judicial opinion. Now
the fair use principle is codified under Section 107 of the US Copyright Act. The judicial
trend today is to control the breadth of the principle of fair use.
Section 52 of the Indian Copyright Act – gives the list of fair dealings for which
circumstances are not analysed to give a verdict about non violation of copyright. There are
no carve outs available.
Attempts are being taken to harmonise fair use and fair dealing. Fair use is moving in the
direction of fair dealing, whereas, fair dealing is moving in the direction of fair use.
Section 52(2)(za) – the Section is in the form of an exploitation, that tilts the usage of work in
the hands of the society. The provision is not at all equitable, and could not be protected
under the garb of incentivising access, so that more work is created. The author of work
incurs financial losses because of this provision.
Deepa Varadarajan’s argument - the fair dealing instance in TS, will undergo a strenuous
combination of fair use and fair dealing – prima facie the person is eligible for the relaxation
in case the of usage of work is covered under fair dealing, however, more scrutiny is done to
determine if the instance of usage could be protected under the fair use regime. The scrutiny
is done to check if the royalty is to be paid for the work or not, in accordance with four factor
test of fair use.
The question of appropriate royalty is to be determined. Deepa suggested a fifth factor in the
test to determine the amount of royalty to be paid in case of economic loss owing to the
infringement.
March 25, 2021
If I say no one can reverse engg my product and study the structural design – I could impose
an arrangement on society that no one can study the design represented in my patent for
absorption of patent. This is not what would be allowed by fair use and fair dealing. Fair use
and fair dealing protects society to not allow patent holder to shield their protection and
create an artificial monopoly. Patentee if tries to shield info to understand working of
innovation- patent office will ask you info about product in industrial application you just
have to disclose method of production and manufacturing and best method of production the
product but it is not defined it might not be the best commercially viable method so some
things need not be disclosed, might shield these info and give info about one method and the
best commercial way of production with myself. Now this best way can be unearthed by
society’s understanding of itself. And this ability of society to study and unearth and create
understanding is protected by fair use and fair dealing.
In CR we also have fair use/fair dealing
Fair dealing is used in common law jurisdictions including India.
Fair use and fair dealing converging- fair use being a little restricted and fair dealing being a
little flexible. DV says need to use best of both world to incentivise TS. In isolated space of
TS the inventor is at the mercy of society as long as society is not inquisitive it is only for that
duration the TS continues to be an object of protection. Ts does not represent property as
understood conventionally under IPR and this is reflected in the way TS is treated. IPR as
property represents a negative bundle of rights, enforce exclusion of others from accessing
the right itself. But this is missing in TS and it only comes into force when there is misappr.
And this is the reason why negative bundle of rights which we speak of in IPR is missing in
TS. This is represented in reverse engg- In TS all my worth is tied to info being kept secret,
we dk how valuable info is but we know it is. So society says if someone unethically posses
your info that we wont allow, but if smart people can unearth it by observing and studying the
product/info and getting the info then there is no embargo on that. Society retains the right of
reverse engg and that is the foremost marker of society’s dominance on the accessibility of
the info,
What constitutes an underhand practise this reflects or creates a lot of dilemma in reality, this
is further propounded by the black and white limiting principles imported into TS. For
example, if we take reverse engg and right of pre-emption out, the rest 3 are- accidental
disclosure, TP disc and public interest are based on the morality of the facts. In these 3 we
have society beating around the shield of TS by invoking these 3 principles. It is not that
society always does conspiracy to uncover these TS, but some ppl want it to be divulged so
they use the mask of society to get the info out. For example- A person X has entered into
fast food business of pizza. She has innovated on the numerical dimension of the brick
firewood oven and how long pizza needs to be kept and there is some ingredient also- all of
which TS all of which helps them to produce twice the number of pizza as dominos with even
more profitability. X hires lots of employees. Dominos hires news reporter to extract TS he
does and publishes it and so no TS anymore. Now when X goes after news reporter, he
claims TP disc and court says yes protected unless can prove news reporter and employee
connection and conspiracy. X undercovers it that employee gave info for 5 lacs. Court says
yes accepted and the court is going to pronounce judgement against news reporter but he
claims FSE this info is in the nature of news, it is done with a non-commercial interest of
raising awareness and society is waiting to get this info to include it into public repository of
knowledge. So court sees that newsworthiness is an absolute protection it allows the person
to go scot-free. Now X loses after spending lots of money Now Dominos has a field day done
a lot of property and got protection by way of patent which X holds that is closely modelled
after her TS. If info was disclosed on 1st April when can ppl use TS info? From 1 st itself so
then dominos started utilising the info from the day it was published to better their stuff
which reflected in their yearly review of them receiving 3 patents.
People can choose TS over patents because patent application happens with interaction with
State – massive amount of paperwork and cost is there done through barrage of legal
representatives to communicate with Patent office my info- so someone who is riding the
start up game it makes sense to use TS. Limiting principle- TS and patent protection
simultaneously not allowed. So, if as a start-up I first do TS and then after amassing profits I
go for patents, I can go for patents but if I lose both patent and TS I lose both. Society wants
me to publish info so that they know how I became so profitable. Can’t transition from patent
to TS because it is already in public. So, the idea of it being secret is tossed out of the
window. Most f the entrepreneurs who come with less capital but have a lot of technical
know how will be undermined if we let limiting principles hijack. In the pizza example if
from the very first year they have to take up big players and infor is disclosed when there was
no need it is injustice. Society’s interest converts generic piece of knowledge to newsworthy
piece of knowledge. There is blanket immunity.
2 fold test- use a scheme of fair dealing – it is restricted scheme of exception but she says
importing a system of fair dealing and then 4 factor test of Acuff Rose v. Campbell and then
the question of royalty.
 March 26, 2021
In administration of TS as IPR we do not consider the concept of fair use/ fair dealing
because of remote form of Monopoly. The stronger monopoly the stronger is the idea of fair
use and fair dealing. Many even laugh on this concept- cause how do you even apply to a
property where you cannot even stop reverse engineering. Would this regime even make
sense? They speak from Homensian point of law. Dowry existed in society and we brought a
law to deter this practice. To have people change of heart we brought a law. But this does not
make people stop this practice of gift giving and they do not adhere to the law. Law did not
change the practical operations but imposed the additional cost of imposing the law.  So,
lawyers say in case of TS no one is deterred to access the information in the name of limiting
principles and freedom of information. Society is already engaging in it and judiciary has
granted a certificate of applicability. In effect we do really have a practice of effervescent, to
bring additional legislation that would not change the ground reality but impose additional
cost on imposing them.  They will not make any change, referred to as the Homensian cost.
Deepa Vardharajan says the limiting principles which you talk about being synonymous with
fair dealing/ use is not true. They are titled towards people. These principles are allowed to
run amok no ethical consideration makes a mockery of the System only. She says when we
codify and judicially spell out the contours of the principles help in establishing rights. With
these limiting principles, the TS owner always suffered. On one hand we are very
encouraging to not allow the leakage of information. Say a person has 1000 rupees in his
pocket and come out with the most hygienic way to brush his teeth and now say he goes to a
lawyer.  Lawyer says since you do not have much money and your innovation is not reverse
engineerable so apply for TS. Had gone for patent, strong possibility that patent agent would
have sabotaged his case. Now if patent is rejected you also lose your monopoly.  You lose the
backup of having it protected via TS. 
Law in India with respect to TS only consider the remedy. We do not have a regime to
protect TS so when my friend comes to me with a brilliant idea can I advise him to go for TS.
In absence of law, if I bring the technology, the public can unscrupulously use it. So, If the
person does not release his technology the society is also losing out. Shielding technology
from the society. 
Deepa says if you are okay with hijacking the rights of innovator because you want society to
know, then  you are acting against the system of IPR. Cause IPR system requires
incentivizing innovation. She takes the entire fact circumstance and then breaks it down. She
sees how much TS has been infringed and how much royalty should be paid.
Acuff Rose v Campbell- infringed work and the original work would be so different that they
might have a separate fanbase.
Prime facie technique of defense/justification
How much information disclosed and for what purpose, nature of information and how much
market affected- just because commercial would not deny. We need to check other grounds
also.
Whether royalty to be paid and how much- newsworthy is blanket immunity. Direct
infringement by competitor, he can argue that serious change- that could be prime facie
checking whether infringement or not. Incase can show very higher level of improvement, the
infringement could act as a justification. Let’s say direct infringement of TS and the
competitor says very incumbent cause he was involved in massive leak forward about the
technology, so that could fall under first ground. The role of IPR is growth of technology, so
they might allow prime facie infringement for growth of technology.