Trade Secrets and Free Speech Class Notes

11.12.20

The purpose of trade secrets (TS) regime is to protect commercial information of players and
to not have unfair competition. It is to avoid unfair competition so that market players don’t
steal information and get ahead at the cost of others. All of this is encapsulated within the
definition-

The information must be valuable at the hands of the competitor such that access to the same
will lead to unfair competition.

The organisation which owns such information must take all efforts to maintain the
information as secret. Example- if it is stored in all desktops it cannot be called TS.

The information must have commercial value.

The question arises why does India which have so many commercial innovations why don’t
we have a more active regime of TS? Why should a country want to suppress a TS regime?

This is done so as to make the information widely available. If there is no TS regime, it is to

induce an economy which functions on patents. In patent system information needs to be
published so it will be in public domain. Hence, too much emphasis on TS means
disincentivising patents.

The Iyengar Committee Report studied whether a patents regime is viable or not. (this was
before TRIPS). The Report found that a robust patent regime indicates R&D within a country
so it is imperative to incentivise innovators and to increase standard of life we need a patent
regime. Though in the short term there will be an increase in the price of technology but since
it will be available in the public domain, in the long run there will be a decrease in price of
technology and increase in standard of living.

Every country’s regime needs to be formulated according to the specific conditions of the
country, we cant blindly follow the UK’s regime because there might be a mismatch of
technology. For example- GIs are more important in EU and not so much in US because in
EU products are famous viz-a-viz their location. In US there is no regional fame per se of
products. US has a very limited GI regime within their trademark regime. Hence, IP regimes
cannot be blindly adopted.
In India TS is protected by way of contracts through non-disclosure agreements (NDA) in
order to promote a movement against TS regime and boost patent regime.

For patents 3 things need to be satisfied-

Novelty

Inventive step

Industrial application

The difference between TS and patents

TS

There is no monopoly in terms of number of years. Monopoly depends in how strongly we

can protect the information.

It can be kept secret for perpetuity

It is an easy escape route for not qualifying under patents. If there is technology is not reverse
engineerable.

Patents

There is monopoly.

It is granted for 20 years

If it is reverse engineerable then monopoly is there.

Coke TS – their secret formula- they keep in a safe and only two people have access to it

Industrial espionage case – Ignacio Lopez was at GM, he was behind their massive sales. He
gained a lot of trust and had access to factory plans and knew about everything, he made a
transition to Volkswagen. there was proper proof that Lopez carried all of the sensitive info
of GM int0 ford, carried files and 20 cartons of paper worth of secrets.

15.12.20

TS, is mostly dependent on common law, article 39 of TRIPS, Paris Convention and Passing
off. Unlike Patents which has a separate regime, TS is very ambiguous.
In the General Motors Case, it was not exactly a TS case but had some element of it. Ignacio
Lopez, was the architect behind massive sales from GM and he gained a lot of attention and
trust. He knew about everything, future designs of car etc. Basically knew about everything
which if given to anyone else will give then unfair advantage.  In this case, GM was
American, whereas Adam Opel  and Defendant were European.  The lawyer of Opel invoked
article 44B of Lahman Act, asking for protection under the Paris Convention.

Illustratively, say India and USA are parties to a treaty. Now, India will get protection under
Lahman Act, plus because of being a foreigner it will also get protection under the special
treaty. Article 10bis of Paris Convention, is not exhaustive and prohibits anything contrary to
honest practices in Business and Commerce. Opel argued, since USA and Germany are both
parties to Paris Convention, as per section 44B of Lahman Act (when two countries have a
special agreement, then the Foreigner will get protection under Lahman Act as well as the
special agreement) which in this case , then they should be  entitled to protection of section
44H of Lahman Act. Also, incase relied solely on Lahman Act, the parties would have gone
scot free.  

Lopez however argues that you got it all wrong, he wanted them to stick grounds under
Lahman Act only. Now was the question of extra-territorial application of the judgment. As
per Variety Fare v Ethers- if commercial interests go beyond the confine of one country then
judicial dictum can apply there also. The American government left no stone unturned so that
they can get from Volkswagen. When went to Germany for enforcement, it was argued that
Germany does not have any provision related to TS, thus the information in question is not
considered to be sensitive by them. Therefore it was a battle of sovereign tensions.

WTO Tobacco Packaging Case- certain merger had taken place to deviate trade
commitments. Money matters make IP a big deal and IP matters make countries quasi-
sovereign.

Philip Morris v Uruguay- An advisory was issued by Uruguay that only X number of brands
of cigarettes will be allowed and 80% of the packaging is supposed to contain health
advisory. Philip was an entrepreneur and argued that my business will take a hit. So under the
Investment Settlement Dispute Case, set up a subsidiary in America and paid Uruguay
government to command such policies so that Cigarette ban is not upheld to that level.

Whether TS is IP or Quasi IP
WTO negotiations, article 31bis( allows countries who do not have any infrastructure to rely
on developed countries and rely on compulsory licensing to import products to their own)
were absolute disaster. It has been criticized for political manifestation of discrimination.

Now some scholars argue that it is IP and some say it is not. Major jurisprudential debate
surrounding this. TS cannot be Copyright because mostly it is information (and in Copyright
there is information and idea dichotomy). Cannot be patent because no novelty, thus why do
we even consider it as a branch of IP. This was answered by the Mark Lemley and Robert
Boone debate. 

17.12.20

The conception of property is characterised in terms of the rights that is attached to it. When
we say property in IP we mean a bundle of exclusive or negative rights to stop people from
encroaching upon their property. We cannot extrapolate that conception of property to TS. A
precursor to becoming IPR the matter at hands needs to show resemblance of bundle of
negative rights. The TS is dependent on the person for protection as long as we can keep it
secret is fine. Negative enjoinment does not arise until there is improper misappropriation.
When we look at CR or patents once IP is created there is ipso facto bundle of rights. But in
TS it is diff, if one has a information which is commercially viable they cannot negatively
injunct anyone from investigation. TS becomes property when it is a subject of unethical
miappr. TS has both resemblance to conventional property and also does not. When we look
at Locke and labour theory- we make IP through our labour, in TS there is no disclosure what
innovation is no quid pro quo from innovator to society, the quid pro quo comes into
questions when the subject matter of TS has unethical misappr. This is why TS is given a
step-wardly behaviour.

Also there is no marginal incentive for society – what is it that goes into keeping a
information a secret- scholars support TS is that when a TS is protected institutionally a lot
of costs are saved in avoiding various private methods of protecting that secret, if TS is
protected institutionally it is incentive to others to build new products instead of copying it. A
secret becomes a TS hwne it has commercial value- if the information goes to the hand of the
competitor he will provided an unfair advantage and thirdly, directly proportional to the info
kept secret,
For first component- for a info to be TS there needs to be commercial value- but if it is kept
secret how to know if it has commercial value or not. Scholars say if the precursor to TS
protection is info being commercially viable – how to judge it if it is kept secret. Is
commercial value dependent on the content of the TS then how to know what is the content
because it is a secret. Can it be dependent on its use? This was answered in Britstone
V.Firestone- but this was for TM no direct case for TS - in here the Chinese brand started
using the name riverstone- started using a similar name in another country and the other
brand which had a previous registered mark said there was already registration, so they said
prior registration does not matter but it has also has to be in use to get the protection. The
court sided with this argument that even though there was prior registration it does not give
any right to prevent other if the other hasn’t used it.

US Supreme Court answered this question in the case of TS tangentially in Nemouis Powder
v. Marsland- if we trace the history of TS- there has been a crest and then trough and now a
stable ground. TS began in 1800s in England. First litigation of TS can be traced backed to
very early 19th century A.D. most jurisprudence surrounding TS is

Peabody v. Norfolk (1868- one of the first cases of TS)- the subject matter of TS has moved
from being a property , the court held that when an establishment was being sold that we can
add on the price of the goodwill of the company along with TS- so they held that goodwill
was a property of company. This was followed until positive theory/realism cam eup which
denied natural laws position that intangible things can be property. So it moved to field of
unfair competition , even here there was no cogent protection. So then we established a sui
generis scheme of TS- Uniform Trade Secrets Act.

Nemouise Powder case was in the context of realism. When we look at TS , we do not know
if the content is commercial viable or in truth give an unfair advantage to the people who
come in contact with the infor. keeping the commercial value is the duty of the company. So
the commercial value of the info does not come from the content of the info but on the
obligation of the commercial establishment to keep it a secret. The court saw if whatever is
called a TS is automatically a TS, the 3 conditions apply but the first condition court was
hesitant about- so it came to a scheme – whether the rest of the world including competitors
would want to know the info- to uncloak the secrecy of the info – this would signify
commercial viability of the info. Thus, through this we derive a semblance of property from
this. It said it is property because of the deep-rooted interest of the competitors and others to
get the info bec of this interest there are rights which accrue to TS owner that is to stop
unscrupulous methods of disclosure- this is a kind of negative right- this secrecy lends
commercial viability to the property. This line of thought is directly borrowed from the case
of Vickery v. Welch (1837) wherein A was owner of a factory and he had success in the local
county bec he had a secret process of producing efficiently a generic variety of a product.
When B went to A to purchase the plant, they charged a very hefty price for the secret
process. Once B purchases it, A goes around telling everyone of the secret process. So when
A was taken to court he says there was no injunction put on me through the contract to not
disclose it to anyone. Court said there was breach of duty – first sold it to high price because
of it being secret, but there is a duty in justice and equity to protect it because you have
enriched from it.

So the trajectory of TS has gone through many hoops. So the question remains is TS an
intellectual property- the notion of intellectual property is based on a quid pro quo that I will
release the work to society for their consumption and in return I get monopoly and after some
time it will be in the public domain. Bit there is no such quid pro quo in TS so which is why
scholars come and say why should we give it the status of IP?

Nemours v. Christopher- there was a construction going on for a manufacturing unit, there
was a person who captured pictures of the under construction m/f unit aerially without
permission. In this case there was no reference to TS law, it was discussed on the idea of
trespass and it was discussed on the idea of nuisance and it was on law of tort. So people say
that there is nothing called TS law it is just a stretch of common law principles and because
there is no normative justification for enforcing TS, TS is not a law bec most of the pillars
enforcing TS, it is juxtaposed in the laws of tort and contracts or unfair competition as in
common law. With the coming of sui generis scheme of protection this argument has gone
out of the window. But if we trace the history of TS there is some consideration to be given
for this argument. Robert Boone chided TS as a separate strand of IP. In the opposite side,
scholars say TS should be seen as a sub-branch of IP, the quid pro quo is the motivation to
society that competitors do not steal it and it is a boost to create new technology- Mark
Lemley.

18.12.20
Robert Boone says TS is not a law itself but extrapolation of other common law because of
no normative justification. Opposing scholars say that Robert Boone’s argument would not
come in the first place if there was no misappropriation itself.

The quid pro quo that is flowing to society in TS is very marginal in quantity and quality.
There are philosophical justifications for why TS should be considered a property

1. First is the exclusivity approach- since IP by the term property rights is nothing but a
bundle of rights most specifically bundle of negative rights, this is majorly absent from TS
does this mean TS is not property- this was answered in Ruckelhaus v. Monsanto wherein the
environment watchdog was approached to get market approval by Monsanto so in the
application certain TS was there, now what the watchdog did that once they got the
application, they published it along with the TS, so Monsanto sued the watchdog- does
Monsanto have the right to enjoin a third party from publishing TS?- [In India there is no data
exclusivity] In Monsanto the court sided with Monsanto, it is true that your TS is violated but
compensation only to the extent which was very coercively kept secret by you only for that
level of information will be given compensation. Now the next question was whether the
compensation can be decided for something which should have ideally continued in
perpetuity- bec in TS as long as one can keep it secret there is no limit to commercial
monopoly. In this case how it was questioned how to decide compensation on something
which was to be continued in perpetuity – SC had no answer and in the overhyping of
negative right in seeing this info as intellectual creation that is IP to be seen as property there
has to be bundle of negative rights. So the extrapolation of this judgement is that TS is not IP.
Scholars (Miles Risch) opposed this decision saying what if in product patent the patent
owner does not want to enforce their negative right does it make patent less of an IP. For
example, in 1990 South Africa made an amdt to the Constitution where the generic m/f of
drug where given an advantage over patent product owner. When Pharma Plus took them to
court, the people revolted against them and said it is against health so it was a PR crisis, so
they backed out and chose to not enforce their negative right, does this make patent less of an
IP. Another example was of TM, Sainsbury was a popular chain of grocery store in UK. In
Birmingham, a person of Indian-origin in a petrol pump used the name and modified it to
Singhsbury to open his own grocery store. He thought it was a v good play on words and so
did the general populace. There was no intention to compete. Sainsbury tried to sue but then
there was huge backlash and they were termed as anti-people. So they backed out. So there
are instances where the IP owner backs out to enforce their negative right in order to maintain
their reputation but this does not mean they do not own an “IP”. So this argument of TS has
receded and it has been held to be quasi-property and not conventional property but it is
majorly influential in controlling the dynamics of the market bec of the public interest in the
information being kept secret, it exhibits signs of super property when people try to
unethically conspire to uncloak the secret. It is not property when there is no clash over what
the property is, but when people adopt unscrupulous ways it is a super-property bec it has
negative right and even more bec it can borrow from Paris Convention and common law
principles of justice and equity because of how it regulates market dynamics.

In the case of L’oreal v. Bellur- Loreal came up with high end perfumes which would be TS.
Bellur came with similar product and said just like loreal but cheaper and it smelled exactly
the same. So was it a TS case or a TM case bec the packaging was also same. The court
found massive evidence that TS was misappropriated, and it evoked unfair competition. In
Ignacio Lopez case the major remedy on TS being misappropriated is the provison of
compensation in unfair competition and injunction to disclose it further. In Monsanto the fact
that scholars don’t consider it IP was brought to the fore. There is still no justification about
whether TS is conventional property or not.

2. Second justification is theory of integration- TS to be considered property under IP relying

on Locke’s labour theory- which says society has free resources and the society can build on
such free resources and create something and since it is one’s creation it is an extension of
their personality and intellect and hence, their property. But this is ridden with difficult, it is a
very loose definition so every info will be seen as a property and people will classify every
property as IP and owning IP is excluding others from using it, so there will be no free flow
of info in this paradigm. John Stuart Mill is one of the staunch opposer of this theory. This
will be an hindrance to freedom of speech and expression (FSE).

Therefore a middle ground is suggested by Pamela Samuelson- we should not follow both
these theories in toto bec they cannot characterise the very nature of TS itself. When we look
at TS we don’t look at whether or not is property or not, the idea that TS is property is riddled
within the social ethics of every member of the society to agree to not meddle or uncloak
what the secret is. These theories focus on the content of the info itself but that is not what TS
is about. TS is about the socio-cultural practise of the society to continue the info being kept
secret- whatever info it may be- a secret. Every member of the society contributes to practise
that no one shall uncloak the secret and the TS ownercan continue their business without fear
that no one will steal their info that scheme of ethical practise is what the property is in TS.
The social values attached in what continues to be TS is what the property is in TS.

22.12.20

Within integration theory if we take the example of Fiest v. Rural (copyright telephone
directory case) -company A’s claim to Cr was based on integration and Locke labour theory.
Court said cannot grant CR because grant of CR would lead to granting monopoly over
information and secondly disallowing other people to use info which is already available-
double whammy to FSE. The integration theory’s character denies the idea that knowledge is
social non-rivalrous good. TS is not non-rivalrous, my use does not allow another to use. This
is further intensified that the same secret is used by multiple people while not disclosing to
each other. Once it becomes readily to the public it is not TS. In patent once I disclose I have
no problem with other people using it because I have commercial monopoly regardless. In
exclusivity approach TS is not there because negative bundle of rights do not attach to it. In
integration theory TS is more like conventional property because it is rivalrous.

3rd justification under philosophical justification is veil of ignorance- given by Rawls- when
society is deciding on a scheme of any kind and does not know what the outcome is of the
policy, it works with a presupposition that the outcome/social resources should be
redistributed in a way which will benefit every single person even the person with the least
resources. Within TS , we did not know if we should allow for a sui generis scheme of TS,
we were guided by the approach of veil of ignorance. since we as a majority did not know
what the policy would entail, we adopted a scheme which benefitted even the least
disadvantaged person in the society- what if this person who innovates the info manipulates
the info and gets monopoly such that other people are negatively affected by the monopoly –
so we will allow for reverse engineering (legitimate study of the info without
misappropriating it) but also need to protect and incentivise the person who is trying to climb
the commercial ladder with an innovative info- so protect innovators from unethical
misappropriator and in return they would not force the society or competitor from indulging
in any scheme of R&D or reverse engineering by which they can access the info.

Mark Lemley paper- The Surprising Virtues of TS - The other kind of justification is what
Mark Lemley gives that is the economic justification. He argues that idea of TS law is not
keep ita secret but to allow for its disclosures when necessary. Without TS law ppl would
spend tons of money to keep infor a secret which could have been used to further more R&D,
other social capital etc. the idea of law of TS is to reduce the cost in keeping the secret TS. So
if innovator knows that incase of misappr they will be proportionately compensated,
innovators can use the money to innovate without fear. The other economic justification he
gives that TS as an isolated branch of IPR it is not feasible – because we dotn want to
incentivise secrecy. The true virtue of TS as IPR will come into fore when we study it in
contrast with patent- the requirements of patent is quite high for an innovator who has the
ability to spend very less R&D. for example- X comes up with a very innovative heart
surgery. X has studied extensively from different sources for it. Under S.3 of Patents Act it
specifies what are not innovations for patents. It is very demotivating for X to see that they
cannot get patent because it is a scheme of medical practise. So in order to stop this
demoralising atmosphere, TS is a very cheap alternative to boost innovation when the
innovation does not come in the sphere of patent. So TS cannot be studied in isolation. We
need to see it as a rudimentary complementary scheme to IPR- it is rudimentary because it is
dependent on a person’s ability to protect it or keep it a secret.

This also follows the veil of ignorance. In a scheme where the patent is the only way to
commercially exploit one’s innovation, but when law does not allow for that innovation to be
patentable, it is very demotivating. Especially because tremendous amount of R&D is at
stake. The decision to go for TS or patent needs to be before patent application bec once I
disclose it is not TS anymore- all money lost. A massive choice is provided to innovators
they are no longer guided by that they will only invest in innovations or inventions which is
not covered by S.3.

4.1.2021

Mark Lemley (ML) - Surprising Virtues of TS as IP – he sought to counter Robert Boone

who was anti-TS regime. TS has been protected as under torts, criminal law, contracts,
property, IP laws etc. if there are so many laws then why to have a separate TS law- there is
no normative justification to have a TS law of its own.

ML is against Boone. Acc to him, if we accept that there is no protective law solely for TS
and it will be an extrapolation of contract, torts, unfair competition, property law etc. these
laws have remedies such as damages, injunctions, restitution etc. within this no focus on why
should this information be protected. For example, Du point v. Christopher- aerial pictures of
a plant being constructed. TS if only studied from the angle of IP, then only it could be useful
in promoting invention and creativity otherwise protection under existing law does not help
in promoting invention. Other laws do not focus on protecting the innovative capacity of the
information which TS does.

ML sees the pros and cons of including TS within the various allied law branches.

TS under torts- it will be breach of duty of confidentiality but tort law does not say why
confidentiality is being read into the agreement at all. The victim will be awarded
compensation but no emphasis why is it confidential to begin with. Why is there
confidentiality between two strangers in the Dupoint case since they were strangers no
express or implied contract but in common law they saw as having duty of confidentiality. TS
can be treated as a remedy but we are using torts to justify the remedy.

TS and contracts- contract is dependent on the principle of privity (right in personam). For
example, if we accidently get the recipe of coke, contractually no obligation to not use it –
but barred from using it based on the principle of equity and unfair competition.

TS and property- Ruckelhaus v. Monsanto- case involving environmental regulatory body.

Whether a private company who provided certain information to the environmental
watchdogs, can they get compensation for publication of the info by the watchdog?

TS is part of property it can be sold etc. but cant justify it under property law because
property law was to protect conventional property – property which is rival – if I use no one
can use- but TS is not just to exclude but imposes duty on others to not use it and to protect
and promote innovation and technology keeps rising, so that others do not engage in misuse
or any underhand application of the same.

Misappropriation of property wrt TS leads to criminal sanctions. If there are various laws
there would be a lot of hotchpotch and uncertainty which is not desirable because criminal
sanctions are there. We need predictability and certainty- this intermingling of laws will not
lead to certainty. If there is no dedicated regime we wont know what is allowed and what is
not. For example- whether reverse engg is allowed or not what action attracts penalty and
what does not.

Trajectory of TS- First protected as property because it was seen as a tradeable commodity-
moveable good-rivalrous- now as we understood it more and more we saw it as being
sophisticated and elegant saw that it does not have the same characteristics as conventional
property, so need a new law as a separate sub-branch of IP.
TS is there to protect commercial morality. Ex- Article 10 bis of the Paris Convention- we
will protect everything of commercial morality. Commercial morality is streamlined by a TS
law and this adds certainty to IP. If we don’t know what are actionable claims society loses
out on healthy competition and new elevated technology. It adds a level protection to existing
Ips.

TS in isolation does not work at all because society is technically built on disclosure of
information. Patent law is based on disclosure, helps in increasing innovation – but patent is
based on 3 pillars so not all inventions are patentable so TS comes in to fill in the void to give
reward incentive for those inventions which are not included under patent law.

TS incentivises disclosure because there is confidence that law will protect it. In India, where
there is no sui generis TS regime – doctor would only employ 2-3 persons, and would rely on
non-disclosure agreement this would increase legal cost and limit the benefit to the people.
So by keeping secret helping society in a way.

S.3(j) has hindered R&D in biotechnology and we have lost first mover advantage because no
specific TS regime so society only suffers.

Kewanee Oil v. Bicron Corp- Difference between TS and patents.

5.1.21

The effect of ONCO Mouse case led to drop of R&D by almost one-third. In India S.3 has
similar effect because various inventions are not patentable and/or fail to satisfy the three
pillars. This has an effect on disclosure of info and no consideration is given by government
hence herein TS fills the void and makes tech accessible so it is a backdoor entry and
eventually society is able to figure out the technology - this incentivises innovation (first
arm).

The second arm is to incentivise disclosure of info, so info is disclosed but is kept secret.
Hence, info valued because it is secret.

There is an information paradox wherein 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.
There is implied confidentiality. Person who gets info as part of some business proposal has
the duty to not disclose and keep secret.

For TS, need to prove information was intended to keep secret and efforts were done for the
same. But for torts, contract law, etc. focus is on remedy – (duty of confidentiality is
breached or not) - and not why the information is being protected

Now if A tells some TS to B, B does not invest TS published in newspaper and B uses then
he wont be liable under a sui generis TS protection but can be under torts for breach of
confidentiality. Thus that law focuses on remedy and not why the remedy is extended.

Now there is incentive to disclose and that protects business intelligence and gives a
competitive edge. There is then cost saving of manufactures wrt surveillance of employees
and legal costs.

7.1.2021

The precarious position of India towards India is marred by the debate that should it favour a
specific regime or should it support allied laws. TS was compared to torts, contracts etc. But
no aspect of these laws focus on the innovation aspect of TS but it rather focussed on
compensation. So we should have a dedicated area of law but this was not echoed in the
Indian legislature. TS has been protected in a limited way through contract, unfair
competition, but no resolute stand in protecting such information only by way of a specific
TS regime. We take away from treating it as an innovation, so the basis of protecting it is
missing. If we focus on breach of confidentiality, the remedy will only be for the breach in
confidentiality.

Protection of undisclosed information under TRIPS- Article 10 bis of Paris Convention is

related to unfair competition. In the GM case they tried to incorporate within American law
the wider provision of the Paris Convention i.e., nothing should be allowed contrary to honest
commercial practices.

In India in 1989 when it was asked why TS should not be treated as IP they said IP should
boost innovation, innovation can never be protected in a box so TS to be seen as a sub-branch
of IP. The aim of TS is to innovate and incentivise. In India we do not have a sui generis
protection of TS.

When TS sought to be addressed through-

Contracts-

Brady v. Chemical Process Private Ltd.- Innovator came up with a fodder processing unit- the
design involved thermal processing plant- innovator contracts with defendant to get the plants
and consequently shares the designs of his innovation with the defendant. Later, defendant
backs out of the contract and enters market with his own processing unit which is alleged to
be modelled after the innovator’s design.

Court- there is an implied agreement to not reveal confidential information. Confidentiality

was implied in the contract.

However, we here take away from the real purpose of TS which is to innovate and
incentivise. In contracts there is always a requirement of prior relationship. Therefore, in a
case where the defendant would have leaked to a third party and they would have published
it, could the plaintiff institute a suit against a third party? Could we infer this implied
contract? No, because privity is there, implied contract needs conduct which is based on prior
relationship. There is no method to block information from being misappropriated because it
looks to prior relationship. So, this is a loophole. The law of contract is not to incentivise
innovation. Therefore, though Judiciary was praised herein, but this decision could not
prevent leakage as between third parties.

Patents

Simone v. Farmaceutica (2019)- Innovator A in US granted a patent for their innovation. A

signs a market license with investor B and investor B takes it to market where they produce
the product according to the patent. The same product is sought to be introduced in India, but
in here there is no separate patent filed. Instead there is a tie-up with a company and the
parties sign a license agreement which has a technical know-how clause which talks of how
product is to be manufactured, the ingredients, what all processes are to be used to
manufacture the best quality item and it was a different and better and efficient
manufacturing process than the one outlined in patents. The Company has the right to
produce and sell the same item in Indian market. The technical know-how clause had
sensitive information about specific processes and storage etc. After 20 years patent expires
and company breaks agreement and starts selling the item without the license agreement but
uses the same ingredients, processes and names as of the product. The plaintiffs argue that the
technical know-how as outlined in the license agreement has not been disclosed to the patent
office and is not in the public domain and is hence, a TS. Therefore, the company could not
use the information independently of the license agreement.

Delhi HC held that the technical know-how should have been disclosed to the patent office in
the first place. Since patent is a society’s quid pro quo, the main principle of patent dictates
that the innovator should have disclosed the best method of producing the product. Once
patent is there, there is no scope for the existence of TS.

This decision shows that Indian policy makers and judiciary are anti-TS. There is a
dichotomy seen here wherein in the hopes of upping innovation and technology they have
adopted an either/or approach i.e., either patent or TS. The best method of producing a
product may not always be the most commercial method. There might be more commercially
efficient way – who is the judiciary to decide the technical concepts and science. This
either/or approach is antithetical to innovation because this embargo of either-or will
disincentivise the innovator to increase production or improve production so perfecting the
product will come to a standstill. There is no reason why the innovator should not figure out
better ways of production and take advantage of technological leaps. In this approach the
innovator won’t be able to innovate further. Having a patent doesn’t mean the innovator
cannot innovate further. The product which can attain perfection won’t attain the same
because the innovator can’t innovate further. In the effort to make information free flowing, it
was a backstep in terms of incentivising innovation which imposes embargos on genuine
innovators who are trying to better the product and mode of production and make the product
perfect. It is setting back R&D in the country and ultimately this is going to hurt the public
domain and the public database of information.

This has been seen in the pharmaceutical industry of India wherein after India approved
mailbox application system for pharma drugs in 1995 wherein in no product patent was given
to expensive pharma drugs just process patent. India was lauded as the powerhouse of generic
drugs because the drugs could be reverse engineered. In India they would just add another
catalyst and keep producing altered variations but no new unique drug innovations were seen.

If there is bonafide interest, genuine innovator then TS should be allowed.

Copyright (CR)
CR is a natural right. CR needs to be fixed and published. The same problem occurs as with
patents.

Govindan v. Gopalkrishnan (1955)- No TS regime, so court said why not protect TS by way
of CR because it is an expression of information.

TS connotes commercial price to the underlying data and CR protects unique expression of
the information. There is a clear dichotomy because CR comes after publication of
information and TS is about keeping the information secret. Oxford v. Narendra Publishing
along with EBC v, DB Modak it was held that information cannot be protected until it is
unique. The sensitive information of TS is a mixture of information whose value is
intrinsically linked to it being kept a secret. Example- Google’s caches, cookies, browsing
history is raw data which is its TS. Based on this raw data it forms an expression which is our
profile now this information may be copyrightable but Google also wishes it to be TS. Raw
data is not copyrightable but Google wants it to be TS because if they publish this secondary
data, they won’t get any money. In India if Google did not have NDAs with their employees
and employee sells such Big Data in the absence of an NDA the employee can go scot free.

The judiciary’s approach is conventional. It will only accord confidentiality if the information
is judged to be valuable.

In Generics v. Shailendra court held that the pleading must outline the nature and content of
the information. The quality of confidential information is important to decide if it is in the
nature of confidentiality. So, the court wants a potential confidential information/TS to be
produced in a public document to judge if it is confidential.

In Ritika v. BIBA freelance designer who wanted to keep a few designs secret to do her own
line. The court asked the plaintiff to argue using CR for artistic work and the idea of
ownership therein. She was asked to produce here entire secret line in front of the court.
When she failed on this ground and because she had designed it for over 50 designs, she did
not get the protection of artistic work and since she had not applied for industrial design, she
didn’t get that protection too.

In pursuance of the India-US FTA, when US could not impose sanctions for lack of TS
protection on India, it published a special 301 list which listed countries who had dubious IP
policies and they named India therein. Scholars think this might push India towards TS.
We as a country are so enamoured by free flow of information, in the long run it will
undermine lower price of know-how and cheaper access to technology. All precarious ways
of evading TS regulations will one day run out because TS is separate from all these allied
laws.

11.1.2021

Every person has a right to free speech (FS). If FS is not given then there will be no progress
in the polity. The dichotomy between TS and FS needs to be approached carefully because
since TS is a new branch of IP and people are suspicious about it because it seems to stifle FS
and promote a regime of secrecy and is about keeping the information away from the public.
The idea of IPR is balance. Public is weary of patents too which is why granting of patents
and application by patentee is complex and time-consuming. We have a robust system of
patents. But some cunning innovators try to take advantage and extend monopoly by way of
evergreening.

Case- Laitram v. Deepsouth (territorial nature of patent)- a combination pattern of deveining

shrimps within short seconds was awarded a patent in America. This pattern was easy to
reverse engineer. Under patent act Deepsouth could not replicate and sell in America. So they
produced separate unassembled units of the pattern (Units A,B,C) and made importer
countries to assemble them. So they were abetting infringement- would it be infringement

Court- patent is a right of commercial monopoly and is a bargain by society. The innovator
gives product and the society in return extends some rights which cannot be interpreted
liberally. If patentee rights are extended beyond the statute it is unfair to the society.
However, this was not considered to be infringing.

Act amended after this case- Court condoned the act of abetting infringement in other
countries so to stop that now patent can also be infringed when the process of facilitating the
infringement is started in our country and the person will be guilty even if it was done in
some other country. So abetment of infringement vide a product is a criminal offence.

Therefore, every form of IP is subject to abuse and innovator would use it till they get the last
drop of money and society might get hurt in the process.
Microsoft v. ATNT – speech recognition software had patent and could be downloaded and
used only when it was running in a computer. Microsoft replicated this software but didn’t
download so no infringement. But they sent to country A and the master copy was replicated
there and thereafter was transferred to country A where it could be downloaded and sold in
the market. So infringement occurs in country B.

Supreme court was limited by the idea that they will not extend the rights beyond what was
prescribed in the Act- they did not extend the logic here. ATNT incurred massive losses, it
was not seen as infringement since infringement was not happening in country A hence amdt
would not apply.

Amendment- copies to include soft copies.

Litigation revolving TS is much less expensive than patents because the crux is to protect the
info and use a bonafide route to protect the idea. These are called shield litigation wherein the
TS owner wants to protect her information. Other is sword protection wherein the object is to
silence or stifle FS of society. Sword litigation where TS is used as a guise to protect
something else.

TRP Scam case- FS issue here too. Criminal sanctions are also there. Arnab Goswami
manipulating TRP to induce people to think his content is the best. Now that a whistleblower
is saying can he injunct that saying. If police knows of a nefarious activity and ask employee
to give testimony now can employer bring TS litigation claiming the employee’s testimony
will disclose confidential information—these are ambush litigation and TS is used to bar the
disclosure of info against the employer.

TS is not to be used as ambush litigation but as a means to protect genuine interests and
information.

14.1.2021

TS has a demoralizing effect on free speech (FS). One of the cons of the abuse of TS is it
affects competition within economy and deters FS. In any form of IP there is an affect in
competition. For example, in patent and CR there is a bid to increase monopoly by
evergreening. In GI there is circumvention by producing it in variations in different regions.
In traditional knowledge there is bio-piracy. TS boosts investor confidence that technical
know- how won’t be given away. But it affects competition because competitors do not have
access to it. TS has chilling effect within FS in the country. They opponents of TS overstretch
the cons, the idea of abuse of IP is not limited to TS, it applies for all other IPs. So innovator
is always at tussle with society such that they get the last drop of money from their
innovation. It is not just localised to TS but prevalent in CR, GI, semiconductor integrated
systems etc. Concern for TS is not completely misplaced because innovator can abuse.
Example- leakage of technical information, the positive impact is society gains access and it
becomes irreversibly a part of public domain. But the negative impact is that the innovator
loses millions of dollars of R&D. The innovator needs to prove that the leakage is not due to
his negligence but can cover it up with excuses of blaming the society  this is abuse of TS.

Example- A is a manufacturer of a niche car which runs on solar energy and also on turbine
hydel energy. Over the years of the car company’s operations various employees have come
and gone. One disgruntled employee who did not give a raise leaves the company of A and
publishes on a website A’s technical know-how. Will the court grant an injunction?

If we analyse it, it is A’s right to keep the information secret versus the employee’s right to
freedom of speech and expression. But, as A’s employee there is restricted freedom of speech
and expression because he got the information with the expectation that there would be no
disclosure and as part of his employment. There is implied/express confidentiality so
employees’ FS is subdued. When these rights are pitted against each other, another aspect of
FS which comes up- freedom to receive information- there is public interest attached because
a large part of society also wants to receive this information.

In employer-employee relationship, right to keep information secret will trump right to

speech and expression because the employee intentionally bartered away their FS right to
obtain the information on the condition of confidentiality. So implied duty not to publicise
this information beyond the scope of their official duty. So public interest aspect will be
ignored in this case and it will be considered only if it was given to the public in a legitimate
way and not by way of breach of confidentiality.

Ford v. Robert Lane – Student (RL) a car enthusiast had a website wherein he posted recent
developments in the industry etc. One day he received a folder from a stranger (did not reveal
his source) which contained information of R&D of Ford Motors including blueprints,
detailed processes of new cars, specifications of manufacturers what they want to bring to
market in the next 2/3 years. Ford said take it down or we will sue you, pursuant to this threat
RL published more information.
Court- there are two conflicts here – right to keep secret versus right of a citizen to publish
information. There is no trumping because no employee relationship or implied
confidentiality. So public interest comes into the analysis. The court judged it from a triangle.
Ford’s right to keep it secret, RL’s first amendment right to disclose information he has come
into possession if and that the public wants to receive such information (what is Ford going to
manufacture) so public interest was considered. Court conjectured that the leakage was from
an ex or disgruntled employee but there was no evidence to that effect. Right to TS will only
trump FS if we can prove that there is breach of confidentiality. In this case the public interest
element will tilt the scale towards publication.

Ford asked for two injunctions – first, to withdraw all info already published and second
mainly to prevent RL to publish any further information.

This is a classic case of TS versus FS. The most important element of TS is the info must be
secret but we don’t know what other info RL has, so pre-empting him to not publish further is
stifling his FS because no one knows what info he possesses and cannot already injunct him
from publishing it. FS is very important so even though Judiciary thinks he might have TS
info but they are not 100% sure so can’t impinge on his FS based on this. Public interest must
be considered to some extent in pre-empting injunction because we don’t know what the info
so how to balance TS and FS. If the information is political speech then can’t bar it because
public has a right to know. Sacrificing innovator’s right for the constitutional right of FS. In
this case Ford was given an opportunity to prove that RL got the information illegally
through malpractice but this burden was not effectively discharged. In giving injunction court
works on a prior restraint concept- to stop further acts. In analysing prior restraint, the court
will give injunction will pre-empt people from future disclosures if the effect of such
disclosure is more harmful to FS than the non-publication. We will protect TS innovator’s
right by granting an injunction if disclosure harms FS in the country more than stifling it right
now.

In this case court refused an injunction and Ford suffered massive irreparable loss - cannot
estimate to the fullest extent. Compensation is not adequate as a remedy because there is
something more at stake than the remedy itself. The non-granting of injunction cannot be
quantified. The investor and innovator community was not happy with this decision at all,
because now third party can exploit loopholes and cause irreparable damage.
Religious Technology Centre v. Lerma- A religious organisation’s key proponent is Mr.
Hubbard (Mr. H). he has written several works where he has been very vocal about
Christianity being supreme and critical of other religions. When his views were published and
accessed by the community the organisation faced a lot of backlash. Now Mr. H dies and
certain documents of his works are retrieved from his house- few published few unpublished.
Now the religious organisation is trying to stop people who have access to such unpublished
docs from publishing it based on the fact that because it was unpublished it constitutes their
TS and that whoever has access to it has an obligation to not publish it so that people who do
not understand their writings (because they don’t belong to the organisation) do not
misinterpret it which would lead to hostility. Here there is a conflict between organisation’s
TS and the people’s right to publish as part of their freedom of speech and expression. The
organisation stored their IP with Religious Technology Centre. Injunction was sought.

The test which was used was what was the main purpose of the litigation – was it protect TS
or to inconvenience the public by way of ancillary litigation. The court saw that the main
purpose was to prevent backlash but this would be at the cost of freedom of speech and
expression and TS was used as a guise to avoid the backlash so the injunction was not
allowed.

15.1.2021

Main purpose of TS is to promote innovation. TS litigation remedy is to protect that

innovation. But when the litigation is malafide, the primary intent is to prevent criticism of
company- to stop public smear of the campaigns. In these circumstances should the court
award an injunction? Example- company accused of tax fraud there was circumstantial
evidence. Accountant summoned to give substantive evidence and testimony. To avoid
disclosure of fraud company filed TS injunction based on confidentiality agreement and
history of technical info he had in his hands and his job of being accountant entailed access to
the confidential information. Similar to the religious technology centre case and the court’s
test was based on intent and motive of TS to incentivise innovation and it was not to serve
selfish intents because every injunction is an automatic restraint on free speech and
marketplace of ideas.
Inherent and commercial value of the property exists only when if it is not disclosed. Any
leak and public disclosure erode the value the secrecy vests in it in the first place. Also, since

Public pressure on need for public access made the court reluctant to grant injunctions.
McDallian logic: judiciary always has an answer in in mind before even hearing the case and
comes up with innovative tests to reach it- same happened in the Ford case where they
applied the prior restraint doctrine. Example- prohibition on using gmail or Trump on Twitter
– restrictions on using it because without such restriction more harm will come to society and
public than without the censorship. Court basically caused millions in losses for a company
using public interest – can also be extended to say that incentivising innovation that results in
future technology being cheaper which is also in public interest (purpose of TS protection).
Ford also has right to free trial that is compromised by the courts’ articulation of free speech.
The preliminary hearing only looked into the merits of injunction and not conceptual basis of
reparation, losses suffered and damages. Rejecting injunction at first instance itself causes
losses and in a way legitimises leakages of sensitive company information. Scholars have
argued a more balance approach which is needed since TS is irreparably harmed when
continuous disclosure is allowed and no amount of compensation can reverse this kind of
harm- free trial rights were abandoned. As such, first grant injunction and then go into what
the case is about (merit) keeping in mind if prima facie mala fide injunction is sought
(Samuelson) and penalise them with exemplary damages.

The burden of proof is with the company to show there was no negligence and on the other
party to show that the information was obtained legally such as company was being
negligent. Both parties need to prove bona fide nature of their interests.

Would rejecting injunction cause irreparable harm? If court holds that injunction will be
heard on prima facie basis- right to free trial is restrained – corpus of litigation is not
protected where remedy at that point is non-efficacious.

Farmers group v Lee- accountant not allowed to give testimony.

CBS case- to prove it is TS need to show prima facie it is TS, there would be irreparable
harm if disclosed, the other party is reasonably restricted from disclosing. The other party
will try to prove that the info was not acquired illegally but through legitimate reverse
engineering etc. or that the info is part TS and part political speech. Need to see if main intent
is selfish motive of silencing or could be mixed with innovation. Ideally court should be
prudent enough to grant injunction hear parties for a week and judge maintainability of
injunction on merits – discover the main intent- is it protection or prevent disclosure of their
malpractices. They can vacate injunction then.

Political speech defence- example Arnab Goswami’s TRP scam- can redact TS parts and
disclose political speech aspects. AG will attempt to silence by using ownership of TS. Test
would be to determine AG’s intent. On redacting, the claim of misappropriation of TS is
immaterial.

19.1.21

Two classes of victims of animosity between TS versus keeping info public- one class is
people who have prior relationship w innovator, owing to this their employment contract they
will always have an implied confidentiality agreement this will necessitate a lower position of
FSE than innovator’s TS. So when pitted these two so innovator’s TS will always trump than
an employee’s right.

The second class is a rep of an ordinary public belonging to society, since there is no prior
relationship having implied confidentiality is thrown out of the window. The right of FSE is
as emboldened as innovator’s right to TS. So in here when pitted there are certain factors
which weigh in it which side judiciary will go – one of the main ones being public interest.
We as society should continue to harbour and cultivate- infor is so general that soc can
harbour and make use of in future so jud wants to make it public. The concept of TS is to
keep its secret so even if partially disclosed the loss caused is irreparable, but there is also a
huge weightage on public gaining access to such info or publicise this info. The public
interest and the public’s interest to publish overwhelms innovator’s TS which is why judge is
hesitant to grant injunctions. RL decision is problematic for innovation, TS and investment.

Court is at liberty and required that injunctions is not dolled out at every ask and given every
time it is asked. Like in RTC v. Lerma the litigation was to protect backlash against them in
the name of TS and the injunction was sought on the ground that if we don’t injunct the
public their TS will be hampered. It is very difficult to gauge if injunction is required or not.
We need to prove prima facie, balance of conv, irreparable loss, still it is hard to gauge
because we don’t know what info we are trying to protect because it is secret, so court needs
to grant injunction as a rule so as to protect innovator’s right to keep secret without which
there will be irreparable harm to the innovator.

Art, 31 bis of TRIPS – compulsory licensing the idea of granting patent- to produce and sell it
to public in exchange for commercial monopoly, if the invention is not accessible to the
public (example cant afford) this is violation of patent and the controller of patent then can
authorise compulsory licensing- paying royalty to innovator and hijacking m/f to ourselves,
so patentee’s right of m/f is stopped temporarily to make it accessible to the public. This rests
on infrastructure .

If injunction is not given at that time the remedy loses its value the harm cannot be
quantified. Example demolition of my house if no injunction is given nothing to do. So need
to focus jurisprudence as first grant injunction and then analyse the injunction and then if the
intent is wrong then revoke it.

21.1.21

There are mitigating principles which resolve tensions within TS. Therefore to balance FS
and promote innovation we need a common ground. These are common in CR and TM.

There are two instances of TS litigations when dealing with TS versus FS :

Shield cases: Shielding information from being disclosed and misappropriated. In these
shield cases, in most of the cases these are bonafide TS owners who wish their secret to be
protected. For instance, Startek employee case- the employee left the company and joined the
competitor. The stratek went to court for an injunction to prevent the competitor from using
the classified information which the employee possesses. The court granted the injunction
because prima facie this is a shield litigation, there is bonafide interest to protect TS info.
Object is to incentivise innovations already existing within the public domain or not there in
the public domain. 

Sword form of litigation the idea of misappropriation of TS is used as a guise as a false front
to indulge in any other selfish interests. 

In the case of RTC v. Lerma; to prevent the public backlash and anger on themselves they
used the front of TS, which cannot be allowed. However, this cannot be determined from
beforehand. But this is very difficult to follow through bec right to free trial is guaranteed to
everyone and until the litigation progresses one cannot assume which type of litigation it is –
is it in good or bad faith. First amdt right encompasses grievance redressal as well wherein
people can take their grievances to the court without any fear of penal action. This is the right
why court cannot be strict or firm with those who come in bad faith in TS. In CBS v. Davis,
the factory in order to protect their reputation and avoid any bad publicity or backlash tried to
injunct CBS from airing clips relating to the company. So prima facie no TS case but just
used to protect themselves from any criticism. However, first amdt allows them to approach
the court nonetheless.

A two fold test is adopted by the Uniform TS Act to prevent such bad faith litigations. They
are- first test is to see if it is clear that the object of litigation is not to protect TS but to
promote some selfish interests. The second test is any reasonable man would know that the
plaintiff would not get the desired remedy if he takes his case to court. The litigation is a
nuisance. If this bad faith is proved then the Court can impose cost such as attorneys fees etc.
however it would not ever include exemplary damages because of the right to petition under
the first amdt.

This protection which granted to the TS owner is two-edged- protects the shield litigations
and incentivises TS owners  in engaging frivolous litigation 

There is Peremptory litigation wherein the big corporation engage in practices to restrain new
entrants from entering an established market. Therefore they file a litigation to discourage
such competition and threaten them to back out. This involves unfounded accusations of
misappr of TS. So you apply Uniform TS Act 2-fold test to determine.

TS litigation does not involve huge costs as compared to patents, GI, copyright etc. since they
are quite cheap which is further enforced by the right to file a petition. So big companies
stifle FSE and competition by placing malafide basis on TS.

In the GM v. lopez case, it was US interest v. German interest- not just individualsArticle
10bis, was invoked that the American scheme of protecting TS – but not as efficient as Paris
Convention requires. So US law was weak and its interest was at stake so the Court ipso facto
adopted and incorporated Paris convention provisions within Lanham act to augment claim
of GM- created tremendous pressure on Germany. Special 301 lists- America publishes to
scare other states. German courts said that they won't enforce this order because they did not
have TS law. 301 list contained Germany’s name so Germany had to ask Volkswagen to
settle the matter. This case does not mean anything for TS law but this case is important
because it was the first type of case of industrial espionage. First case to highlight that two
states can have such a rivalry over R&D. 

In contrast to this is the case of Ford Motors v. Robert lane; Ford motors is an American
company that brings in money for America unlike in GM case which involved two countries.
So the loss incurred by Ford was counterbalanced by the rise in the level of R&D by the US
economy as a whole- gaining technical know-how for full society.

25.1.21

Every branch of IP has strategic limits to itself to balance society’s and innovator’s concerns.
Example- In copyright we have fair use, idea-expression dichotomy et al. In patent also we
have exhaustive method of fair use.

So in TS also there are inbuilt considerations to address the contradictory concern. TS as an

animus to FS has not been properly evaluated and the loggerhead of TS and FS has not
peaked yet. But it will peak due to technologies such as the internet, want of information. So
conflict between TS and FS will grow. So TS is slowly gaining ground as a branch of IP with
society. So what are the limiting principles of TS which address TS & FS.

There are 5 inbuilt principles to make sure any hostility at play is internally regulated- to
make sure the system itseld takes care of the hostility. This is done to level the battle arena
such that one does not trump the other.

1. Reverse Engineering- Chicago Locks v. Fanberg- Fanberg provided services of skilled

locksmiths. They compiled a data of various key combinations which were combinations of
Chicago Locks. CL said it was misappropriation of TS. Fanberg got these combinations
through their own skills, they reverse engineered it and got it. Court was hesitant in favouring
TS.

If an innovator by independently studying and through their skills comes to know of the
secret there is no malafide interest. So need to protect the skilled person if not then that will
lead to awarding the TS a commercial monopoly at the level of a patent.
TS cant be put at the level of patent because patent has a very high commercial monopoly in
return of which patentee discloses information to society but this is not the nature of TS at all.

Onus is on the innovator to keep it a secret there is no embargo on others investigating it. So
if injunction is given then TS is being converted to negative right capable of being equated to
patents, which is a fraud upon society. TS innovator is not giving back to society as a
patentee would have so cannot expect society to give TS innovator the rights of a patentee.
One can investigate and make a chain of competitive products. There is minimal protection
given bec the owner has kept it a secret and there is assurance that it represents technology
which has been never seen before. Since, TS owner hasn’t revealed the info, they cannot stop
reverse engineering.

2. Pre-emption- In the Pharmacutica case the plaintiff had alleged that they have TS over
information not disclosed in the patent application. The proposition was struck down by the
Delhi HC wherein it adopted an either-or approach of either patent or TS. This decision was
not considered a good one because applying or grant of a patent application does not mean
that subsequent innovation in that product wont take place. There can be m/f methods which
can be more commercially viable.

Since there is an embargo on evergreening, innovator cannot taken this new m/f process to
the Patent Officer and hence to incentivise innovation within that product itself shouldn’t the
innovator be given the protection of TS over such innovations? If no protection is being given
then society is being deprived of perfection in a product.

In Keewane v. Bicron Oil – K produced crystals. It was a big company. B was a new
company constituting of ex-employees of K and produced the same crystals as K and utilised
the same m/f process. K alleges misappropriation of TS. But B argues that if we look at the
invention of these crystals and the m/f process it fulfils the criteria of it being a patent (novel,
industrial application and inventive step) hence, K was duty-bound to file for patent and not
protect it as TS. Since, K has been evading getting a patent they have now been estopped
from getting patent protection and cannot get TS protection either. B said there is no choice
as to file for patent or not, if patentability is satisfied no TS protection. – restricting the
choice of innovator.

Court said when we talk of pre-emption we don’t cast a social obligation on the innovator.
It focuses on the differences of the regimes to choose which regime he should go for. It
should not ne seen as an either-or approach but rather that info which has not been patented
can be TS. The pre-emption principle is that there is a choice between patent and TS for the
innovator. If an innovator wants both TS and patent the test is information should be
different not that whether the information is relates to the same product or not. Obviously if
while going for a patent one already has the knowledge of better processes then they have to
disclose otherwise it is illegal, but for information being born at two different points of time-
there is a choice.

3. Accidental disclosure- for example, documents filed in court if that document has secret
information then need to file for a protective order. But a person forgets to file this order and
files it half an hour later. Within this half an hour a court reporter goes and access this
information knowing fully well it is secret info. So will this be misappr? It wont be misappr
of TS because the precursor of TS is that owner takes definite step to keep it a secret. Onus is
on the innovator to ensure no accidental disclosure. Negligence directly attributable to the
owner of the TS itself. Owner of TS loses moral high ground to seek protection of TS. So the
principle of accidental disclosure says that TS protection is lost if info disclosed owing to the
negligence of owner or their representative because enough care was not taken,

4.Rule against safeguarding TP- In Robert lane case, Robert Lane is a third party (TP). In
misappropriation of other kinds of IP the primary misappropriator in isnatnces of violation of
any IP will be liable as well as the secondary misappropriator. But in TS it is not so. only
primary misappropriator is liable (eg- ex-employee who told Robert Lane) but Robert Lane
being a TP or secondary misappropriator isn’t liable until it can be proved that the
information TP got was by way of illegitimate means or mala fide ways or where it is shown
there was conspiracy between direct misappropriator and TP. The upside of this is higher
flow of FS, as well as companies inculcating loyalty values more strongly in their employees.
But downside is that lots of damage done.

28.1.21

5. Idea of social public concern- If there is direct clash between keeping the information
secret and bringing it to public for social relevance, for public good then public interest will
prevail. In Ford case, every person wants to know how Ford keeps its profitability so once it
was out, there was huge public support for bringing more infor so public cry overwhelmed
the wish to keep it a secret. At the time of Ford Motors, the economy was characterised by
jobless growth- rich people became richer and poorer sections of society became poorer. So
there was immense anger in society against the entrepreneurs and capitalism and the idea of
consumerism. There was a public cry against the Ford Motors owing to this anger of the
public. The judiciary wanted to be a venting point for the society. It manifested as people
being denied equal opportunities.

To the R&D community it is that judiciary have let them down. From a TS point of view
every aspect of public interest will defeat TS then. Pamela Samuelson- need to draw a line-
need to see if the knowledge is special knowledge, is it comprehensible by the public, or is it
so technical that public will not understand – then what is the point of disclosing it. Public
interest is valid but need absolute clarity that what information is being disclosed public can
make use of it and not just the competitors. If the info is general, comprehensible by people,
not protected well not as commercially valuable as the innovator claims it to be – if these are
there only then should the judiciary weigh in the aspect of public interest.

But why does public need to comprehend it, any info can benefit public? – the idea of bargain
in scheme of IP is to ease out tension between motivation of innovator and public interest.
Need to balance so Pamela Samuelson suggests this balance.

Joe Burgers v. McDonalds- When Apartheid system was at it speak in South Africa,
McDonalds pulled out of South Africa and didn’t register for a mar there. Joe burgers to
show that it was a publicity stunt regstd, McDonalds mark as their own in S. There the
question of “well-known to the public was discussed.

Innovator wishes to curb society’s access to info. They will use TS misappropriation as a
sword against society. But society always wants more information which leads to outbursts
and battle by society. Example- Coca Cola using pesticide, Maggi ban etc. society revolted
against these bad practices by the companies. For example, a case which was later withdrawn
was filed in Bombay HC saying soft drinks brands are doing fraud on society as it is a great
affront to public health and safety. So Bombay HC said disclose all the ingredients of
CocaCola to prove there was no pesticide. So public concern was used a sword against TS.
Therefore, need to balance to keep both sides bonafide interests.

29.1.21
TS as a branch of IP is a relatively new concept because of the hesitation of policy makers
and others to accept it as a branch of IP. Generally it was presumed as the amalgamation of
different schools of laws like torts laws, contracts, property, competition law etc. 

TS was never believed to be capable of generating the result of incentivising innovation, this
was because the idea of TS should incentivise innovation was never studied as a scope or aim
of TS. It was being limited to providing the remedy to the owner of the TS which raised the
debate on such litigation. Subsequently when the focus shifted on the idea that the TS is not
only about remedy but also about ensuring that the innovation also kept secret  allowing it to
nurture further and come out and protect the R&D which is symbolised within the secret.
Basically, throwing light on the importance of the secrecy of information because only then
the commercial value of this branch of IP began to generate further and henceforth
highlighting the importance of protecting the  information. 

For the longest time TS was considered as the amalgamation of different schools of law, it
was only focused on seeking remedy and there was no commercial value attached to its
practice. For this very purpose, the innovator was never at loggerheads with the public
because none of them perceived at war with each other. It was only considered  a fight
between innovator and employee or past employee or some form of unscrupulous
competition.

When TS was considered as a branch of property law, it was always considered a fight
between the owner of the information (innovator) and a trespasser of the information. This
relation between the owner of the information and the trespasser of the information or the
unscrupulous competitors eventually moved into the stage where prior relationship between
them did not require for the invocation of the principle itself. Eventually we went to stage
where we accepted that TS is a branch of IP because there is an underline ambition of society
to bring that innovation into society on the condition that the society will take all the efforts
to ensure that they will not meddle with the innovator’s secret and further protect it so long as
innovator protects it. 

The society granted TS recognition, that the innovation will be protected as long as the
innovator is protecting in exchange for bringing technology to the society. But during this
barter the interest of innovators was pitted directly against the society at large. Till that point
in time, the innovators commercial interest in TSwas pitted against the individuals with
whom he had prior relationships or some form of commercial relationship. This was later
evolved and pitted against the society at large because of the bargain of IP. The bargain of IP
was such that; the innovator wanted to release less information and get more rewards whereas
the society wanted more innovation and knowledge. Hence there was always a clashing of
both party’s interests. 

Moving away from the traditional idea of TS as not a form of IP to a situation where TSwas
being accepted as a branch of IP.  The commercial value of the subject exponentially
increased. The commercial value of the information was increased because though the
disputes were civil in nature we were not looking at private issues rather considering the
innovators interests as opposed to the interests of the community at large. The battle and
difference between the two started gaining more relevance. By virtue of the larger R&D
which was invested into bringing the invention into the society is pitted against the society
wanting to know more about the innovation. The protection ensured by the society that their
TS will be protected which persuaded the innovator to come up with more inventions. This
leads to immense security for the innovator to invest in the TS which further leads to gaining
TS’s momentum. Hence, innovators wanted to get protection under TS because it provided
perpetual protection. 

The ipso facto protection of TS which was approved by the society when innovator chooses
TS ( the information is protected as an IP while maintaining secrecy) that led to the immense
sense of security on the part of the innovator community making them spend in TS. hence,
TS gained momentum. 

With the increase in the commercial value of TS, the animosity with the society also started
to take a pace. Because society wanted to know more due to the huge amount of money
invested and innovators wanted to maintain secrecy to increase the profits. The interest of
both the parties became more rivalrous where the society was not afraid of using “public
interest as a sword” to extract the information or use third parties to get the information
leaked etc. In these schemes, the owner of the TS also innovated upon bypassing the TS
space. In order to ensure that when it enters into a bargain with society, it uses the loophole in
the TS regime to put embargo on the society from constantly lugging into its interest. 

The innovators used amalgamation of different laws to protect the TS which are not inapt at
accommodating the interests of TS. Therefore, the innovators came up with a fortified shield
to protect their innovation. So as to deter the society from using the mediating principles in
order to come around with the information itself, the TS innovators decided to use a mix of
various strategies and tactics like copyright, patents etc. 

Copyright is being used as an upper layer of protection for trade secrets- For example;
Google stores cookies and your browser history. Then it formulates Data A (raw data) which
he uses to predict the consumer behaviour compiling Data B. Copyright available on Data B.
The TS of google  is that Raw data, if it converts the raw data into data B but data B cannot
be utilised in the best possible way because that is comprehensible by people easily. If we
claim copyright over this data then we would injunct people from reproducing it, which will
raise various moral ground arguments. But the intent of protecting the information is not
solved through copyright protection because that information can be used since the embargo
is only on the plagiarism of that expression itself.Hence, Copyright does not become a correct
law to protect the information. However, some companies evolved on this idea (raw data
cannot be protected since it is the information hence, they converted into Data B which is an
original expression and is protected under copyright. But they cannot use this expression
which is protected by copyright because society will have an option of generating the same
data into different expressions. Hence to bypass this situation), so on the basis of Data B they
came up with the encryption software which was converted into Data C which can only be
comprehended by company or google only. This encrypted data can only be decrypted by
them only hence it is a unique form. Now they are trying to protect Data C under copyright
law which has both raw data + Data B. Therefore, the TS is protected through Copyright (by
using copyright since Data C which is a unique expression and is encrypted data they have
created an embargo on the rest of the society that they cannot figure out the encryption). 

Idea-Expression dichotomy is taken very seriously in India otherwise Berne convention

allows copyright protection over information as well.The significant increase in the fold of
protection of information by firstly claiming TS over it (the underlying information within
encryption is protected by TS) and then addition of other layers of protective schemes like the
idea of copyright. In other words, protecting the information through copyright which is
already being protected under TS. [In short, Raw data= protected by TS and encrypted data
(expression is extremely unique) provides another layer of protection to the encrypted
expression through Copyright law which restricts people to figure out what expression is and
in this process the innovator is creating embargo on people from figuring out what the TS is;
it is essentially protecting the information that is Raw data/TS].  
Through this idea of copyright, the companies are claiming this unique expression yours
solely and through the rights attributed in lieu of protection like modification, adaptation,
alteration etc, you create a general embargo on the society from trying to meddle with that
encrypted data in order to arrive at the ultimate TS which is being protected. This is the heavy
layer of protection representing the huge amount of R&D invested. 

This seems like a fraud on society. The rule of preemption; the conventional notion of
preemption was only thought of as being an alternate between patents and TS. No one
thought of a space that copyright being used to gain additional protection. This pace is
extremely sophisticated which confuses the society itself. 

How is it a fraud on society? When a society is giving the innovator a bargain under IP to
protect its TS, it expects diligence that the innovator will honour the bargain and will only
use the basic protection which has been granted. Innovators relying on another means of IP in
order to artificially strengthen this form of IP will amount to fraud on society because the
society never wanted to give that level of protection in the first place. 

DC Wadhwa v. Bihar; not committing any illegal but going against the spirit of constitution.
Similarly here, the innovator strengthening the IP protection through artificial means is not
illegal but it goes against the spirit of IP. hence, it is a fraud.

1.2.21

The idea of TS was considered as antithetical to innovation and TS does not form an IP
because it protects the information and the information is not in the public domain hence the
notion that it is bad for society. Due to these reasons the TS was not considered as a branch of
IP. The remedy was then provided to the owner of the information under different laws
through competition law, contracts or torts etc.  

The mark lemley and robert bone debate. That the protection under different laws like 

Contractual law 
Tort law 

Was focusing on the remedy and not why the information is being protected. In the surprising
virtues of IP; Robert Bone highlighted that if we do not consider which are protecting the
information then the relevance of innovation is rendered useless. Therefore, accepting the
idea of TS as a form of IP is not so bad. For eg. the doctor coming up with the new form of
process to cure cancer. In the bargain of allowing the doctor to preserve his knowledge,
society grants him certain rights under the condition that the doctor has to use the technology
in the society. 

TS started representing the amount of investment in R&D which represents the level of
technology. With the increase in investment the society started to grow suspicious. They said
that they are incentivising TS over patents hence, losing out on the knowledge. Thereby
public interest concerns started to take ground. This has grown out of the innovator's own
selfish motives. The judiciary was initially predisposed to the idea of protecting innovation;
clash between innovators right v. society’s right, then initially judiciary protected innovators
right but because of the malpractices and artificial extension of protection is a fraud on
society hence the judiciary gradually  started taking a note of public interest and moved
toward public concern because of the suspicious attitude of TS owners. 

Google; collect cookies in browsing history form one layer of data which is Raw data which
is not copyrightable. Since,  Information cannot be copyrighted. Therefore, it will form the
TS of the company based on which the company will sell preference patterns to other outside
companies. The consumer preference chart is formed based on Raw data; generally copyright
can be claimed which can only protect expression (not the information which comprehends
this information; not creating an embargo on people from using the information or stop them
from meddling into it). Now this Data B; compilation of preferences/ derivative data has
copyright. But information is not protected. The dichotomy arises on the derivative data;
there is TS embedded in derivative data but this is copyright hence, no right to protect data.
Therefore, this derivative data is run through encryption; this secondary derivative data which
is an encrypted expression of Data B. There will be copyright on the Data C because of the
unique and original expression. This is protected through copyright and further the raw data
is already protected under the TS. 
Description of encrypted data should be allowed but in certain cases which goes in the moral
rights of the copyright owner which states that the moral rights of the copyright owners does
not allow the member of the society to decrypt this extremely high level of copyright. There
are certain judicial dictums which have condemned the decryption. The copyright serves
additional protection which now even the judiciary has started to oppose on the grounds of
public concern which is raging on. 

N2H2 v Edelman 

In this case there is encrypted software which blocks IP access to certain websites or
dangerous online materials in schools, libraries etc. Essentially, it is an IP software which
blocks access to certain websites which allows censorship in school and libraries of colleges
and education institutions. Edelman as a researcher wants to figure out what is the basis of
that censorship, how does the software detect what websites should they block hence wants to
know the algorithm on the basis on which this software segregates. While doing the same,
Edelman gets a notice from N2H2 stating that he cannot do this and that he should not try to
decrypt the program because that involves a lot of TS which will be misappropriated. On
receiving this Edelman went to court asking for a declaratory order saying that it is not
against the spirit of TS if we reverse engineer the software. 

Now the question arises that if we have a program of encryption does the proprietary
ownership over the program of encryption also allow me the proprietary over the program of
decryption? 

Hence, if you have an encrypted program/software the prospect of decrypting that program
will have to go through essentially the same process, because of this very purpose the owners
of TS highlights decryption as being an essential component of their proprietary right over
the encryption itself. 
Wrt to this Edelman case, the Court refused to give a declaratory order. At this point in time,
sympathy was still with the owner of information because of the incentivisation of
innovation. Because of this when the matter came into the court, the court did not decide the
case with the perspective of public interest. The process of decrypting the algorithm of
encryption will hit tremendous TS. Therefore, the court says that they won't grant declaratory
order. The court did not raise the public interest issue of whether the individual has a right to
decrypt the encrypted software. The court did not realise the ramification of this judgment,
ideally the court is allowing censorship to progress on the whims and fancies of the particular
company because it is their TS. This becomes problematic if we consider a far reach program
of the same variation for example; Facebook Zero, which came out with an idea where they
allowed basic access to the internet free of cost.

 The net neutrality issue or facebook zero initiative is essentially a component of this debate. 

The idea of censorship cannot be limited and considered as a private dispute. If we

extrapolate the ramifications of Edelman case to higher perspective like Facebook Zero, 

What if N2H2 is providing censorship to the different companies throughout the country;
allowed to massively censor information on account of its TS then the argument of society’s
right to free speech is massively affected.  

It is seen as a private case between a company and researcher; because of the sympathy
towards the innovators since they are seen as a torch bearers of innovation. But now, the
argument of free speech surpasses the requirements of the TS owners to protect the
information. 

Program is protected  under Berne convention which is copyright. The idea of encryption is
related to expression itself so when we try to decrypt it we are trying to jinx the moral rights
of the copyright owner. 

Encryption is projection of the person's expression so if we allow the society to decrypt this
expression, the moral and commercial rights of the owners are violated. This is as mentioned
earlier is a fraud scheme of bragian if IP. So when protection is granted under TS it is granted
only by the virtue of notion that the innovator will seek the protection of the same under TS.
This artificial strengthening of protection is a fraud and therefore, no court will allow the
innovator to have copyright over it. Finally, innovators moving on to the extreme tangent take
the argument of Moral rights over their copyrighted work therefore if anyone tries to decrypt
or reverse engineer the data, they will infringe the innovators moral rights. 

4.2.21

We accept TS to be a sub branch of IP, we see a direct change between a private matter of 2
individuals to the right of innovator being pitted against the right of society. It was always
citizen 1 vs citizen 2- this was severely downplayed. But as TS came to be accepted as IPR a
substantial amount of R&D came to be presented as TS. The rights of society the bargain of
society took centre stage. It became innovator v society and the judiciary became the
mediator between the two. In N2H2 v Edelman – Instead of pitting it as a philosophical fight
between interest of innovator and society, judiciary framed it as citizen 1 v. citizen 2. In this
case a computer program protected by encryption tried to censor materials in educational
institutes. It incorporated the idea of censorship at the cost of society’s power to maintain
balance.

Now if this software which is used to censor the material, this computer program allows an
algorithm which N2H2 believes is protected by TS and in order to strengthen the protection
the innovator uses an encryption software. Digital millennium copyright act (DMCA)
prescribes anti- circumvention rules which lays down the path of protecting copyright
programme. Anti-circumvention rules carries a saint of the force of law which states if an
innovator has encrypted a program then decryption of the same would amount to the
violation  of the DMCA mandated anti-circumvention rules. The idea goes like that the
innovator has copyright over the original expression as well as the opposite stance also. 

There was significant sympathy towards the innovator that they allowed such a disturbing
pleading of DMCA anti-circumvention rule as well as the idea of the moral rights prevailing
within the encryption program to facilitate censorship.  The court relied on this and stated that
it is violation of anti-circumvention rules hence violating copyright and also in the process of
decryption; the act of description by Elderman will violate the TS. This was disappointing
because of the repercussions of the case on the social cause since the idea of censorship
cannot be localised as a private dispute. The fact that the judiciary refuses to identify the case
for the repercussions which normally are foreseeable. This decision of keeping innovators
interest over public interest was criticised by society. This might be fair when the idea of
censorship is limited to the schools and libraries but taking an example of twitter which it
states that by regulating its internal rules, it has postulated that it will take away handles
which seems against community standards (community standards, they don't specify and it
also constitutes TS of twitter). This repercussion of this censorship is on a large scale, the
idea of restricting the problem to a private individual is unsettled.  Considering it from a free
speech angle, allowing this censorship on this massive platform of free speech to be
whimsically regulated in the fashion of the way it is being done under the guise of TS. 

The US does not have a moral rights scheme. An individual who even after bartering away
the rights while signing up on Youtube, then an individual of India would still continue to
possess rights which Indian law guarantees. For example; if an indian individual's music is
being used in a negative sense then that individual can claim that his moral rights are violated
and if YouTube contends that there are no moral rights of that individual since he has barter
away the same would be rejected by the indian courts outrightly. Further this contract was
also unconscionable because it asks individuals to bypass the requirements of the legitimate
territorial regulation of the copyright within the country itself. Therefore, the micro analysing
the effects of the case; N2H2 is problematic. This is a case which incorporated the idea of
censorship in the guise of TS. The repercussions were downplayed. 

Microsoft v Kerberos 
In this case there was a security system software which was floated by Microsoft which
gained popularity in the society. Therefore, in lieu of this popularity, Microsoft tried to
extend the ordinary life of the monopoly over this scheme of computer program through
invoking the Mass market license. This license states that Microsoft will make my software
available to those set of users who agree to never reverse engineer its software thereby giving
up there right of the same and never indulge any practice to reveal the TS (microsoft knows
that the software is reverse engineerable but does not fulfil the requirement of patents hence,
not patentable.. Therefore, trying to protect this software under TS which is not a correct
choice because software is generally reverse engineerable. In order to insulate the
appropriation behind the software, Microsoft invoked a Mass market license). Creating
artificial monopoly which serves as a significant fraud on society because TS was never
intended to grant the protection in such a forced and artificial way. 

There was an engineer who gained access without having to accept the forced non-disclosure
agreement. He used all his prowess to come into possession of the software without agreeing
on the conditions. Therefore, the embargo on reverse engineering will not apply on the
engineer. Microfsoft went out against the engineer while contending that “the process that the
mass market license is an implication that we will not allow anyone who did not agree to
comply with the forced non-reserve engineer condition to access this software”. Microsoft
used this modus operandi to go behind the engineer. But in this process the Public relations of
Microsoft faced severed downfall. Society began to witness Microsoft as a technology giant
who is against the idea of dissemination of  information. Microsoft had a huge downfall, and
due to this public pressure which mounted upon Microsoft resulted in it pulling out of this
litigation to avoid backlash as against them and to preserve its face in the society as someone
who tries to protect and promote technology. 

Using a Mass market license like this amounts to fraud only (according to sir). 

Allowing the use of such a license in this manner will divert the innovators to take protection
under TS as opposed to patents which will massively hurt the society at large since TS
functions on a paradigm which believes in keeping the information secret.  
Due to the lack of information (on the part of consumers that TS cannot be protected in this
manner) still there are certain companies which indulge in such Mass market licenses and
threaten the consumer through preemptive threat/strike which seems like a fraud on society
and has a massive deterring impact on the society in order to reverse engineer the product. 

5.2.21

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 to 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.

One of the major idea that HR scholars advocate that religion should not be mixed with
political speech.

The basic fraternity of the society then becomes conditional

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 as
anti-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 backed out.

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 received 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. Innovator trying to stretch.

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. Si 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.

8.2.21

Once TS got accepted as IP, the proportion of R&D representing TS increased, which led to
innovators becoming more selfish. So innovators tried new variations that last trickle of their
commercial monopoly is stretched to the maximum possible, they are committing fraud
against the bargain being made by society. Ex- Deepsouth v. Laitram.

This abuse is not just confined to TS but across various IPs such as GI, TM, patents etc.

We need to incentivise patents over TS bec it is disclosure of info and society can build on it.
R&D is dependent on that info and welfare of the country is dependent on the R&D and
welfare ensures equitable growth (opposite of jobless growth as mentioned by economists
Thomas Piketty, Simon Cosnet) R&D is linked to security and law order. If there is a
situation that TS=patents-No reverse engg. - Innovators take route of TS. TS does not require
disclosure is there in perpetuity as long as can keep secret. In TS the benefit of the society is
the use of the invention/accessing the technology itself. The invention is not being allowed
free of cost. In terms of money is allowing concession, money is flowing to innovator
because society is accessing it. The return gift of the society should be the ability to study the
information which makes the technology- there is no authenticity as to the science/technology
that the innovator purports it to be. Some level of tech is visible in the product itself but we
don’t have the background info. If we cant asses the level of technology what is the
additional benefit the society is getting from doing so. In TS the reward is the security that
you carry on with the tech and if there is a misappr we as society will stand by you and see
that you get compensation for it and restituted.

We get right to access/use and study the technology and in return the innovator retains the
right to make sure employees don’t go behind the innovator’s back- society condemns
misappropriation. If society does not do this (retain the right of reverse engg) society is
prioritising TS above patents. In doing so it is inadvertently sending a message that we
encourage the innovator community to go for TS regime. If this happens then society loses
out on information. Innovators would want to protect info and they try to stretch their TS and
this is when society comes in and uses the defense of public interest. In the digital age
innovators are extremely scared because if once their info is published in internet then cannot
revert to TS anymore. Earlier innovators had become complacent bec TS does not require the
3 pillars of patents and they went one step ahead of doing mass mkt licensing and barring
society from engaging in reverse engg- they irked society

2 aspects of FS- have an opinion and express the opinion. There are restrictions on the
expression. Under 19 (3) of ICCPR expression can be limited by law and only if it is
necessary and only to that necessary extent.

Samuel Moan says HR is a language for exploitation – it is a fancy word to justify

exploitation of workers. CLS says right when stretched to beyond becomes negative
entitlement Dred Scott v. Sanford – slave owner said there is HR to own property which
includes owning slaves. This entitlement cannot be allowed in any society. A right can only
be exercised as a right only till its not unreasonable - in here Dred Scott was denying the
humanity of the workers

The economic interest of the HR cannot be overstretched to deny the humanity or HRs of
others.

The economic right of TS is stemming from my HR to trade, prosperity carry out occupation,
in exercising this HR I should not stretch the economic interest if this HR such that humanity
of the other party is not made redundant and destroyed- thus, cannot destruct the societies’
right to FS – cannot trump their right.

AT&T economic interest of goodwill creating an embargo on the society’s HRs of FS. Such a
ridiculous strategy by the innovator (AT&T) is just inviting trouble- how to use the product if
the consumers can’t provide feedback. (Benchmark data consists of info which according to
them have TS- but that was not true it was just to protect their brand rep). the FS debate will
admonish AT&T in preventing consumers from expressing their feedback about the product.
Using the product and giving feedback on it is part of FS. There is both public interest and FS
angle.

9.2.21

A right of an individual should not be stretched to such an artificial limit that it becomes a
negative entitlement on the HRs of other. In Dred Scott he made a mockery of the judicial
system to assert that his HR is wide enough to deny humanity of the slaves and saw them as
property. The judiciary in this case upheld this assertion unfortunately. This led to the
Critical Legal Studies which said HR is just a justification for exploitation.,

Capitalist enters into a contract with the worker for a 16 hour work shift. This is an act of
treachery and oppression against the worker. But HR will see it as an equal right of the both
parties to contract- but it does not take into account the unequal bargaining power. Supply of
labour is abundant so if worker does not agree the capitalist employer will just fire him, he
has to accept the unreasonable working time in order to survive. Marx said HR is a language
of the bourgeoise to exploit workers- HR will cloak this as right to equality in entering a
contract. Doing things to exist is not a choice but a necessity. When I give credence to the
economic interest of the innovators I am recognising them but where they are trying to stretch
it such as in Dred Scott it becomes a negative entitlement and not right. The intellectual
property “right” loses its credibility. When it becomes a negative entitlement it leads to
denying humanity of a specific section of society it is manifested as TS versus FS where they
are denying their right to political identity. Political identity is expressed in your actions, your
thoughts, if you cant have opinions or express them you are denied your humanity. One of the
critique of HR is it places the naturality of HR in one being a human. It attaches to your
person as a human- everyone possess the same agency. There is a fallacy here because not
everyone has same agency- for example because of biological factors or social structures
everyone does not have equal agency that does not mean you don’t provide HRs to them.

It is not uniformly absorbed by society- gagging effect on society- but this gagging effect
does not affect everyone same. For example, in Robert Lane what if Robert Lane owned a lot
of money, Ford would not even pursue it because it is a losing battle- its already out there in
the internet and the mediating principle of limiting TP liability. So the threat of suing for
money is not a threat to a rich Robert Lane because he has so much.
If Robert Lane hadn’t possessed any money- Ford comes and says that if you do not stop
otherwise will sue you for all your money- this would be a credible threat and he would
comply

So the gagging effect and the effect on FS depends on the economic capacity and agency of
the diff sections of society. So when dealing with TS v FS we need to come up with an
objective framework and not subjective factors. If this is not done and TS v FS rages on
within the backdrop of the fragmentation of society- the marketplace of ideas will be limited
to only a certain section of society- that is those who have ,money because they are not afraid
of TS. In the middle class it will be a tough battle because they have some resources to , in
the lower socio-economic groups the idea of FS will be forgotten. The jurisprudence we are
studying is not taking into account the realities of the fragmentation – this can only be done
by imposing heavy costs if innovator tries to gag society bec this gag will have the most
effect on people who cant fight back the innovator. So how to disseminate and strengthen
jurisprudence to make sure this does not happen. So the society needs to be aware and
educated that the innovator cant take society for a ride and to impose heavy costs on the
innovators who are stretching their right to deny the society’s HR. People like us who study
the intersection of hr and ts to make society aware what their rights are, what the mediating
principles are so that they know where the innovators; right ends then this ununiform gagging
effect can be absorbed by society as a whole. Second innovator should not subscribe to
fraudulent schemes such that his economic rights of his HR of trade/prosperity etc does not
impinge or form a negative entitlement on the HRs of society.

Ts v. FS before was localised to a certain section, but now that there is internet public interest
has risen in a manifold way.

Big data has always been a space where we protect the underlying data with an additional
layer of copyright- encrypt it, express it uniquely and then get CR over this unique expression
which has underlying TS. In N2H2 was protecting the data non-discernible, difficult to study
the info and break it down and coat it w heavy encryption and this non-discernability and
encryption software protects the underlying TS itself. So CR protects TS itself.

Bunner case- audio-visual material is protected under CR and the CSS can be protected as a
(info which prevents copying) TS. So the CSS being built into DVD player

DVD contains expression so that is being protected by CR. Now if I don’t want people to
infringe on my CR then I don’t want ppl to copy. To prevent this I use the CSS. Now if I am
installing CSS in the player I want people to not study it bec if they study and break the
working of CSS the information coded within the CSS software they can come with a
reverse engineered mode of CSS called as DeCSS (decryption of content scramble system)
protect the info because if they can crack that info then they can come up with a decrypted
software to enable copying again

11.2.21

In the case of Ted Bunner, CCS software was shipped with every DVD player which will
disallow any unscrupulous activity. Looking at it from the perspective of DVD manufacturer,
why would he agree?

So, it will not harm his profitability for not changing the configuration of the player- they will
continue reading piracy disk. The idea of copying is hindered because of CCS software-so no
harm to the manufacturer, it has been constructed to disallow copying. Now, this seemed like
a full proof plan but there was one problem which was the CCS software itself, left a little
apprehension in the minds of the manufacturers that this CCS software is not immune from
the concept of reverse engineering in order to break the limitation of copying. Now, if I am
the owner, I would want to have the right to make copies myself, it would be unfair to have
others make copies.

First ever copyright statute known to mankind was the Statute of ANN(first CR statute)-
publishers gild were the masters for regulating  material available in public domain and what
sought of duplication was allowed in the state. Once printing press came, it acted as a
catalyst- incentivizing people to produce quality material and the second theory  being
advancement of market place of idea. Once this political right comes into picture, it has
ramifications. The monarch is occupied with precarious position, on one hand he wants the
society to have market place of idea but also swayed by the idea of regulating seditious
speech. Monarch felt leaving the right to mold public opinion with them will make the future
of monarchy uncertain. When he thought about giving the right of giving ownership and
replicating it to the owner from the publisher’s guild, this move was even supported by the
publisher’s guild.  To fuel a robust public domain of knowledge which was not monopoly of
anyone in order to achieve the pursuit of knowledge. Why we discussed this is to appreciate
the level of protection which should be accorded to the DVD.

We are trying to create an imagery that author of the work has significant hold to prevent
others from replicating the work else I as an innovator is not being incentivized.
Can Copyright law say that you have to publish or its merely an incentive? - it is only an
incentive. I as a DVD manufacturer will love to retain it with myself. If society helps me in
restraining the people from society from replicating it illegally. This scheme of amalgamating
TS with Copyright does it seem like fraud. The idea of reverse engineering will be allowed to
know information reflected in the TS. Here I am not protecting TS but the idea of replicating
the expression itself. Using reverse engineering to protect expression. Reverse engineering as
a privilege is the separator between TS and patents because if we allow short term operation
or condonation of the idea, even if for the good cause, it will set a precedent and innovators
will use it as  a practice to use mass market licensing under the latent scheme of TS as well.
This case is not about protecting my TS. My mass market license does not have to do with TS
but with expression that it is insulated. In this case TS is not an issue but to ensure CR on the
DVD software is protected against the wrongdoers. Now as full proof your argument may
sound- it will open floodgates of options if allowed. Therefore, Judiciary will cede with the
idea that mass market license is outrightly illegal. 

15.2.21

The DVD is protecting the expression- it is copyright. We are trying to protect the
information in the software so that the info is not used to break the software, decrypt it and
then facilitate copying. The mass market license prevents users from reverse engineering. We
are not stopping just to protect TS but there is long term goal to prevent piracy which is an
attack on the expression itself. I am using the contraption of mass mkt license against reverse-
engineering to protect the idea of CR. The court adjudicated when people did not

Mass market is to give level of patents and that is demoralising for society because that level
of disclosure is not given. It was done to factually enhance not breaching the law the
protection of CR. If I import into my protection of TS mass mkt license against reverse engg
it is beyond the law. If just I have incorporated a plan to factually enhance the protection of
CR keeping the mass mkt contraption aside securing an enhanced cr protection which does
not allow other people to come and duplicate it it would be within the law. If the DVD was
sold with a mass mkt license saying no one should engage in piracy the mass mkt license is
being used to protect the expression just saying contractually if you copy will penalise you.

Contractually I can create a factual matrix within the law to give a greater penalty. But I cant
scheme a matrix going beyond the law to give unto myself protection which was not given to
me in the first place. The means of achieving the goal is through monopolising information
and if it allowed then future innovators would want TS bec it is in perpetuity and no need for
inventive step etc. for patents. If bar on reverse engg we cant do anything even if we have
info. - even if we say protection of TS it will be equivalent to patent and this is without the
disclosure of info which is the bargain of society.

In TS there is no general right against people coming and trying to peek in your infor whereas
in conventional property you can enjoin someone from using it.

It does not attain the status of property unless there is unethical misappropriation. It is not
conventional property bec it does not create any embargo on the people studying the product
that is being marketed which has TS and can come up with the interpretation of the info. So
the idea of reverse engg creates this diff. TS is an ambivalent mode of property which is why
you cant bar reverse engg cant injunct someone from someone studying his info. Only when
there is unethical misappr will this right to injunction come up. Bec it is ambivalent property
status the society retains the right of reverse engg .

When TS is subject of unethical misappr- Picture of aerial m/f plant- the TS of the blueprint
of the plant – unethically took pics of commercial infor which was private to the plant
owners, so in this instance can there be an injunction granted against him to not reverse
engineer

The info of TS is trying to be unethically misappr so now TS solidified as conventional

property so the person who does unethical misappr he loses the right of reverse engineer- so
by judicial dicta I can injunct the unethical misappropriator from replicating or reverse
engineering this.

In the judicial opinion nowhere was 1st amdt mentioned to do disclosure of info. After this
contraption certain people broke the code through DeCSS once it came out everyone know it
– so this was done by John/Jane Doe in the internet these identities have increased- we do not
who they are whom to blame. The DeCSS was attributed to a John Doe posted it somewhere
and a lot of people accessed it. In the traditional view of CR if I am not competing with the
manufacturer/owner of CR then I am not infringing CR. But if I download and publish for
others to use then I am infringing bec I am competing. So cant file suit against someone who
is not impeding the profitability of the m/f, there are fair use exceptions (private use)/ In here
people were downloading so they weren’t infringing party but the John Doe would be who
actually infringed the CR.
There was lackadaisical approach of CCA because they didn’t even take the minimal effort to
trace the digital footprints to find the John Doe. When JD published and suppose 1000 people
downloaded there was no evidence which showed that there were pirates it was maybe for
fair use.

But in Oct 1999 Ted Bunner came and reproduced this code in his own website the
organisation wanted to file against Ted Bunner- but could it be TS infringement if the thing
was frst published in summer of 1999 on the net and they only filed suit in October 1999.

TS is based on the sincerity of the TS person to keep it as a TS.

Court of the first instance- it is unethical and unequitable for people to get away with
wrongdoings based on a technicality. They have been robbed of their creative innovation
owing to failing of the CR law. The law is to give enhanced protection its not the onus of CR
owner to look and formulate enhanced protection, in this instance the fact that he has do it
just shows how meticulous they are.

It acted as a court of commercial interest it did not even look into the FS aspect or even
addressed the 1st amdt , To hastily protect the interest of investor community they are
committing a fallacy of holding TS as conventional property from the get go.

IP is negative right to enjoin others from infringing ones’ IP. In TS we don’t have it. So TS is
not conventional property neither is conventional IP. But if we uphold the idea of bar on
reverse engg in TS protection I am rasing the bar of TS from ambivalent property to
conventional property- so there is a fallacy. They are reingeering the operation of IP.

No credence given to the defense of first amdt- it is violating prior restraint doctrine as given
by Robert Lane v. Ford.

18.2.21

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)

19.2.21

Bunner 1 judgment treats TS as a conventional property which is not correct. Society retains
the right of reverse engineering which is an aspect of FSE. The low standard of originality
was retained in London Tutorial Press so as to incentivize members of the society to create
more work even if it is low quality- so that they are confident in expressing their thoughts and
so as to instil confidence and create secure environment that they can showcase any work –
this is the engine of FSE which builds on the market place of idea. If we appreciate that we
should allow contraption of TS and the embargo on reverse engg because it fulfils one
purpose of CR that is to create more high quality infor it impinges on the purpose of CR
which is to ensure that society members execrsie the level of fse to create marketplace of idea
which was the philosophical basis of CR. Emabrgo on reverse engineering hinders my right
under TS law as well as taking away the society’s right of FSE. FS has a fallout on every
branch of IP. FS wishes info to flow freely while TS does not. TS prevents people from
studying what info is. Study is per se not a component of FS because FS is about expression
which is represented by CR. FS is linked to CR and TS.

In the case of Eldred v. Ashcroft- philanthropic person storing all materials whose CR was
about to expire so that he can distribute it to society once CR period is over. During this time
the Congress comes up with a law to increase the duration of CR. When there is extension in
time limit he argues that there needs to be some incremental benefit that needs to flow from
the author to society. CR is based on quid pro quo.
In Bunner the court by upholding mass market licensing it endorses that innovators in the
sphere of CR can create additional obligations on society without providing any incremental
benefit plus okaying the system of mass market license to imping on the right of reverse engg
which is given under TS law. Ignoring accidental disclosure principle, TP principle, public
interest and first amdt issues.

Where Arnab Goswami’ chat was leaked and he claims it to be TS, the media published it so
can he claim injunction – it is not to protect TS but his reputation. The entire speech cannot
be censored because of public interest consideration- society has a right to be informed- to be
allowed the opportunity to form opinions and expressions which in turn is protected by CR.

If we see TS solely as property and not its social value public interest will be thrown out of
the window and only commercial interest of the info will be upheld. In here then whistle-
blower wont be protected who generally is owing to public interest.

CBS v. Davis Farming - Press channel conducted sting operation on meat processing
industry. When Davis Farming found that sting ops was done they claimed an injunction
against broadcast claiming the clips showed TS of theirs. But this was done to protect the
reputation of the farm and not to protect TS. So need to see if protection is being claimed for
TS or for some ulterior motive.

In Bunner 2, FSE was pushed upto such a high pedestal that FSE will trump TS always. Then
we are focussing on the second limb of IPR – two limbs of IPR- one to engage in
incentivising new work to make it part of public knowledge and second limb is society has
free and cheap access to knowledge which will give them confidence to come out with their
work and keep the market place of idea going. Denying first limb in Bunner 2, and denying
second limb in Bunner 1.

23.2.21

In the first instance the court completely rejects society and in the second instance the court
completely ignores innovator and goes all in for society.

If marketplace of idea is parched bec no author is coming out with no works, FSE cannot
thrive. The new work coming into society is a direct result of incentive of protection to these
works through CR and TS.
If no injunction is given for the rest of the information, what is the point of compensation
because it will be just based on conjecture, it has been secret so I have no idea of the market
value and vendablity because I had no plans to sell it, so injunction is my only efficacious
remedy to protect my info. Hence, the 2nd court is quite a lot at fault.

In the 3rd court it said the two extreme stances are not healthy it said TS need to be
legitimised w FSE. But when it says that if a TS concern is prima facie proved in the court
then the prelim injunction must be upheld without considering FSE. It says should show
slight hesitation in granting prior restraint. But here the innovator community is given much
more preference over the interest of society. It is with this respect Pamela Sameulson and
everyone have a problem with bec by doing so we are incentivising technology at the cost of
public interest. The considerations of social interest takes a backseat. When compared with
Ford Motors v. RL we see a sharp distinction where therein public interest was given much
more imp. In Bunner public interest was not so much used because- we had discussed in
earlier classes how public interest cannot play a central role when the info is not discernible
by the public- in Bunner the software info was technical knowledge so the court brushed it
aside based on this. But whether a info is technical knowledge or public knowledge is a
dubious space. In RL v. Ford the aerodynamics of a vehicle its blueprint some would say it is
technical knowledge but there they considered public interest primarily. National interest also
needs to be considered.

25.2.21

In Monsanto the release of info was not legitimate this opened the scope for compensation
bec during misappr TS gets crystallised to conventional property which imposes an
exclusionary right. So the fact that the crystallisation occurs after misappr was not given
credence by the court of 1st instance it saw it as property from the very first get go. Reverse
engg is a thin line between TS and patents, TS cant be patents bec social obligations vary –
patents is a more giving bec it involves revealing info. TS there is no revelation, there is a
minimal level of protection on account of not disclosing info. So minimal protection wherein
society’s right of retaining the right of reverse engg. The court did a fantastic job that the
interest of investor community was being protected but by treating TS as prop and whether
TS is at all a TS that is it secret, commercially valuable then we are doling out remedy
without considering the repercussions on new tech at all which is disastrous for R&D. it is
very similar to N2H2 where remedy exists so need to give it. IP is to improve quality and
quantity of tech and this is to add public repository of public by incentivising new works. For
example- if there is really pathetic job circumstance, by trumping FS it is shunning the IPs
ability to quantitively and qualitatively inducing incentivising new work which is in effect
restricting inventor to bring his ideas into community which hurts FS bec without incentive of
IP they wont produce those ideas. Society embraces this idea new form of idea and new
forms of innovation. Market place of idea needs to be replenished so as to make FSE move
forward. Both are two sides of same coin. 1st court takes a retroactive stance if courts say
courts should not devote time to first amdt defense it creates bias in upholding TS over FSE.
In N2H2 it was this, the TS was so trumped that the throttling of FS was not even considered
in the judgement.

In the battle of national security v. FS – this observation is an abomination to the robustness

of FSE. While the SC tries to take a middle approach but this observation has undone this.

Also did pvt knowledge v. technical knowledge. Bunner said this info was prime public
interest and their interest is tied to access to this infor. Court said that is BS this is technical
knowledge. In Robert Lane they saw public interest to see if the disclosure was legitimate.
Public interest can never get negated even if a small section is affected it is still public
interest. So to balance TS and public interest there was formulation of private knowledge v.
public knowledge – if it is comprehensible by a substantial amount of people then it would
public knowledge hence, public interest. If it is something extremely technical then it would
be – we are creating a space in TS of tier 1 and tier 2- tier 1 is extremely technical info so
owing to the technicality he receives highest form of TS protection. Tier 2 is easily
comprehensible info so they have lower level of protection. Now try to see this w bargain of
TS both of them are providing the same benefits to TS but this exposition or m/f of test in TS
protection is creating a de facto separation. Both of them are fulfilling their obligations to
society but both of them are getting disproportionate protection which is unfair. In FSE there
is creation of 2 levels of public repository of knowledge- public knowledge having highest
FSE and the lower rung is private tech info and the freedom is limited. This is being done due
to subjective distinction which creates an artificial bias. If TS info is being protected more in
matter of technical spaces then the R&D investment will converge on that technical space
alone. People will contribute to society only in terms of technical expertise. This artificial
separation is not just reflective on morality of the judge but society’s behaviour as well as on
investors and creator of tech also.
No use of FS defence- when Bunner was asked that info was already published and available
on so many websites then why put it on your blog with your name on it after 7 months. He
said I did it bec CSS was favouring the monopoly of the closed network system that
Microsoft was propagating. He chose to do this to encourage open-source access of info he
did not want monopoly of MS, so he wanted to favour people who favoured Linux so that MS
cant keep competing with open source system. MS had shrewdly created a system where the
CSS was readable on MS apps only. It was not properly readable in open source OS. This is
N2H2 again bec court don’t think about unfair competition and FS. Bunner was against
partnership of MS and CCA which was unfairly discriminating against Linux users- so they
cant use it- so it was the exercise of FS to create parity which was being developed artificially
by MS. This is N2H2 where you are missing the point. When the second instance court came
out it created shivers for silicon valley so the SC judgment calmed them down. Society uses a
hook and bait strategy

The mediating principles is society’s way of keeping FSE vitalised in the regime of TS.

26.2.21

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. 

8.3.21

National security gains more advantage than TS. We compared cases of NYT v. US. The
other thing we looked at was the segregation of public info and private tech info. There are
numerous problems with it- the segregation introduces 2 levels de facto protection- so TS
which represent private tech info v. TS representing public info. TS is guided byan IP policy
itself, when court introduces a de facto level of protection it is in course ensuring that future
investment is diverted towards pvt info. This change in the course of R&D investment is
without scientific basis with no expert orientation, and arbitrary so it will hamper welfare. It
is natural as a corollary that FSE on that level is maximum- so there is a fallout on FSE side
too. If I say from tomorrow only this level of info have max FSE so it will incentivize public
to create info only in that area. Ex- if philosophical study is public info, TS here will be low,
so marketplace of idea will be bursting in here. If aerodynamics is private info so reduced
sense of FSE here, in these technical spheres TS is heightened, so freedom of expression and
info is subdued and marketplace of idea suffers and information suffers. Guides the
intellectual thinking in society artificially, this is without any basis only based on judge’s
morality. After Bunner it was decided that such an imp q cannot be left to the whimsical
reasoning of a judge. Next we were at a crossroads how to balance public interest with rights
of the TS owner. This question was answered by scholars that lets keep the demarcation of
private and public though on books it seems tenable but how many people will actually know
it is hard to determine, so lets do away with it and gave the new test of newsworthiness- if the
society is interested in society then it qualifies as informational TS and the disclosure is to be
through new it needs to be newsworthy. First, the person disclosing it should not be the
primary misappropriator. In the mediating principle, we saw the petitioner needs to prove
causalnexus that the TP disclosing it he received from a primary misappropriator and this is
very difficult. So this test is incorporated that there is connivance between discloser and
primary misappr to make it misappr of TS which is vv difficult. Not conspiracy but
connivance. Its not enough to show that TP knew it was TS but need to show connivance.
Even if show the connivance that he got info from primary misappr, the TS can still get
respite if he can show the disclosure was in the nature of news and the interest is in it being
newsworthy and not commercial value.

TP not liable for disclosure,

Liable if you can prove direct causation between primary misappr and TP

Still protection if info communicated has been communicated for news, public info and no
semblance of commercial motivation.

Can the TS owner get the help of the Court in proving the causation?

Ex in Robert Lane case, Ford asked court to ask RL to disclose his source or subpoena his
email ISP to give emails of his last two months to establish who sent an email- there are laws
of source protection, other than that first amdt right of fse includes freedom of press, they will
automatically ensure a mechanism for source protection. Majorly they are driven by
jurisprudence itself – source is protected as long as it is newsworthy. Two fold test- is info is
newsworthy if it is we shift to paradigm where we automatically invoke test of public
interest. By virtue of it being newsworthy we will engage in source protection so rights of TS
owner is subdued. If the info is newsworthy is stands to the test of the society whether should
this info be circulated and the fact that it was circulated points to the inability of TS owner to
protect- there is some hint of incompetence in running the organisation which would have
prevented primary misappr (esp if it some ex-employee). It should not be a commercial
vindication of TS owner.

O’Grady v. Superior Court- Grady published info about a new apple product, Apple says it is
a purely malafide misappr of TS, but it cannot prove malafide without proving causal nexus
for dishonesty to come into the picture need to show source of info. Apple was convinced it
was leaked by ex-employees so they launched a separate litigation against Jane and John Doe
so full dishonesty stuff is based on speculation. The judiciary knows you are firing blank in
the air you don’t know jack, you are not focussing on limiting principle of TS but on the fact
that one’s property is being misappr. So court does not allow, it is TS and not property so in
TS if you want to show misappr you show who is the misappr and Grady’s connection with
the misappr, otherwise Grady goes scot free. Now Apple says he is not a journalist, he is a
technology enthusiast the fact that he misaprr TS can be proved if you allow a subpoena
against email service provider. Court of 1st instance says okay, court of appeals says no way.
In Deepsouth we saw how court said no more ounce of extra right than what society gives
you. Right is can affix liability if prove causation cant now ask for help. 5 principles to see if
there court should entertain the thought whether help can be given- Each of these 5 factors
need to be considered holistically not in isolation

1. nature of revealer of info- if the person who revealed is in the nature of a journalist
(studied in the context of his conduct- to facilitate absorption by the public and wants to be
absorbed the public and not for commercial exploitation) then source protection – goes in
favour of Grady

2. the info being sought how crucial is the info to determine the primary misappr. In here
Apple seeks email correspondences, through emails I can form an idea who is primary
misappr – so goes in favour of apple

3. has the claimant exhausted all other measures, and done every diligence to prove the
misappr- court sees if Apple has done all remedies to uncover the identity internally- apple
actually says we come to court to not undergo having to suspect our employees. But court
said that’s bs, the fact that you think your employees have leaked anyway shows your failing
as an employer.

4. is the info newsworthy whether public interest involved –journalistic undertone of the
activity – the judiciary held the info to be newsworthy and accepted by the public.

5. whether prima facie there is a case of misappr.

9.3.21

In Robert Lane there was overarching concept of fse that the judiciary was endorsing.
Proponents of TS was uncomfortable with the ease with which public interest was invoked.
There are cases of public interest sure but need to sieve these case and cant import public
interest into every trivial matter of trade secret. Robert lane Sir does not think warranted such
importation.

The case was about protection of source but the severity and passion with which they
defended the source there is an obvious tilt towards disclosure to add it to public repository of
knowledge. Informational TS being used as a sword of public interest. Public interest is not
invoked in battle of TS and FS until the info under scrutiny is newsworthy. This brings us to
next question-

When to grant injunction in TS?

Generally, as per Gujarat Bottling Co.- prima facie, balance of convenience and irreparable
damage. In TS litigation when one party is adamant on disclosing TS then to get injunction-
if other party does not invoke FSE courts can rely on the above 3, but if FSE is agitated can
this standard test work? Injunction to restrain a constitutional right can it be decided merely
based on these 3 tests? Should it import a higher threshold? How to determine this higher
threshold?

3 instances-

1. no constitutional right at stake

2. Other parties’ Consti right at stake

3. My constitutional right at stake plus public interest

Right to FSE also includes right to not disclose. So when no public interest in play, it is my
constitutional right of keeping something secret is pitted against another’s to get info- trade
secret is never argued as FSE of proprietor of info but as an economic freedom of the TS
owner. Court will always weigh the economic interest of one party over the other- milking
the commercial potential of the info- when such a dilemma comes to court about level that
defendant needs to clear for grant of P.I. in here David Greene says in every instance where
FS is argued there should be a 4 factor test to determine. The court should work on a bias that
keeping the info secret is harmful for the prospect of FS. Judiciary has to have an assumption
that I will ideally try not to keep the info secret. Keeping secret should be last resort see if
there are other ways to work towards securing their interest- so first factor is presumption
against trade secrecy

Second factor is claimant should prove serious irreparable harm. – res ipsa loquitor almost –
if info comes to public all investment gone into it- the irreparability is obvious so David
Green says then the third factor is not just economic interest in irreparable damage but also
other- the fact that he has been dispossessed of property lost it philosophy of irreparable loss
is very difficult to prove- this is ridiculous and reduces the efficacy of the test
4th factor is limit economic interest and advance civil liberties- this is evident in the tone of all
the other factors- but people argue that this 4 fold test is an archaic manifestation of opinion
which Bunner represents- if we allow this then we uphold one limb of IP over the other. IP is
based that incentivise works for more works to be created which creates a cycle- so if I am
inhibiting incentives then I am also inhibiting more works.

11.03.2021

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

12.3.21

In the earlier days, disclosure of info was not as devastating as now because now there is
internet which reaches so many people, once the info is on the internet the info is completely
lost, there is no point of an injunction. For example, if we compare Vickery v. Welch there
the info was sought to be disseminated by way of word of mouth whereas in Robert Lane
once it was published on the internet it reached so many people at once. One of the way to
keep info secret is by way of mass market license. Earlier times info was protected in such a
way that was based on the idea that info takes time to reach a large number of people. But
with the coming of digital age and now the way in which information will be disseminated
innovator has come with a false scheme of protecting the info. A direct misappropriation is
something which society wants to nip at the bud, this is the bargain of society and this is
where it stops. If TP not bound by confidentiality agreement has published info on their
Instagram account gained through an employee of the company it would not be misappr if
there was no past transaction there is no onus on the person to reduce their level of FS-
limiting principle of TP disclosure. But the employee has a confidentiality agreement. But
exception to the principle- If the owner of TS can prove TP entered into conspiracy with the
past employees or past transactee and can prove causal link between the misappropriation and
conspiracy then owner will be protected. So need to identify the employee and prove
underhand transaction/conspiracy. Companies with large employees find this very difficult.
Once disclosed to public they lose their investment and commercial value. The disclosure
cannot be prima facie be shown as having only commercial interest and show it is
newsworthy. Instagram person is scot free bec first they are TP but even if owner proves
conspiracy if it is newsworthy then also scot-free. So complete capital investment gone. The
info now being in the public domain can be used by competitors to push out the TS owner
and take the profits. My innovation is not rewarded but used against me, so it hinders new
entrants or entry of getting new technology. Killing innovation also harms the big companies
because these innovations ultimately helps the market to innovate and use better methods. In
battle of TS and FS we need to ensure that innovation is also protected otherwise doing
injustice to the idea of TS itself. No one will then come and claim protection through TS. If
society decreases TS protection from what is promised to almost negligence protection then
ppl wont come for TS protection so those innovations which do not qualify as patents will
never be introduced to society- so welfare of society is hampered.

16.3.21-

It deals with the idea of fair use. There is a mutuality in all branches of IP with its relation to
fair use. Fair use is private non-commercial use of IP without permission. Monopoly over IP
should not be abused. Monopoly over IP is being allowed by law itself so it is an exception. It
is done to reward one for coming up with new branch of technology. Society grants us the
practical necessities required to ensure monopoly over the commercial exploitation of the
technology. Monopoly can lead to blackmailing of society or arm twist society regarding the
use of the technology, it grants me the liberty on the accessibility of the technology.
Example- patent to me for covid vaccine, monopoly on distribution to market, I say I will
only produce 100 doses and 100 people through lucky draw will get it for 50k. Society wont
be okay with it. So the concept of balance comes in- society will give some reward for you to
bring your technology- society will expect me to make reasonable use of the monopoly and
not abuse it to the society’s detriment. The mechanisms of check and balance needs to keep
the scales balanced as between monopoly and benefit to society. So one of them is fair use.
Fair use is not to challenge the exclusive marketing or distribution of the IP it is only wrt
accessing the information (patents) or the expression (CR). Its not to decrypt info and sell it
at a lower price – that would be patent infringement. For covid vaccine cant begin to
recreating the vaccine to compete with it, but to study it, see how it is made and see its uses.

Example- covid vaccine patent granted until 2040- in the name of fair use can XYZ Pharma
use the info disclosed owing to patent application by way of fair use and make medicines
from 2035 till 2040 so that as soon as my monopoly ends they can sell the generic form of
covid vaccine to the mass. So can this be under fair use? Recreating medicine and stockpiling
it to be sold after patent application is over-

[patent term begins from date of filing patent]

In Re Pharmaceuticals Companies (WTO Case) – stockpiling is good for the society as it
makes it more accessible to society and it was allowed under fair use clause of TRIPS. The
Pharma companies represented TRIPS Plus which allows for a very stringent IP protection to
preserve their technology, they said that IP application is very long drawn so we are losing
out on those years. Article 8 states legitimate expectation. There was legitimate expectation
of experiencing artificial monopoly because the fair use is destroying their legitimate
expectation and legitimate expectation is very fiercely protected under TRIPS. It kinda makes
sense because of the delayed grant in patent application. So some more years of artificial
monopoly to be observed after patent period to account for the years the generic drug
manufacturers would take to research, get approvals etc, after the patent is in public domain
therefore to not allow for stockpiling.

The de facto period of monopoly is the actual period of monopoly granted by the market bec
the generic m/f will need some years after the patent is over to get approval, get clinical trials
done, etc. so it doesn’t make sense to include the idea of stockpiling within fair use.

Fair use is every form of private use which does not pit the interests of the original monopoly
owner with that of their competitor. They can do whatever after patent period is over, fair use
is a form of check and balance bec it makes sure IP owner does not abuse monopoly and it
furthers accessibility of society. It cannot be misused by both sides, cant be used by IP owner
in the way of TRIPS Plus (Doha Convention for example opposes it). Monopoly cannot be
used in such a way so as to hinder accessibility. Stockpiling cannot be fair use because it is
destroying their monopoly during patent regime.

Stockpiling during the patent term is not fair use. Fair use is for non-commercial but
stockpiling is to utilise it commercially as soon as patent term ends to directly compete with
them.

Fair use is not used in TS. The purpose of fair use is to ensure that monopoly granted by
society is not abused so it is a scheme of accessibility. Fair use is allowed in those instances
where the info or expression is used for individual private non-commercial use. So most
branches of IP have this. The sense of fair use is related to monopoly. The strength of fair use
is directly related to the strength of monopoly given. Patent has severe level of patents so fair
use is also interpreted and applied that severely. So fair use is given very high consideration.

Cr is mildly less use of fair use. In TS it is just protection based on how long can one keep it
a secret. There is no right against any other party who is trying to figure out my TS, only
limited suit of misappr. It is not conventional property so cant restrict anyone from studying
my info, there is no defence required. Society does not accord the same recognition as other
forms of IP bec the info has never been published so it doesn’t give any monopoly so it
retains the bigger share of pie to try to figure out the infor and they do it by not giving any
right to the TS owner other than the right in equity of no one misappropriates- then how is
this any difference than theft- this is where Mark Lemley comes in- it is not about remedy or
punishment but underlying incentive to incentivise work of people who dont want to share
infor with whole world- so there is minimal protection. Need to prove prima facie case that it
is TS and commercial value this is to prove that info is not really property and it becomes
property once certain criteria is fulfilled and there is restricted sense of protection and
different than what conventional IP is.

There are scholars such as Deepa Rangaranjan who are trying to incorporate fair use within
TS. The mediating principles are checks and balances and uncodified form of fair use. In CR
and patent fair use is codified to ensure a sense of certainty bec the level of innovation in
patent and CR are greatly beneficial for creating new works, the idea is to create a
harmonious balance such that the owner of the IP is not prejudiced against and society does
not exploit it to make the IP owners rights as redundant. DR says because the balance is titled
against TS owner why don’t we import a sense of fair use so as to restrict the abuse done by
the TS owner (to prevent mass mkt license) also to ensure that public interest does not turn
into a shield against the legitimate and bonafide claims of TS owners to avoid the over
exploitation of the mediating principles.

18.3.21

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. 

19.3.21
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.
22.3.21

S.52- of CR Act- example of fair dealing- so long as these instances are fulfilled no
additional test is used and it wont be infringement.

Extremely restrictive and hence, unforeseen circumstances cannot be dealt with by using
these provisions since it is so rigid- we saw this in India TV.

s.52(2)(za) of CR Act- does this provision seem like a true manifest of objective of fair
dealing- the objective of fair dealing is to achieve balance between rights and monopoly of IP
owner v. accessibility of society- does this provision not tilt the balance towards society- it is
denying the revenue to the owner. For example- I sell tickets for a NY party and then invite
some random couple to get married there to avail this provision, isn’t it inequitable for the IP
owner. Completely unrequired – the venue has asked for license to be provided by IPR
owner- they will ask for it but then you have to say 52(2)(za)- lots and lots of money is lost
on account of this – no quantitative restriction can invite lakhs of people and still this will
apply- so v inequitable- cons outweigh the pros of this fair dealing provision it is not really
incentivising to create more work not expanding accessibility but rather burning hole in the
pockets of the IP owner .

fair use is guided by judicial whims and fancies and fair dealing is guided by whims and
fancies.

Pros of fair use-

Wide enough to accommodate the unforeseeable circumstances and dynamic instances and
future instances. Deepa Vardaranjan argues that if we are to borrow the principle of fair use
for TS we need to mix the best of the both world- so she assimilates the best from fair use and
dealing- fair use of TS will depict certain instances (like S.52 of CR Act) when fair use can
be used in a space of TS application. Fair dealing system will not be exhaustive, there will be
residuary clause but it will be controlled by a strict equitability guide. The miscellaneous
provision will only be used subject to the idea that the TS which is misappropriated has the
potential of revolutionising the system. Subject disclosure of info to instances- when TS can
be disclosed- these instances will not act as ipso facto exceptions but as defences, and the
condonation of misappr will depend on the 4 principles of fair use. For example, there are 3
instances, and I come under one of the instances doesn’t mean I am scot-free (unlike fair
dealing which is exception) but that there will be further scrutiny and can use the defences of
the 4 factor fair use principle test- just prima facie you are eligible to use defence and your
defence is eligible to be argued and scrutinised. Based on this scrutiny now we decide on
payment of royalty or not because when we look at 4 factor test of whether it will eat into
profit or not or adverse effect on the value of info- in TS audience will always remain the
same (unlike how we saw on that case where parody) the market for info is homogenous
there is no boundary wall for infor- can be boundary walls for diff unique expressions but not
for info and TS protects info- info disclosed is consumed by society so there will always be a
adverse impact on the commercially viability of the TS owner. So regardless of who
publishes or discloses the info the consumer will remain the same. There will be ipso facto
dent in the value of info. The disclosure will always have an impact on the commerciality of
info- so which is why we have 5 th test given by Deepa Varadarajan- appropriate royalty to be
paid- it will take into account whether the purpose of disclosure was commercial or
philanthropic which includes public interest, newsworthy etc. If it is commercial then court
will extract heavy royalty.

25.3.21

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.

26.3.21

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.