lOMoARcPSD|15683389

COPYRIGHT ACT

What is Copyright?

The exclusive right given by law for a certain term of years to an author, composer etc. (or his
assignee) to print, publish and sell copies of his original work.

They are a bundle of intangible rights granted by statute to the author or originator of certain literary
or artistic productions, whereby, for a limited period, the exclusive privilege is given to that person
(or to any party to whom he or she transfers ownership) to make copies of the same for public and
sale.

The rule is that everything that is worth copying is prima facie worth protecting.

History of Copyright

The idea of copyright protection emerged with the invention of printing. Prior to that, hand copying
was the sole means of reproduction.

The Guttenberg Printing Press in Germany, 1436 made reproduction easier and sparked the need for
copyright protection. After 1483, England emerged as a major centre of printing trade in Europe.

In 1557, Queen Mary I granted the privilege of regulating the book trade to the stationer’s company
of London.

In 1662, the Licensing Act was passed in England. This was the first clear law which was aimed at
protecting literary copyright and checking piracy.

Anne’s Statute of 1709

• It was the first codified law and the first real articulation of real copyright. The rights of
authors and the concept of public domain was first established.
• Under the statute, the authors of works had the sole right to print their work, for a limited
period of 21 years.
• Prior to the statute the English Common Law recognised a perpetual right of property in the
author’s copy in the manuscript.
• It was designed to destroy the bookseller’s monopoly of the book trade and to prevent its
recurrence.
 lOMoARcPSD|15683389

• The Statute of Anne marked the end of the autocracy in English Copyright and established a
set of democratic principles: the recognition of the author of the works.
• The Statute of Anne consisted of 11 parts, which aimed
✓ To promote learning
✓ To prevent any other person save the author to print or reprint the book/literary works
for a limited period of 21 years
✓ To amerliorate the condition of authors by securing them their just dues.
✓ Encouragement of learning and spreading the knowledge – this can be inferred from
the fact that the Book’s title had to be registered with the ‘Stationer’s register and 9
copies of the book had to be deposited at the libraries of the listed Universities with
an express prohibition that such universities shall not have a right to print such book
which have been deposited and the books were meant only for accessibility andadvancement
of knowledge.

• The Copyright Act of 1814 and 1842 increased the duration of protection from 14 to 28 and
from 14 to 42 years respectively.
• In the case of Millar v. Taylor, it brought triumph to the stationers as their perpetual
protection of common rights was upheld.
• The House of the Lords however overruled Millar’s decision that no perpetual copyright
existed in copyright law.
• The principle of balancing the exclusive right of the author or publisher came with the historic
judgement by the House of the Lords in the case of Donaldson v. Beckett.
 lOMoARcPSD|15683389

History of Copyright Law in India

The first law in India with respect to copyright was introduced in 1847 through an enactment during
the East Indian Company’s regime

The term of the copyright was for the lifetime of the author extending to a period of 7 years post-
mortem and could not exceed 42 years on the whole.

The government had the authority to give licenses for publication.

The act of infringement was inclusive of unauthorised printing of copyrighted work for ‘sale, hire or
export’ or ‘for selling, publishing or exposing to sale or hire’.

Modern copyright is an automatic right. However, this was not so in the past. Registration of the
work with the home office was mandatory for the protection of the rights under this enactment.

The copyright Act of 1911 was made applicable to all British colonies including India. In 1914, the
Indian Copyright Act was enacted which modified some provisions of the Copyright Act of 1911 to
make it applicable in India.

THE COPYRIGHT ACT, 1957

SUBJECT MATTER OF PROTECTION

Under S.2(y) ‘works’ means literary, artistic, musical or dramatic work, a cinematograph film, and
a sound recording.

The Copyright Act provides a closed list of protected works under section 13. These works are
original literary, dramatic, musical, artistic, sound recordings and cinematographic works.
Copyright law in India also protects neighboring rights (i.e., broadcast reproduction rights and
performers’ rights).
 lOMoARcPSD|15683389

i. Literary- s. 2(o)

Literary work includes computer programmes, tables and compilations including computer 4
[databases];]

In the case of literary, dramatic or musical works - the exclusive right to reproduce including
storage in any medium by electronic means, issue copies, public performance, make any film or
sound recording in respect of that work, to translate and to adapt the work and the right of
communication to the public (which is defined widely enough to cover dissemination over the
internet).

In the case of computer programs - all rights as mentioned for literary works in addition to selling
or giving on hire, or offering for sale or hire for commercial rental any copy of the computer
program.

ii. Artistic- s. 2(c)

“Artistic work” means, —

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an

engraving or a photograph, whether or not any such work possesses artistic quality;
(ii) a 1 [work of architecture]; and
(iii) any other work of artistic craftsmanship;

In the case of artistic works - to reproduce the work in any material form. This may include storing
it in any medium by electronic or other means or depicting a two-dimensional work in three
dimensions or vice versa. Copyright in an artistic work also includes the exclusive right to
communicate the work in public, issue copies of it, include it in a cinematograph film, and translate
or adapt the work in any way.

iii. Dramatic- s. 2(h)

Dramatic work includes any piece for recitation, choreographic work or entertainment in dumb
show, the scenic arrangement or acting, form of which is fixed in writing or otherwise but does not
include a cinematograph film;

iv. Musical- s.2 (p)

Musical work means a work consisting of music and includes any graphical notation of such
work but does not include any words or any action intended to be sung, spoken or performed
with the music;
 lOMoARcPSD|15683389

v. Sound Rec. - s. 2(xx)

Sound recording means a recording of sounds from which such sounds may be produced
regardless of the medium on which such recording is made or the method by which the sounds
are produced;]

In the case of sound recordings - to make any other sound recording embodying it on any medium
including storing of it on any medium, to sell or give on commercial rental or offer for sale such
rental and to communicate the sound recording to the public.

vi. Cinematograph Film 2(f)

Cinematograph film means any work of visual recording and includes a sound recording
accompanying such visual recording and “cinematograph” shall be construed as including
any work produced by any process analogous to cinematography including video films

In the case of cinematograph films - to make copies of the film (on any medium, electronic or
otherwise) including copies in the form of photographs that form a part of the film, sell or give on
hire, or offer for sale or hire any copy of the film, to sell, give or offer for sale on commercial
rental copies of the film and communicate the film to the public.
 lOMoARcPSD|15683389

COPYRIGHTABILITY OF WORKS
In order to obtain protection under the Copyright Act, it must fulfill two requirements:

• It must be an original work

• Copyright protection is available only over tangible expressions of an idea. Ideas are not
afforded protection under the Act. In order for ideas to be protected it must assume a tangible
permanent form and must be fixed. It is this tangible expression that is protected

The copyright Act is not concerned with the originality in idea or thought but is rather concerned
with originality in the expression of the thought. Adaptation and derivative works are also protected
under the Act which implies that it is not the idea itself but the manner of expression that is protected.

S.13 of the Act, copyright subsists throughout India on original literary, dramatic, musical and
artistic works, cinematograph films and sound recordings provided that

In case of a published work, it is first published in India. Where the work is first published outside
India, then author was a citizen of India on the date of publication or where he is dead on the date
of publication then was a citizen of India at the time of his death.

In case of an unpublished work, the author is a citizen of India on domiciled in India at the date of
making of the work. This does not apply to works of architecture

The work of architecture is located in India.

However, the copyright does not exist over any cinematograph film, or a sound recording made in
respect of a literary or dramatic or musical work, where the substantial part of the film or the sound
recording is in infringement of a previous work. In works of architecture, the copyright extends only
to the artistic character and design and does not extend to the methods and processes used in
construction.

Tests for Originality

Creative works are afforded protection under the Act only if they are original i.e., the work is novel
and has not been done before; it is the primary type or form from which others are derived. An
original work is one which has ‘an imprint of the author’s personality’. The only part of the work
that is afforded protection is that which is original to the author i.e., it is not the originality of the idea
or inventive thought which is required rather the originality in the expression of the thought. There
is not a requirement that every work is based on a revolutionary idea, it is not possible to have ideas
that are completely new, uninfluenced by previous work, but what is required is that there must be
 lOMoARcPSD|15683389

some kind of creative efforts employed

In the case of University of London Press Ltd. v. University Tutorial Press Ltd., it was held that
‘originality’ must be construed to mean originality in expression. There is no requirement for
revolutionary and unprecedented new ideas but the way in which the thought is expressed must be
original, in order for a work to gain protection.

In this case the copyright protection of the question appears were given to the University, however the
protection to the answers to the questions was given to the framers of those questions.
 lOMoARcPSD|15683389

There are two tests to determine whether a work is original and novel thereby entitled to be protected.
These are derived from judicial precedents:

1. The Sweat of the Brow Doctrine: The author must be able to show that the work in question
is a product of the author’s own labour, skill and judgement. According to this doctrine, an
author gains rights through simple diligence during the creation of a work. The author obtains
right over the work by if he has put in some labour and creative efforts into the creation of
the work and has created some kind of independent expression.

This doctrine was derived out of the decision in Walter v. Lane.

Reporters from Times Newspaper took down shorthand notes of the speeches given by the
Earl of Roseberry so that they could reproduce the speeches verbatim. The speeches were
published in the Times. The respondent then published a book which included these speeches.
The question under consideration before the Court was whether the reporters of thespeech
could be considered as ‘authors’ under the Copyright Act 1842.
The Court decided in the affirmative. The court opined that the making of notes by reporters
required effort and a substantial amount of skill and was not simply mechanical writing. The
skill, time and effort that were expended on the work was sufficient to make it an original
work.

University of London Press v. University Tutorial Press

The test of "originality" was explained by the Chancery Division of England which is also
commonly cited as an archetypal "sweat of the brow". The Court held that the Copyright Act
does not require that expression be in an original or novel form. It does, however, require that
the work not be copied from another work. It must originate from the author. The question
papers are original within the meaning of copyright laws as they were originated from the
authors. The court held that merely because similar questions have been asked by other
examiners, the plaintiff shall not be denied copyright. This doctrine is also followed in various
other jurisdictions including Canada, Australia and India.

Ladbrooke (Football) Ltd v. William Hill (Football) Ltd.,

The football coupons of the respondent company were substantially similar in form and
content as that of the football coupons of the petitioner’s coupons. The Court in this case held
 lOMoARcPSD|15683389

that the test to determine originality is the degree of skill, labour and effort that has been
employed in creating the work in question. The court held that in this case, there was not
sufficient skill or labour employed by the respondents since the coupons were substantially
similar to that of the petitioners’.
 lOMoARcPSD|15683389

2. Test of Modicum of Creativity

In the recent times the courts has deviated from the doctrine of Sweat of Brow rather than
considering only the skill and labour spent on the work the courts has started to take in to
consideration the original thoughts of the author put in the work for considering the same
for the copyright protection. The vast majority of works make the grade quite easily, as they
possess some creative spark, no matter how crude, humble or obvious it might be.
Originality does not signify novelty; a work may be original even though it closely
resembles other works so long as the similarity is fortuitous, not the result of copying

For a work to be considered as original it must be an independent creation n and it must contain
from the part of the author a ‘modicum of creativity’ i.e., a minimal amount of creativity. The
test negates the sweat of the brow doctrine and bases originality not on the amount of skill
and labour but rather on the amount of independent intellectual creativity that has been
employed. The amount required of creativity need not be substantially high but rather it must
simply be at least the bare minimum amount of creativity.

The doctrine was laid down by the United States Supreme Court in the case of Fiest
Publication v. Rural Telephone Service Company. Both the respondent and plaintiff
companies are engaged in the business of creating and publishing telephone directories. The
petitioner extracted listings from the respondent’s directory altered them and included a few
of their own. However, many of the listings were similar.

Held: The US Supreme Court totally negated the sweat of brow doctrine and held that in
order to be original a work must not only have been the product of independent creation, but
it must also exhibit a "modicum of creativity". This doctrine stipulates that originality subsists
in a work where a sufficient amount of intellectual creativity and judgment has gone into the
creation of that work. The standard of creativity need not be high but a minimum level of
creativity should be there for copyright protection. The major question of law was whether a
compilation like that of a telephone directory is protected under the Copyright law? The court
held that the facts like names, addresses etc are not copyrightable, but compilations of facts
are copyrightable. This is majorly owing to the unique way of expression by way of
arrangement and if it possesses at least some minimal degree of creativity, it will be
copyrightable. The Court held that Rural's directory displayed a lack of requisite standards for
 lOMoARcPSD|15683389

copyright protection as it was just a compilation of data without any minimum creativity,
which was a requirement for copyright protection.

iii. Skill and Judgment ( Also known as Doctrine of Merger in India)

India strongly followed the doctrine of 'sweat of the brow' for a considerably long time. However,
the standard of 'originality' followed in India is not as low as the standard followed in England.
Apart from the “sweat of the brow”, “modicum of creativity” and the mid-way approach towards
the concept of originality under copyright regime, there is also a doctrine of “merger” which
propounds that that where the idea and expression are intrinsically connected, and that the
expression is indistinguishable from the idea, copyright protection cannot be granted. Applying
this doctrine courts have refused to protect the expression of an idea that can be expressed only in
one manner, or in a very restricted manner, because doing so would confer monopoly on the idea
itself.

CCH Canadian Ltd v Law Society of Upper Canada

The Canadian Supreme Court has developed a mid-way approach between the two doctrines.
Theberge v. Galerie D’Art du Petit Champlain provided an articulation of the balance to be struck
between the rights of the creators and the rights of users. The decision of the Canadian Supreme
Court in Theberge was reiterated in Desputeaux v. Chouette and further built upon by the Supreme
Court in C.C.H Canadian Ltd. v. Law Society of Upper Canada by holding that the two positions
I.e. the “sweat of the brow” and “modicum of creativity” are extreme positions.

The Court preferred a higher threshold than the doctrine of “sweat of the brow” but not as high
as “modicum of creativity”. The Canadian standard of copyright is based on skill and judgment
and not merely labour. The skill and judgment required to produce the work must not be so trivial
that it could be characterized as purely mechanical exercise. This approach is sometimes known as
the “skill and judgment” test. The Supreme Court of India in Eastern Book Co. v. D.B Modak
departed from the traditional “sweat of the brow” doctrine and followed the Canadian Supreme
Court by ruling that mere application of skill, labour and judgment is not sufficient for according
copyright protection.

Eastern Book Company v. DB Modak

In Eastern Book Company v. D.B. Modak, where the Supreme Court discarded the 'Sweat of the
Brow' doctrine and shifted to a 'Modicum of creativity' approach as followed in the US. The
 lOMoARcPSD|15683389

dispute is relating to copyrightability of judgements. The notion of "flavour of minimum

requirement of creativity" was introduced in this case. The Court granted copyright protection to
the additions and contributions made by the editors of SCC. At the same the Court also held that
the orders and judgments of the Courts are in public domain and everybody has a right to use and
publish them and therefore no copyright can be claimed on the same.

Setting up of paragraphs by the appellants of their own in the judgment entitled the exercise of
brain work, understanding of subject of disputes, different issues involved, statutory provisions
and then dividing them in different paragraphs so that chain of thoughts and process of statement
of facts and the application of law relevant to the topic discussed is not disturbed, would require
full understanding of the entire subject of the judgment. Thus, this exercise and creation thereof
has a flavour of minimum amount of creativity.
 lOMoARcPSD|15683389

RIGHTS OF COPYRIGHT HOLDERS

• Copyright as a bundle of rights

The copyrights conferred under Section 14 of the Act consist of a bundle of rights. The bundle
of rights could vary in complexity depending upon the nature of the work - literary,
dramatical, musical recording or cinematography films. In Star India Pvt Ltd. vs. Piyush
Agarwal and Ors the Court states that the effect of having a copyright, i.e. benefits to be
derived from a copyrighted work, were those as stated in Section 14. As per Section 14, the
different subjects/works which were the subject matters of copyright, caused/brought about
different manifold rights.

A Copyright owner exercises both economic and moral rights over their work. The holder of a
copyright is entitled to a ‘bundle of rights’ which the author may assign, re -assign, license, transfer
or relinquish either as individual rights or as a bundle of rights. The Copyright holder enjoys
exclusive rights over their work; this bestows upon them a negative right of disentitling every other
person from exercising any right over their work without the copyright holder’s prior consent. There
are two distinct cluster of rights that the copyright holder enjoys:

1. Moral Rights
The author of a work is considered to be the ‘spiritual father of the work and the work
itself is an ‘expression of the author’s personality’. Justin Hughes writes that an author
cannot create work without leaving littered within the work different aspects of his own
character and personality. Moral rights are a response to the recognition that works an
inextricably linked to the creator of the work. . It is based on the personhood theory of
property, whereby an aggression on property is considered as an aggression upon the
person itself and therefore, the copyright holder thus, has a right to protect his work, just
as he does his body, personality and reputation. The copyright holder therefore has the
right to preserve, protect and nurture his works. Moral rights are attached to the author’s
person and are perpetual, inalienable and cannot be taken away by prescription.

S.57 Author’s special rights.—

(1) Independently of the author’s copyright and even after the assignment either wholly
or partially of the said copyright, the author of a work shall have the right—
(a) to claim authorship of the work; and
 lOMoARcPSD|15683389

(b) to restrain or claim damages in respect of any distortion, mutilation, modification or

other act in relation to the said work if such distortion, mutilation, modification or other
act would be prejudicial to his honour or reputation:

Provided that the author shall not have any right to restrain or claim damages in respect
of any adaptation of a computer programme to which clause (aa) of sub-section (1) of
section 52 applies.

Explanation.— Failure to display a work or to display it to the satisfaction of the author

shall not be deemed to be an infringement of the rights conferred by this section.]
(2) The right conferred upon an author of a work by sub-section (1), 3 [***], may be
exercised by the legal representatives of the author.

According to S.57 of the Act the copyright holder exercises and enjoys two kinds of moral
rights: paternity right and integrity right.

Paternity right or the ‘droit de paternite’, is the right to be identified as the author of
the work i.e., to claim authorship of the work. The author also has a right to demand that
his name should appear in all copies of his work at the appropriate place. He can also
prevent others from using his name in their works.

Integrity right or the ‘droite de respect de l’oeuvre’ is the right of an author of a work
to object to any derogatory treatment of the work and claim damages for any distortion,

mutilation or modification made to the work which is prejudicial to his honour and
reputation.
These rights are not lost even upon assignment of copyright.
 lOMoARcPSD|15683389

Mannu Bhandari v. Kala Vikas Pictures

In this case, the court examined the substance of the protection granted by the integrity
right under Section 57(1)(b) of the act. The case pertained to the adaptation of the
plaintiff's novel AapKa Bunty into the defendants' film Samay Ki Dhara. The court had
to consider whether the adaptation amounted to mutilation or distortion of the author's
work. The court took the opportunity to scrutinise Section 57 and held that the words 'other
modification' must be read ejusdem generis with the words 'distortion' and 'mutilation'.
The court observed that Section57 is the statutory recognition of an author's intellectual
property and must be protected with special care. Hence, a modification will be found to
violate Section 57 if it:
✓ results in the modified work appearing quite different from the original; or
✓ amounts to a perversion of the original.

In KPM Sobharam v. Rattan Prakash Mandir, the author of a book prayed for an injunction to
prevent the publishers from publishing his book on the claim that his original work had been
mutilated and distorted by the publishing house by making several modifications to it which was a
violation of his copyright. The court granted the injunction.

Amar Nath Sehgal v. Union of India

Amarnath Sehgal filed a petition under Section 57 of the Indian Copyright Act before the Delhi
High Court seeking for enforcement of his moral rights. He sought for an apology from the
defendants, a permanent injunction on the defendants to restrain them from distorting, mutilating
or damaging the plaintiff's mural and damages to the tune of INR50 Lacs. He was also granted the
same. The main take away from this case is that despite the transfer or sale of a copyrighted work
from the creator to another person, all the rights of the creator do not get extinguished. The creator
still retains his/her moral rights that can be enforced when the need be. The plaintiff created a mural
to be placed at a particular spot, the defendant without the plaintiff’s permission shifted it to a
different place and in the process the mural lost its aesthetic and market value.
The Court held that the plaintiff had a special right to protect his owner and reputation. Unauthorised
distortion, mutilation vitiates the spirit of the author’s creation. Therefore the plaintiff had the
right to be compensated.
 lOMoARcPSD|15683389

2. Economic Rights

Economic rights are based on the labour theory of property. John Locke writes that when a person
has employed labour upon a thing that a common resource, then he has ownership over that thing
and has the right to obtain the fruits of his labour. The fruits in the case of copyright being
economic gain. Economic rights are a bundle of rights under S.14 of the Act, vested upon a
copyright holder to enable them to exploit their works to obtain economic gain.

Under S.14, copyright holders have the following rights:

a. The right to reproduce the work in any material form

b. Right to distribute copies of the work

c. Right to perform or communicate the work to the public
d. Right to make translations
e. Right to make adaptations.

a. Right of reproduction

The most prominent is the right to reproduce, which implies making copies of the work in any
form (Article 9). In the modern context copying a song on a CD would amount to reproduction.
Sound and visual recordings are also considered as copying. Copying would amount to
infringement unless it can be classified under one of the fair use defenses. It is necessary to
show that the person copying does not intend to make any commercial benefit outof it. In all
other cases permission of the author is required.

b. Right to distribute

An off-shoot right of reproduction is the right of distribution. The copyright owner may
distribute his work in any manner he deems fit, he can even license it if he wishes or give it out
on rent. The owner is at liberty to assign certain specif ic rights to somebody while retainingthe
rest; for example he may assign the right to make translations.

c. Right to make derivative works

Another important right that the owner has is to use the work in various ways, for instance
while making adaptations (modifications in a work to suit some other requirements) (Article
12) or translations (converting from one language to another) (Article 11). Examples of
 lOMoARcPSD|15683389

adaptations would include making a movie based on a novel. Nobody else can make these
derivative works without the owner’s consent. Authors of literary and artistic works also have
an additional right to make cinematographic adaptations and distribute the same (Article 14).
In this context, related rights of the owner are also important, fo r instance, the right to integrity
which protects the owner against distortion, mutilation or modification of his work in a way
that it is harmful for his reputation.

d. Right to publicly perform

The copyright owner also has the right to publicly perform his works. Example, he may
perform plays based on his work or perform at concerts, etc. Public does not have to be of a
specific strength; even a large group of people would amount to performing before the public
(Article 11)

e. Right to broadcast

Copyright owner also has the right to broadcast his work. Broadcasting would mean using of
any means to make the work available to the public. In the modern context, this would extend
to making the work accessible on the Internet. The terms and conditions of access will be
decided by the copyright holder.

f. Right to recitation

Authors of literary works are additionally conferred with the right to publicly recite their works
 lOMoARcPSD|15683389

Difference between Economic Rights and Moral Rights

✓ Assign/Transfer
✓ Relinquishment/waiver
✓ S. 57 is given more preference over contrary contracts
✓ Ownership- Artist v Actual Owner

AUTHORSHIP AND OWNERSHIP

S.2 (d) Author

Author means,—

(i) in relation to a literary or dramatic work, the author of the work;

(ii) in relation to a musical work, the composer;
(iii) in relation to an artistic work other than a photograph, the artist;
(iv ) in relation to a photograph, the person taking the photograph;
(v ) in relation to a cinematograph film or sound recording, the producer; and
(v i) in relation to a cinematographfilm or sound recording, the producer; and
(v ii) In relation to any literary, dramatic, musical or artistic work which is computer-generated,
the person who causes the work to be created

[(dd) “broadcast” means communication to the public—"

(i) by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds
or visual images; or

(ii) by wire, and includes a re-broadcast

ii. Joint Authorship- S 2(z)

Work of joint authorship means a work produced by the collaboration of two or more authors in
which the contribution of one author is not distinct from the contribution of the other author or
authors;

In Donoghue v. Allied Newspaper Ltd., entire material was supplied by Donoghue to Felstead, who
was a journalist. This material was in fact, his experiences which he shared with Felstead for the
purpose of writing article for a newspaper. The Court held that Donoghue was not an author or even
 lOMoARcPSD|15683389

a joint author of those articles.

 lOMoARcPSD|15683389

General Rule of Authorship

Under S.17 of the Act, it is generally, the author of the work that holds or owns the copyright over
the work they created. The author is the first owner of copyright over their creation.

According to S.2 (d), the author in relation to a musical work is the composer, in relation to a literary
or dramatic work, the author or writer of such work, in an artistic work other than that of a
photograph, the artist and in case of a photograph the person taking the photograph will be considered
as the author. In the case of a cinematograph film or sound recording, the producer and in the case
of literary, dramatic, musical or artistic work which is computer-generated, the person who creates
such work shall be considered as the author.

Exceptions to rule of first owner:

The exceptions to this rule are covered in section 17 of the Copyright Act, as summarized below:

• In the case of literary, dramatic or artistic works made by the author in the course of his or
her employment by the proprietor of a newspaper, magazine or similar periodical undera
contract of service or apprenticeship for the purpose of publication in the newspaper,
magazine or periodical, then the proprietor of the publication shall be the first owner of the
work for the purposes of its publication in a newspaper, magazine or similar periodical. In
all other respects, the author is the first owner.

• In the case of a work that is a photograph, painting, portrait, engraving or cinematograph

film that has been created at the instance of any person for valuable consideration, then
such person is the first owner of the copyright in the work. However, this does not affect
the rights of an author in any original literary, dramatic, musical or artistic work that is
incorporated in a cinematograph film.

• In the case of Indian Heritage Society & Anr v Meher Malhotra & Anr [CS(OS)No. 2717
of 2011], the Delhi High Court granted a permanent injunction in favour of the plaintiff
who was not the photographer, but was held to be the first owner of copyright in the
photographs. This was because it was at the plaintiff’s instance that the photographs were
taken for a valuable consideration paid to the photographer.

• In the case of a work created by an author in the course of his or her employment under a
contract of service or apprenticeship, then the employer is the first owner of the work.
However, this does not affect the rights of an author in any original literary, dramatic,
musical or artistic work that is incorporated in a cinematograph film as has been clarified
 lOMoARcPSD|15683389

by the 2012 amendments to the Copyright Act.

• In the case of any address or speech delivered, the person making the address or delivering
the speech, or the person on whose behalf he or she does so, is the first owner of the work.

• In the case of a government work, the government is the first owner of the work.

• In the case of a work made or first published by a public undertaking, the public undertaking
will be the first owner of the work.

• In the case of works created by international organisations, the international organisation

would be the first owner of the work
 lOMoARcPSD|15683389

1. Contract of Service and Contract for Service under valuable consideration

The law distinguishes between ‘Contract of Service’ and ‘Contract for services’. Thus, not every
contract under which one works for another or provides services for another is a contract of
service. According to Halsbury’s Laws of England, a contract of service is not the same thing
asa contract for services, the distinction being the same as that between an employee and an
independent contractor; an employee is a person who is subject to the commands of his employer
as to the manner in which he shall work. The existence of direct control by the employer, the
degree of independence on the part of the person who renders services, and the place where the
service is rendered are all matters to be considered in determining whether there is a contract of
service.

Generally, there are not many difficulties in deciding whether the person is an employee or an
independent contractor but sometimes difficulties may rise. Earlier, emphasis was placed on the
amount of control of employer over employee.

Difference between contract of service and contract for service

1. Degree of Control – On the work and employee

2. Workers interest in the relationship and prospect of profit

3. Worker is regarded as part of the organisation

4. Nature of Business

5. Provision of equipment

6. Structure of arrangement

In Simmons v. Heath Laundry Co. it was held by Fletched-Moulton L J: The greater the amount
of direct control exercised over the person rendering the services by the person contracting for
them the stronger the grounds for holding it to be a contract of service, and similarly the greater
the degree of independence of such control the greater the probability that the services rendered
are of the nature of professional services that the contract is not one of service.

University of London Press vs University Tutorial Press

The plaintiff entered into an agreement with the 2 professors to create question papers. The plaintiff
was also in an agreement with University Tutorial Ltd, which published these question papers. The
 lOMoARcPSD|15683389

question before the court was whether question papers maybe protected by Copyright. The court
held that everything that is original is entitled to be protected and everything which is worth
copying is also worth protecting by copyright. The element of control was considered important
in deciding whether or not the authors of certain examination papers, who were not on the staff of
the University were employed on contract of service. The Court answered in negative.

• Under S.17 (a) of the Act, where work literary dramatic and artistic work is created by an author
in the course of his employment, and under a contract of service or apprenticeship under a
proprietor of a magazine, periodical or newspaper for the purpose of publication in such
newspaper, periodical or magazine, then such a proprietor is the first owner of the copyright,
unless an agreement to the contrary exists. The copyright of the proprietor extends to rights in
relation to the publication and reproduction for the purpose of publication in such magazine or
periodical. In all other respects the copyrightremains with the author of the work.

Under a contract of service the employer has full control over the object of the work and the
manner in which it is to be achieved.

In the case of Khemraj Shrikishanda v. Garg and Co, it was held that where work is done by
an author for a publisher in exchange for a consideration, the copyright in it generally vest with
the publisher.

Contrary to the contract of service, under a Contract for service, the independent contractor
providing the service shall be the first owner of copyright. The author has the discretion to adopt
means for the execution of a work.

However, under S.17(b), where an independent contractor or a freelancer works for

commission ie, where a photograph is taken, or a painting or portrait is drawn, or an engraving
or a cinematograph film is made in exchange of valuable consideration and at the request of a
person, then such a person ie, the person on whose request it is made or done will be the first
owner of copyright, unless an agreement to the contrary exists.

The organisation or the person on the request of whom the work is being made shall have
copyright over the work only if,

✓ It is part of a larger literary work such as an article in a magazine or a poem in an

anthology or compilation of poem
✓ It is part of a motion picture or other audio-visual work such as a screenplay
 lOMoARcPSD|15683389

✓ It is a translation.

VT Thomas v. Malayala Manorama

The plaintiff was a cartoonist who used to create comic strips of characters he created called
‘Bobbanum Moliyum’. The respondent newspaper organisation hired the plaintiff to draw the
‘Bobbanum Moliyum’ as a column in the newspaper. He had created the characters and comic
strips long before his employment at Malayala Manorama and continued creating and publishing
it after termination of his employment. The question before the court was whether the plain tiff
could continue to create the comic strip and obtain economic gain even after his employment at
the defendant organisation and whether he had copyright over his work.

• Held: The Court held the characters and image were well defined and this prevented the
publishers from claiming any copyright. Additionally, since the characters were developed by
the plaintiff even before his employment at Malayala Manorama and because the publishing
house had no hand in the creation of the characters, he was permitted to carry out his work and
has ownership over the work he creates. The publishing house was also restrained from drawing
the cartoons after terminating VT Thomas’ employment.

2. Joint Ownership
Under S.2 (z) a work of joint authorship, is a work which is produced by the collaboration
of two or more authors in which the contributions of one author is not distinct from the
contributions of the other author or authors.
Therefore for a work to be considered as a work of joint authorship it must satisfy three
conditions:
✓ Each author must have contributed to the making of the work
✓ The work produced by the authors should have been a result of collaboration
between them
✓ The contribution of each author must not be, or capable of being separate or distinct
from one another.
Each author in the case of a work of joint authorship has equal copyright over the
work and it cannot be individually exploited by a single author .
For both contributors to be considered as authors, there must be
 lOMoARcPSD|15683389

✓ essential sufficient creative input from each who claims to be an author and
✓ each of the person who claims to be an author must assume direct responsibility
for what appears on the final work.

Nejma Heptullah v. Orient Longman

The leading case of joint authorship in India is Najma Heptullah v. Orient Longman Ltd. and
Ors. In this case, the plaintiff is the legal heir of the author of the book India Wins Freedom. The
defendant is the publisher of said book. The defendant entered into an agreement with one Prof.
Humayun Kabir to make contents of the book known to the public. The plaintiff obtained an
injunction restraining defendants from breaking seals of covers of the complete book India Wins
Freedom and from making its contents known to the public. According to the preface to the said
book written by Kabir, Maulana Azad used to describe his experiences in Urdu, on the basis of
which a draft in English would be prepared by Kabir. The court held that active and close
intellectual collaboration and cooperation between Maulana Azad implied that Kabir is a joint
author of the book with Maulana Azad. Hence, the defendants were allowed to break the seals
of the covers of the complete book India Wins Freedom and make its contents known to the
public.

Ratio: Active and close intellectual collaboration to determine joint authorship – no specific
criteria laid down by the court.

Robin Ray v. Classic FM

The appellant alleged copyright infringement against the respondent radio station on the grounds
that the system of classifying tracks used by the respondent radio station were based on ideas and
input that the plaintiff had shared and therefore he too was an author of the work. The question
before the court was whether the plaintiff could be considered as the joint owner of the work.

Held: The court in this case held that joint authorship requires collaborative work where each has
made a significant direct creative contribution to the final work and is directly responsible for it.
A mere contribution or suggestion of ideas is not sufficient to satisfy a claim for joint authorship.

LIMITATIONS TO COPYRIGHT

1. First Sale Doctrine

A copyright holder has the exclusive right to distribute their work; however this right comes to an
 lOMoARcPSD|15683389

end after the ‘first sale’. This implies that after the initial transfer of title, the copyright holder
cannot dictate how the new owner further distributes the copy of the copyrighted work, provided
the initial transfer of title is lawful. The new owner can resell or distribute without the permission
of the author. This right however, is limited to re-distribution or re-sale and does not extend to am
right to reproduce work.

For example: A person who purchases a copyrighted book from a bookstore, the first sale doctrine
provides the legitimate buyer with the rights with regard to the use and control. The buyer has the
right to sell or give away a product that has been legitimately purchased.

In Bobbs Merril Company v. Strauss, the plaintiff company held the copyright over the book
‘The Castaway’, every copy of the book had a printed condition that the book was not be sold for
a price less that $1 and non-compliance would constitute copyright infringement. The defendant a
retail store purchased the books from the publisher and sold it for less than $1. The question before
the court was whether this would amount to a copyright infringement. Court applied that Doctrine
of First Sale and held that the copyright holder could not place a limitation on the rates at which
the book is to be sold at a retail store.

In John Wiley and Sons v. Prabhat Chander Kumar Jain, the court in those case held that it
does not matter whether a copy of the work has been sold by the licensee, as long as the sale is
legitimately done and the license granted authorised the licensee to sell, then the doctrine of first
sale applies.

In Penguin Books Ltd v. India Distributors, it was held that the importation of copies without
the copyright holder’s permission is tantamount to secondary infringement of copyright as it
violates the exclusive rights of the owners of IPR of printing, multiplying, publishing and vending
copies of the copyrighted literary work in India by handling unlicensed copies.
 lOMoARcPSD|15683389

2. Idea - Expression Dichotomy

S.13 of Copyright Act

A copyright is an automatic right and the author has exclusive rights over his work as soon as the
idea is ‘fixed permanently in some tangible form of expression’. It is the tangible and not the
intangible which is capable of being protected. It is an established fact of copyright law that it is
not the idea, rather the original expressions of the idea that is protected by copyright.

This is based on two principles, the first being that the copyright law aims to protect the originality
in the expression in order to ensure that the author reaps the economic gain form the work, a
protection of an idea is not necessary to meet that purpose, therefore the protection allowed is
restricted expressions of ideas in tangible form so as to not curb creativity. Theref ore, if two people
have the same ideas for their work, both their works obtain copyright protection as long as the
expression, form and arrangement of the works are different.

The idea-expression dichotomy was formulated to ensure that the manifestation of an idea (i.e. an
expression) is protected rather than the idea itself. The doctrine has been widely used in the United
States and is not really alien to Indian jurisprudence. Courts have repeatedly opined that ideas per
se are not copyrightable; only the expression of an idea is copyrightable. An idea is the formulation
of thought on a particular subject whereas an expression constitutes the implementation of the said
idea. While many persons may individually arrive at the same idea, they can claim copyright only
in the form of an expression to this idea. Such expression must be a specific, particular arrangement
of words, designs or other forms. Thus, such a doctrine allows for several expressions to be
available for the same idea.

For example: Two YA book series - The Hunger Games Series and The Divergent Series are both
based on young adults divided into factions each with their own skill, trying to overthrow a
dystopian government. However, the Divergent series was not considered to be in infringement of
the Hunger Games Series, because though they had the same idea,- the storyline, characters,
plotlines and expression of the same ideas were different in the both the book series.

The concept of idea- expression dichotomy was first evolved by the US Supreme Court in the case
of Baker v. Seldane.

Baker v. Seldane

Defendant appealed a decision from the Circuit Court of the United States for the Southern
District of Ohio that rendered judgment for plaintiff as testator for complainant, and held that
 lOMoARcPSD|15683389

defendant had infringed complainant's copyrighted treatise on the useful art of bookkeeping.
Plaintiff obtained a copyright for a book on the art of bookkeeping written by complainant and
sued defendant, an author of another book on the subject, for copyright infringement. A decree
was rendered for plaintiff, and defendant appealed. Plaintiff claimed defendant had infringed the
copyright by using account books with columns and headings similar to those explained in the
copyrighted work.

The copyright of a book, if not pirated from other works, would be valid without regard to the
novelty, or want of novelty, of its subject-matter. The novelty of the art or thing described or
explained has nothing to do with the validity of the copyright. To give to the author of the book
an exclusive property in the art described therein, when no examination of its novelty has ever
been officially made, would be a surprise and a fraud upon the public. That is the province of
letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture
must be subjected to the examination of the Patent Office before an exclusive right there in cans
be obtained; and it can only be secured by a patent from the government.

RG Anand v. Deluxe Films and Anr

The plaintiff claimed that the movie of the defendant was based on his play Hum Hindustani. The
court in this case held that the movie cannot be considered as an infringement of the script of the
play since though the ideas were similar, the expression of the movie and the play were completely
different.

The plaintiff could not prove that the defendant had committed a colorable imitation of his play.
Where similarities between the copyrighted work and the copy are so many and the similarities
between the two works are not coincidental, a reasonable inference of colorable imitation can be
drawn. The court held that a case for infringement may be made out only when such infringement
may be identifiable by a reasonable man; and, in this case, the court observed, that no prudent
person could get an impression that the film appears to be a copy of the original play. The
Supreme Court did not find any violation of copyright and dismissed the appeal.

The following guidelines were laid down:

✓ There cannot be a copyright on plots, historical or legendary facts, themes. Ideas, subjects
matters and any copyright infringement in these cases will be related to the expression,
 lOMoARcPSD|15683389

form, arrangement and manner of the idea by the author of the copyrighted work.

✓ Where the same idea is being developed in a different manner, the test of whether the copy
in question is an actionable copy is whether the similarities are on the fundamental aspects
of the mode of expression adopted in the copyrighted work.

✓ The surest test to determine whether there has been a violation of copyright is to determine
whether the consumer ie, the reader, the audience or the viewer is who has seen both works
draws the conclusion or gets the impression that the current work is a copy of the original.
Where a viewer gets an impression that a film is largely a copy of an original play, then it
is a violation of a copyright.

✓ However, there are some cases where the idea and expression of that idea converge to an
extent that they are inextricably linked and the idea cannot be expressed in any other
manner or can be expressed only in a limited number of ways. Sometimes the expression
of an idea is not possible without the use of the same expression or elements of expression;
in such cases the doctrine of merger applies which is an exception to the principle of the
idea-expression dichotomy. According to the doctrine, where such conditions of merger of
idea and expression exists the expression of the idea is uncopyrightable. This is based
on the rationale that copyrighting such expression would restrict any other person from making use
or reproducing it, which will cause one person to have monopoly over the expression and the idea
since they are both one, this is against public good.
For example: There is only one way to express an algorithm of adding two numbers, such
an algorithm is uncopyrightable
✓ There is no infringement when:

• Where the themes of the original work and the subsequent work in question is the
same but the manner of treatment and expression is different to such an extent the
subsequent work is a completely new work, there is no infringement of copyright.

• Where there are similarities between two works but there are also broad and
substantial dissimilarities between the works, the dissimilarities negate the
intention to copy and the similarities are treated as coincidences which are
incidental and there cannot be copyright infringement.
 lOMoARcPSD|15683389

• If a violation of copyright amounts to an act of piracy it must be proved by clear

and cogent evidence.

Barbara Taylor Bradford v. Sahara Media Entertainment

In the case of Barbara Taylor Bradford v Sahara Media Entertainment Ltd., the Calcutta High
Court said,

“Therefore, even if the plot is copied, the person who copies it, be it consciously or unconsciously,
must also weave into the plot sufficient creations of his own imagination and literary skill, to make
the work his own and not a copy of the work which might have inspired him in the first place.”

In this judgment, the court takes the example of Satyajit Ray’s “Ganashatru” which was “inspired
by” Henrik Ibsen’s “An enemy of the people”. The central story of both the works is the same.

With respect to this: “A superficial examiner would say from a comparison of the play and the
movie, that the film has been copied. That might be the reaction of the layman, no doubt. But it is
not a copy, according to the copyright lawyer. Although the central theme is the same, it is but an
idea. The idea is novel and no doubt the idea is central to the creation of a dramatic conflict.”

Exception to Idea- Expression Dichotomy: The Doctrine of Merger

Herbert Rosenthal Jewellery Corporation v. Kalpakian

Rule: When the "idea" and its "expression" are thus inseparable, copying the "expression" will
not be barred, since protecting the "expression" in such circumstances would confer a monopoly
of the "idea" upon the copyright owner free of the conditions and limitations imposed by the
patent law.

In deciding for the case, the court noted the difference between a patent and a copyright;
according to the Court, a copyright conferred no right to the conception reflected in the general
subject matter and just protected the expression of the idea, not the idea itself. The Court
determined that a copyright must not be treated like a patent or it would confer rights over private
activity without satisfying the procedural and substantive prerequisites to the grant of such
privilege. The Court reasoned that defendants were entitled to use the idea of a jeweled beebut were
not able to copy plaintiff's expression of that bee. However, the Court found that, because the idea
of the bee and its jeweled expression were inseparable, copying the expressionwas not barred; thus,
the Court held that the defendants did not infringe plaintiff’s copyright norviolate the consent
 lOMoARcPSD|15683389

decree entered into by the parties.

Syndicate of Press of University of Cambridge & Another v. Kasturi Lal & Sons

It is noteworthy that this exception would be applicable only when material from the original is
reproduced as a part of the questions to be answered in an examination or in answers to such
questions. This exception would not be applicable because the reproduction is not made as a p art
of the questions and answers; rather the complete set of questions and answer keys is copied
from the original work. The defense does not come to the aid of those who publish the guide for
commercial exploitation as commercial exploitation will take the matter outside the ambit of
'fair use'. (j) the performance, in the course of the activities of an educational institution, of a
literary, dramatic or musical work by the staff and students of the institution, or of a
cinematograph film or a sound recording if the audience is limited to such staff and students, the
parents and guardians of the students and persons connected with the activities of the institution
or the communication to such an audience of a cinematograph film or sound recording.

INFRINGEMENT OF COPYRIGHT (S.51, S.52)

Infringement occurs when either the whole or a substantial part of the author of the work’s
restricted rights are used by another person without authorisation. This use can be direct or
indirect on the part of the infringer. A direct infringement would be, for example, duplicating
the architectural drawings of the owner. An indirect infringement could take place in the event
the infringer went to the house that had been built utilizing the architectural drawings of the
owner of the copyright and subsequently made a copy of the floor plan and dimensions of the
house.

Primary Infringement

Acts of primary infringement will not require knowledge or intention to infringe on the part of
the ‘infringer’ – the violation of the restricted rights is strict liability “offences”.

Under S.51 of the Act a copyrighted work is said to be infringed when any person without a
license or in contravention of the license granted by the owner of the copyright or the Registrar ,

• Does anything, which the license does not permit him to do or anything the
exclusiveright of which vests upon the owner of the copyright.
 lOMoARcPSD|15683389

• Allows a place to be used, for profit, for the purpose of communicating work to the
public where such communication is an infringement of copyright, provided he aware
and had reasonable ground for believing that the communication to public would be an
infringement of copyright.
• Duplicates the work or issues duplicates of the work
• Perform or display or play the work in public

Secondary Infringement

Secondary infringement must involve some knowledge by the infringer of the copyrighted work.
It is usually it is retailers or publishers who are ‘secondary infringers’. Knowledge may be
established on both an objective and a subjective basis. Objectively, a Defendant is held to have
knowledge of infringement if a reasonable man would arrive at the relevant belief of
infringement on the particular facts.

Infringement of copyright also occurs when any person,

• Distributes either for the purpose of trade or for any other purpose which is prejudicial to
the owner’s exclusive rights
• Makes, lets, displays or offers for sale or hire
• By way of trade exhibits in public
• Imports into India, even if it is one copy for the private and domestic use of the importer
any infringing copies of the work. Infringing copies means the reproduction of any
literary, dramatic, artistic or musical work in the form of a cinematograph film

In RG Anand v. Deluxe Films and Ors

The following guidelines were laid down

• There cannot be a copyright on plots, historical or legendary facts, themes. Ideas, subjects
matters and any copyright infringement in these cases will be related to the expression,
form, arrangement and manner of the idea by the author of the copyrighted work.
• Where the same idea is being developed in a different manner, the test of whether the copy
in question is a actionable copy whether the similarities are on the fundamental aspects of
the mode of expression adopted in the copyrighted work.
• The surest test to determine whether there has been a violation of copyright is to determine
 lOMoARcPSD|15683389

whether the consumer ie, the reader, the audience or the viewer is who has seen both works
draws the conclusion or gets the impression that the current work is a copy of the original.
Where a viewer gets an impression that a film is largely a copy of an original play, then it
is a violation of a copyright.
• Where the themes of the original work and the subsequent work in question is the same but
the manner of treatment and expression is different to such an extent that the subsequent
work is a completely new work, there is no infringement of copyright.
• Where there are similarities between two works but there are also broad and substantial
dissimilarities between the works, the dissimilarities negate the intention to copy and the
similarities are treated as coincidences which are incidental and there cannot be copyright
infringement.
 lOMoARcPSD|15683389

EXCEPTIONS TO S.51 - WHERE THERE IS NO INFRINGEMENT

1. Fair Use (US) and Fair Dealing (India)

Copyright Act vests in the copyright owner who is usually the author of the work exclusive
rights of use, reproduction, distribution, and broadcast of work. Therefore, any use of
copyrighted work without the prior permission of the copyright owner would amount to an
infringement of copyrightof the owner. However, where the copyright owner permits another
to use the copyrighted work by assigning or transferring through a license a bundle of the
exclusive rights vested in the owner,and such a person in exercise of the right assigned or
conferred by the license reproduces, distributes or uses the work, this would not amount to a
copyright infringement.

An exception to the exclusive rights of copyright holders are the concepts of fair use and fair
dealing where the former is a concept exclusive to the US copyright law and the latter is a
conceptused in India, Canada and New Zealand. The former concept is wider in ambit than
the latter.

Unlike a license or an assignment which is an authorisation to use copyrighted work, the

concept of fair use and fair dealing is not an authorisation, rather, it is a defence to a claim of
infringement.

Fair use and fair dealing therefore pardons reproduction or use of copyrighted work in
such amanner, which, if not for the exception would have amounted to an infringement
of copyright.The purpose of copyright is to strike a balance between collective rights and
public interest whichis its social objective and, the individual rights of the copyright owner
which is the economic objective - the rationale behind the statutory provision of fair use and
fair dealing is this.

Fair Use:

S.107 of the US Copyright Law enshrines the principle of fair use which was a judicially
 lOMoARcPSD|15683389

createddoctrine. Under S.107 using copyrighted work for uses such as criticism, comment,
teaching, scholarship, new reporting would be considered as ‘fair use’. In the case of Folsom
v. Marsh where the concept was first established, the court laid down a four factor test which
has now become part of statute. The four factors are:

• The purpose and character of use ie, whether the use is commercial in nature or is
for non-profit educational purposes. Transformative and non-profit and educational
purposes are more often found to be considered as ‘fair use’

• The proportion and substantiality of the portion used in comparison to the

copyrightedwork as a whole. If a large part of the original work has been used in the
subsequent workin question or the in the subsequent work, the proportion of
copyrighted work used is substantial and high when compared to the independent
additions made in the subsequentwork.

• The nature of the copyrighted work. The use of factual, academic and technical
copyrighted work in more instances are considered as fair use when compared to
the useof a part of a creative work like a novel or a poem.

• Effect of the use on the potential market value or the copyrighted work. The
court evaluate whether the use of the copyrighted work has diminished the
economic potentialof the original work in the form of reduced sales or decreased
prices.

There is no bright line to determine whether use can be considered as ‘fair use’ and is to be
determined on a case to case basis.

Fair Dealing (S.52):

Fair dealing is a limitation and exception to the exclusive right granted by copyrigh t law
to theauthor of a creative work. It permits reproduction or use of copyrighted work in a
 lOMoARcPSD|15683389

manner, which, but for the exception carved out would have amounted to infringement of
copyright. It has thus been kept out of the mischief of copyright law. The defense of "fair
dealing" initially originated and emanated as a doctrine of equity which allows the use of
certain copyrightable works, which would otherwise have been prohibited and would have
amounted to infringementof copyright. The main idea behind this doctrine is to prevent the
stagnation of the growth of creativity for whose progress the law has been designed.

The concept of fair dealing is enshrined under S.52 of the Copyright Act. According to this
provision, fair dealing with respect to any work, includes the private or personal use, for the
purpose of research, criticism or review of that work or of any other work, the reporting of
currentevents and current affairs, including the recording of a lecture in public, the use for
scholarship and as a medium of instruction or teaching or reading material by teachers,
storage for electronic transmission, reproduction of any work for the purpose of judicial
proceedings or for the purposeof reporting of a judicial proceeding or performance to a non-
paying audience. Fair dealing of copyrighted work does not amount to infringement.

In the case of Super Casettes Industries Ltd v. Hamar Television Pvt. Ltd. the court held that
it isnot possible to define what use of work could be considered as fair dealing. Whether use
constituted fair dealing, the court held is a matter of degree, fact and the impression of the
court. The High Court however laid down a few factors which must be considered,

• The extent and length of the extracts and passages used. The qualitative and
quantitative aspects must be considered. If the extracts used are an essential part of is
the heart of the copyrighted work, then it would not be considered as fair dealing even
if it is just two lines.It also has to be considered as to whether the copyrighted work
form the entire crux of thework alleged to be an infringement, if so, then this may not
be fair dealing. The motive and purpose of use is also relevant. If the copyrighted
work is used for privateuse, or is used for public purpose or for the furtherance of
research and academic discourseit may be considered as fair dealing. However, where
it is used for commercial purpose then it is not considered as fair dealing.
• Whether it affects the economic rights of the copyright holder. Where the use of the
copy righted work is found to be prejudicial to the owner’s ability to make economic
 lOMoARcPSD|15683389

gain from the work then it is not fair dealing. Where the use affects the economic and
commercial value of the work in the market then it would not be fair dealing.

The ‘De Minimis’ principle is derived from the Latin maxim ‘de minimis non curat lex’
which means that the law does not concern itself with trifles. This principle is applied to the
fair dealing principle resulting in the proposition that where the degree of use of the
copyrighted work is insignificant to the whole, then such use maybe be exempted and will
not be considered as infringement.

In the case of Hubbard v. Vosper, the question before the court was whether the use of
extracts from Ron Hubbard’s documents in the defendant’s book the Mind Benders would
be considered as fair dealing. The Court in this case in determining the question evolved the
‘de minimis principle’. The Court held that the essential factor to consider is the degree,
extent, nature and purpose of use. The court opined that of a long passage was extracted and
the authors’ comments were no more than two lines this could be an infringement, however
where a short passage is extracted and it is extensively commented upon or criticized or
reviewed, then it will be consideredas academic discourse and fair dealing. Minimal use of
copyrighted work for the purpose of review, criticism or commenting will not be considered
as an infringement of copyrighted work.

In Indian TV Independent News Service Pvt.Ltd. v. Yashraj Films, for a TV special the
news agency put together a broadcast which included snippets of famous songs from famous
artists thequestion before the court was whether this could be considered as fair dealing. The
court applied the de minimis principle and held that it could be considered as fair dealing and
not as an infringement.

In Star India Ltd v. Leo Brunette, an advertisement included a 10 second clipping from a
serialsponsored by Star India Ltd. Court applied de minimis principle.

In Ashdown v. Telegraph Group, the court laid down the following test to determine
whether use can be considered as fair dealing. The court held that there are 3 factors to
consider:
 lOMoARcPSD|15683389

Whether the use is in commercial competition with the owner’s exploitation of his work

The nature of extracts and passages used. Whether it forms an essential part of the
copyrighted work

Whether work has already been published or exposed to the public. The use of unpublished
workis usually not considered as fair dealing.

In University of Oxford v. Rameshwari Photocopy Services, the question before the court
was whether the provision of course packs in the course of instruction, which included
substantial photocopies of copyrighted books, would amount to an infringement. The court
in this case held that the purpose of the intellectual property is not the impede learning rather
it is to ensure intellectual enrichment and to harvest knowledge. The court held that use in
this case falls under the ambit of reproduction by teachers or students, in the course of
instruction and therefore was fair dealing under S.52 of the Act. The Court held that the
following factors had to be considered:

Nature and object of the selection made, the quantity and value of materials used, the degree
in which the use may prejudice sale, diminish profit or supersede the objects of the original
work. Whether has been any substantial taking or if the use amounts to plagiarism.

2. Scenes a Faire Doctrine

One may also contemplate instances where the expression of an idea cannot be made
without the use of certain elements, such that the idea cannot exist without those elements
or form of expression. The Courts consider these essential elements of features as non-
copyrightable sinceprotecting these will effectively lead to the protection of the idea. Such
essential elements are referred to as Scenes a Faire. A classic example is a gunshot in an
action scene/sequence. Thomas Walker v. Time Life Films Inc is a U.S. case from the
Second Circuit Court where theCourt has made observations on what constitutes ‘scenes a
faire’. In that case, the appellant, Walker, an officer once posted in South Bronx as a
 lOMoARcPSD|15683389

lieutenant for a year, published a book basedon his experiences titled “Fort Apache” that
narrated the harrowing impressions of myriad crimes, ranging from murders to robberies
and draws a social pattern of South Bronx. The Defendants’ company contracted with
another person to write the screenplay for a film titled “Fort Apache-The Bronx”, which
also related to the crimes occurring in South Bronx. In a suit for copyright infringement
filed by Walker, the Court held that elements such as drunks, prostitutes, vermin and
derelict cars would appear in any realistic work relating to the occupationof policemen in
the South Bronx. These similarities were, therefore, held to be not protectable under the
“scenes a faire” doctrine. Effectively, scenes a faire does not extend the copyright
exclusivity to “stock” themes commonly linked to a particular genre. This doctrine has also
been discussed in the Indian case of NRI Film Production Associates v. Twentieth Century
Fox FilmCorporation.

Where the expression of an idea or a scene cannot be made or expressed without the use of
certainelements, such that the expression is not possible without the addition of those
elements, such elements are not protected by copyright since that would have the ef fect of
protecting the idea itself and not the expression.

For example- making a Halloween movie

In Thomas Walker v. Tine Life Films Inc, the court held that elements such as thieves,
drunks, prostitutes, vermin, abuse would all appear when expressing a realistic work of art
relating to the occupation of policemen in the south Bronx. These similarities therefore were
to be held to not beprotected due to the scenes a faire doctrine

In NRI Film Production Associates v. Twentieth Century Film Corporation, the

appellant in this case filed a suit against the defendant on the ground that the defendant’s
movie ‘Independence Day’ had infringed the copyright of the plaintiff’s script ‘Extra
Terrestrial Mission’. The plaintiffprayed for an injunction in the display of the film. Court
held Scenes a faire

The Counsel for the respondent argued that the idea and portrayal of sequences like traffic
jams,disruption of communication, dazzling effects of the nuclear missiles are hackneyed
 lOMoARcPSD|15683389

subjects of every scientific fiction and matters of common grasp. There is no novelty or
uniqueness either in the idea or in expression. In variably every author of a scientific fiction
would conjure them as consequential concomitant effects as a matter of common grasp and
"Scenes a Faire" which carryno copyright.

ASSIGNMENT AND LICENSING

The terms "assignment" and "licence" are not interchangeable. An assignment is different
from a licence. Generally, in absence of any provision to the contrary in the agreement, in
case of an assignment, the assignee becomes the owner of the interest assigned, whereas in
case of a licencethe licensee gets the right to exercise particular rights only.

Assignment of copyright

Sec.18 - assignment by owner or a prospective owner in future.

• Can assign either whole or partial part of the work.

• Either the assignment is general or subject to limitations

• If a person is assigned a specific rights with respect to the product, the assignee will be
consideredas owners of those assigned rights

S.19 Mode of assignment –

• No period of assignment stated – 5 years

• It is an essential condition that the assignment of copyright should be in writing and signed
by the assignor or his duly authorized agent, otherwise it shall not be valid. It is further
required that the assignment of copyright must identify such work and specify the rights
assigned, the durationand territorial extent of such assignment.

• The Copyright Board may, on receipt of a complaint from the assignor and after holding
such inquiry as it may deem necessary, revoke such assignment, if the assignee fails to make
sufficientexercise of the rights assigned to him, and such failure is not attributable to any act
 lOMoARcPSD|15683389

or omission ofthe assignor. The order issued by the board may also include recovery of any
royalty payable if necessary.

• No order of revocation of assignment is to be made within a period of five years from the date
of such assignment.

• Not used after assignment 1 year

• No specified territorial extent – territorial extent of India

Sec. 19A – Revocation of assignment

Licence

• Sec. 30 - by owner or a prospective owner in future

• Sec.19 also applies here. – Sec.30A

S.31 Compulsory licence

The Copyright Board must take into consideration the following parameters while
decidingapplication for compulsory license:

(i) The work in question should have been published or performed in public;

ii) The owner of the copyright/sound recordings should have refused to republish or allowed
republication or the performance in public of the work by the reasons of which the work is
withheldfrom the public;

iii)The owner of copyright has refused to allow communication by a broadcaster of such

work onterms which the Board must consider reasonable.

Sec.31A
 lOMoARcPSD|15683389

According to section 31A, where the author of any unpublished work or any work published
or communicated to the public and the same is withheld from the public in India, is dead or
unknown or cannot be traced, or the owner of the copyright in such work cannot be found, then
any person may apply to the Copyright Board for a licence to publish or communicate to the
public such work or a translation thereof.

S.31B Compulsory licence for the benefit of disabled persons.

Any person working for the benefit of persons with disability on a profit basis or for business
may apply in the prescribed manner to the Copyright Board for a compulsory licence to publish
any workin which copyright subsists for the benefit of such persons.

S.31C Statutory licence for cover version

The person making the cover version is required to give prior notice in the prescribed manner
of hisintention to make it. Such person is also required to provide in advance copies of all covers
or labelswith which the sound recordings are to be sold, and to pay in advance royalties to the
owner of rightsin each work in respect of all copies to be made by him at the rates fixed by the
Copyright Board. However, such cover versions are not to be sold or issued in any form of
packaging or with any cover or label which is likely to mislead or confuse the public as to their
identity. Further, such cover versions are not to contain the name or depict in any way any
performer of an earlier sound recordingof the same work or any cinematograph film in which
such sound recording was incorporated. It is also to be stated that they are cover version made
under section 31C.

Section 31D Statutory licence for broadcasting of literary and musical works and sound
recording

Section 31D enables broadcasting organizations to communicate to the public by way of a

broadcastor by way of performance of a literary or musical work and sound recording which
has already beenpublished subject to its provisions. The broadcasting organization is required
to give prior notice of its intention to broadcast the work stating the duration and territorial
coverage of the broadcast. It isalso required to pay to the owner of rights in each work royalties
 lOMoARcPSD|15683389

as fixed by the Copyright Board. The Copyright Board may require the broadcasting
organization to pay an advance to the owners of rights. The rates of royalty for radio
broadcasting shall be different from television broadcasting.

Section 32 empowers the Copyright Board to issue a compulsory license to Produce and
publish a translation of literary or a dramatic work in any language after a period of 7 years
from the first publication of the work.

If the work is not an Indian work, then a licence can be applied after the publication of 3 years
for the purposes “Purposes of teaching, research or scholarship". The term includes

(i) purposes of instructional activity at all levels in educational institutions, including

schools,colleges, universities and tutorial institutions;

(ii) purposes of all other types of organized educational activity.

S.32A of the Copyright Act, 1957 provides that where, after the expiration of the relevant
period from the date of the first publication of an edition of a literary, scientific or artistic work
-

(a) the copies of such edition are not made available in India; or

(b) such copies have not been put on sale in India for a period of six months, then any
person mayapply to the Copyright Board for a licence to reproduce and publish such work in
printed

Sec.32B – revocation of license