LAW OF INTELLECTUAL PROPERTY RIGHTS

12th January, 2023

What is the need to protect IPR?
- Incentive
- Economic benefit

State’s interest in IPR

- Utility/social welfare

Academic texts are priced high because nobody purchases them. Photocopying is an
exception. Courts have accepted in. Actionable passing off is essentially passing off only if
the potential infringer was in a position to cause damage.

Another angle on the consumer perspective on the need for IP is that when you think of
access to information or knowledge, then in that scenario, you are not concerned about the
economic benefit. You focus upon your interest i.e., access.
For example, books. The perspective of readers and collectors are different. As a reader, the
priority is content.

Piracy is usually seen in the context of access to information as well. Access is something in
which state has a direct responsibility. When you consider the policy of education, for
example, they need to have access to the latest books. The state has to provide some kind of
balance so as to make the interest of the IP holder in balance with the interest of the readers.

Case: UTV v. 1337 x to

They have gone into a lot of detail as to how to access these sites. The prerogative of the
Delhi HC was that they wanted to arrive at a decision which would make it difficult to
download and not stop downloading. As a consumer, the aim is to save time, money etc.
Every unit that you download is a 500/600 rupees loss to the producer. This traverses
downstream to the performing artists. If you multiply it a million times, that is the amount of
loss the producers face. The stakeholders keep getting lesser and lesser. The state’s objective
is to target piracy, but it also realizes that the people downloading would not be able to
purchase the film in the first place.

We have to see policy in two parts:

- Domestic policy
- International policy
International policy is a huge consideration for domestic policy.

US FTA brought a case against Brown Williamson that makes Marlborough. When these
companies were selling cigarettes, they set up a scientific panel to look into the effects of
cigarettes. The panel reports clearly mentioned the ill effects of smoking. Nobody argued
against these facts. By this time, the effect of tobacco was everywhere. The consumption of it
is so much that governments cannot stop it. It is not like heroin or cocaine that is not as
present.

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Australia has introduced something known as plain packaging. A country in Africa wanted to
introduce a ban on tobacco.

13th January, 2023

 Principle of Territoriality
Principle of territoriality states that intellectual property would be territorial in nature unless
there is an agreement to the contrary.
For example, if X inventor was looking to get a patent in India, if India was to grant a patent
right, it does not mean that X is granted a patent in US and UK as well, unless he applies to
those countries.
International Copyright Order – if first published in WTO countries, then it is as if it is first
published in other countries as well. But the specific law of copyright will be that particular
country.
The principle of territoriality is closely linked with the doctrine of exhaustion or first sale.

 Doctrine of Exhaustion/ First sale

If a unit worth 350 rupees is purchased, is there any restriction? The contract is essentially
between distributor and the publisher. Privity of contract, in Indian courts, applies to
purchasers. The Indian courts extend the restriction on regional distribution to purchasers as
well. There are opinions to the contrary. The distribution right over this unit stands
exhausted as far as the IP holder is concerned. The right of reproduction still rests with the IP
holder. A problem arises when you try and sell it in another country.
The purchasing power parity of people in the USA is much more as opposed to India and
Bangladesh. If we literally follow the doctrine of first sale, any legitimately bought
intellectual property product can be sold anywhere in the world. There should not be any
restriction. If a literal interpretation comes into play, it can wreak havoc.
International exhaustion is a literal reading of the doctrine of first sale. As far as a country
following national exhaustion is concerned, export from US would require authorization from
IP holder.

Article 6 of the TRIPS Agreement provides for a very important flexibility. This flexibility
allows member states to put in place a system of exhaustion that best suits their policy
objectives.
For instance, India promotes international exhaustion in its Patent Act.

 Categories of Intellectual Property

Towards the late 19th century, two very important conventions came into place:
- Paris Convention on Protection of Industrial Property (1883)
- Bern Convention for Protection of Literary and Artistic Works (1886)
By the late 19th century, many European countries had the system of copyright protection in
place. The economic birth of intellectual property went beyond their borders. If they wanted
to exploit, they had to ensure uniformity.

1. Paris Convention and Bern Convention

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Trademarks, designs, patents, indications of source or indications of origin, utility models.

Utility models are jugaad i.e., creative and cheaper approach of solving problems. The
difference is that the threshold of creative efforts is really low. If a country decides to issue
parent for utility models, then patents get washed out. Utility models have a lot of policy
benefits as well since they are mostly done by small or micro enterprises.

In 1961, the Rome Convention came. They were providing copyright protection for works –
both authors and producers of films. All the producer is signing the checks. But Bern
Convention refers to him as author. Why?
The basic justification if not for them, there would be no film. There were phonogram or
sound producers who said that if film producers are authors, they should be too. Another set
of stakeholders were broadcasters. Among the stakeholders were performers like singers,
dancers etc. The difference is that authors and their books could reach different parts of the
world very easily. The only way an audience could listen to a singer sing was if the singer
would travel or if they are recorded. They realised that a certain percentage of money should
come to them.
The Rome Convention in 1961, tried to introduce a uniform framework for performer’s
rights, broadcasters etc. The fact that these international instruments were in place need not
be aligned with the policy of different countries. Countries like India, for example, had no
reason to be a part of these conventions. The fact that this was completely optional for
countries, there was a requirement felt by countries that were looking to promote stronger IP
regulation.
What changed was that under these fora, you were focused on one set of laws. Under the
GATT, you were focused on different sectors. During the Uruguay rounds, it opened up more
scope for negotiations. There were some additional categories that were introduced.
For instance, a category on undisclosed information or trade secrets, IC (integrated circuit)
layouts.
There was a very controversial type of IP i.e., plant variety protection.
There were many reasons for failure such as no enforcement mechanism like that of GATT.

17th January, 2023

Jens Haaning is renowned in Danish circles. There is a Kunsten Museum of modern art. The
work of art they want him to create is essentially a picture frame where currency notes are
arranged in a manner to resemble the economy and the average income of people in Denmark
and Austria. This artist has created works on similar lines. He is getting paid for this. This is
in essence a recreation to represent the contemporary nature of the economy. For this
purpose, the museum has handed him currency worth 84,000 dollars. He was given some
time to make this work of art.
Eventually, he delivered these picture frames to the museum. They found that a blank canvas
was given without any currency. The artist had titled it “Take the Money and Run”. His idea
was that this is the contemporary nature of the economy where artists are treated very badly.
The museum filed a case against him. The case is contractual, not addressing intellectual
property.

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We need to tackle the question whether this blank canvas should be protected by intellectual
property or not?

 Idea Expression Dichotomy

Tangibility is referred to as fixation. Fixation is tangibility of the form of expression. If there
is existing corpus of information, your additive work is an expression. All existing
expressions are ideas for you, whether it is in the public domain or not. Public domain
consists of all the creative work to which no exclusive intellectual property rights apply.
Movie titles do not come under copyright protection.
For example, if music is hummed in class, there is no tangibility unless someone records it.
Expressing is different from form. It is possible to express without expression being in some
physical form.
In the Bern Convention, it was mentioned that it was upto member states to decide if fixation
should be attached to some things. For some things, it is obvious like a sound recording. India
made a decision to stray away from requirement of music because our system is different
from western graphical notations.
Artistic work definition is not there but examples are there like paintings, sculptures etc. A
qualification is that they need not possess artistic qualities. It is extremely subjective and
brings in complicated questions. A blank canvas cannot fit into the definition of painting or
drawing. If there are 10 blank canvases in a room with one of them having a blank canvas
with the artist’s name, there is clear differentiation because of the story he has created.
Something as simple as a dot or a white paint can satisfy the requirement of fixation.
Another example is in a European country, a sculptor was asked to create a sculpture to be
placed in intersection roads. He made a huge potato, and it was placed on the roads.
It is possible for a blank canvas to qualify for intellectual property.

18th January, 2023

Under the Bern Convention, there is Article 2(2).
*missed out*

If expression is established, we move into the next step of originality, which is subjective. If
there is fixation required by a country, then it will be expression + fixation + originality. A
blank canvas is not something that can claim protection in the USA because there is no
fixation. Indian law is unclear regarding this. So, it is possible.
The US interpretation addresses a significant question that arises i.e., the duration of fixation.
Fixation is prima facie evidence of the origin of the work. The moment there is evidence of
idea on a form. Western notion of music is closely connected to graphical notations. Cultural
context also matters. For India, it does not make sense. The moment you reduce an
expression into a tangible form, there is concrete proof of existence.

Intellectual property not only covers same things but also similar things. Your contributions
need to go beyond the existing corpus and must go to the point where you feel like you have
made an original contribution. Demand by itself does not really explain whether IPR
incentivises a person to create a work.

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For example, in our population, there are just 2 people suffering from a life-threatening
disease. No pharmaceutical company would invest in R&D to make a drug for them. They
can compensate by generating a revenue on other streams of income. In this scenario, the
government will have to step in. The demand is extremely low. The cure they found should
come under IP protection.

20th January, 2023

 Subject Matter Exclusions
These are not to be confused with exceptions. This is because exceptions are carved out of IP
protections. On the other hand, these exclusions take the relevant subject matters out of the
purview of IP Protection. The underlying reason is threefold:
- Subject matter is in public domain – Section 3(c)
- Policy considerations – Section 3(b)
- Lack or absence of human intervention – Section 3(j)
Section 3 specifies the type of exclusions.
Article 27 of the TRIPS Agreement talks about patentable subject matter. In Article 27, they
refer to an exclusion i.e., essentially biological processes. This is not an invention. In order to
be an invention, the biological process could be anything that is not essentially a biological
process.
Naturally, it is not possible to cross bacteria and plant. If you take up a trait of bacterium and
inject in a plant, it is a laboratory process. This applies to animal varieties as well.

 Trademarks
Trademark essentially helps you distinguish a particular good or service in the market.
Consumer preference is central to trademarks. Here, the question of human interference is not
of consideration.
For example, nobody considers who created a particular logo.
Policy consideration is important though. The aspect of public domain is also applicable.
For example, public order.
As for public order, the example is of generic marks. A good example is apple for electronics.
If it was used for fruits, it would be a problem. Generic marks could be a term that has
dictionary meaning.
For example, cello tape. Cello is the brand. But now it is used to refer to tape itself. Another
example is band-aid.
Too much popularity can be detrimental to the company. It enters public domain, and it
cannot serve the basic purpose of trademarks i.e., distinguishability. At the point of
genericization, this happens.

 Copyright
Here, the idea of human intervention is included. Even for computer generated works, it is the
programmer who is given copyright over that work. Works in public domain are outside the
scope of copyright protection. It can have copyright protection if the collection has been
made creatively. If something is in public domain, you can sell it.
For example, judgements, bare acts directly from government website.

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An exception in our Copyright Act, in a scenario where a particular legislation is not

available in a particular language, you can make your own version and translate and sell it
with a caveat that this is not an official translation.
Indian kanoon can be an example of public domain.

Directors and the art of directing is an excluded subject matter in India. In India, the only
author recognised for a film is a producer. In the Europe, they consider directors and
producers to be co- creators.

If you create specific categories of subject matter in Copyright like literary work, there is no
category where a director fits. There was a matter that came up before the Punjab High Court
where the HC considered the work of directors as equivalent as work of artistic
craftsmanship. They tried broadening the horizon.
Another reason is that if the director is granted an equal partnership in the film, that itself
would be a disincentive to the producer. The money is flowing only from one source that is
the producer. If the film doesn’t do well, the director takes a major hit but as far as that film is
concerned, his film is based on nothing. Producer takes the entire risk. In Europe, they
consider it a conflict of policy between economics and IP. In India, it is a policy preference.

21st January, 2023

 Overlaps in IP
- Property has a defined boundary.
- Owner of the property has control over that property to use it for a legitimate purpose.
- Such person uses the authority of the state to prevent illegitimate or unauthorised use.
There is a difference between property and intellectual property.
For example, for land, there is no protection beyond the scope of boundary. But in
intellectual property, protection extends beyond that boundary.
Under Article 300A of the Constitution,
Property could be privately owned, or state owned. But intellectual property is private
property. There can also be state ownership, but community ownership is very restricted.
For example, GI is an example of community ownership. In GI, it is the norm that it is
community ownership. The way in which this works is in GI, it is not so much about the
individual but rather, the geography from where the product originates.
Copyright, trademarks, patents ordinarily do not extent to community ownership.
The Haka dance is in the custodianship of the Maoris. They claim that as community
ownership. Any usage of that in a film should attract the ownership of Maoris. Because
intellectual property insists upon private ownership, they may often get stuck. They can claim
it as an indigenous right.
One of the major issues that arises with community ownership is the way in which the
benefits would be distributed. There is a certain amount of revenue that a film producer might
be willing to share but how do you share that among the Maoris?
ABS system exists in the international sphere to split the benefits.
Every state has sovereign ownership over genetic resources. There is a policy reason why
there was international pressure to have this framework in place because genetic resources

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and traditional knowledge have a direct impact on human health. It would be more
appropriate to have a regulatory system in place.

 Copyrights and Designs

For example, a spoiler in car is not merely for aesthetics but for aerodynamics. Functional
consideration is outside the scope of design protection. Copyright also does not extend to
functional consideration. The term industrial denotes mass production in industrial design. It
is not so much for functional consideration.
In case one is looking to get functional protection as well, they will have to get patent. The
problem with getting IP protection for patent is that the threshold is very high. Mediocre
designs would stand outside patent protection. There cannot be 2 IP protection for the same
matter. You choose between design or patent, you cannot have both.
One cannot patent an object but only a type of an object.
For example, a wheel cannot be patented but only specific types of wheels can be patented.
There is an exception in design i.e., even if you are considering utility, if the design and
utility are so merged together that they can only be expressed in one way, they cannot be
given design protection.
Another way designs can be protected is under utility models. If the threshold for patent is
too high to meet, you try to bring it under utility model.
Article 25 of the TRIPS Agreement talks about protection for designs. It is not limited to a
particular type of production. They do not say that we need to have a sui generis design
system in our country. The reason why this is so flexible, and states have discretion is
because it is very difficult to define designs. In copyright, an overlap exists with respect to
artistic works.
For example, a piece of pottery that has visual appeal can very well be an artistic work.
You purchase it on visual appeal and not on the basis of how much water it holds.
Severability is essential here i.e., you are able to sever functional aspect with the aesthetic
aspect.
Another important consideration here is that if the predominant purpose of the creation of the
design is industrial sale, then it is ideally registered under the Designs Act. Industrial sale
refers to mass production. If it is not there, then copyright.
There is a classic case of Popeye the Sailor Man. It is a popular cartoon. It was being used for
merchandising. This question arose that now that Popeye is being used industrially, is it not
under any kind of copyright protection? It is a longer duration that extends to the life of the
author + another 50/60 years depending on jurisdiction. Design is 15 years. This case was in
the year 1960s. In that case, the court said that artists created it as a piece of art.
With respect to designs, it is incorporated into an article, whereas artist work isn’t. The work
of artisan craftmanship is to make small sales. Because creativity is low in designs, you are
looking to make profit off larger sales. Whereas, for artisan craftsmanship, the creativity is
high and sales are small.
For example, a curtain is not purchased for artistic value. But works of artistic craftsmanship
is purchased for artistic value.
Countries like USA realised that this would be unfair. They have something like design
patent in place that considers both design and functional appeal.

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22nd January, 2023 – Sunday

23rd January, 2023
2(d) Designs Act
There is no individual protection mechanism in India which was provide a wholesome
protection (unlike the Design-Patent mechanism in US). In India, creator will have to make a
choice depending on the main consideration (visual appeal versus functionality). Former
would be design protection and latter patent. The threshold for patents grants in India is very
high.

Sec 15 Copyright Act

(1) Copyright shall not subsist under this Act in any design which is registered under the
1*** 2[Designs Act, 2000 (16 of 2000)].
(2) Copyright in any design, which is capable of being registered under the 1*** 2[Designs
Act, 2000 (16 of 2000)] but which has not been so registered, shall cease as soon as any
article to which the design has been applied has been reproduced more than fifty times by an
industrial process by the owner of the copyright or, with his licence, by any other person.

This has two parts; first, capacity of being registered, and second, cessation on quantum of
reproduction.
1. How do we define capacity? The purpose of creation will decide capacity.
2. Upon reaching 50, it is industrial production. Below that, there is copyright
protection. Going beyond this limit would entail a cessation.
India does not have a system to protect utility models.

 Overlap between Trademarks and GI

Both trademarks and GI help the consumer distinguishing the product in the market.
For example, Darjeeling Tea (GI) – one can easily distinguish between other types of teas.
The way GI is monetised is that trademarks is used along with GI. It is not just Darjeeling tea,
but it is also Tata Darjeeling Tea. Tata is trademark. There is added goodwill or reputation.
GI, on account of its nature, guarantees certain elements and qualities. Specific types of
Trademarks closely resemble how GIs are.
For example, in the context of trademarks, certification marks as they are granted on
fulfilment of certain qualitative thresholds. Similarly, in GI, if you are able to make certain
quality considerations, you get it.
India offers a sui generis GI system.

Article 39 of TRIPS
There are two aspects of intellectual property:
- The creativity of making that recipe
- The effort in keeping it secret
Coca cola is a good example of trade secrets. Pre- 1994, this was not espoused as a subject
matter. The justification makes sense as it justifies the risk that the person is willing to take in
keeping the information secret.

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 Conflict between fundamental rights and intellectual property

3 examples:
1. Model/Actress called Emily Ratajkowski. She published her work called my body.
She got nudes clicked by a fashion photographer. When she wanted control over the
photographs, it came to a point where she had to purchase it back from the
photographer. The conflict arises in a scenario where photographers are not
authorised.
2. Naomi Campbell is a supermodel. There were rumours that she was a drug addict. She
was denying it. There was a photographer who clicked a picture of her coming out of
a rehab. Court stated that there is a reasonable expectation of privacy. Privacy would
prevail over the freedom of speech and expression.
3. Matter concerning Gigi Hadid. In 2018/2019, she was checking out of some venue.
She got access of a picture of hers that was taken, and she posted on Instagram. She
took it down later. Photographer cited copyright infringement. This matter did not
eventually reach fruition because the photographer did not register his copyright. That
is a requirement in US, unlike India where it is not needed to register. In India,
copyright angle would probably prevail.

27th January, 2023

Previously: (1.) Utility (in conjunction with Economic Theory); (2.) Lockean Labour Theory;
(3) Social Welfare Theory (and attractive and just society).
Social Welfare Theory: society would want to protect those subject matters that are
forwarding a just and equal society [Willam Fischer].
Personality Theory looks at IP creation as an extenison of a person's personality. This is
mostly used in terms of a Copyright. Like, the creator transfers some part of him/her to that
specific work. The theory posits such is the inherent connection of the artist of this work that
it is the extension of him and must be controlled by him.
One basic flaw is that anyone copying a work will claim that some part of that person is also
in that work; this may also justify protection of copied works (thereby incentivising copying).
Again, the basic premise here is that no one justification sufficies as valid justification. IP
rights are those granted by statutes.

Copyright
Sec 14 Copyright Act:
For the purposes of this Act, “copyright” means the exclusive right subject to the provisions
of this Act, to do or authorise the doing of any of the following acts in respect of a work or
any substantial part thereof [...]. [This is literally seen as rights to authorise or to do
something. It reflects a bundle of rights.]
Six Types of Works

1. Artistic Work

Sec 2(c)(i)

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(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;  [...]
(emphasis supplied) [This means the work need not qualify some threshold. But the
person will need to prove that it is original work.]
Sec 2(c)(ii)
(ii) an 5[work of architectural]; [...] [This has to be read with Sec 2(b) which states that a
work of architecture “means any building or structure having an artistic character or
design, or any model for such building or structure”]
Sec 2(c)(iii)
(iii) any other work of artistic craftsmanship. [No functional consideration comes within
the ambit of Copyright protection. For example, Pottery, which is both an artistic work
and a product with functionality, the latter (i.e., functional consideration) is severed.]
Sec 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.[Muscial work can either be through graphic notation or
through pefromance. This does not include the lyrics that accompany it, the same has
separate copyright. Because the performance = musical work + literary work. The
sound recording has authors of its own, can be independent to the author of the lyrics.]
Author gives the sound recorded a limited amount of rights. For example, if some
foundational music exists in a particular sound recording (over which the producer has the
rights), the producer cannot take protection over such foundational sound (but only that sound
recording) because the author still has rights over it.
Read with Sec 2 (ff)
(ff) “communication to the public” means making any work or performance
available for beingseen or heard or otherwise enjoyed by the public directly
or by any means of display or diffusion other than by issuing physical copies
of it, whether a simultaneously or at places and times chosen individually,
regardless of whether any member of the public actually sees, hears or
otherwise enjoys the work or performance so made available.
Explanation.—For the purposes of this clause, communication through
satellite or cable or any other means of simultaneous communication to more
than one household or place of residence including residential rooms of any
hotel or hostel shall be deemed to be communication to the public.
Bright Tunes Music Operation v. Harrisongs Music (1976). One portion of the judgment was
very complex, the court went into in-depth discussion on different types and amount of
repetions. It is an important norm in Copyright that although intentional copying is
(obviously) an infringement, subconscious copying is also an infringement.
Another matter concerned the song Levitating.
Sound recording are necessarily fixated. The sound used has nothing to do with music. Any
noise can be a sound. Sound is a broader umbrella.

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