Ilovepdf Merged

LEGAL PROVISIONS INFERRED
COPYRIGHTS ACT, 1957
STATEMENT OF JURISDICTION
Section. 72. Appeals against orders of Registrar of Copyrights.
(1) Any person aggrieved by any final decision or order of the Registrar of Copyrights may,
within three months from the date of the order or decision, appeal to the High Court.
(2) Every such appeal shall be heard by a single Judge of the High Court:
Provided that any such Judge may, if he so thinks fit, refer the appeal at any stage of the proceeding to
a Bench of the High Court.
(3) Where an appeal is heard by a single Judge, a further appeal shall lie to a Bench of the High
Court within three months from the date of decision or order of the single Judge.
(4) In calculating the period of three months provided for an appeal under this section, the time taken
in granting a certified copy of the order or record of the decision appealed against shall be excluded.
PROVISIONS INFERRED:
SECTION 2
2. Interpretation. -In this Act, unless the context otherwise requires,-
(a) "adaptation" means,-
(i) in relation to a dramatic work, the conversion of the work into a non-dramatic work;
(ii) in relation to a literary work or an artistic work, the conversion of the work into a dramatic work
by way of performance in public or otherwise;
(iii) in relation to a literary or dramatic work, any abridgement of the work or any version of the work
in which the story or action is conveyed wholly or mainly by means of pictures in a form suitable for
reproduction in a book, or in a newspaper, magazine or similar periodical;3
(iv) in relation to a musical work, any arrangement or transcription of the work;
(v) 5 in relation to any work, any use of such work involving its re-arrangement or alteration;
(b) "work of architecture" means any building or structure having an artistic character or design, or
any model for such building or structure; 6
(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) work of architecture;7 and
(iii) any other work of artistic craftsmanship;
(d) "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 cinematograph8 or sound recording the producer; and
(vi) in relation to 9 [any literary, dramatic, musical or artistic work which is computer-generated, the
person who causes the work to be created;]
[(dd) 10 "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;]
(e) "calendar year' means the year commencing on the 1st day of January;
(f) 11 "cinematograph film" means any work of visual recording on any medium produced through a
process from which a moving image may be produced by any means 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;
(ff) 12 "communication to the public" means making any work available for being seen or heard or
otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing
copies of such work regardless of whether any member of the public actually sees, hears or otherwise
enjoys the work 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;
(ffa) 13 "composer', in relation to a musical work, means the person who composes the music
regardless of whether he records it in any form of graphical notation;
(ffb) 14 "computer" includes any electronic or similar device having information processing capabilities;
(ffc) 15 "computer programme" means a set of instructions expressed in words, codes, schemes or in
any other form, including a machine readable medium, capable of causing a computer to perform a
particular task or achieve a particular result;
(ffd) 16 "copyright society" means a society registered under sub-section (3) of section 33
(g) "delivery", in relation to a lecture, includes delivery by means of any mechanical instrument or
17[broadcast] by;
(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;
[(hh) 18 "Duplicating equipment" means any mechanical contrivance or device used or intended to be
used for making copies of any work;]
(i) "engravings" include etchings, lithographs, wood-cuts, prints and other similar works, not being
photographs;
(j) "exclusive licence" means a licence which confers on the licensee or on the licensee and persons
authorised by him, to the exclusion of all other persons (including the owner of the copyright), any
right comprised in the copyright in a work, and "exclusive licensee" shall be construed accordingly;
(k) "Government work" means a work which is made or published by or under the direction or control
of-
(i) the Government or any department of the Government;
(ii) any Legislature in India;
(iii) any court, tribunal or other judicial authority in India;
[(l) 19 "Indian work" means a literary, dramatic or musical work,-
(i) the author of which is a citizen of India; or
(ii) which is first published in India; or
(iii) the author of which, in the case of an unpublished work, is, at the time of the making of the work,
a citizen of India;]
(m) 20 "infringing copy" means,-
(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof otherwise than in
the form of a cinematographic film;
(ii) in relation to a cinematographic film, a copy of the film made on any medium by any means;
(iii) in relation to a sound recording, any other recording embodying the same sound recording, made
by any means;
(iv) in relation to a programme or performance in which such a broadcast reproduction right or a
performer's right subsists under the provisions of this Act, the sound recording or a cinematographic
film of such programme or performance, if such reproduction, copy or sound recording is made or
imported in contravention of the provisions of this Act;
(n) "lecture" includes address, speech and sermon;
(o) 21 "literary work" includes computer programmes, tables and compilations including
computer 35A "literary data bases ;
(p) 22 "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;
(q) 23 "performance", in relation to performer's right, means any visual or acoustic presentation made
live by one or more performers;
(qq) 24 "performer' includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake
charmer, a person delivering a lecture or any other person who makes a performance;
25 *****
(s) "photograph" includes photo-lithograph and any work produced by any process analogous to
photography but does not include any part of a cinematograph film;
(t) "plate" includes any stereotype or other plate, stone, block, mould, matrix, transfer, negative,
26[duplicating equipment] or other device used or intended to be used for printing or reproducing
copies of any work, and any matrix or other appliance by which 27 Sound recording for the acoustic
presentation of the work are or are intended to be made;
(u) "prescribed" means prescribed by rules made under this Act;
(uu) 28"producer', in relation to a cinematograph film or sound recording, means a person who takes the
initiative and responsibility for making the work;
(x) 31 "reprography" means the making of copies of a work, by photo-copying or similar means;
(xx) 32 "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;
(y) "work" means any of the following works, namely:-
(i) a literary, dramatic, musical or artistic work;
(ii) a cinematograph film;
(iii) a 33[sound recording];
(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;
SECTION 13
13. Works in which copyright subsists.- (1) Subject to the provisions of this section and the other
provisions of this Act, copyright shall subsist throughout India in the following classes of works,
that is to say,-
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) 42[sound recordings;]
(2) Copyright shall not subsist in any work specified in sub-section (1), other than a work to which the
provisions of section 40 or section 41 apply, unless,-
(i) in the case of a published work, the work is first published in India, or where the work is first
published outside India, the author is at the date of such publication, or in a case where the author was
dead at that date, was at the time of his death, a citizen of India;
(ii) in the case of an unpublished work other than a 43 [work of architecture] the author is at the date
of the making of the work a citizen of India or domiciled in India; and
(iii) in the case of 44 [work of architecture] the work is located in India.
Explanation.- in the case of a work of joint authorship, the conditions conferring copyright specified in
this sub-section shall be satisfied by all the authors of the work.
(3) Copyright shall not subsist-
(a) in any cinematograph film a substantial part of the film is an infringement of the copyright in any
other work;
(b) in any 45 [sound recording] made in respect of a literary, dramatic or musical work, if in making
the 46 [sound recording], copyright in such work has been infringed.
(4) The copyright in a cinematograph film or a 47 [sound recording] shall not affect the separate
copyright in any work in respect of which or a substantial part of which, the film, or as the case may
be, the 48 [sound recording] is made.
(5) In the case of a 49 [work of architecture] copyright shall subsist only in the artistic character and
design and shall not extent to processes or methods of construction.
SECTION 17
Ownership of Copyright and the Rights of the Owner
17. First owner of copyright.-Subject to the provisions of this Act, the author of a work shall be the
first owner of the copyright therein
Provided that- (a) in the case of a literary, dramatic or artistic work made by the author in the course of
his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of
service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar
periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner
of the copyright in the work in so far as the copyright relates to the publication of the work in any
newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its
being so published, but in all other respects the author shall be the first owner of the copyright in the
work;
(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or
portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the
instance of any person, such person shall, in the absence of any agreement to the contrary, be the
first owner of the copyright therein;
(c) in the case of a work made in the course of the author s employment under a contract of service or
apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of
any agreement to the contrary, be the first owner of the copyright therein;
[(cc) 52 in the case of any address or speech delivered in public, the person who has delivered such
address or speech or if such person has delivered such address or speech on behalf of any other person,
such other person shall be the first owner of the copyright therein notwithstanding that the person who
delivers such address or speech, or, as the case may be, the person on whose behalf such address or
speech is delivered, is employed by any other person who arranges such address or speech or on whose
behalf or premises such address or speech is delivered;]
(d) in the case of a Government work, Government shall, in the absence of any agreement to the
contrary, be the first owner of the copyright therein;
[(dd) 53 in the case of a work made or first published by or under the direction or control of any public
undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the first
owner of the copyright therein.
Explanation.- For the purposes of this clause and section 28A, "public undertaking" means-
(i) an undertaking owned or controlled by Government; or
(ii) a Government company as defined in section 617 of the Companies Act, 1956; or
(iii) a body corporate established by or under any Central, Provincial or State Act;]
(e) in the case of a work to which the provisions of section 41 apply, the international organisation
concerned shall be the first owner of the copyright therein.
SECTION 22
22. Term of copyright in published literary, dramatic, musical and artistic works.-Except as
otherwise hereinafter provided, copyright shall subsist in any literary, dramatic, musical or
artistic work (other than a photograph) published within the lifetime of the author until 62[sixty]
years from the beginning of the calendar year next following the year in which the author dies.
Explanation.- In this section the reference to the author shall, in the case of a work of joint
authorship, be construed as a reference to the author who dies last.
SECTION 52
52. Certain acts not to be infringement of copyright. -(1) The following acts shall not constitute an
infringement of copyright, namely:
(a) a fair dealing with a literary, dramatic, musical or artistic work 104[not being a computer
programme] for the purposes of-
(i) 105private use, including research;
(ii) criticism or review, whether of that work or of any other work; "
(aa)106 the making of copies or adaptation of a computer programme by the lawful possessor of a
copy of such computer programme, from such copy-
(i) in order to utilise the computer programme for the purposes for which it was supplied; or
(ii) to make back-up copies purely as a temporary protection against loss, destruction or damage in
order only to utilise the computer programme for the purpose for which it was supplied;" 121A "
(ab) the doing of any act necessary to obtain information essential for operating inter-operability of an
independently created computer programme with other programmes by a lawful possessor of a
computer programme provided that such information is not otherwise readily available;
(ac) the observation, study or test of functioning of the computer programme in order to determine the
ideas and principles which underline any elements of the programme while performing such acts
necessary for the functions for which the computer programme was supplied;
(ad) the making of copies or adaptation of the computer programme from a personally legally obtained
copy for non-commercial personal use; ;
(b) a fair dealing with a literary, dramatic, musical or artistic work for the purpose of reporting current
events-
(i) in a newspaper, magazine or similar periodical, or
(ii) by 107[broadcast] or in a cinematograph film or by means of photographs.
108 [Explanation.- The publication of a compilation of addresses or speeches delivered in public is not
a fair dealing of such work within the meaning of this clause;]
(c) the reproduction of a literary, dramatic, musical or artistic work for the purpose of a judicial
proceeding or for the purpose of a report of a judicial proceeding;
(d) the reproduction or publication of a literary, dramatic, musical or artistic work in any work
prepared by the Secretariat of a Legislature or, where the Legislature consists of two Houses, by the
Secretariat of either House of the Legislature, exclusively for the use of the members of that
Legislature;
(e) the reproduction of any literary, dramatic or musical work in a certified copy made or supplied in
accordance with any law for the time being in force;
(f) the reading or recitation in public of any reasonable extract from a published literary or dramatic
work;
(g) the publication in a collection, mainly composed of non-copyright matter, bona fide intended for
the use of educational institutions, and so described in the title and in any advertisement issued by or
on behalf of the publisher, of short passages from published literary or dramatic works, not themselves
published for the use of educational institutions, in which copyright subsists :
Provided that not more than two such passages from works by the same author are published by the
same publisher during any period of five years.
Explanation.- In the case of a work of joint authorship, references in this clause to passages from
works shall include references to passages from works by any one or more of the authors of those
passages or by any one or more of those authors in collaboration with any other person;
(h) the reproduction of a literary, dramatic, musical or artistic work-
(i) by a teacher or a pupil in the course of instruction; or
(ii) as part of the questions to be answered in an examination; or
(iii) in answers to such questions;
(i) 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 109[sound
recordings] if the audience is limited to such staff and students, the parents and guardians of the
students and persons directly connected with the activities of the institution 110[or the communication
to such an audience of a cinematograph film or sound recording].
(j) 111 the making of sound recordings in respect of any literary, dramatic or musical work, if-
(i) sound recordings of that work have been made by or with the licence or consent of the owner of the
right in the work;
(ii) the person making the sound recordings has given a notice of his intention to make the sound
recordings, has provided copies of all covers or labels with which the sound recordings are to be sold,
and has paid in the prescribed manner to the owner of rights in the work royalities in respect of all
such sound recordings to be made by him, at the rate fixed by the Copyright Board in this behalf:
Provided that-
(i) no alterations shall be made which have not been made previously by or with the consent of the
owner of rights, or which are not reasonably necessary for the adaptation of the work for the purpose
of making the sound recordings;
(ii) the sound recordings shall not be issued in any form of packaging or with any label which is likely
to mislead or confuse the public as to their identity;
(iii) no such sound recording shall be made until the expiration of two calendar years after the end of
the year in which the first sound recording of the work was made; and
(iv) the person making such sound recordings shall allow the owner of rights or his duly authorised
agent or representative to inspect all records and books of account relating to such sound recording:
Provided further that if on a complaint brought before the Copyright Board to the effect that the owner
of rights has not been paid in full for any sound recordings purporting to be made in pursuance of this
clause, the Copyright Board is, prima facie, satisfied that the complaint is genuine, it may pass an
order ex parte directing the person making the sound recording to cease from making further copies
and, after holding such inquiry as it considers necessary, make such further order as it may deem fit,
including an order for payment of royalty;
(k) 112 the causing of a recording to be heard in public by utilising it,-
(i) in an enclosed room or hall meant for the common use of residents in any residential premises (not
being a hotel or similar commercial establishment) as part of the amenities provided exclusively or
mainly for residents therein; or
(ii) as part of the activities of a club or similar organisation which is not established or conducted for
profit;
(iii) as part of the activities of a club, society or other organisation which is not established or
conducted for profit;
(l) the performance of a literary, dramatic or musical work by an amateur club or society, if the
performance is given to a non-paying audience, or for the benefit of a religious institution;
(m) the reproduction in a newspaper, magazine or other periodical of an article on current economic,
political, social or religious topics, unless the author of such article has expressly reserved to himself
the right of such reproduction;
(n) the publication in a newspaper, magazine or other periodical of a report of a lecture delivered in
public;
(o) the making of not more than three copies of a book (including a pamphlet, sheet of music, map,
chart or plan) by or under the direction of the person in charge of a public library for the use of the
library if such book is not available for sale in India;
(p) the reproduction, for the purpose of research or private study or with a view to publication, of an
unpublished literary, dramatic or musical work kept in a library, museum or other institution to which
the public has access :
Provided that where the identity of the author of any such work or, in the case of a work of joint
authorship, of any of the authors is known to the library, museum or other institution, as the case may
be, the provisions of this clause shall apply only if such reproduction is made at a time more than 121B
sixty years from the date of the death of the author or, in the case of a work of joint authorship, from
the death of the author whose identity is known or, if the identity of more authors than one is known
from the death of such of those authors who dies last;
(q) the reproduction or publication of-
(i) any matter which has been published in any Official Gazette except an Act of a Legislature;
(ii) any Act of a Legislature subject to the condition that such Act is reproduced or published together
with any commentary thereon or any other original matter;
(iii) the report of any committee, commission, council, board or other like body appointed by the
Government if such report has been laid on the Table of the Legislature, unless the reproduction or
publication of such report is prohibited by the Government;
(iv) any judgement or order of a court, tribunal or other judicial authority, unless the reproduction or
publication of such judgment or order is prohibited by the court, the tribunal or other judicial authority,
as the case may be;
(r) the production or publication of a translation in any Indian language of an Act of a Legislature and
of any rules or orders made thereunder-
(i) if no translation of such Act or rules or orders in that language has previously been produced or
published by the Government; or
(ii) where a translation of such Act or rules or orders in that language has been produced or published
by the Government, if the translation is not available for sale to the public: Provided that such
translation contains a statement at a prominent place to the effect that the translation has not been
authorised or accepted as authentic by the Government;
(s) 113 the making or publishing of a painting, drawing, engraving or photograph of a work of
architecture or the display of a work of architecture;
(t) the making or publishing of a painting, drawing, engraving or photograph of a sculpture, or other
artistic work failing under sub-clause (iii) of clause (c) of section 2, if such work is permanently situate
in a public place or any premises to which the public has access;
(u) the inclusion in a cinematograph film of-
(v) any artistic work permanently situate in a public place or any premises to which the public has
access; or
(ii) any other artistic work, if such inclusion is only by way of background or is otherwise incidental to
the principal matters represented in the film;
(v) the use by the author of an artistic work, where the author of such work is not the owner of the
copyright therein, of any mould, cast, sketch, plan, model or study made by him for the purpose of the
work : Provided that he does not thereby repeat or imitate the main design of the work;
(x) the reconstruction of a building or structure in accordance with the architectural drawings or plans
by reference to which the building or structure was originally constructed : Provided that the original
construction was made with the consent or licence of the owner of the copyright in such drawings and
plans;
(y) in relation to a literary, dramatic or musical work recorded or reproduced in any cinematograph
film the exhibition of such film after the expiration of the term of copyright therein :
Provided that the provisions of sub-clause (ii) of clause (a), sub-clause (a) of clause (b) and clauses
(d), (f), (g), (m) and (p) shall not apply as respects any act unless that act is accompanied by an
acknowledgment-
(i) identifying the work by its title or other description; and
(ii) unless the work is anonymous or the author of the work has previously agreed or required that no
acknowledgement of his name should be made, also identifying the author.
(z) 115 the making of an ephemeral recording, by a broadcasting organisation using its own facilities
for its own broadcast by a broadcasting organisation of a work which it has the right to broadcast; and
the retention of such recording for archival purposes on the ground of its exceptional documentary
character;
(za) 116 the performance of a literary, dramatic or musical work or the communication to the public of
such work or of a sound recording in the course of any bona fide religious ceremony or an official
ceremony held by the Central Government or the State Government or any local authority.
Explanation.- For the purpose of this clause, religious ceremony including a marriage procession and
other social festivities associated with a marriage.
(2) The provisions of sub-section (1) shall apply to the doing of any act in relation to the translation of
a literary, dramatic or musical work or the adaptation of a literary, dramatic, musical or artistic work as
they apply in relation to the work itself.
GENERAL CLAUSES ACT, 1867
3. Definitions. — In this Act, and in all Central Acts and Regulations made after the commencement
of this Act, unless there is anything repugnant in the subject or context,—
(1) “abet”, with its grammatical variations and cognate expressions, shall have the same meaning as in
the Indian Penal Code (45 of 1860);
(2) “act”, used with reference to an offence or a civil wrong, shall include a series of acts, and words
which refer to acts done extend also to illegal omissions;
(3) “affidavit” shall include affirmation and declaration in the case of persons by law allowed to affirm
or declare instead of swearing;
(4) “barrister” shall mean a barrister of England or Ireland, or a member of the Faculty of Advocates in
Scotland;
(5) “British India” shall mean, as respects the period before the commencement of Part III of the
Government of India Act, 1935, all territories and places within His Majesty’s dominions which were
for the time being governed by His Majesty through the Governor General of India or through any
Governor or Officer subordinate to the Governor General of India, and as respects any period after that
date and before the date of the establishment of the Dominion of India means all territories for the time
being comprised within the Governors’ Provinces and the Chief Commissioners’ Provinces, except
that a reference to British India in an Indian law passed or made before the commencement of Part III
of the Government of India Act, 1935, shall not include a reference to Berar;
(6) “British possession” shall mean any part of Her Majesty’s dominions exclusive of the United
Kingdom, and where parts of those dominions are under both a Central and a Local Legislature, all
parts under the Central Legislature shall, for the purposes of this definition, be deemed to be one
British possession;
(7) “Central Act” shall means an Act of Parliament, and shall include—
(a) an Act of the Dominion Legislature or of the Indian Legislature passed before the commencement
of the Constitution, and
(b) an Act made before such commencement by the Governor General in Council or the Governor
General, acting in a legislative capacity;
(8) “Central Government” shall,—
(a) in relation to anything done before the commencement of the Constitution, mean the Governor
General or the Governor General in Council, as the case may be; and shall include,—
(i) in relation to functions entrusted under sub-section (1) of section 124 of the Government of India
Act, 1935, to the Government of a Province, the Provincial Government acting within the scope of the
authority given to it under that subsection; and
(ii) in relation to the administration of a Chief Commissioner’s Province, the Chief Commissioner
acting within the scope of the authority given to him under sub-section (3) of section 94 of the said
Act; and
(b) in relation to anything done or to be done after the commencement of the Constitution, mean the
President; and shall include,—
(i) in relation to functions entrusted under clause (1) of article 258 of the Constitution, to the
Government of a State, the State Government acting within the scope of the authority given to it under
that clause; 1
(ii) in relation to the administration of a Part C State 2[before the commencement of the Constitution
(Seventh Amendment) Act, 1956], the Chief Commissioner or the LieutenantGovernor or the
Government of a neighbouring State or other authority acting within the scope of the authority given to
him or it under article 239 or article 243 of the Constitution, as the case may be; 2
[and (iii) in relation to the administration of a Union territory, the administrator thereof acting
within the scope of the authority given to him under article 239 of the Constitution];
(9) “Chapter” shall mean a Chapter of the Act or Regulation in which the word occurs;
(10) “Chief Controlling Revenue Authority” or “Chief Revenue Authority” shall mean—
(a) in a State where there is a Board of Revenue, that Board;
(b) in a State where there is a Revenue Commissioner, that Commissioner;
(c) in Punjab, the Financial Commissioner; and
(d) elsewhere, such authority as, in relation to matters enumerated in List I in the Seventh Schedule to
the Constitution, the Central Government, and in relation to other matters, the State Government, may
by notification in the Official Gazette, appoint;
(11) “Collector” shall mean, in a Presidency-town, the Collector of Calcutta, Madras or Bombay, as
the case may be, and elsewhere the chief officer-in-charge of the revenue-administration of a district;
(12) “Colony”—
(a) in any Central Act passed after the commencement of Part III of the Government of India Act,
1935, shall mean any part of His Majesty’s dominions exclusive of the British Islands, the Dominions
of India and Pakistan (and before the establishment of those Dominions, British India), any Dominions
as defined in the Statute of Westminister, 1931, any Province or State forming part of any of the said
Dominions, and British Burma; and
(b) in any Central Act passed before the commencement of Part III of the said Act, mean any part of
His Majesty’s dominions exclusive of the British Islands and of British India;and in either case where
parts of those dominions are under both a Central and Local Legislature, all parts under the Central
Legislature shall, for the purposes of this definition, be deemed to be one colony.
(13) “Commencement” used with reference to an Act or Regulation, shall mean the day on which the
Act or Regulation comes into force;
(14) “Commissioner” shall mean the chief officer-in-charge of the revenue administration of a division;
(15) “Constitution” shall mean the Constitution of India;
(16) “Consular officer” shall include consul-general, consul, vice-consul, consular agent, proconsul
and any person for the time being authorised to perform the duties of consul-general, consul, vice-
consul or consular agent;
(17) “District Judge” shall mean the Judge of a principal Civil Court of original jurisdiction, but shall
not include a High Court in the exercise of its ordinary or extraordinary original civil jurisdiction;
(18) “document” shall include any matter written, expressed or described upon any substance by
means of letters, figures or marks, or by more than one of those means which is intended to be used, or
which may be used, for the purpose of recording that matter;
(19) “enactment” shall include a Regulation (as hereinafter defined) and any Regulation of the Bengal,
Madras or Bombay Code, and shall also include any provision contained in any Act or in any such
Regulation as aforesaid;
(20) “father”, in the case of any one whose personal law permits adoption, shall include an adoptive
father;
(21) “financial year” shall mean the year commencing on the first day of April;
(22) a thing shall be deemed to be done in “good faith” where it is in fact done honestly, whether it is
done negligently or not;
(23) “Government” or “the Government” shall include both the Central Government and any State
Government;
(24) “Government securities” shall mean securities of the Central Government or of any State
Government, but in any Act or Regulation made before the commencement of the Constitution shall
not include securities of the Government of any Part B State;
(25) “High Court”, used with reference to civil proceedings, shall mean the highest Civil Court of
appeal (not including the Supreme Court) in the part of India in which the Act or Regulation
containing the expression operates;
(26) “immovable property” shall include land, benefits to arise out of land, and things attached to the
earth, or permanently fastened to anything attached to the earth;
(27) “imprisonment” shall mean imprisonment of either description as defined in the Indian Penal
Code (45 of 1860);
(28) “India” shall mean,—
(a) as respects any period before the establishment of the Dominion of India, British India together
with all territories of Indian Rulers then under the suzerainty of His Majesty, all territories under the
suzerainty of such an Indian Ruler, and the tribal areas;
(b) as respects any period after the establishment of the Dominion of India and before the
commencement of the Constitution, all territories for the time being included in that Dominion; and
(c) as respects any period after the commencement of the Constitution , all territories for the time
being comprised in the territory of India;
(29) “Indian law” shall mean any Act, Ordinance, Regulation, rule, order, bye-law or other instrument
which before the commencement of the Constitution, had the force of law in any Province of India or
part thereof, or thereafter has the force of law in any Part A State or Part C State or Part thereof, but
does not include any Act of Parliament of the United Kingdom or any Order in Council, rule or other
instrument made under such Act;
(30) “Indian State” shall mean any territory which the Central Government recognised as such a State
before the commencement of the Constitution, whether described as a State, an Estate, a Jagiror
otherwise;
(31) “local authority” shall mean a municipal committee, district board, body of port Commissioners
or other authority legally entitled to, or entrusted by the Government with, the control or management
of a municipal or local fund;
(32) “Magistrate” shall include every person exercising all or any of the powers of a Magistrate under
the Code of Criminal Procedure for the time being in force;
(33) “master”, used with reference to a ship, shall mean, any person (except a pilot or harbourmaster)
having for the time being control or charge of the ship;
(34) “merged territories" shall mean the territories which by virtue of an order made under section
290A of the Government of India Act, 1935, were immediately before the commencement of the
Constitution being administered as if they formed part of a Governor's Province or as if they were a
Chief Commissioner's Province;
(35) “month” shall mean a month reckoned according to the British calendar;
(36) “movable property” shall mean property of every description, except immovable property;
(37) “oath” shall include affirmation and declaration in the case of persons by law allowed to affirm or
declare instead of swearing;
(38) “offence” shall mean any act or omission made punishable by any law for the time being in force;
(39) “official Gazette” or “Gazette” shall mean the Gazette of India or the Official Gazette of a State;
(40) “Part” shall mean a part of the Act or Regulation in which the word occurs;
(41) “Part A State” shall mean a State for the time being specified in Part A of the First Schedule to
the Constitution, 1 [as in force before the Constitution (Seventh Amendment) Act, 1956,] “Part B
State” shall mean a State for the time being specified in Part B of that Schedule and “Part C State”
shall mean a State for the time being specified in Part C of that Schedule or a territory for the time
being administered by the President under the provisions of article 243 of the Constitution;
(42) “person” shall include any company or association or body of individuals, whether incorporated
or not;
(43) “Political Agent” shall mean,—
(a) in relation to any territory outside India, the Principal Officer, by whatever name called,
representing the Central Government in such territory; and
(b) in relation to any territory within India to which the Act or Regulation containing the expression
does not extend, any officer appointed by the Central Government to exercise all or any of the powers
of a Political Agent under that Act or Regulation;
(44) “Presidency-town” shall mean the local limits for the time being of the ordinary original civil
jurisdiction of the High Court of Judicature at Calcutta, Madras or Bombay, as the case may be;
(45) “Province” shall mean a Presidency, a Governor’s Province, a Lieutenant Governor’s Province or
a Chief Commissioner's Province;
(46) “Provincial Act” shall mean an Act made by the Governor in Council, Lieutenant Governor in
Council or Chief Commissioner in Council of a Province under any of the Indian Councils Acts or the
Government of India Act, 1915, or an Act made by the Local Legislature or the Governor of a
Province under the Government of India Act, or an Act made by the Provincial Legislature or
Governor of a Province or the Coorg Legislative Council under the Government of India Act, 1935;
(47) “Provincial Government” shall mean, as respects anything done before the commencement of the
Constitution, the authority or person authorised at the relevant date to administer executive
Government in the Province in question;
(48) “public nuisance” shall mean a public nuisance as defined in the Indian Penal Code (45 of 1860);
(49) “registered”, used with reference to a document, shall mean registered in [India] under the law for
the time being in force for the registration of documents;
(50) “Regulation” shall mean a Regulation made by the President 2 [under article 240 of the
Constitution and shall include a Regulation made by the President under article 243 thereof and] a
Regulation made by the Central Government under the Government of India Act, 1870, or the
Government of India Act, 1915, or the Government of India Act, 1935;
(51) “rule” shall mean a rule made in exercise of a power conferred by any enactment, and shall
include a Regulation made as a rule under any enactment;
(52) “schedule” shall mean a schedule to the Act or Regulation in which the word occurs;
(53) “Scheduled District” shall mean a “Scheduled District” as defined in the Scheduled Districts Act,
1874;
(54) “section” shall mean a section of the Act or Regulation in which the word occurs;
(55) “ship” shall include every description of vessel used in navigation not exclusively propelled by
oars;
(56) “sign”, with its grammatical variations and cognate expressions, shall, with reference to a person
who is unable to write his name, include “mark”, with its grammatical variations and cognate
expressions;
(57) “son”, in the case of any one whose personal law permits adoption, shall include an adopted son;
[(58) “State”—(a) as respects any period before the commencement of the Constitution (Seventh
Amendment) Act, 1956, shall mean a Part A State, a Part B State or a Part C State; and
(b) as respects any period after such commencement, shall mean a State specified in the First Schedule
to the Constitution and shall include a Union territory;]
(59) “State Act” shall mean an Act passed by the Legislature of a State established or continued by the
Constitution;
(60) “State Government”,— (a) as respects anything done before the commencement of the
Constitution, shall mean, in a Part A State, the Provincial Government of the corresponding Province,
in a Part B State, the authority or person authorised at the relevant date to exercise executive
government in the corresponding Acceding State, and in a Part C State, the Central Government;
(61) “sub-section” shall mean a sub-section of the section in which the word occurs;
(62) “swear”, with its grammatical variations and cognate expressions, shall include affirming and
declaring in the case of persons by law allowed to affirm or declare instead of swearing;
[(62A) “Union territory” shall mean any Union territory specified in the First Schedule to the
Constitution and shall include any other territory comprised within the territory of India but not
specified in that Schedule;]
(63) “vessel” shall include any ship or boat or any other description of vessel used in navigation;
(64) “will” shall include a codicil and every writing making a voluntary posthumous disposition of
property;
(65) expressions referring to “writing” shall be construed as including references to printing,
lithography, photography and other modes of representing or reproducing words in a visible form; and
(66) “year” shall mean a year reckoned according to the British calendar.
BERNE CONVENTION
Article 2
(1) The expression "literary and artistic works" shall include every production in the literary, scientific
and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets
and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or
dramatico- musical works; choreographic works and entertainments in dumb show; musical
compositions with or without words; cinematographic works to which are assimilated works expressed
by a process analogous to cinematography; works of drawing, painting, architecture, sculpture,
engraving and lithography; photographic works to which are assimilated works expressed by a process
analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-
dimensional works relative to geography, topography, architecture or science.
(2) It shall, however, be a matter for legislation in the countries of the Union to prescribe that works in
general or any specified categories of works shall not be protected unless they have been fixed in some
material form.
(3) Translations, adaptations, arrangements of music and other alterations of a literary or artistic work
shall be protected as original works without prejudice to the copyright in the original work.
(4) It shall be a matter for legislation in the countries of the Union to determine the protection to be
granted to official texts of a legislative, administrative and legal nature, and to official translations of
such texts.
(5) Collections of literary or artistic works such as encyclopaedias and anthologies which, by reason of
the selection and arrangement of their contents, constitute intellectual creations shall be protected as
such, with out prejudice to the copyright in each of the works forming part of such collections.
(6) The works mentioned in this Article shall enjoy protection in all countries of the Union. This
protection shall operate for the benefit of the author and his successors in title.
(7) Subject to the provisions of Article 7 (4) of this Convention, it shall be a matter for legislation in
the countries of the Union to determine the extent of the application of their laws to works of applied
art and industrial designs and models, as well as the conditions under which such works, designs and
models shall be protected. Works protected in the country of origin solely as designs and models shall
be entitled in another country of the Union only to such special protection as is granted in that country
to designs and models; however, if no such special protection is granted in that country, such works
shall be protected as artistic works.
(8) The protection of this Convention shall not apply to news of the day nor to miscellaneous facts
having the character of mere items of press information
© [Regd. No. TN/CCN/467/2012-14.
GOVERNMENT OF TAMIL NADU [R. Dis. No. 197/2009.
2023 [Price: Rs. 4.00 Paise
TAMIL NADU
GOVERNMENT GAZETTE
No.14] CHENNAI, WEDNESDAY, APRIL 5, 2023

Panguni 22, Subakiruthu, Thiruvalluvar Aandu–2054
Part III—Section 2
Statutory Notifications and Orders issued
by Heads of Departments.
NOTIFICATIONS BY HEADS OF DEPARTMENTS, ETC.
CONTENTS
Pages.
JUDICIAL NOTIFICATION
The High Court of Judicature at Madras
Madras High Court Intellectural Property Rights Division Rules, 2022 .. 70-77
DTP—III-2 (14) [69]

70 TAMIL NADU GOVERNMENT GAZETTE [Part III—Sec. 2
NOTIFICATIONS BY HEADS OF DEPARTMENTS, ETC.
JUDICIAL NOTIFICATION
THE HIGH COURT OF JUDICATURE AT MADRAS
Madras High Court Intellectual Property Rights Division Rules, 2022
[R.O.C. No. 5906 A/2022 (Comm. Cases)]

No. SRO C-6/2023.
Pursuant to enactment of the Tribunal Reforms Act, 2021(“Said Act”) on 13.8.2021, the Intellectual Property Appellate Board
and some other tribunals were abolished under Sec.33 of the said Act and consequently, the proceedings hitherto pending and filed
before such tribunals were transferred to the High Courts under various provisions of the said Act.
Further, the High Court of Madras constituted the Intellectual Property committee to formulate the procedures, consequent
thereto.
Upon the recommendation of the Committee, Madras High Court has created the Intellectual Property Division (hereinafter
referred to as “the IPD”) in the High Court to deal with matters relating to Intellectual Property Rights (“IPR”).
In exercise of the powers conferred by Section 129 of the Code of Civil Procedure, 1908 and Clauses 37 and 38 of the
Letters Patent,1865 and the powers conferred under the various Intellectual Property statutes as amended by the said Act, the Madras
High Court hereby makes the following Rules governing the matters listedbefore the IP Division with respect to practice and
procedure for the exercise of its ordinary original, appellate, criminal and writ jurisdiction.
The Intellectual Property statutes include The Trade Marks Act, 1999; The Copyright Act, 1957; The Patents Act, 1970; The
Designs Act, 2000; The Geographical Indications of Goods (Registration and Protection) Act, 1999;The Protection of Plant Varieties
and Farmers’ Rights Act, 2001; The Semiconductor Integrated Circuits Layout- Design Act, 2000 for the purposes of these
Rules.
Rule 1 : These Rules shall be called as ‘The Madras High Court Intellectual Property Rights Division Rules, 2022’ and
shall come into force on such date as the Madras High Court may notify in the Official Gazette.
Rule 2 : In these Rules, unless the context otherwise requires:
(1). “Act(s)” means the Statutes mentioned below, as applicable:(i).

The Copyright Act, 1957; (ii).
The Designs Act, 2000;
(iii). The Geographical Indications of Goods (Registration and Protection) Act, 1999;(iv). The
Patents Act, 1970;
(v). The Protection of Plant Varieties and Farmers' Rights Act, 2001; (vi). The
Semiconductor Integrated Circuits Layout- Design Act 2000; (vii). The Trade
Marks Act, 1999;
(viii). The Information Technology Act, 2000.
(2). “Address for service” includes the address furnished by an applicant, appellant, complainant, petitioner, respondent
including the currently authorized trade mark agent, patent agent or other agent before the IPO and also the legal
practitioner, at which service of summons, notices or other processes may be effected;
(3). "Agent” includes a trade mark or patent agent as defined under Section 145 of Trade Marks Act, 1999 and Section 125 of
the Patents Act, 1970 duly authorized by the party concerned;
April 5, 2023] TAMIL NADU GOVERNMENT GAZETTE 71
(4). “Appeal” includes an appeal filed before, or transferred to, the IPD under the following sections of the respective Acts
with the following nomenclature:
(i). Under Section 91 of The Trade Marks Act, 1999 [C.M.A. (TM)]; (ii).
Under Section 72 of The Copyright Act, 1957 [C.M.A.(CR)];
(iii). Under Section 117A of The Patents Act, 1970 [C.M.A. (PT)];
(iv). Under Section 31 of The Geographical Indications of Goods (Registration and Protection) Act1999 [C.M.A.
(GI)];
(v). Under Section 56 of The Protection of Plant Varieties and Farmers' Rights Act, 2001[C.M.A. (PV)];
(vi). Under Section 42 of the Semiconductor Integrated Circuits Layout- Design Act, 2000 [C.M.A.
(SCD)];
(vii). Under Sections 36 of the Designs Act, 2000 [C.M.A. (DES)];

(viii). Under Section 62 of the Information Technology Act, 2000 [C.M.A. (IT)];
(ix). Under Sec.13(1-A) of the Commercial Courts Act, 2015 from the Commercial Courts as constituted by
Sec.3 of Commercial Courts Act,2015[ CMA-IPD)];
(x). Under Sec.13(1-A) of the Commercial Courts Act, 2015 from the Commercial Division as constituted by
Sec.4 of Commercial Courts Act, 2015[ OSA-CAD-IP]
(5). “Fee” shall mean the fees prescribed in the Schedule I to these Rules;
(6). “Form” shall mean the form prescribed in the Practice Notes to be issued separately by the High Court; (7).
“Intellectual Property Rights (IPR) Disputes”, for the purpose of these Rules, shall include only proceedings
of civil nature:
(i). pertaining to Patents, Copyrights, Trademarks, Geographical Indications, Plant Varieties, Designs, Semiconductor
integrated circuit layout-designs, Traditional Knowledge and all rights under common law, if any, associated
therewith;
(ii). relating to passing off, acts of unfair competition, disparagement, comparative advertising etc.; (iii).
relating to protection of trade secrets, confidential information and related cases or proceedings;
(iv). including tortious actions related to privacy and publicity rights involving intellectual property issues; (v).
data exclusivity, domain names and other matters relating to data protection involving intellectual
property issues, as also those arising under the Acts as defined in Rule 2(1) including appeals arising out of Sec.
62 of the Information Technology Act, 2000;
(vi). Including internet violations and any other proceeding pertaining, relating, incidental, ancillary to any of the
subject matters under clauses (i) through (v) above.
(vii). Including any challenge to the order passed under Sec. 11 of the Customs Act,1962 and related notifications
Explanation:
(i). for the purpose of these Rules, cases pertaining to the Information Technology Act, 2000 dealing with the rights
and liabilities of intermediaries, online marketplaces, e-commerce platforms involving issues relating to any of the
aforementioned rights, shall be deemed to be within the purview of intellectualproperty rights.;
(ii). intermediaries, online marketplaces, e-commerce platforms shall have the same meaning as under Section 2(w) of the
Information Technology Act, 2000.
(iii). For avoidance of any doubt, it is hereby clarified that these rules do not apply to criminal proceedings
arising out of the penal provisions under the Acts(s).
(8). “Intellectual Property Rights Division (IPD)” refers to the division in the Madras High Court presided over by
a Single Judge(s) or a Division Bench as the case may be to deal with disputes and casesconcerning IPR cases or
proceedings, as stipulated under Rule 10 below.
(9). “Intellectual Property Office (IPO)” shall mean –
(i). in case of Trademarks – Office of `Registrar of Trademarks’; (ii). in

case of Copyrights – Office of `Registrar of Copyrights’;
(iii). in case of Patents - Office of `Controller General of Patents, Designs and Trade Marks’; (iv). in
case of Geographical indications–Office of `Registrar of Geographical Indications’;
(v). in case of Semiconductor integrated circuits layout-designs – Office of the `Registrar of the Semiconductor
Integrated Circuits Layout-Design’,
(vi). in case of Designs – Office of ‘Controller General of Patents, Designs and Trade Marks’.
(10). “IPR cases or proceedings” shall include IPR disputes in the nature of all original proceedings, appellate and
other proceedings under the Acts mentioned in Rule 2(1) above, nomenclature of which is as described in Schedule I, filed before
or transferred to the IPD including:
(i). Civil suits and applications therein;(ii).

Original Applications;
(iii). Original Petitions;
Explanation:`“Original Petitions” include revocation or cancellation, or other original proceedings as prescribed under
the Act(s) and “Original Applications” includes arbitration proceedings relating to the subject matters
under the Act(s)
(iv). Writ Petitions (Civil) including those filed against orders or decisions of IPO’s which do not have express appeal
provisions in the said Act(s), and other authorities such as Customs (acting under Section
11 of the Customs Act, 1962 and the related notifications)
Explanation: Writ Petitions for the purposes of these Rules would not include those that challenge vires of any
of the provisions of the Act(s) and those which are in the nature ofPublic Interest Litigation
challenging practice or procedure of the IPO’s;
(v). Appeals and petitions from the various IPOs and

(vi). Such other proceedings which were hitherto maintainable before the Intellectual Property Appellate Board
(“IPAB”) under provisions of the Act(s) and the Commercial Courts Act, 2015.
(vii). All pending proceedings before the IPAB as transferred to the Madras High Court.
(viii). All proceedings before the Madras High Court filed under any nomenclature including Original Petition (OP)
or Civil Miscellaneous Appeal (CMA) or Writ Petition (WP) challenging orders or decisions of IPO’s or IPAB,
prior to establishment of this IPD and before or after abolishment of IPAB
Rule 3 : Extent of Application- These Rules shall govern and apply to all IPR cases or proceedings before the IPD of
the Madras High Court.
Rule 4: Jurisdiction - Every IPR case or proceeding filed before, or transferred to, the IPD shall be heardand decided by a
Single Judge of the IPD except those that are to be decided by a Division Bench including those proceedings as per Section 13 of
the Commercial Courts Act, 2015.
Rule 5 : Procedure for Suits: All Civil suits pertaining to IPR cases or proceedings under these IPD rules shall
be governed by the procedure prescribed under the Original Side Rules, 1994 read with High Court Fee Rules, 1956, as
amended from time to time, and Civil Procedure Code, 1908 as amended by the Commercial Courts Act, 2015 for such IPR Disputes
listed under Section 2 (1)(c) of Commercial Courts Act, 2015. All other IPR disputes not listed under Section 2 (1)(c) of Commercial
Courts Act, 2015 shall be governed by the Civil Procedure Code, 1908 and principles relating to/akin to case management of
suits under the Commercial Courts Act, 2015 to the extent there is no consistency with these rules will be applicable.
Rule 6: Procedure for Original Petitions (Civil Original Petition)
(1). Original petition shall be in the format specified in Form No. 1 of Practice Notes to be issued separately by the
High Court and with the fees prescribed under Schedule I hereunder and shall be accompanied by an affidavit stating
the detailed facts and grounds in support thereof and shall be verified by the party filing the same in the
manner prescribed for verification of pleadings in suits.
(2). The service of summons by the IPD on the respondents in the Original Petitions may be in the manner prescribed in the
Code of Civil Procedure, 1908 and the Madras High Court Original Side Rules, 1994.
(3). The respondent may file a Counter Statement to the said original petition, along with all documentsin support thereof
and shall be verified in the same manner as a pleading in the Suit, within
30 days from the service of summons on them or within such other period as the Court may allow on an
application made to it, together with proof of service thereof on the petitioner.
(4). In cases of revocation/cancellation of any IP Rights granted, the respective IPO shall be impleaded as a
respondent, and it is open to such respondent to file a counter statement if necessary within the time stipulated
under Rule (3) above.
(5). The parties shall file all relevant records including the relevant correspondence, documents from therespective IPO,
wherever applicable in support of the relief sought in the original petition. Averments shall be made in the original
petition specifying as to which of the documents filed form part of therecord before the IPO.
(6). If interim orders are sought, an application shall be filed setting out the grounds for such interim order.
(7). Filing of any further affidavits or pleadings shall be strictly with the leave of the Court.
(8). In case of an original petition relating to patents, the complete specification of the patent along with different
versions/claims, if relevant, as also the relevant forms filed, correspondence and documentsbefore the IPO, shall be
filed.
(9). The Court may direct the parties to submit a statement of admission and denial of documents within such period
as fixed by the Court, not exceeding one month, from the date of receiving the Counter statement or when the time
for filing the same lapses and is recorded by the Court.
(10). Framing of issues shall not be compulsory in the original petitions. In revocation/cancellation petitions, the
Court may frame issues if deemed necessary.
(11). The Court shall, as far as possible, ensure that the recording of evidence shall be completed in a time bound manner
(12). The Court may dispense with the oral examination of parties, upon the consent of all the parties to the proceeding and
proceed further based on documentary evidence on record.
(13). For the purposes of oral and documentary evidence in an Original Petition, the provisions of the Indian Evidence Act,
1872, the Code of Civil Procedure, 1908 as amended by the Commercial Courts Act, 2015 and the Madras High Court
Original Side rules,1994 as may be applicable shall apply.
(14). The Court may direct consolidation of a suit for infringement or passing off involving an IPR with any other
proceeding(s) before it, involving the same IPR at any stage.
(15). Procedures applicable to original petitions: The provisions of the Commercial Courts Act, 2015, Madras High Court
Original Side Rules, 1994 as also the practice notes / directions issued from time to time, to the extent there is
no inconsistency with these Rules, shall be applicable to original petitions filed in the IPD.
Rule 7 : Procedure for Appeals
(1). Appeals under Rule 2(4) of the present rules before the IPD shall be filed as per Form No.2 prescribed in
Practice Notes to be issued separately by the High Court, within the period of limitation, as applicable for the
respective appeals along with the requisite Court fees as prescribed in Schedule I.
(2). Appeals shall be accompanied with a synopsis, list of dates, the order impugned along with other details as required
in the Form applicable.
(3). In case any interim orders are being sought for by the parties, an affidavit shall be filed setting out the
grounds for the same along with the petition seeking such interim order.
(4). The Appellant shall disclose the details of any prior litigation pending or disposed between the parties with
respect to the subject matter in dispute.
(5). All pleadings, forms and documents forming part of the record of the proceedings, from the IPO / Commercial court,
relating to the decision / order / decree challenged in the appeal, shall accompany the appeal.
(6). Filing of any further affidavits or pleadings shall be strictly with the leave of the Court.
(7). No party shall be entitled to produce any additional evidence except with the leave of court.
(8). In all Appeals, all the parties to the proceedings before the IPO, including the respective IPO shall be impleaded, as
Respondents.
(9). The Provisions of Order XLI Code of Civil Procedure Code, 1908, Limitation Act, 1963, the Madras High Court
Appellate Side Rules, Civil Rules of Practice and Circular Order and the practice notes / directions issued by the High
Court from time to time, as far they are not inconsistent to these rules shall apply to appeals filed under these
Rules.
Rule 8 : Procedure for Writ Petitions
(1). Writ Petitions filed in the IPD, challenging any orders passed by the IPO / authority, shall consist of a synopsis and list
of dates and events, Memorandum of the writ petition including grounds of challenge, whether any other remedy was
availed of in respect of the same impugned order and if so, providedetails thereof including any order passed therein
and the prayers/ reliefs sought.
(2). The impugned order shall be annexed with the writ petition.
(4). Procedures applicable to Writ Petitions: The Madras High Court Writ Rules, 2021 and the practice notes
/ directions issued from time to time, to the extent there is no inconsistency with these Rules,shall be applicable to
writ petitions filed in the IPD.
Rule 9 : Procedure for Civil Revision Petition
(1). All rules applicable to appeals as in Rule 7 above shall apply, mutatis mutandis to the revision petitions filed
before the IPD.
(2). Civil Revision Petitions shall be governed by The Madras High Court Appellate Side Rules and Orders/ Practice
directions.
(3). Revision Petitions shall consist of the grounds of challenge, list of dates and events and the order impugned therein.
Rule 10 : Fees
(1). The fees payable for proceedings under these Rules shall be as provided under Schedule I.
(2). The process fees and other incidental charges payable in respect of the preparation and issue of notice shall be borne
by the party(ies) concerned.
Rule 11 : General Rules:
(1). All appeals except those under S.13 (1-A) of the Commercial Courts Act, 2015, original petitions, writ petitions and
revisions shall be listed before a Single Judge of the IPD unless otherwise directed to be posted before the Division
Bench.
(2). Every proceeding shall also state the appropriate IPO branch office, as necessary.
(3). In every proceeding by the Court under Section 57(4) of the Trademarks Act of 1999, the Court shalleffect notice under
Rule 100 of Trademarks Rules 2017.
(4). Any order of the High Court in any IPR cases or proceedings involving any proceedings before the IPO, shall be
served upon the IPO concerned and the said IPO shall cause such changes to the entry(ies) in the respective
Register or proceed in the matter as directed therein.
(5). An IPR Holder may obtain a certificate of validity by filing an application or a Civil Miscellaneous Petition, as the
case may be in the same proceeding wherein the decision of the Court referred to in Section
141 of Trademarks Act and Section 113 of Patents Act was given.
Rule 12: Recording of Evidence
If in the opinion of the Court it is expedient to do so, the Court may direct:
(1). The recording of evidence through video conference as per the Madras High Court Video Conferencing in Courts
Rules, 2020;
(2). The recording of evidence at any venue outside the premises of the Court;(3). The
recording of evidence by a Local Commissioner;
(4). The use of videography and transcription technology or any other form of recording evidence.
Rule 13: Expert Opinion and Evidence
(1) The IPD may, upon an application by the parties to the proceedings, or upon its own motion, seek assistance or opinion
of any person(s) with special knowledge and skills on the subject matter of theIPR case or proceedings pending before
it, who may be referred to as Expert(s), subject to clearanceof conflict of interest, a panel of which the IPD may
maintain and review from time to time.
(2) The opinion of such Expert(s) shall be recorded in writing and may be considered by the IPD.
(3) The party whose interest the evidence of the said Expert(s) is adverse to, shall be permitted to be cross- examine such
expert(s).
(4) The Court may adopt such procedure to receive the evidence from multiple Expert(s) as it deems fit, including
examining such expert(s) simultaneously.
Rule 14: Consolidation of matters or cases or proceedings or disputes
(1). Where there are multiple proceedings relating to the same or related IPR, irrespective of whether the said
proceedings are between the same parties or not, the IPD may such expert(s)on its own motion or on an
application of any other parties, and after hearing such of them as desired to be heard, wherever appropriate, to direct
consolidation of proceedings, hearings, and also to direct consolidated recording of evidence/ common trial and
consolidated adjudication.
(2). If the Court is of the opinion that any matter pending before a Commercial Court is to be consolidated with a
matter pending before the IPD it may exercise powers of transfer under Section 24, Code of Civil Procedure, 1908 for
transfer and consolidation of such matter to itself.
Rule 15: General Clause
Procedures not specifically provided for in these Rules shall, in general, be governed by The Civil Procedure Code,
1908, The Commercial Courts Act, 2015 and the Madras High Court Original Side Rules, 1994, Madras High Court
Appellate Side Rules, 1965 and Civil Rules of Practice and Circular Orders, and Practice notes / directions issued by the
High Court from time to time, wherever any ofthese rules are applicable, as far they are not inconsistent to
these IPD rules.
Rule 16: Power to remove difficulties
1. If any difficulty arises in giving effect to the provisions of these Rules, the IPD may, by order, make such
provision not inconsistent with these Rules as may appear to be necessary or expedient for removing the difficulty.
2. The High Court may issue such practice notes / directions from time to time for the implementation
of these rules, including amendments to or withdrawal of any of the Rules herein,
Rule 17: Cases transferred from the IPAB
All cases under various categories received in the Madras High Court from the IPAB shall be renumbered, given the
nomenclature as provided for in these Rules in Schedule I and listed before the IPD without any fresh or
additional court fees to be levied.
SCHEDULE-I
S. Nature of Nomenclature in
Act Section under which filed Court Fees Payable
No. proceeding HIGH COURT
1) Trademarks Sec.47: Removal from Register and Original OP (TM) IPD Rs.10,000/-
imposition of limitations on ground of
non-use
2) Trademarks Sec.57: Power to Cancel or vary Original OP (TM) IPD Rs.10,000/-
registration and to rectify the register.
3) Trademarks Sec. 91. Appeal against order of the Appellate CMA (TM) IPD Rs.10,000/-
Registrar of Trademarks
4) Copyrights Sec. 19A Petition relating to Original OP (CR) IPD Rs.5000/-
assignment of Copyright
5) Copyrights Sec. 19A, 23,31,31A,31B, 31C,31-D, Original OP (CR) IPD Rs.10,000/-
32 and 33A. per Section 31-Statutory license
for broadcasting of literary and musical
works and sound recording etc.
6) Copyrights Sec. 50. Rectification of Register by Original OP (CR) IPD Rs.10,000/-
Appellate Board/IPAB
7) Copyrights Sec. 72. Appeal against orders of Appellate CMA (CR) IPD Rs.5000/-
Registrar of Copyrights
8) Patents Sec. 64 Revocation of Patents by the Original OP (PT) IPD Rs.10,000/-
Appellate Board/IPAB
9) Patents Sec. 71. Rectification of Original OP (PT) IPD Rs.10,000/-
Register by Appellate
Board/IPAB (Now HC)
10) Patents Sec. 117-A. Appeals to the Appellate Board Appellate CMA (PT) IPD Rs.10,000/-
from the order of the Controller or Central
Government.
11) Geographical Sec. 27. Power to cancel or vary registration Original OP (GI) IPD Rs.5000/-
Indications and to rectify the register.
Application for rectification of the register
by cancelling, expunging or varying of any
entry.
12) Geographical Sec. 31. Appeals to the Appellate Board Appellate CMA (GI) IPD Rs.5000/-
Indications (now HC) from the order of the Registrar.
13) Protection of 56. Appeal against orders or decision of Appellate CMA (PV) IPD Rs.5000/-
Plants Authority or Registrar relating to
Varieties and registration, claim for benefit sharing,
Farmers Right revocation of compulsory licence etc.
Act
14) Commercial Under Sec.13 (1-A) of the Commercial CMA-IPD Rs.2000/-
Courts Act, Courts Act, 2015 from the Commercial Appellate
2015 from the Courts as constituted by Sec.3 of
Commercial Commercial Courts Act,2015
Courts
15) Commercial Under Sec.13(1-A) of the Commercial Appellate OSA-CAD-IPD As per the Tamil Nadu
Courts Act, Courts Act, 2015 from the Commercial Court-fees and Suits
2015 from the Division as constituted by Sec.4 of Valuation Act, 1955
Commercial Commercial Courts Act, 2015 (Tamil Nadu Act XIVof
Courts 1955)
S. Nature of Nomenclature in
Act Section under which filed Court Fees Payable
No. proceeding HIGH COURT
IPR Suits CS-COMM DIV- As per the Tamil Nadu
under IPD Court-fees and Suits
Section 2 Valuation Act, 1955
(1)(C) of (Tamil Nadu Act XIVof
commercial 1955)
court 2015
IPR Suits CS-IPD As per the Tamil Nadu
for those Court-fees and Suits
not listed Valuation Act, 1955
in Section (Tamil Nadu Act XIVof
2(1)(C) of 1955)
commercial
court 2015
WP for IPR WP-IPD As per the Tamil Nadu
Court-fees and Suits
Valuation Act, 1955
(Tamil Nadu Act XIVof
1955)
Note: The Rule 10(1) and Schedule I shall come into force from the date the necessary
amendment(s) to theTamil Nadu Court Fees and Suit Valuation Act, 1955 are given effect to by the
Government of Tamil Nadu.
High Court, Madras, P.

DHANABAL,
23rd March 2023. Registrar
General.
MOOT PROPOSITION
The Republic of Indiga is a parliamentary democracy and the 7th largest economy in the
world. The Republic of Indiga introduced a ‘Make in Indiga’ scheme under which they
constituted a ‘Public Innovation Body’. The body was established to encourage various
exceptional tech initiatives. Out of which one of them was to provide financial grants to
create Artificial Intelligence Robots. Based on the proposal submitted by M/S Creative
AI Ltd, a tech giant in the Republic of Indiga, was selected for funding by the Public
Innovation Body. A contract was signed between the Public Innovation Body and M/S
Creative AI Ltd and consequently funds were released for the creation of advanced AI
robots capable of creating artistic works. M/S Creative AI Ltd was a tech start-up
company started in the year 2018. Its proprietor Dr. Evan used cutting edge technology
to create advanced AI robots. A series of AI robots were developed by him. The AI
robots worked by ingesting large amounts of labeled training data which were analysed
for correlations and patterns. These patterns were in turn used by the AI, to come up
with future predictions. After receiving the funding from Public Innovation Body several
AI robots were created by M/S Creative AI Ltd. The latest was an AI humanoid named
‘Raha’, which was specifically designed to create novel digital art works.
Raha was a highly advanced autonomous AI humanoid which used state of the art
machine learning algorithms to produce unique digital artworks onto a screen. Over a
period of time Raha had created several digital art paintings which were highly popular,
leading to exhibitions and commercial use of its generated artworks both within and
outside Indiga. The paintings also were subject of criticism from many quarters alleging
that the AI obtains inputs from various websites and other internet sources and that the
paintings were a mere modification of existing well known paintings and photographs.
In January 2023 M/S Creative AI Ltd released the latest digital art of Raha at an art
gallery ‘DigiART’. DigiART was an art gallery that specialised in portraying digital art
made by artists. DigiArt exhibited artworks after review and also based on the terms
agreed with the owner. The work of Raha, titled ‘Beauty Queen’ was showcased at
DigiArt’s special display, focusing on digital artworks created by Artificial Intelligence
robots. The artwork ‘Beauty Queen’ portrayed the picture of a poised and confident
woman, adorned in a resplendent maillot, exuding timeless elegance and intelligence,
embodying a harmonious blend of classic refinement and contemporary allure.
The artwork received widespread attention, pursuant to which M/S Creative AI Ltd
decided to proceed for copyright registration. In the application Raha was named as the
author of the work. The Copyright Registry rejected the application stating that an AI
cannot be an author within the purview of the Copyright Act against which an appeal is
pending. Lidia is a famous actress of Indiga. She is a celebrated actress whose talent has
left an indelible mark on the entertainment industry. With a magnetic on-screen presence
and versatility in portraying diverse roles, Lidia has garnered a devoted fan base. In
2023 August, she filed a copyright infringement case against M/S Creative AI Ltd
stating that the artwork resembles her copyrighted work (photograph which she had
uploaded in Facebook). Further she alleges that the digital art depicting her amounts to
obscenity and violation of her privacy.
In the midst of this legal dispute, the trial court›s findings unveil a nuanced scenario.
Raha’s algorithms, in their learning process, inadvertently incorporated elements from
various internet sources without proper authorization. The generated artworks share
semblance with pieces by multiple traditional artists. The court observes that the digital
art by Raha resembles Lidia’s face, intensifying the legal complexity. This intricate
backdrop prompts a myriad of legal queries concerning copyright infringement,
obscenity, privacy breaches, and the ethical implications of AIin artistic creation. The
case has come up before the High Court of Waren.
The laws of Indiga are pari-materia with India. The following issues has come up before
the High Court of Waren for consideration:
ISSUES
1. Whether the Copyright law of Indiga recognises artificial intelligence humanoids like
Raha as the author of the generated artworks?
2. Whether the artistic work created by Raha passes the originality test under the
Copyright Act?
3. Whether using copyrighted material to train AI can be treated as fairuse/dealing?
4. Whether an AI is capable of committing a criminal offence?

PRELIMINARY SET OF CLARIFICATIONS
1. Did the party seek redress from the appellate board before petitioning to the high court?
No clarification is required in this regard. Kindly refer to the Moot Proposition.
2. Which legal framework, the existing laws of the Indian Penal Code (IPC) or the
amended Bharatiya Nyaya Sanhita, should be applied in the context of the moot case
under consideration?
3. Is citing international conventions and their corresponding sections acceptable within

the context of the moot case?
Yes.
4. Whether the case between the company and copyright registry is pending or not?
5. Whether the case from trial court has been transferred or appealed to high court of
warning?
The party who filed appeal before the High Court was Lidia.
6. Who is the respondent in the case?
7. Its mentioned in the moot proposition pdf that each team shall be provided with the
team code at the time of registration ,but we haven't received any such team 2 code
through mail.so we kindly want to know that if we'll get any team code in upcoming
dates or should we submit the registration copy in any ways to get our personal team
code I’ve also submitted our payment copy.
You will be allotted the team code in the upcoming days.
8. It is stated in the rules that there will be a penalty for sending in the memorials with
the wrong file name. However, I do not see any guidelines to naming the file. Could you
please clarify the correct format as early as possible?TC stands for Team Code; A stands
for Appellant/s; R stands for Respondent/s.
9. % of semblance in Lidia's photo on facebook with Raha's artistic work.

10. What is the decision of the trial court and why did they go to the High Court as the
question of law is decided in the supreme court.
11. What is the training data used?
12. Whether Lidia filed writ petition before the High court regarding infringement of
right to privacy?
13. Whether Lidia Facebook photo was copyrighted ?
14. Whether High court clubbed/ transferred the appeal regarding rejection of
application for copyright registration of M/S creative AI ltd.? (Since, Appellate Board is
the authority to decide on rejection of application and appeal is pending still now)
15. Did M/S CREATIVE AI company or Lidia went for an appeal in the higher court ?
For clarification refer to question no.5 above.
16. Who are the petitioner(s) and respondent(s)?
For clarification, refer to Question No.5 above.
Released on 20.02.2024.
FINAL SET OF CLARIFICATIONS
1. It has been mentioned in the proposition that the case has been taken up by the High
Court. How exactly did the case get transferred to the same? Was it an appeal, or was it
under article 228 of the Constitution? An appeal was filed before the High Court by
Lidia.
2. It has been stated in the proposition that "The court observes that the digital art by
Raha resembles Lidia’s face, intensifying the legal complexity. This intricate backdrop
prompts a myriad of legal queries concerning copyright infringement, obscenity, privacy
breaches,
and the ethical implications of AI in artistic creation. The case has come up before the
High Court of Waren." Here the Trial court observed in favour of Lidia in such a
situation what was the reason for Lidia's appeal to High Court?
Participants are requested to confine themselves to the issues provided in the Moot
proposition and may not challenge the maintainability of the case. Kindly confine the
arguments to the Moot Proposition.
3. What was the order given by the Trial court?
No clarification is required in this regard. Kindly confine the arguments to the Moot
Proposition.
4. Whether High court clubbed/ transferred the two cases to itself?
No.
5. In the Ques 5, it is mentioned that Lidia has filed the appeal in High Court of Waren.
But as per facts, there is no mentioning that trial courts has made a decision or made a
decision against Lidia. It is only mentioned that the court has observed certain things
that too in favor of Lidia. Therefore, in this case the answer mentioned Ques 5 seems
inappropriate.
proposition and may not challenge the maintainability of the case.
6. Is the pending appeal regarding copyright registration of Raha and appeal filed by
Lydia are clubbed or transferred to High Court?
No.
7. Whether the copyright registry rejecting Raha as author case (paragraph 5) is pending
before the high court or tribunal ?
8. Why did lidia approached high court even the district Court verdict is favor to her as
per the proposition?
9. Based on Clarification no.5 and the last paragraph of the moot proposition,
Since observations of the trial court are already in favour of Lidia how is she the party
appealing to the High Court? It can thus be observed that both are contradicting each
other Participants are requested to confine themselves to the issues provided in the Moot
10. The proposition states trial court findings, whether Lidia approached it without
exhausting civil remedies under the copyright act?
11. What was the decision of the trial court,if not which lower court, against which Lidia
has appealed to the High court(as per the preliminary clarifications) Participants are
requested to confine themselves to the issues provided in the Moot proposition and may
not challenge the maintainability of the case.
12. “ AI cannot be an author within the purview of the Copyright Act against which an
appeal is pending." Whether this appeal is heard together along with Lidia's appeal No.
Released on 02.03.2024
CASES REFERED
Amar Nath Sehgal vs Union Of India (Uoi) And Anr. on 21February, 2005
Equivalent citations: 117(2005)DLT717, 2005(30)PTC253(DEL)
2005 (30) PTC 253 (Del)
Author: Pradeep Nandrajog
Bench: Pradeep Nandrajog
JUDGMENT
Pradeep Nandrajog, J.
1. Copyright is one of the three main branches of the traditional law of intellectual
property, along with patent law and trade mark law. Overshadowed historically by the
economic worth of patents and trade marks, the plaintiff who believes that there can be
no beauty without a soul, has brought the present action, hoping that the soul (copyright)
is given its due place and recognition in the history of law.
2. The Cinderella (Copyright) of the family of intellectual property, long pushed

into the chimney seeks, in the present proceedings, to endow herself with the gift of the
fairy godmother - the magical pumpkin coach and the mice footmen.
3. Plaintiff's pleadings takes one back to the year 1957. A peep behind the
pleadings would take us back to the early fifties.
4. India was a nacent democracy. The world was divided into two camps, the
American camp and the Soviet Russia camp. Pt. Jawahar Lal Nehru, the first Prime
Minister of this country, a man of vision, realised that to be non-aligned was the best
policy. India, under the leadership of Pt. Jawahar Lal Nehru was a pioneer of the non-
aligned movement. Fledgling India was asserting itself in the community of nations.
International delegations were frequenting the territory of India. Conferences had to be
held. Large number of delegates had to be accommodated. A building was conceived to
be the hub of international and national conferences. It was named ''Vigyan Bhawan''. In
the note to the Cabinet Secretary, V.N. Sukthankar recorded in file No. 2 (223)/48-PMS
Jawahar Lal Nehru wrote:
The Central Government as well as the State Governments are putting up many public
buildings. Some of these buildings are big and imposing structures, like the building for
the Supreme Court or the Theatre, or the big structure now on the point of completion
which is meant for the eXpansion of the Central Secretariat.
I think that all these major buildings should encourage Indian artists to function in some
way. Sculptors, painters, designers, etc. could be asked to cooperate. There might
occasionally be woven tapestries. This will cost very little in comparison with the total
cost of the building. But it will encourage Indian artists and would be generally
welcome, I think, by the public. (Refer selected works of Jawahar Lal Nehru, 2nd series,
Vol.-26 1st June, 1954- 30th September, 1954)
5. The brick, mortal and concrete structure named ''Vigyan Bhawan'' may have
been an architectural feat, imbibing the science of construction, but the building was too
lifeless. It needed a soul.
6. What better soul could a building have other than being endowed with the
cultural heritage of India. After all, Vigyan Bhawan was conceived to house
international conferences and ought, therefore, to have reflected India's cultural heritage.
Plaintiff, Amar Nath Sehgal, received a communication from the Union of India on
16.7.1957, EX.P-1. It reads as under :-
CENTRAL PUBLIC WORKS DEPARTMENT No. 47/2/57-WI Dated New Delhi, 16
July,1957 To Shri A.N. Saigal, 192-193, Constitution House, Curzon Road, New Delhi.
Sub: Decoration of the Vigyan Bhawan in New Delhi.
Dear Sir, You are probably aware that the Govt. Of India have set up a Decoration
Committee to suggest and advise on the decoration work to be done in important public
buildings in this country. The function of that Decoration Committee is to discuss the
subjects of decoration sponsored by various Ministries and Govt. Departments and then
recommend tentative themes for decoration work and also suggest a few Artists for
eXecuting the decoration jobs.
In their siXth meeting held on 26.4.57 the Decoration Committee considered the
proposal for the decoration of the Vigyan Bhawan and recommended that on the inside
of the eXternal walls of the foyer on the ground floor the decoration work should consist
of wire
sculpture eXtending from the staircase right up to the lifts. The Committee recommend
your name for the job. Hence, I would request you please to let us know whether you
will undertake the job and also give your quotation for doing the work. If it is necessary
for you to see the site, you may, by all means, see it. We can arrange for showing you
the place by previous appointment.
We will need your preliminary desire for the proposed decoration work for which you
will be paid Rs.300/- as token amount to cover your requests etc. Yours faithfully, sd/-
for Chief Engineer''
7. Plaintiff readily agreed to the offer contained in the letter dated 16.7.1957 as it
was indeed a matter of honour to accomplish the task. Research and untiring work,
spanning over half a decade produced a piece of art - a bronze mural sculpture -
manifesting itself having 140 ft. span and 40 ft. sweep on one of the wall's of Vigyan
Bhawan. The wall was no ordinary wall as it was the lobby of Vigyan Bhawan i.e. the
entrance. The mural was a delicate balance between cultural and material
aspects in national perspective and science of rural and modern India being its theme.
8. The mural continued to occupy it's place of pride at the lobby of Vigyan Bhawan
till it was pulled down and consigned to the store room of the Union of India in the year
1979. This act of destruction of the mural was without the permission, consent or
authorization of the plaintiff.
9. According to the plaintiff, the mural acquired the status of a national treasure,
representing the essential part of Indian art heritage. According to the plaintiff, the mural
became an important part of India's cultural heritage.
10. Unfortunately for the plaintiff, the motivating force behind the mural, late Pt.
Jawahar Lal Nehru was no longer in the world of living and those in charge of the
country
had little concern for the cultural heritage of the country. A little sympathy came from a
minor functionary in the Government of India. Shri J. Sagar, Joint Secretary, Ministry of
Human Resource Development, addressed a letter to the Joint Secretary, Ministry of
Urban Development on 22.4.1991. He wrote :-
''Although it is possible to advise Shri Amar Nath Sehgal to simply go to Court, I do feel
that when the Government had commissioned an important work from a well-known
artist, it would be appropriate for the Government to try to deal with the artist's work
fairly. ''
11. Plaintiff ran from pillar to post. No positive action was taken. The mural created
by the plaintiff was no longer available for viewing by the public of India. The mural
having been put in the godown of the Government of India, the plaintiff was left with no
alternative, but to knock at the doors of the Court. Taking shelter of Section 57 of the
Copyright Act,1957, the present suit was filed praying for declaration that the plaintiff's
special rights under Section 57 of the Copyright Act, 1957 were violated by the
defendants, for which the defendants should tender an apology. A permanent injunction
was prayed for to restrain the defendants from further distorting, mutilating or damaging
the plaintiff's mural. Damages in the sum of Rs.50 lacs towards compensation for
humiliation, injury, insult and loss of plaintiff's reputation were prayed for. Lastly,
decree for delivery-up directing the defendants to return to the plaintiff the mural for
restoration at the cost of defendants was sought.
12. On 29.5.1992, my esteemed brother, Jaspal Singh, J. passed an interim order and
while so doing, epitomized issues which required to be considered in the present
proceedings. I am but tempted to reproduce the interim order dated 29.5.1992 as the
same chartered the course of further proceedings in the suit. The order reads as under :
Present : Mr. Parveen Anand for plaintiff.
Sometimes in the year 1962 the barren walls of Vigyan Bhawan were blessed with a mural
. 140 feet in length and 40 feet in height, it was made of bronze and had taken years to
complete. Soon enough, it became an essential part of India's best art heritage. And, why
not? After all it had been created by the magic hands of eminent
sculptor Amar Nath Sehgal, approved by connoisseurs of all that is beautiful like Dr.
Mulk Raj Anand and M.S. Randhawa and liked by the poetic eyes of Jawarhal Lal
Nehru For years, it was dance to the discerning eyes and song to the ears who could
hear. However, in the year 1979 or so, it was pulled down, removed and dumped in a
store house. It is said that improper handling caused immense damage and that bit and
pieces have altogether disappeared including the name of its creator. Not that all were
cruel. On April 22, 1990 a kindly unnamed Joint Secretary, Ministry of Human
Resources Development is reported to have observed :-
''Although it is possible to advise Shri Amar Nath Sehgal to go to Court, I do feel that
when the Government had commissioned an important work from a well-known artist, it
would be appropriate for the Government to try to deal with the artist's work fairly.'' But
then, dead eyes and deaf ears do not respond. They did not respond even to a legal
notice. Hence, this suit for damages and injunction restraining any distortion, mutilation
or modification of the work. The plaintiff, of course, is Amar Nath Sehgal. However, it
is his application under Order 39 of the Code which needs immediate attention. He seeks
an eX- parte interim order restraining the defendants from causing further loss and
injury to the mural.
In a country rightly proud of its creativity and ingenuity, men who can hardly
distinguish the heads of Venus from those of Mars cannot be allowed to decide the fate
of artists who create our history and heritage. The cry is ''IIs ne passernot pas'' and in
such a situation Indian Courts will always be found dynamic and responsive. Section 57
of the Copyright Act provides the light.
Let notice be issued to the defendants for July 22, 1992. Till then they are restrained
from causing any further loss and injury to the plaintiff's mural and from doing anything
as is prejudicial to his honour or reputation as the author of the work Sd/-
Jaspal Singh, J.''

13. Union of India defended the suit by urging that it was the owner of the mural and
had a right to consign the same to a store room. Plaintiff was stated to have been paid
the price for the work. defense of limitation was also set up. It was averred that the
mural was removed in the year 1979 and the suit being filed in the year 1992 i.e. after 13
years from the date of the offending act, was barred by limitation.
14. Following issues were framed on 1.4.2003 :
1) Whether the suit is barred by limitation?
2) Whether the plaintiff has rights under Section 57 of the Copyright Act,1957 in
the impugned work although the copyright in the same has been vested to the defendant?
3) Has the defendant violated the plaintiff's rights under Section 57 of the said Act?
4) Whether the plaintiff has suffered any damage?
5) Relief.
15. Parties have led evidence, both documentary as well as oral. Let me deal with the
issues as they have been framed in the same sequence as framed.
Issue No. 1.
16. Issue was framed for the reason the mural sculpture was stated in the plaint to
have been removed, and in the process damaged and mutilated in the year 1979.
Defendants pleaded that cause of action accrued to the plaintiff to file the suit in the year
1979. Being filed in the year 1992, defendants pleaded that suit was barred by limitation
since period of limitation was three years.
17. In the replication, plaintiff pleaded that since suit was one for violation of his
moral rights which would last for his lifetime and having not waived the same, suit
could not be said to be barred by limitation. Further, it was pleaded that after the mural
was removed, plaintiff approached various functionaries of the Government of India for
redressal and at no stage the government of India unequivocally refused the claim of the
plaintiff of having moral rights in the integrity of the mural. It was non-redressal which
led to the filing of the suit.
18. Evidence on record establishes that till as late as 6.6.1991, Government of India
acknowledged the fact that the mural needed respect evidenced, by a letter, though
proved during trial but not eXhibited, being letter dated 6.6.1991 addressed by Ms.
Indrani Sen, Joint Secretary, Government of India, Ministry of Urban Development, to
the plaintiff. The letter reads as under:-
''Dear Shri Sehgal, Kindly recall your discussions with me regarding the bronze mural
done by you which had earlier been in the lobby of Vigyan Bhavan and your request that
the mural shuld be either appropriately utilised or returned.
2. We have eXamined the issue and feel that the mural can be re-installed in the
Vigyan Bhavan anneXe in any location of your choice. As far as its installation in the
main Vigyan Bhavan is concerned, nothing definite can be said at this stage as the
renovation is under planning.
3. I have also physically seen the dis-mantled mural. While it is true that at present
the mural is merely dumped in a store but the pieces are largely in-tact and are not
damaged.
4. If you agree with its installation at the Vigyan Bhavan AnneXe, you may kindly
let us know when you would like to visit the same for choosing the appropriate location,
With regards, Yours sincerely, Sd/-
(Indrani Sen)''
19. Aforesaid letter was written to the plaintiff in response to letter dated 22.4.1991
addressed by Sh.
J. Sagar, Joint Secretary, Ministry of Human Resource Development, Government of

India, to which I have referred to in para 11 above.
20. On the issue of proof of letter dated 6.6.1991 written by Ms. Indrani Sen, it may
be noted that the letter was anneXed as AnneXure P.4 by the plaintiff Along with his
affidavit by way of evidence, in which affidavit, plaintiff deposed that he kept on
contacting various officials in the government for redressal of his grievance and the
letter in question was received by him. Witness of the defendant Mr. S.K. Jain,
EXecutive
Engineer, Vigyan Bhavan when cross-eXamined on the letter stated that it appears to
have been written by Ms. Indrani Sen, Joint Secretary, Ministry of Urban Development
but stated that he did not recognize her signatures. On this issue, it is also relevant to
note that on 1.9.1991, plaintiff caused to be served on the defendants a legal notice
through his counsel Mr. Rajiv Dhawan, which notice was proved as AnneXure P.5 by
the plaintiff in his affidavit by way of evidence. Witness of the defendants when
confronted with the legal notice, admitted receipt thereof. It is of relevance to note that
letter dated 6.6.1991 has been referred to in the legal notice dated 1.9.1991. Defendants
have not proved that they rebutted the notice dated 1.9.1991. Factual contents of the
notice being never refuted by the defendants, I hold that the plaintiff has successfully
established that letter dated 6.6.1991 was received by him on being issued to him by Ms.
Indrani Sen, Joint Secretary, Ministry of Urban Development, Government of India.
Limitation would accordingly run after 6.6.1991 as till that date, defendants eXpressed
willingness to restore the mural but did not put to action there commitment.
21. Issue No. 1 is accordingly decided in favor of the plaintiff and against the
defendants. It is held that the suit is within limitation.
22. Before dealing with the legal issues, let me briefly note the evidence on record.
That the mural sculpture was authored by the plaintiff was not denied by the defendants.
Plaintiff's statement in the affidavit by way of evidence that his resume appearing in the
Marquis ''Who's Who in the World'' (17th Edition, 2000) anneXure P-1A has gone
unrebutted. The resume reveals that the plaintiff is a sculptor of international repute and
fame. His work has been displayed internationally in over 20 countries. He is the
recipient of Lalit Kala Academy Award and the President of India Award for eXcellence
in Art and Culture. The international eminence of the plaintiff could be gauged by the
fact that the Government of India commissioned him to install the mural on the walls of
Vigyan Bhavan for the reason that International Conferences were and are continued to
be held in Vigyan Bhavan. Who does not know Amarnath Sehgal in India? I am sure that
if a survey was carried out, every literate person in India would respond that he has
heard about the plaintiff and his works. The website of the President of India has
displayed on the website the contributions of the plaintiff. His EXcellency APJ Abdul
Kalam, the President of India in his address on 6.10.2004 at the inauguration of
paintings and eXhibition of the plaintiff informed the audience that the imagination and
creativity of the plaintiff has influenced
human lives. Plaintiff's works have been recognized by leaders of the world all over.
Government of India gifted his sculpture to Mr. Jimmy Carter, President of United
States of America. It was the creation of the plaintiff. He named it ''Rising Spirits''. Mr.
Jimmy
Carter had the following to say when he received the gift :- ''Sehgal's impressive bonze
inspires optimism that we can continue to improve the lives of all our people.'' Plaintiff
had gifted another sculpture to President Richard NiXon called ''Landing on the Moon''
on the success of Apollo Mission. It was acknowledged by the White House as not only
a splendid gift but a deeply impressive tribute to the accomplishment of the men of the
Apollo XI Mission.
23. Evidence on record clearly brings out the celebrity status of eminence enjoyed by
the plaintiff in the field of art and culture. What would be the relevance thereof and in
what manner it influences the copyright law in India takes me to the core area of the
problem. The moral rights of an author as flowing from Section 57 of the Copyright Act,
1957, and legal consequences thereof.
24. In the material world, laws are geared to protect the right to equitable
remuneration. But life is beyond the material. It is temporal as well. Many of us believe
in the soul. Moral rights of the author are the soul of his works. The author has a right to
preserve, protect and nurture his creations through his moral rights.
25. When an author creates a work of art or a literary work, it is possible to

conceive of many rights which may flow. The first and foremost right which comes
to one's mind is the ''Paternity Right'' in the work, i.e. the right to have his name
on the work. It may also be called the 'identification right' or 'attribution right'.
The second right which one thinks of is the right to disseminate his work i.e. the
'divulgation or dissemination right'. It would embrace the economic right to sell the
work or valuable consideration. Linked to the paternity right, a third right, being
the right to maintain purity in the work can be thought of. There can be no purity
without integrity. It may be a matter of opinion, but certainly, treatment of a work
which is derogatory to the reputation of the author, or in some way degrades the
work as conceived by the author can be objected to by the author. This would be
the
moral right of ''integrity''. Lastly, one can conceive of a right to withdraw from
publication ones work, if author feels that due to passage of time and changed
opinion it is advisable to withdraw the work. This would be the authors right to
''retraction''.
26. EXcept for the 'divulgation or dissemination right' which perhaps is guided
by commercial considerations, the other three rights originate from the fact that
the creative individual is uniquely invested with the power and mystique of original
genius, creating a privileged relationship between a creative author and his work.
As I understand, this is the source of the last three rights noted in para 25 above
and, therefore, could be captioned under the banner ''The Authors Moral Rights''.
27. The community of nations set the International Standards for moral rights
protection of the author under the 'Berne Convention For the Protection of Literary and
Artistic Works'. Since its inception in 1886, the Berne Convention has been the primary
instrument of International Copyright Law. Article 6bis of the Berne Convention enjoins
the members of the Berne Union to provide legal recognition for the moral rights of
attribution and integrity in a work in which copyright eXits. Article 6bis of Bere
Convention reads :-
''(1)Independently of the author's economic rights, and even after the transfer of the said
rights, the author shall have the right to claim authorship of the work and to
object to any distortion, mutilation or other modification of, or other derogatory action
in relation to, the said work, which would be prejudicial to his honour or reputation.
(2) The rights granted to the author in accordance with the preceding paragraph
shall, after his death, be maintained, at least until the eXpiry of the economic rights, and
shall be eXercisable by the persons or institutions authorised by the legislation of the
country where protection is claimed. However, those countries whose legislation, at the
moment of their ratification of or accession to this Act, does not provide for the
protection after the death of the author of all the rights set out in the preceding paragraph
may provide that some of these rights may, after his death, cease to be maintained.
(3) The means of redress for safeguarding the rights granted by this Article shall be
governed by the legislation of the country where protection is claimed.''
28. Should right to assert authorship in a work, include a right to object to distortion,
mutilation or modification in a work? Why not, if it is prejudicial to the honour or
reputation of the author. The contours, the hue and the colours of the original work, if
tinkered, may distort the ethos of the work. Distorted and displayed, the viewer may
form a poor impression of the author. A good name is worth more than good riches.
(Shakespear's Othello, Act-II, Scene III, pp.167) :-
Good name in man and woman, dear my Lord Is the immediate jewel of their souls;
Who steals my purse, steals trash;
Its something nothing;
T'was mine, t'is, and has been slave to thousands;
But he that filches from me my good name, Robs me of that which not enriches him And
makes me poor indeed.
29. Under Article 6bis of the Berne Convention, the moral right of integrity enables
the author to seek appropriate legal remedies if the moral right of attribution and
integrity in his work is violated. The moral rights set out in the Berne Convention are
significant because they continue to be vested in the author even after he has parted with
his economic rights in his work.
30. The right of the author under Article 6bis of the Berne Convention provides that
an author may 'object to any distortion, mutilation or modification' of his work which is
deemed to be 'prejudicial to his honour or reputation'.
31. As formulated in the Berne Convention, vindication of moral rights, being

hedged with the precondition of proof of negative impact on the authors reputation,
somewhat restricts the span and sweep of the moral right. It is argued by some that
where a work is destroyed, since it no longer eXists and cannot therefore be viewed by
anyone, where is the occasion for prejudice to the authors reputation. Per contra, it could
be argued as indeed was the submission made by Shri Praveen Anand, learned counsel
for the plaintiff, that destruction of a work can prejudice an author's reputation by
reducing the volume of his creative corpus. The proponents of the narrow view argue
that derogatory treatment of a creative work would mean deletion to, distortion,
mutilation or modification to, or use of the work in a setting which is entirely
inappropriate. The opponents of the narrow view would argue that deletion to, or
mutilation is after all 'a treatment of a work' and so is 'destruction'. It is the eXtreme and
ultimate form of mutilation. They argue that mutilation is nothing but destruction so as
to render the work imperfect.
32. Plaintiff, Amar Nath Sehgal, propounds the wider view. Union of India urges to
the contrary.
33. While granting interim relief to the plaintiff, Jaspal Singh, J. observed that
Section 57 of the Copyright Act, 1957 would be the key to open the door of the dispute
raised in the present suit. Section 57 as originally enacted reads as under:-
''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 to claim the authorship of the work as well as the right to restrain, or claim
damages in respect of-
(a) any distortion, mutilation or other modification of the said work; or
(b) any other action in relation to the said work which would be prejudicial to his
honour or reputation.
(2) The right conferred upon an author of a work by sub-section (1), other than the right
to claim authorship of the work, may be eXercised by the legal representatives of the
author.
34. The words 'prejudicial to his honour or reputation' found place in sub clause (b)
of sub section
(1) of section 57. Legislature thought that the eXisting provisions, whereby even
distortion, mutilation and modification of the work which are not prejudicial to the
author's honour or reputation would violate the author's special rights may have
anomalous unintended consequences and were, incidentally, in eXcess of the
requirement of Berne Convention. The section was amended to read:
''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 the authorship of the work; and
(b) to restrain, or claim damages in respect of any distortion, mutilation,

modification or other act in relation to the said work which is done before the eXpiration
of the term of copyright 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), other than the
right to claim authorship of the work, may be eXercised by the legal representatives of
the author.''
35. Copyright law in India was thus brought at par with the Berne Convention. In
conformity with the Berne Convention, Section 57 of The Copyright Act 1957 protects
the author's right of paternity as also the right of integrity. Distortion, mutilation or
modification if established to be prejudicial to the author's reputation or honour are
actionable.
36. Shri Praveen Anand urged that an action under Section 57 need not be restricted
to injunction or damages. The action could well be to preserve the ethic of the work. As
noted above, he urged that mutilation would also mean destruction.
37. The mural sculpture decorating Vigyan Bhawan, is the result of plaintiff's
creative effort. It has not only enhanced plaintiff's celebrity, but has also attained the
status of a modern national treasure of India.
38. Authorship is a matter of fact. It is history. Knowledge about authorship not only
identifies the creator, it also identifies his contribution to national culture. It also makes
possible to understand the course of cultural development in a country. Linked to each
other, one flowing out from the other, right of integrity ultimately contributes to the
overall integrity of the cultural domain of a nation. Language of Section 57 does not
eXclude the right of integrity in relation to cultural heritage. The cultural heritage would
include the artist whose creativity and ingenuity is amongst the valuable cultural
resources of a nation. Through the telescope of section 57 it is possible to legally protect
the cultural heritage of India through the moral rights of the artist.
39. As observed by Jaspal Singh, J. in his interim order, India is ''rightly proud of its
creativity and ingenuity''. Artists play an important social role by contributing to cultural
heritage thereby also elucidating history.
40. Why do patents and copyrights go into the public domain after a lapse of time?
(duration governed by municipal legislation). The answer is simple. Intellectual property
and knowledge are interconnected. Intellectual property embodies traditional thought
and knowledge with value addition. Thus, physical destruction or loss of intellectual
property has far reaching social
consequence. Knowledge which has grown with it is also lost.
41. As opined by Mira T. Sundara Rajan in an article published in the International

Journal of Cultural Property. Vol.10. No. 1, 2001 pp. 79-94 Moral Rights and the
Protection of Cultural Heritage:
''The rights of attribution and integrity are particularly apposite to the cultural domain.
Apart from the interests of individual authors in maintaining their standing and
reputation, these moral rights are closely linked to a public interest in the maintenance of
historical truth and cultural knowledge. Moral rights also promote the development of a
social attitude of respect toward individual creativity. While authors must accept the
responsibilities which accompany the privileges of creative work, is incumbent upon
both the public and the state to acknowledge the value of artists' contributions to cultural
heritage.''
42. The 10th Five Year Plan 2002-07 of the Government of India outlines India's
Vision for Art and Culture. In Chapter 2.12. it records:
''2.12.1 India's culture is characterised by a unique pluralistic ethos that has evolved over
5,000 years. At the same time, it is constantly evolving through a process of
assimilation, providing creative eXpression, value systems and belief patterns to
society.'' ''2.12.2 There are three broad dimensions of culture: National Identity, Mass
Media and Tangible and Intangible Heritage. National Identity revolves around
questions like: Who are we? What is our national identity as Indians? What is our shared
perception or history, lifestyles, values and beliefs? These are not questions of purely
academic interest alone but serious questions having a bearing on the well being of the
nation and its people. Mass Media comprises cinema, radio, television and print media.
Tangible and Intangible Heritage includes, among other things, monuments, sites and
archaeology; anthropology and ethnology; folk and tribal art; dance and drama; and
visual arts in the form of painting, sculpture and graphics.
''2.12.5 The main concentration in the early Five Year Plans, from the First to the
Seventh Plan, was the establishment of cultural institutions in the field of archaeology,
anthropology, and ethnography, archives, libraries, museums, academies etc. Central
conservation laboratories were also established. Serious efforts were made in the SiXth
Plan to recognise culture as one of the basic concepts to be integrated with all
development activities particularly at all levels in the education sector so as to make it
more relevant to day-to-day life. During the Seventh Plan, an added thrust was given to
contemporary creativity, preservation, documentation and conservation of the cultural
heritage and to established cultural institutions''
43. The National Cultural Fund (NCF) was constituted in 1996 in order to mobilise
funds to preserve and promote Indian art, culture and heritage.
44. Cultural property from developing countries is the focus of a highly lucrative
international trade in art. It's negative feature is illicit eXport from countries of origin.
The Convention on the Means of Prohibiting and Preventing the Illicit Import, EXport
and Transfer of ownership of Cultural Property adopted by 102 States Parties on 14th
November 1970, India being a signatory, in its Preamble records, inter alia:
''Considering that, to avert these dangers, it is essential for every State to become
increasingly alive to the moral obligations to respect its own cultural heritage and that of
all nations, Considering that as cultural institutions, museums, libraries and archives
should ensure that their collections are built up in accordance with universally
recognized moral principles'',
45. Article 1 and 4 of the Convention read:
''Article 1 For the purposes of this Convention, the term ''cultural property'' means
property which, on religious or secular grounds, is specifically designated by each State
as being of importance for archaeology, prehistory, history, literature, art or science and
which belongs to the following categories:
a. ............
b. ............
c. ............
d. ............
e. ............
f. ............
g. property of artistic interest, such as:
i. pictures, paintings and drawings produced entirely by hand on any support and in
any material (eXcluding industrial designs and manufactures articles decorated by
hand);
ii. original work of statuary art and sculpture in any material;
iii. original engravings, prints and lithographs;
''Article 4 The States Parties to this Convention recognize that for the purpose of the
Convention property which belongs to the following categories forms part of the cultural
heritage of each State:
a. Cultural property created by the individual or collective genius of nationals of the

State concerned, and cultural property of importance to the State concerned created
within the territory of that State by foreign nationals or stateless persons resident within
such territory;''
46. The Declaration of the Principles of International Cultural Co-operation

proclaimed by the General Conference of the United Nations Educational, Scientific and
Cultural Organization at its 14th session on 4.11.1966, vide Article 4, set out 5 aims of
international cultural co-operation in its various forms, bilateral or multilateral, regional
or universal. The 4th aim being:
''To enable everyone to have access to knowledge, to enjoy the arts and literature of all
peoples, to share in advances made in science in all parts of the world and in the
resulting benefits, and to contribute to the enrichment of cultural life;
47. The General Conference of the United Nations Educational, Scientific and
Cultural Organization meeting in Paris, on 16.11.1972 adopted the 'Convention
Concerning the Protection of the World Cultural and Natural Heritage.' Article 1 defined
cultural heritage to mean:
'architectural works, works of monumental sculpture and painting, elements of structures
of an archaeological nature, inscriptions, cave dwellings and combination of features,
which are of outstanding universal value from the point of view of history, aror science;'
48. Article 5(d) of the convention enjoins on the member States to:
''Take the appropriate legal, scientific, technical, administrative and financial measures
necessary for the identification, protection, conservation, presentation and rehabilitation
of this heritage;''
49. Convinced of the fundamental importance of the protection of cultural heritage

and of cultural eXchanges for promoting understanding between peoples, and the
dissemination of culture for the well being of humanity and the progress of civilization,
the 'UNIDROIT Convention on Stolen or Illegally EXported Cultural Objects' was
adopted in Rome on 24.6.1995. It enjoined upon the contracting States to return cultural
objects removed from the territory of a Contracting State contrary to its laws regulatin
the eXport of cultural objects for the purpose of protecting its cultural heritage. (Article
1).
50. The 'International Covenant on Economic, Social and Cultural Rights' adopted
by the General Assembly of the United Nations on 16.1.1966, vide Article 15(1) requires
'The State Parties' to recognise the right of everyone:
''To benefit from the protection of the moral and material interests resulting from any
scientific, literary or artistic production of which he is the author.''
51. Article 15 states that the right under Article 15(1) would include the
development and diffusion of science and culture.
52. Each one of the Conventions above noted impose three obligations on States:
(i) to respect the cultural right,
(ii) to protect the cultural right,
(iii) to preserve the cultural right.
53. In the decision , Vishaka and Ors. V. State of Rajasthan and Ors, the Supreme
Court read international conventions not being inconsistent with our laws to interpret the
guarantee of gender equality under our constitution and in the absence of domestic law
occupying the field, formulated guidelines.
54. It has to be noted that as originally enacted, Section 57 of the Copyright Act,
1957 was very widely worded because of the fact that the words ''would be prejudicial to
his honour or reputation'' which found mention in sub Clause (b) of sub Section (1) of
Section
57 were not qualifying sub Clause (a) of sub Section (1) of Section 57. Further, the
words ''any other action'' which found mention in sub Clause (b) implied that the action
could be other than a claim for damages or a claim for injunction. Pot amendment, as the
section stands effective from 10.5.1995, the legislature has restricted the right of the
author to claim damages or to seek an order of restrain. Further, proof of prejudice to the
author's honour or reputation has been made the sine qua non for claiming damages.
55. However, the various declarations by the international community in the

conventions noted above, lift the moral rights in works of Art if the same acquire the
status of cultural heritage of a nation. India is a signatory to the conventions and it
would be the obligation of the state to honour it's declarations.
56. There would therefore be urgent need to interpret Section 57 of the Copyright
Act, 1957 in its wider amplitude to include destruction of a work of art, being the
eXtreme form of mutilation, since by reducing the volume of the authors creative corpus
it affects his reputation prejudicially as being actionable under said section. Further, in
relation to the work of an author, subject to the work attaining the status of a modern
national treasure, the right would include an action to protect the integrity of the work in
relation to the cultural heritage of the nation.
57. Under orders passed by this Court, physical condition of the mural in question
was directed to be reported. Shri B.C. Sanyal, an artist of international repute and
professor
P.N. Mago reported that various parts were missing. Their report reveals a massive
destruction of the mural. Ms. Kapila Vatsyayan, Academic Director, Indira Gandhi
National Center for the Arts reported that she was pained to see an outstanding artistic
composition dismembered in fragments which could not be put together even in arts.
58. In view of the evidence on record, Ms. Jyoti Singh, learned counsel for the
defendants did not even attempt to urge that the destruction and damage to the mural
was debatable.
59. Issues No. 2 and 3 are accordingly decided in favor of the plaintiff and against
the defendants. It is held that the plaintiff has a cause to maintain an action under
Section 57 of the Copyright Act, 1957 notwithstanding that the copyright in the mural
stands vested in the defendants. It is further held that the defendants have not only
violated the plaintiff's moral right of integrity in the mural but have also violated the
integrity of the work in relation to the cultural heritage of the nation.
ISSUES 4 and 5
60. At the hearing held on 14.2.2005, Shri Praveen Anand, learned counsel for the
plaintiff prayed for a decree directing the defendants to return to the plaintiff the
remanents of the mural with further declaration that the defendants would have no right
in the same as also a declaration that the plaintiff would have a right to recreate the
mural at any other place anywhere in the world including the right to sell the same.
Alternatively, damages were sought.
61. I am of the opinion that the mural, whatever be it's form today is too precious to
be reduced to scrap and languish in the warehouse of the Government of India. It is only
the plaintiff who has a right to recreate his work and, therefore, has a right to receive that
the broken down mural. Plaintiff also has a right to be compensated for loss of
reputation, honour and mental injury due to the offending acts of the defendants.
62. Suit is accordingly decreed in favor of the plaintiff and against the defendants as
under :-
(a) A mandatory injunction directing the defendants to return to the plaintiff the
remanents of the mural within 2 weeks from today.
(b) Declaration is granted in favor of the plaintiff and against the defendants that all
rights in the mural shall henceforth vest in the plaintiff and the defendants would have
no right whatsoever in the mural.
(c) Declaration is granted in favor of the plaintiff that he would have an absolute
right to recreate the mural at any place and would have the right to sell the same.
(d) Damages in the sum of Rs.5 lacs are awarded in favor of the plaintiff and against
the defendants. If not paid within one month from today, the damages shall carry simple
interest @ 9% p.a. from today till date of payment.
(e) Costs shall follow in favor of the plaintiff and against the defendants.
63. I would be failing if I do not put on record the assistance rendered to the court by
Shri Praveen Anand, learned counsel for the plaintiff who argued the matter virtually on
first principles and enriched the court with material to understand the profound issue
raised in the suit which required a synthesis of personal rights vis-a-viz the cultural
rights of the nation.
Camlin Pvt. Ltd. v. National Pencil Industries AIR 1986 Delhi 444
Camlin Pvt. Ltd. vs National Pencil Industries on 7 November, 1985
Equivalent citations: AIR1986DELHI444, 1986(1)ARBLR86(DELHI), AIR

1986 DELHI 444, (1986) 1 ARBI L.R. 86
JUDGMENT
Mahinder Narain, J.
(1) What arises-for consideration in this case is the nature and eXtent of rights of the
plaintiff in printed pencil boXes/cartons in which the pencils are being sold by the
plaintiff.
(2) In this suit as well as in this application it is contended that the plaintiff is the
registered owner of trademark bearing registration No. 324515-B dated 13th April,
1977. It is asserted that the said trade mark is valid, subsisting full legal force.
Thattrade'rnark is in reject of fountain pens, pencils, ball pens and refills therefore, 'the
registered trade mark in terms of the certificate, of registration in two words Camlin
FLORA.
(3) It is also asserted in the application, as also in the suit that the plaintiff is the
owner of copyright in the floral design that appear on its printed cartons/boXes and that
the design. thereon, in "original artistic work". It is also asserted that the respondents are
passing off their goods as goods, of the plaintiff.
(4) It is asserted that the plaintiff is one of the largest manufacturer of art and
stationery materials in India and have been eXclusively marketing the goods of its
manufacture for the past 40 years; that since the year 1977, the plaintiff has been
manufacturing and selling their Camlin Flora Pencils in distinctive and artistic cartons.
(5) That distinctiveness, which is claimed, is that the pencil in question has got
colour combination of white, pink and green,. that there are .two' strips of while and
green neXt to each other at the rear portion of the pencil, that here is a floral design on
the skin of the
pencil, which is unique. The unique design comprises of array of pink flowers with a
green leaf on the white background. It is also asserted that the same repetitive floral
pattern, appears on the cartons. .
(6) The cartons, which .have been anneXed Along with the plaint, as stated above, is
a printed carton made of some kind of paper board.
(7) It .is also asserted that on account. of eXtensive, use of the words Camlin Flora
on the pencil and the. carton /boX vast reputation has been acquired, which denote .a
high quality product originating eXclusively from the applicant/plaintiff.
(8) It is asserted that the defendants are using deceptively similarly decorated pencil
and carton,, which are deceptively similar to .the pencil-decorated with the flowers, and
the-cartons which are, and have been in use, ofthe applicant/plaintiffs.
(9) It is asserted that the applicant had got a copyright in the artistic logo script of
trade mark Flora as original artistic work.
(10) It is also asserted the application that that Camlin 's the house mark 'of the
applicant, regarding Camlin being the house mark of the petitioner there have 'been no
arguments urged during the course of hearing, and this question does not need
consideration in this application. It may however be mentioned that Trade and
Merchandise Marks Act does riot define the word 'House Mark'. The concept of House
Mark is not to be found anywhere eXcept in an administrative orders of Comptroller
General Marks in 47RPC, 37, 43 L. 34 which cannot be given any recognition in India,
in view of absence of such a concept in the statutory provisions. If is possible that at a
future date when the industrialisation of India has resulted in Mega Corporations
conglomerates that House Mark may need statutory/legal recognition by Courts.
(11) The defendants contended that the application is not maintainable on account of
unreasonable delay and laches on the part of the applicant/plaintiff and that the
defendants' cartons bearing the word Captain Elora with numbers 1180 in connection
with their pencil have been in use since 1-4-1981, and that the suit filed in 1985 is
without any eXplanation of the delay Of four years. It is also asserted by the defendants
that they are the registered owners of the carton "entitled" Captain Elora which is
(registered at No. A-36907/82 under the Copyright Act, 1957 and that registration is
still valid. It is asserted that- Elora and
Flora are distinctive words. The word Flora indicates flowers. The word Elora refers to
the famous caves.
(12) It is also asserted that the cartons used by the defendants and the plaintiff are
absolutely distinct and different and there is no similarity between the two. .
(13) It is asserted that the defendants hold. registration of the .cartoons under-the
Copyright Act but the plaintiff do not hold any such copyright.
(14) It is also asserted that the suit. which has been Sled, 58 false, frivolous and
veXatious and is an attempt on the part of the plaintiff to put the defendants out of
business and the market.
(15) What is required to be determined in this case is whether any copyright can eXist
in 'the subject-matter in which the same. is claimed. That is to say whether there is any
copyright in the printed cartons in which the pencils of the plaintiff and defendants are
sold (16) In order to determine whether copyright eXists in the cartons, it is necessary to
keep in view the legally
.accepted meaning of 'copyright'. In essence. in law, copyright means the eXclusive right
to make copies of any copyrightable subject- matter in any tangible material form.
Section 13 of the Copyright Act, 1957 which deals with subject-matter of copyright
reads as under
:
"1.Works in which copyright subsists: (1) Subject to the provisions of this section and
the other, provisions of this Act, copyright shall subsist throughout India in the
following classes, of work, that is to say (a) original literacy, dramatic, musical and
artistic works;
(b) cinematograph films; and (c) records. (2) Copyright shall not subsist in any work
specified m sub-section(1), other than work 'to which the provisions of section 40 gr
Section 41 apply, unless (i) in the case of a published work, the work is first published in
India, or where the work is first published outside India, the. author is at the date of such
publication or in a case where the author was dead at that date, was at the time of his
death, a citizen of India; (ii) in the case of an unpublished work other than an
architectural work of art, the author is at the date of the making of the work a citizen of
India or domiciled in India; and (iii) in the case of an .architectural work of art, the work
is located in India. EXplanation. In the case of a work of joint authorship, the conditions
conferring copyright specified in this sub-section shall be satisfied by all the authors of
the work.
(3)Copyright shall not subsist:- (a) in any cinematograph film a substantial part of the
film is an infringement of the copyright in any other work; (b) in any record made in
respect of a literary dramatic or musical work, if in making the record, copyright in such
work. has been infringed. (4) The copyright is a cinematograph film or a record, shall
not affect the separate copyright in any work in respect of which or a substantial part of
which, the file, or as the case may be, the; record is made. (5) In the case of an
architectural work of art, copyright shall subsist only in the artistic character and design
and shall not eXtent to processes or methods of construction.
(17) In this case, it is contended that the machine printed carton which are in question
in which pencils are sold is covered by Section 13 of the Copyright Act, inasmuch as the
carton is an "original artistic work"; it is further contended that being a original artistic
work copyright subsists, therein, and the plaintiff is entitled to sue for infringement of
the copyright in the cartons. .
(18) An eXamination of the carton would show that it is made out of some cardboard
like material which has got printed matter thereon, the printed matter is .printed on the
carton in different colours. The colours which are visible on the carton are green, white,
red and black. Besides the printed colours on the cartons, what is also visible to the eye,
is some printed words which have been impressed upon the carton. The printing of the
carton has-been done by utilising any of the various printing processes by which
multicolor impression can be applied to cardboard like paper.
(19) A look at the plaintiff's cartons also indicates that it contains the following words:
- "FROM The Makers Of Camel Art Materials Contents of this boX marked with price.
Camlin Flora 72HV HeXagonal Unbreakable Pencils Product NO. 1130"
It is also written on the carton that the Mark (an illusturstration) referred to indicate a
perfect bond of lead and wood to give an unbreakable point in normal use.
(20) A look at the carton of the defendant shows that in addition to the various colours
printed thereon there are the following words printed on it: "NATIONALELORA Hb
HeXagonal DeluXe Pencils Product No. 1180"
(21) It is clear that both the cartons are printed products, produced by a printing
machine. My view that the carton is product of some kind of printing machine is
strengthened by the fact that even in the plaint, it is asserted, the goods which are
manufactured by the plaintiff are produced in very large quantities and the statement of
sales of Camlin Flora Pencil indicate that pencil worth Rs. 1,24,65,552.00 were sold in
the year 1982. Since each carton contains a small number of pencils it would riot b.e
possible to accept that any process other than a printing process involving skilful use of
hands, alone lias been utilised ia the making up of these multicolored cartons in which
the pencils are being sold.
(22) In any case, it 'is clear to me that the cartons/boXes filed Along with the plaint
could not have been made by an. artist utilising his skills with a paint and brush, (in
addition to calligraphic skill). What is, therefore, to be determined Is whether sufficient
skill and labor has been eXpended upon the cartons/ boXes to enable it to be covered by
Section 13 of the Copyright Act.
(23) I had conveyed it' to counsels, during 'the coarse of arguments, that the card
board appeared to be mechanically reproduced article, and that in order to qualify for
being covered under the Copyright Act, the carton had to be 'original artistic work, that
is to say, the carton must originate from an author who must-have eXpended his skill
and labor upon it. This was put to the counsel for the plaintiff, in view ofthe judgment in
1964 Volume I All England Law Reports, 465 (equal to 1964 (1) Weekly Law
Reports, 273)
.(1). In that case the House of Lords, relying upon the observations in an earlier
judgment, said that in Copyright law, -'original' means that which originates from the
athor. The observations relied upon by the House of Lords contained in (1894) Ac 335
which reads as under:--- "THE word 'original' does not in this conneXion mean that the
work must be the eXpression of original or incentive thought, Copyright Acts are not
concerned with the originality of ideas, but with the eXpression of -thought, and in the
case of literary work. with in print or writing. The originality which the eXpression of
thought in .print or writing. The originality is required relates to the eXpression of the
thought. But the Act dots not require that eXpression must be in an original or novel
from but that the work must not be copied from another work that it should originate
from the. author.
(24) In order, therefore, to be covered by the Copyright Law, any work in which
copyright is claimed .must originate-from the author. It also necessarily means, as
indicated in the aforesaid passage, that the work in which, copyright is claimed must be
something which has not been copied by the author from any one else. It is only when
the work has not been copied, that it can be said that it has 'originated' from the author.
(25) As .1 have observed above, the cartons/boXes in question winch have been filed
Along with the plaint, appear to be mechanically reproduced one. Because it is
mechanically reproduced, I and of the view that it cannot be said that any skill or "labor
has been eXpended upon the allegedly artistic carton which has been-filed in Court, as
the same has sheen produced by mechanical actions of.a printing machine, and not by
skill and labor having been eXpended upon them by any natural person. It is .only
natural persons who are, because of eXpenditure of their personal skill and labor upon
any work, entitled to protection under the Copyright Law. [1924 Privy Council 75; 1960
(13 Madras Law Journal 53(2).
(26) Because of the provisions of Order 7 Rule 14 (1) of the Civil Procedure Code, it
is essential that the documents sued upon be filed with the plaint, in Court; and
'document' in this case is printed boXes/cartons, filed in Court In view of Order 7 Role
14, necessarily, the document sued upon is the machine printed carton which is filed in
Court by plaintiff. Inasmuch as the only document which has been filed is the machine
printed carton, it must be taken, that the document produced in Court is the original, and,
it, has to be determined whether copyright can subsist therein under the Copyright Act.
(27) The counsel for the plaintiff relied upon a number of judgments wherein it was
held that labels are copyrightable. It was urged on a parity of reasoning, that
mechanically' printed boXes/cartons are copyrightable. He has referred to 1971 R.P.C.
57 (3): Charles Walker & Co. Ltd. v. The British 'Picker Co. Ltd., wherein .it was said
that there was a copyright in a label. In that case, it was contended by counsel for the
plaintiff company that "the Walker label is an artistic work within the meaning of
Section 3 of the Copyright Act". Justice Pennycuick, who, decided the case, said that the
label was an artistic work. He found "that label is admittedly an engraving, the design
and layout of the label seems to me to be sufficiently distinctive to merit the description
"original" within the meaning of Section 3". The learned Judge relied upon a judgment
reported as 1959 R.P.C. 83 (4).: Tavener Rutledge Ltd. v. Spectors Ltd. .it appears to me
that there was an admission in 1961 R.P.C. 57 (5) that .the label in question in that suit
was an "engraving". By virtue of
the provisions of Section 2(1) of the Indian Copyright Act, 1957, engraving is an artistic
work. The label in that case, if it was an "engraving" would also be covered by the
protection available to "engraving" under the Indian Copyright Act. According to
Chambers Dictionary to engrave is "to cut with a graver on wood, steel etc.; to cut into,
to impress deeply to form on represent by engraving". The boXes/cartons in question in
this suit are not an "engraving". It was stated by counsel for the plaintiff that carton in
the instant suit was printed by "Silk spinning process' and look and feel of the
carton.shows that nothing has been "engraved" thereon. A product of silk printing
process cannot 'be an engraving or a print from engraving. In my view, any print
obtained from either an offset printing process or by a letter press or in combination of
the various printing cess including silk printing process cannot amount to an engraving.
In any case, the printed product like the one in question in the instant suit is not the
result of any
engraved material within the meaning of the word 'engraving as contained in Section 2
of the Copyright Act. The prints which are contemplated in that Section are the prints
from an engraving, like artistic works like lithography, wood-cuts etc. (28) For the
reason that in 1961 R.P.C. 57 supra the label was admitted to be an engraving, whereas
the carton in question admittedly is not admitted to be an engraving, that case does not
hep the petitioner as it does not apply to a printed carton reproduced by a mechanical
process, which is the subject matter of this case.
(29) Counsel for the. plaintiff neXt referred to 1959 Rpc 83 (supra) Tavener Rutledge
Ltd. v. Spectors Ltd. In that case, what was in question was a "sweet tin". The "sweet
tins" were printed tins on which was reproduced the original, design made up by some
artist What had happened was that Spectors had copied the printed design/representation
which was to be found on the tins of Tavener in which they had sold sweets. The Court
found, at page 87, that the plaintiff's design (which must refer to the original artistic
work, and not what was reproduced on the tins was an "artistic work" within the
meaning of Copyright Act. The Court found that the plaintiff's artistic work had been
copied by the defendant's artist that the differences between the two were small
differences, which did not create any substantial difference when eXamined as a whole.
The Court came to the conclusion that "two designs in question were almost eXactly
similar. The arrangement is almost precisely the same, and the colours though in some
cases perhaps slightly darker in the Defendants' design, are eXactly similar otherwise, to
the plaintiff's, and the series in which
they appear in different colours is completely in accordance with the plaintiffs own
arrangement. It became obvious to me, and it is now .accepted, that an artist. who was
employed by Lloyd's to produce a design to the defendants' whether goaded by the
defendants or not, did in fact copy the plaintiff's design. It is quite incredible that the
result should have been reached in any other way, and, therefore, the defendants' design
is a copy of the plaintiff's design, with merely trifling additions in addition to the
different background, done, it would appear, with the idea of trying to give the effect
that it, was somebody else's effort'.
(30) It is not clear from the reported judgment whether original sketch/painting done
by the plaintiffs' artist was produced in Court or not. It, however, appears from the
observations, which have been made, by Justice Danckwerts, (reproduced above) that
the original painting/sketch/drawing made by the plaintiff's artist was produced in Court.
No support can be derived by the counsel from this case. Inasmuch as 1959 Rpc 83
(supra.) appears to have proceeded on the basis-.of an original artistic work, which
comprised of copyrightable subject matter, was relied upon by the plaintiff and filed in
Court.
(31) The counsel neXt relied upon 1961 Rpc 387 (6); The Coca-Cola Company v. A.
G. Barr & Co. Ltd. In that. case, what was in question was the shape of 'Coca Cola'
bottles, and the action was a passing off action. A penis' of the case- indicates that the
said 'passing off' case was decided on the basis of concession made before the Court.
A case decided on concession can not be of any assistance to the plaintiffs herein, in any
case, that matter related to, What was a design of bottle. and not an artistic work.
(32) The counsel then relied upon 1984 Fsr 210 (7): Schweppes LTD. and others v,
Wellingtons LTD. The question in that case was labels on bottles. The label in quotation
was the label of a soft mineral water drink, known as SCHWEPPES. What was allege to
be an imitation of it, was. a label of Schweppes Mineral water. In that case it was
conceded is apparent from what is stated at page 211, that copyright subsisted in the
schweppes labels, and that the plaintiff had the copyright in those labels. There is no
such concession in the instant case. In any event, a case based on the concession is of no
binding authority and of no help to the plaintiff. In Schweppes case there was no
consideration of the
question whether a mechanically reproduced label is by itself, a good subject matter of
copyright or not. It appears to have been assumed in that case, that there was in
eXistence an original copyrighted design eXecuted by an artist; where's, in this case, we
have to proceed on the basis that the printed carton placed before the Court is the only
"original".
.
(33) It is significant that the printed cartons en their face, contain no notice of
eXistence of any copyright therein. Further even on the pencils there is no indication of
claim to copyright whether with respect to the pattern on its 'skin' or otherwise.
(34) The counsel neXt relied on 1970 R.P.C.259; which related to the shape of the
bottle of Haig's Dimple Scotch Whisky Bottle. This case can be of no help to the
plaintiff for the reason that the Dimple Scotch Haig Whisky bottle is a three dimensional
object having, peculiar features of shape and configuration. and may have had protection
under the Design Laws. The reason for grant of injunction therein was, because the
bottle, used by the plaintiff was of a shape which was copied by the defendants, and the
defendant's bottle led to confusion between the defendants' bottles and the plaintiffs'
bottlts.
(35) Counsel for the plaintiff also referred to 1977 R.P.C. 255(8), Karo Step Trade
Mark. That case was a "rectification" proceeding for the purposes of removal of a trade
mark from the register. The trade mark, which was sought to be removed, was a four
pointed star device. In that case. the four pointed star device was designed by a
commercial artist who had assigned the copyright to Werbegemeinscheft. The question
was, whether it was an artistic work within Section 3 of the English Copyright Act. The
Court held : "It (the mark) is a drawing, and Section 3(i)(a) eXpressly classifies
drawings on proper subject matter of artistic copyright, irrespective of artistic quality.
No doubt a drawing may be so simple 'that it cannot be said to be "a work". For
eXample, a. straight line or a circle for the word "work" itself carries with it tê idea of
the eXercise of some degree of skill and labor, but I am unable to accept the submission
of counsel for Mrs. Bishop that the artistic part of this device is go simple a nature that
no copyright can reside in it."
(36) If is clear from , part of the judgment reproduced above, that the Court had
before it the original drawing, and the deed assigning copyright in the Drawing, and the
Court had come to the conclusion that some degree of skill and labor required in
producing the design/drawing of the four pointed star composed in a circle within the
circle. It is clear from the report that the two words 'Karo Step' were not even suggested
to have become subject matter of a literary copyright. This case reiterates that the skill
and labor eXpanded upon a work is the sine qua non for eXistence of copyright in any
work. 'This test has. been applied by Courts for long. See :- 1925, Privy Council 75 (9),
and 1960(1) Madras Law Journal 53 (.10).
(37) This case, therefore, does not help the-counsel for the plaintiff as in the instant:
case, what is before the Court is a mechanically reproduced article and not the original
article on which skill and labor of an artist, has been 'eXpended. As slated above, the
carton relied upon by the counsel doss not say upon its face, by. any of tiles recognised
symbol/words., that the subject matter of the carton is copyrighted and that copyright
thereof vest in the plaintiff.
(38) The counsel also referred to Copinger and Skone James on Copyright, 1980 84
and Modern Law of Copyright by Laddie & Ors; .107. Both of these are commentaries
and the comment is based upon the judgments which have been already referred to
above, which judgments are. found not to, give any support to the contention which has
been raised in this... case that a mechanically printed carton is good subject matter of
copyright. In fact, none of the above cases -has even consider. the matter from this
angle.
(39) The counsel for the plaintiff referred to 1978 Delhi 250 at 252(11) and
particularly the passage at page 252, in support of the proposition that a person who is
the first user of the mark is entitled to a right therein. The Mark in question there was
'Raja Rani' and the prior use thereof was held to confer a right to restrain others from
using it. In the instant case, the question is not of the first user or the prior user, but
whether a right covered by the' law of copyright subsists in the mechanically printed
carton. For this proposition 1978 Delhi 250, 252 (Supra) does not have anything to say.
It does not give any support to the paintiff. It cannot ev.en be suggested in the instant.
case, that the words "CAMLIN FLORA" which are found in the carton are used by the
defendants. The words used by the defendants are inter-alia 'NATIONAL ELORA'.
There is dear distinction between
'CAMLIN FLORA' and 'NATIONAL ELORA'. The. two sets of word combinations only
have to he written to make it evident. It cannot possibly be said that 'CAMLIN FLORA'
is same as, or-similar to 'NATIONAL ELORA'.
(40) Another case cited by the counsel is 19.60 R.P.C.page 150 (12). In this case,
what was in question was the artistic design impressed upon the plastic container of
blankets. In that. case the Court assumed that the plastic container bearing a
representation .of the head and shoulders of a woman was an artistic work within the
meaning of Copyright Act and it was so conceded (page 151 line 42). That case, based
upon a concession, does not help the plaintiff, as there is no such concession. in the
instant case, (41) The counsel cited 1977 Delhi page 41 (13) for the preposition that the
certification from the copyright register bearing seal of the copyright office a prima facie
evidence of eXistence of copyright. There is no force in this contention as the judgment
does not say so. What the judgment says is that the certificates under the Copyright Act
only prima facie, show
that the particulars mentioned in the certificate are entered, in the copyright register I am
of the view that the mere fact that something is entered in the Copyright Register, does
not as, a matter of law establish that what. is registered is in fact and in law
copyrightable subject matter. This is so because, the sine qua non to the eXistence of
copyright, is the eXpenditure of skill and labor on any work which originated from its
author and unless the original work, on which skill and labor has been eXpended by its
author is produced in Court to prima facie show that the work has originated from an
author, it cannot be said that there is copyright in any work. The eXistence of artistic
merit in any original artistic work is not a matter which determines the eXistence of
copyright therein. The copyrightable matter is that which has originated from the author
who has eXpended skill and labor upon them. In 1977 Delhi 41 (Supra) there was no
finding of fact, that the matter ton the containers was a copyrightable artistic work and
the case seems to have proceeded upon the copyright certificate only, arid if that
judgment can be said to say that what is printed on tins by a printing process, (Printing
process essentially not involving any skill or labor of a natural person) then I
respectfully disagree from-that judgment. lt is too well settled in copyright law that
without eXpenditure of skin and labor on a work which has originated from the author,
no copyright can come into eXistence. [1924 Privy Council 75 and 1960(1) Madras Law
Journal 53)(Supra). It is also to be kept in view that the judgment in. 1977 Delhi 41
(Supra) is on an interim application and not a final judgment after trial.
(42) The counsel has referred to 1975 Delhi 130 (14). That case related to Trade and
Merchandise Marks Act and the questions which were considered in that case related to
assignment of copyright and vesting of copyright and the duration of copyrights. The
question decided in that case was not whether a mechanically reproduced printed paper
carton can be said to be copyrightable. This case also does not help the petitioner. I am
of the view that a mechanically printed card board carton is not copyrightable, there is
no skill and labor involved in its production, and. no copyright subsists in it. No suit can
be maintained on the basis of any alleged copyright in a printed card board carton.
(43) It was neXt contended by the counsel for the plaintiff that the words 'FLORA'
and 'ELORA' to be found on the respective cartons of the plaintiff and the defendants
should be seen ant on an eXamination it would be seen that the attempt has been made
to write the word 'ELORA' in the same calligraphics style. That the alphabet 'E' in the
word 'ELORA', and the alphabet 'F' in the word 'FLORA' have been. in the same
calligraphic style. It is also asserted that the alphabet 'R' found in both Flora & EL.ORA,
are in the same calligraphic style.
(44) There is no doubt that the alphabet 'F' and alphabet 'E' in the plaintiff's Flora as
appearing on the carton of the plaintiff, has been written in the same calligraphic style as
the alphabet 'E' and 'R' in 'ELORA' on the defendants' carton. With respect to this
contention, I am of the view that the maxim : Demonisms Non Curat LeX applies with
full force.
(45) This is too minute a comparison. The alphabets F & R in the plaintiff's carton
and the alphabet 'E' and 'R' in the defendants' carton are a very small part of the entire
carton and in my view, this similarity in the two alphabets is not sufficient to establish
an attempt to pass off of the defendants' carton as the plaintiffs carton, for the reason that
.the alphabets occupied only a small area of the carton. Another reason why I am of the
view that there is no passing off of the defendants. cartons,
is that on the defendants carton very prominently printed is a famous sculpture of India
"Woman writing a letter". The suggestion . given by the defendants' carton is that this
sculpture is from the, Elora Caves. This suggestion may be a misleading one. The
sculpture eXists at Khujuraho. But the word 'ELORA' Coupled with the figure of
'woman
writing a letter', indicates that the defendants' carton has no relationship to flowers, but
to a place famous for its painting and sculpture the Elora caves.
(46) The word Flora is used in Botany to mean flowers in general, as a class. The
counsel for the plaintiff stated that the phonetics of Elora and Flora are similar and,
therefore, relying upon 1970 Supreme Court 1649; (15) (Rustom-Ruston) and 1970
Supreme- Court 146 at 148; (16) (Ambal-Andal). it should be held that there is an
attempt to pass off the goods.
(47) In my view, flowers do not necessarily represent something which is relatable to

art or artists whereas Elora brings clearly to the mind of all Indians something connected
with art or artists. Pencils are what are used by artists, and in this case mere phonetics
similarity are not so obvious so as to pass nil one for the other. The defendants seek to
identify their pencils with artists, and the plaintiff with botanists.
(48) It is also asserted by counsel that some colour combinations are used on the
cartons. I am of the view that the two cartons have different colour combinations, and
there are differences in the colour. There are differences in the composition on the
printed matter and, therefore, carton of the defendant cannot, on the basis of similarity of
colour combination, be said to an attempt to pass off the defendants' carton as cartons of
the plaintiff. The counsel for the plaintiff relied upon 1972 Delhi. 41 M/s. Anglo-Dutch
Paint, Colour and Varnish Works Pvt. Ltd. v. M/s India Trading House, for the
proposition that normally people have imperfects and fading memory. No doubt it is so
but this principle does not apply in this case as the difference in the cartons sufficiently
distinguish the two cartons.
(49) Mr. Aggarwal did not make any submission at all regarding the copy-right ability
of printed cartons as defendants themselves claim copyright in 'such mechanically
printed cartons.
(50) His only submission related to passing off only. .Mr. Aggarwal contended that
there is no similarli.y at all. whether phonetic or visual between the two words Camlin
Flora the registered mark of the plaintiff, and National Elora which is used on the
cartons of the defendants. In view of the fact that the device of a 'woman writing a letter
is to be found on the carton of the defendants, I agree with Mr. Aggarwal that on the
visual eXamination of whole of the cartons of the plaintiff, and whole of the carton of
the defendant, there is no like hood of confusion.
(51) Mr. Aggarwal also asserts that the beginning of the words, which are alleged to
cause confusion are important, and that the words have to be viewed as a whole and not
merely some of its alphabets. Only the alphabets which go to make up the words are not
to be taken into account .in isolation and he refers J970 Supreme Court 2062: (17) F.
Heffimann-La Reche and Co. Ltd. V. Geoffrey Manners and Co. Private Ltd. That case
clearly holds that it is the entire word which has' to be seen; that ail the alphabets have to
be pronounced when phonetics are to be taken into account, and no alphabets used in a
word can be slurred over.
(52) The other judgments referred to by Mr. Aggarwal are 1974, Vol. Ii Delhi 151,
(18) Mis. Delhi' Cloth and General Mills Co. Ltd. v. M/js. Prag Vanaspati Products, and
1969
(19) Punjab 290, M/s.J. and P. Coats Ltd. Scotland v, M/s.Gurcharan Singh & Brothers,
Amritsar and Another. In the formal case. it was held that the words arc label of "Panghat
Ghee" was distinct and different from the word and label "Gopi". In the latter case, the
words in question were Elephant and .'Jagjit Hathi', which were found to distinct.
(53) Mr. Anand in reply said that: the misspelling of the word Ellora as Ellora by the
defendant and copying of the call-graphical style of writing the alphabet 'E' and alphabet
'R' show an intention to deceive and to passing off.
(54) I am of the view that there is no precedent binding on me to hold that a

mechanically reproduced printed carton is capable of being subject matter of
copyright. In the instant case, what has been produced in Court is only a
mechanically reproduced printed card board carton and I find that copyright does
Hot subsist therein. In my view, copyright does not subsist therein for the reason
that it is impossible to determine who is the "author" of the mechanically
reproduced printed carton. Copy right is conferred only upon "authors" or those
who are natural person from whom the wort; leas originated or the authors may be
legal persons to whom copyright has been assigned in accordance with law. by the
authors from whom the work had originated (55) In the circumstances, I hold that
plaintiff can not claim any copyright in any carton that has been mechanically
reproduced by a printing process as the work cannot said to have 'originated from
the author. I am of the view that a machine cannot be "author" of an artistic work,
nor can it have copyright therein.
(56) As regards the contention of the plaintiff that defendants have attempted to pass
of their cartons as cartons of the plaintiff, I hold that taking into 'account the entirety of
the carton, its colour scheme, the subject matter printed thereon, and keeping view the
similarities in the caligraphic style of the alphabets, E, F and R, and the apparent
differences, it can not be said that there is any likelihood of confusion between the
cartons of the defendants and the cartons of the plaintiff as the differences, mentioned
earlier, outweight the similarities.
(57) .IN view of what is stated herein above, and in view of my finding that there is
non-copyrightable subject matter in mechanically produced printed cartons the only
right being claimed in the suit being on the basis that the mechanically reproduced
printed carton has copyrightable subject matter in it, the instant suit for infringement of
copyright is not maintainable.
(58) As regards the infringement of the plaintiff's trade mark Camlin Flora, I am of
the view that the words National Elora in no view of the matter can be said to infringe
the trade mark Camlin Flora, nor can the words National Elora be passed of as the words
Camlin FLORA.
(59) In my view the suit for infringement of alleged copyright or the alleged
infringement of the trade mark of for the alleged passing of can not be maintained. I am
further of the view that the use of the word National Elora on the cartons of the
defendants do not give any cause of action to the plaintiffs' as they do not infringe the
alleged trade mark. Camlin FLORA. In view of my findings, not only the plajnliff's are
not entitled to the injunction which they have prayed for but they are not entitled to
maintain the suit as brought and framed. The suit as filed, and the documents field
Along with the plaint do not dispose a cause of action against the defendants and the
plaint is liable to be rejected. The injunction prayed for is refused and the plaint is
rejected under provisions of order 7 Rule 11 of the Code of Civil Procedure, as the same
discloses no cause of action. I.A. 2209/85 and Suit No. 662/85 are disposed off.
PRACTICE AND
PROCEDURE
MANUAL 2018
ARTISTIC WORKS
Contents
COPY R I GHT OF FI C E...................................................................................................... 1
E X AM I NAT I ON PR OC E SS................................................................................................ 1
1. INTRODUCTION.......................................................................................................................1
2. ARTISTIC WORK......................................................................................................................2
3. REGISTRATION PREREQUISITES.........................................................................................4
3.1 FORMALITY CHECK..........................................................................................................6
3.2 WAITING PERIOD...............................................................................................................6
3.3 FORM XIV............................................................................................................................7
3.4 STATEMENT OF PARTICULARS.....................................................................................7
3.5 STATEMENT OF FURTHER PARTICULARS................................................................10
4. COPYRIGHTABLE SUBJECT MATTER...............................................................................10
COPYRIGHT OFFICE
The Copyright Act of 1957 (hereinafter referred to as the “Act”), vide Section 9 mandated
the establishment of an office to be called the Copyright Office (hereinafter referred to as the
“Office”), for the purposes of the Act.
The Office administers the various functions set forth in the Act and the Copyright Rules of
2013 (hereinafter referred to as the “Rules”), including but not limited to maintaining the
Register of Copyrights in which entries such as names and the addresses of authors, publishers
and owners of copyright are entered therein.
EXAMI NAT ION PR OCESS

On receipt of an application, the Office conducts a Formality Check to ensure that the basic
requirements (2 copies of work, Complete FORM-XIV, power of attorney (if applicable),
prescribed fees etc.) are complied properly, and if not,1 a letter, for necessary compliance, is
issued to the applicant to remove the concerned discrepancy. The application that qualifies the
Formality Check is assigned to the Examiner, to examine whether it satisfies the Protection
Prerequisites and Registration Prerequisites as laid down under the Act and the Rules.2 After
examination of the application, it is submitted for final approval/further direction.
1. INTRODUCTION
This document reflects the general practices and procedures of Copyright Office for
examination and registration of artistic works. It explains the process for examination of artistic
work application(s), documentation of ownership; provides guidelines on how to identify the
work of authorship, copyrightable subject matter and discusses the grounds on which a
discrepancy letter may be issued.
This document does not cover every principle of copyright law, the practice and procedure
set forth in the document do not in themselves have the force and effect of law. Matters of
concern are set forth to explain the practice and procedure of the Office, in consistency with the
1
In such cases, the status of concerned application(s) is updated as ‘Work Awaited’ on the website of Copyright
Office.
2
Rule 70 sets forth the mandatory requisites that are to be complied for every application.
Page | 1
provisions of the Act and the Rules; and in case of ambiguity pertaining to various issues,
reference have been made to case laws, in order to ease the understanding of provisions.
2. ARTISTIC WORK
Any work which is an original creation of an author or an owner fixed in a tangible form, is
capable of being entered into the Register of Copyrights, irrespective of the fact that whether
such work posses any artistic quality or not.
The definition of Artistic work as laid down under Section 2 of the Copyright Act, is fairly
comprehensive and descriptive. Copyright shall subsists in any original artistic work comprising
of paintings, sculptures, graphics, cartoons, etchings, lithographs, photography, drawings, plans,
maps, diagrams, charts, buildings, models of buildings, moulds and casts for sculptures.
1. Definition of Artistic works

Artistic work” means— 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;
a [work of architecture]; and any other work of artistic craftsmanship; as provided under
Section 2(c) of the Copyright Act.
1.1. Work of architecture
“Work of architecture” means any building or structure having an artistic character
or design, or any model for such building or structure as provided under Section 2 (b).
In addition to this, according to Section 13 (2) (iii), in case of work of architecture, the
work shall be located in India.
Further, read with Section 13(5) in case of work of architecture, copyright shall subsists
only in the artistic character and design and shall not extend to process or methods of
construction.
1.2. Photograph
“Photograph” includes photo-lithograph and any work produced by any process
analogous to photography but does not include any part of a cinematograph film as
provided under Section 2 (s) of the Copyright Act.
2.1 STATEMENT OF PARTICULARS

To be duly filled and signed by the applicant.
STATEMENT OF PARTICULARS
COLUMN APPROPRIATE DETAILS TO BE FILLED
DETAILS
NO. BY THE APPLICANT
Registration number is not a mandatory
Column 1 Registration number column; it is to be filled by the Copyright
Office once the
work is entered into the Register of Copyright.
The correct and full details with respect to the
Name, Address and
Column 2 author or owner or any other person
Nationality of the
(Mandatory) interested in copyright in an artistic work,
Applicant
who has made the
application for registration shall be submitted.
Nature of the The applicant shall indicate their nature of interest
Column 3
applicant’s interest in in the copyright of the work i.e., whether an
(Mandatory
the copyright author
)
of the work or an owner/publisher.
The applicant shall mention appropriate
class of work:-
Column 4 Class and description • Artistic – in case of registration of Artistic
(Mandatory) of the work works.
• The applicant is also required to indicate
whether the Artistic work is used or capable of
being used
in relation to goods and services or not.
Column 5 Title of the work The title which appears on the copy of the
work
submitted along with the applications.
(Mandatory)
All the languages which are collectively used, in
creation of the work shall be mentioned.
Applicant can also mention the language in which
Column 6 Language of the work
the Title of the work is mentioned.
In case of Artistic work this column may also be
indicated as "NIL" in case no language is used.
Page | 3
Correct and appropriate details of the Author (the
person who has actually authored or was involved
Name, address and
in the authoring of work. There can by more than
nationality of the
Column 7 one persons who can jointly and severally be the
author and, if the
(Mandatory) author of a work. A firm/organization cannot be
author is deceased,
an author of work by no means; this column shall
the date of his
always be filled with the name & details of a
decease
person.
Whether work is Status of the work at the time of filing the

Column 8
Published or application, whether published or
(Mandatory)
Unpublished unpublished shall be indicated.
Year and country of
Column 9
first publication and Publisher details shall be submitted along with
(Mandatory
name, address and the year of Publication.
if
nationality of
published)
the publishers
Years and countries
of subsequent
Column 10
publications, if any, Details of subsequent publisher shall be
(If
and names, addresses submitted along with the latest year of
applicable)
and nationalities of publication.
the
publisher
Names, address and
nationalities of the
owners of the various The name, address & nationality of the persons
rights comprising the who holds the various rights comprising the
Column 11 copyright in the work copyright in the work are required to be
(Mandatory) and the extent of rights mentioned. In case the applicant himself intends
held by each, together to hold all the rights in the work, his particulars
with particulars of as already given against Col.2 may be
assignment and mentioned.
licenses,
if any
Names, addresses and If any person or persons other than the persons
nationalities of other indicated in column 11 to whom author or applicant
Column intends to authorize to assign or licence the
persons, if any,
12 (If copyright, on behalf of the owner, the name, address
authorized to assign or
Applicable and nationality of such person may be indicated. If
license the rights
) not, ‘NIL’ or ‘N/A’ may be indicated.
comprising the
copyright
If the work is an
“artistic work”, the
location of the original
work, including name,
address and nationality Location of the original work, including name,
Column 13
of the person in address and nationality of the person in possession
(Mandatory)
possession of the work. of the work shall be indicated.
(In the case of an
architectural work, the
year of completion of
the work should also be
shown)
If the work is an ‘artistic

work’ which is used or is
Column 14
capable of being used in
(Mandatory
relation to any goods or
if the work
services, the application
is capable Details of Search Certificate issued by the
shall include a certificate
of Trade Mark Registry shall be
from the Registrar of
being used indicated.
Trade Marks in terms of
in relation
the proviso to sub-section
to any
(1) of section 45 of the
goods or
Copyright Act, 1957.]
services)
If the work is an “artistic
Column 15 work” whether it is
Details with respect to Registration under
(Mandatory registered under the
Designs Act need to be indicated if
if applicable) Designs Act 2000. If yes
necessary.
give details.
Page | 5
If the work is an
“artistic work” capable
of being registered as a
Details with respect to publication of that
Column 16 design under the
particular design shall be indicated.
Designs Act 2000,
whether it has been
applied to an article
though an industrial
Tech Plus Media Private Ltd vs Jyoti Janda & Ors on 29 September, 2014
Author: Rajiv Sahai EndlawBench: Rajiv

Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 29th September, 2014
+ CS(OS) 119/2010 & IA No.920/2010 (of the plaintiff u/O-39 R1&2

CPC) and IA No.924/2010 (of the plaintiff u/S 79 of the Information Technology
Act, 2000)
TECH PLUS MEDIA PRIVATE LTD...................................................Plaintiff
Through: Ms. Maninder Acharya, Sr. Adv. withMr. Vikas Sethi & Mr. Yashish
Chandra, Advs.
versus
JYOTI JANDA & ORS......................................................................................................Defendants
Mr. Mithilesh Kumar & Mr. MallikaArjun,
Advs. CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
RAJIV SAHAI ENDLAW, J
1. The plaintiff has instituted this suit for permanent injunction restraining
infringement of copyright, passing off, unfair competition and forancillary reliefs of rendition
of accounts, delivery and damages, pleading:-
(a) that the plaintiff is a leading industry publication house in thesphere of Information Technology
having a print media publication called IT Price Var and online news portal called
ITVARNEWS.NET dedicated to Information Technology
channels and professionals;
(b) the said publication deals with latest developments, trends and news in the area of Information
Technology including
interviews of industry leaders, analysis of existing and future
trethe plaintiff, over a period of time has developed its detailed confidential electronic
databases not just of existing clients andcustomers of the plaintiff but also containing their
contact points; the plaintiff has also developed detailed database of entities which could be
targeted for subscription of its magazine;
(c) the aforesaid databases have been developed over a period ofnine years andconstitute
confidential data and information ofthe plaintiff constituting its trade secrets;
(d) the plaintiff has alsodevelopeda unique system of informationprocessing of Release Orders
tailored to the requirements of publishing information technology journals;
(e) the plaintiff has also a evolved very distinctive, detailed andcomprehensive data, information
and databases pertaining to
CS(OS) 119/2010
running of business of information technology publications andwebsites in India;
(f) the plaintiff has also created databases pertaining to its websiteincluding details of general
comments, dates of such comments/posts along with details of last post and internet protocol
addresses;
(g) that the aforesaid confidential data and information are the original literary and artistic works of the
plaintiff and are storedon computers and computer systems and communication
devices of the plaintiff;
(h) the plaintiff has copyright in the said information being the expression of the plaintiff□s original
and inventive thoughts and the plaintiff has expended immense original skill, thought process,
imagination in the same;
(i) that the defendant no.1 was employed as Management Information Systems Executive
with the plaintiff on 22 nd
August, 2008, to assist the Director of the plaintiff and to keepon regularly checking out all online
activities and back officeelectronic activities of the plaintiff Company and was
CS(OS) 119/2010 Page 3 of 23
interacting with the major clients of the plaintiff and owing tothe nature of her job was given access
to all the aforesaid data;
(j) that as per the policy of the plaintiff Company, the defendantand also all other employees were
not to engage themselves with any other media organization employer and were requiredto
maintain confidentiality qua all the aforesaid data;
(k) that the defendant no.2 Mr. Rajeev Ranjan Jha was recruited tothe post of Correspondent with
the plaintiff w.e.f. 1st April,2008 and the letter of his employment also prohibited him
fromengaging in any other business and required him to maintain confidentiality qua all
copyrights of the plaintiff;
(l) that in the third week of October, 2009 the plaintiff observed a new website in the name of
www.thenewsxpress.com
(impleaded as defendant no.3) with a parallel business model to that of the plaintiff, for supplying
exactly similar kind of content/services as that supplied by the plaintiff□s publications;
(m) that the plaintiff in October, 2009 installed surveillance devicesin its premises and which was
objected to by the defendants
CS(OS) 119/2010
no.1&2 and who resigned and were relieved on 31 st October,2009;
(o). thatsubsequentlythe plaintiff found the competitive websitewww.thenewsxpress.com
impleaded as defendant no.3 to have become very aggressive and selling its services at 50% of
therate at which the plaintiff was offering similar services andwhich led to the plaintiff□s
publication declining;
(p). that the plaintiff on making enquiries learnt that the defendantno.3 was being run by the
defendants no.1&2;
(q). that subsequent investigations revealed that the defendants no.1&2 had copied the confidential
information and databases constituting the trade secrets of the plaintiff on pen drive andsent them
through e-mail to their personal e-mail IDs;
(r). that the defendants have thus infringed copyright of theplaintiff;
2. Though the plaint was accompanied with an application for interim relief but
no ex parte relief was granted to the plaintiff and has not been granted till 11th April, 2013,
inspite of the suit having been pending for the
last over three years. The senior counsel for the plaintiff on 11th April, 2013,
CS(OS) 119/2010 Page 5 of 23

stated that she is not pressing for interim relief. IA No.920/2010 isaccordingly dismissed as not
pressed.
3. The defendants are contesting the suit by filing the written statement,
pleading:-
(i). that the plaintiff itself has copied the concept of M/s. Kalinga Digital Media (P) Ltd. who has filed
a suit against the plaintiffand in which the plaintiff who is the defendant in that suit has been
restrained from passing off the Trademark "VAR" along
with the distinctive expression "VALUE ADDED RESELLER"
on any publication and/or from using, selling, offering for sale,printing or marketing or advertising
the magazine or journal being identical, phonetically or visually, or deceptively similarly to the said
Kalinga Digital Media (P) Ltd.□s publication;
(ii). that as of the day of filing of the written statement, there was nomagazine by the name of IT Price
Var in the market;
(iii). that the plaintiff was incorporated only in the year 2005 and
thus the plea, of having collected the data over nine years, isfalse;
CS(OS) 119/2010 Page 6 of 23
(iv). that the defendant no.1 was working as P.A. to the Director of
the plaintiff and maintaining the field staff□s daily report andthe defendant no.2 was working as
Correspondent, only to collect the information from the market and to hand it over tothe
Publication Division;
(v). the information or databases do not constitute trade secrets andare openly available in the market;
(vi). that the defendants have not signed any agreement of confidentiality and else denying the
claim of the plaintiff;
(vii) that the defendant no.2 is a MA in Mass Communication and
has established himself as a Journalist and the defendant no.3www.thenewsxpress.com is no way
similar either deceptively
or identical as that of the plaintiff; and,
(viii) that the defendants have purchased the data/Pro email marketing account from M/s.
Swiftpage E 383, Englewood CO80112 and have also subscribed Software licence from
Sage Software SB Inc.;
4. The plaintiff has filed a replication to the written statement aforesaidthough
not denying the filing of the suit against it by Kalinga Digital Media
CS(OS) 119/2010 Page 7 of 23
(P) Ltd. but averring the same to be bad and pleading that IT Price Var is aregistered publication
since 2001 and it is only the online publication "itVARnews" which came into being in 2005 and
IT Price Var is a
proprietorship organization of the Director of the plaintiff registered in 2001and the databases of
the plaintiff are unique.
5. The suit, being ripe for framing of issues, was listed on 7th February,2013
when it was enquired from the counsel for the plaintiff as to what is theproprietary right of
the plaintiff in the databases and how can the same be said to be the copyright of the plaintiff.
Attention of the counsel for the plaintiff on that date was invited to Percept D' Mark (India)
(P). Ltd. Vs. Zaheer Khan (2006) 4 SCC 227 laying down that in the absence of any
proprietary rights being shown, such competition cannot be restrained. On
the request of the counsel for the plaintiff, the matter was adjourned to 11thApril, 2013.
6. The senior counsel for the plaintiff on 11th April, 2013 argued that the data of
the plaintiff in which copyright is claimed comprises of prospective customers/clients and their
particulars, and attention in this regard is invited
to Section 2(o) of the Copyright Act, 1957. On further enquiry as to how the plaintiff can be said
to have any proprietary rights in the same, it was argued
CS(OS) 119/2010 Page 8 of 23
that the said data has been collected since the year 2001 i.e. since much priorto the time when the
defendants joined the employment of the plaintiff and
the defendants cannot thus have any right in the same. Reliance in thisregard was placed
on paras 68 & 72 of Diljeet Titus Vs. Mr. Alfred A.Adebare 130 (2006) DLT 330 and on
paras 30 & 31 of BLB Institute of Financial Markets Ltd. Vs. Ramakar Jha 154 (2008)
DLT 121.
It was
further contended that Percept D' Mark (India) (P). Ltd. was not concerned with the situation
as has arisen here. Reliance lastly is placed on Alka GuptaVs Narender Kumar Gupta (2010)
10 SCC 141 laying down that Civil
Suits have to be proceeded with, in according with the provisions of CPC and not on the
whims of the Court and to be decided only after framing ofissues and trial, permitting
parties to lead evidence.
7. Per contra, the counsel for the defendants has drawn attention to Sections
2(d) & 17 of the Copyright Act and contended that the plaint nowhere discloses as to who is
the author of the alleged copyright. It is contended that the plaintiff, which is a juristic
person, cannot be the owner
of the copyright in the databases alleged. It is argued that the defendants asJournalists would
have copyright in what is published by them and the plaintiff has not pleaded any agreement
to the contrary; that though the
CS(OS) 119/2010 Page 9 of 23
plaintiff had also filed a complaint against the defendants, but afterinvestigation, no FIR was
registered.
8. The senior counsel for the plaintiff in rejoinder argued that summons in a suit
are issued for framing of issues and thus issues have to be necessarily framed and the suit put
to trial and this Court at this stage, even
prior to the framing of issues cannot conduct the enquiry as is being done.
9. I repeatedly asked the senior counsel for the plaintiff as to what data of the
plaintiff has been taken away by the defendants in as much as the use of the word „database□
without specifying as to what is in that database is notfound to be sufficient. The senior
counsel for the plaintiff first contended that the said data comprises of list of consumers of the
plaintiff with particulars of their contact points. However it was enquired as to who are the
consumers in as much as the plaintiff claims to be only a publisher of a newsmagazine which
is distributed free of cost (the cost thereof is pleaded at Rs.15/- but the senior counsel on
instructions stated that the magazine is
mailed free of costs to the persons identified as interested therein) and is notin the business of
selling any goods.
10. The senior counsel for the plaintiff then contended that dependingupon
the circulation and publication of the news magazine, advertisers of
CS(OS) 119/2010
various products advertise in the magazine published/news portal of theplaintiff.
11. It is however enquired as to what can be the copyright in the particulars of
the said advertisers, who would be evident from the advertisements on the news portal and
in the newsmagazine of the plaintiff.
12. The senior counsel for the plaintiff then contended that database consist of
visitors to the website/news portal of the plaintiff and to whom thenews magazine is mailed.
13. It was enquired whether the news magazines of the plaintiff and the
defendants are registered with the Registrar of Newspapers for India and anyreturns
indicating the circulations of the respective magazines are filed.
14. Neither counsels could respond to the same and stated that they will
obtain instructions.
15. The senior counsel for the plaintiff then contended that the databasequa
which the suit is filed and which the defendants have taken away is of the visitors of the
website/news portal of the plaintiff.
16. However on a perusal of the plaint, I do not find the same to be pleaded.
The plaintiff, save for repeatedly referring to databases has notspecifiedas to what those
databases pertain to and what is the contribution
CS(OS) 119/2010
of the plaintiff thereto. From what has been argued, the said databases are nothing but a
collection of the e-mail addresses of the visitors to the website/news portal of the plaintiff.
The plaintiff cannot be said to be the author or composer or having any contribution in the
same. On the contrary the pleadings in para 31 are of the publication of the news magazine
of the plaintiff having declined and which is inconsistent with the argument raised, of the
news magazine being mailed free of costs to persons interested in the same.
17. The plaintiff, in para 10 of the plaint, has pleaded that it has
evolveddistinctive, detailed and comprehensive data information and databases pertaining to
running the business of information technology publication and website in India and has
created unique databases pertaining to the website including details of general comments, the
dates of making such comments/posts along with details of last post and internet
protocoladdresses.
18. I repeatedly enquired from the senior counsel for the plaintiff as tohow, in a
collection of the names and addresses of the visitors to the newsportal of the plaintiff or their
comments, the plaintiff can claim copyright within the meaning of Section 14 of the Act and
how the same can be called
CS(OS) 119/2010 Page 12 of 23
literary, dramatic or musical work or even a computer programme. It is notthe plea of the
plaintiff that it has got written from anyone a computer programme for maintaining such
contents or for shifting the same into various categories etc.
19. No merit is found in the contention of the plaintiff that because summons are
issued in a suit, issues are necessarily to be framed. Issues are to be framed only on material
propositions of fact or law affirmed by one party and denied by other and material
proposition are those proposition of law or fact which a plaintiff must allege in order to show
a right to sue or adefendant must allege in order to constitute his defence. Had the plaintiff
pleaded anything which would show vesting of a copyright in a plaintiff, would an issue have
arisen. I have in judgment dated 7th November, 2012 in CS(OS) No.2695/2011 titled Satya
Gupta Vs. Guneet Singh dealt in detail
in this regard and need is thus not felt to reiterate the same.
20. If the Court, on a reading of the plaint seekinginjunction and ancillaryreliefs on the
basis of a copyright finds no sufficient pleading of the existence of a copyright in favour of
the plaintiff, I am not willing to acceptthat the matter still has to go through the rigmarole
of trial. It is the settled position in law that evidence beyond pleadings cannot be led. The
plaintiff is CS(OS) 119/2010 a juristic person and is incapable of being the author of any work in
which copyright may exist. However the plaintiff can be the owner of a copyright under an
agreement with the author of the said work. For the plaintiff to maintain the present suit, it is
incumbent upon the plaintiff to disclose the said work and the author thereof and the
agreement under which the author has made the plaintiff the owner of the copyright in the said
work. The
plaintiff has not done so. I cannot read the judgment of the Supreme Court inAlka Gupta
(supra) also to be laying down that merely because a suit has
been filed, it has to go through the entire gamut of trial. The Supreme Courtin Alka Gupta
(the judgment of dismissal of suit in which case also was of the undersigned and appeal
whereagainst had been dismissed by the Division Bench of this Court) was concerned
with the questions of fact having been decided on the basis of the statement recorded
under Order X ofthe Code of Civil Procedure and not with a case with which we are
faced herein, of the material facts required to be pleaded in an action for infringement
of copyright to show a right to sue, lacking in the plaint.
21. Judicial notice can be taken of the practice which has evolved, of
employers filing suits as the present one against the employees quitting employment. The
judicial stream is today inundated with such suits. Judicialnotice can also be taken of the
fact that such suits are often vehemently pressed only till the stage of interim injunction
and rarely succeed after trial.
Today when the entire judicial system reels under the burden of arrears, andwhen it is found
that suits are being filed not to vindicate any violation of rights but to teach a lesson to an
employee wanting to move to greener pastures and/or to curb competition, the Courts would
be doing a disservice if do not take cognizance of such developments in the passage of time
and turns a blind eye thereto, mechanically frame issues and put the suit to trial(See Kawal
Sachdeva v. Madhu Bala Rana MANU/DE/1050/2013). The principle behind Section 27 of
the Indian Contract Act, 1872 making agreements in restraint of trade void, is to prevent anti-
competitive practices.
With the same intent the legislation in the form of Competition Act, 2002 has been
brought. When the pleas of copyright are found to be non-existent
and the intent and motive in institution of the suit is to curb and prevent competition, the
Courts should not hesitate in curbing such an action, whichis contrary to the public policy of
India, at the threshold. In my opinion, allowing such suits to go through the gamut of trial
itself has tendency to curb competition, irrespective of the outcome of the suits.
22. A Single Judge of this Court in American Express Bank Ltd. Vs.
Priya Puri MANU/DE/2106/2006, dealing with an application for interim
relief in a suit for injunction against an ex-employee, restraining her fromusing or disclosing
any information and trade secrets relating to the businessand operations of the plaintiff Bank
and from breaching the confidentiality term as per letter of appointment / code of conduct
including customers privacy principles / policies held:
(i) that the plaintiff Bank in the garb of confidentiality was tryingto contend that once the customer of
plaintiff, always a
customer of plaintiff; a competitor Bank cannot be restrained from dealing with the customers
of the plaintiff Bank on theground that the bank maintains written record of its customersand
their financial portfolios which has been acquired by the competitor Bank and so the competitor
bank should be restrained even to contact those customers; a competitor Bank
even after acquiring information that a particular person is
banking with the plaintiff Bank, is free to approach that person and canvass about themselves; it is
for the customers to decide with which Bank to bank and a Bank cannot arrogate to itself
CS(OS) 119/2010 Page 16 of 23
the rights to deal with a customer exclusively on the ground thatit has created a data base of its
customers and their financial portfolios; no Bank should be allowed to create monopolies on
the ground that they have developed exhaustive data of theirclients/customers;
(ii) creatingadatabase of the clients/customersandthenclaiming confidentiality about it, will not
permit such Bank to create amonopoly about such customers that such customers cannot be
approached even;
(iii) the details of customers are not trade secrets nor they are theproperty.
23. I must also refer to Burlington Home Shopping Pvt. Ltd. Vs.
RajnishChibber 61 (1996) DLT 6 in which a Single Judge of this Court, dealing
again with an application for interim relief in a suit by a mail order servicecompany against its
employee for injunction restraining breach of copyright and confidentiality held that
compilation of addresses developed by devotingtime, money labour and skill though the
sources may be commonly situated, amounts to a „literary work□ wherein the author has a
copyright.
Finding
that the data base available with the defendant therein was substantially a
CS(OS) 119/2010 Page 17 of 23

copy of the data base available with the plaintiff therein and compiled by theplaintiff interim
injunction was granted. Similarly another Single Judge ofthis
Court in Diljeet Titus (supra) held in the context of an advocate / law firm that a list
containing details about the particular persons such law firm is handling and the nature of work
or the contact person in the client□s company and specially designed by an advocate of his
Court matters, copyright exists therein. It was also held that the Court must step in Court
must step in to restrain a breach of confidence independent of any right under law. I may
however further notice that both the said judgments are ofa date prior to the
pronouncement of the Supreme Court in Eastern Book Company Vs. D.B. Modak (2008) 1
SCC 1 laying down that to claim
copyright in a compilation, the author must produce the material with exercise of his skill
and judgment which may not be creativity in the sensethat it is novel or non-obvious but at
the same time it is not a product of
merely labour and capital. It was however clarified that the exercise of skilland judgment
required to produce the work must not be so trivial that it
could be characterized as a purely mec hanical exercise.
Accordingly, it was held that copy edited judgments would notsatisfy the copyright
merely by establishing amount of skill,
CS(OS) 119/2010 Page 18 of 23
labour and capital put in the inputs of the copy edited judgments as theoriginal or innovative
thoughts for the creativity are completely excluded.
24. Post the aforesaid judgment of the Supreme Court, a Single Judge ofthis
Court in Emergent Genetics India Pvt. Ltd. Vs. Shailendra Shivam
2011 (47) PTC 494 again dealing with an application for interim relief held:
(a) sequences obtained from nature (e.g., the sequence for a gene)cannot per se, be original. The
microbiologist or scientist involved in gene sequencing discovers facts; there is no independent
creation of a work, essential for matching the originality requirement; such a scientist merely
copies from nature-genetic sequence that contains codes for proteins; therefore there is no
minimum creativity;
(b) there is no copyright protection for any idea; that when the useof an idea or procedure requires
copying of the plaintiff□s expression, there is no copyright infringement
(c) that since there could be no copyright of ideas, the merged expression / idea is incapable of
copyright; granting copyrightprotection of the sole or limited way of expression of an idea,
CS(OS) 119/2010 Page 19 of 23

would mean no one can practice the idea or procedure expressed without being guilty of
copyright infringement;
(d) pleadings of the nature and quality of information which is confidential are crucial and in the
absence thereof there is noquestion of confidentiality;
(e) granting injunctions under the umbrella of trade secret or confidential information carry the danger of
imperiling the rightto occupation guaranteed by Article 19(1)(g) of the Constitution and right to
livelihood held to be an intrinsic part of Article 21.
25. The same learned Judge reiterated the said position in Dr. Reckeweg&
Co. GMBH Vs. Adven Biotech Private Ltd. 2008 (38) PTC 308 (Del)
dealing with the issue of copyright in relation to the nomenclature of drugs,the listing of the
medicines in a particular fashion, the description and the curative effect compilation in a
brochure. Finding the plaintiff to have failedto demonstrate how they had employed any skill,
judgment and labour in describing the curative elements, let alone any creativity and in the
absenceof any averment as to the uniqueness of such description or intellectual creativity, it
was prima facie held that no copyright can subsist therein. It
CS(OS) 119/2010 Page 20 of 23

was further held that a catalogue / brochure being a derivative work being a
collection or sequencing of already existing information, the standard of creativity required to
qualify as a work in which copyright subsists is higherthan the standard required in cases of
primary works and finding the plaintiffs to have not specifically averred as to the manner in
which the sequencing was done and the technique or criteria employed to place the medicines
in that particular sequence, the application for interim relief was dismissed observing that the
document in which copyright was claimed was merely a compilation.
26. The same learned Single Judge sitting for the Division Bench of thisCourt
in Akuate Internet Services Pvt. Ltd. Vs. Star India Pvt. Ltd.
MANU/DE/2768/2013 held that the Copyright Act having granted
protection only qua material in which copyright could be held, injunction on the ground of the
broadcast rights having been violated could not be granted.It is however learnt that appeal
against the said judgment is pending before the Supreme Court. It was also held that creating
property (or quasi- property) rights in information stands to upset the statutory balance
carefully created by the legislature through the Copyright Act and no injunction in theabsence
of copyright on equitable grounds can be granted. It was yet further
CS(OS) 119/2010 Page 21 of 23
held that the doctrine of unfair competition prohibits the misappropriation ofmatch information and
would amount to holding that misappropriation under
the common law can supplant the Copyright Act.
27. Order VII Rule 11 of the CPC enables the Court to, when finds the plaint to
be not disclosing any cause of action or when finds the suits from
the statements in the plaint to be barred by any law, to reject the plaint at thethreshold. Similarly
Order XV of the CPC also empowers the Court to, when
finds the parties to be not at issue on any question of law or facts, at once
pronounce judgment. Order XV in my opinion applies equally to the
plaintiff as to the judgment. The judgment referred to herein is not to benecessarily
against the defendants and can be against the plaintiff as well.
The Court, even if summons ought not to have been issued in the suit and
have been issued, at the stage of framing of issues finds the plaintiff to benot pleading the
material propositions of law essential for succeeding in thesuit, is empowered to
pronounce judgment against the plaintiff.
28. During the hearing it was repeatedly asked to the senior counsel for the
plaintiffs as to what purpose would be served by granting an opportunityto the plaintiff
to lead evidence as was repeatedly argued. No answer was forthcoming.
29. Before parting, I must record that after hearing arguments on 11
thApril, 2013, this judgment was intended to be dictated and pronounced in chamber on
the same date. The judgment though was dictated on the same
day but remained to be corrected and went on the back burner and has accordingly been
listed for pronouncement. I must further record that
neither party mentioned the matter in the last nearly one and a half year.
30. I therefore find the plaintiff to have not pleaded the material
propositions of fact essential to succeed in an action for infringement ofcopyright and
thus pronounce judgment forthwith against the plaintiff dismissing the suit. However
in the facts, no order as to costs.
31. Decree sheet be drawn up.
` RAJIV SAHAI ENDLAW, J.

Rupendra Kashyap vs Jiwan Publishing
House on 1 July, 1996
Equivalent citations: 1996(38)DRJ81 Author:
R.C. Lahoti
Bench: R.C. Lahoti
JUDGMENT
R.C. Lahoti, J.
(1) This is an application seeking grant of an ad interim injunction in a suit filed by the plaintiff seeking
relief of permanent a junction restraining the defendants No. 1 and 2 from publishing, printing or selling
3pics of question papers and for rendition of account delivering up etc. complaining of infringement
of plaintiffs copyright by defendants No. 1 and 2.
(2) The plaintiff Rupendra Kashyap is proprietor of M/S Som Sudha Prakashan dealing in
publication of educational books. According to the plaintiff, he is an exclusive licensee of the Central
Board of Secondary Education, defendant No.3 (hereinafter, Cbse for short) in respect of past year's
question papers prescribed for class X and Xii examinations being conducted year tyear from 1990
onwards by defendant No.3 and therefore is the owner of the copyright under section 54 of the
Copyright Act 1957. No one other than the plaintiff could publish, print, reprint, reproduce sell or offer
for sell in any form the past years' question papers of the examinations conducted by defendant No.3.
However, in breach of the rights of the plaintiff, defendants 1 and 2 are publishing question papers of the
CBSE's examinations which is an infringement of the plaintiffs copyright.
(3) The Cbse defendant No.3 has supported the plaintiff. According to it no person other than the
plaintiff could print, reprint, produce or reproduce, publish, distribute, circulate, sale or offer to sell, past
years question papers of Cbse except the plaintiff in accordance with the terms of agreement entered into
between the plaintiff and CBSE.
(4) The defendants No. 1 and 2 are contesting parties and have raised very many pleas to attack the relief
sought for by the plaintiff. It is submitted that the suit is not maintainable as there is no assignment in
favour of defendant No.3 from the authors of the examination papers. A form signed by the author
accompanying the letter offering him to set the paper does not operate as an agreement to assign
copyright. The author is not the sole author but examination papers are prepared by several persons and
moderated by another person and so being a joint work of each of such persons they arc co- authors. It is
incumbent in law for the plaintiff to trace the title to each of the persons who have contributed to the said
examination paper.
4.1 Section 52(1)(a)(i) and Section 52(l(b)(iii) of the Copyright Act, 1957 confer upon the defendant a
complete defense inasmuch as they have been using the Board examination papers as a part of their
several works and books in various forms in which they include answers to the said questions which are
completely composed by them or persons on their behalf and in this view of the matter what they are
doing is a fair dealing of the literary work for purposes of research and private study.
4.2 It is also submitted that the defendants have been printing and publishing questions papers for over
25 years and ever since the inception of the Board in the year 1952. The defendants are two out of 30-40
publishes over the country who arc engaged in such activity for the past decades. Thus the suit suffers
from laches, acquiescence and inordinate delay.
4.3 It is also submitted that the suit is against public interest, as a Government organisation having been
given the responsibility to conduct examination cannot be permitted to monopolise publication of
question papers which are required by students for the purpose of their study and research.
(5) The written statement Filed by defendant No.3 has been amended so as to introduce the additional
pleas in defense by reference to Section 17(dd) of the Copyright Act. It is submitted that Cbse came into
existence in its present form on 1.7.62. It is a society registered under the Societies Registration Act,
1960. It is controlled by the Secretary, Department of Education, Ministry of Human Resource
Development. It was constituted to conduct examinations at secondary level of education. Defendant
No.3 is a 'public undertaking' as contemplated by Section 17(dd) of the Copyright Act as it is owned and
controlled by the Government and has been incorporated under a resolution of the Government of India.
The defendant No.3 has the exclusive copyright in the question papers used by it in its various
examinations. It has examination bye-laws, instructions to the paper-setters and instructions to the
moderators. The rights of Cbse are not limited to use the papers in the examination only. It can assign
and/or license its right for publication and get royalty.
5.1 In the examination bye laws paper setters/ moderators are appointed for a period of three years. The
term can be renewed. In order to minimise any probability of leakage, the identity of paper-setters
and moderators is kept anonymous and is not disclosed even after expiry of their term.
5.2 In the interest of maintaining confidentiality so as to have a fair examination, defendant No.4 has
claimed privilege from producing the agreements with the paper setters and appraisal forms of the
moderators and the original scripts of the question papers and its appraisal either by the defendant No.3
or other persons. It is submitted that anonymity in the particulars and names of paper setters and
moderators is essential and in the interest of conduct of smooth and fair examinations and in public
interest.
(6) In view of the submissions made by the learned counsel for the parties the following questions a rise
for determination at this stage :
(I) Whether a question paper set for the purpose of conducting an examination by Cbse
can form subject matter of copyright ?
(II) Who would be the owner of the copyright ?
(III) Whether the plaintiff has the cause of action for bringing the suit ?
(IV) Whether the action brought by the plaintiff suffers from delay and laches and
acquiescence ?
(7) Question NO.(i) The first question needs a short and summary disposal. In view of the
law laid down in Jagdish Prasad Gupta v Panneshwar Prasad Singh 1966 Patna 33,
Agarwala Pub House v Board of H.S. & I Education and University of London Press Ltd
v. University Tutorial Press Ltd. (1916)-2 Ch. D. 601. It cannot be doubted that an
examination question paper is a literary work' within the meaning of Section 13(1)(a) and
Section 2(0) of the Copyright Act, 1957. la Agarwala Publishing House Khurja's case (
supra) it has been held by W. Brown J: "Examination question papers are "original
literary works" within the meaning of S. 13 of the Copyright Act and copyright can be
claimed in respect of them.
The words "literary works" in S. 13 are not confined to works of literature in the commonly understood
sense but include all works expressed in writing whether they have any literary merit or not. The word"
original" in S. 13 does not imply any originality of ideas but merely means that the work in question
should not be copied from some other work and should originate in the author being the product of his
labour and skill. Thus question papers are "original literary works" within the meaning of Section 13
And copyright can be claimed in respect of them.", I am in respectful agreement with the view so taken.
It was also not disputed at the hearing that the question papers on which examination is conducted by
defendant No.3 constitute literary 'vork" within the meaning of Clause (0) of Section 2 of the Copyright
Act.
(8) Question NO.(ii) Section 17, the relevant part thereof, provides as under : "17. First owner of
copyright-Subject to the provisions of this Act, the author of a work shall be the first owner of the
copyright therein : Provided that - Xxx xxxxxxxxx (dd) in the case of a work made or first published by
or under the direction or control of any public undertaking, such public undertaking shall, in the absence
of any agreement to the contrary, be the first owner of the copyright therein. Explanation - For the
purposes of this clause and Section 28A, "public undertaking" means-
(I) an undertaking owned or controlled by Government; or (II) a Government Company as defined in

Section 617 of the Companies Act, 1956 (1 of 1956); or (III) a body corporate established by or under
any Central, Provincial or State Act;] (9) It cannot be doubled that the paper setter (one or more) is the
author of the question paper. However, if it can be held that CBSE- defendant No. I is a public
undertaking and the question paper has been brought into existence under its direction or control then
the CBSE-and not
the paper setter-would be the owner. It was also submitted that the names of the paper setters and
moderators are kept anonymous and so also it is the Cbse, defendant No.3 who first publishes the
question papers would be the owner of the copyright therein.
(10) An extract from the manual of rules and regulation of Cbse has been filed which contains the
Government of India resolution dated 1.7.79 as amended thereafter from time to time. Therefrom the
status and constitution of the Cbse can be spelled out.
10.1 The Board has been constituted to enable it to play a useful role in the Field of secondary education,
to raise the standard of secondary education, to make the services of the Board available to various
educational institutions in the country and to meet the educational needs of those students who have to
move from State to State. The Board shall conduct examination at the secondary stage of education and
such other examination as it may consider fit subject to the approval of the controlling authority or as it
may be called upon to conduct by the Government of India, Ministry of Education. The Secretary to the
Government of India Ministry of Education and Social Welfare is the controlling authority of the Board.
10.2 The Board shall consist of the following: i) Chairman ii) Vice Chairman ( Director of Education,
Delhi ex-officio). iii) One representative each of the Education Departments of the Union Territories
excepting Delhi which wish to avail of the services of the Board. iv) One representative each of the
Territorial Councils of the Union Territories other than Delhi subject to their available of the services of
the Board. v) Three representatives of the Education Department of Delhi Administration,
one of whom shall be an Assistant Director Education ( women) vi) One representative each of the
Education Departments of the Delhi Municipal Corporation and the New Delhi Municipal Committee.
vii) One representative of the Ministry of Scientific Research and Cultural affairs ( now merged with the
Ministry of Education & Social Welfare) conversant with the problems of Technical Education. viii) A
representative of the Ministry of Health conversant with problems of Medical education and of Health
Education in schools. ix) A representative each of such other Ministries and Departments of the
Government of India as may be decided by the Controlling Authority. x) Two representatives of the
University of Delhi to be elected by its Academic Council.
xi) Three representatives of the Inter- University Board. xii) Two Headmasters of Public Schools to be
nominated by the Indian Public Schools Conference. xiii) Two representatives each of the special
category of schools designated as such by the Controlling Authority who may also prescribe the method
of nomination or selection xiv) One Headmaster/Principal of High and Higher Secondary Schools (other
than the special schools affiliated with the Board and located in the various States ( other than the Union
Territories) to be elected from amongst themselves. xv) Four Principals of Higher Secondary Schools in
Delhi to be elected from amongst themselves by the Principals of Higher Secondary Schools affiliated
with the Board, at least one of whom shall be the principal of a Girls School. xvi) One
Headmaster/Principal of High/Higher Secondary School from each of the Union Territories ( excepting
Delhi) availing of the services of the Board to be nominated by the respective administrations. (xvii)
Head of the Central Institute of Education Delhi ( ex-officio) (xviii) One person each to represent the
following professional bodies to be appointed by the Controlling Authority: (a) Engineering. (b)
Agriculture (c)
Medicine. (d) Industry and Commerce. (c) Fine Arts (0 Home Science. (xix) Not more than four persons
to be nominated by the Controller Authority from amongst eminent educationists or teachers of the
Institutions affiliated with the Board whose services it may be considered necessary or desirable to
secure for the Board, keeping in view the composition of the Board. (xx) Not more than three persons to
be co- opted members as per clause 6
(xx) shall function as the Governing Body of the Board."
10.3 The Board may acquire properties- moveable and immovable- and invest surplus funds of the
Board in Government securities or in bank approved by the controlling authority. The Chairman and the
Vice Chairman shall be appointed by the controlling authority on such terms and conditions
of service as the controlling authority may decide. Secretary shall be appointed by the controlling
authority upon such condition and for such period as the controlling authority may think fit. The
constitution of the Board may be altered and modified by the controlling authority.
10.4 It is thus clear that in the matter of composition of the Board and its functioning, it has a public
structure and is controlled by the Secretary to the Govt of India. The Board is a society registered under
the Societies Registration Act, 1860. It has been constituted for a public purpose and is controlled by the
Central Government.
(11) The term 'public undertaking' is not defined anywhere in the Copyright. Act. In the context, the
word 'public' means something belonging to the people, pertaining to a community or a nation in
contradiction with something belonging to a private individual. The public undertaking would be an
undertaking engaged in or concerned with the affairs of community, or the public and not owned or
controlled by any individual or anyone having a private interest. The Cbse is discharging a public
function in the field of imparting education. It has the governmental authority and privilege to conduct
public examinations. The examinations conducted by it are universally recognised as having authority
and sanction of the government behind. It is discharging one of the governmental functions. It has
governmental supervision. It is clear that Cbse is a society which is functionally and structurally
impregnated with the governmental character and discharging a public function. It is,therefore, a public
undertaking.
(12) It was submitted on behalf of the defendants I and 2 that assuming Cbse to be a public undertaking,
it cannot be said for the purpose of Section 17(dd) of the Copyright Act that the examination papers
were prepared under the 'direction or control' of such public undertaking. It was submitted that the
'contract entered into between the paper-setters and the Cbse may be a 'contract for service' but certainly
not a 'contract of service" and therefore, the job of paper setting performed by the paper setters cannot be
said to be one performed under the 'direction or control' of CBSE. In my opinion, the distinction sought
to be drawn between the 'contract of service' and 'contract for service' for the purpose of and in the
context of the case at hand is merely a jugglery of words and without any meaningful substance.
12.1 Mr S.C. Gupta Secretary Cbse has, in his affidavit dated 1.7.1994, stated vide para 2 that the paper
setters are employed by the Cbse for consideration and all the rights in the question papers set by the
paper
setters vest in the CBSE. Cbse prescribes syllabus from which the paper setter has to set the questions.
While setting the question paper, the paper setter has to ensure the preparation of questions as indicated
by the CBSE. The Cbse also prescribes difficulty level and gives guidelines to ensure that the question
paper set by the paper sellers can be solved by the candidates within the time specified. It is followed by
appraisal by the moderator. If any change is required then it is carried out in the question paper. It is thus
clear that the paper setters do set the question paper under the direction or control of the CBSE.
To be under direction or control of an employer, it is not necessary that the employee must have had
entered into a 'contract of service' with the employer. Even a 'contract for service', if accompanied by
appropriate terms and conditions, may vest the employer with requisite direction
12.2 or control so as to attract the applicability of Clause (dd) of Section 17 of the Act.
12.2 Looking at the terms and conditions on which the papers are set by the paper setters as disclosed by
the agreement entered into between the paper setters and the Board and the contents of the affidavit of
Shri
S.C. Gupta, I am satisfied that the papers are set by the paper setters under the 'direction or control' of
Cbse which is a 'public undertaking'.
(13) On the original manuscripts of question papers, appraisal forms by moderators and the agreements-
as entered into between the paper setters and Cbse, the defendant No.3 has claimed privilege from
production on the affidavit of Shri S.C. Gupta the Secretary to the Board, staling that it will not be in
public interest to disclose the contents of the original documents. In my opinion, the claim for privilege
is justified under Section 123 read with Section 162 of the Indian Evidence Act, 1872. Reference may be
had to the law laid down by the Supreme Court in State of Punjab vs Sukhdev Singh, and State of U.P.
vs Raj Narain and others, and by High Court of Patna in State of Bihar vs Kastur Bhai Lal Bhai .
Objectivity of standards and fairness and impartiality in holding the examinations cannot be maintained
without the names of paper setters, moderators, printers, examiners, valuers and even tabulators- all
those associated with the process right from preparing for examinations to the stage of declaring the
results- being kept a guarded secret. The disclosure of such vital information, whether before, after or
during the examinations,is bound to cause irreparable injury to public interest. The claim of privilege is
sustained. However, the relevant documents have been produced by the Cbse in a sealed cover and the
court has perused those documents.
(14) On behalf of the plaintiff some documents secured by him from the defendant No.3 have been filed.
14.1 One is detailed instructions to be followed by the paper setters before and while setting the papers
apart from the guidelines to be kept in view. Relevant part of the Board's rules and regulations has been
extracted in the said instructions. One of them is that the question paper shall be the exclusive property
of the Board and its copyright shall also vest in the Board.
14.2 Every paper setter has to sign a certificate of acceptance to this effect and submit it to the Board along
with the office copy of the question paper. Therein it is stated :- "The question paper if accepted shall be
exclusive property of the Board and copyright thereof shall vest in it and I hereby assign to the said
Board the copyright and all other rights in the said paper including those of the copyright in such a
manner as the Board may think fit."
14.3 The terms and conditions on which papers are set by the paper setters go to show that such job is
performed by the paper setters under the direction and control of the CBSE.
(15) I have perused (i) the original manuscripts of question papers, (ii) the appraisal form by moderator,
and (iii) the 77 agreements between the paper setters and the Board, filed on behalf of the board and
contained in a sealed envelope. The proforma referred to hereinabove having been duly signed by paper
setters leaves no manner of doubt that the applicability of S. 17(dd) is clearly
attracted to the facts of the case and Cbse defendant No.3 would be the First owner of the copyright in
the examination papers. Even if the ownership had vested in the paper setter than it has stood assigned to
the Board. It may be noted that there is no particular form prescribed for assignment and it may be
effected by any document in writing, even by a letter. The only requisites of assignment are that it must
be in writing and it must be signed by the assignor or his duly authorised agent. The twin requirements
arc satisfied in the present case. (Sec Sections 18 and 19 of the Copyright Act ).
(16) I am therefore very clear in my mind and unhesitatingly hold that Cbse is a 'public
undertaking'; examination papers are' literary work' made under the direction and control of Cbse and
applicability of S. 17(dd) of Copyright Act is squarely attracted to the facts of the case . Cbse is the first
owner of the copyright in the examination papers on which examinations are conducted by it.
(17) It was submitted by the learned counsel for the plaintiff that the paper setters cannot and do not
disclose their identify to the public. So is with the moderators. It was also submitted that every question
paper is the outcome of a joint effort of more setters than one and the moderator, every one of whom
remains anonymous and hence the ownership would vest with the Board who first publishes the question
paper in view of S.54(b) of the Act. Reliance was placed on a Division Bench Decision of Madras High
Court in Brooke Bond India Ltd Calcutta vs. Balaji Tea( India) Pvt Ltd 1993 Pct 40. It is not necessary
to enter into this aspect in view of the finding already recorded hereinabove that under Section 17(dd) of
the Copyright Act it is the Board who will be the owner of the copyright in the question papers. Question
NO. (iii) (18) Copy of the agreement dated 2.7.91 entered into between the Board defendant No.3 and
the plaintiff has been filed. It would be useful to notice the relevant clauses thereof.
18.1 The preliminary part of the agreement states the Board ( first party) having decided to appoint a sole
licensee -the plaintiff ( second party)- to print, publish and sell the yearly question papers in
consideration of the licence fee to be paid by the plaintiff. Clause (2) provides the copyright in the
question paper to remain always with the Board. Clauses (3), (9), (12) and (13) arc relevant and are
extracted and reproduced hereunder :- "3. That the first party hereby grants the second party the sole
licence to print, publish and sell the past question papers for classes X and Xii from 1990 examinations
onwards at a price to be decided and approved by the first party in writing each year before its
publication, in consideration of a fee @ 25%
of the printed price of the question papers to be paid by the second party to the first party. 9. That the
second party will be responsible to ensure that no other firm uses the prescribed question papers of the
Board illegally and in case of violations of the rights of the First party the second party on behalf of the
first party shall take such steps and legal actions as may be deemed appropriate. 12. That the first party
shall issue a notification/circular to all the concerned registered publishers and institutions affiliated with
the first party by way of issue of notification in three National Daily Newspapers and Board's quarterly
journal with respect to the licence being granted to the second party to print and sell the past years
question papers. 13. That the second party will be solely responsible for the correct printing and
publishing of the past question papers of the first parly from 1990 onwards examination during the
subsistence of this agreement.
18.2 Clause (4) obliges the plaintiff to sell a minimum of 50,000 copies of question papers each for class
X and Xii in a year or else to pay licence fee on such minimum guarantee figure of sale. In case of
infringement of copyright the plaintiff has been allowed to issue legal notice.
18.3 The agreement is in writing, signed by both the parties and attested by two witnesses.
18.4 Pursuant to clause 12 of the agreement ferred to in para (18.1) above, the Cbse has published
notifications in the newspapers, publicly notifying the plaintiff having been appointed an exclusive
licensee for publication of examination papers for the previous years commencing 1990 onwards. All
such notification published in Jansatta, Delhi dated 13.9.91, Nav Bharat Times, New Delhi dated 4.8.91,
Times Of India New Delhi dated 4.8.91 have been filed.
(19) Under Section 2(j) of Copyright Act 'exclusive licence' means licence which confers on the licensee
or persons authorised by him to the exclusion of all other persons ( including the owner of the copyright)
any right comprised in the copyright in a work, and "exclusive licensee" shall be construed accordingly.
Under Section 14, copyright means exclusive right in case of literary work to do the following acts (
amongst others):
(I) to reproduce the work in any material form;
(ii) to publish the work.
(iii) to produce/reproduce or perform or publish any translation of the work and
(iv) to make any adaptation of the work. The above said insignia of the copyright are
found to have been licensed to the plaintiff to the exclusion of all other persons and
therefore, the plaintiff is an 'exclusive licensee' entitled to maintain an action for
infringement of copyright.
(20) The agreement dated 2.7.91 leaves no manner of doubt in the plaintiff having been
appointed an 'exclusive licensee' within the meaning of Section 2(j) and hence entitled to
bring an action for infringement of copyright being the owner of the copyright within the
meaning of Section 54(a).
(21) In the written statement of defendants 1 and 2 vide para 4 of the preliminary
objections, as also in the reply to the application, reference has been made to Section
52(1)(a)(i) and S 52(1)(b)(iii) of the Copyright Act as providing the defenses available to
defendants 1 and 2. In the Copyright Act, there is nothing like sub clause (iii) to be found
under clause (b) of sub-section (1) of Section 52 of the Act. That reference appears to be
mistaken. It would, therefore, suffice to deal with the plea raised by reference to S. 52(1)
(a)(i) of the Act, which provides inter alia, that a fair dealing with the literary work for the
purpose of research or private study does not constitute infringement of copyright. The
words 'research or private study' have been substituted by the words 'private use
including research' by the Copyright
(Amendment) Act, 1994 (Act 381 of 1994). What is contemplated is a defense to the
person conducting research or private study who while doing so, if dealing fairly with a
literary work, may not incur wrath of the copyright having been infringed. But, if a
publisher publishes a book for commercial exploitation and in doing so infringes a
Copyright, the defense under section 52(1)(a)(i) would not be available to such a
publisher though the book published by him may be used or be meant for use in research
or private study. The defense raised by defendants 1 and 2 based on Section 52(1)(a)(i) is
not available to them and the plea so raised has to be rejected.
(22) The works published by defendants No.1 and 2 and brought on record are a clear
infringement of copyright vesting in defendant No.3 and licensed exclusively to plaintiff.
The plaintiff does have a cause of action.
(23) Question No, (iv) There is no question of delay, laches or acquiesence. The
agreement was entered into with the plaintiff on 2.7.1991. Every year's question papers
and each question paper would be subject matter of a copyright. Infringement of
copyright as regards each of the papers would constitute an independent and fresh cause
of action. The suit has been filed on 22.7.93 after giving notices. The action cannot be
said to be delayed or suffering from vice or laches or acquiescence.
(24) It was also submitted on behalf of defendants 1 and 2 that it would not be in public
interest and also not in the interest of the students if right of publication in the
examination papers was permitted to remain in the monopoly of the plaintiff. This
argument bears a fallacy. Knowledge of the questions appearing in the examination
papers conducted for the previous years is certainly of immense use to the students and
scholars but that information is available in the publication made by the plaintiff. It is not
the case of defendants 1 and 2 that the plaintiff is making any misuse of the exclusive
licence given to him by withholding publication of the examination papers. On the
contrary, the Cbse has taken care to sec in
its agreement entered into with the plaintiff that a minimum number of copies of
examination papers is published. The plaintiff publishing examination papers under the
licence given by the Cbse subject to payment of royalty accompanied by a minimum
guarantee is not going to gain by withholding publication either wholly or partially, if
there be a demand of such question papers in the market. Moreover, the law as to
copyright in India is governed by a statute which does not provide for defense in the
name of public interest. An infringement of copyright cannot be permitted merely
because it is claimed to be in public interest to infringe a copyright.
(25) The plaintiff has made out a strong prima facie case in his favour. Irreparable injury
is likely to be caused to the plaintiff by infringement of copyright. The quantum of
damages suffered by the plaintiff on account of illegal act of defendants 1 and 2 would be
incapable of being estimated in terms of money. The plaintiff is,therefore, entitled to
the grant of injunction as prayed for.
(26) I.A. 1656/93 for the grant of ad interim injunction is allowed. The defendants 1 and
2 are restrained from causing infringement of the plaintiffs copyright in all the past years
question papers of examination conducted by defendant No.3 from 1990 onwards by
publishing, printing, selling and offering to sell the infringing copies of the said question
papers.
Eastern Book Company & Ors vs D.B. Modak & Anr.
Eastern Book Company & Ors vs D.B. Modak & Anr on 12 December, 2007
Equivalent citations: AIR 2008 SUPREME COURT 809, 2008 AIR SCW 49, 2008
AIHC NOC 873, 2008 CORLA(BL SUPP) 129 SC, 2008 (1) JKJ 41, 2008 (1) SCC
1, 2007 (2) COPYTR 487, 2007 (14) SCALE 191, (2008) 1 CIVILCOURTC 553,
(2008) 1 MAD LJ 361, (2008) 1 CALLT 69, (2007) 14 SCALE 191, (2008) 2 MAD
LW 278, (2008) 1 RECCRIR 415, (2008) 1 RECCIVR 599, (2008) 36 PTC 1,
(2008) 1 ANDH LT 670, (2008) 2 ANDHLD 1, (2008) 2 ICC 206
Author: P.P. Naolekar
Bench: B.N. Agrawal, P.P. Naolekar
CASE NO.:
Appeal (civil) 6472 of 2004
PETITIONER:
Eastern Book Company & Ors.
RESPONDENT:
D.B. Modak & Anr.
DATE OF JUDGMENT: 12/12/2007 BENCH:
B.N. AGRAWAL & P.P. NAOLEKAR JUDGMENT:
J U D G M E N T [with Civil Appeal No. 6905 of 2004 and Contempt Petition (Civil) No. 158 of 2006 in
Civil Appeal No. 6472 of 2004] P.P. Naolekar, J.
1. These appeals by special leave have been preferred against the common judgment of a Division
Bench of the High Court of Delhi involving the analogous question and are, therefore, decided together by
this judgment.
2. Appellant No. 1 □ Eastern Book Company is a registered partnership firm carrying on the business
of publishing law books. Appellant No. 2 □ EBC Publishing Pvt. Ltd. is a company incorporated and
eXisting under the Companies Act, 1956. The said appellants are involved in the printing and publishing of
various books relating to the field of law. One of the well-known publications of appellant No. 1 □ Eastern
Book Company is the law report □Supreme Court Cases□ (hereinafter called □SCC□). The appellant
publishes all reportable judgments along with non-reportable judgments of the Supreme Court of India.
Yet another category included in SCC is short judgments,
orders, practice directions and record of proceedings. The law report SCC was commenced in the year
1969 and has been in continuous publication ever since. The name □Supreme Court Cases□ has been
coined by the appellants and they have been using the same continuously, eXclusively and eXtensively in
relation to the law reports published by them. For the purpose of publishing the judgments, orders and
proceedings of the Supreme Court, the copies of judgments, orders and proceedings are procured from the
office of the Registrar of the Supreme Court of India. After the initial procurement of the judgments,
orders and proceedings for publication, the appellants make copy- editing wherein the judgments, orders
and record of proceedings procured, which is the raw source, are copy- edited by a team of assistant staff
and various inputs are put in the judgments and orders to make them user friendly by making an addition
of cross- references, standardization or formatting of the teXt, paragraph numbering, verification and by
putting other inputs. The appellants also prepare the headnotes comprising of two portions, the short note
consisting of catch/lead words written in bold; and the long note, which is comprised of a brief discussion
of the facts and the relevant eXtracts from the judgments and orders of the Court. Headnotes are prepared
by appellant No. 3-Surendra Malik. As per the said appellant (plaintiff No. 3 in the suits filed in the Delhi
High Court), the preparation of the headnotes and putting the various inputs in the raw teXt of the
judgments and orders received from the Supreme Court Registry require considerable amount of skill,
labour and eXpertise and for the said work a substantial amount of capital eXpenditure on the
infrastructure, such as office, equipment, computers and for maintaining eXtensive library, besides
recurring eXpenditure on both the management of human resources and infrastructural maintenance, is
made by the plaintiff- appellants. As per the appellants, SCC is a law report which carries case reports
comprising of the appellants□ version or presentation of those judgments and orders of the Supreme Court
after putting various inputs in the raw teXt and it constitutes an
òriginal literary work□ of the appellants in which copyright subsists under Section 13 of the Copyright
Act, 1957 (hereinafter referred to as □the Act□) and thus the appellants alone have the eXclusive right to
make printed as well as electronic copies of the same under Section 14 of the Act. Any scanning or
copying or reproduction done of or from the reports or pages or paragraphs or portions of any volume of
SCC by any other person, is an infringement of the copyright in SCC within the meaning of Section 51 of
the Act.
3. The defendant-respondent No. 2 Spectrum Business Support Ltd. (in Civil Appeal No. 6472/2004)
has brought out a software called □Grand JuriX□ published on CD-ROMs and the defendant-respondent
No. 2 Regent Data Tech Pvt. Ltd. (in Civil Appeal No. 6905/2004) has brought out software package called
□The Laws□ published on CD-ROMs. As per the appellants, all the modules in the defendant-
respondents□ software packages have been lifted verbatim from the appellants□ work; the respondents
have copied the appellants□ sequencing, selection and arrangement of the cases coupled with the entire
teXt of copy-edited judgments as published in the plaintiff-appellants□ law report SCC, along with and
including the style and formatting, the copy-editing paragraph numbers, footnote numbers, cross-
references, etc.; and such acts of the defendant- respondents constitute infringement of the plaintiff-
appellants□ eXclusive right to the same.
4. The plaintiff-appellants herein moved the Court for temporary injunction by filing applications in
Suit No.758/2000 against Spectrum Business Support Ltd. and in Suit No. 624/2000 against
Regent Data Tech Pvt. Ltd. before a learned Single Judge of the High Court of Delhi. The interim orders of
injunction were passed in the suits from time to time. However, the defendant-respondents filed
application for vacation of the stay order. By a common judgment dated 17.1.2001, the Single Judge of the
High Court dismissed the appellants□ applications for interim injunction and allowed the respondents□
application for
vacation of stay. However, before the Single Judge, the respondents conceded that the appellants have
copyright in the headnotes and as such they undertook not to copy these headnotes in their CD-ROMs.
5. Aggrieved by the said order dated 17.1.2001 refusing to grant interim injunction, the appellants
preferred appeals before a Division Bench of the Delhi High Court and the applications praying for interim
relief were also filed in both the appeals. The applications praying for the interim relief were disposed of
by the Division Bench on 9.3.2001 directing that during the pendency of the appeals the respondents will
be entitled to sell their CD- ROMs with the teXt of the judgment of the Supreme Court along with their
own headnotes which should not in any way be a copy of the headnotes and the teXt of the plaintiff-
appellants.
***
38. It is the admitted position that the reports in the Supreme Court Cases (SCC) of the judgments of the
Supreme Court is a derivative work in public domain. By virtue of Section 52(1) of the Act, it is eXpressly
provided that certain acts enumerated therein shall not constitute an infringement of copyright. Sub-clause
(iv) of clause (q) of Section 52(1) eXcludes the reproduction or publication of any judgment or order of a
Court, Tribunal or other judicial authority, unless the reproduction or publication of such judgment or
order is prohibited by the Court, the Tribunal or other judicial authority from copyright. The judicial
pronouncements of the ApeX Court would be in the public domain and its reproduction or publication
would not infringe the copyright. That being the position, the copy-edited judgments would not satisfy the
copyright merely by establishing amount of skill, labour and capital put in the inputs of the copy-edited
judgments and the original or innovative thoughts for the creativity are completely eXcluded. Accordingly,
original or innovative thoughts are necessary to establish copyright in the author□s work. The principle
where there is common source the person relying on it must prove that he actually went to the common
source from where he borrowed the material, employing his own skill, labour and brain and he did not
copy, would not apply to the judgments of the courts because there is no copyright in the judgments of the
court, unless so made by the court itself. To secure a copyright for the judgments delivered by the court, it
is necessary that the labour, skill and capital invested should be sufficient to communicate or impart to the
judgment printed in SCC some quality or character which the original judgment does not possess and
which differentiates the original judgment from the printed one. The Copyright Act is not concerned with
the original idea but with the eXpression of thought. Copyright has nothing to do with originality or
literary merit. Copyrighted material is that what is created by the author by his own skill, labour and
investment of capital, maybe it is a derivative work which gives a flavour of creativity. The copyright
work which comes into being should be original in the sense that by virtue of selection, co-ordination or
arrangement of pre-eXisting data contained in the work, a work somewhat different in character is
produced by the author. On the face of the provisions of the Indian Copyright Act, 1957, we think that the
principle laid down by the Canadian Court would be applicable in copyright of the judgments of the ApeX
Court. We make it clear that the decision of ours would be confined to the judgments of the courts which
are in the public domain as by virtue of Section 52 of the Act there is no copyright in the original teXt of
the judgments. To claim copyright in a compilation, the author must produce the material with eXercise of
his skill and judgment which may not be creativity in the sense that it is novel or non- obvious, but at the
same time it is not a product of merely labour and capital. The derivative work produced by the author
must have some distinguishable features and flavour to raw teXt of the judgments delivered by the court.
The trivial variation or inputs put in the judgment would not satisfy the test of copyright of an author.
Institute For Inner Studies & Ors. vs Charlotte Anderson & Ors. on 10 January, 2014
Author: Manmohan Singh Bench: Manmohan Singh
..* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Pronounced on: January 10, 2014
CS(OS) 2252/2011 & I.A. No.14617/2011, I.A. No.18553/2011, I.A. No.20143/2011, I.A.
No.20144/2011, I.A. No.20167/2011, I.A. No.20762/2011, I.A. No.448/2012 and I.A. No.15808/2012
INSTITUTE FOR INNER STUDIES & ORS Plaintiffs

Through Mr. Amit Chadha, Sr. Adv. with Mr. Karan Mehra, Mr. Lalit Jhunjhunwala, Ms. Bahaar Dhawan
& Ms. Chandni Goel, Advs.
versus
CHARLOTTE ANDERSON & ORS Defendants
Through Mr. B.B. Sawhney, Sr. Adv. with Mr. Dipak Kumar Jena, Adv. &
Ms. Minakshi Jena Ghosh, Adv. for D-1.
Mr. Viplav Sharma, Adv. for D-2. Mr.Sandeep Sethi, Sr. Adv. with Mr. Mayank Kshirsagar, Adv. for D-3.
Mr. Ajit Pudussery, Adv. with
Mr. Dinesh Khurana, Adv. for D-11. Mr. Raghav Awasthi, Adv. for D-14.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN SINGH MANMOHAN SINGH, J.
1. The plaintiffs, (ten in numbers) have filed the present suit seeking declaration, permanent
injunction and mandatory injunction alongwith damages against the defendants in order to restrain the
defendants from carrying out activities of spreading Pranic Healing teachings, techniques, practices and
courses, or any other techniques, practices, courses and other teachings invented by the Master Choa Kok
Sui ("Master") and organizing and continuing to organize workshops, training programmes, seminars in
relation to Pranic Healing without authorization from the plaintiffs.
2. Plaintiffs' Case i. Plaintiff No.1 is a company incorporated in Philippines under and in accordance
with the provisions of the Corporation Code of Philippines. Plaintiff No.1 was established by Late
****
Samson Lim Choachuy (Legal Name), reversed as Master Choa Kok Sui (hereinafter referred to as Master)
on 27th April, 1987 to spread Pranic Healing, Arhatic Yoga, Inner Teachings and Practices globally. The
plaintiff No.1 is the head institution which controls the functioning of plaintiff Nos.2 to 3 and also the
functioning of plaintiff No.4 to 6 established in India.
103. In addition to aforenoted reasoning stated above, even the copyright office of US has realized the
problem area of conferring protection to Yoga Asanas and sequences on the grounds of Compilation. The
Copyright office in US has issued a statement of policy dated 22nd June, 2012 pursuant to this decision of
Open Source Yoga Unity (supra) clarifying the position in law relating to compilation copyright
protection. The said clarification of policy includes the observations contained in Fiest (supra) and the
scope of protection in compilation copyright laid down in the said case by the US Supreme Court. The
contents of the said policy reads as under:
"The Copyright Office is issuing a statement of policy to clarify its examination practices with respect to
claims in ''compilation authorship,'' or the selection, coordination, or arrangement of material that is
otherwise separately uncopyrightable. The Office has long accepted claims of registration based on the
selection, coordination, or arrangement of uncopyrightable elements, because the Copyright Act
specifically states that copyrightable authorship includes compilations. 17 U.S.C. 103.
The term ''compilation'' is defined in the Copyright Act: A ''compilation'' is a work formed by the
collection and assembling of pre-existing materials or of data that are selected, coordinated, or arranged in
such a way that the resulting work as a whole constitutes an original work of authorship. 17 U.S.C. 101
(''compilation''). This definition's inclusion of the terms ''preexisting material'' or ''data'' suggest that
individually uncopyrightable elements may be compiled into a copyrightable whole. The legislative history
of the 1976 Act supports this interpretation, stating that a compilation ''results from a process of selecting,
bringing together, organizing, and arranging previously existing material of all kinds, regardless of
whether the individual items in the material have been or ever could have been subject to copyright.'' H.R.
Rep. 94-1476, at 57 (emphasis added).
Viewed in a vacuum, it might appear that any organization of pre- existing material may be copyrightable.
However, the Copyright Act, the legislative history and the Supreme Court's decision in Feist Publications,
Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346 (U.S. 1991), lead to a different conclusion.
In Feist, interpreting the congressional language in the section 101 definition of ''compilation,'' the
Supreme Court found protectable compilations to be limited to ''a work formed by the collection and
assembling of pre-existing material or data that are selected, coordinated, or arranged in such a way that
the resulting work as a whole constitutes an original work of authorship.'' Feist at 356, quoting 17 U.S.C.
101 (''compilation'') (emphasis by the Court). The Court stated:
The purpose of the statutory definition is to emphasize that collections of facts are not copyrightable per se.
It conveys this message through its tripartite structure, as
emphasized above by the italics. The statute identifies three distinct elements and requires each to be met
for a work to qualify as a copyrightable compilation: (1) The collection and assembly of pre-existing
material, facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the
creation, by virtue of the particular selection, coordination, or arrangement, of an ''original'' work of
authorship * * *.
Not every selection, coordination, or arrangement will pass muster. This is plain from the statute. * * *
[W]e conclude that the statute envisions that there will be some fact-based works in which the selection,
coordination, and arrangement are not sufficiently original to trigger copyright protection. Feist, 499 U.S.
at 357."
An example that has occupied the attention of the Copyright Office for quite some time involves the
copyrightability of the selection and arrangement of pre-existing exercises, such as yoga poses.
Interpreting the statutory definition of ''compilation'' in isolation could lead to the conclusion that a
sufficiently creative selection, coordination or arrangement of public domain yoga poses is copyrightable
as a compilation of such poses or exercises. However, under the policy stated herein, a claim in a
compilation of exercises or the selection and arrangement of yoga poses will be refused registration.
Exercise is not a category of authorship in section 102 and thus a compilation of exercises would not be
copyrightable subject matter. The Copyright Office would entertain a claim in the selection, coordination
or arrangement of, for instance, photographs or drawings of exercises, but such compilation authorship
would not extend to the selection, coordination or arrangement of the exercises themselves that are
depicted in the photographs or drawings. Rather such a claim would be limited to selection, coordination,
or arrangement of the photographs or drawings that fall within the congressionally-recognized category of
authorship of pictorial, graphic and sculptural works."
***
Naruto v. David Slater et al. - 8 FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
NARUTO, a Crested Macaque, by
and through his Next Friends, People
for the Ethical Treatment of Animals,
Inc.,
Plaintiff-Appellant,
v.
DAVID JOHN SLATER; BLURB, INC., a
Delaware corporation; WILDLIFE
PERSONALITIES, LTD., a United
Kingdom private limited
company, Defendants-Appellees.
No. 16-15469
D.C. No.
3:15-cv-04324-
WHO
OPINION
Appeal from the United States District
Court for the Northern District of California
William Horsley Orrick, District Judge, Presiding
Argued and Submitted July 12, 2017
San Francisco, California
Filed April 23, 2018
Before: Carlos T. Bea and N. Randy Smith, Circuit
Judges, and Eduardo C. Robreno,*
District Judge.
*The Honorable EduardoC.Robreno, United States District Judge for
the Eastern District of Pennsylvania, sitting by designation.88 F.3d 418 (9th Cir.
2018)
In Cetacean, this court stated the following with respect to statutory standing for animals: We agree with
the district court in Citizens to End Animal Suffering & Exploitation, Inc., that “[i]f Congress and the
President intended to take the extraordinary step of authorizing animals as well as people and legal entities
to sue, they could, and should, have said so plainly.” In the absence of any such statement in the ESA, the
MMPA, or NEPA, or the APA, we conclude that the Cetaceans do not have statutory standing to sue.
Id. at 1179 (emphasis added).8 The court in Cetacean did not rely on the fact that the statutes at issue in
that case referred to “persons” or “individuals.” Id. Instead, the court crafted a simple rule of statutory
interpretation: if an Act of Congress plainly states that animals have statutory standing, then animals have
statutory standing. If the statute does not so plainly state, then animals do not have statutory standing. The
Copyright Act does not expressly authorize animals to file copyright infringement suits under the statute.9
Therefore, based on this court’s precedent in Cetacean, Naruto lacks statutory standing to sue under the
Copyright Act.10 Several provisions of the Copyright Act also persuade us against the conclusion that
animals have statutory standing to sue under the Copyright Act. See Davis v. Mich. Dep’t of Treasury, 489
U.S. 803, 809 (1989) (“It is a fundamental canon of statutory construction that the words of a statute must
be read in their context and with a view to their place in the overall statutory scheme.”). For example, the
“children” of an “author,” “whether legitimate or not,” can inherit certain rights under the Copyright Act.
See 17 U.S.C. §§ 101, 201, 203, 304. Also, an author’s “widow or widower owns the author’s entire
termination interest unless there are any surviving children or grandchildren of the author, in which case
the widow or widower owns one-half of the author’s interest.” Id. § 203(a)(2)(A). The terms “children,”
“grandchildren,” “legitimate,” “widow,” and “widower” all imply humanity and necessarily exclude
animals that do not marry and do not have heirs entitled to property by law. Based on this court’s decision
in Cetacean and the text of the Copyright Act as a whole, the district court did not err in concluding that
Naruto—and, more broadly, animals other than humans—lack statutory standing to sue under the
Copyright Act.
Second, the Federal Rules only authorize next friend suits on behalf of “a minor or an incompetent
person.” Fed. R. Civ. P 17(c) (emphasis added). Per the text, this can only apply to human persons, not any
“minor” or “incompetent” corporations or animals. Importantly, the historical background of Rule 17(c)
limits the use of next friends to only human persons. Rule 17(c) incorporated Rule 70 of the Federal Equity
Rules into the Federal Rules of Civil Procedure. Fed. R. Civ. P. 17(c), Note to Subdivision (c). Rule 70
specifically provided, “All infants and other persons so incapable may sue by their guardians, if any, or by
their prochei ami [next friend].” Fed. Equity R. 70. Finally, the provisions for corporate capacity are
articulated in Rule 17(b). Fed. R. Civ. P. 17(b). This separate enumeration of rules for non-human entities,
Rule 17(b), is a clear textual indication that the use of the term “person” in Rule 17(c) does not include
non-human entities, such as corporations or animals.
United States Copyright Office
Library of Congress  101 Independence Avenue SE  Washington DC 20559-6000 
www.copyright.gov
February 21,
2023 Van
Lindberg
Taylor English Duma LLP
21750 Hardy Oak Boulevard #102 San
Antonio, TX 78258
Previous Correspondence ID: 1-5GB561K
Re: Zarya of the Dawn (Registration # VAu001480196)
Dear Mr. Lindberg:
The United States Copyright Office has reviewed your letter dated November 21, 2022,
responding to our letter to your client, Kristina Kashtanova, seeking additional information
concerning the authorship of her work titled Zarya of the Dawn (the “Work”). Ms. Kashtanova had
previously applied for and obtained a copyright registration for the Work, Registration
# VAu001480196. We appreciate the information provided in your letter, including your description
of the operation of the Midjourney’s artificial intelligence (“AI”) technology and how it was used by
your client to create the Work.
The Office has completed its review of the Work’s original registration application and deposit
copy, as well as the relevant correspondence in the administrative record.1 We conclude that Ms.
Kashtanova is the author of the Work’s text as well as the selection, coordination, and arrangement
of the Work’s written and visual elements. That authorship is protected by copyright. However, as
discussed below, the images in the Work that were generated by the Midjourney technology are not
the product of human authorship. Because the current registration for the Work does not disclaim its
Midjourney-generated content, we intend to cancel the original certificate issued to Ms. Kashtanova
and issue a new one covering only the expressive material that she created.
The Office’s reissuance of the registration certificate will not change its effective date— the new
registration will have the same effective date as the original: September 15, 2022. The public record
will be updated to cross-reference the cancellation and the new registration, and it will briefly
explain that the cancelled registration was replaced with the new, more limited registration.
1
The Office has only considered correspondence from Ms. Kashtanova and her counsel in its analysis. While the Office
received unsolicited communications from third parties commenting on the Office’s decision, those communications
were not considered in connection with this letter.
Van Lindberg, Esq. Taylor February 21, 2023
English Duma LLP
I. DESCRIPTION OF THE WORK
As described in the application and accompanying deposit materials provided by

Ms. Kashtanova, the Work is a “comic book” consisting of eighteen pages, one of which is a cover.
The cover page consists of an image of a young woman, the Work’s title, and the words
“Kashtanova” and “Midjourney.” The remaining pages consist of mixed text and visual material. A
reproduction of the cover page and the second page are provided below:
II. SUMMARY OF ADMINISTRATIVE RECORD
On September 15, 2022, Ms. Kashtanova submitted an application for the Work and copies of each
page of the Work as the deposit copy. In her application, Ms. Kashtanova listed the author of the
Work as “Kristina Kashtanova” and stated that she had created a “[c]omic book.” The application
did not disclose that she used artificial intelligence to create any part of the Work, nor did she
disclaim any portion of the Work.2 The Office reviewed the application on the same day and
registered the Work as registration number VAu001480196.
Shortly after registering the Work, the Office became aware of statements on social media attributed
to Ms. Kashtanova that she had created the comic book using Midjourney artificial intelligence.
Because the application had not disclosed the use of artificial intelligence,
2
As we explained in our previous letter, while the word “Midjourney” appears on the cover page of the Work, there is no
indication of the intent or meaning of the word on the cover. Letter from U.S. Copyright Office to Kristina Kashtanova at
2 (Oct. 28, 2022).
-2-
the Office determined that the application was incorrect, or at a minimum, substantively incomplete.
In a letter dated October 28, 2022, the Office notified Ms. Kashtanova that it intended to cancel the
registration unless she provided additional information in writing showing why the registration
should not be cancelled.3 Letter from U.S. Copyright Office to Kristina Kashtanova (Oct. 28, 2022).
On November 21, 2022, the Office received a timely response from Ms. Kashtanova’s attorney, Mr.
Van Lindberg. Letter from Van Lindberg, Taylor English Duma LLP, to U.S. Copyright Office
(Nov. 21, 2022) (“Kashtanova Letter”). The letter describes Ms. Kashtanova’s creation of the Work,
including specific information about her use of Midjourney. Mr. Lindberg argues that the Work’s
registration should not be cancelled because (1) Ms. Kashtanova authored every aspect of the work,
with Midjourney serving merely as an assistive tool, and,
(2) alternatively, portions of the work are registrable because the text was authored by
Ms. Kashtanova and the Work is a copyrightable compilation due to her creative selection,
coordination, and arrangement of the text and images.
III. DISCUSSION
A. Legal Standards
Before turning to our analysis of the Work, we summarize here the legal principles that guide that
analysis. The Copyright Act defines the scope of copyright protection. Under the Act, a work may
be registered if it qualifies as an “original work[] of authorship fixed in any tangible medium of
expression.” 17 U.S.C. § 102(a). The Supreme Court has explained that the term “original” in this
context consists of two components: independent creation and sufficient creativity. See Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). First, the work must have been
independently created by the author. Id. Second, the work must possess sufficient creativity. Id.
Only a modicum of creativity is necessary, but the Supreme Court has ruled that some works—such
as the alphabetized telephone directory at issue in Feist—fail to meet even this low threshold. Id.
The Court observed that “[a]s a constitutional matter, copyright protects only those constituent
elements of a work that possess more than a de minimis quantum of creativity.” Id. at 363. It
found
that there can be no copyright in a work in which “the creative spark is utterly lacking or so trivial as
to be virtually nonexistent.” Id. at 359.
Courts interpreting the phrase “works of authorship” have uniformly limited it to the creations of
human authors. For example, in Burrow-Giles Lithographic Co. v. Sarony, the Supreme Court held
that photographs were protected by copyright because they were “representatives of original
intellectual conceptions of the author,” defining authors as “he to whom anything owes its origin;
originator; maker; one who completes a work of science or literature.” 111 U.S. 53, 57–59 (1884).
In doing so, the Court rejected the argument that a photograph was merely “a reproduction on
paper of the exact features of some natural object or of some person” made by a machine. Id. at 56.
But the Court explained that if photography was
3
Under 37 C.F.R. § 201.7(c)(4), if the Office becomes aware that an issued registration does not satisfy the statutory
requirements for copyright “or that information essential to registration has been omitted entirely from the application or
is questionable,” the Office will correspond with the copyright claimant “in an attempt to secure the required information
.
. . or to clarify the information previously given on the application.” If the claimant does not reply in 30 days, the Office
will cancel the registration. Id.
-3-
English Duma LLP
a “merely mechanical” process, “with no place for novelty, invention or originality” by the
human photographer, then “in such case a copyright is no protection.” Id. at 59.4
In cases where non-human authorship is claimed, appellate courts have found that copyright does not
protect the alleged creations. For example, the Ninth Circuit held that a book containing words
“‘authored’ by non-human spiritual beings” can only gain copyright protection if there is “human
selection and arrangement of the revelations.” Urantia Found. v. Kristen Maaherra, 114 F.3d 955,
957–59 (9th Cir. 1997). The Urantia court held that “some element of human creativity must have
occurred in order for the Book to be copyrightable” because “it is not creations of divine beings that
the copyright laws were intended to protect.” Id.
The Office’s registration practices follow and reflect these court decisions. The Office collects its
understanding of the law in the Compendium of U.S. Copyright Office Practices (Third Edition),
which provides standards for examining and registering copyrighted works.
Following the cases described above, the Compendium explains that the Office “will refuse to
register a claim if it determines that a human being did not create the work.” U.S. COPYRIGHT
OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES § 313.2 (3d ed. 2021)
(“COMPENDIUM (THIRD)”) (providing examples of works lacking human authorship such as “a
photograph taken by a monkey” and “an application for a song naming the Holy Spirit as the
author of the work”).5
Having considered the requirements for copyright protection, the Office turns to the elements of
the Work as described in your letter.
B. The Work’s Text
The Office agrees that the text of the Work is protected by copyright. Your letter states that “the text
of the Work was written entirely by Kashtanova without the help of any other source or tool,
including any generative AI program.” Kashtanova Letter at 2. Based on this statement, the Office
finds that the text is the product of human authorship. Moreover, the Office finds that the text in the
Work contains more than the “modicum of creativity” required for protection under Feist. See 499
U.S. at 346. For this reason, the text of the Work is registrable.6
4
This echoed the Court’s decision five years earlier in the Trade-Mark Cases, which noted that “the writings which are to
be protected [under the Copyright Clause] are the fruits of intellectual labor, embodied in the form of books, prints,
engravings and the like.” 100 U.S. 82, 94 (1879). The Court’s later cases have similarly articulated a nexus between
human expression and copyright. In Mazer v. Stein, the Court cited Sarony for the proposition that a work “must be
original, that is, the author’s tangible expression of his ideas.” 347 U.S. 201, 214 (1954). And in Goldstein v. California,
the Court again cited Sarony for the proposition that “[w]hile an ‘author’ may be viewed as an individual who writes an
original composition, the term, in its constitutional sense, has been construed to mean an ‘originator,’ ‘he to whom
anything owes its origin.’” 412 U.S. 546, 561 (1973).
5
The Office has refused to register a visual work created autonomously by an AI. See U.S. Copyright Office
Review Board, Decision Affirming Refusal of Registration of A Recent Entrance to Paradise (Feb. 14, 2022),
https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf.
6
The Work is described as “an adaption of Kashtanova’s original story about Zarya.” Kashtanova Letter at 3–4. This
would make the Work a derivative of the original story and require that the Work contain separate textual authorship
from the story that is itself sufficiently creative for copyright protection. See COMPENDIUM (THIRD)
-4-
C. The Selection and Arrangement of Images and Text
The Office also agrees that the selection and arrangement of the images and text in the Work are
protectable as a compilation. Copyright protects “the collection and assembling of preexisting
materials or of data that are selected, coordinated, or arranged” in a sufficiently creative way. 17
U.S.C. § 101 (definition of “compilation”); see also COMPENDIUM (THIRD)
§ 312.1 (providing examples of copyrightable compilations). Ms. Kashtanova states that she
“selected, refined, cropped, positioned, framed, and arranged” the images in the Work to create the
story told within its pages. Kashtanova Letter at 13; see also id. at 4 (arguing that “Kashtanova’s
selection, coordination, and arrangement of those images to reflect the story of Zarya should, at a
minimum, support the copyrightability of the Work as a whole.”). Based on the representation that
the selection and arrangement of the images in the Work was done entirely by Ms. Kashtanova, the
Office concludes that it is the product of human authorship.
Further, the Office finds that the compilation of these images and text throughout the Work contains
sufficient creativity under Feist to be protected by copyright. Specifically, the Office finds the Work
is the product of creative choices with respect to the selection of the images that make up the Work
and the placement and arrangement of the images and text on each of the Work’s pages. Copyright
therefore protects Ms. Kashtanova’s authorship of the overall selection, coordination, and
arrangement of the text and visual elements that make up the Work.
D. The Individual Images
Turning to the individual images in the Work, the Office must consider the impact of Ms.
Kashtanova’s use of Midjourney’s artificial intelligence technology in its copyrightability analysis.
The majority of the Kashtanova Letter focuses on how Ms. Kashtanova used Midjourney to create
these images. Before addressing the question of whether the images are copyrightable, the Office
describes its understanding of Midjourney and how it works. The Office’s understanding is based on
the letter’s description of the artificial intelligence service, 7 the Office’s own knowledge, and
Midjourney’s public documentation, of which the Office takes administrative notice.8
§§ 507.1, 507.2 (discussing derivative works). Ms. Kashtanova has provided a narrative passage in her letter, see
Kashtanova Letter at 3–4, but it is unclear whether the passage is an excerpt of the short story or the story in full. In any
event, the story was not submitted as part of the deposit for the Work, so the Office does not need to address it in
connection with this application.
7
Midjourney is a subscription service that allows users to pay to generate images, with subscription plans
corresponding to the computational time it uses to generate images. See Fast and Relax Mode, MIDJOURNEY,
https://docs.midjourney.com/docs/fast-relax (“Midjourney uses powerful Graphics Processing Units (GPUs) to
interpret and process each prompt. When you purchase a subscription to Midjourney, you are purchasing time on these
GPUs.”); Subscription Plans, MIDJOURNEY, https://docs.midjourney.com/docs/plans (providing information about
different subscription plans). Unless stated otherwise, all websites were last visited on February 17, 2023.
8
“Ordinarily, the Office does not conduct investigations or make findings of fact to confirm the truth of any statement
made in an application.” COMPENDIUM (THIRD) § 602.4(C). But the Office “may take administrative notice of facts or
matters that are known by the Office or the general public,” and the Office may use that knowledge to evaluate an
application that appears to be based on inaccurate or incomplete information. Id.
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1. How Midjourney Works
Midjourney offers an artificial intelligence technology capable of generating images in response to

text provided by a user. Midjourney operates on top of an unaffiliated third-party communication
service called Discord, which is made up of individual servers operated by its users.9 In order to use
Midjourney, users must first join the Midjourney Discord server, which contains public “channels”
where users can enter text.10 Midjourney primarily operates through an automated account on these
channels that reads user-entered text and generates images based on it. An example of a public
channel depicting the use of Midjourney by individuals to generate images is provided below:
9
Discord is a communication service that allows users to create “servers” that contain individual “channels” for text or
voice communication. See Librarian, Beginner’s Guide to Discord, DISCORD, https://support.discord.com/hc/en-
us/articles/360045138571-Beginner-s-Guide-to-Discord.
10
See Quick Start, MIDJOURNEY, https://docs.midjourney.com/docs/quick-start (explaining that the first step for
using Midjourney is to “go directly to the Midjourney Discord”).
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Users operate Midjourney through “prompts,” which are text commands entered in one of
Midjourney’s channels. As Midjourney explains, prompts must start with the text “/imagine” and
contain text describing what Midjourney should generate.11 Users also have the option to include (1)
a URL of one or more images to influence the generated output, or (2) parameters directing
Midjourney to generate an image in a particular aspect ratio or providing other functional directions.12
After a user provides Midjourney with a prompt, the technology will generate four images in
response. The images are provided in a grid, and buttons underneath the grid allow users to request
that Midjourney provide a higher-resolution version of an image (e.g., U1, U2, U3, U4), create new
variations of an image (e.g., V1, V2, V3, V4), or to generate four new images from scratch (see light
blue circular icon at far right below). For example, entering the prompt “/imagine cute baby
dinosaur shakespeare writing play purple” resulted in the following response from Midjourney:
It is relevant here that, by its own description, Midjourney does not interpret prompts as specific
instructions to create a particular expressive result. Because Midjourney “does not understand
grammar, sentence structure, or words like humans,” it instead converts words and phrases “into
smaller pieces, called tokens, that can be compared to its training data and then used to generate an
image.” Prompts, MIDJOURNEY, https://docs.midjourney.com/docs/prompts. Generation involves
Midjourney starting with “a field of visual noise, like television static, [used] as a starting point to
generate the initial image grids” and then using an algorithm to refine
11
See id.; see also Prompts, MIDJOURNEY, https://docs.midjourney.com/docs/prompts.
12
For a list of parameters, see Parameter List, MIDJOURNEY, https://docs.midjourney.com/docs/parameter-list.
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that static into human-recognizable images. Seeds, MIDJOURNEY, https://docs.midjourney.com/

docs/seeds.13
The process by which a Midjourney user obtains an ultimate satisfactory image through the tool is
not the same as that of a human artist, writer, or photographer. As noted above, the initial prompt by
a user generates four different images based on Midjourney’s training data.
While additional prompts applied to one of these initial images can influence the subsequent images,
the process is not controlled by the user because it is not possible to predict what Midjourney will
create ahead of time. See, e.g., Kashtanova Letter at 8 (describing the process of “provid[ing] the
Midjourney service with [] prompts and inputs” so that it will “render[] another iteration” of the
input “Raya as a hologram”).
2. Application of Copyright Law to Midjourney Images
Based on the record before it, the Office concludes that the images generated by Midjourney
contained within the Work are not original works of authorship protected by copyright. See
COMPENDIUM (THIRD) § 313.2 (explaining that “the Office will not register works produced by a
machine or mere mechanical process that operates randomly or automatically without any creative
input or intervention from a human author”). Though she claims to have “guided” the structure and
content of each image, the process described in the Kashtanova Letter makes clear that it was
Midjourney—not Kashtanova—that originated the “traditional elements of authorship” in the images.
Ms. Kashtanova claims that each image was created using “a similar creative process.” Kashtanova
Letter at 5. Summarized here, this process consisted of a series of steps employing Midjourney.
First, she entered a text prompt to Midjourney, which she describes as “the core creative input” for
the image. Id. at 7–8 (providing example of first generated image in response to prompt “dark skin
hands holding an old photograph --ar 16:9”).14 Next, “Kashtanova then picked one or more of these
output images to further develop.” Id. at 8. She then “tweaked or changed the prompt as well as the
other inputs provided to Midjourney” to generate new intermediate images, and ultimately the final
image. Id. Ms. Kashtanova does not claim she created any visual material herself—she uses passive
voice in describing the final image as “created, developed, refined, and relocated” and as containing
elements from intermediate images “brought together into a cohesive whole.” Id. at 7. To obtain the
final image, she describes a process of trial-and-error, in which she provided “hundreds or
thousands of descriptive prompts” to Midjourney until the “hundreds of iterations [created] as
perfect a
rendition of her vision as possible.” Id. at 9–10.
13
While Midjourney starts with a randomly chosen number, called a “seed,” as the “starting point” for an image grid,
users can use a parameter to specify a particular seed for the image-generation process. See Seeds, MIDJOURNEY,
https://docs.midjourney.com/docs/seeds.
14
As described above, the text “--ar 16:9” is a “parameter,” or command, instructing Midjourney to generate an image in
a 16:9 aspect ratio. See Parameter List, MIDJOURNEY, https://docs.midjourney.com/docs/parameter-list (adding “--aspect,
or --ar” to a prompt instructs Midjourney to “[c]hange the aspect ratio of a generation”). See also Kashtanova Letter at 8
(“This input also contains a direction to the Midjourney service to constrain the output image to a 16:9 aspect ratio”).
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Rather than a tool that Ms. Kashtanova controlled and guided to reach her desired image, Midjourney
generates images in an unpredictable way. Accordingly, Midjourney users are not the “authors” for
copyright purposes of the images the technology generates. As the Supreme Court has explained, the
“author” of a copyrighted work is the one “who has actually formed the picture,” the one who acts as
“the inventive or master mind.” Burrow-Giles, 111 U.S. at 61. A person who provides text prompts
to Midjourney does not “actually form” the generated images and is not the “master mind” behind
them. Instead, as explained above, Midjourney begins the image generation process with a field of
visual “noise,” which is refined based on tokens created from user prompts that relate to
Midjourney’s training database. The information in the prompt may “influence” generated image,
but prompt text does not dictate a specific result. See Prompts, MIDJOURNEY,
https://docs.midjourney.com/docs/prompts (explaining that short text prompts cause “each word [to
have] a more powerful influence” and that images including in a prompt may “influence the style
and content of the finished result”). Because of the significant distance between what a user may
direct Midjourney to create and the visual material Midjourney actually produces, Midjourney users
lack sufficient control over generated images to be treated as the “master mind” behind them.
The fact that Midjourney’s specific output cannot be predicted by users makes Midjourney different
for copyright purposes than other tools used by artists. See Kashtanova Letter at 11 (arguing that the
process of using Midjourney is similar to using other “computer- based tools” such as Adobe
Photoshop). Like the photographer in Burrow-Giles, when artists use editing or other assistive tools,
they select what visual material to modify, choose which tools to use and what changes to make, and
take specific steps to control the final image such that it amounts to the artist’s “own original mental
conception, to which [they] gave visible form.”15 Burrow-Giles, 111 U.S. at 60 (explaining that the
photographer’s creative choices made the photograph “the product of [his] intellectual invention”).
Users of Midjourney do not have comparable control over the initial image generated, or any
final image. It is therefore understandable that users like Ms. Kashtanova may take “over a year
from conception to creation” of images matching what the user had in mind because they may
need to generate “hundreds of intermediate images.” Kashtanova Letter at 3, 9.
Nor does the Office agree that Ms. Kashtanova’s use of textual prompts permits copyright protection
of resulting images because the images are the visual representation of “creative, human-authored
prompts.”16 Id. at 10. Because Midjourney starts with randomly generated noise that evolves into a
final image, there is no guarantee that a particular prompt will
15
For this reason, the cases cited by Ms. Kashtanova regarding Photoshop do not alter our conclusion. See Kashtanova
Letter at 11 n.13. Both cases involved situations where the artist had made deliberate, intentional edits to an image using
Photoshop. In Etrailer Corp. v. Onyx Enters., Int’l Corp., the court credited the plaintiff’s statement that she used
Photoshop to “smooth, crop, saturate, and burn” photographs of trailer accessories. Case No. 4:17-CV-01284-AGF, 2018
U.S. Dist. LEXIS 19916, at *4 (E.D. Mo. Feb. 7, 2018) (rejecting motion to dismiss that photographs were not
protected by copyright). And in Payton v. Defend, Inc., the court found a triable issue on copyrightability where the
plaintiff used Photoshop to create a shirt design containing a silhouette of an AR-15 rifle based on a preexisting
“picture of a model AR-15 Airsoft gun.” No. 15-00238 SOM/KSC, 2017 U.S. Dist. LEXIS 208358, at *9 (D. Haw.
Dec. 19, 2017).
16
While Ms. Kashtanova suggests that her text prompts are copyrightable because they are similar to poems, she did not
submit them in the application and is not seeking to register the text prompts themselves, either separately or as part of the
Work. See Kashtanova Letter at 9–10. Accordingly, the Office has not addressed the question of copyrightability of
prompts here.
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generate any particular visual output. Instead, prompts function closer to suggestions than orders,
similar to the situation of a client who hires an artist to create an image with general directions as to
its contents. If Ms. Kashtanova had commissioned a visual artist to produce an image containing “a
holographic elderly white woman named Raya,” where “[R]aya is having curly hair and she is inside
a spaceship,” with directions that the image have a similar mood or style to a “Star Trek spaceship,”
“a hologram,” an “octane render,” “unreal engine,” and be “cinematic” and “hyper detailed,” Ms.
Kashtanova would not be the author of that image. See id. at 8 (text of prompt provided to
Midjourney). Absent the legal requirements for the work to qualify as a work made for hire,17 the
author would be the visual artist who received those instructions and determined how best to express
them. And if Ms. Kashtanova were to enter those terms into an image search engine, she could not
claim the images returned in response to her search were “authored” by her, no matter how similar
they were to her artistic vision.
The Office does not question Ms. Kashtanova’s contention that she expended significant time and
effort working with Midjourney. But that effort does not make her the “author” of Midjourney
images under copyright law. Courts have rejected the argument that “sweat of the brow” can be a
basis for copyright protection in otherwise unprotectable material.18 The Office “will not consider
the amount of time, effort, or expense required to create the work” because they “have no bearing
on whether a work possesses the minimum creative spark required by the Copyright Act and the
Constitution.” COMPENDIUM (THIRD) § 310.7.
The Office’s determination here is based on the specific facts provided about
Ms. Kashtanova’s use of Midjourney to create the Work’s images. It is possible that other AI
offerings that can generate expressive material operate differently than Midjourney does.
However, on the administrative record before the Office, Ms. Kashtanova is not the author for
copyright purpose of the individual images generated by Midjourney.
3. Images Edited by Ms. Kashtanova
Finally, Ms. Kashtanova suggests that she personally edited some of the images created by
Midjourney. Her letter points to two specific images contained in the Work. While the Office
accepts the statement that the changes were made directly by Ms. Kashtanova, it cannot definitively
conclude that the editing alterations are sufficiently creative to be entitled to copyright.
First, Ms. Kashtanova explains that she “modif[ied] the rendering of Zarya’s lips and mouth” in
an image on page 2 of the Work. Kashtanova Letter at 12.
17
See 17 U.S.C. § 101 (definition of “work made for hire”).
18
Copyright protection cannot serve “a reward for the hard work that went into” creating an otherwise unprotectable
work, because otherwise “sweat of the brow” would permit copyright to extend further than the author’s original
contributions. Feist, 499 U.S. at 352–53.
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The changes to Zarya’s mouth, particularly her upper lip, are too minor and imperceptible to supply
the necessary creativity for copyright protection. The Office will register works that contain
otherwise unprotectable material that has been edited, modified, or otherwise revised by a human
author, but only if the new work contains a “sufficient amount of original authorship” to itself qualify
for copyright protection. COMPENDIUM (THIRD) § 313.6(D). Ms. Kashtanova’s changes to this image
fall short of this standard. Contra Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 34–35
(2d Cir. 1982) (revised drawing of Paddington Bear qualified as a derivative work based on the
changed proportions of the character’s hat, the elimination of individualized fingers and toes, and the
overall smoothing of lines that gave the drawing a “different, cleaner ‘look’”).
Second, Ms. Kashtanova points to an image on page 12 of the Work depicting an old woman with
her eyes closed. She describes this work as created “using both the Midjourney service and
Photoshop together,” with edits in Photoshop made to “show[] aging of the face, smoothing of
gradients[,] and modifications of lines and shapes.” Kashtanova Letter at 11. The image as it
appears in the Work is displayed below:
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Based on Ms. Kashtanova’s description, the Office cannot determine what expression in the image
was contributed through her use of Photoshop as opposed to generated by Midjourney. She suggests
that Photoshop was used to modify an intermediate image by Midjourney to “show[] aging of the
face,” but it is unclear whether she manually edited the youthful face in a previous intermediate
image, created a composite image using a previously generated image of an older woman, or did
something else. To the extent that Ms. Kashtanova made substantive edits to an intermediate image
generated by Midjourney, those edits could provide human authorship and would not be excluded
from the new registration certificate.
IV. CONCLUSION
For the reasons explained above, the Office concludes that the registration certificate for Zarya of
the Dawn, number VAu001480196 was issued based on inaccurate and incomplete information.
Had the Office known the information now provided by Ms. Kashtanova, it would have narrowed
the claim to exclude material generated by artificial intelligence technology. In light of the new
information, the Office will cancel the previous registration pursuant to 37 C.F.R, § 201.7(c)(4) and
replace it with a new registration covering the original authorship that Ms. Kashtanova contributed
to this work, namely, the “text” and the “selection, coordination, and arrangement of text created by
the author and artwork generated by artificial intelligence.” Because these contributions
predominantly contain textual material, they will be reregistered as an unpublished literary work. 19
The new registration will explicitly exclude “artwork generated by artificial intelligence.”
The public record will reflect this decision. First, the record for the cancelled registration will
indicate that the cancellation was due to a failure to exclude non-human authorship contained in the
work. Second, the record will reflect that a new, more limited registration for this work has been
issued in Class TXu and will include a cross-reference to that new registration. Third, the new
registration will include a cross-reference to the cancelled registration in the “Prior Registration
Cancelled” field. Finally, the Office will add the following annotation to the new certificate: “Reason
for Reregistration: VAU001480196 cancelled pursuant to 37 CFR 201.7(c)(4) for failure to exclude
non-human authorship.” The new registration will have the same effective date as the cancelled
registration: September 15, 2022.
The Office will cancel the original certificate of registration and issue a new certificate reflecting these
changes and mail it to Ms. Kashtanova under separate cover.
Sincerely,
Robert J. Kasunic
Associate Register of Copyrights and
Director of the Office of Registration Policy & Practice
19
To be clear, this reclassification is made solely for purposes of registration. It “has no significance with respect to the
subject matter of copyright or the exclusive rights” in this work. 17 U.S.C. 408(c)(1).
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Enclosures:
U.S. Copyright Office Letter (Oct. 28, 2022)
Kris Kashtanova Letter (Nov. 21, 2022)
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Kristina Kashtanova - 49 - 1-5GB561K
Van Lindberg
Taylor English Duma LLP 21750
Hardy Oak Blvd #102 San
Antonio, TX 78258 678.336.7223
vlindberg@taylorenglish.com
Open Advisory Services

hello@openadvising.com
21 November 2022
Robert J. Kasunic
Associate Register of Copyrights and Director of
Registration Policy and Practice
U.S. Copyright Office, Library of Congress
Sent via email to registrationprogramoffice@copyright.gov
RE: Response under 37 C.F.R. § 201.7(c)(4) to the correspondence of Oct 28, 2022 RE:
Registration of Zarya of the Dawn, Reg. No. VAu001480196
(Correspondence ID: 1-5GB561K)
Dear Mr. Kasunic:
We are writing in response to your correspondence of October 28, 2022 as counsel to Kristina
Kashtanova. Kashtanova was recently granted copyright registration no.
VAu001480196 for her work “Zarya of the Dawn” (the “Work”).
Subsequent to Kashtanova’s successful registration of the Work, the Office initiated

cancellation of her registration on the basis that “the information in [her] application was
incorrect or, at a minimum, substantively incomplete” due to Kashtanova’s use of an
artificial intelligence generative tool (“the Midjourney service”) as part of her creative
process. The concern of the Office appears to be that the Work does not have human
authorship, or alternatively that Kashtanova’s claim of authorship was not limited to exclude
elements with potential non-human authorship.
We are writing to affirm Kashtanova’s authorship of the entirety of the Work, despite her use of
Midjourney’s image generation service as part of her creative process.
In this letter, we will describe the creative process that Kashtanova used to author every
element of the Work. Accordingly, Kashtanova had no reason to recite any limitations of
the claim or to provide notes to the Office, for the same reason that photographers do not
typically recite that they “used a camera” to create an image and authors do not disclaim portions
of an image that they used Adobe Photoshop to create or modify.
We note that Kashtanova previously replied to your letter, providing some details of her
creative work. That reply, however, was made without benefit of counsel and did not
address all the issues raised. This letter supersedes any previous replies and constitutes
Kashtanova’s full response.1
Copyright Status of the Text
Before describing the creative process resulting in the images in the Work, we note that
the text of the Work was written entirely by Kashtanova without the help of any other
source or tool, including any generative AI program. As such, we assume that there is no
dispute about the human authorship or copyrightability of the textual elements of the
Work.
Legal Basis for Registration
The Copyright Office has recognized and registered works generated with the help of
machines since Burrow-Giles Lithographic Co. v. Sarony.2 In Burrow-Giles, the Supreme Court
says that authorship “involves originating, making, producing, as the inventive or master
mind, the thing which is to be protected,” and “the author is the [person] who really represents,
creates, or gives effect to the idea, fancy, or imagination.”3
As stated in the Compendium of U.S. Copyright Office Practices (3d ed. 2021), the Office
will not register works produced by a machine or mere mechanical intervention from a
human author. The crucial question is “whether the ‘work’ is basically one of human
authorship, with the computer [or other device] merely being an assisting instrument, or
whether the traditional elements of authorship in the work (literary, artistic, or musical
expression or elements of selection, arrangement, etc.) were actually conceived and
executed not by man but by a machine.”4
As described below, Kashtanova engaged in a creative, iterative process which she

describes as “working with the computer to get closer and closer to what I wanted to
express.” This process included multiple rounds of composition, selection, arrangement,
cropping, and editing for each image in the Work. Her efforts make her the author of the
Work, including authorship of each image in the Work. The computer programs she used,
1
We are also aware that one or more third parties also reached out to comment on your letter. No other
parties represent Kashtanova and no other communications should be considered part of her response.
2
111 U.S. 53, 4 S. Ct. 298 (1884).
3
Id. at 61, 283, internal citations and quotation marks omitted.
4
Compendium of U.S. Copyright Office Practices (3d ed. 2021) at § 313.2, quoting U.S. Copyright
Office, Report to the Librarian of Congress by the Register of Copyrights 5 (1966), emphasis added.
Page 3
including the Midjourney image creation service, were but “an assisting instrument” to Kashtanova.
The Press Accounts Oversimplify Kashtanova’s Creative Process
Per your correspondence of October 28, we understand that the Office reviewed various
press accounts describing the creation of the Work. Those accounts oversimplified
Kashtanova’s process and improperly characterized the role of the Midjourney service for
dramatic effect. Even without detailing all the steps taken by Kashtanova, the fact that the
Work took over a year from conception to creation makes it clear that it was not an
unguided, “push-button” process. Developing each individual image took hours; finalizing
each individual page took a day or more.
The Work Embodies the Original Conception of Kashtanova
The initial inspiration for the Work came in September 2021. As described by Kashtanova:
I was taking self-portraits and creating different worlds using Cinema4D and
Photoshop. I lost my best friend in August and my grandmother (Raya) in February.
At that time, I didn't know I would experience more loss, but it felt that the year
was painfully difficult. Photography wasn't bringing any income, and I tried to learn
3D and get a job in that area (unsuccessfully). Those worlds were my escape, and it
was less about visuals and more about writing.
The loss of Kashtanova’s grandmother had a powerful influence on her, so she set out to
create a story exploring her grief through the perspective of a girl who is transported to a
new world and has to discover where she is from the clues around her:
There was a postcard in my pocket with a beautiful view that said: “Zarya, lead me on
a journey. Rusty”
I assumed Zarya was me. I didn’t remember who Rusty was. Later that day I found
Raya, my interworld ship, and I also discovered that I could travel through the
worlds and I could adjust to any of them without any additional equipment. My only
strength is adaptability. I get tired a lot and often need a nap. I can’t fly or jump.
Some days I find it hard to leave my ship and explore. So I’m pretty ordinary, I don’t
have superpowers.
Every world I have visited so far was uninhabited. Today’s world looked familiar
even though I haven’t been here before. It was Zaraya. A world of everlasting dawn.
It wasn’t until I stood on the rock looking at its sun that froze above the horizon
when I realized it was the same view as I had on my postcard. Rusty saw this view,
whoever this Rusty was! I felt deeply connected to this entity I knew nothing about,
and a longing to find
someone in those worlds. I stood there for a long time and imagined how one day I’ll
tell Rusty about my adventures.
The Work at issue in this registration is an adaptation of Kashtanova’s original story about
Zarya. It is designed to communicate–through words and pictures–the experience of a girl
who wakes up in an abandoned world with no memory and only a postcard in her pocket,
traveling around different worlds to find clues about what happened to the Earth.
The Work, Including the Images, is Registrable as a Compilation Under the Copyright Act
There are no tools, of any sort, that can take the original conception of Kashtanova and,
unguided by humans, create the type of immersive and integrated story that exists in the
Work. Each picture communicates an essential element of the story, supporting and
expanding upon the text written by Kashtanova.
Our position is that every element of the Work reflects Kashtanova’s authorship. But if we
were to assume for the sake of argument that some individual images didn’t meet the
legal standard, the Work would still be copyrightable as a compilation under § 101 of the
Copyright Act.5 The Copyright Act defines a compilation as "a work formed by the
collection and assembling of preexisting materials or of data that are selected,
coordinated, or arranged in such a way that the resulting work as a whole constitutes an
original work of authorship."6 This definition does not require that the materials used to
create a compilation be themselves copyrightable. Even under the most limited
interpretation, the Midjourney- associated images used in the Work are “data.”
Kashtanova’s selection, coordination, and arrangement of those images to reflect the story
of Zarya should, at a minimum, support the copyrightability of the Work as a whole.
The Structure and Content of Each Image was Guided by Kashtanova
In addition to the copyrightability of the Work as a whole, each individual picture is itself the
result of a creative process that yields a copyrightable work. Kashtanova could extract any
single image from the Work and submit it to the Office and correctly assert her authorship
of that image.
Unlike the “autonomously generated” picture known as “A Recent Entrance to Paradise,”7 all
the images in the Work were designed by Kashtanova. The visual structure of each image,
the selection of the poses and points of view, and the juxtaposition of the various visual
elements within each picture were consciously chosen. These creative selections are
similar to a photographer’s selection of a subject, a time of day, and the angle and framing
of an image. In this aspect, Kashtanova’s process in using the Midjourney tool to create the
images in the Work was essentially similar to the artistic process of
5
17 U.S.C. § 101 et. seq.
6
Id. at 101, emphasis added.
7
https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf
Page 5
photographers - and, as detailed below, was more intensive and creative than the effort
that goes into many photographs. Even a photographer’s most basic selection process has
been found sufficient to make an image copyrightable.8 The same reasoning and result
should apply to the images in Kashtanova’s Work.
The Creative Process Resulting in Each Image
Each image in the Work went through a similar creative process. We will describe the
process with regard to a few particular images as examples, but each and every image in the
Work was created in a similar fashion.
Image: Zarya Holding a Postcard

This image, “Zarya Holding a Postcard,” is one of the most important images in the Work.
It is contained within the first pages of the story and is used to establish Zarya’s character
and the setting for the story. This was the final image resulting from Kashtanova’s creative
process before it was
cropped and placed in context in the Work.
The first version of “Zarya Holding a Postcard”–shown

to the right–was much less refined. So how did
Kashtanova develop this initial image into the final
version shown above? She went through an extensive
iterative process involving hundreds of versions as
shown below.
Screenshot #1 of intermediate versions of “Zarya Holding a Postcard”:
8
see Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S. Ct. 298 (1903).

Page 7
Looking at the intermediate versions of “Zarya Holding a Postcard” gives some insight into
the thought process involved in creating the final image. Different elements of the final
image are created, developed, refined, and relocated. The final image includes multiple
elements from different generations of intermediate images all brought together into a
cohesive whole. The evolution of the image under the direction of Kashtanova, and her
selection, arrangement, compositing, and visual juxtaposition of various image elements
all show how her authorial intent guided her use of the Midjourney tool.
Prompt Engineering and Copyrightable Expression
Further insight into Kashtanova’s authorship can be seen through an analysis of Kashtanova’s
“prompts.” Midjourney’s image creation service can take various types of inputs:
● A “prompt,” a English description of a scene or objects in a scene

● One or more pre-existing images including aspects of the layout,
textures, or “feel” desired by the artist
● “Masks” that isolate portions of an input image to allow or
disallow generation in defined portions of the input image
● Options that constrain various aspects of the generative process (such
as size and aspect ratio)
● Options that modify the generative process, making the final images
more refined, or closer/farther from a chosen input
These inputs are the tools by which an author, such as Kashtanova, guides the Midjourney
service’s generation of images consistent with the author’s creative vision.9 For example, the
text prompt corresponding to the very first version of “Zarya Holding a Postcard” can be
seen in the included image. It reads: “dark skin hands holding an old photograph –ar 16:9”.
9
This letter does not address the use of the “mask” input type because it was not used by
Kashtanova in creation of her Work.
This input, while simple, contains the core creative input that went into this initial version
of the “Zarya Holding a Postcard” image. Kashtanova specified a subject (“hands”), an
object (“a … photograph”), and descriptive context (“dark skin,” “holding,” and “old.”) This
input also contains a direction to the Midjourney service to constrain the output image to a
16:9 aspect ratio. Responsive to her inputs, the service generated four output images
based upon
Kashtanova’s inputs. Kashtanova then picked one or more of these output images to further
develop. Subsequent iterations tweaked or changed the prompt as well as the other inputs
provided to Midjourney.
For another example, this screenshot shows some of the inputs for an intermediate
version of the image “Raya as a Hologram.”
The inputs for this intermediate image included two images previously developed by Kashtanova,
each identified by a URL:
The prompt includes a description of a scene (“a holographic elderly white woman named
Raya, raya is having curly hair and she is inside a spaceship”) as well as some mood and
style-related directions (“Star Trek spaceship,” “Raya is a hologram,” “octane render,”
“cinematic,” “hyper detailed,” “unreal engine”). The inputs also include constraints on the
output (“--ar 16:9” and “--iw 4”) as well as a technical option modifying the generative path
taken by the service (“-seed 1234”). After Kashtanova provided the Midjourney service
with her prompt and inputs, including the multiple previously-authored intermediate
images of different subjects, the tool rendered another iteration of the “Raya as a
Hologram” image.
The Supreme Court has said that only “a modicum of creativity” is necessary to make a
work copyrightable.10 As shown in the screenshot evidence above, each one of the
10
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 342, 111 S. Ct. 1282, 1286 (1991).
Page 9
images, including each intermediate image above, is the result of Kashtanova’s creative
input by means of the prompts and inputs provided to the Midjourney service. Kashtanova
visibly guided the creation of each image in accord with her artistic vision.
When further considering the Work at issue here, the creative input associated with each
image in the final Work is multiplied. Each of the hundreds of intermediate images used to
produce a final image required the composition of inputs and prompts, followed by one or
more selections to use in the next iteration. The Copyright Act does not dictate that an
author’s creative input be provided in a particular form or that an artist use a particular
tool.11 So long as the creative output is fixed into a tangible medium of expression, any tool
that allows the author’s creative expression to “be perceived, reproduced, or otherwise
communicated” is eligible for copyright. This includes works created by using the
Midjourney service.
The Creative Inputs to the Midjourney Service Show Human Authorship
As described above, each iteration of each image is the result of a unique set of
inputs composed by Kashtanova. These inputs include hundreds or thousands of
descriptive prompts. For example, one prompt written by Kashtanova reads as
follows:
sci-fi scene future empty New York, Zendaya leaving gates of

Central Park and walking towards an empty city,
no people, tall trees, New York Skyline forest punk, crepuscular
rays, epic scene, hyper realistic, photo realistic,
overgrowth,
cinematic atmosphere, ethereal lighting.
Kashtanova paired this poetic scene

description with an intermediate image,
previously created by Kashtanova, that
captured some aspects of her vision for the
final work (shown to the right).
This example image is not unusual or

unique in having Kashtanova’s
11
"Copyright protection subsists … in original works of authorship fixed in any tangible medium of
expression, now known or later developed, from which they can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C. 102(a) (1994).
authorial input. The Midjourney service does not generate images randomly. It takes
creative, human-authored prompts and inputs and renders them in another form. Each and
every image included in the Work was rendered in similar fashion in response to inputs
provided by Kashtanova. All the images used in the Work are simply alternative
representations of the creative input provided to the Midjourney service by the author.
We believe that had Kashtanova applied to register this set of inputs alone, the Office
would have recognized the creative input and human authorship inherent in the composed
text and selected image. Likewise with almost all of Kashtanova’s prompts. Although many
of the prompts are short, some are much longer, up to hundreds of words in length.
However, length and complexity are not requirements for copyrightability. Many poems are
short–and just like a poem, each Midjourney prompt was crafted by Kashtanova to
succinctly paint a word picture of a particular scene. If Kashtanova’s scene description and
input image selection are themselves creative and copyrightable, then the alternative
rendering of those inputs generated by the Midjourney service should be equally
copyrightable.
Further, each final image in the Work was not the result of a single creative
input. Kashtanova painstakingly shaped each set of inputs and prompts over
hundreds of iterations to create as perfect a rendition of her vision as possible.
The Cropping, Juxtaposition, and Framing of the Images Shows Human Authorship
After writing all the text for the story and generating hundreds of potential images,
Kashtanova’s work on each image was not done. She selected which images to use and
sequenced and arranged them into a unique and personal Work, like a collage. Further,
every image in the final Work was cropped, framed, and placed to better convey the story
and feel Kashtanova had in mind.
Even in the final arrangement and cropping of the

images, Kashtanova’s authorship shines through. Using
again the example of the image “Zarya Holding a
Postcard,” Kashtanova made the decision to closely
crop the image, obscuring part of Zarya’s face and
almost entirely removing the city background she had
painstakingly developed. Her crop changed the
horizontally-oriented source image into a vertically-
oriented image, which she placed at the lower right
hand corner of the page. She did this to create a sense
of expectation, movement, and intrigue.
This imposition of meaning and expectation on the

image demonstrates Kashtanova's “creative spark,”12
12
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S. Ct. 1282, 1287 (1991).
Page 11
the minimal amount of originality needed to make this image her own. Kashtanova
used tools to perform this cropping, juxtaposition, and arrangement–in this case a tool
called “Comic Life 3”–but no tool could independently imbue it with emotional
meaning as Kashtanova did.
Use of Computer Tools is Already Allowed by the Copyright Office
The use of computer-based tools is already allowed by the Office. The refinement process
illustrated above is similar to the processes used in other images registered by the Office
every day. Artists use programs such as Adobe Photoshop as part of an iterative process to
refine images to match their expressive intent. These final works are recognized by courts
and by the Office as having human authorship in spite of the use of Photoshop as a tool for
generating and refining the image.13 Kashtanova’s use of the Midjourney service is no
different.
In fact, at times the Midjourney service was not enough and Kashtanova used Photoshop to
perform the type of creative refinement typical of the process for similar works.
For example, page 12 of the

Work includes an image
based on Kashtanova’s
grandmother. This image
was developed using both
the Midjourney service and
Photoshop together.
As with other images from the

Work, Kashtanova used the
Midjourney service to
iteratively create and refine
the image.
She then used Photoshop to alter the
image into its final form (as shown to
the right). This final form shows
aging of the face, smoothing of
gradients and
modification of lines and shapes, and cropping for effect. Once Kashtanova had all of the
images necessary for a page, she used the previously-mentioned “Comic Life 3” to crop
and place the images into her desired arrangement.
13
In contrast, some courts have found that using a tool like Photoshop to make any adjustment to an
input is sufficient to meet the legal standards for copyrightability. See, e.g., Etrailer Corp. v. Onyx Enters.,
Int'l Corp., No. 4:17-CV-01284-AGF, 2018 U.S. Dist. LEXIS 19916 (E.D. Mo. Feb. 7, 2018), Payton v. Defend,
Inc., No. 15-00238 SOM/KSC, 2017 U.S. Dist. LEXIS 208358 (D. Haw. Dec. 19, 2017).
Similarly, Kashtanova used Photoshop to refine the image “Zarya Holding a Postcard”
discussed earlier, by modifying the rendering of Zarya’s lips and mouth:
Detail before Photoshop Detail after Photoshop
Kashtanova used the Midjourney service, Photoshop, and Comic Life 3 to create this image
and place it in the Work–but she could have created the exact same image using similar
tools already included in Photoshop. There is a plugin called “Stability” that embeds AI-
powered image generation functionality directly into Photoshop.14 Similar
AI-powered content generation tools (such as Adobe’s “Context-Aware Fill”15) have been
available in Photoshop for years. The cropping and placement functions could have been
performed entirely in Photoshop, but Kashtanova–like many other artists today–was
experimenting with the new generative tools to explore their capabilities. Kashtanova’s
choice to use one tool over another should have no bearing on the copyrightability of her
creative output. If this image would have been copyrightable had she used only
Photoshop, it should be equally copyrightable using tools such as the Midjourney service
and Comic Life 3.
Kashtanova’s Registration Should Be Affirmed
The question raised in the correspondence of October 28th was whether the
Work provided to the Office for registration was the result of human authorship or
was the result of a purely mechanical or autonomous computer process.
Our response is that the Work, “Zarya of the Dawn,” is wholly the result of Kashtanova’s
authorship and input. Each and every part of the Work was guided by her creative input
and reflects her authorship. In the language of Burrow-Giles, Kashtanova was the
14
https://exchange.adobe.com/apps/cc/114117da/stable-diffusion
15
https://helpx.adobe.com/photoshop/how-to/fills-masks-sensei.html
Page 13
mastermind, “the one who really represents, creates, or gives effect to the idea, fancy, or imagination.”16
While Kashtanova used the Midjourney service to assist her in creating some of the images in the Work, the
use of that tool does not diminish the the human mind that conceived, created, selected, refined, cropped,
positioned, framed, and arranged all the different elements of the Work into a story that reflects Kashtanova’s
personal experience and artistic vision. As such, the Work is the result of human authorship and Kashtanova’s
registration should be affirmed.
As shown by the recent attempt to register the purely AI-generated work “A Recent Entrance to Paradise,” it
is possible for AI-powered systems to autonomously create aesthetically pleasing pictures. This response
cannot comment on how the work “A Recent Entrance to Paradise” was autonomously generated. But having
a computer program spontaneously generate an aesthetically pleasing picture is similar to finding an
aesthetically pleasing piece of driftwood or a beautiful geode. Given the current status of the law regarding
human authorship, the decision to refuse registration of “A Recent Entrance to Paradise” was correct. That
said, the law and policy of the Office should not focus on the specific tools authors use, but how those tools
can be used to create works that meet the legal standards for copyrightability.
In contrast to the system that created “A Recent Entrance to Paradise,” every use of the Midjourney service requires
human input, guidance, and selection. Accordingly, the use of the Midjourney service is completely consistent with
Copyright Office rules, the text of the Copyright Act, and article 1, clause 8 of the constitution.
Accordingly, we ask that the Office’s prior decision to register Kashtanova’s Work “Zarya of the Dawn” be
affirmed.
Sincerely,
Van Lindberg
Taylor English Duma, LLP
February 14, 2022
Ryan Abbott, Esq.

Brown, Neri, Smith & Khan, LLP 11601
Wilshire Blvd #2080
Los Angeles, CA 90025
Re: Second Request for Reconsideration for Refusal to Register A

Recent Entrance to Paradise (Correspondence ID 1-3ZPC6C3; SR # 1-7100387071)
Dear Mr. Abbott:
The Review Board of the United States Copyright Office (“Board”) has considered Steven Thaler’s
(“Thaler’s”) second request for reconsideration of the Registration Program’s refusal to register a two-
dimensional artwork claim in the work titled “A Recent Entrance to Paradise” (“Work”). After reviewing
the application, deposit copy, and relevant correspondence, along with the arguments in the second
request for reconsideration, the Board affirms the Registration Program’s denial of registration.
DESCRIPTION OF THE WORK
The Work is a two-dimensional artwork, reproduced below:

ADMINISTRATIVE RECORD
On November 3, 2018, Thaler filed an application to register a copyright claim in the Work. The author of
the Work was identified as the “Creativity Machine,” with Thaler listed as the claimant alongside a transfer
statement: “ownership of the machine.” In his application, Thaler left a note for the Office stating that the
Work “was autonomously created by a computer algorithm running on a machine” and he was “seeking to
register this computer-generated work as a work-for-hire to the owner of the Creativity Machine.” In an
August 12, 2019, letter, a Copyright Office registration specialist refused to register the claim, finding that
it “lacks the human authorship necessary to support a copyright claim.” Initial Letter Refusing Registration
from U.S. Copyright Office to Ryan Abbott (Aug. 12, 2019).
Thaler subsequently requested that the Office reconsider its initial refusal to register the Work, arguing that
“the human authorship requirement is unconstitutional and unsupported by either statute or case law.”
Letter from Ryan Abbott to U.S. Copyright Office at 1 (Sept. 23, 2019) (“First Request”).1 After reviewing
the Work in light of the points raised in the First Request, the Office re-evaluated the claims and again
concluded that the Work “lacked the required human authorship necessary to sustain a claim in copyright,”
because Thaler had “provided no evidence on sufficient creative input or intervention by a human author in
the Work.” Refusal of First Request for Reconsideration from U.S. Copyright Office to Ryan Abbott at 1
(March 30, 2020). The Office also stated that it would not “abandon its longstanding interpretation of the
Copyright Act, Supreme Court, and lower court judicial precedent that a work meets the legal and formal
requirements of copyright protection only if it is created by a human author.” Id. at 1–2.
Now, in a second request for reconsideration, pursuant to 37 C.F.R. § 202.5(c), Thaler renews his
arguments that the Office’s human authorship requirement is unconstitutional and unsupported by case law.
Letter from Ryan Abbott to U.S. Copyright Office (May 27, 2020) (“Second Request”). The Second
Request repeats the same arguments from the First Request, largely advancing public policy arguments that
the Office “should” register copyrights in machine-generated works because doing so would “further the
underlying goals of copyright law, including the constitutional rationale for copyright protection.” Second
Request at 2. In response to the Office’s citation of relevant case law addressing human authorship, Thaler
asserts that “there is no binding authority that prohibits copyright for [computer-generated works],” id.; that
copyright law already allows non-human entities to be authors under the work made for hire doctrine, id. at
4; and ultimately that the Copyright Office “is currently relying upon non-binding judicial opinions from
the Gilded Age to answer the question of whether [computer-generated works] can be protected.” Id. at 7.
. DISCUSSION
The Board accepts as a threshold matter Thaler’s representation that the Work was autonomously created
by artificial intelligence without any creative contribution from a human actor: “As a general rule, the
U.S. Copyright Office accepts the facts stated in the registration
1
The top of the First Request is dated September 8, 2019, but the attorney’s signature bears a date of September 23, 2019.
Ryan Abbott, Esq. February 14, 2022
Brown, Neri, Smith & Khan, LLP
materials.” U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES

§ 602.4(C) (3d ed. 2021) (“COMPENDIUM (THIRD)”). But copyright law only protects “the fruits of
intellectual labor” that “are founded in the creative powers of the [human] mind.” C OMPENDIUM (THIRD) §
306 (quoting Trade-Mark Cases, 100 U.S. 82, 94 (1879)); see also COMPENDIUM (THIRD) § 313.2 (the
Office will not register works “produced by a machine or mere mechanical process” that operates
“without any creative input or intervention from a human author” because, under the statute, “a work must
be created by a human being”). So Thaler must either provide evidence that the Work is the product of
human authorship or convince the Office to depart from a century of copyright jurisprudence.2 He has
done neither.
Thaler does not assert that the Work was created with contribution from a human author,3 so the only
issue before the Board is whether, as he argues, the Office’s human authorship requirement is
unconstitutional and unsupported by case law. Currently, “the Office will refuse to register a claim if it
determines that a human being did not create the work.” COMPENDIUM (THIRD) § 306. Under that
standard, the Work is ineligible for registration. After reviewing the statutory text, judicial precedent, and
longstanding Copyright Office practice, the Board again concludes that human authorship is a prerequisite
to copyright protection in the United States and that the Work therefore cannot be registered.
The Copyright Act affords protection to “original works of authorship” that are fixed in a tangible
medium of expression. 17 U.S.C. § 102(a). The phrase “original work of authorship” was “purposely left
undefined” by Congress in order to “incorporate without change the standard of originality established by
the courts under the . . . [1909] copyright statute.” H.R. REP. NO.
94-1476, at 51 (1976). The term is “very broad,” id. at 52, but its scope is not unlimited. Congress chose
this language to encompass a smaller set of creative works than could be protected under the
Constitution.4 Because of this gap, the Act leaves “unquestionably other
2
Under the heading “Policy Objections,” the Second Request argues that denying copyright protection for machine- generated
works will encourage individuals to “act dishonestly” and “inaccurately claim authorship for work done by machines.” Second
Request at 5. The Board is unconvinced that applying existing case law will result in applicants committing fraud. The
Copyright Act provides criminal penalties for anyone who “knowingly makes a false representation of a material fact in the
application for copyright registration . . . or in any written statement tied in connection with the application.” 17 U.S.C. § 506(e).
In addition, the Register of Copyrights has the authority to cancel any registration where the “material deposited does not
constitute copyrightable subject matter” or “the claim is invalid for any other reason.” 17 U.S.C. § 410(b); see also
COMPENDIUM (THIRD) § 1807. Applicants who mislead the Office do so at their peril.
3
Because Thaler has not raised this as a basis for registration, the Board does not need to determine under what circumstances
human involvement in the creation of machine-generated works would meet the statutory criteria for copyright protection. See
COMPENDIUM (THIRD) § 313.2 (the “crucial question” of human authorship is whether a computer is “merely being an assisting
instrument” or “actually conceive[s] and execute[s]” the “traditional elements of authorship in the work”) (quoting U.S.
COPYRIGHT OFFICE, SIXTY-EIGHTH ANNUAL REPORT OF THE REGISTER OF COPYRIGHTS FOR THE FISCAL YEAR ENDING JUNE 30,
1965, AT 5 (1966)).
4
As the House Report explains, Congress selected the term to avoid confusion about how the scope of statutory protection
compared with the scope of material the Constitution authorizes Congress to protect. H.R. REP. NO. 94- 1476, at 51. Under the
1909 Copyright Act, protection accrued to “all the writings of an author,” which led to uncertainty about whether the scope of
protected material under the law was “coextensive” with the “writings” of “authors” that the Constitution gives Congress the
power to protect. H.R. REP. NO. 94-1476, at 51; compare 1909 Copyright Act, Pub. L. No. 60–349, § 4, 35 Stat. 1075, 1076
(1909) (“the works for which copyright may be secured under this Act shall include all the writings of an author”) with U.S.
CONST. art I, § 8, cl. 8 (authorizing Congress
-3-
areas of existing subject matter that this bill does not propose to protect but that future Congresses
may want to.” Id. at 52.5
Courts interpreting the Copyright Act, including the Supreme Court, have uniformly limited copyright
protection to creations of human authors. For example, in Burrow-Giles Lithographic Co. v. Sarony, a
copyright defendant argued that photographs could not be protected by copyright because the statute at the
time protected certain types of creations of an “author or authors” and “a photograph is not a writing nor
the production of an author” because it is simply “a reproduction on paper of the exact features of some
natural object or of some person.” 111 U.S. 53, 56 (1884). The Court rejected this argument, holding that
an author is “he to whom anything owes its origin; originator; maker; one who completes a work of
science or literature” and that photographs are “representatives of original intellectual conceptions of [an]
author.” Id. at 57–59. In the opinion, the Court referred to “authors” as human. See id. at 58 (describing a
copyright as “the exclusive right of a man to the production of his own genius or intellect”), 60–61 (citing
as “instructive” a decision from England where justices described an “author” as the “person” who was
“the cause of the picture which is produced” and “the man” who creates or gives effect to the idea in the
work).6
The Court has continued to articulate the nexus between the human mind and creative expression as a
prerequisite for copyright protection. In Mazer v. Stein, the Court cited Burrow- Giles for the proposition
that a work “must be original, that is, the author’s tangible expression of his ideas.” 347 U.S. 201, 214
(1954). And in Goldstein v. California, the Court again cited Burrow-Giles for the proposition that “[w]hile
an ‘author’ may be viewed as an individual who writes an original composition, the term in its
constitutional sense, has been construed to mean an ‘originator,’ ‘he to whom anything owes its origin.’”
412 U.S. 546, 561 (1973). The Office is compelled to follow Supreme Court precedent, which makes
human authorship an essential element of copyright protection.
In addition to the Supreme Court precedent, lower courts have repeatedly rejected attempts to extend
copyright protection to non-human creations. For example, the Ninth Circuit held that a book containing
words “‘authored’ by non-human spiritual beings” can only gain copyright protection if there is “human
selection and arrangement of the revelations.” Urantia Found. v. Kristen Maaherra, 114 F.3d 955, 957–
59 (9th Cir. 1997) (holding that “some element
“[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries”).
5
For this reason, the Board rejects Thaler’s argument that the human authorship requirement is “unconstitutional” because
registration of machine-generated works would “further the underlying goals of copyright law, including the constitutional
rationale for copyright protection.” See Second Request at 1–2. Congress is not obligated to protect all works that may
constitutionally be protected. “[I]t is generally for Congress,” not the Board, “to decide how best to pursue the Copyright
Clause’s objectives.” Eldred v. Ashcroft, 537 U.S. 186, 212 (2003). The Board must apply the statute enacted by Congress; it
cannot second-guess whether a different statutory scheme would better promote the progress of science and useful arts.
6
In this case, as well as a previous case, the Court suggested that the requirement that an “author” be human is required by the
Constitution. See Burrow-Giles, 111 U.S. at 56 (describing beneficiaries of the Constitution’s intellectual property clause as
“authors,” who are one of “two classes” of “persons”); see also Trade-Mark Cases, 100 U.S. 82, 94 (1879) (reading the
Constitution’s grant of power to Congress to protect “writings” as extending “only as such [works] as are original, and are
founded in the creative powers of the mind” or are “the fruits of intellectual labor”).
Ryan Abbott, Esq. February 14, 2022
Brown, Neri, Smith & Khan, LLP
of human creativity must have occurred in order for the Book to be copyrightable” because “it is not
creations of divine beings that the copyright laws were intended to protect”). Similarly, a monkey cannot
register a copyright in photos it captures with a camera because the Copyright Act refers to an author’s
“children,” “widow,” “grandchildren,” and “widower,” — terms that “all imply humanity and necessarily
exclude animals.” Naruto v. Slater, 888 F.3d 418, 426 (9th Cir. 2018); see also Kelley v. Chicago Park
Dist., 635 F.3d 290, 304 (7th Cir. 2011) (rejecting a copyright claim in a “living garden” because
“[a]uthorship is an entirely human endeavor” and “a garden owes most of its form and appearance to
natural forces”) (internal citations omitted); Satava v. Lowry, 323 F.3d 805, 813 (9th Cir. 2003) (finding
depictions of jellyfish not protected by copyright because material “first expressed by nature are the
common heritage of humankind, and no artist may use copyright law to prevent others from depicting
them”). These court decisions are reflected in the Office’s guidance in the Compendium, which
provides examples of works lacking human authorship such as “a photograph taken by a monkey” and
“an application for a song naming the Holy Spirit as the author.” COMPENDIUM (THIRD) § 313.2. While
the Board is not aware of a United States court that has considered whether artificial intelligence can be
the author for copyright purposes,7 the courts have been consistent in finding that non-human expression
is ineligible for copyright protection.
Federal agencies have followed the courts. In the 1970s, questions about the impact of computing
technology on the copyright system led to the creation of the National Commission on New Technological
Uses of Copyrighted Works (“CONTU”). CONTU’s mandate was, in part, to study “the creation of new
works by the application or intervention of [] automatic systems of machine reproduction.” National
Commission on New Technological Uses of Copyrighted Works, Pub. L. 93-573, § 201(b)(2), 88 Stat.
1873, 1873 (1974). After conducting its review, CONTU determined that the existing judicial construction
of “original work[s] of authorship” as requiring human authorship was sufficient to enable protection for
works created with the use of computers and thus “no amendment [to copyright law] is needed.” CONTU,
FINAL REPORT at 1 (1978). As CONTU explained, “the eligibility of any work for protection by copyright
depends not upon the device or devices used in its creation, but rather upon the presence of at least
minimal human creative effort at the time the work is produced.” Id. at 45– 46 (noting that “[t]his
approach is followed by the Copyright Office today”).
The CONTU Report mirrors the views of the Copyright Office. A decade before passage of the 1976
Copyright Act, the annual report of the Register of Copyrights considered when copyright protection
could vest in expressive works created with a computer. The Register concluded that human authorship
was required:
The crucial question appears to be whether the “work” is basically one of human authorship, with
the computer merely being an assisting instrument, or whether the traditional element of authorship
in the work (literary, artistic or musical
7
It appears, however, that the Eastern District of Virginia held that artificial intelligence systems cannot claim inventorship of
patents. Thaler v. Hirshfeld, No. 1:20-cv-903, 2021 U.S. Dist. LEXIS 167393, at *16–18 (E.D. Va. Sep. 2, 2021) (concluding
that under the Patent Act, “an ‘inventor’ must be a natural person” and upholding refusal of a patent application). Though the
court’s opinion was based on construction of the Patent Act, rather than the Copyright Act, the similarity of the court’s
statutory analysis to that in the copyright cases relied on by the Board supports the conclusion here.
-5-
expression or elements of selection, arrangements, etc.) were actually conceived and
executed not by man but by a machine.
U.S. COPYRIGHT OFFICE, SIXTY-EIGHTH ANNUAL REPORT OF THE REGISTER OF COPYRIGHTS FOR THE
FISCAL YEAR ENDING JUNE 30, 1965, at 5 (1966).
For this reason, the Compendium of U.S. Copyright Office Practices — the practice manual for the
Office — has long mandated human authorship for registration. After enactment of the 1976 Copyright
Act, the second edition of the Compendium was updated to reflect the Office’s understanding that
human authorship is required by the law. See U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S.
COPYRIGHT OFFICE PRACTICES § 202.02(b) (2d ed. 1984)
(“COMPENDIUM (SECOND)”) (“The term ‘authorship’ implies that, for a work to be copyrightable, it must
owe its origin to a human being. Materials produced solely by nature, by plants, or by animals are not
copyrightable.”), available at https://www.copyright.gov/history/comp/ compendium-two.pdf. The
current Compendium retains this requirement and articulates its application in multiple circumstances
where non-human expression raises unique challenges.
See COMPENDIUM (THIRD) §§ 709.1 (automated computer translations); 803.6(B) (derivative sound
recordings made by purely mechanical processes); 805.4(C) & 806.4(C) (human performance required
for choreography and pantomimes); 808.8(E) (human selection of color in colorized motion pictures);
906.8 (machine produced expression in visual arts works, such as linoleum flooring); 909.3(B) (x-rays
and other medical imaging); 1006.1(A) (hypertext markup language if created by a human being “rather
than a website design program”). Although no Compendium section explicitly addresses artificial
intelligence, the Board concludes that Office policy and practice makes human authorship a prerequisite
for copyright protection.
The Office’s position is supported by a recent report from the U.S. Patent and Trademark Office
(“USPTO”) addressing intellectual property issues raised by AI. USPTO sought public comment on
whether “a work produced by an AI algorithm or process, without the involvement of a natural person .
. . qualif[ies] as a work of authorship” under the Copyright Act. U.S. PATENT AND TRADEMARK
OFFICE, PUBLIC VIEWS ON ARTIFICIAL INTELLIGENCE AND
INTELLECTUAL PROPERTY POLICY at 19 (2020), available at https://www.uspto.gov/sites/
default/files/documents/USPTO_AI-Report_2020-10-07.pdf. In its summary of responses, USPTO
noted that “the vast majority of commenters acknowledged that existing law does not permit a non-
human to be an author [and] this should remain the law.” Id. at 20–21. The Board agrees.
Thaler’s secondary argument, that artificial intelligence can be an author under copyright law because
the work made for hire doctrine allows for “non-human, artificial persons such as companies” to be
authors, is similarly unavailing. See Second Request at 3–4. First, the Work is clearly not a work
made for hire as defined in the Copyright Act. A work made for hire must be either (A) prepared by
“an
employee” or (B) by one or more “parties” who “expressly agree in a written instrument” that the work
is for-hire. 17 U.S.C. § 101 (definition of “work made for hire”). In both cases, the work is created as
the result of a binding legal contract—an employment agreement or a work-for-hire agreement. The
“Creativity Machine” cannot enter
into binding legal contracts and thus cannot meet this requirement.8 Second, the
work-for-hire doctrine only speaks to the identity of a work’s owner, not whether a
work is protected by copyright. As explained above, the statute requires that a work
contain human authorship. In sum, the Work is not a work made for hire because it
is neither a “work of authorship” nor a work created “for hire.”
Much of Thaler’s second request amounts to a policy argument in favor of legal

protection for works produced solely by artificial intelligence. He cites to no case
law or other precedent that would undermine the Office’s construction of the
Copyright Act. Because copyright law as codified in the 1976 Act requires human
authorship, the Work cannot be registered.
IV. CONCLUSION
For the reasons stated herein, the Review Board of the United States Copyright Office
affirms the refusal to register the copyright claim in the Work. Pursuant to 37 C.F.R. §
202.5(g), this decision constitutes final agency action in this matter.
U.S. Copyright Office Review Board

Shira Perlmutter, Register of Copyrights Suzanne Wilson, General
Counsel and
Associate Register of Copyrights
Kimberley Isbell, Deputy Director of Policy and International Affairs
8
Autonomous systems are not “artificial persons” because they lack legal personhood. See Nadia
Banteka, Artificially Intelligent Persons, 58 HOUS. L. REV. 537, 593 (2021) (noting the “trend” across
state and federal courts that legal personhood requires “that an entity be an aggregate of individuals
[who] have legal personhood,” as is true for corporations); cf. Software Solutions Partners Ltd. v. H.M.
Customs & Excise, [2007] EWHC 971 [67] (Admin) (noting that “on current authority,” “automated
systems” could not enter contracts because “only a person with a ‘mind’ can be an agent in law”).
V.B. Mohammed Ibrahim vs Alfred Schafraneck And Ors. on 4
June, 1958
Equivalent citations: AIR1960KANT173, AIR1960MYS173
JUDGMENT
Malimath, J.
(1) This appeal arises out of a suit praying for damages for Rs. 30,000/- and also for an injunction
restraining defendants 1 to 3 from manufacturing or marketing flower design chair seats. These
reliefs are apparently claimed on the ground that the plaintiff has the patent rights under
thePatents and Designs Act. But it is a curious suit in that the registered patentees are admittedly
defendants 1 and 2 and, on their assignment, the name of defendant 3 has been registered as an
assignee.
Admittedly the name of the plaintiff is nowhere to be found it the Register of Patents. Ordinarily a
suit for infringement of this nature is brought by a patentee against strangers on the allegation that
there is an infringement by them of the patent rights. In this case, it is just the reverse of it. We had,
therefore, to ask the learned advocate for the appellant to eXplain how he claims the rights of a
patent so as to enable him to file such an action for infringement.
His contention is that although his name is not registered as a patentee, the patent rights accrue to
him by reason of the fact that the invention in question was made by the joint skill, ingenuity and
labour of defendants 1 and 2 as well as of the plaintiff who formed the partnership and carried on
business under the name and style of 'Bangalore Wood Industries'. This claim of the plaintiff is
assailed on the ground that no such case is made out anywhere in the pleadings and also on the
ground that the suit is not maintainable as it contravenes the provisions of S. 29 (2) of the said Act.
(2) Looking to the nature of the reliefs sought, it cannot be disputed that this is an infringement suit.
It is contended by the learned advocate for respondent 3 that the said section require that such a
suit could only be brought by a patentee. He contends that it is not open to any one to file a suit
unless he is a patentee. The term 'patentee' has been defined in clause 12 of S. 2 :
"'Patentee' means the person for the time being entered on the register of patents
kept under this Act as the grantee or proprietor of the patent." It is not disputed that
the name of the plaintiff finds no mention in the Register of Patents. It is, therefore,
contended that the plaintiff has to right to file a suit under S. 29. As already
mentioned, the reply for the appellant is that by reason of the joint acquisition, the
plaintiff has derived a beneficial interest in the plaintiff has derived a beneficial
Indian Kanoon - http://indiankanoon.org/doc/1632880/ 1

interest in the right of a patent. Whether there is evidence to show that he has
acquired this right or not, is a question of fact which will be discussed later.
Assuming he has acquired such a right, the remedy appears to be the one provided
under S. 63 of the Act. Sub-section (1) of that section requires that any person who
becomes entitled by assignment, transmission or other operation of law to a patent,
may make an application to the Controller to register his title.. The Controller shall
on proof of his title register him as the proprietor of such patent. In this case, it is
admitted that the plaintiff has not made any such application and consequently there
is no entry of his name in the Register.
As such, he cannot be deemed to be a patentee qualified to institute a suit under S.

29. The learned advocate for the appellants contends that S. 63 is an enabling section
and that, although it was open to the appellant to follow the procedure laid down in
that section, it does not debar him from bringing an action under S. 29 on the
allegation that he is a person who has acquired the rights of a patent and to prove
such an acquisition in the Court.
Whether such a construction admits the inclusion of pensions claiming to be

patentees within the meaning of S. 29(1) is a matter that deserves consideration.
Assuming that the intention of the Legislature was to give such an e Xtensive use,
nothing prevented it from saying that a 'patentee or a person claiming to be a
patentee' may institute a suit instead of restricting the right to file a suit to a patentee
alone.
The obvious intention of including the provisions of S. 63 in the Act is for the purpose
of helping a person like the plaintiff who may have been left out from getting his
name included in the Register by proving before the Controller that he has got the
rights which he claims. It is only then that he acquires the rights of a patent under the
Act and that he can file a suit under S. 29. A similar view has been e Xpressed by the
Calcutta High Court in the case of Hiralal Banjara. In re-Patents and Designs Act,
reported in AIR 1937 Cal 365. The plaintiff, in that case, alleged that he was the
proprietor of the patent in question which had been originally grated to the
petitioner. It was observed.
"but the fact was that although the petitioner had assigned his rights to that plaintiff,
the latter had not registered the assignment under the provisions of Section 63 of the
Indian Patents and Designs Act. Therefore he was not the patentee within the
meaning of the Act (Section 2, sub-section 12) and had no right to bring any suit for
infringement of patent rights regarding the patent to question."
Under these circumstance we have to hold that the plaintiff could not institute this suit under the
provisions of Section 29 of the said Act.
(3) Coming now to the facts of the case, the initial difficulty is that the case now sought to be made
out by the plaintiff does not find a place in the pleadings. The admitted facts are that the plaintiff
and defendants 1 and 2 entered into a partnership on 17-9-45 with the avowed object of erecting a
factory and thereafter manufacturing wooden articles.
The plaintiff was the financing partner and defendants 1 and 2, who were prior to this partnership
working in the Mysore Ply Wood Corporation, were the working partners. It appears that
theinvention in relation to the manufacture of flower design chair seats was perfected during the
continuance of this partnership. It is also in evidence that the manufacture of the said goods yielded
considerable profits.
Unfortunately disputes arose with the result that a decision was taken on 13-1-47 to wind up the
partnership. However, the accepted date of dissolution appears to be 15-1-47. According to the terms
of dissolution, a sum of Rs. 20,000/- roughly representing their share in the profits of the concern,
was to be given to defendants 1 and 2, by the plaintiff. The said amount appears to have been
actually paid on or about 5-2-47 on which date they passed a receipt or a release in favour of the
plaintiff. This document is EXt. BB.
It is contended by the learned Advocate for the appellant that it was during the continuance of this
partnership that defendants 1 and 2 as well as the plaintiff brought about the invention. It is,
however, admitted that, on 4-3-46, defendants 1 and 2 alone applied for registering their names as
inventors and for the grant of a patent in their favour. This application was finally sealed on 6-2-47,
the day neXt after the release deed was passed. In this connection, the plaintiff has made several
allegations in the plaint against the conduct and bona fides of defendants 1 and 2. According to him
this application was made behind his back and the names of defendants 1 and 2 were got registered
as patentees in a fraudulent manner. The allegations of fraud are also to be seen in the reply notice,
EXt. X, dated 26th March 1947.
The same allegations are again repeated in the plant as though a cause of action was being built up
for a plea of revocation on the ground of fraud. But ultimately there is no prayer for revocation,
possibly because, such a relief could not be granted by the District Court. Suffice it to say that, in the
pleadings, no case is made out to show that the plaintiff is an inventor or one of the inventors.
However, from the evidence on record, such a case is sought to be built up by the learned Advocate
for the appellant.
(4) Before going into the evidence of the point, it is necessary to consider whether the plaintiff, who
was a financing partner, could be deemed to be one of the inventors, or, whether the firm could be
treated as an inventor such that the name of the firm itself could be registered directly as a patentee.
It is not the plaintiff's case that he contributed any part of his ingenuity or skill or
technicalknowledge towards the invention in question. All that he says in that he gave the
wherewithal viz., the finances for the running of the concern that with this help eXperiments were
made and ultimately the invention was evolved. It is not disputed that the persons that actually
laboured and found out the process were defendants 1 and 2. Under these circumstances, it is very
difficult to accept that the plaintiff could be treated as an inventor.

(5) The neXt question for consideration is whether the firm can be treated as an inventor. A firm
cannot be said to have the capacity to invent. It cannot be called an inventor although there may be
no objection to its being registered as a patentee either or assignment by a patentee or jointly with
the true and first inventor. A corporation cannot be the sole applicant claiming to be the inventor.
(6) It is argued by the learned counsel for the appellant that defendants 1 and 2 had no ready
invention before they entered into the partnership. According to the plaintiff, it was he who
suggested that a manufacture of the flower design chair seats would be a profitable business and
who advised defendants 1 and 2 to take up the work. P. W. 1 who is a manufacturer of electrical
heating appliances, states that defendants 1 and 2 wanted him to manufacture a heating appliance
for scarring wood. We supplied an electrical heating cast-iron plate according to their orders. He,
however, adds that the Bangalore Wood Industries paid the amount and also that he suggested the
design to defendants 1 and 2 and prepared the machine according to their design.
EXt. C-5 shows that a sum of Rs. 196/- was paid by the firm on 4-6-46 in respect of the electric
heaters. EXts. S. To S. 15 are invoices showing certain machines supplied by metro malleables
between 9-10- 45 and 19-2-46. From these and such pieces of evidence, it is urged that the invention
made is a product of the partnership and that defendants 1 and 2 cannot claim the right of invention
to themselves. It is very difficult to accept this claim.
(After discussion of evidence His Lordship concluded). From this evidence, it is obvious that the
persons who were responsible for the invention must be defendants 1 and 2 and not the plaintiff.
(7) In the result, this appeal fails and it is dismissed with costs.
Ahmed Ali Khan, J.
(8) I agree.
(9) Appeal dismissed.

Som Prakash Rekhi vs Union Of India & Anr on 13 November,
1980
Equivalent citations: 1981 AIR 212, 1981 SCR (2) 111, AIR 1981 SUPREME
COURT 212, 1981 (1) SCC 449, (1981) 1 SCJ 458, (1981) 2 SCR 111 (SC), 1981
2 SCR 111, 57 FJR 370, 51 COM CAS 71, 1981 (13) LAWYER 14 (A), 1981
LAWYER 13 14, 42 FACLR 13, (1981) 1 LAB LN 322, (1981) ILR SC 201, (1981)
1 SERVLR 154, 1981 SCC (L&S) 200, (1981) 1 LABLJ 79, (1981) 1 SCWR 173
Author: V.R. Krishnaiyer
Bench: V.R. Krishnaiyer, O. Chinnappa Reddy, R.S. Pathak
PETITIONER:
SOM PRAKASH REKHI
Vs.
RESPONDENT:
UNION OF INDIA & ANR.
DATE OF JUDGMENT13/11/1980
BENCH:
KRISHNAIYER, V.R.
BENCH:
KRISHNAIYER, V.R.
REDDY, O. CHINNAPPA (J)
PATHAK, R.S.
CITATION:
1981 AIR 212 1981 SCR (2) 111
1981 SCC (1) 449
CITATOR INFO :
RF 1986 SC1499 (16)
R 1986 SC1571 (55)
R 1987 SC 51 (3)
R 1987 SC1086 (18)
APL 1988 SC 469 (9,10)
F 1989 SC1642 (24)
RF 1990 SC1167 (10,14)
RF 1992 SC 76 (2)
ACT:
Constitution of India-Burmah Shell (Acquisition of
Undertakings in India) Act, 1976-Company acquired by the
Government and vested in a statutory corporation-Corporation

These are the facts when we come to brass tacks. Facts form the raw material out of
which the finished product of judicial finding is fabricated after processing through
established legal principles. Indeed, in life as in law "it is as fatal as it is cowardly to
blink facts because they are not to our taste". What, then, are the basic facts available
from the Act ? Constitutional law is not a game of hide and seek but practical real-life
conclusions. So viewed, we are constrained to hold that Burmah-Shell, a government
company though, is but the alter ego of the Central Government and must, therefore,
be treated as definitionally caught in the net of 'State' since a juristic veil worn for
certain legal purposes cannot obliterate the true character of the entity for the
purposes of constitutional law.
If we distil the essence of Art. 12 textually and apprehend the expanded meaning of
"State" as interpreted precedentially, we may solve the dilemma as to whether the
Bharat Petroleum is but a double of Bharat Sarkar. Let us be clear that the
jurisprudence bearing on corporations is not myth but reality. What we mean is that
corporate personality is a reality and not an illusion or fictitious construction of the
law. It is a legal person. Indeed, 'a legal person' is any subject matter other than a
human being to which the law attributes personality. "This extension, for good and
sufficient reasons, of the conception of personality. is one of the most noteworthy
feats of the legal imagination." Corporations are one species of legal persons invented
by the law and invested with a variety of attributes so as to achieve certain purposes
sanctioned by the law. For those purposes, a corporation or company has a legal
existence all its own. The characteristics of corporations, their rights and liabilities,
functional autonomy and juristic status, are jurisprudentially recognised as of a
distinct entity even where such corporations are but State agencies or
instrumentalities. For purposes of the Companies Act, 1956, a government company
has a distinct personality which cannot be con fused with the State. Likewise, a
statutory corporation constituted to carry on a commercial or other activity is for
many purposes a distinct juristic entity not drowned in the sea of State, although, in
substance, its existence may be but a projection of the State. What we wish to
emphasise is that merely because a company or other legal person has functional and
jural individuality for certain purposes and in certain areas of law, it does not
necessarily follow that for the effective enforcement of fundamental rights under
our constitutional scheme, we should not scan the real character of that entity; and if
it is found to be a mere agent or surrogate of the State, in fact owned by the State, in
truth controlled by the State and in effect an incarnation of the State, constitutional
lawyers must not blink at these facts and frustrate the enforcement of fundamental
rights despite the inclusive definition of Art. 12 that any authority controlled by the
Government of India is itself State. Law has many dimensions and fundamental facts
must govern the applicability of fundamental rights in a given situation.
MANU/SC/0051/2012
Equivalent/Neutral Citation: [2012]107CLA63(SC), [2012]170CompCas369(SC),

(2012)1CompLJ225(SC), (2012)1CompLJ225(SC), (2012)247CTR(SC)1, 2012/INSC/45,
[2012]341ITR1(SC), [2012]341ITR1(SC), JT2012(1)SC410, (2012)2MLJ913(SC),
2012(1)SCALE530, (2012)6SCC613, [2012]1SCR573, [2012]204TAXMAN408(SC), 2012(1)UJ334
IN THE SUPREME COURT OF INDIA
Civil Appeal No. 733 of 2012 (Arising out of SLP (C) No. 26529 of
2010) Decided On: 20.01.2012
Vodafone International Holdings B.V. Vs. Union of India (UOI) and Ors.
Hon'ble Judges/Coram: S.H. Kapadia, C.J.I., K.S. Panicker Radhakrishnan and Swatanter Kumar, JJ.
Counsels: For Appearing Parties: Mohan Parasaran, ASG, Aspi Chinoy, Percy Pardiwala, K.V.
Vishwanathan, Sr. Advs., Anuradha Dutt, Fereshte D. Sethna, Vijay Lakshmi Menon, Ekta Kapil,
Anish Kapur, Pawan Sharma, Kuber Dewan, Shwetha Bidhuri, Priti Yadav, Pratyush Miglani, Gayatri
Goswami, Kamaldeep Dayal, Rook Ray, Jaiveer Shergill, Anadi Chopra, Kripa Pandit, Pavitra
Kacholia,
D.L. Chidananda, G.C. Srivastava, Girish Dave, Gaurav Dhingra, Ritin Rai, Nakul Dewan, Arijit Prasad,
C.S. Bhardwaj, B.V. Balaram Das, D.S. Mahra, Jayant Mehta, Mamta Tiwari, Sangeeta Mandal, Swati
Sinha, Abhishek Kaushik, Rishabh Jain, N.B. Paonam, Zoheb Hossain, Advs. for Fox Mandal and Co.
and Sumita Hazarika (N/P),
Adv. Case Category: DIRECT TAXES MATTERS - CAPITAL GAINS JUDGMENT S.H. Kapadia,
C.J.I
Be that as it may, did HTIL possess a legal right to appoint directors onto the board
of HEL and as such had some "property right" in HEL? If not, the question of such a
right getting "extinguished" will not arise. A legal right is an enforceable right.
Enforceable by a legal process. The question is what is the nature of the "control" that a
parent company has over its subsidiary. It is not suggested that a parent company never
has control over the subsidiary. For example, in a proper case of "lifting of corporate
veil", it would be proper to say that the parent company and the subsidiary form one
entity. But barring such cases, the legal position of any company incorporated abroad is
that its powers, functions and responsibilities are governed by the law of its
incorporation. No multinational company can operate in a foreign jurisdiction save by
operating independently as a "good local citizen". A company is a separate legal

persona and the fact that all its shares are owned by one person or by the parent
company has nothing to do with its separate legal existence. If the owned company is
wound up, the liquidator, and not its parent company, would get hold of the assets of
the subsidiary. In none of the authorities have the assets of the subsidiary been held to
be those of the parent unless it is acting as an agent. Thus, even though a subsidiary
may normally comply with the request of a parent company it is not just a puppet of the
parent company. The difference is between having power or having a persuasive
position. Though it may be advantageous for parent and subsidiary companies to work
as a group, each subsidiary will look to see whether there are separate commercial
interests which should be guarded.

COPYRIGHT MANUAL ON REGISTRATION OF ARTISTIC WORKS AND INCIDENTAL ISSUES
Government of India
Ministry of Commerce and
Industry
Department of Industrial Policy and Promotion
COPYRIGHT OFFICE
COPYRIGHT MANUAL ON REGISTRATION OF

ARTISTIC WORKS AND INCIDENTAL ISSUES
OBJECTIVE
The General Objective of the “Copyright Manual on Registration of Artistic Works and
Incidental Issues” being published shall be to bring uniformity and consistency of practice
with respect to the procedures involved in the examination and registration of various
Copyright applications pertaining to artistic works in administration of the Copyright Act
1957 and Copyright Rules 2013 made thereunder. It is further hoped that the manual will
be useful for the examiners of the Copyright Office and the users of the system.
1
FOREWORD
“Copyright is a form of protection provided by the Indian legislature to authors/

owners of original works of authorship from the time the works are created and expressed
in a tangible form”.
Copyright is a right which subsists in a number of different kinds of works such as literary,
dramatic, musical or artistic works, sound recording and cinematograph films.1 The
Copyright Act 1957 governs the law related to the copyrights in India.
The Copyright Act, 1957 as amended in 2012, supplemented by the Copyright Rules, 2013,
with subsequent amendments, is the governing law for copyright protection in India. India is
a member of the Berne Conventions and Universal Copyright Convention. The Government
of India has also issued the International Copyright Order, 1999, according to this order; any
work first published in any country - which is a member of any of the above conventions - is
granted the same treatment as if it was first published in India.
As provided under the statute2, registration of a Copyright is prima facie evidence of the
Particulars entered in the Register of Copyright and documents purporting to be copies of any
entries therein, or extract there from certified by the Registrar of Copyrights and sealed with
the seal of Copyright Office, shall be admissible in evidence in all courts without further
proof or production of original.
Certain exclusive rights3 are granted to the owner of the Copyright enabling the owner of the
Copyright to do or to with hold from doing, certain acts in relation to the copyright works.
These rights are broadly divided into moral rights (those rights which relate to protection of
personality of the author and integrity of this work, and similar matters) and economic
rights (those rights which help the author to commercially exploit his creation).4
PURPOSE
For greater understanding and transparency in the system, the manual attempts to
enlighten the practice and registration procedure of the Copyright Office by categorizing
the manual in three parts: concepts, the procedural requirements for registration of a work
1
Definition of Work, as provided under Section 2 clause y of The Copyright Act 1957.
2
Section 48 of The Copyright Act 1957.
3
Recognized by the Berne Convention, 1886 and the TRIPS agreement & Section 14 of the Copyright Act.
4
As laid down under Chapter IV Section 17-21 of the Copyright Act 1957.
2
and the office action involved as per the provisions of Copyright Act, 1957 and Copyright
rules 2013 made thereunder, and issues pertaining/ incidental to registration of different
Artistic works.
DEFINITIONS
Any work which is an original creation of an author or an owner fixed in a tangible form, is
capable of being entered into the Register of Copyrights, irrespective of the fact that whether
such work posses any artistic quality or not.
The definition of Artistic work as laid down under Section 2 of the Copyright Act, is fairly
comprehensive and descriptive. Copyright shall subsists in any original artistic work
comprising of paintings, sculptures, graphics, cartoons, etchings, lithographs, photography,
drawings, plans, maps, diagrams, charts, buildings, models of buildings, moulds and casts for
sculptures.
1. Artistic works
Artistic work” means,— 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;
a [work of architecture]; and any other work of artistic craftsmanship; as provided
under Section 2(c) of the Copyright Act.
1.1. Work of architecture
“Work of architecture” means any building or structure having an artistic character

or design, or any model for such building or structure as provided under Section 2 (b).
In addition to this, according to Section 13 (2) (iii), in case of work of architecture,
the work shall be located in India.
Further, read with Section 13(5) in case of work of architecture, copyright shall
subsists only in the artistic character and design and shall not extend to process or
methods of construction.
3
1.2. Photograph
“Photograph” includes photo-lithograph and any work produced by any process

analogous to photography but does not include any part of a cinematograph film as
provided under Section 2 (s) of the Copyright Act.
1.3. Engravings
“Engravings” include etchings, lithographs, wood-cuts, prints and other similar

works, not being photographs as provided under Section 2 (i) of the Copyright Act.
1.4. Work of Sculpture
“Work of Sculpture” includes casts and moulds as provided under Section 2 (za) of
the Copyright Act.
1.5. Work capable of being used in relation to goods or services
A work capable of being represented graphically, which is capable of distinguishing

goods or services of one undertaking from those of the goods or services of another
undertaking shall be considered for the purposes of registration “Work capable of
being used in relation to goods or services” such as brand symbols, labels logos,
packaging, Cartoons etc.
1.6. Artistic Work applied for copyright registration which is capable of being
registered as a Design under the Designs Act, 2000.
According to World intellectual property Organization and Section 2(d) of the

Designs Act 2000, an Industrial Design constitutes the ornamental or aesthetic aspect
of an article. It can be in a form of a two-dimensional or a three dimensional drawing
of any article, such works, provided that it shall be in connivance with the provisions
of Section 15 of the Copyright Act 1957, which affirms that –
4
(1) Copyright shall not subsist under this Act in any design which
is registered under the Designs Act, 2000 (16 of 2000).5
(2) Copyright in any design, which is capable of being registered under the
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.6
can be applied for registration under the Copyright Act 1957.
The aforementioned works shall be considered as “Artistic work”, for the purpose of
registration of Copyright, irrespective of the artistic craftsmanship of the work,
provided it is expressed as a single work.
How to file an application for registration?
There are two ways of filing any application for registration of Copyright:
 By the way of offline method, an application is made for registration of Copyright of

an “artistic works” in the manner and format as provided under Chapter XVIII -
Schedule I - Form XIV, Statement of Particulars, Statement of further Particulars of
Copyright Rules 2013.
 By the way of online method, applicants can register themselves on the official
website of the Copyright Office –
http://copyright.gov.in/UserRegistration/frmLoginPage.aspx
Click on the link “e filing of application”, and proceed thereon by filling up the online
registration form XIV, Statement of Particulars, and Statement of further Particulars.
5
Section 15 clause 1, Special provision regarding Copyright in designs registered or capable of being registered under the Designs Act,
2000 (16 of 2000)
6
Section 15 clause 2, Special provision regarding Copyright in designs registered or capable of being registered under the Designs Act,
2000 (16 of 2000)
5
It is preferable that the applications for registration are filed online, as

filling of online form is convenient, the options available for payment of the
government fees for registration are effortless, and the unique Diary number is
generated immediately, which makes the whole process more user friendly.
Government Fees for Registration of a Copyright in Artistic Category7
Artistic Works which are being used or capable of being

2000/- INR
used in relation to any goods or services
Artistic Works which are not being used or are not capable of
500/- INR
being used in relation to any goods or services
REGISTRATION DESIDERATUM
Once the application for registration is filled & submitted online, the same is mandatorily
required to be sent, to the Copyright Office at, Plot no. 32, Boudhik Sampada Bhawan,
Sector-14, Dwarka – 110075, New Delhi, within 30 days of filing of the online applications,
along with all necessary documents, being: -
 Duly filled Form XIV, Statement of Particulars, and Statement of further

Particulars, signed by the applicant8, in case of a company, proprietorship or a firm
the person who is duly authorized to sign the application, along with the seal of the
company, proprietorship or a firm.
The authority of the signatory shall be exhibited by a letter of Authority,

or a Board resolution.
7
Serial No. 9, Second Schedule, of the Copyright Rules 2013.
8
In pursuance to Rule 70 clause 3, of the Copyright Rules 2013.
6
The application form shall not be acceptable, if signed by an attorney under

whatsoever circumstances.9
 Power of Attorney signed by the applicant and duly accepted by the Attorney.
 No Objection Certificate from various other persons involved in the creation of work,
in case the applicant is the author of the work No Objection Certificate is not
required.
 Search Certificate issued by the Trade Mark Registry, in pursuance to Section 45 of
the Copyright Act, 1957 (proviso), in case of Artistic works used or capable of being
used in relation to goods or services.
The application for registration of Artistic work used or capable of being

used in relation to goods or services shall be filed within one year of the
date of issue of the Search Certificate issued by the Trade Mark Registry.
 An affidavit, if the work is appearing to be capable of being registered under Designs

Act.10
The contents of the affidavit shall include that the work is neither registered nor
applied for registration under Designs Act 2000 in pursuance to :-
Rule 70(7) Copyright Rules 2013

Every application for registration in respect of an artistic work which is
capable of being registered as a design under Designs Act, 2000, such
application shall be accompanied by the statement in the form of an affidavit
containing the following, :- namely
a) It has not been registered under Designs Act, 2000; and

b) It has not been applied to an article through an industrial process and
reproduced more than fifty times.
Further the contents must also include that the work is not reproduced more
than fifty times by any industrial process, in pursuance to :-
9
Rule 70 (3) of the Copyright Rules 2013
10
In pursuance to Section 15 of the Copyright Act, 1957, and Rule 70 (7) of the Copyright Rules 2013.
7
Section 15(2) of the Copyright Act 1957
Copyright in any design, which is capable of being registered under the 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
 No Objection Certificate from the publisher if publisher is other than the applicant.
 No Objection Certificate by the person whose picture is appearing on the work.
 Two original & identical copies of the work. (the title of the work shall appear on
the work)
The FORM XIV, Statement of Particulars, Statement of Further Particulars, shall be in

the Format as prescribed under Chapter XVIII - Schedule I - Copyright Rules 2013. A
format of the same is also given at-
http://copyright.gov.in/frmformsDownload.aspx.
FORM XIV
Form XIV is a declaration of the applicant, whether he has complied with the
prerequisites of filing of a registration application.
 The applicant must send notices to all the interested parties, prior to filing of the
Copyright application and submit all necessary details thereof.11
 The applicant shall provide the details of the requisite payment made.
 Further the applicant shall submit the communication address.
 Lastly, the applicant shall list out the documents submitted along with the application.
11
In accordance with rule 70 of the Copyright Rules, 2012
8
To be duly filled and signed by the applicant.
COLUMN APPROPRIATE DETAILS TO BE FILLED
DETAILS
NO. BY THE APPLICANT
Registration number is not a mandatory column; it is to
Column 1 Registration number be filled by the Copyright Office once the work is
entered into the Register of Copyright.
The correct and full details with respect to the author
Column 2 Name, Address and or owner or any other person interested in copyright in
(Mandatory) Nationality of the an artistic work, who has made the application for
Applicant registration shall be submitted.
Nature of the applicant’s The applicant shall indicate their nature of interest in
Column 3
interest in the copyright the copyright of the work i.e., whether an author or an
(Mandatory)
of the work owner/publisher.
The applicant shall mention appropriate class of work:-
•Artistic – in case of registration of Artistic works.
Column 4 Class and description of the
• The applicant is also required to indicate whether
(Mandatory) work
the Artistic work is used or capable of being used
in
relation to goods and services or not.
Column 5 The title which appears on the copy of the work
Title of the work
(Mandatory) submitted along with the applications.
All the languages which are collectively used, in
creation of the work shall be mentioned. Applicant
can also mention the language in which the Title of
Column 6 Language of the work
the work is mentioned.
In case of Artistic work this column may also be
indicated as "NIL" in case no language is used.
Correct and appropriate details of the Author (the
Name, address and person who has actually authored or was involved in
nationality of the author the authoring of work. There can by more than one
Column 7
and, if the author is persons who can jointly and severally be the author
(Mandatory)
deceased, the date of of a work. A firm/organization cannot be an author of
his decease work by no means; this column shall always be filled
with the name & details of a person.
Column 8 Whether work is Published Status of the work at the time of filing the application,
(Mandatory) or Unpublished whether published or unpublished shall be indicated.
Year and country of first
Column 9
publication and name, Publisher details shall be submitted along with the
(Mandatory if
address and nationality year of Publication.
published)
of
the publishers
9
Years and countries of

subsequent publications,
Column 10 Details of subsequent publisher shall be
if any, and names,
(If applicable) submitted along with the latest year of
addresses and
publication.
nationalities of the
publisher
Names, address and
nationalities of the owners
The name, address & nationality of the persons who
of the various rights
holds the various rights comprising the copyright in
comprising the copyright
Column 11 the work are required to be mentioned. In case the
in the work and the extent
(Mandatory) applicant himself intends to hold all the rights in the
of rights held by each,
work, his particulars as already given against Col.2
together with particulars of
may be mentioned.
assignment and licenses, if
any
Names, addresses and If any person or persons other than the persons
nationalities of other indicated in column 11 to whom author or applicant
Column 12 (If persons, if any, authorized intends to authorize to assign or licence the
Applicable) to assign or license the copyright, on behalf of the owner, the name, address
rights comprising the and nationality of such person may be indicated. If
copyright not, ‘NIL’ or ‘N/A’ may be indicated.

work”, the location of the
original work, including
name, address and
Location of the original work, including name,
Column 13 nationality of the person in
address and nationality of the person in possession of
(Mandatory) possession of the work.
the work shall be indicated.
(In the case of an
architectural work, the
year of completion of the
work
should also be shown)
If the work is an ‘artistic
work’ which is used or is
Column 14
capable of being used in
(Mandatory if
relation to any goods or
the work is
services, the application
capable of Details of Search Certificate issued by the Trade Mark
shall include a certificate
being used in Registry shall be indicated.
from the Registrar of
relation to any
Trade Marks in terms of
goods or
the proviso to sub-section
services)
(1) of section 45 of the
Copyright Act, 1957.]
If the work is an
Column 15 “artistic work” whether
Details with respect to Registration under Designs
(Mandatory if it is registered under the
Act need to be indicated if necessary.
applicable) Designs Act 2000. If yes
give details.
10

work” capable of being
registered as a design
under the Designs Act
Details with respect to publication of that particular
Column 16 2000, whether it has been
design shall be indicated.
applied to an article though
an industrial process and ,
if yes, the number of times
it
is reproduced.
Applicant may mention any remarks relevant to the
Column. 17 Remarks
work, and its registration.
STATEMENT OF FURTHER PARTICULARS
The statement of Further Particulars, is primarily a declaration regarding the originality of

the work.
 If the work is not an adaptation, Column 1 (a) is to be indicated as ‘Yes’ and the rest
of the Columns, shall automatically be indicated as ‘N/A’.
 If the work is an adaptation, Col. 1 (a) shall be indicated as ‘No’.

 Further, the applicant should provide the details identifying that the prior or primary
work, of which adaptation is opted, is a work in public domain or not and whether
copyright still subsists in it.
 If in any such work, copyright subsists the applicant shall submit a No Objection
Certificate in favor of the applicant, from such Copyright holder.
 Further, if the work applied for registration is an adaptation and the copyright still
subsists in the prior or primary work, then certain details relevant to the prior work
shall be indicated with respect to Column 2.
11
TERM OF COPYRIGHT
Copyright shall subsist in any literary, dramatic, musical or artistic work published within the
lifetime of the author until sixty years from the beginning of the calendar year next following
the year in which the author dies.
Explanation- In this section the reference to the author shall, in the case of a work of joint
authorship, be construed as a reference to the author who dies last.12
ISSUES PERTAINING/INCIDENTAL TO REGISTRATION OF

DIFFERENT ARTISTIC AND MUSICAL WORKS
1. Works neither used nor capable of being used in relation to goods or
services
Works neither used nor capable of being used in relation to goods or services shall
include, but not limited to paintings, photograph, sculpture, drawing, sketches, maps,
charts etc.
2. Works used or capable of being used in relation to goods or services
Works used or capable of being used in relation to goods or services shall include but
not restricted to labels, symbols, marks or logos, associated with a brand or a business.
3. How do we differentiate between artistic works capable of being used
in relation to goods or services and artistic works which are not

capable of being used in relation to goods or services?
Such artistic works which have potential to eventually turn into Trade Marks, or such
marks which are outwardly associated with any brand identity represented by a
business, protected under trademarks, are treated as artistic works capable of being used
12
Chapter V, Section 22 of the Copyright Act 1957.
12
in relation to goods or services, for Copyright registration purposes and require

submission of Search Certificate (TM-C) issued by the Trade Mark Registry, in
pursuance to Section 45 proviso of the Copyright Act 1957. These include, brand logos,
labels, packaging, designs potentially applicable in relation to goods or services,
cartoons & figurative drawings potentially applicable in relation to goods or services,
and henceforth. Rest may be treated as Artistic works which are not capable of being
used in relation to goods or services, for which Search Certificate is not required to be
submitted, such as paintings, drawings, sculptures, lithographs, etc.
4. If a model appears on the Artistic work
If a model or a picture of a person appears on the Artistic work, the applicant shall be
required to submit a No Objection Certificate from the model.
If the applicant claims that the model or a picture of a person appearing on the Artistic
work is fictitious or purchased or downloaded, the applicant may be required to submit
an affidavit stating the same in this regard, or a consent letter or a purchase agreement
between the parties.
5. Cartoons and animation characters.
Cartoons and animated characters have a potential to be associated with a business or a

brand, they can be applied on goods and can be commercially sold for monetary gains,
or they can be applied in an animated game, or they can be used as mascots in events
and brand promotion. Certain examples for such works are McDonald of the food chain
brand Mc Donalds, Pillsbury animation, Vodafone zoo-zoos, hence for any such artistic
work, submission of Search Certificate is mandatory along with a fees of Rupees 2000/-
for registration.
6. Board/card games
Board Games/ Card games are registered under Artistic as well as Literary category as
it has both Artistic and Literary characteristics, However, they cannot be protected in its
entirety. A board game author may seek the registration for the graphics & pictures in
13
the board game under Artistic category, and the attributes of the protagonists and the
instructions/rules of the game under literary category. Board games and Card games are
Copyrightable under artistic category to the extent of the Artistic characteristics
involved in the work. Board games and Card games may be approved for registration
only if expressed as a single work. Any work of similar nature, appearing to be
different/separate work may be considered as multiple works and in such cases
applicant shall be required to apply for registration separately. The copyright law only
protects the particular manner of the author’s expression in artistic or literary form but
does not cover the idea of the game, or methods of playing.
7. Is Search Certificate mandatory for registration of board/card games
under artistic category?
Search Certificate is required for registration of board/card games as they may be used
along with any brand whose logo or label appears on the work for commercial
purposes. Search Certificate shall not be required, when such works are non-
commercially used or are used for purely educational purposes.
The applicant may be required to submit an affidavit in this regard.
8. Artistic work comprising of government logos, labels, symbols or
emblems
For registration of any artistic work comprising of, in full, or in part, any government
logo, label or symbol, shall not be eligible for registration of copyright unless the
applicant is able to submit a No Objection Certificate from the concerned authority or
department and clarifying how the work is a creation of author’s own skill and labour.
Any such artistic work shall be processed for registration, only if it is in connivance
with the provisions of The Schedule, The Emblems and Names (Prevention of
Improper Use) Act, 1950 and not in contravention with any Act or Rule applicable in
India.
14
9. Certificates
A Certificate is an official document attesting a fact. For any work to be a

copyrightable subject matter is to be created by the exercise of labour, skill and
judgment of the author. Copyright does not subsists in certificates of any kind as
Certificates are merely recordable documentation and neither possess any original
Artistic skill or labor; nor does it express the uniqueness of the author’s creativity.
Mostly all certificates appear to be in a basic generic format.
10. A Photograph or a portrait of a person
An application for registration of a Photograph or a portrait of a person is

copyrightable if, a No objection certificate of the person who appears on the work is
provided, along with the applications.
As an exception No Objection Certificate in case of portraits of public figures is not
required if the portrait is not objectionable in nature.
In case any rights to a photograph or portrait of a person are withheld by any
organization or a trust and such photograph or a portrait of a person is applied for
registration under artistic category, the applicant shall required to submit a No
Objection Certificate from such organization or trust.
11. Collage
A collage is also a copyrightable subject matter. The applicant is required to submit a

No Objection Certificate from the person/persons appearing in the collage if any.
12. Language of the Artistic work not mentioned with respect to Column
6 of the Statement of Particulars
While filing up the Statement of Particulars, Column 6, Language of the work, is a

mandatory column. The applicant is required to not leave this column vacant. With
respect to artistic works the applicant shall indicate all the languages used which are
apparently visible on the work. In cases where no language is apparently visible on the
15
work, the applicant shall mention the language in which the title of the work is
depicted. However this column may also be indicated as “NIL”, if no language is used
at all in creation of the work.
13. Artistic works capable of being registered under Designs Act 2000.
Every Design is a drawing, but every drawing is not a design. For any work which
qualifies to be a Design in accordance with the definition of Design under Section 2(d)
Designs Act and is apparently capable of being registered under Section 10 of the
Designs Act, but is applied for registration of copyright under Artistic category, shall
be approved for registration only after submission of an affidavit stating that the work
is not applied for registration under Designs Act and it has not been reproduced more
than 50 times by the applicant. Any such work shall be submitted as one work per
application.
14. Architectural Drawings
An architectural drawing is a drawn expression of the Architect’s original thoughts,

expressed using technical signs, symbols, and graphical representations together to
form an instruction to build a structure. In entirety, architectural drawings or plans are
copyrightable subject matter.
15. Photographs of Stage Arrangements
Photographs of the Stage Arrangement can be copyrighted under artistic category.

Each photograph shall be considered a separate work and separate applications shall be
filed for each work.
16. Compilation of Artistic works
There is no provision for registration of compilation of artistic work; therefore for

protection of such works under Artistic category, every work is to be filed as a separate
and independent application, subject to fulfillment of registration prerequisites.
16
17. Title of the work
Title of the works cannot be protected under copyright held by the Supreme Court in
Krishika Lulla v. Shyam Vithalrao Devkatta (2016) 2 SCC 521.
18. Maps
Copyright provides for protection of author’s original creation, “map” may include
cartographic representations of area, such as terrestrial maps and atlases, marine charts,
celestial maps and such three-dimensional works as globes and relief models.
Geographical Maps can be protected under Copyright, provided that the applicant shall
be able to furnish a No Objection Certificate from the Source of Creation or the Survey
of India as a proof of authentication.
19. Pamphlets & posters
Posters and Pamphlets include both artistic as well as literary characteristics. They are
entitled for copyright protection under artistic category only to the extent of the
Artistic content of the work. The literary content in the Posters and Pamphlets shall be
separately protected under literary category.
20. Sculptures & moldings
Sculptures, moldings or 3 dimensional models are subject matter of copyright

protection. For the purpose of feasibility photographs or images of such sculptures are
treated as original works. The applicant shall be required to mention in the application
form that he/she is seeking protection for the Sculpture or 3 dimensional models and
not just the photograph.
21. Painting
Painting is an artistic work whether or not it possesses any artistic quality [Section 2
(c) (i) and Section 13 (1) (a)]. For protection- a painting must be original and not a
17
mere copy of another painting. The painting is not defined. However, painting without
a surface is not painting. A painting must be on a surface of some kind.
22. Drawing
A drawing (including a diagram, map, chart or plan) is covered by the definition of

artistic work Section 2 (c) (i) and accordingly if it is original it is entitled to copyright
protection as an artistic work irrespective of its artistic quality. A drawing is not
defined under the Copyright Act except as stated above. It will therefore, mean any
kind of drawing including mechanical or engineering.
18

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LEGAL PROVISIONS INFERRED

COPYRIGHTS ACT, 1957

No.14] CHENNAI, WEDNESDAY, APRIL 5, 2023

NOTIFICATIONS BY HEADS OF DEPARTMENTS, ETC.

The High Court of Judicature at Madras

DTP—III-2 (14) [69]

[R.O.C. No. 5906 A/2022 (Comm. Cases)]

Rule 2 : In these Rules, unless the context otherwise requires:

(1). “Act(s)” means the Statutes mentioned below, as applicable:(i).

(vii). Under Sections 36 of the Designs Act, 2000 [C.M.A. (DES)];

(9). “Intellectual Property Office (IPO)” shall mean –

(i). in case of Trademarks – Office of `Registrar of Trademarks’; (ii). in

(i). Civil suits and applications therein;(ii).

(v). Appeals and petitions from the various IPOs and

Rule 7 : Procedure for Appeals

Rule 8 : Procedure for Writ Petitions

Rule 9 : Procedure for Civil Revision Petition

Rule 11 : General Rules:

Rule 12: Recording of Evidence

recording of evidence by a Local Commissioner;

Rule 13: Expert Opinion and Evidence

Rule 14: Consolidation of matters or cases or proceedings or disputes

Rule 15: General Clause

Rule 16: Power to remove difficulties

Rule 17: Cases transferred from the IPAB

High Court, Madras, P.

3. Whether using copyrighted material to train AI can be treated as fairuse/dealing?

4. Whether an AI is capable of committing a criminal offence?

No clarification is required in this regard. Kindly refer to the Moot Proposition.

No clarification is required in this regard. Kindly refer to the Moot Proposition.

3. Is citing international conventions and their corresponding sections acceptable within

No clarification is required in this regard. Kindly refer to the Moot Proposition.

6. Who is the respondent in the case?

No clarification is required in this regard. Kindly refer to the Moot Proposition.

You will be allotted the team code in the upcoming days.

9. % of semblance in Lidia's photo on facebook with Raha's artistic work.

No clarification is required in this regard. Kindly refer to the Moot Proposition.

No clarification is required in this regard. Kindly refer to the Moot Proposition.

11. What is the training data used?

No clarification is required in this regard. Kindly refer to the Moot Proposition.

No clarification is required in this regard. Kindly refer to the Moot Proposition.

13. Whether Lidia Facebook photo was copyrighted ?

No clarification is required in this regard. Kindly refer to the Moot Proposition.

No clarification is required in this regard. Kindly refer to the Moot Proposition.

For clarification refer to question no.5 above.

16. Who are the petitioner(s) and respondent(s)?

For clarification, refer to Question No.5 above.

FINAL SET OF CLARIFICATIONS

3. What was the order given by the Trial court?

4. Whether High court clubbed/ transferred the two cases to itself?

No clarification is required in this regard. Kindly refer to the Moot Proposition.

No clarification is required in this regard. Kindly refer to the Moot Proposition.

Equivalent citations: 117(2005)DLT717, 2005(30)PTC253(DEL)

2005 (30) PTC 253 (Del)

Author: Pradeep Nandrajog

Bench: Pradeep Nandrajog

2. The Cinderella (Copyright) of the family of intellectual property, long pushed

CENTRAL PUBLIC WORKS DEPARTMENT No. 47/2/57-WI Dated New Delhi, 16

Sub: Decoration of the Vigyan Bhawan in New Delhi.

for Chief Engineer''

Present : Mr. Parveen Anand for plaintiff.

Jaspal Singh, J.''

14. Following issues were framed on 1.4.2003 :