COPYRIGHT - Infringement

COPY INFRINGEMENT

Copyright infringement (or copyright violation) is the unauthorized or prohibited use of works covered by copyright law in a way that violates one of the copyright owner's exclusive rights, such as the right to reproduce or perform the copyrighted work or to make derivative works.

For electronic and audio-visual media, unauthorized reproduction and distribution are also commonly referred to as piracy.

Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner.

Meaning and types of infringement

When a person intentionally or unintentionally copies or uses the work of another creator, without his prior consent or permission, or any contract or license or assignment with the author as covered by the copyright law, it amounts to infringement.

Infringement can be broadly classified into two:-

• Primary infringement;
• Secondary infringement.

Primary infringement deals with the real act of copying, while secondary infringement deals with other kinds of dealing like selling the pirated books, importing etc.

REMEDIES

The remedies for copyright infringement are:

• Civil
• Criminal, and
• Administrative

CIVIL REMEDIES

INTERLOCUTORY INJUNCTIONS: 

Requirements for the grant of interim injunction, namely,

• Prima facie case
• Balance of Convenience; and
• Irreparable injury

PECUNIARY REMEDIES: The plaintiff, under sections 55 and 58, can seek recovery of all three remedies, namely 

• account of profits 
• compensatory damages and 
• conversion damages which are assessed on the basis of the value of the article converted.

ANTON PILLER ORDERS: Anton Piller Order has the following elements:

• An injunction restraining the defendant from dealing in the infringing goods or destroying them;
• An order that the plaintiff's solicitors be permitted to enter the premises of the defendants, search the same and take goods in their safe custody; and
• An order that the defendant be directed to disclose the names and addresses of suppliers and customers and also to file an affidavit within a specified time giving this information.

ASSET FREEZING (MAREVA INJUNCTION):  is an order which temporarily freezes the assets of a defendant, thus preventing the defendant from frustrating the judgement by disposal of such assets. (after the case Mareva Compania Naviera SA v International Bulkcarriers SA, [1975])

NORWICH PHARMACAL ORDERS: These are orders by which information can be discovered from third parties. It is granted against a third party that has been innocently mixed up in wrongdoing, forcing the disclosure of documents or information. By identifying individuals, the documents and information sought are disclosed in order to assist the applicant for such an order in bringing legal proceedings against individuals who are believed to have wronged the applicant. (A Norwich Pharmacal order was first granted in 1974 by the House of Lords in Norwich Pharmacal Co. v Customs and Excise Commissioners)

CRIMINAL REMEDIES

Any person who knowingly infringes or abets the infringement of the copyright in any work commits a criminal offence under Section 63 of the Copyright Act.

The minimum punishment for infringement of copyright is imprisonment for six months with a minimum fine of Rs. 50,000/-. 

In the case of a second and subsequent conviction, the minimum punishment is imprisonment for one year and a fine of Rs. one lakh.

Any police officer, not below the rank of a sub-inspector, may, if he is satisfied that an offence in respect of the infringement of copyright in any work has been, is being, or is likely to be committed, seize without warrant, all copies of the work and all plates used for the purpose of making infringing copies of the work, wherever found, and all copies and plates so seized shall, as soon as practicable be produced before a magistrate.

JURISDICTION

No court inferior to that of a Metropolitan Magistrate or a Judicial Magistrate of the first class shall try any offence under the Copyright Act.

ADMINISTRATIVE REMEDIES

Administrative remedies consist of moving the Registrar of copyrights to ban the import of infringing copies into India when the infringement is by way of such importation and the delivery of the confiscated infringing copies to the owner of the copyright and seeking the delivery.

DEFENSES TO INFRINGEMENT

A defendant in an infringement action may rebut the presumption of copying by a showing of independent creation. 

It is possible for an author to create a work independently while bearing similarities to another. 

If access is not established, there is no copying, even if there is a striking similarity between the two works. 

For this reason, corporations will destroy or return unsolicited mailings from authors as a policy.

Some acts that would otherwise be a copyright infringement are excused through the concept of "fair use." 

The statute states that use for purposes of criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research is fair use. 

As to works not in these categories, the statute states that the factors to be considered include the purpose and character of the use, including whether it is of a commercial nature or for non-profit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon a potential market for or value of the copyrighted work. 

This involves balancing the interests of the copyright owner and the one copying the material.

FAIR USE

The doctrine of fair use or fair dealing is an integral part of copyright law. 

It permits reproduction of the copyrighted work or use in a manner, which but for the exception, carved out would have amounted to infringement of copyright. It has, thus, kept out the mischief of the copyright law.

The defence of fair dealing originated as an equitable doctrine allowing certain uses of literary works that copyright would otherwise have prohibited if prohibiting such uses would stifle the very creativity which that law is designated to foster. 

Fair dealing also serves as an answer to those “fair” copyright proponents who actively argue that copyright, not being a patent, is not an absolute right and should therefore be balanced against user rights. 

Indeed the fair dealing doctrine is “a key part of the social bargain at the heart of the copyright law, in which as a society we concede certain limited individual property rights to ensure the benefits of creativity to a living culture”

EXEMPTIONS

Subject to certain conditions, the law allows any use of a work without the permission of the owner of the copyright. Some of the exemptions are the uses of the work:

• for the purpose of research or private study,
• for criticism or review,
• for reporting current events,
• in connection with a judicial proceeding,
• performance by an amateur club or society if the performance is given to a non-paying audience, and
• the making of sound recordings of literary, dramatic or musical works under certain conditions.

COPYRIGHT - Assignment, Rights, Adaptation & Registration

ASSIGNMENT

A copyright assignment is when the copyright holder transfers ownership of the copyright to another person or organization.

The copyright holder is normally the person who created the work. Still, they may decide to sign the agreement over to a publisher (in the book industry or music industry) or record label (in the music industry). This occurs because publishers and record labels have more resources than an author to print copies of the work, distribute to a broader audience, and maintain other aspects of their career. Often, the publisher or record label may even supply the author with a monetary advance so the author can focus on just creating the work.

The downside of assigning your copyright over to a publisher is that you receive only a cut of what you would have received if you retain the copyright, and you may also lose some creative control. For instance, deciding whether to turn your book into a movie may now rest with the publisher and not you.

An alternative of transferring the entire copyright over to a publisher is licensing the work to them in a limited capacity. In this instance, you retain the copyright, but you also get the business advantages from the publisher. 

Debates have popped into court over who actually owns the copyright. So like any other contract, an assignment must be in writing to avoid any future confusion. 

Assignment of Copyrights can be made in whole or in part either generally or subject to limitations and either for the whole term of the copyright or any part thereof. 

In other words, you may assign away 50%, 1%, or 99% of your interest in that Copyright. Assignments may be integrated into a contract or maybe drafted separately. 

Mode of assigning copyright

It shall be in writing signed by the assignor or by his duly authorised agent. It shall identify the specific works and specify the rights assigned and the duration and territorial extent of such assignment. It shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.

Period of assignment

If the assignment period is not stated, it shall be deemed to be five years from the date of assignment.

Assignment and License

A license is an authorization of an act which, without such authorization, becomes infringement.

In essence, a license is a grant of authority to do a particular thing that otherwise could not have been done.

It amounts to consent or permission granted by the owner of a copyright that the licensee could carry out a restricted act which but for such permission could have been an infringement.

Owner of copyright in an existing work or future work ‘may grant any interest in the right by license in writing signed by him or his duly authorized agent’ (S. 30)

K.A. Venugopala Setty v. Dr. Suryakantha U. Kamath AIR 1992 Kar 1.

It is the case of the plaintiff that he is the author of the book "A Concise History of Karnataka" and the manuscript of the same was given to the defendant for printing; that he had not assigned his copyright to the defendant and therefore, the defendant was and is not entitled to publish the book without assignment of the copyright in writing to him by the plaintiff; that when the book was printed and ready for publishing, the defendant came forward with the plea that the plaintiff had assigned the copy-right though no such assignment had been made by the plaintiff either orally or in writing; that as the defendant tried to publish the book claiming that the plaintiff had assigned the copyright of the book in question, the plaintiff had no other go but to seek relief as claimed in the suit.

Section 19 of the Act provides that: 

• An assignment of copyright should be in writing signed by the owner of the copyright.
• Mere acceptance of remuneration or delivery of manuscript does not constitute an assignment of copyright. 
• An oral assignment is invalid, and it is impermissible in law. (Section 19 requires that the assignment should be in writing signed by the assignor or by his duly authorized agent—if the assignment appears from any document and it is signed by the assignor or by his authorized agent, the statutory requirement is fulfilled.)

Assignment – Points to Ponder

Transfer of ownership of the rights

Assignment leaves nothing in the grantor *qua; the right assigned bestowing in the grantee the whole of the legal interest in the right. (*in the capacity of; as being)

Capacity to sue for infringement

A licensee cannot sue for infringement of copyright unless he joins the copyright owner as a co-plaintiff in the action.

Sec. 61. Owners of copyright to be a party to the proceeding.—

(1) In every civil suit or other proceedings regarding infringement of copyright instituted by an exclusive licensee, the owner of the copyright shall, unless the court otherwise directs, be made a defendant. Where such owner is made a defendant, he shall have the right to dispute the claim of the exclusive licensee.

(2) Where any civil suit or other proceedings regarding infringement of copyright instituted by an exclusive licensee is successful, no fresh suit or other proceedings in respect of the same cause of action shall lie at the instance of the owner of the copyright.

Rights in a musical sound recording

A sound recording generally comprises various rights, For example, the lyricist who wrote the lyrics, the composer who set the music, the singer who sang the song, the musician (s) who performed the background music. It is necessary to obtain the licences from each and every right owner in the sound recording. This would, inter alia, include the producer of the sound recording, the lyricist who wrote the lyrics, and the musician who composed the music.

Owner of copyright in works by journalists during the course of their employment.

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. Still, in all other respects, the author shall be the first copyright owner in the work.

Owner of the copyright in the case of a work produced for valuable consideration at the instance of another person

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.

ADAPTATION

In the law of copyrights, the exclusive right of the author of a literary project to reproduce, publish, and sell his or her work, which is granted by statute, adaptation refers to the creation of a derivative work, which is protected by copyright laws.

A derivative work involves a recasting or translation process that incorporates pre-existing material capable of protection by copyright. 

An adaptation is copyrighted if it meets the requirement of originality, in the sense that the author has created it by his or her own proficiency, labour, and judgment without directly copying or subtly imitating the pre-existing material. 

Mere minor alterations will not suffice.

The Copyright Act defines the following acts as adaptations:

Conversion of a dramatic work into a non-dramatic work

Conversion of a literary or artistic work into a dramatic work

Re-arrangement of a literary or dramatic work

Depiction in a comic form or through pictures of a literary or dramatic work

Transcription of a musical work or any act involving re-arrangement or alteration of an existing work.

The making of a cinematograph film of a literary or dramatic or musical work is also an adaptation.

Copyright over news

There is no copyright over the news. 

However, there is copyright over the way in which a news item is reported.

COPYRIGHT OFFICE

Section 9 of the Copyright Act requires for the establishment of an office to be called the Copyright Office for the purpose of the Act. The Copyright Office is to be under the immediate control of a Registrar of Copyrights to be appointed by the Central Government, who would act under the superintendence and directions of the Central Government.

The Copyright Office is currently located at the following address:

4th Floor, Jeevan Deep Building

Parliament Street

New Delhi - 110001

Telephone No. : +91-11-23362436

Copyright Board

Section 11 of the Act provides for the establishment of the Copyright Board and empowers the Central Government to constitute the same consisting of a Chairman and not less than two, but not more than fourteen members. 

The Chairman of the Board should be a sitting or retired judge of the High Court or a person qualified to be appointed as judge of the High Court. 

The Registrar of Copyright to act as Secretary of the Copyright Board. (The Copyright Board has no powers to limit the use of copyright to any particular territorial area. The appeal against orders passed by the Copyright Board to the High Court within whose jurisdiction the appellant resides or carries on business.)

Functions of the Copyright Board

The main functions of the Copyright Board are as under:

1. Settlement of disputes as to whether copies of any literary, dramatic or artistic work or records are issued to the public in sufficient numbers.
2. Settlement of disputes as to whether the term of copyright for any work is shorter in any other country than that provided for that work under the Act.
3. Settlement of disputes with respect to assignment of copyright as dealt with in Section 19A.
4. Granting of compulsory licences in respect of Indian works withheld from the public.
5. Granting of compulsory licence to publish unpublished Indian works.
6. Granting of compulsory licence to produce and publish the translation of literary and dramatic works.
7. Granting of compulsory licence to reproduce and publish literary, scientific or artistic works for certain purposes.
8. Determination of royalties payable to the owner of the copyright.
9. Determination of objection lodged by any person as to the fees charged by Performing Rights Societies.
10. Rectification of Register on the application of the Registrar of Copyright or of any person aggrieved.

REGISTRATION OF A COPYRIGHT

Chapter VI of the Copyright Rules, 1956, as amended, sets out the procedure for the registration of a work. 

The procedure for registration is as follows:

• Application for registration is to be made on Form IV ( Including Statement of Particulars and Statement of Further Particulars) as prescribed in the first schedule to the Rules ;
• Separate applications should be made for registration of each work;
• Each application should be accompanied by the requisite fee prescribed in the second schedule to the Rules; and
• The applications should be signed by the applicant or the advocate in whose favour a Vakalatnama or Power of Attorney (neither notarization nor consular legalization required) has been executed. 
• A power of attorney signed by the party and accepted by the advocate should also be enclosed.
• Both published and unpublished works can be registered.
• Three copies of published work may be sent along with the application. 
• If the work to be registered is unpublished, a copy of the manuscript has to be sent along with the application for affixing the stamp of the Copyright Office in proof of the work having been registered. 
• In case two copies of the manuscript are sent, one copy of the same duly stamped will be returned, while the other will be retained, as far as possible, in the Copyright Office for record and will be kept confidential. 
• It would also be open to the applicant to send only extracts from the unpublished work instead of the whole manuscript and ask for the return of the extracts after being stamped with the seal of the Copyright Office.
• If the work is a Computer programme, in addition to the above 3 Copies of the work in CD or Floppy Diskette must be provided.

Steps involved in getting a copyright registration certificate:

1. The application with complete details is filed.
2. Thereafter, the application is examined, and objections, if any, are raised.
3. The certificate is issued by the copyright office after the objections, if any, are removed to the satisfaction of the department.
4. When a work has been registered as unpublished, and subsequently it is published, the applicant may apply for changes in particulars entered in the Register of Copyright in Form V with a prescribed fee.

PERFORMER'S RIGHTS

As per the Indian Copyright Act, a "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.

"Performance" in relation to performer’s right means any visual or acoustic presentation made live by one or more performers.

Rights of a performer:

A performer has the following rights in his/her performance:

• Right to make a sound recording or visual recording of the performance;
• Right to reproduce the sound recording or visual recording of the performance;
• Right to broadcast the performance;
• Right to communicate the performance to the public otherwise than by broadcast.
• Performer’s rights subsist for 25 years.

Protection of Foreign Works

The Indian Copyright Act today is compliant with most international conventions and treaties in the field of copyrights. India is a member of the Berne Convention of 1886 (as modified at Paris in 1971), the Universal Copyright Convention of 1951 and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement of 1995. 

Though India is not a member of the Rome Convention of 1961, the Copyright Act, 1957 is fully compliant with the Rome Convention provisions. 

Copyright of nationals of countries who are members of the Berne Convention for the Protection of Literary and Artistic Works, Universal Copyright Convention and the TRIPS Agreement are protected in India through the International Copyright Order.

The Berne Convention and the TRIPS Agreement stipulate the subsistence of copyright in original literary, dramatic, musical and artistic works; cinematographic film and sound recordings. 

These classes include a variety of works like books, pamphlets and other writings; lectures, addresses, sermons; dramatic or dramatic-musical works, choreographic works; musical composition, chirographic works; drawing, painting, architecture, sculpture, engraving; and lithography, photography, maps, plans, sketches, three-dimensional works, translations, encyclopaedias and anthologies, software codes, multimedia productions, etc.

Statutory Licence for Cover Versions

Section 31C (1) provides that any person desirous of making a cover version, being a sound recording in respect of any literary, dramatic or musical work, where sound recordings of that work have been made by or with the licence or consent of the owner of the right in the work, may do so subject to the provisions of this section.

However, such sound recordings shall be in the same medium as the last recording, unless the medium of the last recording is no longer in current commercial use.

The person making the sound recordings required to give prior notice of his intention to make the sound recordings in the manner as may be prescribed, and provide in advance copies of all covers or labels with which the sound recordings are to be sold, and pay in advance, to the owner of rights in each work royalties in respect of all copies to be made by him, at the rate fixed by the Copyright Board.

It may be noted that such sound recordings shall not be sold or issued in any form of packaging or with any cover or label which is likely to mislead or confuse the public as to their identity, and in particular shall not contain the name or depict in any way any performer of an earlier sound recording of the same work or any cinematograph film in which such sound recording was incorporated and, further, shall state on the cover that it is a cover version made under this section.

The person making such sound recordings shall not make any alteration in the literary or musical work which has not been made previously by or with the consent of the owner of rights or which is not technically necessary for the purpose of making the sound recordings. 

However, such sound recordings shall not be made until the expiration of five calendar years after the end of the year in which the first sound recordings of the work was made.

It may be noted that the cover version means a sound recording made in accordance with this Section 31C of the Act.

Statutory Licence for Broadcasting of Literary and Musical Works and Sound Recording

Section 31D provides that any broadcasting organisation desirous of communicating to the public by way of a broadcast or by way of performance of a literary or musical work and sound recording which has already been published may do so subject to the fulfilment of prescribed conditions.

The broadcasting organisation required to give prior notice in the prescribed manner of its intention to broadcast the work stating the duration and territorial coverage of the broadcast, and pay to the owner of rights in each work royalties in the manner and at the rate fixed by the Copyright Board.

The rates of royalty for radio broadcasting shall be different from television broadcasting, and the copyright Board shall fix separate rates for radio broadcasting and television broadcasting and the broadcasting organisation to pay an advance to the owners of rights.

The broadcasting organisation required to maintain such records and books of account, and render to the owners of rights such reports and accounts; and allow the owner of rights or his duly authorised agent or representative to inspect all records and books of account relating to such broadcast in prescribed manner.

Licence to Produce and Publish Translations

Section 32 entitles any person to apply to the Copyright Board for a licence to produce and publish a translation of a literary or dramatic work in any language after a period of seven years from the first publication of the work. 

However, in respect of teaching, scholarship or research, Section 32(1A) allows any person to apply to the Copyright Board for a licence to produce and publish a translation, in printed or analogous forms of reproduction, of a literary or dramatic work, other than an Indian work, in any language in general use in India after a period of three years from the first publication of such work. 

Further, where such translation is in a language not in general use in any developed country, such application may be made after a period of one year from such publication.

Termination of Licence

Section 32B of the Act deals with termination of licences and provides that if at any time after the granting of a licence, the owner of the copyright in the work or any person authorised by him publishes a translation of such work in the same language and which is substantially the same in content at a price reasonably related to the price normally charged in India for the translation of works of the same standard on the same or similar subject, the licence so granted shall be terminated. 

However, such termination shall take effect only after the expiry of a period of three months from the date of service of a notice in the prescribed manner on the person holding such licence by the owner of the right of translation intimating the publication of the translation.

Copyright Societies

Under clause (3) of Section 33 Central Government has been authorised to register association of persons as copyright society after taking into account the following factors:

1. the interests of the authors and other owners of rights under the Copyright Act;
2. the interest and convenience of the public and in particular of the groups of persons who are most likely to seek licences in respect of the relevant rights; and
3. the ability and professional competence of the applicants.

However, an owner of copyright in his individual capacity continues to have the right to grant licences in respect of his own works consistent with his obligations as a member of the registered copyright society.

The Central Government cannot register more than one copyright society to do business in respect of the same class of works.

The Central Government has been empowered to cancel the registration of a Copyright Society if its management is detrimental to the interests of the owners of rights concerned. 

The registration can also be suspended by the Government for a period of one year if it is necessary in the interest of the owners of the rights concerned, and the government has to appoint an administrator to discharge the functions of the Copyright Society.

Copyright Society is a legal body that protects or safeguards the interest of owners of the work in which copyright subsist. The Copyright Societies gives assurance to the creative authors of the commercial management of their works. 

The authors of creative works licence a publisher to publish the work on a royalty basis. This may lead to infringement of the work anywhere in India or abroad as it is extremely difficult for the owner of the work to prevent such infringement. To overcome such difficulty, owners of Copyright works have formed Societies to licence their works for performance or communication to the public or issue copies of the work to the public. 

The Copyright societies are also authorized to watch out for infringement of the copyright and take appropriate legal action against the infringers.

Section 34(3) empowers the Copyright Society to:

1. issue licences under Section 30 in respect of any rights under the Act;
2. collect fees in pursuance of such licences;
3. distribute such fees among owners of rights after making deductions for its own expenses; and
4. perform any other function consistent with the provisions of Section 35.

FUNCTIONS OF A COPYRIGHT SOCIETY:

• It grants the license of the Copyright in the work for reproduction, performance or communication to the public.
• It locates the infringement of the Copyright and initiates legal proceedings.

COPYRIGHT - The Copyright Act, 1957.

 COPYRIGHT

Copyright in India

What is a Copyright?

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. 

In fact, it is a bundle of rights including, among other things, rights of reproduction, communication to the public, adaptation and translation of the work. 

It means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever.

Copyright assumes supreme importance for authors, artists, architects, composers, music production companies and producers, film production companies, computer programmers and designers.

USE OF THE "©" SYMBOL

Anyone who claims copyrights in a work can use copyright notice to alert the public of the claim. 

It is unnecessary to have a registration to use the designations. However, it is highly advisable to incorporate a copyright notice like the symbol, letter "c" in a circle or the word "Copyright" followed by the name of the copyright owner and year of first publication.

HISTORY

Before the signing and the subsequent introduction of the 1957 Act, the copyright laws of India were governed by the Copyright Act of 1914. This act was linked to the British Copyright of 1911 to India. 

Most of the laws contained in the Copyright Act of 1957 are based on the copyright law of the United Kingdom--specifically the Copyright Act of 1956. 

India's copyright laws comply with most international conventions and treaties dealing with copyright protection. The country is a member of the Berne Convention of 1886, the Universal Copyright Convention of 1951 and the Agreement on Trade-Related Aspects of Intellectual Property Rights Agreement of 1995--or TRIPS. The country is not a signatory to the Rome Convention of 1961, but the laws regarding the copyrights in the country still comply with the convention. 

The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized uses.

India's Copyright Act, 1957, has been significantly amended. 

In May 2012, both houses of the Indian Parliament unanimously placed their seal on the Copyright Amendment Bill, 2012, bringing Indian copyright law into compliance with the World Intellectual Property Organization "Internet Treaties".

(The Copyright Act, 1957 had been amended five times before 2012, once each in 1983, 1984, 1992, 1994 and 1999, to meet with the national and international requirements.)

The 2012 amendments make Indian Copyright Law compliant with the Internet Treaties – the WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT).

Exclusive right….

In the case of literary, dramatic or musical work (except computer programme):

• reproducing the work in any material form, which includes storing of it in any medium by electronic means;
• issuing copies of the work to the public which are not already in circulation;
• performing the work in public or communicating it to the public;
• making any cinematograph film or sound recording in respect of the work;
• making any translation or adaptation of the work.

Further, any of the above-mentioned acts concerning work can be done in translation or adaptation of the work.

In the case of a computer programme:

• to do any of the acts specified in respect of a literary, dramatic or musical work; and
• to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme. However, such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.

In the case of artistic work:

• reproducing the work in any material form, including depiction in three dimensions of a two-dimensional work or in two dimensions of a three-dimensional work;
• communicating the work to the public;
• issuing copies of work to the public which are not already in existence;
• including work in any cinematograph film;
• making an adaptation of the work, and to do any of the above acts concerning an adaptation of the work.

In the case of cinematograph film and sound recording:

• making a copy of the film including a photograph of any image or making any other sound recording embodying it; 
• selling or giving on hire or offer for sale or hire any copy of the film/sound recording even if such copy has been sold or given on hire on earlier occasions; and
• communicating the film/sound recording to the public.

In the case of a sound recording:

• To make any other sound recording embodying it
• To sell or give on hire, or offer for sale or hire, any copy of the sound recording.
• To communicate the sound recording to the public.

Definitions

Work

• Classes of works for which copyrights protection is available in India
• Original literary, dramatic, musical and artistic works;
• Cinematograph films; and
• Sound recordings.

Artistic work

• 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.

Musical work

"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.

Sound recording

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

A phonogram and a CD-ROM are sound recordings.

Cinematograph film

"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.

Coverage for Government Work

The copyright of 1957 also calls for the protection of government work. Government work, according to the act, refers to all works that are made, published and made under the direction or control of the government, the legislature, the courts, tribunal and other judicial authority.

Author

Ordinarily, the author is the first owner of copyright in a work.

• In the case of a literary or dramatic work, the author, i.e., the person who creates the work.
• In the case of a musical work, the composer.
• In the case of a cinematograph film, the producer.
• In the case of a sound recording, the producer.
• In the case of a photograph, the photographer.
• In the case of a computer-generated work, the person who causes the work to be created.

Significance

• Copyright refers to a bundle of exclusive rights vested in the owner of copyright by virtue of Section 14 of the Act. These rights can be exercised only by the owner of the copyright or by any other person who is duly licensed in this regard by the owner of the copyright. These rights include the right of adaptation, right of reproduction, right of publication, right to make translations, communication to the public etc.

• Copyright protection is conferred on all Original literary, artistic, musical or dramatic, cinematograph and sound recording works. Original means that the work has not been copied from any other source. Copyright protection commences the moment a work is created, and its registration is optional. 

• However, it is always advisable to obtain a registration for better protection. Copyright registration does not confer any rights and is merely a prima facie proof of an entry in respect of the work in the Copyright Register maintained by the Registrar of Copyrights.

• As per Section 17 of the Act, the author or creator of the work is the first owner of the copyright. An exception to this rule is that the employer becomes the owner of copyright in circumstances where the employee creates a work in the course of and scope of employment. (Academy Of General Edu., Manipal & vs B.Malini Mallya on 23 January 2009)

• Copyright registration is invaluable to a copyright holder who wishes to take civil or criminal action against the infringer. Registration formalities are simple, and the paperwork is the least. In case the work has been created by a person other than the employee, it would be necessary to file with the application a copy of the assignment deed.

• One of the supreme advantages of copyright protection is that protection is available in several countries across the world, although the work is first published in India by reason of India being a member of the Berne Convention. Protection is given to works first published in India, in respect of all countries that are member states to treaties and conventions to which India is a member. 

• Thus, without formally applying for protection, copyright protection is available to works first published in India across several countries. Also, the government of India has, by virtue of the International Copyright Order, 1999, extended copyright protection to works first published outside India.

The Term of Copyright

Copyright does not last indefinitely.

Sec.22 to 29 of the Copyright Act, 1957 deal with these aspects:- 

The term varies as per the- 

• Nature of the work; or 
• Whether the author is a natural/legal person, or 
• Whether work is anonymous or pseudonymous. 

In case of - Literary, Dramatic, Musical or Artistic Works; 

• The term is for Lifetime and thereafter for 60 years; 
• Joint Owners – 60 years starts after death of last owner; 
• Anonymous/Pseudonymous works- 60 Years from the year of publication If identity disclosed, term extended to 60 years after the death of the author. 

• Photographs- 60 years from the year of publication 
• Cinematograph Film- 60 years from the year of publication 
• Government undertaking- 60 years from the year of publication 
• International Organisation- 60 years from the year of publication 
• Performer's Rights- 25 years from the year of performance 
• Broadcasting Reproduction Rights- 25 years from the year of Broadcast

Objective

The main objective of the Copyright Act is to give protection to the owner of the copyright from the dishonest manufacturers, who try to confuse the public and make them believe that the infringed products are the products of the owner. Further, it wants to discourage the dishonest manufacturers from enchasing the goodwill of the copyright owner, who has established itself in the market with its own efforts. 

HAWKINS COOKER LTD. v. MAGICOOK APPLIANCES, 100 (2002) DLT 2008

Court-ordered for perpetual injunction restraining the defendants, their servants, agents etc., from using a get up of label concerning pressure cookers which are deceptively similar to the label of the plaintiff having distinctive features and registered under the provisions of the Copyright Act, 1957. The defendants were also restrained from dealing with the cookbooks of the plaintiff company and were directed to deliver up to the plaintiff company for destruction all such pressure cookers and books complained against and all accessories and articles employed by the defendants in the manufacture of the offending goods which are in the custody, power, possession and control of the defendants. The plaintiff company is also entitled to damages arising upon the rendition of accounts by the defendants.

Copyright protects the expressions and not the ideas.

There is no copyright in an idea.

RG ANAND v. DELUX FILMS, (AIR 1978 SC 1613) 

The plaintiff wrote the play Ham Hindustani, and it soon became very popular. In 1954, the defendant Mohan Sehgal sent a letter to the plaintiff that he wishes to make a movie based on the play. The plaintiff met the defendant and discussed the entire play. The defendant did not commit anything, but the plaintiff later came to know that the defendant released a movie titled New Delhi. After watching the movie, the plaintiff was of the opinion that it is based on the story of his play. So he filed a suit against the defendant for permanent injunction and damages. Both the District Court and the High Court ruled against the plaintiff on a finding of the facts. The case finally reached the Supreme Court of India.

Important issues discussed by the Court

• Is the film New Delhi an infringement of the plaintiff's copyright in the play Hum Hindustani?
• Have defendants or any of them infringed the plaintiff's copyright by producing, or distributing or exhibiting the film New Delhi?

The Court clarified the following important aspects in this case -

• There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts, and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work.
• It has to be seen whether similarities are fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. Copying should be substantial or material.
• Test: Whether the viewer, after having read or seen both the works, is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original.
• Where the theme is the same but presented differently, there can be no question of infringement.
• If there are material and broad dissimilarities along with similarities, it negatives the intention to copy the original work. If the coincidences appearing in the work are clearly incidental, then there can't be infringement.
• If the viewer, after the incident, gets the idea that the film is by and large a copy of the original play, violation of the copyright may be said to be proved.
• The burden of proof is on the plaintiff in cases where a stage play has been infringed by a movie director.

After applying the principles enunciated above, the court ruled that it cannot be said that the film is a "substantial or material copy of the play written by the plaintiff." The judges were of the opinion that no prudent person, after seeing both the works, will get the impression that there is a copy. At most, the central theme of provincialism is the same, but that is an idea not protected by copyright. 

Justice Pathak, in his concurring opinion, said, "the story portrayed by the film travels beyond the plot delineated in the play." He also observed that "In the attempt to show that he is not guilty of infringement of copyright, it is always possible for a person intending to take advantage of the intellectual effort and labours of another to so developing his own product that it covers a wider field than the area included within the scope of the earlier product, and in the common area covered by the two productions to introduce changes in order to disguise the attempt at plagiarism." However, he said, in the present case, the dissimilarities are so material that it is not possible to say that there is an infringement. For future cases, he opined that "In another, and perhaps a clearer case, it may be necessary for this Court to interfere and remove the impression which may have gained ground that the copyright belonging to an author can be readily infringed by making immaterial changes, introducing insubstantial differences and enlarging the scope of the original theme so that a veil of apparent dissimilarity is thrown around the work now produced. The court will look strictly at not only blatant examples of copying but also at reprehensible attempts at colourable limitation."

Significance of the decision

This judgement is considered a landmark decision in the area of Indian copyright law. 

Most importantly, it clarified that copyright protection does not extend to mere ideas. 

This case has been cited and followed in many of the subsequent judgments from different courts in India. 

One of the most recent ones is Mansoob Haider v. Yashraj Films, from the Bombay High Court where the Court had to decide whether the Bollywood movie Dhoom 3 was an infringement of the plaintiff's copyright in the script ONCE.

Meaning of Originality.

The word "original" does not mean that the work must be the expression of original or inventive thought. 

The Copyright Act is not concerned with the originality of ideas, but with the expression of thought, and in the case of literary work, with the expression of thought in print or writing.

The originality which is required relates to the expression of the thought. 

But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work—that it should originate from the author; and as regards compilation, originality is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. 

The words "literary work" cover work which is expressed in print or writing irrespective of the question whether the quality or style is high. 

The commonplace matter put together or arranged without the exercise of more than negligible work, labour and skill in making the selection will not be entitled to copyright. 

The word "original" does not demand original or inventive thought, but only that the work should not be copied but should originate from the author.

Indian perspective on copyright protection

The Copyright Act, 1957 provides copyright protection in India. It confers copyright protection in the following two forms: 

• Economic rights of the author, and 
• Moral Rights of the author.

Economic Rights

The copyright subsists in original literary, dramatic, musical and artistic works; cinematographs films and sound recordings. 

The authors of copyright in the aforesaid works enjoy economic rights u/s 14 of the Act. 

The rights are mainly, in respect of literary, dramatic and musical, other than a computer program, to reproduce the work in any material form including the storing of it in any medium by electronic means, to issue copies of the work to the public, to perform the work in public or communicating it to the public, to make any cinematograph film or sound recording in respect of the work, and to make any translation or adaptation of the work. 

In the case of a computer program, the author enjoys, in addition to the aforesaid rights, the right to sell or give on hire, or offer for sale or hire any copy of the computer program regardless of whether such copy has been sold or given on hire on earlier occasions. 

In the case of an artistic work, the rights available to an author include the right to reproduce the work in any material form, including depiction in three dimensions of a two-dimensional work or in two dimensions of a three-dimensional work, to communicate or issues copies of the work to the public, to include the work in any cinematograph work, and to make any adaptation of the work. 

In the case of a cinematograph film, the author enjoys the right to make a copy of the film, including a photograph of any image forming part thereof, to sell or give on hire or offer for sale or hire, any copy of the film, and to communicate the film to the public.

These rights are similarly available to the author of sound recording. 

In addition to the aforesaid rights, the author of a painting, sculpture, drawing, or of a manuscript of a literary, dramatic or musical work, if he was the first owner of the copyright, shall be entitled to have a right to share in the resale price of such original copy provided that the resale price exceeds rupees ten thousand.

Economic Rights - Summary

Economic Rights of Copyright Literary, Dramatic and Musical Work:- 

Following are the Economic Rights:- a) To reproduce or store the work. b) To issue copies to the public. c) To perform the work in public. d) To make cinematograph film or sound recording. e) To make a translation of the work. f) To make an adaptation of the work, 

Artistic Work:- 

Following are the Economic Rights:- a) To reproduce the work. b) To communicate the work to the public. c) To include the work in a cinematograph film. d) To make an adaptation of the work.

Cinematograph Film:- 

Following are the Economic Rights:- a) To make copies of the film. b) To sell or give on hire a copy of the film. c) To communicate the film to the public. 

Sound Recording:- 

Following are the Economic Rights:- a) To make any other sound recording embodying it. b) To sell or give on hire a copy of the sound recording. c) To communicate the sound recording to the public.

Moral Rights

Section 57 of the Act defines the two basic "moral rights" of an author. These are: 

(i) Right of paternity, and 

(ii) Right of integrity.

The right of paternity: An author has a right to claim authorship of his work and can prevent all others from claiming authorship of his work. He can also demand to include his name to appear in all the copies of his work at an appropriate place. 

Right of integrity: An author has a right to prevent distortion, mutilation or other alteration of his work, etc., which would be prejudicial to his honour and reputation. It is essential where a licence or assignment has been granted to adapt or alter the work in some way, e.g. A novel into a play, play into a film.

The proviso to section 57(1) provides that the author shall not have any right to restrain or claim damages in respect of any adaptation of a computer program to which section 52 (1)(aa) applies (i.e. reverse engineering of the same). 

It must be noted that failure to display a work or display it to the author's satisfaction shall not be deemed an infringement of the rights conferred by this section. 

The legal representatives of the author may exercise the rights conferred upon an author of a work by section 57(1), other than the right to claim authorship of the work.

Indian Judiciary Response

The response of the Indian judiciary regarding copyright protection can be grouped under the following headings: 

• Ownership of a copyright, 
• Jurisdictional aspect, 
• Cognizance taken by the court, 
• Infringement of copyright, 
• Availability of alternative remedy, and 
• Rectification of copyright.
• Ownership of copyright 

The ownership in copyright may vest in different persons under different circumstances.

Eastern Book Company v Navin J.Desai

The question involved was whether there is any copyright in the reporting of the judgment of a court. 

Reproduction of a judgment of the court is an exception to the infringement of the Copyright. The orders and judgments of the court are in the public domain, and anyone can publish them. Not only that being Government work, but no copyright also exists in these orders and judgments. No one can claim copyright in these judgments and orders of the court merely on the ground that he had first published them in his book. Changes consisting of elimination, changes of spelling, elimination or addition of quotations and corrections of typographical mistakes are trivial, and hence no copyright exists therein.

Ownership of copyright 

Godrej Soaps (P) Ltd v Dora Cosmetics Co 

Delhi High Court held that where the carton was designed for valuable consideration by a person in the course of his employment for and on behalf of the plaintiff and the defendant had led no evidence in his favour, the plaintiff is the assignee and the legal owner of copyright in the carton including the logo.

Jurisdictional aspect

The question of territorial jurisdiction of the court to deal with copyright infringement was considered by the courts on several occasions.

Sec 62: (1) Every suit or other civil proceeding arising under this Chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district court having jurisdiction.

(2) For the purpose of sub-section (1), and "district court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908, or any other law for the time being in force, include a district court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain. 

The court held that section 62 of the Copyright Act makes an obvious and significant departure from the norm that the choice of jurisdiction should primarily be governed by the convenience of the defendant. 

The legislature, in its wisdom, introduced this provision laying down absolutely opposite norm than the one set out in section 20 CPC. 

The purpose is to expose the transgressor with inconvenience rather than compelling the sufferer to chase after the former.

Caterpillar Inc v Kailash Nichani:

The plaintiff, a foreign company, was carrying on business in several places in India, including Delhi, through its Indian distributors and collaborators. The plaintiff claimed the relief of ad-interim injunction for preventing infringement of its copyright by the defendant, though the defendant was dealing in different goods. 

The Delhi High Court held that it was not necessary to show that the business is carried on by the plaintiff in Delhi should necessarily be in respect of footwear and articles of clothing as well. 

It is sufficient if the business was being carried on by the plaintiff in Delhi and further that there was an infringement of the plaintiff's copyright in respect of certain goods, which were being sold by the defendant in Delhi. 

Lachhman Das Behari Lal v Padam Trading Co:

The Delhi High Court observed that the plaintiff being a firm functioning at Delhi, the suit filed by it in the Delhi courts is maintainable and is not liable to be rejected under Order 7 Rule 11 of the CPC as prayed. 

The Court further observed that the plea regarding want of territorial jurisdiction is not covered by Order7 rule 11 of CPC. 

The court observed that even if it is held that this court has no territorial jurisdiction, the plaint cannot be rejected. At the most, it can be returned for presentation to the proper court.

Cognizance was taken by the court.

To prevent copyright infringement, timely cognizance taking by the appropriate court is absolutely essential. The taking of cognizance by the court depends upon the limitation period as mentioned in the Limitation Act, 1963 and Cr. P.C, 1973.

David Pon Pandian v State:

The Madras High Court observed: The Court can take cognizance of the offence if the charge sheet is filed within the period of limitation prescribed under Section 468 of the Cr. P.C and in computing the period of limitation, the date of commission of the offence is to be reckoned as the starting point. 

If the charge sheet is not filled so, the Court has no power to entertain the complaint.

State of Punjab v Sarwan Singh:

The Supreme Court Observed: "The object of Cr. P.C in putting a bar of limitation on the prosecution was clearly to prevent the parties from filing cases after a long time, as a result of which material evidence may disappear and also prevent abuse of the process of Court by filing vexatious and belated prosecutions long after the date of the offence. Moreover, the object, which the statute seeks to sub-serve, is clearly in consonance with the concept of fairness of trial as enshrined in Article 21 of the Constitution. It is, therefore, of utmost importance that any prosecution, whether by State or a private complainant, must abide by the letter of the law or take the risk of the prosecution failing on the ground of limitation."

Infringement of copyright

A copyright owner cannot enjoy his rights unless the infringement of the same is stringently dealt with by the Courts. 

The approach of the Indian Judiciary in this regard is very satisfactory.

Availability of alternative remedy

The copyright Act provides adequate safeguards and procedure. 

It cannot be said that a mere apprehension that a certain offence may take place, a writ can be filed seeking a direction that no such offence be allowed to take place.

First, authorities have to be asked to prevent it. The function of the police is to prevent piracy and unauthorized exhibition.

DESIGNS: THE DESIGN ACT, 2000

 DESIGNS:

THE DESIGN ACT 2000

Mini Cooper

The original Mini influenced a generation of car designers.

The Mini is a design classic that came about because of restrictions in fuel supply during the 1950s caused by the Suez crisis. Designer Alec Issigonis was tasked with designing a more frugal car than the large cars of the day, aiming to compete with increasingly popular German bubble cars like the original VW Beetle - itself a design classic. The original design became a true British icon, influencing a generation of car designers, and was revolutionary at the time. Its distinctively diminutive contours remain hugely popular today.

Coke’s Bottle

Coke's bottle needed to be distinctive and instantly recognisable - even in the dark.

Instantly recognisable, the Coca-Cola contour bottle is a masterpiece in industrial design that dates back to 1915 when the Coca-Cola Company asked its bottle suppliers to design a new bottle that would be distinctive and instantly recognisable - even in the dark. Designer Earl R. Dean took up the challenge, and following instructions issued by his boss, aimed to develop a design based on the ingredients of the drink. Unable to find any reference images for either the coca leaf or the Kola nut, Dean instead used an image of a cocoa pod from his encyclopedia as inspiration, leading to the iconic ribbed bottle shape we know and love today.

Vespa Scooter

The Vespa is a globally recognised icon of the Italian design aesthetic

The classic Vespa scooter design is associated heavily with the Italian design aesthetic, but it was actually heavily influenced by pre-World-War-II Cushman scooters made in the US and shipped to Italy by the Allies to act as field transport for paratroopers and marines during the war. It wasn't until Paggio involved aeronautical engineer Corradino D'Ascanio that the now-familiar scooter shape, missing the central supporting spar and allowing the rider to step through the bike to get on and off.  

Hasselblad Camera

Hasselblad's 500C Camera was its anchor product for four decades.

During World War II, the Swedish government, tasked Victor Hasselblad with designing a camera that mirrored a German aerial surveillance camera recovered from a downed plane. This camera was refined over the following years, eventually spawning the iconic 500C in the late 1950s. 

Such was the popularity of the camera; it became the anchor product for the Hasselblad company for the next four decades and was used by NASA during Apollo missions to the moon.  

Eames’ Lounge Chair

The classic chair design has continued to be popular since its 1950s launch

An unrivalled 1950s classic, Charles and Ray Eames' lounge chair and the ottoman combo was the couple's first attempt at high-end furniture. Fashioned from moulded plywood and leather, it was distinctive among luxury counterparts for being very comfortable as well as stylish. Constantly in production since its launch, the classic industrial design forms part of the permanent collection at MoMA in New York.

iPod/iPhone/iPad

 iOS devices: beautiful and truly game-changing

Three indisputably game-changing product lines by arguably the world's most iconic and celebrated industrial designer, Sir Jonathan Ive - all of which could easily have made a list on their own. It all started back in 2001 with the original iPod; the first iPhone was released in 2007; the iPad followed three years later, and finally the iPad Mini in 2012.

Mac

Apple's designs have consistently made other desktops look bland and boring

Despite squeezing all of its iOS devices into one entry, Cupertino's finest still made the list twice. Spearheading the reinvention of Apple in the late '90s, the all-in-one, brightly-coloured translucent computer made its rivals' beige boxes look crushingly ordinary. Since then, its evolution has seen it grow sleeker, slim, and minimalist, but no less iconic.

Maglites

Many Maglites have become collectables.

Introduced in 1979 with krypton or xenon bulbs and variable-width beams, many Maglites have become collectable items thanks to their limited-run special editions and custom paint schemes. They now use LED bulbs, and thanks to their power and durability are the flashlight of choice for many police forces. Until recently, this included the LAPD - until their double-use as a baton became controversial

Bergmönch Bike

This mountain bike can be transformed into a backpack for uphill climbs

Hurtling down steep, rocky terrain on a mountain bike is a powerful adrenaline rush, but reaching the summit in the first place can be a slow, painful slog. However, the ascent is the best bit for a mountaineer, while the downward leg is a killer on the knees. This lets you do both by transforming a bike into a backpack to let you carry it easily.

Points to ponder….

• A design appeals solely to the eye.
• The eye must be the eye of a customer. 
• Designs that are functional cannot be registered under The Design Act. 
• Law protects the creator of a new design so that he is not deprived of his reward if others apply his designs to their goods without his permission.

Designs Act , 2000

The Law promotes design activity so that consumers get a better–made product that looks attractive and is pleasing to the eyes. 

In the absence of an effective law, infringement may be rampant and designers will have almost no incentive to initiate and develop new designs.

Criteria for registration:

1. The design should be new or original, not previously published or used in any country before the date of application for registration. (Novelty & Originality)

2. The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Thus, designs of industrial plans, layouts and installations are not registerable under the Act.

3. The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act. (Of course, they have copyright protection!)

4. The features of the design in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state.

5. Any mode or principle of construction or operation or anything, which is in substance a mere mechanical device, would not be a registrable design. For instance, a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. 

However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect thereof is required to be inserted on its representation, provided there are other registrable features in the design.

6. The design should not include any trademark or property mark or artistic works.

Designs that cannot be registered under the Act

1. A design that is not new or original; or 

2. Design that has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or 

3. Design is not significantly distinguishable from known designs or a combination of known designs; or 

4. A Design that comprises or contains scandalous or obscene matter, shall not be registered.

Non Registrable Designs

An illustrative list of non-registrable designs is as under:

1. book jackets, calendars, certificates, forms and other documents.
2. dressmaking patterns, greeting cards, leaflets, maps and plan cards.
3. post cards, stamps and medals.
4. labels, tokens, cards and cartoons.
5. any principle or mode of construction of an article.
6. mere workshop alterations of components of an assembly.
7. mere change in size of article.
8. flags, emblems or signs of any country.
9. layout designs of integrated circuits.

Artistic work which is not the subject matter of registration

An artistic work, as defined under Section 2(c) of the Copyright Act, 1957 is not a subject matter for registration. The section2(c) reads as follows: "Artistic works" means: 

A painting, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality. 

An work of architecture and 

Any other work of artistic craftsmanship.

Provisions of Copyright Act as Applied to a Design

A creator of a design shall keep in mind the following provisions of the Copyright Act, 1957:

1. Copyright shall not subsist under the Copyright Act in any design which is registered under the Designs Act.
2. Copyright in any design, which is capable of being registered 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 license, by any other person.

Duration of the registration of a design 

Initially ten years from the date of registration, but in cases where the claim to priority has been allowed the duration is ten years from the priority date. 

This initial period of registration may be extended by a further period of 5 years on an application made in Form-3, by a fee of Rs. 2,000/- to the Controller before the expiry of the said initial period of Registration.

Classification of goods mentioned in the Third Schedule of Design Rules, 2001

In the third Schedule of Design Rules, 2001 the classification of goods has been mentioned. 

The classification is based on Locarno Agreement. Only one class number is to be mentioned in one particular application. It is mandatory under the Rules. 

This classification has been made on the basis of the Articles on which the design is applied.

STEPS TO FILE AN APPLICATION FOR INDUSTRIAL DESIGN 

Step 1 Finding out whether any registration already exists Registration number is known, Form No.-6 filed along with the prescribed fees of Rs. 500. If the representation of the article or the specimen of the article is filed Form No.-7 along with the prescribed fees of Rs. 1,000 is required. 

Step 2 Preparing a representation of the design It should be prepared on white A4 size paper of durable quality. 

Step 3 Identifying the class of design 32 classes and most of the classes are further divided into sub-classes. 

Step 4 Providing a statement of novelty:  A statement of novelty should be included in the representation of a design as per the Act in order to specify the claim.

Step 5 Including a disclaimer If the ornamental pattern on an article is likely to be confused with a trademark, suggests any mechanical action or contains words, letters, numerals, etc., a disclaimer should be included in the representation. 

Step 6 Claiming a priority date This is the date of filing of the application in any of such countries provided the application is made in India within six months. 

Step 7 Determining the fee to be paid Application for the registration of a design is Rs 1,000 and for renewal, it is Rs. 2, 000. 

Step 8 Ensuring all enclosures are attached File an application only after ensuring that all enclosures and fee in the required numbers are attached. Applications can be filed in either the Design Office in Kolkata or the branch offices of the Patent office in Delhi, Mumbai or Chennai.

Step 9 Complying with objections* (if any) If the Design Office seeks additional information or clarifications after preliminary examination, please ensure that these are provided promptly. 

Step 10 Providing full details While filing an application make sure that all contact details and addresses are clearly and legibly filled in.

Revocation….

Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:- 

(a) that the design has been previously registered in India; or 

(b) that it has been published in India or in any other country prior to the date of registration; or 

(c) that the design is not a new or original design; or 

(d) that the design is not registrable under this Act; or

(e) it is not a design as defined under clause (d) of section 2. 

Piracy of Registered Design

The following activities are considered to be infringement:

1. to apply for the purpose of sale the design or any fraudulent imitation of it to any article in any class of articles in which the design is registered;

2. to import for sale any article to which the design or fraudulent or obvious imitation of it, has been applied;

3. to publish or to expose for sale knowing that the design or any fraudulent or obvious imitation of it has been applied to it. 

Penalties

A registered proprietor can institute a suit for injunction as well as recovery of damages against any person engaged in piracy of the registered design. 

Such legal proceedings can be instituted from the date of registration and till the expiry of copyright. 

However, in the case of a reciprocity application, the registered proprietor can claim damages only from the actual date on which the design is registered in India.

If any person commits piracy of a registered design, he shall be liable to pay a sum not exceeding 25,000/- recoverable as a contract debt. However, the total sum recoverable in respect of any one design shall not exceed 50,000/-.

The suit for injunction/damages shall not be instituted in any Court below the Court of District Judge.

CASES

Ampro Food Products v. Ashok Biscuit Works, AIR 1973 AP 17

The appellant manufactured biscuits with AP embossed on them. The respondent also manufactured biscuits with identical design except that letters AB were embossed on them, in place of AP. The suit claimed an injunction bringing a charge of piracy of the design. Issuing a temporary injunction, the Court held that in such cases the defence cannot argue that the appellant’s registered design was not new or original if no steps had been taken earlier seeking cancellation of the registration of the design.

Hindustan Lever Ltd. V. Nirma Pvt. Ltd., AIR 1992 Bom 195

The plaintiff alleged infringement of its registered trademark, passing off, and infringement of the copyrights in original artistic work and sought a permanent injunction to restrain the defendant from using the impinged carton in relation to soaps or detergent powder.

The defence took the plea that the said label was, in fact, a design that could be registered under the Designs Act, and the fact that it was not so registered makes copyrights if any, under the copyright Act non-existent when the article to which the design has been applied was reproduced fifty times by industrial process. The Court ruled that a label to be put on a carton for the goods is not a design.

Assignment of Designs

For an assignment to be valid, it must be in writing and the agreement between the parties concerned has to be reduced to the form of an instrument embodying all the terms and conditions governing their rights and obligation, and the application for registration of title under such instrument is filed in the prescribed manner with the Controller within the stipulated time- that being within six months from the execution of the instrument.