What does copyrights subsists

The SC stated that there are 2 classes of literary works: primary or prior works: these are not based on existing sub matter
secondary or derivative works : based on existing sub matter
Rights of Copyrights holders

INTRODUCTION
"Copyright is an 'exclusive right' exercised over a work produced by the intellectual labor of
a person. The right which a person acquires in his literary or artistic work which is the result
of his intellectual labor is called his "copyright".
Copyright is not restricted to literary or artistic work. "Copyright" applies to different other
kinds of works also like dramatic, musical, cinematographic films, computer programs,
works of architecture and sound recordings, and any other work which is produced by the
intellectual labor of a person.
These works are the brainchild of the author and the author can be deemed to be the parent.
He would not, therefore, like anyone else to claim authorship in his work. The work created
by the author is the property of the author. He, as an owner, has the exclusive right to
reproduce, communicate, distribute, assign or alienate his work for economic or personal
gain.
He alone has the exclusive right to commercially exploit his work. He alone has the
right to reproduce his work in any manner, form, or medium. This lays the foundation for the
economic rights of the author.
The author may need the assistance of others in order to communicate the work in public.
Those who assist the author to communicate the work to the public spend time, energy, labor,
skill, and creativity therefore, their efforts need also be recognized and protected. These
communicators of the work of the author are referred to as the neighbors to the author and the
rights, which emerge, to them are called neighboring rights.
The term copyright appears to be singular but consists of three bundles of rights, these are
Exclusive Economic Rights, Moral rights, and Neighboring rights.

RIGHTS OF OWNER OF COPYRIGHT

Copyright is a bundle of rights consisting of Exclusive Economic Rights, Moral Rights &
Neighbouring Rights. The scheme of the Indian copyright act 1957 concerning different
kinds of rights is as follows:

A. ECONOMIC RIGHTS
Economic rights are those rights that help the author reap economic benefits or profits. As per
Section 14 of the Copyright Act, 1957, different rights are recognized for the works
considering their nature. The section provides that it is the exclusive right of the author to do
or authorize the doing of the acts provided thereunder. The important rights generally
recognized by all types of works include reproduction rights, right of distribution, and right to
communicate work to the public.

1. Right of reproduction
This is the most prominent right which is acquired after copyright protection. This right
authorizes the person having such copyright to make copies of the protected work in any
form. According to sec14(a)(i) of the Copyright Act, 1957, the Copyright owner in a literary,
dramatic, musical, artistic, cinematograph film and sound recording work has an exclusive
right to reproduce the work or authorize the reproduction of work in any material form. The
author of an artistic work has the exclusive right to reproduce the work and it includes its
conversion from two-dimensional to three-dimensional and vice-versa.
Reproduction also means making a copy in a different form, even if such copy is not
easily perceptible. Under the Act, the right to reproduction of literary work also includes
storing it in electronic form. This essentially means that storing into a computer or compact
disk will amount to the reproduction, even though the copy is in a different form when
compared with the original.

2. Right of Distribution
Apart from the right to reproduce the work, the author is also vested with the right to
distribute the work. It is the right to put copies of the copyrighted work into the commercial
market i.e. it relates to the control over dissemination of actual physical copies of the work.
The scope and extend of this right is not uniform i.e. it differs with the work. Once copies are
in circulation the right no longer exists i.e. the right gets exhausted.
According to the exhaustion principle, once the intellectual property rights holder has
sold a product to which its IPRs are attached, he cannot prohibit the subsequent resale of that
product, as his intellectual rights in that product are said to have been 'exhausted' by such
sale.

3. Right to Communicate Work to the Public:

The exclusive right to do this vest with the author, irrespective of the nature of the work.
Change in technology has brought change to the nature of communication and also to the
notion of 'public'. This has enabled basically three kinds of communication, such being public
performance, being carried on in the presence of an audience, transmission through cable
network and also wireless broad casting. And the right to communicate the work through all
these means vests exclusively with the author.

Garware Plastics and Polyester Ltd, and others vs M/s Telelink and others

The Bombay High Court through its judgment in this case tried to bring out the meaning of
the term communication to public. In this case the plaintiffs were producers of cinematograph
films and the defendants were cable operators who telecasted those films, for a prescribed
fee, without authorization of the plaintiff which was challenged by them as violating their
right under Section 14 of the Copyright Act, 1957. The question before the Court was
whether the act of the defendants would amount to communicating the plaintiff's work to the
public. The Court held that the defendant violated the plaintiff's right to communicate his
work to the public guaranteed under Section 14 of the Copyright Act.

4. Right to make cinematograph film or sound recording in respect of work

A literary, dramatic, or musical work may be reproduced in the form of a cinematograph film
or sound recording only with the license granted for the purpose by the owner of the
copyright in the work.

5. The right to create derivative works like sequels, spin-offs, translations, and
other forms of adaptation.
The derivative work right grants the copyright owner the ability to control the transformation
of their works into new works. Transformations can include annotating, editing, translating,
modifying or making other types of changes to the work. Some examples of activities that
implicate this right include translating a book, transforming a novel or screenplay into a
motion picture, or creating an updated version of an existing computer program.

B. MORAL RIGHTS
Moral rights are the English translation of the French phrase Droit moral. They are in
addition to economic rights, and they are inalienable. Moral rights safeguard personal and
reputational rights, which permit authors to defend both the integrity of their works and the
use of their names.
In addition to the protection of economic rights, the Copyright Act also protects the moral
rights of the author. Moral rights flow from the fact that a literary or artistic work reflects the
personality of the creator, just as much the economic rights reflect the author's need to keep
body and soul together.

Section 57 of the Act says that independent 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 special right:
● To claim authorship of the work; and
● To restrain or claim damages in respect of any distortion, mutilation, modification or
other act about 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 honor
or reputation.

The rationale behind moral rights was also explained in the case of Amar Nath Sehgal vs.
Union of India. In which the Delhi High Court held that 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. The 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.

The Court stated that the modification should not be so serious that the modified form of the
work looks quite different from the original. Moral rights remain with the author even after
transfer. In the case of Mannu Bhandari v. Kala Vikash Pictures Pvt. Ltd. and Anr, The
Delhi High Court has held that:
These rights (moral rights) are independent of the author's copyright and the remedies open to
the author under Section 55. In other words, Section 57 confers additional rights on the
author of a literary work as compared to the owner of general copyright. The special
protection of the intellectual property is emphasized by the fact that the remedies of a
restraint order or damages can be claimed: even after the assignment either wholly or
partially of the said copyright.

Thus even though an author may sell his economic rights to a publisher for publication, the
moral rights shall remain with him and cannot be taken away from him.
 - Can Moral rights be waived?
Previously moral rights were treated like fundamental rights to an individual as they are not
merely for the benefit of the individual but as a matter of public policy, for the benefit of the
general public.

But the single judge bench of the Delhi High Court in the case of Sartaj Singh Pannu vs
Gurbani Media Pvt Ltd & Anr in relation to whether the Director can also waive his moral
right if any to be acknowledged as the Director of a film held that:

The Court is not prepared to go as far as to deny the right of a Director to waive his
right to be credited as such if for any reason he does not want his name to be associated with
the film. As long as the waiver is voluntary, it cannot be said to be opposed to public policy.
Thus after this decision, the moral rights can be waived by the author if he wants to.

C. NEIGHBORING RIGHTS

1. Broadcasting Rights in India

The broadcasting organization is conferred with Broadcasting Reproduction Rights
wherein the organization is conferred with a series of rights with respect to the
broadcast made namely,
a. reproducing the broadcast;
b. causing the broadcast to be heard or seen by the public on payment of any
charges;
c. making any sound recording or visual recording of the broadcast;
d. making any reproduction or such sound recording or visual recording where
the initial recording was unauthorized;
e. selling or hiring or offering for sale or hire to the public any such sound or
visual recording.
Following the operation of Section 37, the performance of any act under (a) to (e) shall
require a license of the broadcasting organization, or else the act shall be treated to be a
violation of copyright. However exceptions to the same have been provided in Section 39 of
the Act.
These exceptions can be broadly categorized as;(a) for private use, (b) for purposes of
bonafide training or research,(c) for reporting of current events and(d) general exceptions as
provided under Section 52 of the Act

2. The rights of performing artists in their performances of literary and artistic

works
The rights of performing artists in their performances of literary and artistic works are in
general covered by the concept of related rights. If the rights provided by copyright apply to
authors, related rights, also known as neighboring rights concern other categories of owners
of rights, other than the author.
The performances of actors, singers, musicians, and dancers are an integral part of the
creative process in presentations to the public. Since the very first performance recordings, in
sound and images, it has been accepted that performers should have some rights over those
recordings and a share in the proceeds from their commercial exploitation. The interest of
every performing artist is not limited to purely monetary compensation for the work he or she
has undertaken.
Copyright infringement and remedies

The right to copyright is an exclusive right of the owner of the copyright. Person other than the owner of the
copyright cannot do anything with respect to the copyright except with the consent of the owner of the
copyright.
The owner of the copyright may grant a license with respect to any interest in the copyright in the favour of
any other person. Such license may also be granted by the Registrar of the Copyrights in certain
circumstances. The licensee may do anything with respect to the interest in the copyright regarding which
license has been granted to him.

Infringement of copyright is a trespass on a private domain owned and occupied by the owner of the
copyright. Therefore, it is protected by law Infringement of copyright. Copyright infringement refers to the
unauthorized use of someone’s copyrighted work. Thus, it is the use of someone’s copyrighted work without
permission thereby infringing certain rights of the copyright holder, such as the right to reproduce, distribute,
display or perform the protected work.

K I. George v. C. Cheriyan
In this case the Kerala High Court observed as follows:
"A copyright in a work shall be deemed to be infringed when any person does anything, the exclusive right to
do which by the Act is conferred upon the owner of the copyright."

R G. Anand v. Delux Films,

In this case the Supreme Court held that "it is not necessary that the alleged infringement should be an exact
or verbatim copy of the original but its resemblance with the original in a large measure is sufficient to
indicate that it is a copy."

An infringement is not confined to literal and exact repetition or reproduction; it includes also the various
modes in which the matter of any work may be adopted, imitated, transferred, or reproduced with more or less
colourable alterations to disguise the piracy.

Under section 51 of the copyrights act of 1957, a copyright in the work is deemed to be infringed-

when a person, without a licence from the owner of the copyright, or the registrar of copyrights, or in
contravention of the conditions of a license so granted or of any condition imposed by a competent
authority –
a) does anything, the exclusive right to do, which is conferred upon the owner of the copyright,
or,

permits for profit any place to be used for the communication of the work to the public.
Where such communication constitutes an infringement of the copyright in the work unless he
was not aware and had no reasonable grounds for believing that such communication to the
world would be infringement of copyright or

b) when any person –

Makes for sale or hire, or sales or lets for hire, or by the way of trade displays are offers for
sale or hire any infringing copies of the work or next, or

distribute any infringing copies of the work either search for the purpose of trade, or to such
an extent to affect prejudicially the owner of the copyright, or

Exhibit in public, any infringing copies of the work by the way of trade.
1. Anton Pillar Orders
The Anton pillar order gets its name from the holding in Anton Pillar AG V. Manufacturing
Processes. In certain cases the court may, on an application by the plaintiff, pass an ex-parte order
requiring the defendant to allow the plaintiff accompanied by attorney to enter his premises and
make an inspection of relevant documents and articles and take copies thereof or remove them for
safe custody. Such an order is called Anton Pillar Order.
The following elements are present in an Anton Pillar Order –
First, an injunction restraining the defendant from destroying or infringing goods.
Second, an order permitting the plaintiff’s lawyer to search the defendant’s premises and take goods
in their safe custody.
Third, an order that the defendant be directed to disclose the names and addresses of suppliers and
consumers.
2. Mareva Injunction
The Mareva injunction comes into play when the court believes that the defendant is trying to delay
or obstruct the execution of any decree being passed against him. The court has the power to direct
him to place whole or any part of his property under the court’s disposal as may be sufficient to
satisfy the decree. This is provided in Order XXXVIII, Rule 5 of The Civil Procedure Code, 1908.

CRIMINAL REMEDIES FOR INFRINGEMENT OF COPYRIGHT [SECTION 63 TO

70]

Sections 63 to 70 under Chapter 13 of the Act provide for the offences relating to copyright
infringement. The principle penal provisions under the chapter are as follows:

Section 63: It states that when a person knowingly infringes or abets copyrighted work or any
of the neighbouring rights under the Act (such as performer rights, moral rights and broadcast
reproduction rights) he/she/they can be imprisoned for a minimum of six months and a
maximum term of three years and can be fined between Rs. 50,000 to Rs. 3,00,000.

Section 63A provides for an enhanced penalty for second or subsequent convictions with
increased imprisonment from one to three years and a fine ranging from Rs.1,00,000 to Rs.
2,00,000. However, if such infringement is not made for the purposes of gain in trade and
business, the courts can reduce the sentence to less than one year and a fine of less than
Rs.1,00,000 by providing adequate and special reasons for the same.

It is important to note that criminal proceedings in such instances do not entitle the copyright
owner to get an injunction, that is, “if a convict infringer repeats the infringement the owner
will have to initiate a fresh proceeding. So, in such cases, it is advisable to initiate criminal as
well as civil proceedings simultaneously if the stakes are very high.”

Section 64(1) states that any police officer not below the rank of sub-inspector may exercise
the power to seize infringing copies of work without a warrant. The offence under this section
is considered a cognizable and non-bailable offence.

Section 64(2) provides safeguards to the person against whom such seizure has taken place to
make an application to the Magistrate within 15 days of such seizure for restoring the seized
copies. This provision does not facilitate or permit infringement of any manner by the person
who has been accused to have committed infringement.

Section 65A states that circumvent any of the effective protective technological measures
that can be applied to any of the rights conferred under the Act. Pertaining to copyright,
performance rights are punishable with imprisonment of a maximum of two years and
payment of a fine.

Section 65 B states that removal or alteration of “rights management information” without

authorization is punishable with imprisonment of a maximum of two years and payment of a
fine. Such removal or alteration includes knowingly distributing, broadcasting or
communicating to the public copies of work without authority.

Sections 65A and 65B were inserted via the Copyright (Amendment) Act, 2012 can only be
punishable by applying criminal remedies. These provisions have purposely been drafted in a
very preliminary fashion “and a lot of scope has been left for judicial creativity so that it can
be adapted to Indian conditions.”

Girish Gandhi v. Union of India (1997)

In this case the court upheld the constitutionality of the section by reading the word
“satisfaction” to mean that “police officer will not act until and unless he has got some type
of information on which information he is satisfied and his satisfaction shall be objective”.
Compulsory licensing
A copyright license gives a person or entity (“licensee") the authorization to use a work from the
copyright owner, usually in exchange for payment. Copyright licenses may be exclusive or
nonexclusive, and the rights that come with them vary according to the specifics of each license.
A copyright owner may grant a license and transfer some or all of his rights to others to
exploit his work for monetary benefits, in exchange for a consideration. A license is different from
an assignment as the licensee gets certain rights subject to the conditions specified in the license
agreement but the ownership of those rights is not vested with him, whereas in the case of an
assignment, the assignee becomes the owner of the interest assigned to him. A license may be
exclusive or non-exclusive.
One of the most common copyright license situations is when an author licenses their publisher to
publish, distribute, and sell their book. In return, the author receives compensation and/or royalties.
Sec. 30 to sec. 32B of the Copyright Act. 1957. provide for the grant of licence as follows:
1. Voluntary licence by the owner of the copyright. (Sec. 30)
2. Statutory Licence. (Secs. 31C, 31D).
3. Compulsory licence by the Registrar of Copyrights on the recommendation of the Copyright
Board. (Secs. 31, 31A).
4. Licence by the Copyright Board. (Secs, 32, 32A).

VOLUNTARY LICENCE BY THE OWNER OF THE COPYRIGHT (SEC. 30)

According to section 30 of the Copyright Act 1957, the owner of the copyright in a work may grant
any interest in his copyright to any person by license in writing, which is to be signed by him or by
his duly authorized agent.
A license can be granted not only in existing work but also in respect of future work, in this
situation assignment shall come into force when such future work comes into existence. Where a
licensee of the copyright in a future work dies before such work comes into existence, his legal
representatives shall be entitled to the benefit of the license if there is no provision to contrary.
The mode of license is like an assignment deed, with necessary adaptations and modifications in
section 19 (section 30A). Therefore, like an assignment, a license deed in relation to work should
comprise of following particulars:

1. Duration of license
2. The rights which have been licensed
3. Territorial extent of the licensed
 4. The quantum of royalty payable
5. Terms regarding revision
6. Extension and termination

Voluntary licenses can be:

● Exclusive - The term exclusive license has been defined in Section 2(j) as a license that
confers on the licensee and persons authorized by him, to the exclusion of all other persons,
any right comprised in the copyrighted work.
● Non-exclusive – It does not confer the right of exclusion. It is a mere grant of authority to do
a particular thing that otherwise would have constituted an infringement. When the owner
grants an exclusive right, he denudes himself of all rights and retains no claim on the
economic rights so transferred.
● Co-exclusive – Here the licensor grants a license to more than one licensee but agrees that it
will only grant licenses to a limited group of other licensees.
● Sole license – Where only the licensor and the licensee can use it to the exclusion of any
other third party.
● Implied license – The author impliedly allows or permits the use of his work. For example,
he had knowledge that someone is using his work but he did not take any action.

COMPULSORY LICENCE BY THE REGISTRAR OF COPYRIGHTS ON THE

RECOMMENDATION OF COPYRIGHT BOARD. [SEC. 31, 31A, 31B]
The compulsory licenses are granted by the Registrar of Copyrights on the recommendation of the
Copyright Board in the following circumstances:
1. License in published works withheld from public (Sec. 31);
2. Licence in unpublished work (Sec. 31A).
3. Licence for benefit of disabled (Sec. 31B).

1. Compulsory license in published works withheld from public [Sec. 31]

Sec. 31 provides for the compulsory license in published or performed work for their re-publication
or re-communication. Sometimes an owner of a copyright in the published or performed work may
refuse to republish or re-communicate to the public the work without reasonable ground during the
term of copyright.
In such cases, a complaint may be made to the Copyright Board. The Copyright Board may hear the
owner of the copyright and may also hold a necessary inquiry. After hearing and holding necessary
inquiry, the Copyright Board may direct the Registrar of Copyrights to grant a licence to such person
or persons who in the opinion of the Copyright Board, is or are qualified to republish or
recommunicate works that have been withheld from the public.

Super Cassette Industries Ltd v. Entertainment Network (India) Ltd, Mumbai, the respondents
who were running a radio FM channel under the brand name Radio Mirchi, made several attempts to
obtain a license from Super Cassette Industries ltd (SCIL) to play its sound recordings but failed to
get it. The Copyright Board ultimately issued them a compulsory license against which an appeal has
been filed in the Delhi High Court.
After contemplating section 31, Court observed that in case compulsory license had to be
granted to all, then there was no need for any enquiry as envisaged by section 31. The court also
opined that once the copyright was in public, the refusal has to be made on reasonable and valid
grounds. While making an order under section 31, the Board had to maintain a delicate balance
between the private rights and the copyright vis-a-vis- public interest.

2. License in unpublished work (Sec. 31A)

● An author of an unpublished or published work, who is a citizen of India at the time
of making the work, may die or become untraceable before his work is published. In
such case, any person may apply to the Copyright Board for a licence to publish such
unpublished or published work or a translation thereof in any language.
● But the applicant has to advertise his proposal in a newspaper in the English language
having circulation in the major part of the country and where the application is for the
publication of a translation in any language, also in one issue of any daily newspaper
in that language before he makes an application to the Copyright Board.
● The Copyright Board upon receiving the application along with the copy of the
advertisement holds the prescribed inquiry. After such inquiry, the Copyright Board
may direct the Registrar to grant the applicant a licence to publish that unpublished
Indian work or a translation thereof in the language mentioned in the application.
● But the applicant who has been granted a licence may be directed by the Registrar of
Copyrights to deposit the amount of royalty in the public account of India or in any
other account specified by the Copyright Board. Such provision has been made so as
 to enable the owner of the copyright or, as the case may be, his heirs, executors or
legal representatives to claim such royalty at any time.

3. Compulsory licence for benefit of disabled (Sec. 31B)

● Any person working for the benefit of persons with disability on a profit basis or for
business may apply to the Copyright Board for a compulsory licence to publish any
work in which copyright subsists for the benefit of such persons, in such form and
manner and accompanied by such fee as may be prescribed and the Copyright Board
shall dispose of such application as expeditiously as possible and endeavor shall be
made to dispose of such application within a period of two months from the date of
receipt of the application.
● The Copyright Board may, on receipt of an application under sub-section (1), inquire
or direct such inquiry as it considers necessary to establish the credentials of the
applicant and satisfy itself that the application has been made in good faith.
● If the Copyright Board is satisfied that a compulsory licence needs to be issued to
make the work available to the disabled, after giving to the owners of rights in the
work a reasonable opportunity of being heard and after holding such inquiry as it may
deem necessary, it may direct the Registrar of Copyrights to grant to the applicant
such a license to publish the work.
● Every compulsory license issued under this section shall specify the means and format
of publication, the period during which the compulsory license may be exercised, and,
in the case of issue of copies, the number of copies that may be issued including the
rate or royalty.
Provided that where the Copyright Board has issued such a compulsory
licence, it may, on a further application and after giving a reasonable opportunity to
the owners of rights, extend the period of such compulsory licence and allow the issue
of more copies as it may deem fit.
STATUTORY LICENCE [SEC. 31C, 31D]
i. Statutory Licence for cover version (Sec. 31C)
ii. Statutory Licence for broadcasting of literacy and musical work and sound recording (Sec.
31D).

i. Statutory Licence for cover version (Sec. 31C)

"Cover version" means a sound recording made in accordance with section 31-C of the Copyright
Act, 1957. Sec. 31-C has been added to the Copyright Act, 1957 by the Copyright (Amendment) Act,
2012.

● Section 31-C permits the making of a cover version being a sound recording of any literary,
dramatic, or musical work. This sound recording is made with the licence or consent of the
owner of the right in the earlier sound recording.
● The person making the cover version is required to give prior notice to the owner of the
copyright in such works and to the Registrar of Copyright at least 15 days in advance of
making the cover version as well as the royalties in respect of all copies to be made by him.
● The royalties are paid at the rates fixed by the Copyright Board in this behalf. Sec. 31(c)(4)
provides
● that "one royalty in respect of such recording shall be paid for a minimum of fifty thousand
copies of each work during each calendar year in which copies of it are made.
● The person making such cover version has to maintain registers and books of account with
full details of existing stock. He has also to allow the owner of rights to inspect all records
and books of account relating to such sound recording.

ii. Statutory Licence for broadcasting of literary and musical works and sound recording
(Sec. 31D)
A literary or musical work and a sound recording that has already been published may be
communicated to the public by way of a broadcast or by way of performance by any broadcasting
organization under section 31D.
● According to Sec. 31D, the broadcasting organization has to give prior notice of its intention
to broadcast such work to the owner of rights in each work. In this notice, the broadcasting
organization states the duration, territorial coverage, and royalties to be paid to the owners of
the rights in each work.
 ● However, the Copyright Board shall fix different rates of royalty for radio broadcasting and
television broadcasting.
● The Copyright Board may also require the broadcasting organization to pay such royalty in
advance to the owners of rights.
● The names of the authors and principal performers of the work are also to be announced with
such broadcast.
● No fresh alteration to any literary or musical work, which is not technically necessary for the
purpose of broadcasting, other than shortening the work for the convenience of broadcast,
shall be made without the consent of the owners of rights.
● The broadcasting organization shall
○ 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 authorized agent or representative to inspect all
records and books of account relating to such broadcast, in such manner as may be
prescribed.

LICENCE BY THE COPYRIGHT BOARD. (Secs, 32, 32A).

i. Licence to produce and publish translations. (Sec. 32)
ii. Licence to reproduce and publish works for certain purposes. (Sec. 32A)

i. Licence to produce and publish translations (Sec. 32)

● Section 32 of the Copyright Act provides that after the expiry of a period of seven
years from the first publication of a literary or dramatic work, any person may apply
to the Copyright Board for a license to produce and publish a translation of work.
● Where the work is not Indian work, any person may apply to the Board for a license
to produce and publish a translation in printed or analogous form of reproduction of a
literary or dramatic work in any language in general use in India after a period of
three years from the first publication of such work, if such translation is required for
the purpose of teaching, scholarship or research.
● But where translation is in a language not in general use in any developed country,
such application may be made after the period of one year from such publication.

ii. Licence to reproduce and publish works for certain purposes. (Sec. 32A)
According to this section, any person may apply to the Copyright Board for a license to reproduce
and publish any literary, scientific, or artistic work after the expiration of the relevant period from
the date of the first publication of an edition of such work,
● if the copies of such edition are not made available in India, or
● such copies have not been put on sale in India for a period of six months to the general public
or
● in connection with systematically instructional activities at a price reasonably related to that
normally charged in India for comparable works by the owner of the right of reproduction or
by any person authorized by him on this behalf.

The period prescribed are:

● Seven years for work related to fiction, poetry, drama, music, or art
● Three years for works related to natural science, physical science mathematics or technology
● Five years for any other work

An application for a licence to reproduce and publish work under sec. 32A may be made by any
person to the Copyright Board. Such application states the proposed retail price of a copy of the work
to be produced. An application is made in the prescribed form and is submitted along with such fee
as may be prescribed.

Upon such application, the Copyright Board after holding prescribed inquiry may grant licence to
reproduce the work with the condition that
● the applicant shall pay to the owner of the copyright in the work royalties in respect of copies
of the reproduction of the work sold to the public, calculated at such rate as the Copyright
Board, in the circumstances of each case, determine in the prescribed manner;
● a licence granted under sec. 32A shall not extend to the export of copies of the reproduction
of the work outside India and every copy of such reproduction shall contain a notice that the
copy is available for distribution only in India.
ASSIGNMENT OF COPYRIGHT

1. What is Copyright? Explain in brief Assignment and Licensing of Copyright.

2. Explain the modes of Assignment of Copyright under Copyright Law.
3. What are the ways in which the Copyright work is assignable? *

INTRODUCTION
Assignment means; a task or piece of work assigned to someone as part of a job or course of study. It
can be said that an assignment is a task given by someone to another to perform a part of a job. It can
also be said that it is an act of transfer of rights or property from one person to other. A transfer of
rights in real property or Personal Property to another gives the recipient, the transferee, the rights
that the owner or holder of the property, the transferor had prior to the transfer.

An assignment serves two purposes:

● as for as the assignee is concerned, it confers on him the right of exploitation of work for a
specified period in the specified territory;
● for the assignor, it confers on him right to receive royalty on the work assigned.

The owner may assign copyright either wholly or partially for the whole or any part of such
Copyright to any person. The Copyright of future work can also be assigned, on the condition that
assignment shall be effective only when the work comes into existence. The assignment can be a
general assignment or subject to some conditions.

Assignor- The owner of the copyright who assigns the copyright to the other person is termed as an
assignor.
Assignee- The "assignee" is the other person to whom the owner of the copyright assigns any right
comprised in the copyright.

ASSIGNMENT OF COPYRIGHT (SECTION 18)

According to section 18(1), the owner of the copyright in an existing work may assign the copyright
● either wholly or partially to any person and
 ● either generally or subject to limitation and
● either for the whole of the copyright or any part of it.

It also states that Copyright may be assigned by the prospective owner of the copyright in a future
work also. However, with respect to future work, the assignment takes effect only when the work
comes into existence. In this regard, the “assignee” includes the legal representatives of the assignee,
if he dies before the work comes into existence.
Proviso: The creator shall not assign or waive the right to receive royalties to be shared on an equal
basis with the assignee of copyright, subject to certain conditions.
18(2) mentions that Where the assignee of copyright becomes entitled to any right comprised in the
copyright, he shall be treated as the owner of the copyright in respect of those rights. The assignor
shall also be treated as the owner of the copyright with respect to unassigned rights.

Video Master v. Nishi Production,

In this case the Bombay High Court considered the issue whether assignment of video rights would
include the right of satellite broadcast as well. The Court agreed with the contentions of defendant
that there were different modes of communication to the public such as terrestrial television
broadcasting (Doordarshan), satellite broadcasting, and video TV. The owner of the film had
separate copyright in all those modes, and he could assign them to different persons. Thus, the
satellite broadcast copyright of film was a separate right of the owner of the film and the video
copyright assigned to the plaintiff would not include this.

MODE OF ASSIGNMENTS (SECTION 19)

1. No assignment of the copyright in any work shall be valid unless it is in writing and signed
by the assignor or by his duly authorized agent.

2. The assignment of copyright in any work shall identify such work, and shall specify the
rights assigned and the duration and territorial extent of such assignment.

3. The assignment of copyright in any work 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.
 4. Where the assignee fails to exercise his rights within one year from the date of assignment,
the assignment in respect of such right shall be deemed to have lapsed, unless otherwise
specified in the assignment deed.

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

6. If the territorial extent of the assignment of the rights is not specified, it shall be presumed to
extend within India.

7. Nothing in sub-section (2), (3), (4), (5), (6) shall be applicable to assignments made before
the coming into force of the Copyright (Amendment) Act, 1994.

8. If the assignment is contrary to the terms and conditions of the rights already assigned to a
copyright society to which the creator is a member, it shall be deemed void.

9. The creator is entitled to subsequent royalties in the course of future exploitation of a

cinematographic film, which includes his work, other than by way of exhibitions in a cinema
hall. For example, the creator will be entitled to subsequent royalties for satellite right, home
videos, internet rights, etc. A similar clause has been added for the case of sound recording
also.

REVOCATION OF ASSIGNMENT (SECTION 19A)

According to sec. 19A (1), the assignment of a copyright may be revoked by the Copyright Board,
because the assignee may fail to make sufficient exercise of the right assigned to him. If such failure
is not because of any act or omission of the assignor, then the assignor may make a complaint to the
Copyright Board under sub-sec. (i) of sec. 19A.
The Copyright Board on the receipt of the complaint from the assignor and after holding such
inquiry as it may deem fit necessary, revoke such assignment.
According to sub-sec. (2) of sec. 19A, no order of revocation shall be made within a period of five
years from the date of such assignment.

According to sec. 19A (3), Any such final order must be passed within a period of six months from
the date of receipt of the complaint. Delay in compliance shall oblige the Board to record the reasons
thereof.

Deshmukh & Co. (Publishers) Pvt. Ltd. Vs. Avinash Vishnu Khandekar & Others;
In this case, the Bombay High Court observed that the assignment of copyright is valid only if it is in
writing and signed by the assignor or his duly authorized agent. There is no prescribed form of
assignment. The assignee to whom certain rights have been assigned by the assignor can be
restrained by the court having competent jurisdiction.

Radio Today Broadcasting Ltd. v. Indian Performing Rights Society

The Calcutta High Court in this case held that the lyricist, music composer, etc., and the members of
IPR Society are legitimately entitled to demand royalty from the plaintiff radio station. Although
they have taken valuable consideration from the producer of the song and therefore the ownership of
the copyright over the lyrics for the purpose of the preparation of the song is concerned has been
acquired by the producer of the song under section 17 of the Copyright Act, 1957, but that is only for
the purpose that nobody can make unauthorized use of the song without the permission of the
producer of the song. But so far as the copyright over the lyrics is concerned, the lyricist continues to
be the owner of the copyright over the lyrics if he has not assigned the copyright over the lyrics
under by way of assignment under sections 18 and 19 of the Copyright Act, 1957.
6m
copyright board
copyright societies
copyrights and computer software

UNIT 2

Powers of the state biodiversity board

24. Power of State Biodiversity Board to restrict certain activities violating the objectives of
conservation, etc.—(1) Any citizen of India or a body corporate, organisation or association registered
in India intending to undertake any activity referred to in section 7 shall give prior intimation in such
form as may be prescribed by the State Government to the State Biodiversity Board.

(2) On receipt of an intimation under sub-section (1), the State Biodiversity Board may, in
consultation with the local bodies concerned and after making such enquires as it conservation, may
deem fit, by order, prohibit or restrict any such activity if it is of opinion that such activity is
detrimental or contrary to the objectives of conservation and sustainable use of biodiversity or
equitable sharing of benefits arising out of such activity:

Provided that no such order shall be made without giving an opportunity of being heard to the person
affected.

(3) Any information given in the form referred to in sub-section (1) for prior intimation shall be kept
confidential and shall not be disclosed, either intentionally or unintentionally, to any person not
concerned thereto.

UNIT 3

PROTECTION OF PLANT VARITIES AND FARMERS RIGHT AUTHORITY

1. Establishment of the authority

The Central Government using the power bestowed upon it under Section 3 of the Act has
established the Protection of Plant Varieties and Farmers' Rights Authority (hereinafter, 'the
authority'). The Authority is cardinal to the execution of the intention of this legislation as
the Authority is central to the regulation and all processes under the Act.

 Nature of authority: Section 3(2)

The nature allotted to the authority is that of a 'body corporate' which gives it the right to
sue and to be sued. It has perpetual succession

 Composition of Authority: Section 3(4)

 Chairperson and 15 (ex-officio and non-ex-officio) members form the composition of
this Authority.

 Chairperson
The Chairperson to be appointed by the Central Government shall be a person of
outstanding caliber and eminence, with long practical experience to the satisfaction of
that Government especially in the field of plant varietal research or agricultural
development. (Section 3(5))
The Chairperson acts as the CEO of the Authority (Section 7)

2. Meetings of the authority: (Section 4)

 The Authority shall meet at such time and place and shall observe such rules of
procedure in regard to the transaction of business at its meetings
 It should maintain the quorum at its meetings as prescribed including the standing
committee.
 The Chairperson of the Authority shall preside at the meetings of the Authority.
In the absence of chairperson, any member of the Authority chosen by the
members present shall preside at the meeting.
 All questions which come before any meeting of the Authority shall be decided by a
majority of the votes of the members of the Authority present
In the event of equality of votes, the Chairperson of the Authority or in his
absence, the person presiding shall have and exercise a second or casting vote.
 Member who is directly, indirectly or personally, concerned or interested in a matter to
be decided at the meeting should disclose the nature of his concern of interest and after
such disclosure, the member, concerned or interested, shall not attend that meeting.
 No act or proceeding of the Authority shall be invalid merely by reason of:
a. any vacancy in, or any defect in the constitution of, the Authority; or
b. any defect in the appointment of a person acting as the Chairperson or a member of
the Authority; or
c. any irregularity in the procedure of the Authority not affecting the merits of the
case.
3. Powers of the authority

i. Power to constitute Standing committee: Section 3(7)

The Authority has appointment power of Standing committee comprising of 5
members among which one should be the member of the farmers’ organization.

ii. Power to constitute other committee (Section 5)

The Authority may appoint such committees as may be necessary for the efficient
discharge of its duties and performance of its functions under this Act.

iii. Power to appoint certain officers and other employees of Authority:

Section 6 provides the authority the power to appoint such officers and other
employees as may be necessary for the efficient performance of its functions and the
method of appointment, the salary and allowances and other conditions of service of such
other officers and employees of the Authority shall be such as may be prescribed.

iv. Power to delegate

Section 10 provides the authority the power to delegate some powers and
functions, by general or special order in writing, to the Chairperson, any member or
officer of the Authority subject to such conditions or limitations, if any, as may be
specified in the order, such of its powers and functions (except the power to make
regulations under section 95) under this Act as it may deem necessary.

v. Power of authority (Section 11)

Authority and Registrars also have broad powers akin to civil court and has power
to make reasonable orders to the costs. Orders of the Authority and the Registrar shall
have the status of decree of civil court while execution.

4. General functions of Authority

Section 8 of the act provides the general functions of the authority. It shall be the duty of
the Authority to promote and encourage for the development of new varieties of plants
and to protect the rights of the farmers and breeders. This is done by the following ways:
a. General Functions of the Authority
 b. Registration of new plant varieties, essentially derived varieties (EDV), extant
varieties;
c. Developing DUS (Distinctiveness, Uniformity and Stability) test guidelines
for new plant species;
d. Developing characterization and documentation of varieties registered;
e. Compulsory cataloging facilities for all variety of plants;
f. Documentation, indexing and cataloguing of farmers' varieties;
g. Recognizing and rewarding farmers, community of farmers, particularly tribal
and rural community engaged in conservation and improvement;
h. Preservation of plant genetic resources of economic plants and their wild
relatives;
i. Maintenance of the National Register of Plant Varieties and
j. Maintenance of National Gene Bank.

5. Authentication of orders, etc., of Authority

Section 9 of the act states that all orders and decisions of the Authority shall be
authenticated by the signature of the Chairperson or any other member authorised by the
Authority in this behalf.
Certainly, here's the text aligned and corrected for grammatical errors:

Farmer’s Rights

The PPV&FR Act aims to provide equal recognition and protection to plant breeders and farmers. It
acknowledges farmers’ critical contributions to conserving, improving, and providing Plant Genetic
Resources (PGR) for the development of new plant varieties. The Act acknowledges that farmers play
multiple roles in cultivating, conserving, developing, and selecting varieties. Regarding variety
development and selection, the Act recognizes the value farmers add to wild species or traditional
varieties/landraces through the selection and identification of economic traits. Therefore, farmers’
rights include user, conservers, and breeder roles.

Section 2(k) - “farmer” means any person who—

(i) cultivates crops by cultivating the land himself; or

(ii) cultivates crops by directly supervising the cultivation of land through any other person; or

(iii) conserves and preserves, severally or jointly, with any person any wild species or traditional
varieties or adds value to such wild species or traditional varieties through selection and identification
of their useful properties;

Section 2(l) - “farmers’ variety” means a variety which—

(i) has been traditionally cultivated and evolved by the farmers in their fields; or

(ii) is a wild relative or land race of a variety about which the farmers possess common knowledge.

Chapter VI - Farmer’s Rights

Section 39. Farmers’ rights.

(1) Notwithstanding anything contained in this Act,—

(i) a farmer who has bred or developed a new variety shall be entitled to registration and other
protection in the same manner as a breeder of a variety under this Act;
(ii) the farmers’ variety shall be entitled to registration if the application contains declarations as
specified in clause (h) of sub-section (1) of section 18;

(iii) a farmer who is engaged in the conservation of genetic resources of land races and wild relatives
of economic plants and their improvement through selection and preservation shall be entitled in the
prescribed manner to recognition and reward from the Gene Fund:

Provided that the material so selected and preserved has been used as donors of genes in varieties
registrable under this Act;

(iv) a farmer shall be deemed entitled to save, use, sow, resow, exchange, share, or sell his farm
produce, including seed of a variety protected under this Act, in the same manner as he was entitled
before the coming into force of this Act:

Provided that the farmer shall not be entitled to sell branded seed of a variety protected under this Act.

Explanation: For the purpose of clause (iv), “branded seed” means any seed put in a package or any
other container and labeled in a manner indicating that such seed is of a variety protected under this
Act.

(2) Where any propagating material of a variety registered under this Act has been sold to a farmer or
a group of farmers or any organization of farmers, the breeder of such variety shall disclose to the
farmer or the group of farmers or the organization of farmers, as the case may be, the expected
performance under given conditions, and if such propagating material fails to provide such
performance under such given conditions, the farmer or the group of farmers or the organization of
farmers, as the case may be, may claim compensation in the prescribed manner before the Authority.
The Authority, after giving notice to the breeder of the variety and after providing him an opportunity
to file opposition in the prescribed manner and after hearing the parties, may direct the breeder of the
variety to pay such compensation as it deems fit to the farmer or the group of farmers or the
organization of farmers, as the case may be.

Overall, Farmers are granted nine specific rights, which are as follows:
1. Access To Seed [Section 39(1)(iv)]: Farmers have the right to save, utilize, plant, replant, trade,
distribute, or market their farm products, including the seed of safeguarded varieties, just as they had
the right to do before implementing the PPV&FR Act. Nonetheless, they are not permitted to market
trademarked seeds of a variety safeguarded under this Act. They are allowed to use seeds saved from
a crop grown on their land. Section 39(1)(4) also states: Provided that the farmer shall not be entitled
to sell branded seed of a variety protected under this Act. Explanation: (iv) “branded seed” means any
seed put in a package or any other container and labeled in a manner indicating that such seed is of a
variety protected under this Act.

2. Benefit Sharing [Section 26]: Individuals and groups who offer Plant Genetic Resources (PGR) to
breeders to develop new plant varieties are entitled to receive a fair share of profits from the
commercial sale of the registered varieties. The PPV&FR Act, enacted in 2001, is the first national
plant variety protection law to include access and benefit-sharing (ABS) and Plant Breeder’s Rights
(PBRs) provision. While the Biological Diversity Act of 2002 allows access to genetic resources used
in breeding, the PPV&FR Act mandates breeders to make a sworn statement regarding the geographic
origin of the genetic resources used in the ancestry of the new plant variety and its accession.

3. Compensation [Section 39(2)]: Seed registered must be sold with complete information about its
agricultural performance under recommended management conditions. If such seed is sold to farmers
but doesn’t provide the expected performance under recommended management conditions, the
farmer can seek compensation from the breeder with the help of the PPV&FR Authority.

4. Reasonable Seed Price [Section 47]: Farmers are entitled to obtain seeds of registered varieties at
a fair price. If this requirement is not met, the breeder’s exclusive rights to the variety are put on hold,
and the breeder must allow a competent legal entity to produce, distribute, and sell the seed. Many
plant variety protection laws have clauses on compulsory licensing to guarantee that farmers can
access sufficient seed. Some of these laws also consider unjust pricing as a justification for
compulsory licensing.

5. Farmers’ Recognition And Reward For Contributing To Conservation [Section 39(1)(iii) &
Section 45(2)(C)]: Farmers who have been involved in preserving and enhancing plant genetic
resources (PGR) and who have made significant contributions in supplying genetic resources for crop
improvement receive acknowledgment and compensation from the national gene fund. The gene fund
receives resources from the implementation of the Act, as well as from national and international
organizations. The funds support the preservation and sustainable use of PGR, making it comparable
to the global benefit-sharing fund of the International Treaty on Plant Genetic Resources for Food and
Agriculture.
6. Registration Of Farmers’ Varieties [Section 39(1)(iii)]: Under the PPV&FR Act, farmers are
permitted to register their existing varieties if they meet the conditions of being distinct, uniform,
stable, and named, but not if they are new. This registration right is only available for a specific time
frame. It is a one-time opportunity that begins when a crop species is added to the PPV&FR Act’s list
of crops eligible for registration. Once a farmer’s variety is registered, they are granted all Plant
Breeder’s Rights.

7. Prior Authorization For The Commercialization Of Essentially Derived Varieties [Section

28(6)]: For a third party to use farmers’ existing or new varieties as the basis for creating an
essentially derived variety, they must first obtain authorization from the farmers. This process allows
farmers to negotiate terms with the breeder, including royalties, benefit-sharing, or other conditions
for commercialization.

8. Exemption From Registration Fees For Farmers [Section 44]: According to the PPV&FR Act,
farmers are granted the benefit of not having to pay any fees or other charges typically required for
variety registration, as well as for services rendered by the PPV&FR Authority, such as tests for
distinctness, uniformity, and stability (DUS), and legal proceedings related to infringement or other
causes in courts or tribunals.

9. Farmer Protection From Innocent Infringement [Section 42]: This provision is included in
recognition of the traditional unrestricted rights farmers have held over the seed of all varieties for
centuries. The PPV&FR Act is a new concept, and many farmers may not have a good understanding
of the legal aspects of it. If a farmer is accused of infringing on any rights specified in the PPV&FR
Act and can demonstrate to the court that they were unaware of such rights at the time of the
infringement, they will not be held liable.

UNIT 4
CONTROLLER UNDER THE DESIGN ACT, 2000

 A Controller defined under Section 3(1) of the Design Act, 2000, means the Controller General
of Designs, Patents, and Trade Marks. The controller can be interpreted as including a reference
to any officer discharging the functions of Controller in pursuance of Section 3(3) of the Design
Act, 2000.
 The Office of the Controller General of Patents, Designs and Trademarks is at Mumbai.
 Under Section 3 of the Trademarks Act, 1999, the Government appoints the Controller General
of Patents, Designs and Trademarks. The person so appointed under the Trademarks Act, 1999, is
appointed as the Controller of Designs for the purposes of the Designs Act, 2000.
 The Central Government can also appoint some other officers who can function, under the
directions and superintendence of the Controller General of Patents, Designs and Trademarks.
 The Controller under the Design Act, 2000, can authorize in writing, from time to time by special
or general order. The Controller General of Patents, Designs and Trademarks can authorize the
Deputy Controllers, Assistant Controllers, and Joint Controllers of Patents & Designs to
authorize the functions of Controller General of Design, Patents and Trademarks.

POWERS AND DUTIES OF CONTROLLER

Chapter VII of the act deals with powers and duties of controller. The various General Powers of
Controller of Design under the Design Act, 2000 and the Design Rules, 2001 are as follows:

1. Powers of a Civil Court

As per Section 32 of the Design Act, 2000, in any proceedings before the Controller under the
Design Act, 2000, the Controller has the powers of a civil court for the purpose of:
 receiving of evidence.
 administering oaths.
 administering the attendance of the witnesses;
 proceedings for discovery and production of the essential documents;
 issuing commissions for the examination of witnesses; and
 awarding costs, such an award will be executable as a decree of a Civil Court.

2. Power of Awarding costs

As per Section 32 of the Design Act, 2000, read with Rule 43 of the Design Rules, 2001, in
all the civil proceedings before the Controller of Design under the Design Act, 2000, the Controller
can award any such costs as he/she considers reasonable, having in regard all the different
circumstances of the case. However, Controller of Design cannot award the maximum amount of cost
in a civil proceeding to a party, with respect to a matter given in the Fourth Schedule of the Design
Act, 2000. The maximum amount of cost should not exceed the mentioned therein in the Fourth
Schedule.

3. Powers of Controller of Design to Exercise Discretionary Powers

As per Section 33 of the Design Act, 2000, read with Rule 44 of the Design Rules, 2001, the
discretionary power the Controller can exercise is as follows:
 The Controller should give an opportunity of being heard to the party with at least 10 days’
prior notice, before acting adverse to any party.
  The Controller of Design should exercise the discretionary powers judiciously with caution
and due care and not in an arbitrary manner.
 Reasons for any adverse decision given by the Controller is required to be recorded in the file
by the Controller of Design.

4. Power to seek directions of the Central Government

As per Section 34 of the Design Act, 2000, in a case whenever, the Controller of Design has
difficulty or doubt in the administration of any of the provisions provided under the Design Act,
2000, he/she can seek the directions of Central Government in the difficult or doubtful matter.
5. Power of Refusal to register a design in certain cases
Section 35 of the act gives the controller to refuse a design in certain cases. The Controller
may refuse to register a design of which the use would, in his opinion, be contrary to public order or
morality.

6. Power of Controller of Design to correct clerical errors

On a request made by a person along with the prescribed fees, as per Section 29 of
the Design Act, 2000, the Controller of Design is required to correct any clerical error in the
representation of a Design or in the address or name of the owner or proprietor of any Design, or in
any other matter, which has been already entered upon in the Register of Designs at the Design
Office.

7. Powers of Controller of Design to Require Statements

As per Rule 45 of the Design Rules, 2001, the Controller of Design may require the
statements concerning whether an agent or applicant desires to be heard or not. The Controller of
Design may at any time require the agent or applicant to submit a statement in writing within the
prescribed time period, or to attend before him/her and make explanations with regard to such matters
as the Controller of Design may require him/her to make.

8. General Power of Amendment

As per Rule 46 of the Design Rules, 2001, the General Power of Amendment the Controller
of Design has is as follows:
 No special provision is made in the Design Act, 2000, regarding any document for its
amendment, can be amended, by the Controller of Design. Any irregularity in procedure of
amendment which, in the opinion of the Controller of Design, may be removed without
damaging the interest of any person. The procedure of amendment can also be corrected if the
Controller of Design thinks fit to do so, and upon such terms as directed by him/her.
 The applicant is required to file a petition stating the amendment required for the reasons. The
required fee should also be submitted with the petition of the applicant.
 The Controller of Design while considering amendment petitions of an applicant, can remove
only those irregularities which do not damage the interest of the applicant or any other person.
 Furthermore, only those amendments for which no special provision is provided in the Design
Act, 2000, and which can be made without any damage to the interests of any person are only
allowable by the Controller of Design.
 Generally, a failure to act within the prescribed time period will not be considered as an
irregularity, that is capable of being removed.
 If any amendment is required to be made resulting from certain mistake that is made on part of
the Design Office, no fees should be charged.

9. General Powers of Controller of Design for extension of time

As per the Rule 46 of the Design Act, 2001, the general power for the extension of time with
the Controller of Design is as follows:
 The time period prescribed by the Design Rules, 2001, for taking any proceeding or doing any
act, for which there is no special provision is made in the Design Act, 2000, can be extended by
the Controller of Design, for a time period which should not exceed 3 months, if he/she thinks fit,
and upon such terms and conditions as he/she may direct.
 The petition filed by the applicant should explain in detail the circumstances that require the
extension of the time period and also the reasons supporting such circumstances.

Other Powers of Controller of Design under Design Act, 2000, and the Design Rules, 2001

10. Prepare annual report:

Under Section 45 of the Design Act, 2000, the Controller of Designs is required to prepare an
annual report of the day to day activities of the Designs Wing. The Annual Report prepared by the
Controller of Design is placed by the Central Government before both the Houses of the Parliament.
The Annual Report of the Design Wing prepared by the Controller comprises information on the
following:
 A brief about the activities during the year;
 Design Applications that are filed and registered;
 The Examination;
 The Cancellations;
 The Restoration;
 The extension of Copyrights;
 The requests for inspection of the registered designs;
  The certified copies;
 The assignments;
 The various Designs in force;
 The total revenue.

PIRACY OF DESIGNS
Under the law, if the ‘copyright in a design’ has been infringed, it is known as “Piracy
of Design”. In other words, if there is unauthorized use of designs or duplication of such
designs, which is then, being used for commercial purpose, during the existence of such
copyright, without having consent or license from the registered proprietor of the design, it
shall be considered as an unlawful act (design piracy) also he is responsible for the damages.
Taking into consideration Section 22 of the Designs Act, 2000, it delivers instances
which account for piracy of designs”-
1. If an article whose design is registered is used for sale employing fraudulent or obvious
imitation of that design.
2. If an article whose design is registered is imported for sale without having the consent of
the proprietor of the registered design.
3. If an article whose design is registered or such design has fraudulent or obvious imitation
in it, has been published or exposed for sale.

Therefore, if any article or class of articles whose design has already been registered is used
for sale by obvious or fraudulent imitation or being imported for sale without the consent of
the proprietor of the registered design or such registered design has been published or
exposed for sale having prior knowledge that it has obvious or fraudulent imitation will be
termed as piracy or infringement of the registered design.

FRAUDULENT OR OBVIOUS IMITATION

As discussed above, to constitute piracy of registered design, deceitful or apparent

imitation has to be present for infringement of copyright in the design.
In a fraudulent imitation, the intention is to deceive the person and violate his rights
knowingly by imitating his registered design. On the other hand, an obvious imitation means
imitating a registered design by slightly adding modifications to it. Thus, this is to say that
such imitation must constitute the exact duplication of the registered design to constitute
piracy.

REMEDIES AGAINST PIRACY OF DESIGNS

Remedies available for infringement

The aforementioned provision also provides two legal remedies to the plaintiff or the
registered proprietor which are provided hereunder:
i. Damages:
For each violation, a person found guilty of design piracy may be rendered
responsible to pay an amount of rupees twenty-five thousand payable as a contract debt.
However, as stipulated in Section 22(2), the total amount recoverable in respect of any one
design shall not exceed rupees fifty thousand.

ii. Injunction:
Section 22 (2)(b) allows the plaintiff to initiate a lawsuit for damages and an
injunction. However, the plaintiff cannot seek both contract debt collection as well as
injunction and damages under Section 22(2)(a). The plaintiff can retreat to the remedy of
injunction. The injunction is of two kinds:
 Temporary/interlocutory injunction under order 39 of C.P.C.
 Ex-parte injunction and
 Permanent injunction

Temporary injunction:
In Troikaa Pharmaceuticals v. Pro Laboratories, the plaintiff was a manufacturer of
‘D’ shaped tablets who had registered the design. The defendant was eventually sued under
the guise of unlicensed usage of a similar design. Because the Court was confident that
granting the injunction would not cause great damage to the defendant, the Court granted an
interlocutory injunction against the defendant.
In the case of Niki Tasha India Pvt. Ltd. v. Faridabad Gas Gadgets Pvt. Ltd. (AIR
1985 Delhi 336), it was held that the court would not grant an interlocutory injunction unless
satisfied that there is a real probability of the plaintiff succeeding on the trial of the suit.
Permanent Injunction:
If the plaintiff successfully proves and establishes in the trial infringement of his
registered design, he will be entitled to a decree of permanent injunction which restores his
status quo on the design. The aim of the granting injunction is to restraint infringement but if
there is no probability of infringement in the future, the injunction can be denied by the court.

iii. Accounts of profits

The court can direct the defendants to maintain accounts of profits during the period
of the pendency of infringement and these accounts can be used for assessing the damages.
Provided further that no suit or any other proceeding for relief under this sub-section
shall be instituted in any court below the court of District Judge.
When the court makes a decree in a suit for infringement, it shall send a copy of the
decree to the Controller, who shall cause an entry thereof to be made in the register of
designs.

GROUNDS OF DEFENCE
To get relief under sub-section (2) of Section 22 of Designs Act, 2000 every ground
will act as a defense when registration of a design may be cancelled under Section 19.
Following are the grounds of defence:
i. The design of the plaintiff is not registered
ii. The period of registration has expired
iii. The design was registered before, in India; or
iv. The defendant may also set up defence for cancellation of registration on the
ground of lack of originality and prior publication.
v. The plaintiff has not come with clean hands.
In Prem Sinh v Cream Industries, the court found that the plaintiff himself
imitated design of another peraon and therefore was not entitled to remedy
of injunction.
vi. Such design cannot be registered under the Act; or
vii. Such design cannot be constituted as a design under Section 2(d).

TESTS TO DETERMINE INFRINGEMENT

 In Britannia Industries Ltd vs Sara Lee Bakery, the two predominant tests were
implemented by the judiciary, i.e.,
i. Test of Obvious Fraudulent Imitation and
ii. Test of Substantial Difference.
Firstly, the Court, in The First Test of Obvious Fraudulent Imitation, observed that similarity
in design in such cases should be judged with the eyes of the general public and the purchaser.
Secondly, the Court will determine any “significant differences” between the design that is
intended to be registered and the design that has already been registered.

Facts of the case:

The Plaintiff is a company engaged in the business of manufacturing and marketing various
food items, such as bread, biscuits, confectionary, cakes and one of the products manufactured
by the Plaintiff is a biscuit in the name "Milk Bikis Milk Cream". The Plaintiff's biscuit is
circular in shape with funny face on one side and the other side is plain. In between the two
biscuits is a filling-filled with milk cream, a round nose and the mouth in the shape of a smile
with two teeth visible-the two teeth being filled with cream. The novelty of the biscuit lies in
the shape and the configuration of the face on the one side and the plain biscuit on the other
side with milk cream filled in between the biscuits. The Plaintiff is the registered proprietor of
the said design and also holds the copyright "Britannia Milk Bikis Milk Cream".

The Plaintiff filed the action on noting that the Defendant had introduced the offending product
as "Milk Wala" which is similar to the product of the Plaintiff in all respects. Thus, the act of
the Defendant is a piracy of the registered design, violation of copyright and passing off goods
as that of the Plaintiff, as the design of the biscuits and wrapper is same and similar.

The Defendant filed their reply on the following lines:

The Defendant’s parent company, namely, Sara Lee Corporation is a global manufacturer and
marketer of high-quality brand name products for consumers throughout the world. In order to
deal with the business of manufacturing and marketing high quality biscuits, the parent
company established Sara Lee Bakery India Private Limited. They also entered into an
agreement with Nutrine Group who were using the brand name “Milkawala” and thereby
acquired the biscuit business of the said group.
The facial biscuit moulds are common in the biscuit trade and the Defendant has also obtained
registration of its biscuit design in respect of its facial design. The Plaintiff is claiming an
exclusive right in respect of an entire range of biscuits in the shape of different faces, which is
not permissible under law and moreover, the face in the offending design is entirely different
from that of the Plaintiff's design.

At the hearing the counsel for the Plaintiff submitted that to determine whether two designs are
identical or not, it is not necessary that the two designs should be exactly the same. The main
consideration is whether the broad features of shape and the figuration are same or nearly the
same.
On the other hand, the counsel for the Defendant submitted that the Design and the wrapper of
the rival parties are entirely different and show striking differences between them and
consequently the Plaintiff is not entitled to any interim reliefs.

After detailed hearing and comparison of the rival products, the Court held that on looking at
the Designs in the eye of the customer, namely, children, it is clear that the main features in
both the biscuits are not substantially same and therefore there is no infringement. The court
also compared the wrappers of the rival products and held that there are substantial
dissimilarities and therefore no copyright infringement is made out.

With regard to passing off, the Court found that the Plaintiff has conspicuously displayed its
trademark 'Britannia' on the wrapper of its biscuit, whereas the Defendant has displayed its
trademark 'Nutrine' and 'Milkwala' on the wrappers of its biscuits. The features contained in
the design and wrappers in both the products are entirely different and the differences are easily
perceivable even by young consumers.

In view of above finding, the Court held that the Plaintiff has failed to make out a case for grant
of interim injunction and dismissed the application

CASES RELATED TO DESIGN PIRACY

Dabur India Ltd. v. Rajesh Kumar and Ors.

 In this case, they stated they were not mimicking Dabur’s bottles and claimed there was
no Dabur’s trademark embossing on any part of the bottles confiscated by the Local
Commissioner or being sold by them. They claimed they were not duplicating or infringing on
Dabur’s designs. They said that the bottles were being sold for a variety of purposes by various
people and that they were selling empty bottles with no markings or numbers on them. Their
main business was selling bottles of various sizes and shapes, as well as caps. The Court found
that there was a strong prima facie case that Dabur’s trademark or design had been infringed.
Rajesh Kumar’s bottles did not have the Dabur trademark on them. Rajesh Kumar’s empty
bottle business could be utilised by anyone for filling any kind of liquid, and there is no reason
to believe that these bottles can only be used to imitate and promote ‘Dabur Amla Hair Oil.’
Dabur’s petition went unanswered in this light, and his application was dismissed.

UNIT 5

BERNE CONVENTION EXTRA

● Article 1-21: They deal with the rights, duties, and obligations of member states.
● Article 22-38: They deal with administrative and final clauses of this convention.

1. Works Protected
Article 2 of the Berne Convention provides for the works which are protected under
the Convention. The works protected under the Convention are as follows

i. Literary and artistic work":

ii. Possible requirement of fixation
iii. Derivative works.
iv. Official texts.
v. Collections;
vi. Obligation to protect; beneficiaries of protection:
vii. Works of applied art and industrial designs;
viii. News

The Berne Convention protects the works of the authors not only in the country of
their origin but also in the countries of the Union.
 2. Minimum standards of protection
The minimum standards of protection relate to the works and rights to be protected,
and to the duration of protection.
a. As to works, protection must include "every production in the literary, scientific
and artistic domain, whatever the mode or form of its expression" (Article 2(1) of
the Convention).
b. Subject to certain allowed reservations, limitations or exceptions, the following
are among the rights that must be recognized as exclusive rights of authorization:
i. the right to translate,
ii. the right to make adaptations and arrangements of the work,
iii. the right to perform in public dramatic, dramatico-musical, and
musical works,
iv. the right to recite literary works in public,
v. the right to communicate to the public the performance of such
works,
vi. the right to broadcast (with the possibility that a Contracting State
may provide for a mere right to equitable remuneration instead of a
right of authorization),
vii. the right to make reproductions in any manner or form (with the
possibility that in certain special cases, a Contracting State may permit
reproduction without authorization, provided that the reproduction
does not conflict with the normal exploitation of the work and does
not unreasonably prejudice the legitimate interests of the author;)
viii. the right to use the work as a basis for an audiovisual work, and
the right to reproduce, distribute, perform in public or communicate to
the public that audiovisual work.

3. Moral rights
The Convention also provides for "moral rights", that is, the right to claim authorship of
the work and the right to object to any mutilation, deformation or other modification of, or
other derogatory action in relation to, the work that would be prejudicial to the author's
honor or reputation.

4. Term of protection
As to the duration of protection, the general rule is that protection must be granted until the
expiration of the 50th year after the author's death. There are, however, exceptions to this
general rule.
● In the case of anonymous or pseudonymous works, the term of protection
expires 50 years after the work has been lawfully made available to the
 public, except if the pseudonym leaves no doubt as to the author's identity or
if the author discloses his or her identity during that period; in the latter case,
the general rule applies.
● In the case of audiovisual (cinematographic) works, the minimum term of
protection is 50 years after the making available of the work to the public
("release") or – failing such an event – from the creation of the work.
● In the case of works of applied art and photographic works, the minimum
term is 25 years from the creation of the work.

5. Free uses
The Berne Convention allows certain limitations and exceptions on economic rights, that is,
cases in which protected works may be used without the authorization of the owner of the
copyright, and without payment of compensation. These limitations are commonly referred
to as "free uses" of protected works and are set forth in
● Articles 9(2) (reproduction in certain special cases),
● 10 (quotations and use of works by way of illustration for teaching purposes),
● 10bis (reproduction of newspaper or similar articles and use of works for the purpose
of reporting current events) and
● 11bis(3) (ephemeral recordings for broadcasting purposes).