Unit III

Industrial Design, Copy Right and Intellectual Property and Cyberspace

Industrial Design

Introduction

Industrial Design is professional service of creating and developing concepts and specifications
that optimize the function, value and appearance of products and systems for the mutual benefit
of both user and manufacturer. An industrial design is that aspect of a useful article which is
ornamental or aesthetic. It may consist of three-dimensional features such as the shape or surface
of the article, or two- dimensional features such as patterns, lines or color. Industrial designs are
applied to a wide variety of products of industry or handicraft: from watches, jewelry, fashion
and other luxury items, to industrial and medical implements; from house ware, furniture and
electrical appliances to vehicles and architectural structures; from practical goods and textile
designs to leisure items, such as toys and pet accessories. The object of protection of an
industrial design is different from that of a patent, primarily because an industrial design must
relate to the appearance of the object and which is not determined by technical or functional
necessity. The object of patent protection, in contrast, is determined by the functionality of an
object or process since it must be an ‘invention’.
Protection of Industrial Designs
By protecting an industrial design, the owner of the design is given a right against its
unauthorized copying or imitation by third parties. In other words, the owner of a protected
industrial design shall have the right to prevent third parties not having his consent from making,
selling or importing articles bearing or embodying a design which is a copy of the protected
design. Since industrial designs are that aspect of an article which makes it aesthetically
appealing and attractive, they serve to add to the commercial value of the product and facilitate
its marketing and commercialization. To be protected under most national laws, an industrial
design must appeal to the eye. Industrial design does not protect any technical features of the
article to which it is applied.

In most countries an Industrial Design must be registered in order to be protected under

industrial design law. As a general rule, in order to be registered, the design must be ‘new’ or
‘original’. Now what constitutes novelty or originality may differ from country to country, and
indeed the registration process itself varies from country to country. In particular this can involve
whether there is an examination or not as to the form and substance of the application for the
registration of the design, especially to determine novelty or originality. An industrial design
must be capable of being reproduced by industrial means (industrial application). Also it must be
possible to apply an industrial design to an article which may be either two-dimensional or three-
dimensional. In principle, the industrial design must be published either before, at the time of, or
in a stated period after, registration. This depends on the national law and sometimes on the
decision of the applicant. Furthermore, it should be borne in mind that registration of an
industrial design is not necessarily the only means of protection. It is possible, if certain
conditions are met, to protect industrial designs under copyright law or the law against unfair
competition.
In India, in order to qualify for registration, it is necessary that there is a ‘design’. The term
‘design’ has been defined to mean the features of shape, configuration, pattern, ornament or
composition of lines or colours applied to any article. The article can be either in two
dimensional or three dimensional or in both forms and it can be applied by any means, whether it
be through industrial process or means, whether manual, mechanical or chemical, separate or
combined. The finished article should be appealable to and judged solely by the eye, but it
should not include any mode or principle of construction or anything which is in substance a
mere mechanical device.
The Act provides that a ‘design’ may be registered in respect of an article. An ‘article’ means
any article of manufacture and includes any part of an article if that part is made and sold
separately. The Act also imposes limits on registration.

Requirements for Industrial Design:

In order to be registered under the Designs Act in India, the following criteria has to be satisfied.
They are:
1. ‘Features of shape, configuration, pattern, or ornament or composition of lines or colour’,
2. Which are ‘applied’
3. To an ‘article’,
 4. Which in the finished article ‘appeal to and are judged solely by the eye’.

A Design must have something new before the law will allow it to be registered. The design
should be new or original. Original in relation to a design means originating from the author of
such design and includes the cases which though old in themselves yet are new in their
application.
A Design is protected only in respect of the class or classes of articles. If a design had never been
applied to articles comprised in one of the classes of goods into which manufactured articles are
divided for the purposes of the Act, such design might be protected for that class even if it had
been previously applied to goods of a different class.
In re Bach’s Design, a lamp shade in the shape of a rose, but made in linen, was registered for
goods in Class 12. It was held that a lamp shade of the same shape, but made in China and which
had been registered for goods in class 14, was not entitled to protection, and it was removed from
the register accordingly. Although the substances were dissimilar the shape was the same, and the
articles having that shape were both lamp shades.
However in Walker, Hunter and Co.v.Falkirk Iron Co and Hecla Foundry Co.v.Walker, Hunter
and Co, a design for the shape of an iron furnace door was protected, although wooden doors of
the same shape for the side boards and other articles of furniture were existing. The things
shaped were for such different purposes and their uses were so dissimilar that the design for one
of such things was held to be new or original, although it was old for the other.
However not all designs will qualify for protection. The Act excludes from the meaning of the
design the following aspects:
1. Methods or principles of construction.
2. Features dictated solely for the function.
3. A mechanical device.
4. A trademark, or property mark or artistic work.
5. Immoral designs or designs contrary to public order.

Registration of Designs

The Controller may, on the application of any person claiming to be the proprietor of any new or
original design not previously published in any country and which is not contrary to public order
or morality, register the design after due consideration. On getting the application for
registration, the Controller may appoint an examiner to check whether the design is registerable
under the Act and submit a report to the Controller. The application for registration should be
filed in the prescribed form along with the prescribed fees. For the purpose of registration, goods
are divided into 32 classes. A design is registered only in one of these classes. The registration
may be in respect of any or all articles of a class. If a question arises as to the class in which an
article falls, the decision of the Controller in this regard will be final. If the proprietor of a design
registered for an article in a class wants to register it for more articles in the same class, his
request to that effect shall not be refused nor shall the registration thereof invalidated, on the
ground that the design is not new or original but such request will not extend the period of
protection beyond the first registration.

After the registration of a design, the Controller publishes the application and the representation

of the article to which the design is applied in the official Gazette and opens it for public

inspection. The Controller then grants a certificate after the registration of the design and enters

the same in the Registry of Designs. If an application has been refused, the aggrieved person may

appeal to the High Court.

Where an application for a design has been abandoned or refused, the application and any
drawings, photographs, tracings, representations or specimens left in connection with the
application shall not at any time be open to public inspection or be published by the Controller.

The Controller, if satisfied, has the power to substitute another person in place of the original

applicant on a claim by such person that he is entitled to an undivided share or has an interest in

the design. Thereafter, the Controller may direct that the application shall proceed in the names

of the claimants or in the names of the claimants and the applicant as the case may be.

The Controller shall grant a certificate of registration to the proprietor of the design when
registered. During the existence of copyright in a design any person can inspect the design on
making an application giving particulars to identify the design and paying the prescribed fee.

Register of Designs
The names and addresses of the proprietors of registered designs, notifications of assignments

and transmissions of registered designs and any other matter that may be prescribed shall be

entered in a register of designs kept at the Patent Office. The Register may be maintained wholly

or partly on computer, floppies or diskettes, subject to safeguards. The register of design is the

prima facie evidence of any matter authorised to be entered therein.

Every register is open to inspection of the public. Any person can obtain certified copies of any
entry in the register on making necessary request with prescribed fee.

Steps for filing an application

1. The already existing designs are searched.

2. A representation showing the exact article on which the registration is applied is
prepared.

3. The appropriate class for the design is identified from the internationally accepted 32
classes of designs.
4. Evidence of novelty in the design is prepared.
5. A priority date for Convention Countries is claimed.

6. The required fees should accompany application. Presently the fee for registration is Rs.
1000 and for renewal, it is Rs. 2000.
7. After completing the above procedures the application can be filed either in the Design
Office in Kolkata or any branch of the Patent Office in Delhi, Mumbai or Chennai.
8. After the examination, if demanded, additional information required by the Design Office
should be submitted as soon as possible.
9. To facilitate easy communication and registration full and correct addresses should be
furnished.

Any person interested may file an application to the Controller for cancellation of the registration
of a design on any of the following grounds:

 That the design has been previously registered in India; or

 That it has been published in India or in any other country prior to the date of
registration; or
  That the design is not a new or original design; or
 That the design is not registerable under this Act; or
 That it is not a design as defined in the Act.
An appeal shall lie to the High Court against the order of the Controller. The Controller may at
any time refer any such petition to the High Court.
Infringement and Remedies
Infringement is the violation of rights of a right owner thereby unlawfully trespassing to his right
or privilege. On registration of a design, the registered proprietor shall attain a copyright in the
registered design for a period of ten years from the date of registration. The owner of the
registered design has the exclusive right to carry out certain specified acts in relation to articles
for which the design is registered. The right in the registered design is infringement by a person
who without the license of the registered proprietor does anything which is exclusive right of the
proprietor. The Act enumerates the circumstances in which the copyright in a design shall be
infringed. Thus during the existence of copyright in any design, it shall be unlawful for any
person,
 for the purpose of sale to apply or cause to be applied to any article in any class of
articles in which the design is registered, the design or any fraudulent or obvious
imitation thereof, except with the license or written consent of the registered proprietor,
or do anything with a view to enable the design to be so applied; or
 to import for the purposes of sale, without the consent of the registered propertier, any
article belonging to the class in which the design has been registered, and having applied
to it the design or any fraudulent or obvious imitation thereof, or
 knowing that the design or any fraudulent or obvious imitation thereof has been applied
to any article in any class of articles in which the design is registered without the consent
of the registered proprietor, to publish or expose or cause to be published or exposed for
sale that article.
In Rotomac Pens Ltd. v.Milap Chand and Co. , the question was with regard to the
infringement of ballpoint pens. The appellant manufactured ballpoint pens called
“fighter” pen with specific designs and features. This particular model contained a special
 design consisting of several corrugations just above the tapering portion of pen, which is
elongated. The pen was marked in three distinctive colours namely silver green, silver
blue and silver marron with glassy finish which is distinctive. Novelty was claimed in
respect of shape and configuration of the features. The design of fighter pen was
registered under the Designs Act. The respondents came up with a similar pen called
“Writer” pen, which they claimed to be different from the appellants in refill, diameter,
packing and weight of the pens. However, the question was whether there is any
similarity by eye appeal. The Court held that visual comparison proves it to be virtually
identical. Hence there is imitation of the registered design which will amount to copyright
infringement.
Remedies against infringement of designs
The Design statute in India though does not carry any separate provision on criminal
remedies, provides criminal actions for the infringement of Designs.
According to Designs Act, 2000 any person contravening the provisions of the Act shall
be liable to pay to the registered proprietor of the design a sum not exceeding twenty five
thousand rupees recoverable as a contract debt. the total sum recoverable in respect of
any one design shall not exceed fifty thousand rupees. Any proceeding for relief under
this provision shall be instituted in any court below the court of District judge.
COPYRIGHT

WHAT IS COPYRIGHT?

When a person creates a literary, musical or artistic work, he or she is the owner of that work and
is free to decide on its use. That person (called the “creator” or the “author” or “owner of rights”)
can control the destiny of the work. Since, by law, the work is protected by copyright from the
moment it comes into being, there is no formality to be complied with, such as registration or
deposit, as a condition precedent for that protection. Mere ideas in themselves are not protected,
only the way in which they are expressed is protected.

Copyright is the right given by law to the creators of literary, dramatic, musical and a variety of

other works. It ordinarily means the creator alone has the right to make copies of his or her
works or alternatively, prevents all others from making such copies. The basic idea behind such

protection is the premise that innovations require incentives. Copyright recognises this need and

gives it a legal sanction. Moreover, commercial exploitation of copyright yields income to the

creators and thus making pecuniary rewards to individual’s creativity

Copyright is the legal protection extended to the owner of the rights in an original work that he

has created. It comprises two main sets of rights: the economic rights and the moral rights.

The economic rights are the rights of reproduction, broadcasting, public performance, adaptation,
translation, public recitation, public display, distribution, and so on. The moral rights include the
author's right to object to any distortion, mutilation or other modification of his work that might
be prejudicial to his honour or reputation.

Both sets of rights belong to the creator who can exercise them. The exercise of rights means that

he can use the work himself, can give permission to someone else to use the work or can prohibit

someone else from using the work. The general principle is that copyright protected works

cannot be used without the authorization of the owner of rights. Limited exceptions to this rule,

however, are contained in national copyright laws. In principle, the term of protection is the

creator's lifetime and a minimum of 50 years after his death.

These legal aspects are specified in international conventions to which most countries are now
party. On their accession, member States should have national legislation that are in line with the
international standards.

At the international level, the economic and moral rights are conferred by the Berne Convention
for the Protection of Literary and Artistic Works, commonly known as the "Berne Convention".
This Convention, which was adopted in 1886, has been revised several times to take into account
the impact of new technology on the level of protection that it provides. It is administered by the
World Intellectual Property Organization (WIPO), one of the specialized agencies of the United
Nations system.

COPYRIGHT IN INDIA
The copyright in India has travelled a long way since it was introduced during the British rule.
The first law on copyright was enacted in the year 1847 by the then Governor General of India.
When Copyright Act of 1911 came into existence in England, it became automatically applicable
to India, India being an integral part of British Raj. This Act was in force in the country until
after independence when a new Copyright Act (the Act of 1957) came into effect in 1958.
Thereafter the Act has undergone many amendments. The latest in the series is the 2003
Amendment, which came into force in May 2004.
The Indian Copyright Act confers copyright on (i) original literary, dramatic, musical and artistic
works, (ii) cinematographic films and (iii) sound recordings. The word `original' means that it
should not be copied from other works or alternatively it should be the outcome of independent
efforts. The Act empowers copyright holder(s) to do or authorise doing a number of activities.
The important among these are:

a) to reproduce the work,

b) to publish the work,
c) to perform the work in public or communicate it to the public,
d) to produce, reproduce, perform or publish any translation of the work,
e) to make any cinematographic film or a record in respect of the work,
f) to make any adaptation of the work,
g) to do, in relation to a translation or an adaptation of the work, any of the acts specified to the
work in sub clauses to (a) to (f).
The above mentioned rights are `exclusive' in the sense that the creator (or right holder) alone
has the right to enjoy these to the exclusion of others. The author by virtue of his creation
becomes the `owner' of the copyright in the work. However, there can be exceptions to this as in
the following two cases:-

1. The creator may be employed by someone and having been employed to create a work,
the rights belongs to the creator(s),the employer and

2. The creator may transfer his copyright by a document in writing to another person. This
is known as assignment.

The grant of copyright is a limited monopoly. It is limited in the `scope' of the rights granted and
in terms of `time'. Subject to these limitations, copyright is a monopoly ownership. In India,

copyright on a literary work is provided for the lifetime of the author plus sixty years after his

death. In case of joint authorship, the sixty years period is calculated from the beginning of the

calendar year following the year in which the last (surviving) author dies. Copyright with respect

to photographs, cinematographic works and sound recordings spans for 60 years after its first

publication. In order to strike a balance between the society's need for access to knowledge and

the need to reward creators, limited uses of copyright protected works are permitted without

author’s consent. These are called `fair use' of copyright. Section 52 of Indian Copyright Act

permits certain activities which do not amount to infringement. Important in this `exception list'
are reproduction of literary, dramatic, musical or artistic works for educational purposes, e.g.

research, review etc., and reporting in newspapers, magazines, periodicals, etc.

The Copyright Act of India provides right holders dual legal machinery for enforcing their rights.

The enforcement is possible through (1) The Copyright Board and (2) The courts.

Legal remedies include imprisonment and/or monetary fines - depending upon the gravity of the
crime. Sometimes remedies also include seizure, forfeiture and destruction of infringing copies
and the plates used for making such copies. The 1984 amendment has made copyright
infringement a cognizable and non-bailable offence. Under the provisions of the Act any person
who knowingly infringes or abets the infringement of copyright is considered as an offender and
is punishable with a minimum of six months imprisonment which may extend to three years and
a fine between fifty thousand and two lakh rupees.

The 1994 Amendment has incorporated a special penal provision against deliberate using of
infringing computer software. The punishment provided for this act is imprisonment for a term of
seven days to a maximum of three years and a fine between fifty thousand and two lakh rupees. In
case the infringing copy of the computer software is used not for pecuniary gain or it is used in the
course of trade or business, the imprisonment can be relaxed and fine can be maximum of fifty
thousand rupees.

Beside amending the Copyright Act, the Indian Government has taken a few more steps in
strengthening the enforcement in the country. A Copyright Enforcement Advisory Council has
been set up for advising the Government on measures for improving the copyright enforcement.
Training programmes and seminars are arranged for police personnel. Necessary legislation was
made for bringing video shops, cable operators under regulation. State governments are
encouraged to set up IPR cells for exclusively dealing with copyright and other IPR violations. In
spite of all these, enforcement of IPR violations, particularly copyright violations have not been
strong enough in the country and piracy prevails in all types of copyright works notably musical
works, video films and softwares

PROTECTION OF RELATED RIGHTS

Whereas the rights provided by copyright apply to authors, “related rights”, also known as
“neighbouring rights” concern other categories of owners of rights, namely, performers, the
producers of phonograms and broadcasting organizations.
Related rights are the rights that belong to the performers, the producers of phonograms and
broadcasting organizations in relation to their performances, phonograms and broadcasts
respectively.

Related rights differ from copyright in that they belong to owners regarded as intermediaries in
the production, recording or diffusion of works. The link with copyright is due to the fact that the
three categories of related rights owners are auxiliaries in the intellectual creation process since
they lend their assistance to authors in the communication of the latter's works to the public. A
musician performs a musical work written by a composer; an actor performs a role in a play
written by a playwright; producers of phonograms -- or more commonly "the record industry" --
record and produce songs and music written by authors and composers, played by musicians or
sung by performers; broadcasting organizations broadcast works and phonograms through their
broadcasting stations.

At the international level, related rights are conferred by the International Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting Organizations, better
known as the "Rome Convention". This Convention was adopted in 1961 and has not been
revised since. It is jointly administered by the United Nations Educational, Scientific and
Cultural Organization (UNESCO), the International Labour Organization (ILO) and WIPO.

The 1994 Agreement on Trade Related Aspects of Intellectual Property Rights (or TRIPS
Agreement), which is administered by the World Trade Organization (WTO), incorporates or
refers to this international protection.

There are still other international treaties that concern copyright and related rights protection;
further information may be obtained on them by visiting the WIPO’s Web site (www.wipo.int).

WHAT RIGHTS DOES COPYRIGHT PROVIDE?

The original creators of works protected by copyright, and their heirs, have certain basic rights.
They hold the exclusive right to use or authorize others to use the work on agreed terms.

The creator of a work can prohibit or authorize:

 Its reproduction in various forms, such as printed publication or sound recording;
 Its public performance, as in a play or musical work;
 Recordings of it, for example, in the form of compact discs, cassettes or videotapes;
 Its broadcasting, by radio, cable or satellite;
 Its translation into other languages, or
 Its adaptation, such as a novel into a screenplay.

Many creative works protected by copyright require mass distribution, communication and
financial investment for their dissemination (for example, publications, sound recordings and
films); hence, creators often sell the rights to their works to individuals or companies best able to
market the works in return for payment. These payments are often made dependent on the actual
use of the work, and are then referred to as royalties.

These economic rights have a time limit, according to the relevant treaties; it is 50 years after
the creator's death. National law may establish longer time-limits. This limit enables both
creators and their heirs to benefit financially for a reasonable period of time. Copyright
protection also includes moral rights, which involve the right to claim authorship of a work, and
the right to oppose− changes to it that could harm the creator's reputation. The creator or the
owner−can of the enforce copyrights in administrative work and in the courts, by inspection of
premises− for evidence of production or possession of illegally made “pirated” −goods related
to protected works. The owner may obtain court orders to stop such activities, as well as seek
damages for loss of financial rewards and recognition.

Are ideas, methods or concepts protected by copyright?

Copyright protection extends only to expressions, and not to ideas, procedures, methods of
operation or mathematical concepts as such. This principle has been confirmed by the Agreement
on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) of the World
Trade Organization (WTO).

How are rights related to copyright?

A field of rights related to copyright has rapidly developed over the last 50 years. These related
rights grew up around copyrighted works, and provide similar, although often more limited and
of shorter duration, rights to:

 performing artists (such as actors and musicians) in their performances;

 Producers of sound recordings (for example, cassette recordings and compact
discs) in their recordings;
 broadcasting organizations in their radio and television programs.

WHY PROTECT COPYRIGHT?

Copyright and its related rights are essential to human creativity, by giving creators incentives in
the form of recognition and fair economic rewards. Under this system of rights, creators are
assured that their works can be disseminated without fear of unauthorized copying or piracy.
This in turn helps increase access to and enhances the enjoyment of culture, knowledge, and
entertainment all over the world.

When does Copyright Protection begin, and what is required?

Copyright protection begins when any of the above described work is actually created and fixed
in a tangible form.

For example, my brother is a musician and he lives in the United States. When he writes new lyrics,
he prints them out on paper, signs his name at the bottom with the Copyright © symbol to show that
he is the author, places it in an envelope and mails it to himself without opening it. His copyright
begins at the moment he puts his idea in a tangible form by printing the lyrics out on paper. He
creates proof when he mails it to himself - the postmark establishes the date of creation. He then
registers his copyright with the U.S. Copyright Office which is a requirement under the US law in
order to sue for monetary damages should a violation of his copyright arise. However, if somebody
copies and redistributes his lyrics without permission before his copyright is registered, he still has
the right to assert a copyright claim as the true author.

The above applies to digital art and graphics. Open a gif, jpg or png file that you created and
look at the properties. It states the date that you saved it to your hard drive as the date of creation.
If somebody copies a graphic from your web site I assure you that the date of creation on your
copy of the file is earlier than the copy taken off your web site. If that still doesn't feel like
enough proof for you, save everything to a floppy disk and mail it to yourself via certified mail.
Keep the envelope sealed, wrap it in protective plastic and put it in a safe place.
Somebody once asked if it was “illegal” to place the copyright © symbol next to your name if
you have not registered your copyright. Unless you have stolen the work from somebody else
and you are not the true owner of the work, it is not illegal to place the copyright © symbol next
to your name - it is your right to do so.
The proper way to place a copyright notice is as follows: Copyright © (first date of creation)
(name of owner). Like this: Copyright © 2003 John Smith.

WHEN DOES COPYRIGHT PROTECTION END, OR EXPIRE?

If a copyright statement reads, “© Copyright 1998, 1999 John Smith.” does that mean that John
Smith's copyright expired in 1999? The dates that you see in a copyright statement do not refer to the
dates−that the owner's material will expire and become public domain they actually refer to the dates
that the material was created.

When you see several dates in a copyright statement, it simply means that certain things were
created in one year and modified later. It could also mean that new things were created and
added in a later year. It most definitely does not refer to the date that a copyright will expire.
Expiration of a copyright actually takes place much later, and this period of validity begins from
the date that you see in the copyright statement. The Berne Convention establishes a general and
minimum period that lasts the life of the author and fifty years after his (or her) death.
Cinematographic works and photographic works have a minimum period of protection of 50 and
25 years upon the date of creation, respectively. This applies to any country that has signed the
Berne Convention, and these are just the minimum periods of protection. A member country is
entitled to establish greater periods of protection, but never less than what has been established
by the Berne Convention.

So, what does all this mean? This means that if a copyright statement reads, "© Copyright 1998,
1999 John Smith" and John Smith is from a country that has signed the Berne Convention, he
created his works in 1998 and 1999, and his copyright is not going to expire until at least fifty
years after he dies (this period may be greater - remember that member countries may establish
longer periods of protection through their national laws).

I have actually seen copyright statements with future dates, such as “© Copyright 2006, 2007 John
Smith”, most likely because the copyright holder thought that they could establish an expiration date
for the copyright. This is incorrect unless John Smith travelled to the future and created the work in
question. These types of copyright statements also mislead others to believe that dates in a copyright
statement refer to the date a copyright expires, when the date should really refer to its year of
creation.
The Famous © Symbol

Why does it say Copyright © 1998-2003 WhatisCopyright.org at the bottom of this webpage? Those
are the dates that I created and/or modified the layout, text, graphics and other material displayed on
this web site and saved it to my hard drive. That entitles me to claim copyright. Only I, as the author
and creator of this work, am entitled to use, reproduce and distribute this material unless someone
else who wishes to use it obtains my prior written permission to use it as well, and only in the manner
that I previously approve. What does this mean? That nobody may access my web site and copy my
layout, text or graphics until I provide a written document that states, “Yes, you can use my work,
but only in the manner that I deem appropriate.” This especially goes for those who want to use my
material for lucrative purposes/economic benefits.
Would you let someone sell letters you've written for publication in a magazine without your
permission, and particularly without you getting some of the profit? Anybody who uses copies or
distributes my material in any manner, for commercial or personal purposes, without my written
permission, would be committing an infringement of my copyright. If I, at any moment, detect a
violation of my copyright by another individual or entity, I am entitled to make a claim. It
doesn’t matter if you are a novice or if you “don't know any better”. As a principle of law states:
“Ignorance of the law does not make one exempt from compliance thereof.”

COMPUTER SOFTWARE AND IPR

Protection of computer software under copyright

During the 1970s and the first half of the 1980s, intensive international discussions regarding the
protection of computer software took place, mainly aiming at resolving the question of whether
such protection should be under copyright or patent law, or possibly under a sui generis system
of protection.

A Committee of Experts convened jointly by WIPO and UNESCO marked a decisive

breakthrough in the choice of copyright as the appropriate form of protection of computer
programmes, which can be assimilated to literary works. Soon afterwards, several countries
passed legislation clarifying that computer programmes were considered works subject to
copyright protection, and since then it has been generally accepted worldwide that copyright
protection should be applied rather than a sui generis approach.
There are important reasons for choosing copyright protection. First of all, computer
programmes are basically writings, and, under Article 2(1) of the Berne

Convention, the purpose for which writings are created is irrelevant from the viewpoint of their
qualifying as literary works, if they are original intellectual creations.

Computer programmes in object code form share the copyright status of other literary and artistic
works stored in computer systems in machine-readable form. While they are unintelligible for us
in object code, they can be retrieved – “decompiled” – into source code form where they are
intelligible. It is generally recognized that all categories of works are protected against storage in
digital form, because such storage is a reproduction. In this respect it does not matter that, for
example, a musical work cannot be perceived directly from a CD, but only after a
“decompilation” has taken place in a CD-player. Recompilation of computer programme means
reproduction and adaptation (“translation”) of computer programmes into a form in which the
coding and structure of the programme can be examined and analyzed.

AUTHORSHIP ISSUES IN WORKS USED OR MADE BY COMPUTER

The data processed by a computer, or the data that results from such processing, may well be
protected as literary and artistic works. This gives rise to some important questions in relation to
the copyright protection of such works, such as:

 If the information processed by a computer is expressed in a work protected by copyright,

is the use of such work by the computer under the control of copyright-owner of the

work?

 Where a computer has been used to process information in such a way as to produce a
work of a kind normally protected by copyright (for example, the processing of statistics
so as to produce them in tabulated form designed to serve a particular purpose, or the use
of a “synthesizer” to produce music) who is to be regarded as the “author,” and hence the
copyright-owner, of the resulting literary or musical work?

Both internationally and nationally, there has been a very large measure of agreement on the

answers, and the general consensus is recorded in the Report of the Second Committee of

Governmental Experts on Copyright Problems Arising from the Use of Computers for Access to

or the Creation of Works, convened by WIPO and UNESCO in Paris in June 1982. The major

conclusions recorded in the report and the recommendations may be summarized in the

Following way:

 The input of a protected work into a computer system includes the reproduction of the
work on a machine-readable material support, and also the fixation of the work in the
memory of the computer system; both these acts (i.e. reproduction and fixation) are
 governed by the Article 9(1) of the Berne Convention;

 The output of a protected work from a computer system should be protected under
copyright law, irrespective of the form of the output, for example, as a hardcopy printout,
a fixation in machine-readable form, a transmission from the database of one system into
the memory of another system (with or without an intermediary fixation), or by making
the work available to the public by audio or visual images presented on a screen;

 In amending or modifying national legislation to take account of computer use of

protected works, care should be taken to ensure that authors’ moral rights should continue
to be exercisable in relation to computer use, and that the exemption and limitations on
the copyright owner’s right of control, which computer technology might render
desirable, do not exceed the limits on such exemptions permitted by the Conventions; and

 Non-voluntary licenses in relation to the computer use of protected works should only be
adopted when voluntary licensing is impracticable, and should, in any case, be in
accordance with the convention principles; and where a non- voluntary license is adopted
by a national law, its effect should be confined to the territory of the country of that law.

In many countries the existing law appears to be regarded as implementing these general
conclusions, but in some countries there have been specific amendments to the copyright law to
put the matter beyond doubt.

The general view which emerged from these studies is that no matter how sophisticated a
computer may be, it is only a tool, and the author of a work produced by the aid of a computer is
the person who conceived the product and who gave the programmer and the technician the
instructions necessary to produce it. Neither the programmer who designed the programme
needed to operate the computer for the purpose of producing that work, nor the technician who
operated the computer when carrying out the task, would be regarded as the author or a joint
author; however, where the work of the programmer amounted to collaboration with the
originating creative person to such an extent that the programmer contributed creatively in
settling the form of the final product, he might be regarded as a co-author.
Patenting of computer software

Computers powerful enough to run complex software have existed since the 1950s. Software
related inventions, initially, received a chilly reception at the patent offices around the world
when patent applications directed to computer related inventions were first filed. They were of
the view that, by statute, patents can only be granted to processes, machines, articles of
manufacture, and compositions of matter. In particular patents cannot be granted to scientific
truths or mathematical expressions. The idea that the computer programmes solved mathematical
problems and are thus mere equations has long held them to be non-patentable. This means that
most of the fundamental techniques of software engineering have never been patented as the
countries started to issue software patents only around 1980’s. Some countries have now enacted
laws that have made it possible to patent computer software related technologies−theUSbeing the
foremost.

However, many people are worried about this situation. They are of the view that as many ideas
of computer programming are being patented, it becomes impossible to write software without
infringing on patents thus they live under permanent threat of being blackmailed by holders of
large patent portfolios.

Another dimension to the problem is that, there is a striking difference of opinion among
different countries about which type of software related inventions should be patented. While the
United States has opened the doors for patents of business methods and mathematical algorithms
(as long as they have a useful application) other countries are divided. It has thus become
imperative to have a closer look at Patent laws of different countries.

The normal prerequisite for copyright protection, that a work must be original, is well suited to
be applied to computer programmes. Although most programmes consist of sub-routine elements
which often in themselves would hardly qualify as original works, the combination of such
elements and the structuring of the programmes – with the exception of a few very simple
programmes – make them sufficiently creative. Ideas and abstract methods for solving problems
(the so-called “algorithms”) are not protected under copyright, which limits the protection to the
expression of such ideas and algorithms, but this is actually a desirable
consequence of copyright protection, i.e. an appropriate protection is offered without creating
unreasonable obstacles to independent creation of such programmes.

The piracy in computer software simply means copying and distribution of computer
programmes without the copyright holder’s permission. The software industry, generally,
consists of creation and distribution of computer programmes. Creation of computer programme
is similar to writing a novel or other literary works and it requires intellectual skill and training in
software programming. Though a software can be written by individual programmer, most of the
major softwares are the outcome of group efforts, where medium to large sized teams spend
months or even years to write a complete programme.

Distribution of computer programmes in most of the developed countries occurs through a two-
tiered system of wholesalers and dealers, similar to that of many other industries. The software
publishers make a substantial amount of their shipments to a small number of distributors in any
given country, who maintain well-stocked warehouses and can respond quickly to orders from
hundreds or thousands of individual retail dealers or resellers. The dealers market and provide
the software products directly to end-users of computers. The end users can be individuals,
commercial enterprises, educational institutions and government establishments. Sometimes,
software publishers also deal directly with a small number of the larger dealers or resellers in an
individual country. Licensing is a common practice in software industries. The publisher of a
software generally authorises its end users through the mechanism of the shrink-wrap license
contained in the package.

Like other copyright based industries, the software industry also faces several forms of piracy. In
fact, piracy in software is more than in others because it is relatively easy to copy a software in
computers especially in PCs and for all practical purposes the pirated version looks and performs
in an identical manner as the original. The five principal types of software piracy involve:
1. Counterfeiters
2. Resellers
3. Mail order houses
4. Bulletin boards and
5. End-user piracy.
Counter feiters are relatively new phenomenon in the software industry and most flagrant
software counterfeiters produce disks, documentation and packaging that look very similar to
those of the software publisher. Reseller piracy occurs in the software distribution channel, when
distributors or dealers either make copies of software onto floppy disks, or the internal storage
device or the "hard disk" of computers that they are selling, without authorisation from the
software publisher. Mail-order piracy consists of the unauthorised copying of software onto
diskettes, CDs, or other media and distribution of such software by post. Bulletin board pirates
engage in unauthorised reproduction and distribution of software via telecommunication.
Typically, this involves an individual computer user who has installed a number of software
programmes on his computer, and who allows other users to connect to his computer through the
telephone line via modem and copy the programmes onto discs. The pirate in most cases has
copied the programme onto his own computer without authorisation of the copyright holder's
consent is also a copyright violation. End-user piracy takes place when a user copying software
onto hard disks of more computers than the number authorised by the publisher. This form of
piracy perhaps takes place on a wider scale than other forms because end-users often make
substantial copies of the softwares possessed by them and then distribute or exchange the same.
Though this harms the interests of right holders, end users definitely gain out of it because this
leads to obvious economic advantages for them.
Identifying pirated software is not an easy task. This is primarily for two reasons. First, as
mentioned earlier there is hardly any difference between original software and pirated software,
once it is copied onto hardware. Second, detection of piracy requires access to software or
hardware or both, which may not be feasible in many cases. However, there are some ways
through which an unauthorised copy of software can be identified. Many a time publishers
supply softwares in packaged form which contain software on diskettes with printed labels
giving manufacturer's name, full product name, version number, trade mark and copyright
notices. Besides these, the packages also typically, contain professionally printed documentation,
a keyboard template, end user license and registration cards and other printed materials pursuant
to a standard bill of materials that would apply to all packages of that particular product. In such
cases, the most simple pirated copies may be spotted easily on “black-disks”, which do not
contain manufacture's label but rather type written, hand-written or crudely printed labels
indicating the programmes contained on the diskettes. In case of installed software it is more
difficult to identify a pirated copy. Once a computer is searched, the programmes copied onto it
can be found and identified. Then users can be asked to produce the proof of original possession
(e.g. original packages, documentation, purchase record, license cards etc.) of such programmes.
If users fail to do so, there is a prima facie case of infringement. In some cases even test
purchases can be made to secure evidence of piracy.
The extent of software piracy and losses due to such piracy cannot be given in exact quantitative
terms though it is believed that piracy in this sector is widespread. In Europe alone the sofware
industries lose an estimated US$ 6 billion a year. In fact, Europe holds the dubious distinction of
accounting for about 50 per cent of worldwide losses from software piracy, more than any other
region. Asia comes at number two. According to a study of Software Publishers Association, a
US based body, losses due to piracy of personal computer business application softwares nearly
equalled revenues earned by the global software industry. In 1996, piracy cost the software
industry US$ 11.2 billion, a 16 percent decrease over the estimated losses of US$ 13.3 billion in
1995. The country-specific data show that in 1996 Vietnam and Indonesia had the highest piracy
rate of 99 per cent and 97 percent respectively, followed by China (96%), Russia (91%),
Thailand (80%) etc. In India software piracy is costing the IT industry quite dear. According to a
survey conducted jointly by Business Software Alliance (BSA) and NASSCOM in May 1996,
total losses due to software piracy in India stood at a staggering figure of about Rs. 500 crores
(US $ 151.3 million) showing about 60 per cent piracy rate in India.
BROADCASTER’S RIGHTS: AN INTRODUCTION
Historical Setting
As already noted above, the right of broadcasters protected under the copyright regime has been
provided under a set of neighbouring rights being associated with the original version of
copyright protection wherein only literary or artistic work were protected. As Cornish explains,
Broadcasting opened great opportunity of relying performances to truly mass audience and thus
emerged a set or rights which were exclusive to these broadcasters.
Thus, initially, the copyright issues were resolved by adopting a two fold method, holding
broadcasting as an act of infringement and thus requiring broadcasters to seek copyright licenses,
and by making the act of broadcasting as an activity which itself attracted copyright and thus
requiring licenses for re-transmission purposes.
Nature of Broadcast rights
Thus under the law of copyright a broadcast is treated at par with an original literary or dramatic
work and is in itself amenable to copyright. This does not however, affect the copyright vested in
the work which is the subject matter of broadcast. Therefore it is the contents of the
communication made that are protected under the Copyright regime. For illustration, some artists
perform stage a drama in the theatre and consent to a live broadcast of the same. Now the
performance on their part is itself a subject matter of protection under the copyright regime
(under ‘Performer’s Right’). Here the sole protection that is offered for the broadcaster is the
inability on the part of any other to legally broadcast the same or a substantial part of the
broadcast so made, unless consented to by the original broadcaster. This also brings us privy to
the issue whether anyone can make a broadcast of anything? Acknowledging the generally
accepted limitation imposed on account of public policy, morality etc. one would find that
broadcaster has to be doubly careful. He has to make sure that the object to be broadcasted is not
protected under copyright regime for the ‘right to communicate the work’ to public is often
included as a right vested in the copyright owner in various jurisdictions. 8 Thus in such cases
the broadcast can be made only with the licence or the consent of the copyright owner of the
object to be broadcasted. This also brings us the proposition that the broadcast reproduction
rights do not affect the copyright in the literary, dramatic or musical work which has been
broadcasted.

Thus the original copyright vested in the work does not merge with the broadcaster’s right to
reproduce the broadcast. It still remains a separately protected right under Copyright regime. At
the cost of repetition, therefore, one must note that unlike copyright the broadcaster's right are
not based upon a creative contribution to a work. They are rather based on the protection of the
broadcaster's investment, and is obtained simply by broadcasting the work to the public The
broadcaster's right is an therefore only an additional intellectual property right that applies over
an above a copyright, if the work is protected under copyright, and it also applies to works that
would be in the public domain under copyright laws.

What is a broadcast?

A careful analysis of the above situation would also reveal that the fact whether a particular

broadcast is protected under the copyright regime is contingent upon its being covered within the

meaning of the ‘broadcast’ as defined under the statute. This is on account of the fact that the

medium of transmission must be covered within the meaning of ‘broadcast’ as assigned in

the enactment for purposes of it being amenable to protection. Thus irrespective of the fact that a
particular mode of transmission may be scientifically or technologically be defended as a
broadcast, it shall not be protected unless the medium is so covered under the statute. Therefore
the Australian Federal Court ruled that communication of a work by a private individual to
another party through mobile phone was not an instant of broadcast.

BROADCASTER’S RIGHT IN INDIA

Statutory Ambit

Protection to broadcasts was not envisaged under the original state of affairs under the Copyright
Act of 1957. However with an amendment in 1994, Section 37 of the Act was substituted with
the new section providing for broadcasting reproduction rights. The amended section conceives
of a methodology wherein the broadcaster is given the right to reproduce the broadcast made
already. Thus the broadcasting organisation is conferred with ‘Broadcasting Reproduction
Rights’ wherein the organisation is conferred with a series of rights in respect to the broadcast
made namely,
 1. reproducing the broadcast;
2. causing the broadcast to be heard or seen by the public on payment of any charges;
3. making any sound recording of visual recording of the broadcast;
4. making any reproduction or such sound recording or visual recording where the initial
recording was unauthorized;

5. 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 as under (a) to (e) shall require
a licence of the broadcasting organisation 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 categorised as;

1. for private use,

2. for purposes of bona fide training or research,
3. for reporting of current events (here it is to be noted that only excepts of such broadcast
are allowed to be used under this exception), and
4. general exceptions as provided under Section 52 of the Act.
Further, Section 39A extends the general provisions under the Act to broadcasting rights. Thus
one shall note that in many aspects broadcast reproduction rights are treated at part with
copyright. However the enunciation of the broadcasts rights have not been so widely
reverberated in India as has been abroad. Nevertheless there are some judicial decisions wherein
the existing position of law is brought forth.

Judicial Dictum

(a) Super Cassettes Industries Ltd. v. Entertainment Network (India) Ltd.

Facts : The Appellant, a music company, challenged the direction of the Copyright Board

directing the Registrar of Copyrights to grant a compulsory licence to the Respondent, a leading

FM (Radio Mirchi) broadcaster, to broadcast the songs the copyright in which was owned by the

Appellants when in a legal battle the Respondents had accepted that there was a violation on
their part in broadcasting the songs. Decision : (i) Since the respondent has not obtained any

authorization or licence to broadcast the songs from the appellant, it was an infringer and

granting compulsory licences under Section 31 to such infringers would be like putting premium

on their defaults which would also encourage others to first infringe and where infringement was

discovered, apply for a compulsory licence. Therefore such could not be allowed. (ii) Since

Section 31(1) employs the term ‘may’, its not mandatory for the Board to grant licence to each

and every applicant. Thus a licence can be granted or deniedon valid grounds. However Section

31 envisages that the decision to grant or refuse a licence should be made after holding sufficient

inquiry. (iii) While making an order under Section 31(1) the Board has to maintain a delicate
balance between private rights of the copyright vis-à-vis public interest.

(b) Video Master v. Nishi Productions

Facts : The Plaintiff claimed that the sole and exclusive video copyrights in a cinematographic film
[Bees Saal Baad] were assigned to it under an agreement by the producer of the film i.e. the
Defendant. It alleged that the Defendant had entered into an agreement with another distributor
whereby a copy of the film was given to them, which in turn was used to make cassettes which were
to be used for satellite TV transmission. Thus a violation of the copyright of the Plaintiff was alleged.
Decision : (i) Copyrights in Cable TV rights and satellite broadcasting rights are two different rights
under the Copyright Act, which can exist in different persons without infringing copyright of each
other. (ii) By receiving satellite signals on dish antenna owned/maintained by Cable TV operator or
private party and by relaying signals through media of Cable to the viewers, there was no violation of
the exclusive video copyright of the Plaintiff.

(c) Garware Plastics and Polysters Ltd. v. Telelink

Facts : The Plaintiffs claimed that that were the owners of a copyright in respect of a
cinematographic film who had assigned the right of broadcasting their films to Government of
India or Doordarshan but retained in themselves the right to telecast films by cable television.
They claimed that the Defendants, cable operators, by showing the film on their cable television
had violated their copyright in the film. Therefore the issue before the High Court was whether
by showing video films over Cable television network to various subscribers the defendants were
broadcasting video films to the public and thereby infringing the copyright of the plaintiffs.

Decision : (1) Whether a communication is to the public or whether it is a private

communication depends essentially on the persons receiving the communication. It they can be
characterized as the public or a portion of the public, the communication is to the case laid down
that showing a film on a cable television network was a broadcast of the film to the members of
public. (2) The viewers of a Cable network or those who receive such broadcast through a dish
antenna to which their television sets are connected, are either residents of
Apartments in a building which has such a network or they may be residents of a locality which
is covered by this facility. A number of houses - both private homes and public places - may
avail of this facility. As the viewers are not members of one family or their guests and do not
have any homogeneity, they are the members of public. (3) Therefore communication of a film
by cable television is a broadcast of the film and therefore the defendants were violating the
copyright in the film.

Thus one would find that the elaboration of the Broadcaster’s rights, despite their statutory

incorporation for more than a decade as of now, has been minimal in the Indian context.

PERFORMERS’ RIGHTS

Performers engage more in recreative and artistic activities than broadcasters, producers of
phonograms, etc. There was reluctance, for quite a long time, to give performers an equivalent
property right. It was believed on one hand, that giving copyright to all the performers in a play,
a film or an orchestra would lead to unnecessary complications. On the other hand, some right to
stop illegal appropriation of performances has long been considered necessary to cover, in
particular, surreptitious recording of the performance itself. In other words, a law was needed
which protects the rights of performers, such as actors in stage plays, musicians, dancers etc.
from being televised later through a covert recording. Such a broadcasting strikes at the very root
of the object of the Copyright Act which aims at encouraging creative pursuits.

Over the last three decades, the “bootlegging” or surreptitious recording, as Cornish describes it,
of performances by pop stars and others has grown considerably; and parts of music industry had
become particularly alarmed. The lack of some kind of right to performance was a blemish in the
copyright law which has now been remedied in India with the 1994 amendment to the Copyright
Act, 1957.

The Copyright (Amendment) Act, 1994 has conferred certain special rights to singers and other
performers in India.1 A performer includes an actor, singer, musician, dancer, acrobat, juggler,
snake charmer, a person delivering lecture, or any other person who makes a lecture.2
“Performance” in relation to a performer’s right means any visual or acoustic presentation made
live by one or more performers.3

The performer has the exclusive right to do the following:

a) To make a sound or visual recording of the performance.
b) To reproduce a sound or visual recording of the performance.
c) To broadcast the performance.
d) To communicate the performance to the public other than through broadcast.

Section 38 of the Act lays down the rights of the performer. According to it, if any person during
the continuance of a performer’s right without the consent of the performer does any of the
following acts in respect of the performance or substantial part thereof, he will be deemed to
have infringed performer’s rights:

a) Makes a sound recording or visual recording of the performance, or

b) Reproduces a sound recording or visual recording of the performance, which sound recording
or visual recording was--

i) made without the performer's consent; or

ii) made for the purposes different from those for which the performer gave his consent;
or
iii) made for purposes different from those referred to in section 39 or from a sound
recording or visual recording which was made in accordance with section 39; or

c) broadcasts the performance except where the broadcast is made from a sound recording or
visual recording other than one made in accordance with section 39, or is a re-broadcast by the
same broadcasting organisation of an earlier broadcast which did not infringe the performer's
right; or

d) Communicates the performance to the public otherwise than by broadcast, except where such
communication to the public is made from a sound recording or visual recording or a broadcast.

When a performer has authorized the incorporation of his performance in a cinematograph film,
the performer loses the right to complain of infringement of the performance as the entire rights
stand assigned to the producer of the film as an outcome of such authorization.

EXCEPTIONS TO INFRINGEMENT OF PERFORMER’S RIGHTS

Section 39 broadly lays down the acts which do not constitute infringement of a performer’s
right as the following:
a) the making of any sound recording or visual recording for the private use of the person

making such recording, or solely for purposes of bona fide teaching or research; or

b) the use, consistent with fair dealing, of excerpts of a performance or of a broadcast in the
reporting of current events or for bona fide review, teaching or research; or

c) such other acts, with any necessary adaptations and modifications, which do not
constitute infringement of copyright under Section 52. These acts are:

i. the reproduction of a literary, dramatic, musical or artistic work for the purpose of
a judicial proceeding or for the purpose of a report of a judicial proceeding;

ii. The reproduction or publication of a literary, dramatic, musical or artistic work in

any work prepared by the Secretariat of a Legislature or, where the Legislature
consists of two Houses, by the Secretariat of either House of the Legislature,
exclusively for the use of the members of that Legislature;

iii. the reproduction of any literary, dramatic or musical work in a certified copy
made or supplied in accordance with any law for the time being in force;

iv. the performance, in the course of the activities of an educational institution, of a

literary, dramatic, or musical work by the staff and students of the institution, or
of a cinematography film or a record, if the audience is limited to such staff and
 students, the parents and guardians of the students and persons directly connected
with the activities of the institution or the communication to such an audience of a
cinematograph film or sound recording. 7

Therefore mentioned acts can be done only with the sound or video recording of the
performance. Accordingly the making of a sound or video recording for the aforesaid reasons
cannot also be an encroachment on the rights of performers.

Where copyright subsists in respect of any work or performance that has been broadcast, a
license to reproduce such broadcast will require the consent of the owner of rights of performer,
as the case may be, or both of them.

CASE STUDIES

SUPER CASSETTE INDUSTRIES LTD. Vs. BATHLA CASSETTE INDUSTRIES LTD.

In Super Cassette Industries Limited Vs. Bathla Cassette Industries Pvt. Limited, the Delhi High
Court discussed in detail copyright infringement in sound recording and the concept of
performers rights. The relevant extracts of the judgement are given below:

1. This is an application for interim injunction in a suit asserting rights under Section 52(1)(j) of
the Copyright Act (hereinafter referred to as the Act). The plaintiff company is the manufacturer,
producer and marketeer of pre-recorded audio cassettes and other records under the logo T
Series. The plaintiff produced a sound recording under its banner T Series which was inter alia
based on the song `Chalo Dildar Chalo' from the film `Pakeezah' by giving notice to the original
producer Mahal Pictures under Section 52 (1) (j) & Rule 21(2) (b) of the Copyright Act. Such a
recording is known in the music business as version recording and involves inter-alia the singing
of a well-known song by a lesser known singer. The plaintiff gave prescribed royalty of Rs. 400
for producing 10,000 copies to the original owner. When the defendant attempted to produce a
version recording of the version recording of the plaintiff by treading the path carved out by the
plaintiff, the plaintiff has come to this Court for an injunction restraining the defendant from
what is averred to be a copyright violation of its version recording. The dispute in the present suit
inter-alia pertains to a song “Chalo Dildar Chalo” from the film ‘Pakeezah’, for which the
original owners of the musical works were M/s Mahal Pictures Pvt. Limited. This song forms
part of two audio cassettes produced by the plaintiff called Yadein Vol.I and Yadein Vol.II. The
plaintiff has further averred that it has produced this song under the provisions of Section 52(1)
(j) of the Copyright Act read with Rule 21 of the Copyright Rules, 1958. By the letter dated 10th
June, 1986 the plaintiff claims to have paid a sum of Rs. 400/-to Mahal Pictures the original
owner of the musical work `Chalo Dildaar Chalo' for producing 10, 000 records of Chalo Dildar
Chalo. The said letter dated 10th June, 1986 also stated in para (b) as under:

“(b) We do not propose to make any alteration in or omission from the work unless such
alteration and omissions are necessary for the adaptation of the work to the record in question."

The audio cassettes are said to have been produced pursuant to the said letter sent under the

provisions of Section 52(i)(j) of the Act and said to carry such an endorsement on the inlay card.

The defendants had offered to purchase similar rights under Section 52(1)(j) of the Act in respect

of the tapes Yadein Vol. I & I produced by the plaintiff which included the song ‘Chalo Dildar

Chalo’ from the plaintiffs and had accordingly issued a cheque for Rs. 1,000/- as 5 per cent

royalty prescribed by the Copyright Board for manufacturing 400 audio cassettes to be sold at

Rs. 25/- per cassette.

2. The defendants’ case was that the plaintiff itself produced a copy and it was protected by the
statutory protection failing which the plaintiff would have been guilty of violation of the
copyright of original work under Section 51. The plaintiff can not claim to be an owner of the
original work but nevertheless, the payment was made only to avoid any petty disputes.

3. On the other hand, the plaintiff’s case is that in re-recording the song in question the plaintiff
had to engage musicians, singers and music conductors and to create the original music track of
the musical works. It was further submitted by the plaintiff that in re recording it has used
sufficient independent skill and labour and has therefore, got its own legitimate and legal rights
of copyright in the Record and the musical work so produced. The record produced was a
substantially new arrangement and/or necessary adaptation of the existing records. The plaintiff's
case was that its sound recording (version recording) would be entitled to a separate sound
recording copyright and the reproduction of the same would require the licence and consent of
the owner of the copyright in the version sound recording, i.e., the plaintiff. Appearing for the
plaintiff, Mr. Praveen Anand advanced a plea that the defendant is not entitled to make a
recording of a version recording produced by the plaintiff and the defendant is not entitled to
avail of Section 52 (1) (j) qua the plaintiff's recording.

4. After exchange of correspondence between the parties, the defendant had filed a suit under
Section 60 of the Copyright Act before the District Judge, Delhi in which a prayer was made for
restraining by an injunction the present plaintiffs (the defendants in that suit) from continuance
of any threat by the plaintiff for the alleged infringement of the copyright in respect of the titles
Yadein Vol., 1 and 2 which contained the song Chalo Dildar Chalo. Both the counsel, Shri
Praveen Anand for the plaintiff, and Shri Ajay Sahni for the defendant agreed that the song
‘Chalo Dildar Chalo’, from the film ‘Pakeezah’ and its incorporation in the plaintiff's Yadein-I
would be the basis on which this application is to be decided.
5. It is, inter alia, averred in the plaint that by its own labour the plaintiff has invested large
amounts and encouraged new young singers. The plaint therefore prayed for declaration that the
plaintiff was the owner and copyright holder of Section 52(1)(j) version, i.e., Yadein I & II and it
further sought a permanent injunction against the defendants from reproducing the records and
musical works of the plaintiff contained in the works of the records titled Yadein Vol I & Yadein
Vol II.

6. In reply to the application for injunction, the defendant has taken the plea that since the
plaintiff has admitted to having their production covered under (the statutory defences enlisted
in) Section 52 of the Copyright Act 1957, the same cannot be the subject matter of protection
under the provisions of the Copyright Act as (the plaintiff's) sound recording is not an original
work. It is further stated that the alleged re–creation of the original music track amounts to an
infringement of the copyright of the original work and that if both the works sound similar then it
is an infringement. The right said to be derived from section 52 of the Copyright Act pre-
supposes that the derived product is an infringement under Section 51 of the Act. Further, since
any creation under Section 52 of the Act cannot claim to be an original work, it is not entitled to
protection. Some skill and labour is always required to make a copy of the original on behalf of
the plaintiff but as long as the musical work created by the plaintiff keeps the original work as a
model or guide, the work so created cannot be said to be an original work. The statutory defence
conferred by Section 52 cannot be so construed as to confer on the plaintiff's copy the status of
an original work. The audio cassettes being manufactured by the plaintiff are an effort to mislead
the public by printing the titles as Mukesh Ki Yaaden, Lata Ki Yaaden and Rafi Ki Yaden with
the photographs of these renowned singers by creating an impression that the songs are sung by
such renowned singers. In fact the songs have been sung by lesser known singers. In the instant
case the lyrics are identical and the tune similar. The plaintiff has not exercised any independent
labour and skill in the said musical work but merely attempted to recreate the existing work in a
manner which makes it sound to the uninitiated as if they were sung by the original singer.
Consequently, the plaintiff is guilty of passing off their work as the original work. The plaintiff
who itself has secured such rights under Section 52(i)(j) cannot be heard to complain when
others follow the plaintiff’s method.
7. The claim of the plaintiff for an injunction that the plaintiff is the owner and the copyright
holder of rerecorded musical work and record made under Section 52 (I)(j) of the Act, is
therefore not sustainable and the product of the plaintiff of which protection is sought cannot be
the subject matter of independent protection under the provisions of the Copyright Act, 1957.

8. The Defendant's case is that no license having been granted by the original Copyright owner and
the only claim forwarded being under Section 52(I)(j), cannot ipso facto confer a right entitling the
plaintiff for independent protection for its musical works. The defendant has relied upon Section
13(3)(b) which postulates that the copyright shall not subsist in any sound recording if in making
such a sound recording, copyright has been infringed. Since 10th May, 1995, not only is the
copyright of the literary and musical work violated, but also that of the performer's right, statutorily
recognized since the amendment of 1994.

It is, therefore, submitted by the counsel for the defendant that the performer's rights and the
integrity of the musical work are clearly violated by the substitution of the principal performer
by a lesser known singer and performers' rights were duly recognized by the 1994 amendment to
the Act.
9. In sum and substance, the as euphemistically by the learned counsel (for the defendant), the
defendant himself is a plagiarist and therefore, though claiming the protection of Section 52 (1)
(j) he cannot now prevent anyone else from plagarizing its work under Section 52(1)(j) of the
Act. In other words, the plaintiff cannot use the Section 52(1)(j) means to derive benefit from a
product of another person and yet ride a high moral horse when the same method is adopted by
another in respect of its own product.

10. What needs to be resolved in view of the rival pleas is the nature and manner of rights which
accrue to a musical work created under Section 52(1)(j), the effect of Section 13(3)(b) upon such
rights and whether the plaintiff's work constitutes infringement of the original musical work. Further,
in such a situation whether such work can be said to be entitled to avail of the protection under
Section 52(1)(j). It is still awaited for the Court to decide whether a Section 52 (1) (j) product can be
considered to be an original musical work.

Intellectual property and cyberspace

History of Cyber Crime
The first recorded cyber crime took place in the year 1820!
In 1820, Joseph-Marie Jacquard, a textile manufacturer in France, produced the loom. This
device allowed the repetition of a series of steps in the weaving of special fabrics. This resulted
in a fear amongst Jacquard's employees that their traditional employment and livelihood were
being threatened. They committed acts of sabotage to discourage Jacquard from further use of
the new technology. This is the first recorded cyber crime!
1971
John Draper discovers the give-away whistle in Cap'n Crunch cereal boxes reproduces a 2600Hz
tone. Draper builds a ‘blue box’ that, when used with the whistle and sounded into a phone
receiver, allows phreaks to make free calls. Esquire publishes "Secrets of the Little Blue Box"
with instructions for making one. Wire fraud in the US escalates.

1972
The InterNetworking Working Group is founded to govern the standards of the Internet. Vinton
Cerf is the chairman and is known as a "Father of the Internet”.

1973
Teller at New York's Dime Savings Bank uses a computer to embezzle over $2 million

1978
First electronic bulletin board system (BBS) appears; becomes the primary means of
communication for the electronic underground..

1981
Ian Murphy, aka. "Captain Zap“, becomes first felon convicted of a computer crime. Murphy
broke into AT&T’s computers and changed the billing clock so that people receive discounted
rates during normal business hours.

1982
Elk Cloner, an AppleII boot virus, is written.

1983
 Movie WarGames introduces public to the phenomenon of hacking (actually war-
dialing).
 US Secret Service gets jurisdiction over credit card and computer fraud.

Introduction to Cyber Law:

Cyber Law is the law governing cyber space. Cyber space is a very wide term and includes
computers, networks, software, data storage devices (such as hard disks, USB disks etc), the
Internet, websites, emails and even electronic devices such as cell phones, ATM machines etc.
Cyber crimes can involve criminal activities that are traditional in nature, such as theft, fraud,
forgery, defamation and mischief, all of which are subject to the Indian Penal Code. The abuse of
computers has also given birth to a gamut of new age crimes that are addressed by the
Information Technology Act, 2000.
The expression ‘Crime’ is defined as an act, which subjects the doer to legal punishment or any
offence against morality, social order or any unjust or shameful act. The “Offence" is defined in
the Code of Criminal Procedure to mean as an act or omission made punishable by any law for
the time being in force. Its an unlawful act wherein the computer is either a tool or a target or
both. Acts that are punishable by the Information Technology Act.
Cyber space is a virtual space that has become as important as real space for business, politics,
and communities.
Cyber Crime is emerging as a serious threat. World wide governments, police departments and
intelligence units have started to react.
Cyber Crime is a term used to broadly describe criminal activity in which computers or computer
networks are a tool, a target, or a place of criminal activity and include everything from
electronic cracking to denial of service attacks. It is also used to include traditional crimes in
which computers or networks are used to enable the illicit activity.
 Computer crime mainly consists of unauthorized access to computer systems data
alteration, data destruction, theft of intellectual property. Cyber crime in the context of
national security may involve hacking, traditional espionage, or information warfare and
related activities.
 Pornography, Threatening Email, Assuming someone's Identity, Sexual Harassment,
Defamation, Spam and Phishing are some examples where computers are used to commit
crime, whereas Viruses, Worms and Industrial Espionage, Software Piracy and Hacking
are examples where computers become target of crime.
A computer crime is any illegal act, the commission of which (in whole or in part):
 o targets computer hardware or software as its focal point, or utilizes computer
hardware or software to accomplish or assist in accomplishing the act, or involves
or uses computer hardware or software to store, preserve, assimilate, or secrete
any evidence or any fruits of the act, or unlawfully accesses, invades or violates
computer hardware or software integrity in accomplishing or in attempting to
perform the act notice by this definition, that a murder committed by bashing
someone’s head with a computer monitor would be considered a computer crime!
CATEGORIES OF CYBER CRIME:
Cyber crimes can be basically divided into 3 major categories:

1. Cyber crimes against persons :

Cyber harassment is a distinct Cyber crime. Various kinds of harassment can and do
occur in cyberspace, or through the use of cyberspace. Harassment can be sexual, racial,
religious, or other.
2. Cyber crimes against property :
These crimes include computer vandalism (destruction of others' property), transmission
of harmful programs, unauthorized trespassing through cyber space, unauthorized
possession of computer information.
3. Cyber crimes against government :
The growth of internet has shown that the medium of Cyberspace is being used by
individuals and groups to threaten the international governments as also to terrorize the
citizens of a country.
Types Of Cyber Crime
Technical Aspects Technological advancements have created new possibilities for criminal
activity, in particular the criminal misuse of information technologies such as
a) Unauthorized access & Hacking:- Access means gaining entry into, instructing or
communicating with the logical, arithmetical, or memory function resources of a computer,
computer system or computer network.

b) Trojan Attack:- The program that act like something useful but do the things that are quiet
damping. The programs of this kind are called as Trojans. Trojans come in two parts, a Client
part and a Server part. When the victim (unknowingly) runs the server on its machine, the
attacker will then use the Client to connect to the Server and start using the trojan.
c) Virus and Worm attack:- A program that has capability to infect other programs and make
copies of itself and spread into other programs is called virus. Programs that multiply like
viruses but spread from computer to computer are called as worms.
d) E-mail related crimes:-
 Email spoofing : Email spoofing refers to email that appears to have been originated from
one source when it was actually sent from another source. Please Read
 Email Spamming: spamming refers to sending email to thousands and thousands of users
- similar to a chain letter. Sending malicious codes through email. E-mails are used to
send viruses, Trojans etc through emails as an attachment or by sending a link of website
which on visiting downloads malicious code.
 Email bombing: E-mail "bombing" is characterized by abusers repeatedly sending an
identical email message to a particular address. Making of false, derogatory statement(s)
in private or public about a person's business practices, character, financial status, morals,
or reputation. Oral defamation is a slander whereas printed or published defamation is a
libel.
 Email frauds: Email fraud is the intentional deception made for personal gain or to
damage another individual through email.
e) Internet Relay Chat (IRC) related crimes:-
Three main ways to attack IRC are: Denial of service attacks, clone attacks, and flood attacks.
Denial of Service attacks:- Flooding a computer resource with more requests than it can handle.
This causes the resource to crash thereby denying access of service to authorized users

f) Sale of illegal articles

This would include sale of narcotics, weapons and wildlife etc., by posting information on
websites, auction websites, and bulletin boards or simply by using email communication.

g) Online gambling
There are millions of websites; all hosted on servers abroad, that offer online gambling. In fact, it
is believed that many of these websites are actually fronts for money laundering.
NEED FOR CYBER LAWS
 Laws are necessary in all segments of society, and e-commerce is no exception.
 Those in the online world should recognize that copyright, patent, and trademark laws
protect much of the material found on the Internet.

 All Internet users, including minors, need to be assured of their privacy and the safety of
their personal information online.
 In today's highly digitalized world, almost everyone is affected by cyber law.

 Almost all companies extensively depend upon their computer networks and keep their
valuable data in electronic form.
 Government forms including income tax returns, company law forms etc are now filled in
electronic form.
 Consumers are increasingly using credit cards for shopping.
 Most people are using email, cell phones and SMS messages for communication.
 Even in "non-cyber crime" cases, important evidence is found in computers / cell phones
e.g. in cases of divorce, murder, kidnapping, tax evasion, organized crime, terrorist
operations, counterfeit currency etc.
 Cyber crime cases such as online banking frauds, online share trading fraud, source code
theft, credit card fraud, tax evasion, virus attacks, cyber sabotage, phishing attacks, email
hijacking, denial of service, hacking, pornography etc are becoming common.
 Cyberspace is an intangible dimension that is impossible to govern and regulate using
conventional law.
 Cyberspace has complete disrespect for jurisdictional boundaries.
 Cyberspace handles gigantic traffic volumes every second.
 Cyberspace is absolutely open to participation by all.
  Cyberspace offers enormous potential for anonymity to its members. Electronic
information has become the main object of cyber crime. It is characterized by extreme
mobility, which exceeds by far the mobility of persons, goods or other services. A
software source code worth cores of rupees or a movie can be pirated across the globe
within hours of their release. Theft of corporeal information (e.g. Books, papers, CD,
ROMs, floppy disks) is easily covered by traditional penal provisions. Cyber Laws in
India :
 Under The Information Technology Act, 2000

How long does any protection last?

Again this varies from country to country but the term of protection is
typically for 5 years with the possibility of renewal, which may total, in most
countries, up to a maximum of 15 to 25 years. The minimum duration under
the TRIPS agreement is 10 years.