National Law University and Judicial Academy, Assam

PROFORMA FOR SUBMISSION OF SYLLABUS

Programme: …BA, LL.B

Academic Year: …2018
Semester: IX

Sl. Course Code Course Title

No L T P CR CH
1. 9.4 Law relating Taught Project moot 4 4
to Copyright,
classes work classes
Trade Secrets
and per
Confidential
week
Information

** L- Lecture; T- Tutorial; P- Project; cr- credit; ch- credit hour

Specialization Courses offered in the Semester (if applicable):

1. ……………..
2. …………….
3. ……………
4. ……………….
 5. ………………
6. ………………
7. ………………
8. ……………..
Annexure I

National Law University and Judicial Academy, Assam

Programme:

……… IPR- Law relating to Copyright, Trade Secrets and Confidential Information
…..……………………………………………………………………..
Details of Course offered

Odd/Even Semester – Academic Year …2018……………………

Code and Title of the Course: Course code 9.4 IP- Law relating to Copyright, Trade Secrets
and Confidential Information

a. Course Credit: 4 (total marks-100

b. Medium of instruction: English

c. Course Compiled by: Dr Topi Basar

 d. Course Instructor: Dr Topi Basar

Annexure II

1. Course Objectives: IPR is one of the most popular specialisation amongst the
students. This branch of law is fast emerging as one of the most interesting,
challenging and practically relevant subject for the students, academia, judiciary
and legal practitioners. Post WTO-TRIPS and globalisation, the importance of IPR
has grown in leaps and bounds. the course objectives are as follows:
a. To teach the basic conceptual foundation of copyright law in India.
b. To study new developments and challenges in copyright.
c. Critical study of landmark judgements.
d. To focus both on theoretical and practical aspects of copyright law.
2. Teaching methodology: teaching of law requires multi-methods like lecture
method, discussion model, interactive, quizzical, ICT enabled and Socratic Method.
Adopting a single methodology throughout the semester will bring monotony in the
classroom. The best way is to apply all available methods as per its effectivity in
the relevant class keeping in mind the requirement in each class. Multi –pronged
approach in teaching is more effective and impactful. The teaching methodology or
pedagogy involves the following:
A. Four stage process:
 Objectives (subject matter objectives & learning objectives).
 Course content and materials.
 Instructional methods to be developed.
 Evaluating learning achieved.
B. Cognitive learning objectives (six levels)
 Knowledge
 Comprehension
 Application
 Analysis
 Synthesis
 Evaluation
Choice of methods of teaching depends on how far up the cognitive ladder the teacher wants
his teaching strive to go.

3. Case Law Reporter/Journals

 Annual reports published by office of the Controller General of Patents,
Designs & Trademarks, DIPP, Ministry of Commerce, Govt. of India.
 Journal of Intellectual Property Law & Practice, Oxford University Press
 Indian Journal of Intellectual Property Rights, NISCAIR
4. Prescribed Readings

 VK AHUJA-LAW RELATING TO INTELLECTUAL PROPERTY

RIGHTS, LEXIS NEXIS, 2017.
 VK Ahuja-law of copyright and neighbouring rights national and
international perspectives, lexis nexis, LATEST EDITION.
 M.K. BHANDARI- LAW RELATING TO INTELLECTUAL PROPERTY
RIGHTS, CENTRAL LAW PUBLICATIONS, FIFTH EDITION,2017
 S.K. Verma, Legal protection of Trade Secrets and Confidential
Information, JILI, vol.44
 Kumar et al, Legal protection of Trade Secrets, Journal of intellectual
property rights, vol. 11 Nov. 2006, pp. 397-408.
 The Copyright Act, 1957 ,Bare Act, Universal Law Publishing, 2018.
5. Course Evaluation Method
Mid semester exam: 30 marks
End semester exam: 70 marks
Project work: 50 marks
Moot: 50 marks
6. Expected Outcomes of the Course
Students are expected to develop-
 Strong foundation on IPR.
 Keen interest on pursuing higher studies on IPR.
 Skill to venture in to IPR as legal practitioner.
 Clear understanding on practical utility of IPR.
 To become a domain specialist in areas of IPR.
7. Detailed Structure of the Course (Specifying course modules; reference materials
and suggested /compulsory reading)

A. LAW OF COPYRIGHT (Sections 13, 14, 17)

Subject matter of Copyright
 Original literary work
 Idea-Expression dichotomy
 Doctrine of sweat of the brow
 Modicum of creativity
 Breach of Confidence and Infringement of Copyright
 Breach of Confidence and Infringement of Copyright
 Doctrine of Fair dealing
 The three step test
B. Infringement of Copyright (Sections 51, 52)

 Infringement and its exceptions (permitted uses)

 Breach of Confidence and Infringement of Copyright
 Doctrine of Fair dealing/ fair use
 Compulsory licence, Statutory licence, difference between Assignment
and Licence, Functions of Copyright Board, Extension of Copyright to
Foreign Works, difference between infringement and plagiarism
 Remedies
C. International Treaties and Conventions on Copyright
 Berne Convention for the Protection of Literary and Artistic Works
 Marrakesh Treaty to Facilitate Access to Published Works for Persons Who
Are Blind, Visually Impaired or Otherwise Print Disabled
 WIPO Copyright Treaty (WCT)
 WIPO Performances and Phonograms Treaty

D. TRADE SECRETS AND CONFIDENTIAL INFORMATION(Art. 39

of TRIPS) & INDIA’S POSITION
Indian Contract Act, doctrine of breach of trust or confidence, difference
between Trade Secret and Confidential Information. Eg. Uniform Trade Secrets
Act (USA),

8. List of relevant print and online resources

 e-pathshala module : Exhaustion of Intellectual Property Rights
 https://ipabindia.org/
  https://spicyip.com.
 http://www.wipo.int.
 http://cec.nic.in/Pages/Home.aspx.
(Consortium for Education Communication)

Annexure III

STUDY/READING MATERIAL
Updated on 5 October 2018

Introduction
Intellectual property rights are nothing but property rights. The U.S. Supreme Court has
famously labeled copyright “the engine of free expression.” Copyright law provides a vital
economic incentive for the creation and distribution of much of the literature, commentary,
music, art, and film that makes up our public discourse. In order to have a copyright the work
must have a minimum amount of originality. In addition the work must consist of “expression
of ideas” and not just “ideas”. It is a well established principle that all compilations such as
dictionaries, gazetteers, grammars, maps, arithmetics, almanacs, encyclopaedia and guide
books, etc. are capable of having copyright in them. In law books and books of the above
description, the amount of ‘originality’ will be very small, but that small amount is ‘protected
by law’, and no man is entitled to steal or appropriate for himself the result of another’s brain,
skill or labour even in such works.1
Section 13: Types of works in which copyright subsists
1. Idea-Expression dichotomy
Donoghue v. Allied Newspapers, Ltd. (1937) 3 Ch.D.503
Mr. Donoghue was a well known jockey. The defendant were to publish in their paper a
series of articles entitled “My Racing Secrets” by Steve Donoghue, written by Mr. Felstead,
a free-lance journalist. The original article was first published in the paper ‘News of the
World’ earlier as per contract. Mr. Felstead wanted to sale some of these articles to the
Defendant with some modification. The Plaintiff claims an injunction to restrain the
defendant company from printing, publishing, selling, or otherwise circulating certain
articles, and for damages for infringement of copyright. It was held although Mr. Donoghue
supplied all the substance of the articles, the articles themselves, and the information, which
was in them, were conveyed in language which was the language of Mr. Felstead and not
that of the Plaintiff. And the plaintiff has failed to show that he is the owner or part owner
of the copyright in these articles.

1
V. Govindan v. E.M. Gopalakrishna Kone, AIR 1955 Mad 391, 391-93.
If the idea, however brilliant and however clever it may be, is nothing more than an idea, and
is not put into any form of words, or any form of expression such as a picture or a play, then
there is no such thing as copyright at all.
R.G. Anand v. M/S. Delux Films2, the Plaintiff’s play ‘Hum Hindustani’ proved to be very
popular was alleged to be adapted into a motion picture called ‘New Delhi’ by the defendant
without the plaintiff’s permission. They had met the plaintiff in his office where the plaintiff
read out and explained the entire play to the defendants and also discussed the possibility of
filming it. On a close and careful comparison of the play and the picture but for the central idea
(provincialism which is not protected by copyright), from scene to scene, situation to situation,
in climax to anti-climax, pathos, bathos, in texture and treatment and support and presentation,
the picture is materially different from the play. Held, there can be no copyright in an idea,
subject-matter, themes, and plots or historical or legendry fact and violation of the copyright
in such cases is confined to the form, manner and arrangement and expression of the idea by
the author of the copyrighted work.

2. Original literary work

There is no definition for the term “original” used in Section 13 of the Copyright Act,
1957.One of the purposes of the requirement of originality is said to be for prohibiting
existing works from being the subject-matter of further copyright protection in the
absence of some additional contributions. The benchmark of originality will vary from
case to case. Questions like how much is taken? What is copied, how it has been
reproduced and how does the final shape of the work look like? All of it will become
essential to decide whether it is a mere copy or an original work.

University of London Press, Limited v. University Tutorial Press, Limited (1916) 2 Ch.
D. 601
Two Professors were appointed by London University for setting the examination papers in
mathematics. They were not the staff of the University. They were paid a lump sum as salary
and not bound to give their services exclusively to the London University. The examiners were
appointed with the condition that the copyright shall vest in the University, but the examiners
had not signed or made an assignment in favour of University. The question to decide in this
case was whether examination papers are original literary works?
The words “literary work” cover work which is expressed in print or writing, irrespective of
the question whether the quality or style is high. The word “literary” seems to be used in a
sense somewhat similar to the use of the word “literature” in political or electioneering
literature and refers to written or printed matter. Papers set by examiners are, “literary work”
within the meaning of the Act.
The house of lords held, the copy right on question papers were held to be vested in Professors
as they were not in contract of service. There was no effective assignment as stipulation of
condition in the contract can not be said to be assignment. London University had a right to
obtain assignment from holders of copyright.

2
AIR 1978 SC 1613.
Vesting of copyright is concerned with labour, skill and effort put in by the person creating the
work based on doctrine of sweat of the brow and not on novelty of ideas.
3. Doctrine of sweat of the brow
Precondition to copyright is that work must be produced independently and not copied from
another person. The creation of the work which has resulted from little bit of skill, labour and
capital are sufficient for a copyright in derivative work of an author.
Eastern Book Company v. D.B. Modak, 2008 (36) PTC SC
The Eastern Book Company is the publisher of law report ‘Supreme Court Cases’, SCC. It
publishes all reportable judgments along with non-reportable judgments of the Supreme Court
of India. The respondents brought out software on cases on CD-ROMs. The Appellant
contended that SCC is a law report which carries case reports comprising of the appellant’s
version or presentation of those judgments and orders of the SC after putting various inputs in
the raw text and it constitutes an ‘original literary work’ of the appellants in which copyright
subsists under Section 13 of the Copyright Act, 1957 and thus the appellants alone have the
exclusive right to make printed as well as electronic copies of the same under Section 14 of the
Act. It was contended that the Respondents have copied the appellants’ sequencing, selection
and arrangement of the cases coupled with the entire text of copy-edited judgments, style and
formatting, paragraph numbers, footnote numbers etc as published in the SCC. Any scanning
or copying or reproduction done of or from the reports or pages or paragraphs or portions of
any volume of SCC by any other person, is an infringement of the copyright in SCC within the
meaning of Section 51 of the Act. It may be noted that Section 52(1) expressly provides that
certain acts enumerated therein shall not constitute an infringement of copyright and Sub-
clause (iv) of Clause (q) excludes the reproduction or publication of any judgment or order of
a Court, Tribunal or other judicial authority, unless the reproduction or publication of such
judgment or order is prohibited by the Court, the Tribunal or other judicial authority, as the
case may be.
The Court rejected both the doctrine of sweat of the brow and minimal degree of creativity
(considering it as extreme position) .The court therefore adopted a “middle path” approach by
enunciating an “excercise of skill and judgment” standard. In essence, the court held that to
claim copyright in a compilation, the author must produce a material with “exercise of his skill
and judgment” which may not be creativity in the sense that it is not novel or non-obvious, but
at the same time it is not the product of merely labour and capital. Elaborating further Court
held, the Copyright Act is not concerned with the original idea but with the expression of
thought. Copyright has nothing to do with originality or literary merit. Copyrighted material is
that which is created by the author by his own skill, labour and investment of capital, maybe it
is a derivative work which gives a flavor of creativity. The copyright work which comes into
being should be original in the sense that by virtue of selection, co-ordination or arrangement
of pre-existing data contained in the work, a work somewhat different in character is produced
by the author.To claim copyright in a compilation, the author must produce the material with
exercise of his skill and judgment which may not be creativity in the sense that it is novel or
non-obvious, but at the same time it is not a product of merely labour and capital. The derivative
work produced by the author must have some distinguishable features and flavor to raw text of
the judgments delivered by the court. The trivial variation or inputs put in the judgment would
not satisfy the test of copyright of an author.
The Indian Supreme Court endorsed the standard of the Canadian Supreme Court (that the
appropriate standard is neither one of “sweat of the brow” nor of “creativity”) and held
that:“Creative works by definition are original and are protected by copyright, but creativity is
not required in order to render a work original. The original work should be the product of an
exercise of skill and judgment and it is a workable yet fair standard”. The court held that mere
copy-editing (clerical corrections, syntax etc) wouldn’t qualify as they did not involve
“creativity”, but skill expended in writing head-notes, footnotes and editorial notes would
qualify. The Supreme Court therefore “restrained the respondents from copying head notes,
footnotes and editorial notes appearing in their law journals.”3
The Minimal degree of creativity came to be known from Feist Publications Inc. v. Rural
Telephone Service Co. Inc.,4 (telephone directory-white and yellow pages) in which the USA’s
Supreme Court held that the sine qua non of copyright is originality. To qualify for copyright
protection, a work must be original to the author. Original, as the term is used in copyright,
means only that the work was independently created by the author ( as opposed to copied from
other works), and that it possesses at least some minimal degree of creativity. The requisite
level of creativity is extremely low; even a slight amount will suffice. Only the compiler’s
selection and arrangement may be protected, but the raw facts may be copied at will.
4. Breach of Confidence and Infringement of Copyright
Breach of trust or confidence is a broader right than proprietary right of copyright. There can
be no copyright of ideas or information and it is not infringement of copyright to adopt or
appropriate ideas of another or to publish information received from another, provided there is
no substantial copying of the form in which those ideas have, or that information has, been
previously embodies. But if the ideas or information have been acquired by a person under
such circumstances that it would be a breach of good faith to publish them and he has no just
case or excuses for doing so, the Court may grant injunction against him. The distinction
between the copyright and confidence may be of considerable importance with regard to
unpublished manuscripts/works submitted, and not accepted, for publication or use. Whereas
copyright protects material that has been reduced to permanent form, the general law of
confidence may protect either written or oral confidential communication. Copyright is good
against the world generally while confidence operates against those who receive information
or ideas in confidence. Copyright has a fixed statutory time limit which does not apply to
confidential information, though in practice application of confidence usually ceases when the
information or ideas becomes public knowledge. Further the obligation of confidence rests not
only on the original recipient, but also on any person who received the information with
knowledge acquired at the time or subsequently that it was originally given in confidence.5
In Urmi Juvekar Chiang v. Global Broadcast News Limited, the plaintiff claimed that her
concept note and production plan of the television programme “work in progress”, which was
disclosed in confidence to the Defendants and substantial part thereof has been reproduced and
adapted by the Defendants in their programme titled “Summer Showdown”(reality show on
citizens initiative to resolve civic problems).The Court observed that the similarities pointed
out by the Plaintiff are more striking. The dissimilarities pointed out by the Defendants are
trivial and insignificant to answer the point in issue. It is apparent that theme in the Plaintiffs
work in material form and substantial part thereof has been lifted and reproduced and adapted
in the work of the Defendants. Suffice it to observe that the impression after going through
both the works, viewed in the perception of an average viewer, is that, the Defendants work is
based or taken from the original work of the Plaintiff. The concept note was held to be an

3
https://spicyip.com/2008/01/are-indian-court-judgments.html visited on August 22, 2017.
4
18 USPQ 2d.1275.
5
Excerpts from Urmi Juvekar Chiang v. Global Broadcast News Limited, 2008 (36) PTC 377 (Bom).
original literary work and breach of confidential information with regards to concept note was
proved against the Defendant.
5. Doctrine of Fair dealing
Fair dealing is a user’s right in copyright law permitting use of, or “dealing” with, a
copyright protected work without permission or payment of copyright royalties. The
fair dealing exception in the Section 52 allows one to use other people’s copyright
protected material for the purposes of research, private study, education, satire, parody,
criticism, review or news reporting, provided that what you do with the work is ‘fair’.
If your purpose is criticism, review or news reporting, you must also mention the source
and author of the work for it to be fair dealing. Fair dealing requires that you only copy
‘as much of a work as is necessary for the purpose’ and copying ‘must not impact
on rightsholders’ legitimate exploitation of their work’. The defense of "fair
dealing" initially originated and emanated as a doctrine of equity which allows the use
of certain copyrightable works, which would otherwise have been prohibited and would
have amounted to infringement of copyright. The main idea behind this doctrine is to
prevent the stagnation of the growth of creativity for whose progress the law has been
designed. This doctrine is one of the most important aspects of Copyright Law which
draws a line between a legitimate, bonafide fair use of a work from a malafide blatant
copy of the work. This is the reason why this doctrine was explicitly enshrined in
Article 13 of the TRIPS which states- "Members shall confine limitations or exceptions
to exclusive rights to certain special cases which do not conflict with a normal
exploitation of the work and do not unreasonably prejudice the legitimate interests of
the right holder".6
The Indian and UK copyright laws regarding fair dealing are often characterized as very
limited and restrictive as they work in accordance with an exhaustive list of actions
which come under the scope of fair dealing. Whereas the US laws of "fair use" provide
a wide and open ambit for the fair users of a copyright work. While on one hand the
Indian and UK laws of fair dealing work strictly within the framework of the enlisted
actions which constitute fair dealing, the American laws of fair use is open for
interpretation and works with the help of only certain guiding factors which help in
determining the extent of "fairness" involved in the work.
In English case Hubbard v Vosper7, Lord Denning postulated, "It is impossible to
define what is "fair dealing". It must be a question of degree. You must first consider
the number and extent of the quotations and extracts.... then you must consider the use
made of them....Next, you must consider the proportions...other considerations may
come into mind also. But, after all is said and done, it is a matter of impression."
Syndicate of the Press of the University of Cambridge v. BD Bhandari8 suit was
pertaining to the Defendant’s guidebook alleged to be a substantial copy of the
plaintiff’s copyrighted textbook. The American four-factor test for “fair use” which is
adopted in this case is the following: a) purpose and character of the use b) nature of
the copyrighted work c) substantiality of the portion used in relation to the copyrighted
work as a whole and d) effect on the potential market regarding the value of the
copyrighted work. It is well settled that all the above said factors are to be treated
together and no undue preference can be given to any one of them. The Court concluded

6
Trade Related Intellectual Property Rights is one of the key multilateral agreement under the WTO.
7
(1972) 1 All ER 1023 p. 1027.
8
(CS (OS) 1274/2004. Judgment delivered by Justice Rajiv Sahai Endlaw.
 that the purpose and manner of the defendants’ guide books is different from that of the
text books. The defendants’ guide books which provided the step-by-step process of
reasoning is for the purpose of catering to the needs of weak students. Thus, the
defendants’ work was held to be “transformative” in character and it amounted to
“review” under Section 52 (1) (a) (ii) of the Copyright Act.

The Chancellor, Masters & Scholars of the University of Oxford & Ors. V. Rameshwari
Photocopy Services & Ors: A Case Note
In year 2012 the Oxford University Press, the Cambridge University Press and the Taylor &
Francis Group (“Plaintiff-Publishers”) filed suit for permanent injunction against infringement
of copyright in their publications by the University of Delhi (“Delhi University” or “Defendant
No. 2”) and a photocopy shop named Rameshwari Photocopy Service (“Defendant No. 1”)
operating in the University under a license from it, before the Delhi High Court.9 The Plaintiff-
Publishers alleged that the Defendants had been photocopying substantial excerpts from their
publications that were part of the prescribed syllabus and issuing/selling unauthorized
compilations of them in the form of course packs or anthologies, thereby infringing their
copyright in those publications under Section 51 read with Section 14 of the Copyright Act.
The single judge passed an interim injunction restraining the defendant from making or
selling course packs and also reproducing the plaintiff’s publication or substantial portion
thereof by compiling the same either in a book form or in the form of a course pack, till the
final disposal of the said application. The Delhi University preferred an appeal before the
Division Bench against the interim injunction which was rejected and it was told to file
application before the Single judge. Meanwhile, ASEAK (Association of Students for
Equitable Access to Knowledge) and SPEAK (Society for Promotion of Equitable Access to
Knowledge), a society of scholars and academics got impleaded as the third and fourth
defendants.
The case evoked wide support and interest amongst large sections of students, academics and
civil society expressing their concern regarding the implications on access to knowledge and
education in India. In an online petition started on Change.ORG, over 1,250 academics and
authors wrote in solidarity of free access for education.10
1. Single Judge Pronouncement

On September 16, 2016, Justice Rajiv Sahai Endlaw scripted a landmark judgment by
dismissing the entire suit of the plaintiffs. He concluded that the impugned actions of
the Defendants do not amount to copyright infringement under Section 52(1) (i) of the
Act, which provides that any reproduction of a copyrighted work by a teacher or pupil
in the course of instruction does not constitute copyright infringement.11The crux of the
judgment are as follows:-

9
http://www.scconline.com visited on 20 August 2017.
10
https://spicyip.com/resources-links/du-photocopy-case visited on 22 August 2017.
11
The Copyright Act, 1957.S.52. Certain acts not to be infringement of copyright. -(1) The following acts shall
not constitute an infringement of copyright, namely: (a) a fair dealing with a literary, dramatic, musical or artistic
work [not being a computer programme] for the purposes of- (i) private use, including research; (ii) criticism or
review, whether of that work or of any other work……………………….(h) the reproduction of a literary,
dramatic, musical or artistic work- (i) by a teacher or a pupil in the course of instruction; or (ii) as part of the
questions to be answered in an examination; or (iii) in answers to such questions; (i) the performance, in the course
of the activities of an educational institution, of a literary, dramatic or musical work by the staff and students of
the institution, or of a cinematograph film or a [sound recordings] if the audience is limited to such staff and
 I. Section 52 is to be interpreted as a narrow exception but a full-fledged defence
in favor of educational institutions and students. The judge opined Sections 14
and 51 on the one hand and Section 52 on the other hand are on the same footing,
therefore THE RIGHTS OF A COPYRIGHT OWNER AND ARE NOT TO
BE READ NARROWLY OR STRICTLY OR SO AS TO REDUCE THE
AMBIT OF SECTION 51.

ii. Section 52 (1) (i) is not restricted to individual teacher and student. This must
never have been the intention of the Statute at the first place. Teacher imparts
education today as part of the University, therefore when University on behalf
of teacher reproduces any copyrighted work by making photocopies, Sec.52 (1)
(i) would be applicable.
iii. The word “instruction” in section 52 (1) (i) is not limited to a lecture in the
classroom. Therefore, the scope of this provision is not limited to reproduction
of a work by a teacher in the course of a lecture but also includes reproduction
for the purpose of making and issuing course packs.12
iv. The imparting of instruction does not begin and end in the classroom or tutorials
only but extends beyond that and thus Section 52(1) (i) covers reproduction by
an educational institution during the entire academic session.
v. The judge reasoned if the reproduction of pages from the books by each of the
students, whether by way of photocopying, copying by hand or clicking
photographs, for his/her private use does not amount to copyright infringement
by virtue of Section 52(1) (a), the photocopying of the same work by the
University for the benefit of the students due to certain resource constraints
cannot be said to be infringement when the intended purpose is the same.
vi. When the making of course pack by Delhi University is not infringement under
the said provision then the same work assigned to an independent contractor
cannot be termed as infringement.
The plaintiff publishers filed an appeal before the Division Bench and prayed for
interim injunction which was refused.13 Indian Reprographic Rights Organization (IRRO) and
two publishers’ associations, namely, the Association of Publishers in India (API) and the
Federation of Indian Publishers (FIP) filed application for intervention and was allowed by the
Court.
2. Highlights of Division Bench Judgment

i. With regards to teaching and use of copyrighted material, the fairness in the use
can be determined on the touchstone of ‘extent justified by the purpose’. In other
words, the utilization of the copyrighted work would be a fair use to the extent
justified for purpose of education. It would have no concern with the extent of
the material used, both qualitative and quantitative. Section 52(1) (i) does not
have an express fair use limitation, only the general principle of fair use can be

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].
12
See Para 72 of the Single Bench Judgment.
13
Division Bench comprised of Justice Pradeep Nandrajog and Justice Yogesh Khanna of Delhi High Court.
 read into it. It rejected the application of the four factors used for determination
of fair use in other jurisdictions, especially the US, to this clause. The fair
dealing standard has been prescribed only in clause (a) of Section 52(1) and thus
cannot be imported into its other clauses including clause (i). It differed with
B.D. Bhandari’s case14 which held that a fair dealing standard was to be read
into all clauses of Section 52.
ii. The publishers argued that unauthorized making and distribution of course
packs has caused or is likely to cause an adverse impact on the market of their
books. Justice Nandrajog observed that a student is not a potential customer of
the multiple books used in the course packs and in the absence of course packs
he/she would refer to these books in the library. It further noted that instead, the
improved education could very well lead to an expansion of the market for these
books.
iii. The word ‘reproduction’, meaning ‘making a copy of’, includes its plural as
well i.e. making more than one copy of the original or photocopying. Similarly,
it held that the words ‘teacher’ and ‘student’ also include ‘teachers’ and
‘students’ and thus making of multiple copies of a work by teachers or students
is contemplated under this provision.
iv. The court acknowledged that teaching does not involve simple lecturing by the
teacher and taking of notes by the students in the classroom but an interactive
discussion based on the pre-reads etc. by the students that is regulated by the
teacher. The phrase ‘in the course of instruction’ included within its ambit
preparation and distribution of course packs to students.15
v. On the question of photocopy by an external agent court was of the view that it
is not practical to expect the teacher nor the pupil to purchase photocopier for
reproduction of the material in the classroom. Moreover, the photocopy agent
was not making any commercial profit apart from the nominal charge of
photocopy.
vi. The course packs were clearly made and distributed by the teachers and not the
University, therefore it clearly fell within the ambit of Sec.52 (1) (I). The main
job of University was to prescribe syllabi for the courses.
vii. The Court dismissed the appeal holding that Section 52(1) (I) permits
unauthorized preparation and distribution of course packs to students, if the
works included in the course packs are necessary for achieving the purpose of
educational instruction.

The Court remanded the suit to the trial court for factual determination of whether the
works included in the course packs in this case were necessary for achieving the
purpose of education instruction or not. By now, the suit had garnered wide support and
outcry from academic world all over. Surprisingly On March 9, 2017, the plaintiff-
publishers surprisingly withdrew the suit perhaps due to growing public support and
pressure for the cause. In April 2017, IRRO filed a Special Leave Petition before the

14
Syndicate of the Press of the University of Cambridge… v B.D. Bhandari & Anr (High Court of Delhi, 15
January 2009) judgment delivered by Justice Endlaw.
15
The Court relied on Longman Group Ltd. v. Carrington Technical Institute Board of Governors [(1991) 2 NZLR
574] wherein the words ‘in the course of instruction’ in Section 21(4) of the New Zealand Copyright Act, 1962
were interpreted to include “anything in the process of instruction with the process commencing at a time earlier
than the time of instruction, at least for a teacher, and ending at a time later, at least for a student. So long as the
copying forms part of and arises out of the course of instruction it would normally be in the course of instruction”.
 Supreme Court challenging the judgment passed by the Division Bench on December
9, 2016.It was rightly dismissed by the Hon’ble court.

Section 17 of Copyright Act, 1957

Subject to the provision of this Act, the author of a work shall be the first owner of the
copyright therein, in the absence of any agreement to the contrary.
Neetu Singh vs Rajiv Saumitra & Ors16
The plaintiff alleged that defendant No.1 in connivance with defendant No.2
(Paramount coaching centre) published its first lot of books under the title "English for
General Competitions - From Plinth to Paramount". There is no mention of any author
in the book. The book is verbatim copy of the plaintiff's book under identical title and
the graphic representations of two mountains has also been copied by the defendants in
toto with a slight colour variation. Admittedly the plaintiff was working as a Director
of defendant No.2 when the literary works were made from the year 2012 to 2014.
However the defendants have not placed on record any material to show that the literary
work was authored as a part of the duties and obligations of a Director of defendant
No.2. In this regard neither any agreement nor the articles or memorandum of
association of the company has been placed on record. In the absence of any terms and
condition describing that the literary work was also a part of the duties and obligations
of the plaintiff in her capacity as a Director of the defendant No.2, the plea of the
defendants based on the decision of the Supreme Court in Ram Pershad and V.T.
Thomas (supra) cannot be accepted.
Compulsory licence (Sects 31 & 31 A)

If the owner of copyright in the work has refused to re-publish or allow the re-
publication of the work or has refused to allow the performance in public of the work
because of which the work is withheld from the public, on terms which the complainant
considers reasonable.
In the case of any unpublished work or any work published or communicated to the
public and the work is withheld from the public in India, the author is dead or unknown
or cannot be traced, or the owner of the copyright in such work cannot be found, any
person may apply to the Copyright Board for a licence to publish or communicate to
the public such work or a translation thereof in any language.
In the case of Super Cassette Industries Ltd. Vs Entertainment Network (India) Ltd., the
Delhi High Court observed: "It is clearly incorporated in the language of this section
that the case of the complainant for grant of compulsory licence can be considered if
the work has been withheld from public and after giving reasonable opportunity to the
owner of the copyright, upon holding an, enquiry and, arriving at, the conclusion that
grounds of refusal are not reasonable. Once the copyright is in the public domain,
refusal has to be on reasonable and valid grounds." It has further observed: "The Board
while adjudicating the application for compulsory licence must also determine that the
parties before the Board have their competing commercial interest. The public interest
can only be safeguarded by the Board. This indeed is the main duty and obligation of
the Board, any decision which is taken by the Board must be taken while keeping larger

16 CS (COMM)935/2016.
 public interest in view. The Board has carefully maintained the balance between
creations of monopoly which is generally considered opposed to public interest and
protecting intellectual property rights as a measure to encourage creativity in the
respective fields."

Can there be copyright on advertising slogans or words?

The Delhi High Court in Pepsico Inc. v. Hindustan Coca Cola, the plaintiff had
registered the slogan “yeh dil mange more” under the Copyright Act, 1957. The plaintiff
argued, inter alia, that the use of the phrase by the defendant in their advertisements
violated the copyright of the plaintiff. The Court held that the advertising slogans were
prima facie not protectable under the copyright Act, 1957. They could be protected
under the law of passing off in case the plaintiff has made out a case. In other words,
there can be no copyright in word or words, but the right can only be in the artistic
manner in which it is written.

Non-voluntary licences (Compulsory licence and Statutory licence)

At the international level, the Berne Convention contains two compulsory licencing
provisions: Article 11 bis (2) relating to the broadcasting right and Article 13(1) relating
to the recording right. In both cases, three conditions are laid down: (i) the moral rights
of authors must be safeguarded; (ii) equitable remuneration must be provided for and
the amount of such remuneration must, in the absence of agreement, be fixed by
‘competent authority’ which may mean a government agency or a special tribunal; and
(iii) the compulsory licence must only be applicable in the country which has provided
for it in its national law and nowhere else (confined to only developing country). It is
confined to the exercise of two rights-the reproduction right and the translation right.17

Statutory licence is ‘a licence under which the protected works can be freely used on
condition that the user will pay a fee, fixed by the competent authority, to the body
designated by that authority and distributed in accordance with the rules established by
the latter.’
Compulsory licence, on the other hand, is ‘a licence requiring the copyright owner to
grant the necessary authorization without, however, depriving him of his right to
negotiate the terms of the authorization, with the proviso that the administrative or
judicial authorities (civil courts or special jurisdictions) would fix the amount of
remuneration if no amicable agreement can be reached between the parties.’ There is
an independent authority such as a Copyright Royalty Tribunal to decide such matters.18
Assignments & License
An assignment is a permanent transfer of one or all of the copyright rights, similar to
the sale of personal property. Assignments are normally more expensive because the
purchaser has total ownership and can resell or license the works themselves.

17
V.K. Ahuja, Law of Copyright and neighbouring rights National and International Perspectives, Lexis Nexis,
Second Edition (2015).
18
Ibid.
 A license is a temporary or limited transfer of certain copyright rights. It can be made
on an exclusive or non-exclusive basis, meaning the copyright owner can license the
work to more than one person at the same time. As a result, Licenses are more
economical ways for small businesses to use copyrighted content.

Abolition of Copyright Board

The Finance Act, 2017, the Annual Money Bill for the Financial Proposals by the Revenue
Department, Ministry of Finance, Government of India was passed by the Parliament and came
into force on April 01, 2017. As per the Statement of Objects and Reasons of the Copyright
Act, 1957, Copyright Board was set up with an object to determine reasonableness of rates or
royalties, consider applications for general licenses and assessment of compensation. Section
11 of the Copyright Act, until amended by the Finance Act 2017, provided for the constitution
of the Copyright Board with a Chairman and prescribed number of members. As per pre-
amendment Section 11, the Central Government was to appoint a Secretary and other officers
'as may be considered necessary for the efficient discharge of the functions of the Copyright
Board'. Section 72(1) of the Copyright Act, provided for an appeal against any order/decision
of Registrar of Copyrights to be preferred before the Copyright Board. The Copyright
Amendment Act of 2012 brought in amendments to Section 11 of the Copyright Act as well.
After the 2012 amendment, the Copyright Board was to consist of a Chairman and 2 members
as against a range of 2 to 14 members prescribed prior to the amendment. Although the
provision for constitution of a Copyright Board has been since the enactment of the 1957
statute, a permanent constitution of the Board was only announced1 in February 2014.

The Intellectual Property Appellate Board ("IPAB") was constituted on September 15, 2003 to
hear and adjudicate appeals against the decisions of the Registrar under the Indian Trade Marks
Act, 1999 and the Indian Geographical Indications of Goods (Registration and Protection) Act,
1999.The IPAB has since April 2, 2007 been extended to patent law and is now authorized to
hear and adjudicate upon appeals from most of the decisions, orders or directions made by the
Patent Controller. Also vide a notification, all pending appeals from the Indian High Courts
under the Patents Act were transferred to the IPAB from April 2, 2007. The IPAB has its
headquarters at Chennai and has sittings at Chennai, Mumbai, Delhi, Kolkata and
Ahmedabad.19

19
https://ipabindia.org/ last visited 8 October 2018.