using copyright works owned by others & infringement of copyright nift & wipo 21 st june...

Using Copyright works owned by Using Copyright works owned by others & others &

Infringement of CopyrightInfringement of CopyrightNIFT & WIPONIFT & WIPO

2121stst June 2005. June 2005.

Prathiba M.SinghPrathiba M.SinghSingh & Singh AdvocatesSingh & Singh [email protected]@vsnl.com

© 2005 singh & singh© 2005 singh & singh

COPYRIGHT - A GLOBAL RIGHTCOPYRIGHT - A GLOBAL RIGHT Right exists on Right exists on

creationcreation No registration is No registration is

neededneeded Protectible in all Protectible in all

Convention/WTO Convention/WTO countries.countries.

Almost 150 countries Almost 150 countries are coveredare covered

Reciprocal protection Reciprocal protection in all countriesin all countries

COPYRIGHTCOPYRIGHT

– Categories of Categories of copyrighted workscopyrighted works

literaryliterary artisticartistic musicalmusical DramaticDramatic Cinematograph Cinematograph

filmsfilms Sound RecordingsSound Recordings Broadcaster’s Broadcaster’s

rightsrights Performer’s RightsPerformer’s Rights

IntroductionIntroduction

I.I. COPYRIGHT:COPYRIGHT:

1.1.Artistic work: painting, drawing, sculpture, Artistic work: painting, drawing, sculpture, engraving, photograph, architectural work engraving, photograph, architectural work or any work of artistic craftsmanshipor any work of artistic craftsmanship

2.2.Broadcast: Any communication to the Broadcast: Any communication to the public by means of wireless diffusion public by means of wireless diffusion whether in signs, sounds or visual images whether in signs, sounds or visual images or by wire and includes a re-broadcastor by wire and includes a re-broadcast

CopyrightCopyright

3.3. Literary works: This is not an Literary works: This is not an exhaustive definition but an inclusive exhaustive definition but an inclusive definition. It includes computer definition. It includes computer programs, tables, compilations, programs, tables, compilations, databases. This category of works databases. This category of works shall also include all traditional shall also include all traditional literary works including books, literary works including books, journals etc.,journals etc.,

CopyrightCopyright

3.3. Musical works: Any work Musical works: Any work consisting of music and includes any consisting of music and includes any graphical notation of such work but graphical notation of such work but does not include any words or any does not include any words or any action intended to be sung, spoken action intended to be sung, spoken or performed with the music.or performed with the music.

4.4. Sound recording: Means a Sound recording: Means a recording of sounds from which recording of sounds from which sounds may be produced.sounds may be produced.

CopyrightCopyright

5.5. Cinematograph film:Cinematograph film:

Any work of visual recording produced Any work of visual recording produced through a process from which a moving through a process from which a moving image may be produced and includes a image may be produced and includes a sound recording accompanying such sound recording accompanying such visual recording.visual recording.

6.6. Government work: A work Government work: A work published by or under control of the published by or under control of the Government, Legislature or any Court, Government, Legislature or any Court, Tribunal or judicial authority.Tribunal or judicial authority.

CopyrightCopyright

7.7. Dramatic work: includes any piece Dramatic work: includes any piece of recitation, choreographic work or of recitation, choreographic work or entertainment in dumb show, scenic entertainment in dumb show, scenic arrangement or acting, form of which is arrangement or acting, form of which is fixed in writing or otherwise excluding a fixed in writing or otherwise excluding a cinematograph film.cinematograph film.

8.8. Performer includes an actor, Performer includes an actor, singer, musician, dancer, a person singer, musician, dancer, a person delivering a lecture or any person delivering a lecture or any person making any performance.making any performance.

CopyrightCopyright

““Computer” includes any electronic or Computer” includes any electronic or similar device having information similar device having information processing capabilities (added by processing capabilities (added by amendment in 1995)amendment in 1995)

““Duplicating equipment” means any Duplicating equipment” means any mechanical contrivance or device mechanical contrivance or device used or intended to be used for used or intended to be used for making copies of any work.making copies of any work.““Reprography” means the making of copies Reprography” means the making of copies of a work, by photocopying or similar meansof a work, by photocopying or similar means

CopyrightCopyright

““Publication means making a work Publication means making a work available to the public by means of available to the public by means of copies or by communicating the copies or by communicating the work to the public.”work to the public.”

But by a review of cases one can But by a review of cases one can see that protection against what is see that protection against what is contemplated under the new WIPO contemplated under the new WIPO treaty has already been granted by treaty has already been granted by judge-made law.judge-made law.

Examples of some worksExamples of some works Choreography: Choreography: is the art of is the art of

arranging designing of ballet or stage arranging designing of ballet or stage dance in symbolic language. It is a form dance in symbolic language. It is a form of dramatic work. In order to qualify for of dramatic work. In order to qualify for the copyright protection it must be the copyright protection it must be reduced into writing. reduced into writing.

Ballet:Ballet: The elements of ballet are the The elements of ballet are the music, the story, the choreography, the music, the story, the choreography, the scenery, and the costumes. It is thus a scenery, and the costumes. It is thus a composite work. Such work could be the composite work. Such work could be the subject matter of copyright.subject matter of copyright.

Examples of some worksExamples of some works Painting : Painting : is an artistic work whether is an artistic work whether

or not it posses any artistic quality . To or not it posses any artistic quality . To be entitled to copyright protection a be entitled to copyright protection a

painting must be original i.e. it should painting must be original i.e. it should originate from the painter and not a originate from the painter and not a

mere copy of another painting. A mere copy of another painting. A painting must be on a surface of some painting must be on a surface of some kind. Facial make-up as such, however kind. Facial make-up as such, however

idiosyncratic it must be an idea, cannot idiosyncratic it must be an idea, cannot possibly be a painting for the purpose of possibly be a painting for the purpose of

copyright act.copyright act.

ExamplesExamples

MERCANDISING MERCANDISING CORPORATION v CORPORATION v HARPBOND(1983) HARPBOND(1983) FSR 32 P, 32 FSR 32 P, 32 (Facial make-up (Facial make-up was not held a was not held a painting within the painting within the meaning of sec 3 meaning of sec 3 of the U.K. of the U.K. copyright act.)copyright act.)

ExamplesExamples Sculpture: Sculpture: is included in the definition of artistic work is included in the definition of artistic work

and the work of sculpture includes casts and models. and the work of sculpture includes casts and models. Sculpture means the art, act, process of carving Sculpture means the art, act, process of carving cutting, hewing, molding or constructing materials into cutting, hewing, molding or constructing materials into statutes , ornaments, figures The act, art, process of statutes , ornaments, figures The act, art, process of producing figures or groups in plastic or hard producing figures or groups in plastic or hard materials. The art of sculpture is the branch of the materials. The art of sculpture is the branch of the visual arts that is especially concerned with the visual arts that is especially concerned with the creation of expressive form in three dimensions. A creation of expressive form in three dimensions. A sculpture should in some way express in three sculpture should in some way express in three dimensional form an idea of the sculptor. NEW dimensional form an idea of the sculptor. NEW ENCYCLOPEDIA QUOTED IN WHAM-O CASE. ENCYCLOPEDIA QUOTED IN WHAM-O CASE. A Frisbee A Frisbee was a sculpture.was a sculpture.

Copyright subsists original sculpture. The creation Copyright subsists original sculpture. The creation of a sculpture no doubt involves good amount of skill of a sculpture no doubt involves good amount of skill and laborand labor

ExamplesExamples Works of artistic craftsmanship: Works of artistic craftsmanship: Copyright Copyright

subsists in original work of artistic craftsmanship subsists in original work of artistic craftsmanship The act does not define the term artistic The act does not define the term artistic craftsmanship.craftsmanship.

Prototype furniture: Prototype furniture: In GEORGE HENSHER v In GEORGE HENSHER v RESTAWILE UPHOLSTERY (1975) RPC 31 at p 54-RESTAWILE UPHOLSTERY (1975) RPC 31 at p 54-55 the HL held that a prototype of upholstered 55 the HL held that a prototype of upholstered chairs and settees which consisted of light frame chairs and settees which consisted of light frame with upholstery nailed with it so as to resemble a with upholstery nailed with it so as to resemble a chair not a work of artistic craftsmanship. The chair not a work of artistic craftsmanship. The respondent copied the chair and thus the respondent copied the chair and thus the prototype as well. In the action of infringement prototype as well. In the action of infringement the injunction was refused the injunction was refused

TERM OF COPYRIGHTTERM OF COPYRIGHT The term of copyright The term of copyright

– for literary, dramatic musical or artistic work for literary, dramatic musical or artistic work is lifetime of author + 60 years is lifetime of author + 60 years

– for anonymous or pseudonymous work is 60 for anonymous or pseudonymous work is 60 years from the date of publishingyears from the date of publishing

– for a photograph, sound recording, for a photograph, sound recording, cinematographic film and government work cinematographic film and government work is 60 years from date of publishing of the is 60 years from date of publishing of the workwork

INFRINGEMENT OF COPYRIGHTINFRINGEMENT OF COPYRIGHT

What constitutes infringement?What constitutes infringement?– Doing or authorizing to do any of the Doing or authorizing to do any of the

following acts without the consent or license following acts without the consent or license of owner of copyright:of owner of copyright:

reproduce the work including its storage by any reproduce the work including its storage by any electronic meanselectronic means

issue copies to the publicissue copies to the public perform/communicate the work to publicperform/communicate the work to public make translation of the workmake translation of the work make adaptation of the workmake adaptation of the work To make any cinematograph film or sound To make any cinematograph film or sound

recording in respect of the work.recording in respect of the work.

INFRINGEMENT OF COPYRIGHTINFRINGEMENT OF COPYRIGHT

permit for profit any place to be used for permit for profit any place to be used for communication of the work when communication of the work when infringementinfringement

To permit for profit any place to be used for To permit for profit any place to be used for the communication constitutes infringement the communication constitutes infringement of the copyright in the work unless he is not of the copyright in the work unless he is not aware or has reasonable grounds for aware or has reasonable grounds for believing that such communication to the believing that such communication to the public will be an infringement of copyright public will be an infringement of copyright

make infringing copies of work for sale, hire make infringing copies of work for sale, hire or display or offer for sale or hireor display or offer for sale or hire

import infringing copies in India import infringing copies in India

Types of copyright in one workTypes of copyright in one work

BOOKS:BOOKS:

1.1. Rights of the authorRights of the author

2.2. Rights of the publisherRights of the publisher

in India and abroadin India and abroad

3.3. Rights of a person Rights of a person publishing the book on publishing the book on CD Rom/multimedia CD Rom/multimedia formatformat

4.4. Rights on the InternetRights on the Internet


MUSIC:MUSIC:

1.1.Right of lyricistRight of lyricist

2.2.Music directorMusic director

3.3.SingerSinger

4.4.OrchestraOrchestra

5.5.Music company Music company

6.6.Version recordingsVersion recordings


MachineryMachinery

This can be sub-This can be sub-matter of patent & matter of patent & copyright. But copyright. But drawings of drawings of machinery falls in machinery falls in copyright. copyright.

Escorts Escorts Construction case.Construction case.


PEPSI CANPEPSI CAN

1.1.Copyright in the Copyright in the packaging, colours packaging, colours etc.etc.

2.2.Trade mark in PepsiTrade mark in Pepsi

3.3.Copyright in circular Copyright in circular devicedevice

4.4.Copyright in manner Copyright in manner of writing Pepsiof writing Pepsi

Adaptations of various worksAdaptations of various works

MUSIC -- SONGSMUSIC -- SONGS Original albumOriginal album New albumsNew albums RemixesRemixes Version Version

RecordingsRecordings Pop versionsPop versions DJ versionsDJ versions


STORYSTORY PUBLISHED IN A PUBLISHED IN A

BOOKBOOK STORY ENACTED STORY ENACTED

IN A DRAMAIN A DRAMA TRANSLATIONTRANSLATION TELE-SERIALTELE-SERIAL CINEMATOGRAPH CINEMATOGRAPH

FILMFILM

Adaptations of various worksAdaptations of various works STORYSTORY OPERA/BALLETOPERA/BALLET MUSICAL VERSIONMUSICAL VERSION COMPILATIONCOMPILATION

Each of the above Each of the above works, once works, once created have a created have a separate, new separate, new copyright, copyright, protectable as protectable as original works.original works.


POEMSPOEMS SONGSSONGS SOUND SOUND

RECORDINGSRECORDINGS PERFORMANCESPERFORMANCES POETRY BOOKSPOETRY BOOKS COMPILATIONS OF COMPILATIONS OF

POETRY, including POETRY, including expert commentsexpert comments


PAINTINGSPAINTINGS Licensing as covers Licensing as covers

for booksfor books Licensing on stampsLicensing on stamps Create new versions Create new versions

by changing the by changing the sizes of the paintingsizes of the painting

CalendarsCalendars Diaries etc.,Diaries etc.,

Exceptions-fair useExceptions-fair use

Section 52 of the Copyright Act enlists Section 52 of the Copyright Act enlists acts which do not constitute acts which do not constitute infringement, viz.infringement, viz.– Fair dealing for the purpose of private use, Fair dealing for the purpose of private use,

including research and criticism or review including research and criticism or review of the work.of the work.

– Fair dealing for the purpose of reporting Fair dealing for the purpose of reporting current events in a newspaper, etc.current events in a newspaper, etc.

– reproduction for the purpose of judicial reproduction for the purpose of judicial proceeding or report of judicial proceeding.proceeding or report of judicial proceeding.

Exceptions-fair useExceptions-fair use

– Making of temporary or back-up copies Making of temporary or back-up copies to provide against destruction or to provide against destruction or damagedamage

– Observation, study or testing of Observation, study or testing of functioning of the computer programmefunctioning of the computer programme

– making of copies of software from a making of copies of software from a legal copy for non-commercial personal legal copy for non-commercial personal useuse

Fair Dealing Fair Dealing Fair dealing is permitted for the purposes of Fair dealing is permitted for the purposes of

– private study or research ,private study or research ,– criticism or criticism or – review or review or – the reporting of current events. the reporting of current events.

Fair dealing with the literary, dramatic, musical or artistic Fair dealing with the literary, dramatic, musical or artistic work for the purposes of research or private study does work for the purposes of research or private study does not infringe any copyright in the work, or in the case of a not infringe any copyright in the work, or in the case of a published edition, in the typographical arrangement. The published edition, in the typographical arrangement. The aim of this provision is to give students and researchers aim of this provision is to give students and researchers greater access to copyright works. greater access to copyright works.

Making a maximum of 3 copies for the use of a public Making a maximum of 3 copies for the use of a public library. library. SEC 52(1)(o)SEC 52(1)(o)

Fair Dealing or Permitted ActsFair Dealing or Permitted Acts

Case law:Case law: University of London Press v University of London Press v University Tutorial Press(1916)2 ch 601,p 613University Tutorial Press(1916)2 ch 601,p 613

Publication of a collection of examination Publication of a collection of examination papers with answers for the private study of papers with answers for the private study of students would not be fair dealing of students would not be fair dealing of examination papers and would constitute examination papers and would constitute infringement of its copyright.infringement of its copyright.

No acknowledgement is required in connection No acknowledgement is required in connection with the reporting of current events by means with the reporting of current events by means of a sound recording film, broadcast or cable of a sound recording film, broadcast or cable program. program. SEC 52(1)(b)SEC 52(1)(b)

Fair Dealing or Permitted ActsFair Dealing or Permitted Acts Sec 52(1)(c)Sec 52(1)(c) Reproduction for judicial Reproduction for judicial

proceedings or for the purpose of a report proceedings or for the purpose of a report of a judicial proceeding. ‘Judicial of a judicial proceeding. ‘Judicial proceedings’ are defined as including proceedings’ are defined as including proceedings before any court, tribunal, or proceedings before any court, tribunal, or person having authority to decide any person having authority to decide any matter affecting a person’s legal rights or matter affecting a person’s legal rights or liabilities. liabilities.

Reproduction in newspaper and magazine Reproduction in newspaper and magazine of the article of the current economic, of the article of the current economic, political, social or religious topic in certain political, social or religious topic in certain situation. situation. SEC 52 (1)(m)SEC 52 (1)(m)

Fair Dealing or Permitted ActsFair Dealing or Permitted Acts Reproduction of unpublished work kept in a museum or Reproduction of unpublished work kept in a museum or

library for the purpose of research or study. library for the purpose of research or study. SEC 52(1)(p)SEC 52(1)(p)

Reproduction in any work prepared for the exclusive use of Reproduction in any work prepared for the exclusive use of members of any legislature or publication of a translation of members of any legislature or publication of a translation of acts of legislature or rules acts of legislature or rules Sec 52(1)(d)Sec 52(1)(d)

Reproduction by a teacher or a pupil in the course of Reproduction by a teacher or a pupil in the course of instruction, or as part of a question paper or in answers to instruction, or as part of a question paper or in answers to such questions. such questions. Sec 52(1)(h) Sec 52(1)(h) e.g. It seems that the e.g. It seems that the teacher may copy onto a blackboard a substantial part of a teacher may copy onto a blackboard a substantial part of a literary work, and pupil may copy it down. The teacher may literary work, and pupil may copy it down. The teacher may however not photocopy the same material for the use by however not photocopy the same material for the use by students in absence of a licensing agreement.students in absence of a licensing agreement.

Fair Dealing or Permitted ActsFair Dealing or Permitted Acts Reading and recitation in public of Reading and recitation in public of

extracts(literary or dramatic).extracts(literary or dramatic).SEC 52(1)(f)SEC 52(1)(f) Publication in collection for the use of educational Publication in collection for the use of educational

institution in certain circumstances. institution in certain circumstances. SEC 52 (1)SEC 52 (1)(g)(g)

Performance in course of activities of educational Performance in course of activities of educational institutions in certain circumstances. institutions in certain circumstances. Sec 52(1)Sec 52(1)(I)(I)

WORK OF ARCHITECTURE: SEC 52(1)(s)WORK OF ARCHITECTURE: SEC 52(1)(s) The making or publishing of a painting ,drawing, The making or publishing of a painting ,drawing,

engraving or photograph of a work of architecture engraving or photograph of a work of architecture does not constitute infringement. does not constitute infringement.


WORK OF ARTISTIC CRAFTSMANSHIP: WORK OF ARTISTIC CRAFTSMANSHIP: SEC 52(1)(t)SEC 52(1)(t)

The making or publishing of a painting, The making or publishing of a painting, drawing, engraving, or photograph of a drawing, engraving, or photograph of a sculpture, or other artistic work falling sculpture, or other artistic work falling under the category of a work of artistic under the category of a work of artistic craftsmanship if the work is permanently craftsmanship if the work is permanently situate in a public place or any premises to situate in a public place or any premises to which the public has access will not which the public has access will not constitute infringementconstitute infringement..

Fair Dealing or Permitted ActsFair Dealing or Permitted Acts AUTHOR’S RIGHT TO USE MOULD, CAST etc. OF AUTHOR’S RIGHT TO USE MOULD, CAST etc. OF

WORK: SEC 52 (1)(v)WORK: SEC 52 (1)(v)

The author of an artistic work may not be the owner of the The author of an artistic work may not be the owner of the copyright thereof for it might have been assigned to copyright thereof for it might have been assigned to somebody or the author might have made the work in the somebody or the author might have made the work in the course of employment under a contract of service. In such course of employment under a contract of service. In such cases the author can however ,use any mould, cast, sketch, cases the author can however ,use any mould, cast, sketch, plan, model or study made by him for the purpose of work. plan, model or study made by him for the purpose of work. but by such use he should not thereby repeat or imitate the but by such use he should not thereby repeat or imitate the main design of the work. This will be a rather difficult main design of the work. This will be a rather difficult provision to apply in practice. It may not be easy to provision to apply in practice. It may not be easy to determine what is the main design of the work on which determine what is the main design of the work on which opinion may differ. Since there is no copyright in the ideas a opinion may differ. Since there is no copyright in the ideas a creative artist may be able to reproduce substantially the creative artist may be able to reproduce substantially the original work made by him without copying the original.original work made by him without copying the original.


The exceptions to infringement listed The exceptions to infringement listed under s. 52(1) in relation to literary, under s. 52(1) in relation to literary, or dramatic, musical artistic work will or dramatic, musical artistic work will apply also in relation to any apply also in relation to any translation or adaptation of such translation or adaptation of such work work SEC 52(2)SEC 52(2)

Whether registration is Whether registration is essential?essential?

Particulars needed for registration:Particulars needed for registration:

1.1. Name of authorName of author

2.2. Date of publicationDate of publication

3.3. Whether assignments are Whether assignments are obtainedobtained

4.4. If it is an artistic work, then no-If it is an artistic work, then no-objection from Trade Marks Registryobjection from Trade Marks Registry

Whether registration is Whether registration is essential?essential?

Advantages of registration:Advantages of registration:

1.1.Documentation comes in place in terms of Documentation comes in place in terms of assignments/no-objections from authorsassignments/no-objections from authors

2.2.Evidence of date when the work was Evidence of date when the work was createdcreated

3.3.Prima facie evidence of particularsPrima facie evidence of particulars

4.4.Easier to take action especially criminal Easier to take action especially criminal action where police are convinced with action where police are convinced with copyright certificate. (re:software, music)copyright certificate. (re:software, music)

RemediesRemedies

Civil remedyCivil remedy

A suit for infringement of A suit for infringement of copyright can lie in the copyright can lie in the District Court or in a District Court or in a High Court of Original High Court of Original Jurisdiction.Jurisdiction.

Remedies contd.,Remedies contd.,

Civil remedyCivil remedy

Reliefs to be claimed:Reliefs to be claimed:

1. Injunction coupled with 1. Injunction coupled with Anton Piller orders, Anton Piller orders, John Doe orders & John Doe orders & Mareva injunctionMareva injunction

2.2.Rendition of accounts, Rendition of accounts, damagesdamages

3.3.Delivery UpDelivery Up

Remedies contdRemedies contd

Criminal:Criminal:

Copyright infringement is a Copyright infringement is a cognisable offence. A criminal cognisable offence. A criminal complaint can be filed either complaint can be filed either before the police or a before the police or a Magistrate and search & Magistrate and search & seizure orders can be seizure orders can be obtained.obtained.

Pros & Cons of Civil remediesPros & Cons of Civil remedies

PROSPROS Proper judicial Proper judicial

determination of determination of rightsrights

Likelihood of earning Likelihood of earning damagesdamages

Less subject to Less subject to challengechallenge

Commissioner’s Commissioner’s seizure orders are seizure orders are more respectedmore respected

CONSCONS Delays - Trial, Delays - Trial,

Appeal, Supreme Appeal, Supreme CourtCourt

Damages not Damages not usually awardedusually awarded

No severe No severe punishment for punishment for violation of rightsviolation of rights

Pros & Cons-Criminal remediesPros & Cons-Criminal remedies

PROSPROS

Quick remedyQuick remedy

Greater possibility of Greater possibility of curbing violation quickly curbing violation quickly because of fear of being because of fear of being arrested in a criminal arrested in a criminal casecase

CONSCONS

Chances of seizure of Chances of seizure of goods may be less as goods may be less as there can be a leakagethere can be a leakage

Difficulty in Difficulty in coordinating with police coordinating with police authoritiesauthorities

CRIMINAL REMEDIESCRIMINAL REMEDIES

Section 63 of the Copyright Act,1957 Section 63 of the Copyright Act,1957 defines offence of infringement of defines offence of infringement of copyright.copyright.

Infringement of copyright is a Infringement of copyright is a cognizable offence punishable with cognizable offence punishable with imprisonment upto 3 years and fine imprisonment upto 3 years and fine upto 2 lakh rupeesupto 2 lakh rupees

RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455SPINCERS DRESS DESIGN Ltd.(1975) FSR 455

Pltf & def Pltf & def manufacture ladies manufacture ladies clothing.clothing.

CR claimed in 3 CR claimed in 3 stages of Manuf. stages of Manuf. Procedure viz., Procedure viz.,

- design sketches, - design sketches, - cutting patterns - cutting patterns - prototype garments- prototype garments


Def arguedDef argued– Prototype is not work of Prototype is not work of

artis.crtms.artis.crtms.– No one author is involvedNo one author is involved– Cutting patterns are Cutting patterns are

functionalfunctional– One of the sketches was One of the sketches was

copied from earlier dresscopied from earlier dress– Dress could not reproduce Dress could not reproduce

a sketcha sketch– Stiffness was to be given Stiffness was to be given

otherwise it is not a dressotherwise it is not a dress– DelayDelay


Court Held:Court Held:– It is work of A.CIt is work of A.C– Need not unite with Need not unite with

one authorone author– Dress can be a 3 Dress can be a 3

dimensional dimensional reprodn of a sketchreprodn of a sketch

– Huge diff between Huge diff between the earlier dress the earlier dress and new one, hence and new one, hence pltf work is originalpltf work is original

BRIGID FOLEY Ltd. v ELLOT BRIGID FOLEY Ltd. v ELLOT (1982) RPC 433(1982) RPC 433

It has been observed It has been observed that if there is a direct that if there is a direct copying from a copying from a garment which one garment which one person has designed person has designed and produced by and produced by himself, doing all the himself, doing all the cutting , stitching, and cutting , stitching, and so on, there might be so on, there might be a case for saying that a case for saying that there would be a there would be a breach of doing that.breach of doing that.

BERNSTEIN v SYDNEY BERNSTEIN v SYDNEY MURRAY(1981) RPC 303MURRAY(1981) RPC 303

The plaintiffs were owners of The plaintiffs were owners of copyright in certain sketches copyright in certain sketches for ladies’ garments in which for ladies’ garments in which the garments were shown as the garments were shown as worn by ladies. They had worn by ladies. They had displayed garments made displayed garments made from such sketches in fashion from such sketches in fashion shows and shop windows. shows and shop windows. Defendants have copied the Defendants have copied the dresses produced from dresses produced from plaintiff’s sketches. It was plaintiff’s sketches. It was held that this constituted held that this constituted infringement of copyright in infringement of copyright in sketches. sketches.

BURKE and MARGOT BURKE Ltd. v BURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS SPINCERS DRESS DESIGNS

(1936) CH D 400(1936) CH D 400 The plaintiff’s alleged that The plaintiff’s alleged that

defendants had infringed the defendants had infringed the copyright in the sketch copyright in the sketch described as “ frock being described as “ frock being worn by a young lady ” It was worn by a young lady ” It was also alleged that there was also alleged that there was infringement of artistic infringement of artistic copyrights in dresses made copyrights in dresses made up by the plaintiff’s in up by the plaintiff’s in accordance with those accordance with those sketches, which dress sketches, which dress themselves were said to be themselves were said to be works of artistic works of artistic craftsmanship It was held that craftsmanship It was held that thee was no infringement of a thee was no infringement of a sketch by a frock. sketch by a frock.

In MERLET v MOTHERCARE Ltd In MERLET v MOTHERCARE Ltd (1984) FSR 358 (1986) RPC 115(1984) FSR 358 (1986) RPC 115

The plaintiff made a prototype The plaintiff made a prototype baby cape for her child. baby cape for her child.

The cape was subsequently The cape was subsequently manufactured by the second manufactured by the second plaintiff. plaintiff.

The defendants copied the The defendants copied the plaintiff’s garments and made plaintiff’s garments and made baby cape in accordance with baby cape in accordance with the copy. the copy.

The plaintiff claiming the The plaintiff claiming the handmade prototype garment handmade prototype garment as a work of crafsmanship it as a work of crafsmanship it was not a work of artistic was not a work of artistic craftsmanship brought an craftsmanship brought an action for infringement of action for infringement of copyright. copyright.

In MERLET v MOTHERCARE Ltd In MERLET v MOTHERCARE Ltd (1984) FSR 358 (1986) RPC 115(1984) FSR 358 (1986) RPC 115

It was held that though the It was held that though the prototype was a work of prototype was a work of craftsmanship it was not a craftsmanship it was not a work of artistic work of artistic craftsmanship. craftsmanship.

It was held that in It was held that in approaching the question approaching the question the garment has to be the garment has to be considered by itself and considered by itself and neither as worn nor as neither as worn nor as containing a baby. containing a baby.

No aesthetic satisfaction No aesthetic satisfaction unless worn on the babyunless worn on the baby

Action was dismissed. An Action was dismissed. An appeal against appeal against infringement of certain infringement of certain drawings was dismissed. drawings was dismissed.

KOMESAROFF v MICKLE (1988) KOMESAROFF v MICKLE (1988) RPC 204 at 210 ( Australian case )RPC 204 at 210 ( Australian case )

A product called A product called (moving sand (moving sand pictures) comprising a pictures) comprising a mixture of liquid, mixture of liquid, colored sands, and a colored sands, and a layer of air bubbles layer of air bubbles encased within two encased within two glass panels was held glass panels was held not a work of artistic not a work of artistic craftsmanship.craftsmanship.

They are functional – They are functional – not regd designnot regd design

OVERLAP OF DESIGN, OVERLAP OF DESIGN,

COPYRIGHT & COPYRIGHT &

TRADE MARKTRADE MARK

Design is for aesthetic appearance. Design is for aesthetic appearance. Anything functional is not registrable as a Anything functional is not registrable as a designdesign

Copyright in a design comes to an end if the Copyright in a design comes to an end if the work has industrial application and is work has industrial application and is reproduced more than 50 timesreproduced more than 50 times

Que: Is there diff. between copyright in a Que: Is there diff. between copyright in a design and copyright in a drawing.design and copyright in a drawing.

Yes. One judgement of Delhi High Court.Yes. One judgement of Delhi High Court.

Confusion is worse with Trade mark Confusion is worse with Trade mark definition being amendeddefinition being amended

Shape is also a trade mark – But Shape is also a trade mark – But articles like dresses, sculpture etc., articles like dresses, sculpture etc., cannot come in trade marks.cannot come in trade marks.

However commercial products have However commercial products have more overlaps in protection.more overlaps in protection.

DesignsDesigns DesignDesign As per Copinger and Skone James on ©, a design is, As per Copinger and Skone James on ©, a design is,

inbroad terms, the plan or scheme for the inbroad terms, the plan or scheme for the appearance of an article (or a part of an article). appearance of an article (or a part of an article).

It primarily concerns with what an article looks like or It primarily concerns with what an article looks like or is intended to look like. is intended to look like.

It is not concerned with how an article performs its It is not concerned with how an article performs its functionfunction. The design of an article may be recorded in . The design of an article may be recorded in any form including the written description, sketch, any form including the written description, sketch, drawing, photograph or it could actually be embodied drawing, photograph or it could actually be embodied in the article itself. “Design” has also been defined as in the article itself. “Design” has also been defined as the design of any aspect of the shape or the design of any aspect of the shape or configuration (whether internal or external) of the configuration (whether internal or external) of the whole or part of an articlewhole or part of an article[1][1]..

[1][1] Copinger & Skone James on ©, 15th Edn., Vol. 1, Copinger & Skone James on ©, 15th Edn., Vol. 1, pg. 730pg. 730

Infringement Infringement Infringement in the context of Indian Textiles, Infringement in the context of Indian Textiles,

Apparels and Life Style Industry:Apparels and Life Style Industry: Indian Textiles:Indian Textiles: If artistic patterns are drawn up on a piece of cloth If artistic patterns are drawn up on a piece of cloth

to be used for any purpose, including but not limited to be used for any purpose, including but not limited to for instance, making of garments, bed sheets, to for instance, making of garments, bed sheets, sofa covers, table cloths, etc., then the artistic sofa covers, table cloths, etc., then the artistic patterns printed on the piece of cloth are protected patterns printed on the piece of cloth are protected as copyrights.as copyrights.

On the other hand, if a designer of clothes creates a On the other hand, if a designer of clothes creates a new pattern of garment to be used as a fashionable new pattern of garment to be used as a fashionable attire, then the sketch/ drawing that is drawn of the attire, then the sketch/ drawing that is drawn of the pattern of the garment is protected as a copyright.pattern of the garment is protected as a copyright.

Infringement Infringement However, once the idea of the creative pattern is However, once the idea of the creative pattern is

implemented on the piece of cloth, then the same implemented on the piece of cloth, then the same may be protected as a design right. may be protected as a design right.

If, the intention of the designer is to ensure that If, the intention of the designer is to ensure that only one piece of the garment is manufactured, then only one piece of the garment is manufactured, then the same could also be protected as the artistic work the same could also be protected as the artistic work imprinted on the piece of cloth having copyrights. imprinted on the piece of cloth having copyrights.

Alternatively, if the designer’s intention is to Alternatively, if the designer’s intention is to produce several thousands of garments in different produce several thousands of garments in different scheme of colours, etc., then the intention of the scheme of colours, etc., then the intention of the designer is to use the said design in the industry. designer is to use the said design in the industry. Accordingly, the latter form of use of the same Accordingly, the latter form of use of the same material may be considered to be a design.material may be considered to be a design.

There is an ongoing debate on the issue and a lot There is an ongoing debate on the issue and a lot depends on the manner, in which the author of the depends on the manner, in which the author of the work intends to use the work.work intends to use the work.

Ford Motor Co.1993 RPC 399Ford Motor Co.1993 RPC 399 Vehicle parts are not Vehicle parts are not

subject matter of subject matter of design becos’ they design becos’ they have no value in have no value in commerce except as commerce except as part of a vehiclepart of a vehicle

Mirrors, seats, etc., Mirrors, seats, etc., were capable of were capable of registration as registration as substitution was substitution was possible without possible without affecting shape of the affecting shape of the vehicle.vehicle.

The distinction that The distinction that seems to have been seems to have been drawn is that there are drawn is that there are several parts which several parts which are mostly hidden and are mostly hidden and never seen, such parts never seen, such parts cannot be registered cannot be registered as designs.as designs.

However, parts and However, parts and their circuits if in their circuits if in drawing form are drawing form are artistic worksartistic works

Escorts Construction Escorts Construction

George Hensher Ltd s. Restawile George Hensher Ltd s. Restawile Upholstery 1975 RPC 31Upholstery 1975 RPC 31

Upholstered chairs & settees. Upholstered chairs & settees. One prototype was evolved – chairs were copied One prototype was evolved – chairs were copied

from it and soldfrom it and sold Def. copied the chairs and hence the prototypeDef. copied the chairs and hence the prototype Trial Court granted injn. Appeal court dismissed Trial Court granted injn. Appeal court dismissed

the injn. HL refused protectionthe injn. HL refused protection

George Hensher Ltd s. Restawile George Hensher Ltd s. Restawile Upholstery 1975 RPC 31Upholstery 1975 RPC 31

Artistic craftsmanship need not necessarily Artistic craftsmanship need not necessarily mean “work of art”.mean “work of art”.

The product may be a commercial success The product may be a commercial success but need not be of Art.craftsmanshipbut need not be of Art.craftsmanship

Merchandising Corpn Vs. Merchandising Corpn Vs. Harpbond 1983 FSR 32Harpbond 1983 FSR 32

Adam from the pop group Adam Adam from the pop group Adam & Ants& Ants

New look for himself with Red-New look for himself with Red-Indian face markingsIndian face markings

Two red lines in grease paint, Two red lines in grease paint, light blue line in between, heart light blue line in between, heart over left eyebrow & a beauty over left eyebrow & a beauty spotspot

Def. made a poster of it & made Def. made a poster of it & made a portrait & superimposed new a portrait & superimposed new look over an old posterlook over an old poster

In infringement action Ct held In infringement action Ct held that this is not a painting and that this is not a painting and hence not protectable.hence not protectable.

Animal Fair Inc., Vs. Amfesco Inds Animal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985)227 USPQ 817 (1985)

Novelty slippersNovelty slippers Resembles a bear’s foot or Resembles a bear’s foot or

pawpaw Slipper’s design features Slipper’s design features

separate from its utilitarian separate from its utilitarian features, incl. impractical features, incl. impractical width of sole, shape of width of sole, shape of sole, profile of slipper, toes sole, profile of slipper, toes which are unrelated to which are unrelated to function and copyrightable.function and copyrightable.

Injunction granted.Injunction granted.

Faber Castell Vs. PikpenFaber Castell Vs. Pikpen2003 PTC 5382003 PTC 538

Faber Castell “Textliner”.Faber Castell “Textliner”. A dark green bodyA dark green body Unique cap of same colour Unique cap of same colour

as colour of inkas colour of ink Gold lettering on green Gold lettering on green

bodybodyRegd design. Regd design. Prior Publication could be Prior Publication could be

through prior documents or through prior documents or some other prior user.some other prior user.

Injunction grantedInjunction granted

Hello Mineral Vs. Thermoking Hello Mineral Vs. Thermoking CaliforniaCalifornia

Design of water Design of water coolers/ dispenserscoolers/ dispensers

Cylindrical shape is no Cylindrical shape is no noveltynovelty

Colour combination Colour combination should be changedshould be changed

Preeti Gupta Vs. Rajendra Preeti Gupta Vs. Rajendra Prahladkar 2002 PTC 64Prahladkar 2002 PTC 64

Design of photoframesDesign of photoframes Registered designRegistered design Defendant no.2 was an Defendant no.2 was an

employee of plaintiffemployee of plaintiff Injunction granted Injunction granted

protecting the protecting the copyright in the design copyright in the design of photoframesof photoframes

Samsonite Vs. Vijay SalesSamsonite Vs. Vijay Sales1998 PTC 3721998 PTC 372

Suitcases made by pltf Suitcases made by pltf copied by defendantcopied by defendant

The entire range was The entire range was copiedcopied

Claim was based on Claim was based on drawings & copyrightdrawings & copyright

No registered designNo registered design No protection granted as it No protection granted as it

is manufactured is manufactured industrially more than 50 industrially more than 50 times.times.

Karamchand Vs. Godrej Sara LeeKaramchand Vs. Godrej Sara Lee

Judgement of May 2005 Judgement of May 2005 ALL OUT VS. GOOD KNIGHTALL OUT VS. GOOD KNIGHT A commercial was telecast showing a A commercial was telecast showing a

product of ALL OUT and calling it “15 product of ALL OUT and calling it “15 saal purani technology” The lady saal purani technology” The lady plugs ALL OUT apparatus and plugs plugs ALL OUT apparatus and plugs in the Good Knight Turbo Apparatus.in the Good Knight Turbo Apparatus.

ALL OUT VS. GOODKNIGHTALL OUT VS. GOODKNIGHT

ALL OUT ALL OUT APPARATUS APPARATUS

Infringement of Infringement of copyright in an copyright in an apparatusapparatus

DisparagementDisparagement Unfair CompetitionUnfair Competition

ALL OUT VS. GOODKNIGHTALL OUT VS. GOODKNIGHT Good Knight showed an Good Knight showed an

actress using a plasma tv, actress using a plasma tv, lap top etc., and other lap top etc., and other modern gadgets. The modern gadgets. The background was LATEST, background was LATEST, LATEST, LATEST.LATEST, LATEST.

So when you are using So when you are using latest, why are you using latest, why are you using 15 year old technology of 15 year old technology of All Out.All Out.

Use Good Knight Turbo Use Good Knight Turbo refill.refill.

Court injuncted the Court injuncted the commercial.commercial.

CONCLUSIONCONCLUSION

Technological advancement made Technological advancement made the job of the creator easythe job of the creator easy

………………it also made the job of the it also made the job of the copy-er easy.copy-er easy.

Consciousness in IPR is the only way Consciousness in IPR is the only way to prevent the latter.to prevent the latter.