Anda di halaman 1dari 22

Constitutionality

 Art 1 Sec 8 Cl 8 of US Constitution


 Current US law—Digital Millennium Copyright Act, 1998 (in line with Berne
Convention and WCT and WPPT]
 Harper and Row v Nation (US SC 1985)
Gerald Ford had written a memoir which included why he pardoned Nixon. P/f had
publication rts. D/f published 300-400 words verbatim w/o permission. D/f asserted
that since Ford and Nixon were public figures, the appropriation should be protected
under fair use.
Issue: Is quoting a public figure’s unpublished work on public events fair use?
Held No public figure exception to fair use rule bcz
o Purpose of character of use was to make Nation magazine money
o The info and facts get less CR protection but Ford’s expression regarding
descriptions and portraits of public figures is protected
o Amount was small but it was a substantial portion of the work
o Effect of use on potential market was that Time Inc cancelled their publication
of excerpts
o The Court also held that there is no conflict b/w CR and free expression
 Eldred v Ashcroft (US SC 2003)
The Copyright Term Extension Act (CTEA) extended existing CR terms by 20 years.
This law affected both old and new works. This prevented a lot of stuff from entering
the public domain. P/fs contended this violated the CR Clause in the Constitution and
Freedom of Speech. The Govt said Congress can extend terms as long as it is for a ltd
time.
Held: The Court upheld the CTEA. Congress can extend CR retroactively because it
has done so many times before. Humans live longer now so the protection should be
for longer. As long as it is not forever, it is constitutional.

Idea Expression Dichotomy


 17 USC 102(b)—CR protection not extended to any idea, procedure, process, system,
method of operation, concept, principle or discovery regardless of the form in which it
is described, explained, illustrated or embodied in the work
 Article 9(2) of the TRIPS Agreement also talks about not protecting ideas
 Indian law doesn’t expressly exclude ideas but the SC in R.G. Anand laid down certain
principles which said as much
1. Baker v. Selden (US SC 1879)

S CRed a book in which he explained his accounting system and the forms that could
be used. B began selling forms with different arrangements to achieve the same result.
Can forms be CRed?
Issue: Does CR protection for a book prevent others from using the forms or systems
incidentally used?

Held: No. CR protection for a book explaining a system extends only to the author’s
unique explanation of it and does not prevent others from using the system or forms
incidentally used. The table is just a methodology. Similarly, diagrams in books are
also not protected.
2. Donoghue v. Allied Newspapers (1937 UK)
Aseries of articles was published in a New of the World newspaper about the
experiences of a jockey Donoghue in the world of horse racing. D was interviewed by
a professional journalist Felstead. Permission had been taken from D before publishing
all articles. F used condensed parts from different articles and published them as a
different series in a different newspaper. D had not consented to this so he sued.
Issue: Is D a co-author of this work?
Held: There is no CR in ideas. If a person has a brilliant idea and he tells it to an author,
the production which is the result of the communication of the idea to the author is the
copyright of the person who has clothed the idea in a form, and the owner of the idea
has no rights in the product.
D essentially provided F the ideas for his articles which were then conveyed through
F’s expression. The language used in the articles was accepted to being that of F’s and
not D’s even though some of the articles contained dialogue taken arguably verbatim
from D’s recollections. The Court said although D influenced the substance of the work,
the language (and vocabulary) used was F’s so he is the author. This gave him the
authority to assign his rights to someone else for reproduction.
 Where an author is dictating to a stenographer, author will have CR—Diff b/w
expression and fixation—task of stenographer is fixation
3. Najma Heptullah v. Orient Longman (Delhi HC 1989)
Maulana Azad wrote India Wins Freedom with Prof. Humayun’s help. MA had dictated
and given notes and out of that material H had composed a book which had been
approved by MA. Due to the personal nature of some content, MA wanted it to only be
published 30 yrs after his death. In 1988, when the pages were going to published, MA’s
heirs (P/f) said OL has no right to publish bcz the agreement it has with H is invalid.
MA is the sole author of the book. NH contended the CR rests with MA’s heirs who
have not consented. OL argued using Donoghue that H was the author or, alternatively,
the co-author of the book.
Held: MA and H were joint authors as they were labouring jointly under a common
design. It’s not necessary that both authors put in the same amount of work. There was
a reconverted joint design b/w MA and H. MA, as can be seen by MA having written
the preface, knew what H was writing in the book as he had made alterations, additions
and corrections to it. And, as there was a letter which proved consent had been taken
from MA’s heirs, OL had the right to publish the book.
 After a press conference, a reporter reproduces a comment by a celeb in his article
which he then publishes—Reporter has CR over article unless the celeb can prove
editorial control—Other reporters at that press conference can also use that quote—
form of expression is what matters
4. R.G. Anand v. Delux Films (1978 SC)
P/f wrote and directed a play “Hum Hindustani.” It revolved around a love story and
points out the evils of provincialism. D/f made a movie called “New Delhi.” While the
theme was similar, the detailed facts of the movie were different.
IED becomes imp in these cases bcz while ideas can’t be infringed, the tangible
expression of the idea can. However, if there is literal or substantial copying which is
proven by the similarities in details, a case for infringement can hold good.
Issue: Has the d/f adopted the idea of the CRed work or has he also adopted manner,
arrangement, etc literally with minor changes?
Held: The movie and play explore the similar theme of provincialism but the movie
also explored other themes. Details of the movie were different, which made the movie
a different expression of a similar idea. Any overlap due to similarity is not literal or
substantial copying. The case was dismissed.
The court summarized the law on idea expression dichotomy and CR infringement
in the following way:
a. No CR in idea, subject matter, theme, plot or historical and legendary facts—
Violation here is confined to form, manner, arrangement and expression of the idea
by the author of the CRed work
b. When the same idea is developed in a different manner, there are bound to be some
similarities. Here, the copying needs to be substantial and material to be considered
infringement
c. Test: Does the reader/spectator/viewer after having seen both works get a clear and
unmistakable impression that the later work is a copy of the original?
d. Where the same theme is presented and treated differently in a way that the later
work is a new work, there is no CR infringement.
e. Where, apart from the similarities, there are also material and broad dissimilarities
which negate the intention to copy, then the similarities are purely incidental
f. For violation to amount to piracy, clear and cogent evidence needs to be shown.
The totality of the impression gotten by the viewer needs to be taken into account.
5. Anil Gupta v. Kunal Das Gupta (Del HC 2002)
P/f contests that he had discussed the concept of a reality matchmaking TV show titled
“Swayamvar” with the D/f. P/f said he gave a detailed confidential concept note to the
D/f which was customary practice in the industry. D/f then launched a show called
“Shubh Vivah” which was based on the same concept as “Swayanvar.” D/f argued that
the concept was merely an idea of a traditional method of marriage which was well
known in the public domain.
Held: Idea per se has no CR but if the idea is developed into a concept fledged with
adequate details, it can be protected under the CRA. [P/f’s thing was regd under the
CRA]. There was novelty and innovation in the p/f’s combining the idea of swayamvar
and a reality TV show.
The Court referred to the parameters laid down in R.G. Anand and tried to see if the
similarities are material and substantial. There was and thus the d/fs were barred from
airing the show for four months since the date of the order.
6. Zee Telefilms v. Sundial Communications (Bom HC 2003)
P/f prepared the pilot of a serial called Kanhaiya. The concept, as regd, was based on a
family where Kanhaiya (who is an avatar of Lord Krishna) appears as a child and
provides joy to the family with his antics. This pilot was shown to the d/f, and the name
of the show was altered. No deal was reached. Later, the p/f found out the d/fs were
airing a similar show with the altered title. The main difference was p/f’s protagonist
was a boy, and the d/f’s is a girl.
Held: The HC applied R.G. Anand and said ideas of dysfunctional families, Lord
Krishna and gods helping such families are very common and not protected. However,
in this case, the p/f had developed the idea into a concept and shot a serial, which was
expression and thus entitled to CR protection. Since the d/f’s serial was materially
similar with only cosmetic changes, it was CR infringement.
Springboard Doctrine: Something has been constructed from ideas solely in the
public domain may still gain confidentiality protection if skill and ingenuity have been
applied to it to create something novel.
7. Barbara Taylor Bradford v. Sahara Media Entertainment (Cal HC 2003)
P/f filed a suit claiming Cr of her book ‘Woman of Substance’ was being infringed by
the d/f’s show ‘Karishma - A Miracle of Destiny’
Issue: Is it infringement if the serial has taken a theme from a book?
Held: No. There can be no infringement if the d/f hasn’t read the book. CR infringement
cannot be estd on the basis of an interview of one of the d/fs where he stated he had
borrowed only the plot and some characters in the serial from the book.

Functionality
1. Mazer v. Stein (US SC 1954)
M created several original sculptures shaped as humans. The sculptures were used to
produce casts that would allow M to mass produce copies of sculptures, which were
then sold as either fully configured lamp bases or statuettes. After the sale commenced,
M regd the sculptures in the CR office as an artistic work. The sculptures submitted
didn’t have any lamp components. S obtained a few of the statuettes and copied the
design for their own products.
Issue: Whether an ornamental object which also has utility be subject to CR protection?
Held: In the event that a work has both aesthetic and utility factors, applying the
doctrine of separability only the aesthetic aspect of the work will be entitled to CR
protection. Consequently, in cases where the aesthetic aspects cannot be divorced from
the utilitarian aspects, the work is not entitled to CR protection.

Doctrine of Merger
 When the idea and its expression are inseparable, CRing an expression in such circs
would confer a monopoly of the idea on the CR owner, taking the idea itself out of
public domain. Thus, in instances where there are only one or few forms of expression
of the idea, the idea cannot be protected under CR law.
1. Morrissey v. Procter and Gamble (1st Cir US 1967)
M CRed the rules it had used in sweepstakes contest regarding the contestants’ SSNs.
While conducting a similar competition, P&G used a very similar rule. When M
brought a suit for infringement, the District Court said the contest itself is nonCRable
so the rule springing from it also had no original creative authorship and was
nonCRable.
Issue: If a rule incidental to the operation of a nonCRable contest conveys info so
simple that there are only a ltd no of ways in which it can be expressed, can the rule be
CRed?
Held: No. The Court relied on Baker v. Selden. Certain types of expressions are
nonCRable like utilitarian forms.
2. Kenrick v. Lawrence (UK 1890)
K held the CR in a drawing of a hand, holding a pencil, and drawing a check-mark into
a box. The drawing was used on voter cards to help the illiterate vote. L produced a
card with a similar but not identical drawing.
Issue: Does K have a CR over the drawing?
Held: It is a simple operation which must be performed by every person who votes. K
has no exclusive right to this operation.
3. Herbert Rosenthal Jewellery Corp v. Kalpakian (9th Circuit 1971)
P/f alleged that the d/f’s product infringed his CR registration of a pin in the shape of a
bee formed of gold and encrusted with jewels. D/f said the design was original.
Held: The idea or the expression of making a bejewelled bee pin can’t be CRed. There
are only a ltd no of ways to make a bejewelled pin look like a bee so any subsequent
design would resemble the p/f’s. This would result in the p/f being the only person
allowed to make pins in the shape of a bee.
4. Kay Berry v. Taylor Gifts Inc (3rd Circuit 2005)
K manufactured, designed and sold “Garden Accent Rocks,” which were decorative
outdoor sculptures resembling rocks, inscribed with poems. K got the entire collection
CRed. K’s Sculpture No 646 was a rock with a verse inscribed on its face containing
five lines, with each word inscribed in a right-leaning font and the first half of each
word capitalized. TG began selling a “Memory Stone” with the same verse displayed
in the same manner.
Held: Sculpture No 646 was an individually recognizable element of a single work and
thus protected by CR. Selecting an inspirational poem from the public domain, adapting
it to make it visually and rhythmically appealing, and casting it on its own sculptural
work was sufficiently creative to qualify for CR protection. So, the structure would be
protected.
However, K’s sculpture did not embody an expression that was inseparable from the
underlying idea. The Court followed the reasoning in Herbert Rosenthal and said that
where there are very few ways to express an idea, the burden of proof on the p/f alleging
infringement is very high.
5. Delrina Corp v. Triolet Systems (Canada CA 2002) [Copyright in Software]
D sued T and the designer BD for infringing its CR of the computer program SysView
by designing a similar software called Assess.
Held: If there is only one or a very limited number of ways to achieve a particular result
in a computer program, to hold that such way or ways are protected by CR could grant
a monopoly on the idea or the function itself.

Originality
 The work in question must be an independent creative product of the author.
1. Walter v. Lane (UK HOL 1900)
Sweat of the brow doctrine
The Earl of Rosebery delivered public speeches on issues of public interest. The
reporters of The Times took down the speeches in shorthand and later transcribed them,
adding punctuation, correction and revisions to reproduce the speeches verbatim, which
were then published in The Times. The reporters were employed under the terms that
that the CR in all reports and articles written by them would vest in the proprietors of
the The Times. L published a book which contained a report of these speeches and he
admitted that he took them from The Times. W sued saying the CR for this vests with
The Times.
Issue: Whether a person who makes notes on a public speech, transcribes them and
publishes them verbatim in his newspaper report is an author?
Held: Reporter has CR on the report bcz it is made from his own notes and observations
even though the content is public.
The Court laid down 3 requirements for originality under sweat of brow doctrine:
o The work should be in permanent form
o The work should not be a mere copy
o There should be a degree of independent skill, labour and judgement

However, in this case, the book was a copy of the report so no skill or labour was
involved. Thus, this book is a CR violation.
2. Millar v. Taylor (UK HOL 1769)—not the current position, just mentioned in
notes
Held: Publishers had a perpetual common law right to publish a work for which they
have acquired the rights. Thus, no amount of time would cause the work to enter the
public domain. When the rights granted by the statute expire, the publisher would still
be left with common law rights. This would still not extinguish the public domain bvz
there would still be works unaffected by the ruling and public domain extends to
unprotected elements in protected works. Overturned in 1774 by Donaldson v. Beckett.
3. University of London Press v. University Tutorial Press (UK 1916)
Two examiners were appointed to set a matriculation paper on the condition that CR in
the exam papers would vest in the University. The University assigned this right to
ULP. After the exam, UTP issued a publication containing some exam paper with
criticisms on them and answers to the questions.
Issue: Are exam papers ‘literary works’? If yes, are they original?
Held: ‘Literary work’ covers work which is in print or has been expressed in writing,
irrespective of quality or style. The exam paper required exercising independent skill,
labour and judgment and thus ‘literary works.’
Originality in CR does not mean a novel thought. The expression must be in a novel
form and must not be copied directly from another work. Examiners showed the notes
they used to set questions, so they are ‘original’ within the meaning of the Act. Applied
the sweat of the brow doctrine.
4. Feist Publication v. Rural Telephone Service Co (US SC 1991)
R prints a telephone directory. F wanted to publish an area wide directory so it asked
phone cos for info. Everyone but R gave them info. F used some info from R’s directory
nonetheless, which was found out when F’s directory had the same fake names as were
present in R’s directory.
Issue: Whether CR in R’s directory protects the info copied by F
Held: 3 elements need to exist for a compilation to be CRable:
o Collection and assembly of pre-existing facts, materials and data
o Selection, coordination and arrangement of this data
o Creation, by virtue of the selection and arrangement, of an original work of
authorship

The raw data used by R is not CRable. Alphabetical arrangement is not protected as it
is not original. So, F’s actions do not constitute infringement.

5. CCH Canadian Ltd v. Law Society of Upper Canada (Canada SC 2004)


LSUC had a law library offering both custom and self-serve photocopy services. CCH
sued for CR infringement in 11 specific works and wanted a permanent injunction
against any further copying. LSUC files a counterclaim saying there was no
infringement. It either provided a single copy for research purposes or it allowed its
patrons to use the self-serve photocopies
Issue: Are publishers’ materials original works protected by CR? Was LSUC allowing
infringement by letting its patrons use self-serve photocopiers?
Held: Publisher has CR over Headnotes, Case Summaries and Topical Index because
creating these requires exercise of independent skill, labour and judgment. Similarly,
reporting judicial decisions was original because some skill and judgment was involved
in the selection and arrangement of the different elements. LSUC did not authorize
infringement just by merely providing equipment that could be used for infringement.
Ultimately, the photocopying was justified under fair dealing.
For a work to be original, it must be more than a mere copy of another work. At
the same time, it need not be creative, in the sense of being novel or unique. To get
CR protection in your expression, what is required is exercise of skill and
judgment. This exercise cannot be purely mechanical and should include some
intellectual effort of the author.
Rejected sweat of the brow and minimum creativity tests
 Judgments are copyrightable but since they will be classified as a Govt work, govt will
be the owner of the CR [S.17(d) CRA]. However, S. 52(1)(q)(iv) says copying a
judgment is not a CR violation
 UK—shift in approach from ‘skill and labour’ test
6. SAS Institute Inc v. World Programming Ltd (ECJ 2009)
Creative expression by author is also required (But aren’t you bringing novelty
requirements for patents?)—However, two recent judgments have gone back to ‘seat of
brow’ theory
 Harmonization in EU—Emerging std consists of
o Independent creation
o Work reflects author’s personality
o Free and creative choices
 Australia—Shift from ‘expenditure of substantial labour’ (no creativity reqd) to
creativity test
 Ker HC case—Cutting of head and body Gandhi’s photograph and arranging in reverse
position—minimal amount of skill and labour—entitled to CR protection
7. Macmillan v. K. And J. Cooper (Bom HC Privy Council 1923)
CR over a work arises and subsists in that work due to the skill and labour spent on that
work, rather than creative thoughts.
8. Govindan v. Gopalakrishna (Mad HC 1955)
Issue: Can a Tamil-English dictionary be plagiarised?
Held:A high level of creativity is not required but there is a lot of exercise of skill and
judgment—Dictionaries are entitled to CR protection—The d/f had copied the book
verbatim, including the errors so it was infringement
9. Eastern Book Co v. D.B. Modak (SC 2008)
EBC publishes judgments in SCC. Cases are procured from the SC register. The
judgments are copyedited and there are several changes that are made as well
(formatting, para nos). The headnotes are prepared by EBC. DBM has created a
software which has copied the whole module from SCC onto a CD.
Issue: What is the standard or originality required in a derivative work for it to get CR
protection? Will the whole copy-edited judgment be protected or just the inputs?
Held: For a derivative work to be protected, it has to be shown that it is more than just
a mere copy and some independent skill, labour and judgment has been exercised in
making it. There’s needs to be a ‘flavour of minimum requirement of
creativity.’[minimal level of creativity]. All the inputs made by EBC will be protected.
10. Mattel Inc v. Jayant Agarwal (Del HC 2008)
Issue: Can rules and game board of ‘Scrabble’ be entitled to CR protection?
Held: No CR protection for ideas and facts. Rules are not deemed to be inventions
under the Patents Act. And the game board would not constitute an artistic work under
the CRA to be eligible for protection.
Fixation
 CR necessary to disseminate ideas, but to disseminate, you first need to fix expression
in a way that others can perceive and build upon
 Art 2(1) of Berne Convention says CR exists in all artistic and literary works whatever
be their mode and form of expression
 S. 102 US CR Law—Work will only get CR protection once its fixed
 UK position—work need not be fixed by or under the permission of the author to gain
CR protection
1. Tate v. Fulbrook (UK 1908)
Issue: Is the subject matter of a dramatic work’s CR just the play or does it also protect
scenic effects and physical accessories? F argued that since these can’t be fixed, they
can’t be the subject matter of CR
Held: CR in a dramatic work protects only that which is printed or published.
Accessories like scenery, stage props and makeup are not protected.
2. Estate of Hemingway v. Random House (US 1966)
Author and Hemingway were good friends and A recorded their conversations which
he later used to publish a book.
Issue: Are the conversations subject to a common law CR even though the speaker
himself has not reduced the words in writing?
Held: You can’t CR speech because it would harm freedom of press (can’t take perm
from everyone) but that doesn’t give ppl the freedom to publish things that are said in
pvt. In such conversations, it is difficult to decide the extent of CR each person would
enjoy. If H had left a note or mentioned it in the recording that he wished to exercise
control on publication, he would have CR. But if there is no indication, we assume an
implied license to publish the work.

Literary Works
 Covers anything that is written, irrespective of quality or style
 S. 2(o) of the CRA—Literary works also covers computer programs, tables and
compilations
 University London Press case—Exam papers are literary works
1. Hollinrake v. Truswell [UK 1894]
H wanted CR on a cardboard sleeve which had scales. Figures and descriptive words
for adapting the sleeve into any dimension
Issue: Could this be called a literary work?
Held: To be a literary work, it needs to give either info or instruction, or some pleasure
in the form of literary enjoyment. It needs to be able to any intelligible meaning. So,
even stuff like shorthand, Braille and telegraphic code will be protected. But this sleeve
is not protected because it doesn’t fulfil any of the criteria.
2. Burlington Home Shopping v. Rajnish Chibber (Del HC 1995)
BHS was a mail order service company which published catalogues which were posted
to a select list of their clients. RC used to be an employee of BHS and is now a
competitor in the mail order shopping business using BHS’s database.
Issue: Whethera database consisting of a compilation of mailing addresses of
customers can be called a literary work for CR purposes
Held: Summarized position in 4 points:
a. A compilation derived from a common source could be a literary work
b. A similar compilation will not automatically infringe just because it follows
the same pattern
c. Whether the impugned work is a colourable imitation is a question of fact
to be determined from the circs of the case
d. Determining factor is to see whether it is a slavish imitation and copy or if
the author has applied his own labour and effort

BHS’s compilation can be protected by CR. The striking similarities in both databases
could only have existed because RS used BHS’s database. Strong prima facie case.

3. Exxon Corp v. Exxon Insurance Consultants (UK 1981)


EIC used Exxon as their own corporate name and TM. EC sued for CR infringement.
Held: EC had authorship over the word Exxon. But since the word provides no info or
instruction or literary enjoyment, it is not a literary work.

Titles as Literary Works


 There needs to be no intent to create an original work to claim CR—Title is not a part
of the composition. But if it’s shown that the title is used to induce the public to believe
that it is integrated with the work itself it will get protection. [e.g. Prestige logo and
artistic representation]
1. Krishika Lulla v. S.V. Devkatta
D had authored a story called Desi Boys, which he had regd with the Film Writers Assn.
Said K’s use of the title Desi Boyz infringed his CR.
Issue: Can the title of a literary work be the subject matter of CR?
Held: No, title by itself is insufficient and is only used to refer to the literary work that
follows.
 If a title is followed by a byline, it might be CRed. Title can also be protected by TM if
distinctive. [e.g. Sholay, Gabbar have been TMed]
2. Newspaper Licensing Agency v. Meltwater (UK 2010)
P/f newspapers complained of the spidering of websites and the redistribution of the
material collected by the d/f to its subscribers. M said they don’t need a license for this.
Issue: Is there a CR in headlines?
Held: You do need a license. Headlines are literary works independent of the article
because it involves skill to make them entertaining. Only test for protecting a headline
is: Is this original?
3. Pandiyan Arivali v. Kamal Hassan (Mad HC 1994)
P regd title of unpublished book. K says making a movie with the same title.
Issue: Is an unpublished title entitled to CR protection?
Held: No CR in title since it’s only a descriptive term. You can show that title is
associated with a literary work and if someone else uses that title it would be misleading
the public about the work itself. Then you can claim CR protection [but passing off
would work better here]

Translation
1. Blackwood and Sons v. A.N. Parasuraman (Mad HC 1959)
D/f published translations of Tagore’s works after more than 10 years since it had been
published so they contended that the exclusive right of the author to assign translation
rts was lost and others were free to translate these works. [Provisions of the 1914 CRA
apply
Held: Rejected. If translation done within 10 yrs with author’s perm then CR rest with
author and permitted translator. If the translation is done after 10 yrs, the CR will vest
in the translator because it will be treated as an original work.
 If you translate a work that is in public domain, you will have CR on the translation
because it is an original creative expression.
 Abridgement—substance is the same but form changes—separate CR protection.

Artistic Works
 S. 2(c) of CRA defines artistic works
1. Lebbeus Woods v. Universal City Studios (US 1996)
W created a detailed drawing [chair mounted on a wall with a sphere suspended in front
of the chair] which was published in a German catalog in 1987 and in the US in 1992.
UCS had used this design in their movie 12 Monkeys without his permission as a 3D
representation
Held: Infringement.
2. George Hensher v. Restawile Upholstery (UK 1974)
Furniture arranged in such a way that it would be ‘boat-shaped.’
Issue: Does this constitute an artistic work?
Held: 5 separate opinions: Ultimately said it is not an artistic work
o Lord Reid—Look at intention of the maker. A substantial part of the public must
think this work is artistic. Here GH was just trying to sell sofas so this is not an
artistic work.
o Lord Morris—You can set a minimum std for what could be considered artistic.
We could look at expert opinions.
o Viscount Dillhorne—To be an artistic work it must be a one-off which is not
mass-produced
o Lord Simon—Artistic merit of the work is irrelevant. See if it is a work of
artistic craftsmanship and NOT an artistic work of craftsmanship. However,
intent of the creator is crucial.
o Lord Kilbrandon—Look at conscious intention of the craftsman.
3. Merlet v. Mothercare (UK 1986)
P/f designed a prototype of a baby’s cape for her own child which was later mass
produced. D/f copied that design.
Issue: Is the cape an artistic work?
Held: To be considered a work of artistic craftsmanship, the item needs to be
considered for itself and not as worn by a baby. While it was a work of craftsmanship,
it was not a work of artistic craftsmanship because the viewer got no aesthetic pleasure
from it and the creator made it to protect her child.
4. Bonz Group v. Cooke (NZ 1994)
If two or more people combine to design and make the ultimate product, it will be a
work of artistic craftsmanship—there must be a common design to create that work for
CR to exist [UK Court in 1936 said no artistic craftsmanship in woman’s dress bcz
artistic element did not originate from the creator]
Dramatic Works
 Section 2(h) of CRA—different from a literary work because it is capable of being
performed—includes choreographic and scenic arrangements fixed in writing—but
does not include a cinematograph film
 CDPA, 1988 of UK doesn’t define a dramatic work but it has long been understood to
mean a work of action, with or without words or music, which is capable of being
performed before an audience
1. Academy of General Education v. B. Malini Mallya [SC 2009]
BMM claimed CR through a Will over the seven verses of a dance form as the Will had
left her with all the literary works of the testator
Issue: Is it a literary work or a dramatic work?
Held: CR wrt performance of dance would not come within the purview of literary
work. It would be a dramatic work. A literary work can also be a dramatic work [S.14
CRA vests equal rts in both]
2. Hughie Green v. Broadcasting Corp of New Zealand (NZ PC 1989)
HG compered a TV show in the UK. Tried to prevent BCNZ from broadcasting an
adaptation of this show by saying CR existed in the dramatic format. Some segments
were directly lifted from the UK show.
Issue: Is it CR infringement?
Held: In the absence of precise evidence in the form of scripts, it can only be seen as
the general idea of a game contest, which would not be protected. Format was also not
protected even though some elements were similar in both shows because they could
not be combined to form a unified dramatic work capable of protection. Cited Tate v.
Fulbrook.
3. Banner Universal Motion Pictures v. Endemol Shine [UK 2017]
B said he had disclosed his idea of a TV show to E who used it to make another show.
He had recorded the format and sent it to E as an unsolicited email attachment.
Issue: Since B’s show was never produced, is the format of a TV show granted separate
protection under CR?
Held: B’s thing was rejected but the Court held that it is possible for a game show
format to acquire CR protection as a dramatic work even though it contains various
spontaneous elements which change every episode.
4. Norowzian v. Arks (UK 2000)
N made a film of one man dancing to music. The film was edited using a technique to
create the illusion that the dancer performed physically impossible movements. D/f
used this idea to advertise his product. While the film he made was significantly
different, the editing technique used was the same.
Issue: Is the editing technique used in the film entitled to CR protection as a dramatic
work?
Held: To be a dramatic work, it has to be capable of being physically performed. The
editing technique has created an illusion of the physically impossible movements
happening but the film was not a recording of any dramatic work. The originality in a
filmmaker’s art cannot be protected by CR.
5. Fortune Films International v. Dev Anand (Bom HC 1978)
Issue: Is the performance of a cine artist in a film protected as an artistic work or
dramatic work or that of a cinematograph film?
Held: It’s not an artistic work or a dramatic work. Since cinematograph film has been
specifically excluded from the definition, actor has no CR protection. His performance
is part of the film and he has no individual rts over it.
 Later Performer’s Rights were inserted in the CRA through the 1994 Amendment
[S.38]
6. Institute for Inner Studies v. Charlotte Anderson (Del HC 2011)
Philippines based IIS claimed CR and TM protection over techniques of Pranic Healing
and the phrase “Pranic Healing” respectively. They possessed CR in compilations in
the form of books, CDs and trade material on Pranic Healing. IIS claimed protection
for Pranic Healing as a dramatic work.
Trademark: “Pranic Healing” was first mentioned in a book in 1906 so it’s now in
public domain. It is a generic term and lacks distinctiveness. Held, in favour of CA.
Copyright: CR can exist over selection, arrangement and compilation but the Yogic
technique has been around since time immemorial. Not a dramatic work, they are daily
routine exercises—no fixation of performance as well—too simple. [Same as the
Bikram Yoga judgment in the US]

Musical Works
1. Campbell v. Acuff-Rose Music (US SC 1994)
C owned the CR to Oh Pretty Woman. A prepared an alleged parody without
permission, with rap lyrics and substantial differences, but plainly used the original
melody and a few of the lyrics.
Held: The transformative character of the work made it fair use.
2. Bright Tunes Music v. Harrisongs (US 1976)
BTM had CR on song He’s So Fine. George Harrison composed a song My Sweet Lord
while subconsciously keeping the tune of BTM’s song in his mind.
Issue: Is subconscious copying CR infringement?
Held: GH was an infringer even if the copying is merely subconscious. Intention is
unnecessary for the purposes of infringement.
3. Sulamangalam Jayalakshmi v. Meta Musicals (Mad HC 2000)
SJ composed music and tune for devotional song and assigned rights.
Issue: Whether CR for devotional songs can be claimed
Held: Musical work as defined in the CRA only covers music and its graphical notation.
CR of lyrics will vest with the composer.

Characters as Copyrightable Expressions


1. Nichols v. Universal Picture Corp (US 1930)
N wrote a play about a marriage b/w a Jewish boy and a Catholic girl. UPC made a
movie on the same theme.
Held: Neither the plot nor the characters of the play were infringed. Judge Hand said
extent of development of character is a crucial factor in deciding whether it can be CRed
Distinct delineation test—The more a character is developed, there is a more distinct,
definite and protectable image or expression he embodies as opposed to merely being
an idea
2. Warner Bros v. Columbia Broadcasting (US 1954)
Maltese Falcon by Dashiell Hammett and the protagonist Sam Spade. Rts belonged to
WB to use in movies, radio or TV. DH wrote new works with the character Sam Spade.
WB contended rts include rt to characters. DH said rts transferred are only those
specifically mentioned in instrument and not exclusive rt over characters.
Held: We know detective writers continually use characters in successive works. If
intention was to surrender character rts, it would be specifically mentioned. Even
amount taken was not indicative of such.
Test of characters as the vehicle of the story—Built through hard work and
imagination of author. Implicitly transferring them would be too restrictive
3. Walt Disney Productions v. Air Pirates (US 1978)
Disney characters used in AP’s works portrayed as active members of a free-thinking,
promiscuous, drug-ingesting counterculture.
Held: Combined both tests. Disney characters had a distinct personality that could be
protected separate from the story since they are the vehicles (driving force) of the story.
4. Raja Pocket Books v. Radha Pocket Books (Del HC 1997)
Raja’s comics were based on a character, Nagaraj, who dressed in green and wore a
belt designed like a snake. The series substantially revolved around the character to the
extent that he was entitled to separate CR. Radha’s protagonist was Nagesh, who had a
similar appearance character and origin.
Held: Standard of reasonably intelligent customer. People would think they were the
same.
5. Leslie S. Klinger v. Conan Doyle Estate (US 2014)
ACD published his Sherlock Holmes stories from 1887-1927. Due to the CR Term
Extension Act, American CR on these stories is till 2022. CR on other 46 stories and 4
novels had expired and put them in the public domain. LSK edited a Sherlock Holmes
anthology for which he paid ACD’s estate a 5000 USD license fee. LSK wanted a
sequel to which the Estate objected.
Held: LSK can use the 50 works which are already in the public domain. Court rejected
the argument that CR on complex characters like Sherlock and Watson, whose full
complexity is not revealed until a later story, remains under CR until the last work falls
into public domain. It would amount to near-perpetual CR which would be
unconstitutional.

Derivative Works
1. Redwood Music v. Chappell (UK 1982)
Under the Berne Convention a derivative work may have CR without affecting the CR
in the underlying work. A derivative work will have CR even if it infringes the CR
of the underlying work.
Some of the arrangements of RM’s musical works had not been authorized by the CR
owner of the source work. So, C said such works have no CR.
Held: The statute only seeks to protect an original work, it doesn’t say it has to be
lawful. The owner of the original CR cannot be entitled to reap the benefits of another’s
original work.
 In India, Section 16 of CRA gives someone a CR only if they obtain it through the Act.
The Act only gives CR of derivative work to the original author. Thus, the author of the
derivative work would not have CR since he violated the provisions of the Act.

Authorship and Ownership


 S. 2(d) of CRA defines author
o Literary/dramatic work—writer
o Musical work—composer
o Artistic work—artist
o Photograph—photographer
o Cinematographic film or sound recording—Producer (Because you can’t ID
one particular person whose creative output the film is. Since the producer takes
the initiative to bring together everyone, he has CR. In Europe, director and
producer are joint authors)
o Computer generated work—the software is developed by one person but the
system is operated by someone else to get the output—creator of software will
have CR in software—Creator of the work will have CR in the output
[Automatic Journalism—person entering input who has CR on report
generated, not the program designer]
 S. 17 CRA talks about Ownership vesting in the author except in certain cases—
o Where the work by the author in the course of his employment under a contract
of service or apprenticeship, the proprietor of the newspaper, magazine will be
the first owner with regards to publication but the author will be the owner in
all other respects [e.g. RK Laxman cartoons in TOI—TOI only has ownership
wrt publication]
o If a photo is taken/a picture or a portrait is drawn/an engraving or a film is made
in exchange for valuable consideration at the instance of any person, that person
shall be the first owner [e.g. photographer hired at convo]
o Work made by author in the course of employment under a contract of service
or apprenticeship, employer shall be the first owner when clause (a) or (b) don’t
apply
o Govt work—Govt is first owner
Apply control and direction test—If person can make independent decisions, it
is a contract for service. If he is treated as an employee, contract of service
o Public speech—the person who delivered the speech or the person on behalf of
whom the speech is delivered will be the first owner [doesn’t matter if this
person has an employer
 S. 13—Nationality Requirement
 Ss 18—Assignment of CR
 S. 19—Mode of assignment—Only valid if in writing signed by the assignor—specify
rts, duration and extent—specify royalty rates (void if absent)
 S. 20—Transmission of CR in manuscript by will—If manuscript bequeathed, it will
be presumed that CR is bequeathed as well unless at the time of his death testator was
not the owner of the CR
 S. 31—Compulsory Licensing in works withheld from public—If a work has been
published or performed in public but the author isn’t allow republication without giving
a reason, a complaint can be made to the Appellate Board who will ask the author for
reasons. If they find them unreasonable, they can grant a CL for republishing,
performance or broadcast subject to payment of compensation
 S. 31A—CL in unpublished or published works—Author is dead, unknown or can’t be
traced, work withheld from Indian public—complaint to AB to get right to publish or
translate—required to pay royalty which is deposited with the AB
1. V.T. Thomas v. Malayala Manorama (Ker HC 1988)

VTT worked as MM as a cartoonist and developed several famous charcaters. He was


treated as a journalist and paid accordingly. Then he retired and started working for another
magazine as a cartoonist.
Issue: Does MM have CR in the cartoons even after VTT’s employment has been
terminated?
Held: Artistic works made by an author in the course of his employment pass to employer
but this process ends when the employment is terminated. MM has no CR over VTT’s
subsequent work

 Control Test—See ULP v. UTP—Direct control, degree of independence, place


where services are rendered—Examiner is not a servant of the University—From
‘extent of control’ test we moved to ‘totality of relationship b/w parties’
2. Noah v. Shuba (UK 1991)

N was a consultant with Public Health Lab Services and wrote a Guidebook on Hygienic
Piercing. S produced a substantially similar book. S said N hd no locus to sue for
infringement since PHLS owned the CR of the book. N said he didn’t write the book in
the course of his employment.
Issue: Who owns the CR?
Held: Author owns CR. PHLS allowed employees to retain CR. Since it had not been
assigned to them in this case, N was the author and the owner.

3. Nora Beloff v. Pressdam Ltd (UK 1973)

NB was a political correspondent for the Observer—wrote an internal memo about a


conversation with a Cabinet Minister about who could replace the PM if he dies—P had a
magazine called Private Eye which reproduced the memo in its entirety
Issue: Does NB own the CR in the memo?
Held: NB was employed by the Observer under a contract of service so the Observer
owned the CR. NB’s editor could not assign her the CR, only the Observer’s proprietor
could—Test was whether this work was an integral part of the business or was it only
incidental

4. Steven Jordan v. MacDonald (UK 1991)

Accountant prepared lectures in office hours using office resources, which he delivered in
his own time at another college.
Issue: Are these lectures work created in the course of his employment?
Held: No. There was nothing to prove his employer had ordered or authorized him to do
this work.

5. Missing Link Software v. Magee (UK 1989)

Programmer wrote software in his free time at work. Co claimed CR over programs.
Held: Co owns CR bcz they were written in the course of his employment. Writing these
kinds of programs was what he was hired to do.

 S. 101 of US CRA defines work made for hire—work especially commissioned—


parties expressly agree in a written instrument
 S. 201 US CRA—Ownership of CR—Initial ownership in author—for work for hire,
the employer or the person who commissioned the work would be the owner unless
express written agreement says otherwise
6. CCNV v. Reid (US 1989)
CCNV had an oral agreement with R to make a statue depicting the plight of the homeless.
Upon completion, the work was delivered and joined to a base that was prepared
separately. There was no agreement on the exhibition of this work in other cities.
Issue: Is the making of a sculpture by someone who is not an employee of this organisation
a work for hire?
Held: Not a work for hire because R was not a CCNV employee. R was an independent
contractor because he brought his own tools, worked in his own studio, was retained for
less than 2 months and decided his work hours. His salary was contingent upon completing
the work. He wasn’t paid any employee benefits.
Factors to be considered:

o Hiring party’s right to control means and manner of production


o Skills of hiring party
o Source of instrumentality
o Location of the work
o Duration of relationship b/w parties
o Method of payment
o Hired party’s role in hiring and firing assistants
o Is this the regular business of the hiring party
o Provision of employee benefits and tax treatment of hired party
7. Zee Entertainment Enterprises v. Gajendra Singh (Bom HC 2008)
Zee TV said GS was an employee who was tasked to write a concept note for the TV
programme Antakshari. They said he had been under a contract of service while he
was writing this. Thus, when the concept note was reduced to writing, Zee TV would
be the owner of the CR.
Issue: Did GS have a contract of service or not?
Held: On perusal of the employment contract, the court saw elements of both contract
of and for service. But when they looked at individual components, like the inclusion
of a TDS clause, they concluded that it was a contract for service.

Joint Authorship
 S. 2(z) CRA—work produced by collaboration of two or more authors where the
contribution of one author is not distinct from the contribution of the other authors
 S. 10 CDPA UK—Same definition
 US—A joint work is a work prepared by two or more authors with the intention that
their contributions be merged into inseparable or interdependent parts of a unitary
whole
 Requirements:
o Work must be joint labouring in furtherance of a pre-concerted common design
o Contributions must not be distinct
o There must be a sufficient contribution to the final expression which the subject
matter of CR
1. Levy v. Rutley (US 1871)
L employed a Mr Wilkes to write a play for him. On completion, there were some
objections so L made various alterations and additions. L claimed he was a joint author
of the play.
Issue: Was L a joint author?
Held: There must be a common design for joint authorship.
2. Robin Ray v. Classic FM (UK 1998)
RR was a recognised expert on classical music—Commissioned by CFM to advise on
what sort of classical music they should play on radio—RR produced detailed
classification of musical works in 5 docs and wrote a music catalogue. CFM made some
changes to it and incorporated it into a database. CFM then sold this database to two
other radio stations.
Issue: R claimed his CR had been infringed wrt the catalogue and 5 docs which were
indirectly copied by the two radio stations.
Held: RR’s CR was infringed—To constitute joint authorship, you must contribute
something akin to penmanship—CFM was not a co-author here.
3. Fylde Microsystems v. Key Radio Systems (UK 1998)
F developed the software. K tested the software and reported errors and made
suggestions.
Issue: Is K a joint author?
Held: No. Their work did involve exercising judgement and skill but it was not
authorship.
4. Najma Heptullah v. Orient Longman (Del HC 1989)
Maulana Azad and Professor Humayun were joint authors of India Wins Freedom
because there was active and close intellectual collaboration and cooperation between
them. There was a pre-concerted common design when writing the book.
5. Edward B. Marks Music v. Jerry Vogel Music (US 1944)
Lyricist wrote words for a song. Somebody else wrote music. Neither party knew the
other but they knew their individual efforts wouldn’t stand alone.
Held: Joint Authorship by prior common design or surrounding circs
6. Martin v. Kogan (UK 2017)
Nicholas Martin authored the screenplay for Florence Foster Jenkins. Julia Kogan was
his partner at the time he wrote the first three drafts of the movie. She later sought a
portion of his income.
Held: If final version doesn’t reflect her contribution, M will be the sole author but the
other drafts will be granted separate protection.

Rights of Copyright Owner


 S. 14 CRA gives an exclusive right subject to the provisions of the Act to do or authorise
the doing of any of the following acts in respect of a work or a substantial part thereof—
o For a literary/dramatic/musical work which is not a computer programme—
a. Reproduce in any material form, including storage in any medium by
electronic means
b. Issue copies of the work to the public not being copies already in circulation
c. To perform/communicate the work in public
d. To make a film/sound recording in respect of it
e. Any translation
f. Any adaptation
g. To do a-d wrt any translation or adaptation
o For a computer programme
a. To do all of the above
b. To sell/rent a copy of the programme, provided that this won’t apply if the
programme isn’t the essential object of the rental
o For an artistic work—
a. To reproduce the work in any material form (2D to 3D and vice versa)
b. To communicate work to public
c. To issues copies to public not already in circulation
d. To include the work in any film
e. To make any adaptation
f. To do a-d in any adaptation
o For a cinematograph film—
a. To make a copy of the film, including a photograph of any image forming
part thereof
b. To sell or give on hire any copy of the film, irrespective of whether it has
been done before
c. To communicate film to public
o For a sound recording—
a. To make any other sound recording embodying it
b. To sell or give or hire any copy, regardless of whether it had been done
before
c. To communicate to public
 For the purposes of this section, a copy which has been sold once shall be deemed to be a
copy already in circulation.

Economic Rights

 Google’s digitization of author’s work without consent—held to be fair use


1. MAI Computers v. Peak Corp (US 1993)
MAI was selling computers with OS. PC was repairing them. But to repair the
computer, they had to start the computer for which they had an unauthorized version of
the software. It was not downloaded on the CPU but available on the RAM.
Held: RAM copy is also a copy because it is capable of being perceived, reproduced,
communicated and because it stays for more than a transient period. [Test for what
is a copy].
 Now a well settled legal position that RAM/cache copies are copies. But fair use defence
was permitted later for using the OS to repair computers. [S. 52(1)(c)]

Moral Rights [S. 57 for author/S. 38B for performer]

 Vested by authorship regardless of ownership


 2 types of rights envisioned under the Indian act—Intent not required
o Paternity rights—right to claim status as author of work
o Integrity rights—right against prejudicial modification, mutilation or distortion
o Failure to display a work to the satisfaction of the author is not infringement
 The CDPA in the UK confers 4 moral rights—
o Right to be identified as author—has to be asserted
o Right against mutilation
o Right against false attribution—use of name for works you haven’t created
o Right to privacy
 Visual Rights Act in the US confers moral rights to a ltd extent—false attribution
 Indian CRA does not expressly provide that moral rights are not applicable to works made
for hire—Different position in UK and US
1. Mannu Bhandari v. Kala Vikas Pictures (Del HC 1987)
KV produced movie ‘Samay ki Dhara’ under assignment of filming rights of MB’s
novel ‘Aap ka Bunty.’ MB said movie is a distortion/mutilation of the novel. KV said
the contract allowed them to make modifications.
Held: S. 57 confers special rts on author over and above ownership of CR which persist
even after assignation and can’t be negated by a contract. No decision as parties arrived
at settlement.
2. Amar Nath Sehgal v. Union of India (Del HC 2005)
On request of UoI, ANS created a bronze mural sculpture on the walls of the lobby of the
Vigyan Bhawan which was universally appreciated [Some culture-rural-science mix]. UoI
took down the mural and put it in storage without the consent of the author. ANS said this
violated his moral rights under S. 57.
Interpretation:
o Court defined moral rights to include the following rights:
a. Paternity/Identification/Attribution Right
b. Right to disseminate work
c. Integrity right—maintain purity of the work
d. Right to retraction
o S. 57 CRA has to be r/w Art 6bis of Berne Convention—work of cultural heritage—
destruction of work can prejudice author’s reputation as it reduces his creative
corpus—extreme form of mutilation
o ANS’s mural was a part of the cultural heritage of India. Destruction would violate
his integrity rights guaranteed by S. 57, even though UoI owns the CR for the mural.

Doctrine of First Sale

1. John Wiley v. Prabhat Chander Kumar Jain (Del HC 2008)


JW sold low-priced editions of advanced educational books in the Indian subcontinent.
PC set up a website to sell these books to customers in the US.
Held: Court did not apply the doctrine of first sale [S. 109 US CRA—person who
purchases a CRed work from the owner receives the right to sell, display or otherwise
dispose of that particular copy, notwithstanding the owner’s interests]. Says PC would
be bound by the licensing agreement [but he is not even a party to it—recognized in S.
14 CRA wrt literary works]
2. Warner Bros v. Santosh V.G. (Del HC 2009)
WB made movies. They claimed CR in the films first published in the US. Under CRA,
this meant they owned the CR in India as well. S owned a video library wherein he
would buy US DVD releases and import them to India for his Indian customers.
Issue: Are S’s actions covered by doctrine of first sale?
Held: Under S. 14(d) CRA doctrine of first sale would not apply to films. S. 51(b)(iv)
says importation for pvt use is permissible which means importation for commercial
non-private use would be infringement.
3. Kirtsaeng v. John Wiley (US SC 2013)
JW publishes cheaper textbooks in Asia but the books state that they can’t be taken into
the US without permission. When K moved to the US, he asked his friends to send him
Thai English editions of textbooks which he would resell at a profit in the US. JW
contended this infringed their exclusive right to distribution.
Held: Doctrine of first sale also applies to copies of a copyrighted work manufactured
abroad.
Secondary Liability
1. Sony Corp v. Universal City Studios (US SC 1984)
Sony made VCRs. UCS owned CRs on some TV programmes, said VCR consumers
have been recording these works. Sony was liable because they made the VCRs.
Held: Sale of VCRs to general public did not constitute contributory infringement of
UCS’s CRs because VCR was capable of commercially significant non-infringing
use—Fair use
4 Factor Test:
a. Whether the activity was commercial (not FU) or non-profit (FU) in
nature—Here, it was time-shifting for pvt use so non-commercial
b. Effect of infringing work on potential market of CRed work—Here, time-
shifting yielded social benefits
c. Nature of CR material—the more creative/descriptive, less the likelihood of
FU
d. Amount—substantial or not
2. A&M Records v. Napster (US 2001)
Napster was a programme which allowed its users to exchange music files through P2P
networks.
Issue: Is this contributory CR infringement?
Held: For prima facie case, p/f has to show ownership and violation of at least one
exclusive right—Secondary liability for CR infringement does not exist in the absence
of direct infringement by third party—To prove secondary liability, N had to have
actual knowledge that specific infringing material was shared using its system and
despite having the ability to block it, N had failed to do so. Since it provided site and
facilities (material support) for direct infringement, it would be liable for contributory
infringement.
3. MGM Studios v. Grokster (US 2005)
G distributed free software that allowed file sharing in a P2P network, which avoided
the need for central servers. Users used it to share CRed music files without
authorization. G didn’t know when files were being copied but if they searched the
software they could see what type of files were being shared. Called themselves “the
best alternative to Napster.” MGM was able to show that 90% of content shared was
copyrighted and G did nothing to filter or stop it.
Issue: Whether the distributor of a product that is capable of lawful and unlawful uses
is liable for CR infringement by a third party using that product.
Held: Yes. Since G did not have actual knowledge and did not monitor the file sharing,
it is not directly liable. Inducement theory of contributory CR liability—One who
distributes a device with the object of promoting its use to infringe CR, it is liable for
the resulting acts of infringement by third parties. G positioned themselves as the next
Napster. G didn’t try to develop filtering tools to diminish infringing activity of
software. Ad sale model meant more use by people led to higher revenues for G.
Court held Sony doctrine would not apply in cases where the object of promoting
infringement is manifest.
4. Super Cassettes v. MySpace (Del HC 2016)
SC filed suit against MS alleging CR infringement. MS allowed users to upload and
share files and users were sharing SC’s CRed material without authorization.
Issue: Was MS liable for secondary infringement u/s 51(a)(ii)?
Held: No. Need to demonstrate actual knowledge not general awareness. Safe harbour
defined under S. 79 and S. 81 proviso applies unless actual knowledge is demonstrated.
Tests for Infringement
1. Nichols v. Universal Picture Corp (US 1930)
N wrote a play about a marriage b/w a Jewish boy and a Catholic girl. UPC made a
movie on the same theme.
Held: Abstraction test—There must be substantial similarity in the expression, not in
the abstract ideas employed—applied in R.G. Anand in the case of provincialism
2. Professor Zechariah Chafee—Pattern test—applied with abstraction test—Is the plot
concrete enough to be considered expression?—Look at interplay of major characters
+ sequence of events—Will ordinary observer get an impression that it is the same?
3. Roth Greeting Cards v. United Card Co (US 1970)
Issue: What is the basis on which one is to determine substantial similarity
Held: The Court applied the total concept and feel test—2 components—Extrinsic (to
determine similarity in general ideas through analytical dissection and expert
testimony)—Intrinsic (to compare the particular expression used by using the
reasonable man standard)
4. Computer Associates v. Altai (US 1992)
CA sued A for CR infringement of a computer job scheduler program
Issue: How to determine substantial similarity exists between non-literal elements of a
computer programme
Held: Identify the increasing levels of abstractions of the program. Then, at each level
of abstraction, material that is not protectable by CR is identified and filtered out, like
material used for efficiency, material used for external consideration and material taken
from public domain. Compare whatever’s left (Golden Nugget—Core of Protectable
Expression)
 WCT Article 11 and Beijing Treaty—Technological Protection Measures
o Led to US adopting DMCA—control access to work and protect against making
copies—S. 1201 of DMCA protects access control but not copy control specifically.
It prohibits sale/manufacture/import of a device that allows circumvention
o Ss 65A and 65B of Indian CRA—Intention is required

Fair Use
1. Kelly v. Arriba Soft Corp (US 2003)
K, a pro photographer placed some of his images on his website as well as on other
websites with which he had a license agreement. AS operated an internet search engine
that displayed results in the form of small pictures (thumbnails). K sued AS for CR
infringement.
Held: While it’s true that AS operates its website for commercial purposes and K’s
photos were a part of its database, the use of these images was largely incidental rather
than exploitative.
Four factors to determine fair use:
a. Purpose and character of use
b. Nature of copyrighted work
c. Amount and substantiality of portion used in relation to the whole work
d. Effect of use on potential market or value of copyrighted work
2. Oxford University v. Rameshwari Photocopy Services (Del HC 2016)
O said RPS was photocopying substantial excerpts from their publications, which were
a part of the syllabus, and selling unauthorized compilations of them in the form of
course packs.
Held: Making and distributing course packs to students does not amount to CR
infringement as long as the inclusion of the works (irrespective of the quantity) was fair
use under the purpose of educational instruction—Rejected US 4 Factor test—S. 52
CRA envisages looking at purpose to determine fair use—This does not amount to
publication as there is no profit motive

Minat Terkait