COPYRIGHT
What is copyright?
Copyright law is concerned in essence with the negative right of preventing the
copying of physical material. It is not concerned with the reproduction of ideas,
but with the reproduction of the form in which ideas are expressed. Today, not
only is protection given to literary, dramatic, musical and artistic works, but also
to sound recordings1, films, broadcasts, cable programs, computer programs and
the typographical arrangement of published editions.
The difference between a copyright and a patent is while a copyright on the one
hand is a limited monopoly having its origin in protection closely analogous to
patent rights, protecting the fruits of author's exertions in literary, dramatic,
artistic or musical compositions, the protection afforded by the patents law is
broader than in the case of copyright. By grant of a patent, the patentee acquires
an exclusive right to make, use and vend the thing patented by copyright, while
the owner of the copyright acquires the exclusive right of multiplying copies and
doing other things analogous to this. The patent law protects the production and
use of the creative conception reduced to practical shape in various forms; the
copyright law protects publication of the copies in the form of the creative
conception in which it has been expressed by the author. The right secured by
the copyright is the right to that arrangement of words which the author has
selected to express his/her ideas. The fundamental purpose of copyright
protection, therefore is to promote societal development and thus the
1
A sound recording may be of a literary work spoken or recited, the spoken dialogue of a dramatic work or
of a song. There may be copyright subsisting in the subject matter recorded. Since making of a sound
recording of a literary, dramatic or musical work constitutes infringement of that work a sound recording
made without the license of the owner of the copyright in that work will constitute infringement of that
work. A sound recording may be of a literary work spoken or recited, the spoken dialogue of a dramatic
work or of a song. There may be copyright subsisting in the subject matter recorded. Since making of a
sound recording of a literary, dramatic or musical work constitutes infringement of that work a sound
1
improvement of all persons- by encouraging the production and dissemination
of creative works.
Copyright are exclusive rights subject to the provisions of the Act, to do or
authorize the doing of any of the acts laid down in the Act. These rights include:
1. the right to reproduce the work,
2. to issue copies of the work to public,
3. to perform the work in public,
4. to communicate the work to public,
5. to make a cinematograph film or sound recording,
6. to make any translation or adaptation of the work,
7. to sell or give on hire any copy of the computer program or sound
recording2., and so on.
There is no copyright in ideas, subject-matter, themes, plots or historical or
legendary facts, however original or brilliant and is confined to the form, manner
and arrangement and expressions of the idea by the author of the copyright
work. What copyright protects is not the raw materials from which the work is
created but the skill and labor employed by the author in the creation of the
work. Any other person can produce substantially the same work using the same
raw materials or even ideas without infringement if he/she does it originally
without copying from the other work. Suppose, I hold a copyright for the
expression " Jack and Jill went up the hill", a copyright violation will not be
recording made without the license of the owner of the copyright in that work will constitute infringement
of that work.
2
Dealers in musical records may have a record lending library, the subscribers to the scheme paying a
subscription and a borrowing fee. The subscribers may use the hired records for home taping. It has been
held that such activities of a dealer did not amount to authorizing infringement of copyright. The
defendant's had at the request of the plaintiff's displayed warning notices and attached stickers to the
records regarding the copyright position; See A. & M. Records v. Audio Magnetics [1979] F.S.R. 1; CBS
v. Ames [1981] R.P.C. 407.; CBS U.K. v. Amstrad [1988] R.P.C. 567; Cited from Cornish, W.R.,
Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd edn, Sweet and Maxwell,
London, 1996, at 369.
2
committed if the expression "Jack went up the hill along with Jill” is used 3. In
determining whether there is an infringement, where the subject matter of the
work is not original, the question is how far an unfair or undue use has been
made of the work. If a person instead of obtaining the subject matter from
common sources avails himself/herself of the labor of his/her predecessor,
adopts his/her arrangements and quotations, or adopts them with a colorable
variation it is an illegitimate use.
Another related concept is that of passing-off. Apart from statute, an action will
lie for the passing-off of a work as the work of the plaintiff, if its title or
appearance is such as to lead the public to believe that they are purchasing, or
using, a work of the plaintiff and injury is likely to accrue to the plaintiff; it is not
necessary to show an intention to deceive. The thing said to be passed off must
however, resemble the thing for which it is passed off. Such an action may be
brought by publishers who have acquired the copyright in a work from the
author, to restrain a publication of a similar work using the author’s name so as
to induce the public to believe it was the same as the original work.4
Infringements of copyright may be divided into primary or direct infringement,
which consist of the unauthorized exercise by persons (not being the copyright
owners) of rights restricted by the Copyright Acts, and secondary, or indirect
infringement, which consist mainly of unauthorized dealings with articles which
were made in infringement of copyright, together with various other acts. A
basic distinction between the two is that secondary infringement requires the
defendant to have some degree of knowledge that what is being done is an
infringement, whereas in the case of primary infringement any such knowledge
is not an ingredient of the cause of action.
3
Muralidharan, R., Legal Protection of Computer Software, at 3.
3
These are some of the basic preliminaries which need to be covered before an
intense discussion on the topic at hand can be commenced.
4
Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974,
at 513.
4
EVIDENTIARY ASPECTS
In a copyright infringement case, pre-trial pending work requires a lot of
evidential analysis on which to structure the suit. Some of the important steps to
be initiated and clarified are as follows:
Issues
In a suit for infringement of copyright the following issues arise:
1. Is the plaintiff entitled to file the suit? In other words is he/she the owner of a
copyright as defined in Section 54 of the Act?
2. Does copyright subsists in the work alleged to have been infringed?
3. Does what the defendant done, or proposes to do constitute infringement of
the copyright in the work?
4. Does the defendant's act come within the scope of any of the exceptions to the
infringement listed in Section 52?
5. What remedies the plaintiff is entitled to?
Evidence to be adduced
The plaintiff will be the one to adduce evidence to establish the following:
1. The copyright work is original or otherwise qualifies for subsistence of
copyright under the Act.
2. The date of coming into existence of the work.
3. The term of copyright has not expired on the date of filing the suit or on the
date of committing the alleged infringement.
4. Particulars of the act done by the defendant, alleged to constitute
infringement, or the acts proposed to be done likely to constitute
infringement when completed.
5. The acts done or likely to be done by the defendant would constitute
infringement of the copyright work.
5
The defendant's evidence will depend upon how far the plaintiff establishes a
case of infringement. He/she may adduce evidence to prove that the alleged
copyright work is not original or that it is not entitled to copyright, the term of
the copyright has expires, the alleged acts done by him/her were not done by
him/her or if done by him/her, they do not constitute infringement of copyright
or that it comes within the scope of one or other of the statutory exceptions and
that the plaintiff has not suffered or is likely to suffer any damages from the
activities of the defendant.
Direct Evidence
In most cases there will be no direct evidence of copying. Copying can only be
deduced by inference from all the surrounding circumstances. In the case of
infringement of literary works, the defendant's work containing the same errors
as in the plaintiff's work, similarity in language and idiosyncrasies in style, may
constitute some evidence of copying.
When materials in which copyright is claimed are not produced at the hearing
then their nature must be proved by other evidence. As Lord Esher M.R., said in
Lucas v. Williams5: …to produce the original picture and the alleged copy, so that
the jury may compare the two, may be the most satisfactory evidence of
imitation, but it does not follow that it is the only evidence of it which can be
given, nor does it follow that the evidence which was given in his/her case is
only secondary evidence. Primary evidence is evidence which the law requires to
be give first: and Secondary evidence is evidence which may be given in the
absence of the better evidence which the law requires to be given first, when a
proper explanation is given of the absence of that better evidence.
6
In other words, what difference is there in principle between a man's
handwriting and a picture, which he/she paints? The witness says, Looking at
the picture which the defendant sold, I say it is exactly like XXX's picture. When
he/she is asked, How do you know that?, he/she answers, Because I have seen
XXX's picture. This is not secondary evidence, but original evidence. Different
kinds of evidence may be used to prove the same fact, and this is another way of
proving the fact that, the picture which the defendant's sold is a copy of the
original picture in respect of which there is a copyright.
Burden of Proof
[The burden of proving infringement is on the plaintiff. In establishing the
defenses pleaded the burden is on the defendant. Where there is substantial
similarity between the plaintiff's copyright work and the defendant's alleged
infringing copy, that would be sufficient to raise a prima facie case of actual
copying and if the defendant did not call evidence to rebut the prima facie case,
then copying is proved. The defendant may refute by evidence that
notwithstanding the similarity there was no copying but independent creation.
Evidence of access to the plaintiff's product and evidence of striking general
similarities between the products gives rise to a prima facie case of infringement.
But the defendant could give alternative explanation of the similarities in a
convincing manner.]
Expert Evidence
Expert evidence may be called to point out similarities, coincidences and the like,
in order to support a contention of copying, or the converse, but the expert must
stop short of giving his/her opinion that the work under criticism is in fact a
copy. That is a question for the judge.
5
(1892) 2 QB 113 at 116.
7
Infringement of a musical work is not to be determined by a note for note
comparison, but should be determined by the ear as well as by the eye. The
question whether the defendant has copied the plaintiff's work depends to a
large extent on the judge's own impression and on expert evidence.
In cases of technical and scientific works, to decide the question of infringement
of copyright, expert evidence may be necessary. Where the case involves minute
scrutiny of alleged similarities and dissimilarities and extensive and lengthy
comparison, it is not only proper but essential, that the case should be tried with
the aid of experts who might be appointed commissioners to investigate and
report similarities. But the commissioner's evidence is no evidence.
A distinction between direct and indirect infringers has been already drawn at
the outset6, though it is an analysis disputed by the majority. It differentiates
between one who copies an original and one 'who copies a copy, supposing it to
be an original'. An indirect (or, secondary) infringer should only be liable to an
injunction and compelled to return profits made on the infringement. The
plaintiff must prove that, directly or indirectly, the defendant's alleged
infringement is taken from the work or subject-matter in which he/she claims
copyright. Thus the two elements necessary to the plaintiff's case in an
infringement action are:
a. ownership of the copyright by the plaintiff, and
b. copying by the defendant.
OWNERSHIP:
6
In the Introduction, at 5.
8
Subject to certain exceptions7 the author of a literary, dramatic, musical or artistic
work is entitled to the copyright in the work. The author is the person who
actually writes, compiles, composes or draws the work in question, although the
idea of the work may have been suggested by another, or the work may have
been subsequently altered in accordance with the advice of another.8
Where, however, the compiler of a directory or work of reference collects written
material from a large number of individuals and arranges and publishes the
result, the compiler and not the individuals supplying the information, is the
author of the work. A mere copyist or a person to whom words are dictated for
the purposes of being written down is not an author; but a translator from one
language into another or a reporter of legal decisions or of a speech is an author.
The author of a photograph is the person who, at the time when the photograph
is taken, is the owner of the material on which it is taken. The author of the
design of a building in which copyright subsists is the architect who makes the
plans and supervises the work and not the builder
Joint Authors
Joint authors are in the position of tenants in common and not of joint tenants.
One joint author cannot lawfully reproduce the work himself/herself or grant
licenses to others to reproduce it without the consent of the other joint author(s),
but he/she may by himself/herself take proceedings for infringement. Where
copyright would not have subsisted in a work if one of the joint authors had been
the sole author (or if more than one of the joint authors had been the sole joint
authors), the copyright is owned by the other joint author(s).
7
As to works by an author under a contract of service or apprenticeship, commissioned artistic works,
works of joint authorship, etc.
8
Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974,
at 548.
9
Ownership by the plaintiff (the copyright owner usually) breaks down into the
following constituent parts:9
1. Originality in the author.
2. Copyrightability of the subject matter.
3. Citizenship status of the author such as to permit a claim of copyright.
4. Compliance with applicable statutory formalities.
5. (If the plaintiff is not the author), a transfer of rights or other relationship
between the author and the plaintiff so as to constitute the plaintiff the valid
copyright claimant.
With respect to most of the above elements of ownership, the copyright
registration certificate constitutes prima facie evidence, in favor of the plaintiff.
This is clearly true on the issue of originality, as well as in establishing the
copyrightability of the subject matter and the citizenship status of the author.
Satisfaction of the statutory formalities is likewise presumed by reason of the
registration certificate, as is the plaintiff's chain of title from the author, where
the plaintiff obtained an assignment of rights prior to registration. By reason of
the benefit of such presumption, the only evidence required of the plaintiff to
establish prima facie ownership in addition to the registration certificate is
evidence of plaintiff's chain of title from the original registrant. Once the plaintiff
has established prima facie his/her ownership, the burden of proof then shifts to
the defendant to counter this evidence.
COPYING
It has been accepted that copying could occur subconsciously where a person
reads, sees or hears a work, forget about it but then reproduces it, genuinely
believing it to be his/her own. In such cases, proof of copying depends on…a
number of composite elements; the degree of familiarity with the plaintiff's work,
9
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4.
10
the objective similarity of the defendant's work, the inherent probability of
coincidence…10
Also, a work may be copied by imitating a copy of it. If the plaintiff owns a
copyright drawing and then turns it into a three dimensional article and this is
copied in three dimensional by the defendant, the causal connection for indirect
copying of the drawing will be established. Likewise, if a novel is turned into a
play, which is in turn converted into a ballet- but the causal chain must run in the
right direction.11
Where the defendant has reworked the plaintiff's material, there comes a point
beyond which the plaintiff has no claim. Whatever may have been the position in
the past, the fact that the defendant has himself/herself added enough by way of
skill, labor and judgement to secure copyright for his/her effort does not, under
the present law, settle the question whether he/she has infringed; rather the
issue is whether a substantial part of the plaintiff's work survives in the
defendant's so as to appear to be a copy of it.12 Thus, would book reviews
constitute a copyright infringement if we extended this logic?13 Where the
plaintiff's work records information, the use that a defendant may make of it for
his/her own purposes may not be a substitute for exercising his/her own labor,
skill and judgement, but is to be taken as a starting point for his/her own
10
Per Wilberforce J., Francis Day v. Bron [1963] Ch. 587, at 614; cited from Cornish, W.R., Intellectual
Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd edn, Sweet and Maxwell, London, 1996,
at 361.
11
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4.
12
In Joy Music v. Sunday Pictorial [1960] 2 Q.B. 60, a song lyric had been parodied in pursuit of Prince
Philip; but only one repeated phrase was taken, and that with pointed variation. There was held to be no
infringement as a way of emphasizing that nothing substantial must remain from the plaintiff's work: Cited
from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd edn,
Sweet and Maxwell, London, 1996, at 364.
13
In Warwick Film v. Eisinger [1969] 1 Ch. 508 where an author published an edited version of Oscar
Wilde's trials an earlier version previously having appeared, he acquired copyright in the whole by virtue of
his work in selecting and providing linking passages. But a defendant who took from large passages from
the transcript, but very little of his own work was held to infringe, thereby neatly adjusting the scope of
protection to the author's literary effort.
11
collation of information or as a means of checking his/her own independent
research.
It is generally not possible to establish copying by direct evidence, since it is rare
that the plaintiff has available a witness to the act of copying. Apart from the
unavailability of witnesses, copying may occur without any objective physical
manifestation since copying from memory is no less actionable than is copying
from direct view. Therefore copying is established indirectly by the plaintiff's
proof of access and substantial similarity- although proof of access and
substantial similarity are sine qua non to a finding of copying, such evidence
does not require the trier of fact to find copying.14
But, despite proof of access and substantial similarity, the trier of fact may
uphold a finding of no copying if such trier believed the defendant's evidence of
independent creation, except where the similarity between the two works is such
that no explanation other than copying is reasonably possible. If the defendant in
fact copied from a work other than that of the plaintiff's (and such work was not
itself copied from the plaintiff's) it is irrelevant in plaintiff's infringement claim
that the defendant may have infringed the copyright in such other work.
Since a plaintiff ordinarily can do no more than offer evidence of access and
substantial similarity in proving the act of copying, the Courts have sought to
give some measure of protection to the plaintiff's against a trier's uncritical
acceptance of the defendant's answering claim of independent creation. This has
been achieved through the imposition on the defendant of a high standard of
proof of independent creation where the plaintiff has clearly established access
and substantial similarity.
12
Where, however apart from the similarities appearing in the two works there are
also material and broad dissimilarities which negative the intention to copy the
original and the coincidences appearing in the two works are clearly incidental,
no infringement of the copyright comes into existence.
Infringement of copyright being a tort, in the ordinary course, an employer will
be vicariously liable for any infringement committed by an employee in the
course of his/her employment and for the acts of independent contractors which
he/she specifically requested. In this The Copyright, Designs and Patents Act, 1988
has introduced three forms of infringement:
i.
Authorizing infringement by others [section (16)(2)]
ii.
Permitting a place of public entertainment to be used for performance of a
work [section 25]
iii.
Providing apparatus for performing, playing or showing a work,
etc.[section 26]
Authorize has been read as bearing its dictionary meaning of sanction,
countenance or approve. In line with theses broad synonyms, it has been said
that indifference, exhibited by commission or omission, may reach a degree from
which authorization or permission may be inferred.
Permitting performance is expressly stated to be subject to the defense of
reasonable belief that there would be no infringement, authorizing is not the
subject of specific exceptions, but the meaning given to the word excludes
liability when the defendant could not reasonably expect that another would
infringe. It is also necessary to show an act of infringement which has occurred
as a result of the authorization.
14
.Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-6.
13
Look and Feel Test
One of the surest and safest test to determine whether or not there has been a
violation of copyright, is to see whether a reasonable man, who is a
spectator/viewer after having seen or read both the works is clearly of the
opinion and gets an unmistakable impression that the subsequent work appears
to be a copy of the original.
In Lotus Development Corp. v. Paperback Software International15 the Court laid
down the look and feel test as:
1. The decision maker must focus upon alternatives that counsel may suggest,
or the Court may conceive, along the scale from the most generalized
conception to the most particularized, and choose some formulations- some
conceptions or definitions of the idea- for the purpose of distinguishing
between the idea and its expression.
2. The decision maker must focus upon whether an alleged expression of the
idea is limited, to elements essential to the expression of that idea (or in one
of only a few ways of expressing the idea) or instead, includes identifiable
elements of expression not essential to very expression of that idea.
3. Having identified elements of expression not essential to every expression of
the idea, the decision maker must focus on whether those elements are a
substantial part of the allegedly copyrightable work.
But the Courts in the subsequent cases of Lotus Development Corp. v. Borland
International Inc16., and Apple Computer Inc. v. Microsoft Corp.17 refused to rely on
this test, but preferred the abstraction-filtration test.
15
740. F.Supp. 37 (D.Mass. 1990); wher it was held that Lotus' copyright in its popular 1-2-3 spread sheet
program protected the user interface and that Paperback in its spread sheet program had infringed Lotus'
copyright by copying a number of aspects; Cited from Gopalakrishnan, N.S., Intellectual Property and
Criminal Law, National Law School Of India University, Bangalore, 1994, at 165.
16
788 F.Supp. 78 (D.Mass. 1992); Cited from Gopalakrishnan, N.S., Intellectual Property and Criminal
Law, National Law School Of India University, Bangalore, 1994, at 167.
14
Abstraction-Filtration Test
In 1992, there was another test called the abstraction-filtration test, which was an
improvement18 over the previous look and feel test developed in the case of
Computer Associates International v. Altai.19
1. Breaking down the allegedly infringed program into its constituent structural
parts.
2. Examining each of the parts for such things as incorporated ideas, expression
that is necessarily incident to those ideas, and elements that are taken from
the public domain in order to sift out all non-protectable material
3. Comparing whether 'creative expression' remains after following this process
of elimination, with the structure of the allegedly infringing program. The
result of this comparison- will determine whether the protectable element of
the programs at issue are substantially similar, so as to warrant a finding of
infringement.
But this test has been criticized on the ground that it is difficult to apply in
practice and it seems artificial to break up a program into such constituent parts.
ACCESS
Some Courts have defined access as the actual viewing and knowledge of
plaintiff's work by the person who composed defendant's work. This definition is
submitted to be erroneous. Just as it is virtually impossible to offer direct proof of
copying, so it is often impossible for a plaintiff to offer direct evidence that
defendant (or the person who composed defendant's work) actually viewed or
had knowledge of plaintiff's work. Such viewing will normally have occurred, if
17
24 UPSQ 2d 1081 (N.D.Cal. 1992); Ibid.
Tripathy, B.P. and P.K.Prabhat, A Case for Effective Legal Protection of Computer Programs in India- A
Panacea for the Paradox, 1 Crit Law (1998), 11, at 15.
18
15
at all, in a private office or home outside of the presence of any witnesses
available to the plaintiff. For this reason it is clear that even if evidence is
unavailable to prove the fact of actual viewing, if it can be shown that the
defendant had the opportunity to view, this (when combined with substantial
similarity) is sufficient to permit the trier to conclude that copying has occurred.
But this result is often reached through the Courts reasoning that the opportunity
to view creates an inference of access, which in turn creates an inference of
'copying'.
Such an approach tacitly if not expressly adopts the actual viewing definition of
access; seeming more just in terms of plaintiff's burden of proof20 to regard a
reasonable opportunity to view as access in itself and not merely as creating an
inference of access. This approach is consistent with what is perhaps the more
prevailing definition of access, that is, the opportunity to copy. The trier of fact
may conclude that the person who created defendant's work had, but did not
avail himself/herself of the opportunity to view, but this conclusion is with
regards the ultimate issue of copying.
Reasonable opportunity as here used, does not cover any bare possibility in the
sense that anything is possible. Access may not be inferred through mere
speculation or conjecture. There must be a reasonable possibility of viewing
plaintiff's work- not a bare possibility. Thus, the mere fact that plaintiff's
19
23 USPQ 2d 1241 (2d. Cir. 1992); Cited from Gopalakrishnan, N.S., Intellectual Property and Criminal
Law, National Law School Of India University, Bangalore, 1994, at 166.
20
Even if the plaintiff is unable to prove actual viewing by the defendant, but is able to establish the
reasonable opportunity to view, this should be regarded as a showing of access for the purposes of shifting
the burden to the defendant to establish independent creation. If the burden shifts to defendant where
physical possession of the manuscript is shown notwithstanding a claim by defendant that he/she had
forgotten its contents, or did not read it, the burden should likewise shift where the defendant denies that
he/she ever obtained physical possession although he/she had a reasonable opportunity to obtain such
possession. In each case the burden should shift because the plaintiff often can no more prove actual
physical possession than he/she can, assuming such possession, prove the act of reading and the memory of
such reading.; Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at
13-10.
16
manuscript is physically in the same city as that in which the defendant resides
does not give the defendant an opportunity to view the manuscript
notwithstanding the bare possibility of such an access. On the contrary, the mere
lapse of a considerable period of time between the moment of access and the
creation of defendant's work does not preclude a finding of copying.21
When plaintiff must prove access:
The owner must show that a causal connection is the explanation of the
similarity between the work and the infringement- the other possibilities being
that he/she copied from the defendant, that they both copied from a common
source, or that they arrived at their results independently. On the other hand,
he/she does not have to show that the defendant knew that his/her copying
constituted an infringement. As with other rights of property recognized at
common law, the primary exclusive rights may be asserted against even the
defendant who honestly believes that he/she purchased the right to reproduce
the work.
Where there has been copying and all or virtually all of a work is taken without
emendation, the proof of infringement is straightforward; difficulties arise to the
extent that this is not the case. The Copyright, Designs and Patents Act, 1988,
Section 16(3)(a) requires that a substantial part must be copied giving expression
to a sense of fair play. Thus this depends on the quantity rather than the quality
of what the defendant has taken. It has also been insisted that the copying must
be of the expression of ideas, rather than just of the ideas; but this an ill-defined
distinction. But Courts are inevitably pressed with cases where the plaintiff's
grievance is that he/she thought of the very first instance of a whole type of
work (a detective story, a restaurant guide, et al) and wants rights over all
subsequent variants. In relation to infringement, the idea/expression dichotomy
21
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-12.
17
directs a necessary enquiry to restrict copyright to a taking from the protected
work, and there seems no better indicator of the judgement called for.
But in the judges view if what is worth copying is prima facie worth protecting, it
may considerably stretch the notion of expression. Once convinced that the
defendant unfairly cut a competitive corner by setting out to revamp the
plaintiff's completed work, they will not be easily dissuaded that the alterations
have been sufficient. In this approach, the taking of ideas alone, is confined to
cases where the defendant does not start from the completed work at all, save in
the sense that he/she goes through a similar process of creation (for example
where he/she draws his/her own cartoon for the same basic joke)22
Ordinarily in order to prove copying by the defendant, the plaintiff must prove
access as well as substantial similarity. If, however, the similarity between
plaintiff's and defendant's work is sufficiently striking and substantial, the trier
of fact may be permitted to infer copying notwithstanding the plaintiff's failure
to prove access. Minus access, the similarities must be so striking as to preclude
the possibility that the defendant independently arrived at the same result. A
defendant who is shown to have adopted the plaintiff's imaginative
embellishments or plain errors will be in particular jeopardy. It has been said
that although expert testimony is not required to establish substantial similarity,
it is required to establish striking similarity such as to dispense with the need for
proof of access. But the judges have hesitated to fetter the assessment of each
case on its facts by the introduction of rules formally shifting the burden of proof
from plaintiff to defendant at any stage of the trial.
22
Cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd
edn, Sweet and Maxwell, London, 1996, at 363.
18
Even if there is a very striking similarity between the two works, copying may
not be inferred without proof of access in the following circumstances:23
i.
If both plaintiff's and defendant's works are trite or commonplace.
ii.
If plaintiff fails to establish prior creation.
iii.
If the identity between the two works may arise from identical functional
considerations rather than from copying.
iv.
Where the defendant offers direct and highly persuasive evidence that
access could not have occurred.
Where the works in question are non-dramatic, probably more by way of
detailed incident and language must be taken before there is substantial copying.
Where the works are artistic, and the Court is testing sufficient similarity by
appeal to the eye, stress is sometimes laid upon the feeling and artistic character
of the plaintiff's work, an idea that can be extended to the screen displays of a
computer.
Suppose an author creates a work, and subsequently, at a time when he/she
does not own the copyright, he/she reproduces it in a second work. Some
concession in his/her favor seems called for, in order to allow him/her to
continue doing the kind of work at which he/she is proficient. The relation
between the two end-products would be considered rather than the relation
between the first work and what has been copied from it. The fact that the author
made his/her reproduction unconsciously (if he/she can be believed) would
probably enhance any claim not to have infringed.
What constitutes proof of access
Evidence which directly tends to prove either that the defendant viewed the
plaintiff's work or had a reasonable opportunity for such a view is admissible to
23
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-15.
19
prove access. Thus, from proof that a plaintiff mailed the allegedly infringed
material to the defendant's principal office, it may be inferred that the material
was in fact received , and the trier of fact may infer therefrom (unless
contradictory evidence is to believed) that the persons responsible for
defendant's work had prior knowledge of plaintiff's work.24 Sometimes access
may be proved by mere circumstantial evidence. Therefore, unusual speed in the
creation of the defendant's work may constitute some evidence that the
defendant had access to and used the plaintiff's work, rather than resorting to
independent creation. Similarity between the plaintiff's work and other materials
created by the defendant which are not the subject of litigation may likewise
constitute circumstantial evidence that the defendant had access with respect to
his/her creation of the work in issue
KNOWLEDGE
The Court is not concerned with the knowledge of a reasonable man but is
concerned with reasonable inferences to be drawn from a concrete situation as
disclosed in the evidence as it affects the particular person whose knowledge is
in issue. One must consider the concrete situation disclosed by the evidence and
then decide what knowledge is to be attributed to the defendant, either in the
way of express knowledge or knowledge that these particular defendants must
have inferred. The knowledge which has to be proved is actual not constructive.
Once a plaintiff fixes a defendant with notice of the facts relied on as constituting
an infringement, the defendant cannot contend that he/she is without
knowledge because he/she has in good faith a belief that in law no infringement
is being committed.
24
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-17.
20
ACQUIESCENCE/CONSENT
Beyond the limitation periods for particular wrongs lies a further question: if a
defendant has been left to pursue a course of infringement for a substantial
period of time, can the right-owner be taken to have consented to its
continuance? If so, no part of his/her activity, even the most recent is actionable.
This consent may be expressly given or it may be implied from the
circumstances; it may occur before, at the time of, or after the infringing act.
Conduct alone can create an implied license in some circumstances where the
plaintiff represents, expressly or impliedly, that the defendant's conduct is not an
infringement, he/she will thereafter be estopped from asserting his/her right.
Where he/she both know, of his/her right against the defendant and that the
defendant mistakenly believes that he/she is entitled to do what he/she is doing,
yet he/she stands by without asserting his/her right, he/she will be taken to
have acquiesced in the wrong. If all this can be proved, there is no need to show
any element of delay.
In Willmott v. Barber25 Justice Fry has set out five requisites to establish
acquiescence. They are as follows:
1. The plaintiff must have made a mistake as to his/her legal rights.
2. He/she must have expended some money or must have done some act on the
faith of his/her mistaken belief.
3. The defendant, the possessor of the legal right, must know of the existence of
his/her own right which is inconsistent with the right claimed by the
plaintiff, for the doctrine of acquiescence is founded upon conduct with a
knowledge of the legal rights.
4. The defendant, the possessor of the legal right must know of the plaintiff's
mistaken belief of his/her rights.
25
(1880) 15 Ch D 96 at p. 105; Cited from Narayanan, P., Law of Copyright and Industrial Designs,
Eastern Law House, Calcutta, 1995, at 237.
21
5. The defendant, the possessor of the legal right, must have encouraged the
plaintiff in the expenditure of money or in other acts which he/she has done
either directly or by abstaining from asserting his/her legal right.
But Buckley LJ, in Shaw v. Applegate26 commented: "I do not think it is clear that it
is essential to find all the five tests set out by Fry J literally applicable and
satisfied in any particular case. The real test, I think must be whether upon the
facts of the particular case, the situation has become such that it would be
dishonest or unconscionable, for the person having the right sought to be
enforced, to continue to seek to enforce it".
FAIR DEALING
The requirement of substantial taking prevents the owner from objecting to
minor borrowings from his/her copyright work. The three most important
exceptions turn upon a qualitative assessment. They exempt copying for certain
purposes if it amounts to no more than fair dealing. In these cases the Courts are
left to judge fairness in the light of all the circumstances. If there is substantial
copying, it is a moot point whether the use could nevertheless be justified for a
reason beyond the confines of the statutory exceptions.
1. Research or Private Study- This applies to the copyright in literary, dramatic,
musical and artistic works and published editions. The role of these defenses
is particularly important in the field of Education. It is plain from the
parliamentary evolution of this defense that it may in principle cover research
in commerce, industry and government. What is fair will presumably vary to
fit each case.
26
(1978) 1 All ER 1223 at 131.
22
2. Reporting Current Events- This permits all works, other than photographs, to
be used for reporting current events. Photographs have been treated
differently in order to preserve the full value of holding a unique visual
record of some person or event. To come within the exception, the event itself
must be current and not the pretext for reviving historical information. A
spate of photographs of Princess Diana and the men in her life being
published prior to her untimely death (at the hands of the paparazzi?) was
not justified by the British tabloids with a copyright license, demanding
professional courtesy in the least. The exception must be read in conjunction
with a number of cognate provisions.27
3. Criticism or Review- This is the most general exception, allowing works to be
used for purposes of criticism or review (of themselves or another work), one
precondition of fairness being that the source should be sufficiently
acknowledged (as is the case with footnotes/endnotes). It may concern the
ideas expressed as well as the mode of expression (particularly relevant in
cases of book reviews, as earlier mentioned) and the Courts will not permit
wholesale borrowing to be dressed up as critical quotation.
PUBLIC POLICY
The judges have kept the power to refuse protection to a copyright owner on
public policy grounds.
1. Policy Against Legal Protection- It justifies the refusal of relief on a variety of
grounds which express disapproval of the content of the work; because it is
obscene, sexually immoral, defamatory, blasphemous, irreligious, heresy, or
seriously deceptive of the public. A work which satisfies the general criterion
of originality does not lose its copyright, or cease to be enforceable, because it
27
The Copyright, Designs and Patents Act, 1988, Sections 31 (incidental inclusion), 58 (record of spoken
words), 62 (artistic works on public display).
23
embodies another copyright work to an extent which requires a license and
that authority has not been obtained.
2. Policy Favoring Dissemination- The ability to protect confidential information
particularly in avoidance of breach of confidence cases is of utmost
importance here.
PRESUMPTIONS IN COPYRIGHT INFRINGEMENT ACTIONS
There are some statutory presumptions which throw the legal (persuasive)
burden of proof upon the defendant to infringement proceedings. Where literary,
dramatic, musical or artistic copyright is concerned they are:
i.
That a person named as author is the author of a work; and that he/she
did not produce it in circumstances (such as in the course of employment)
which would deprive him/her of the copyright initially. If this does not
apply, then
ii.
That if first publication of a work qualifies it for copyright, copyright
subsists and was owned at first publication by the person named as
publisher.
iii.
That, where the author is dead or unidentifiable when the action is
brought, the work was original and was first published where and when
the plaintiff alleges.
As regards copyright in sound recordings, films and computer programs, there
are presumptions that statements naming the copyright owner, or giving the
date or place of first publication, are true.
24
REMEDIES
There are many instances where justice can only be done if the Court acts to
prevent further damage to the plaintiff pending trial, or to prevent the defendant
from doing something that would injure the plaintiff’s chance of getting the relief
he/she is entitled to at trial.
Ex Parte Injunction
An injunction will only be granted ex parte in cases where the plaintiff has
shown clearly that there is a real urgency, making it impossible to give the
normal notice and that he/she has not delayed in applying for the injunction.
They are normally granted for a short period, usually to the first day on which
there can be a hearing of the matter, immediate notice to be given to the
defendant.
Interlocutory Injunctions
It is often of importance for a plaintiff to obtain immediate protection from a
threatened infringement of his/her copyright. In such a case, he/she should
apply for an interlocutory injunction for the purpose of preserving his/her rights
from further interference pending the trial of the action and if the granting of
such an injunction will not seriously interfere with the defendant, it may be
granted although the plaintiff does not fully prove his/her title to the right
alleged to be infringement, or has only an equitable title, or although the quantity
of the defendant’s work which constitutes the infringement has not been
ascertained.
An interlocutory injunction will not, however be granted, where the defendant
might suffer irreparable injury from an injunction restraining him/her from
publishing, pending the trial and the plaintiff can be properly protected, by the
25
defendant being ordered to keep an account, nor will it normally be granted
where a bona fide defense of fair dealing has been pleaded, or if the plaintiff has
been guilty of undue delay in coming to the Court or his/her conduct has
amounted to acquiescence in the infringement, or if there is any substantial
doubt as to the plaintiff’s right to succeed.28
The application for the interlocutory injunction is made to the court by notice of
motion, which is served on the defendant. This must be accompanied by written
evidence supporting the plaintiff’s case and must be sufficient to establish a
prima facie case on each of the requirements for the grant of such an injunction.
The defendant has the opportunity to submit written evidence in reply, if he/she
wishes to contest the motion, else he/she will normally resolve the matter by
giving the plaintiff an undertaking not to do the acts specified in the notice of
motion.
Anton Piller Orders29
The usual basis for claiming substantial damages for infringement relates to the
commercial value of the work; as with patents, the claim is either for
compensation for lost profits- because the defendant's infringements have lost
the plaintiff his/her own opportunities for sale. How far this will be assumed
from the very fact of the defendant's piratical sales depends on the particular
circumstances. Alternatively, the claim is for the misappropriation- because the
plaintiff has lost the chance of licensing or selling his/her copyright to the
defendant. As part of such a claim, the plaintiff is entitled to show that the cheap
or vulgar form of the defendant's piracy, injured reputation and so lost him/her
sales.
28
Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London,
1974, at 610.
29
Based on the case decision in Anton Piller K.G. v. Manufacturing Process Ltd. (1976) RPC 719; see also
E.M.I. Ltd. and others v. K.N.Pandit.[1975] 1 All ER Ch D 418.
26
Purpose and Need
[The purpose of an Anton Piller order is that, in extreme cases where there is
very clear and strong prima facie evidence of an infringement of copyright, trade
mark or other rights, it enables the plaintiff to enter the premises, first, to seize
the infringing material and secondly, to obtain information as to persons from
whom the defendant obtained the supplies of the infringing material and the
persons to whom the defendant in turn has supplied the infringing material.] But
an Anton Piller order will not be passed where the defendant are reputable
public companies and there is no reason for thinking that they would not
punctiliously comply with any order of the Court.
Anton Piller Orders have been a response to growing concern over the current
volume of sound recording, video and other copyright piracy and the imitation
of popular trade marks, but they are equally available, for instance, in breach of
confidence cases. They are invaluable in cases where there is a real possibility
that the defendants may destroy such material before any application inter partes
can be made. In Anton Piller's case, the Court of Appeal approved a procedure
that is of major practical importance to some owners of intellectual property
rights. The plaintiff applies to the High Court in camera without any notice to the
defendant, for an order that the defendant permit him/her (with his/her
solicitor) to inspect the defendant's premises and to seize, copy or photograph
material relevant to the alleged infringement. The defendant may be required to
deliver up infringing goods, keep infringing stock or infringing papers, and even
to give information, for instance, about his/her sources of supply, or the
destination of stock passing through his/her hands. An injunction against
infringement may be part of the order.
27
Technicalities
The form of the order makes it plain that the Court is not ordering or granting
anything equivalent to a search warrant. The Order is an order on the defendant
in personam to permit inspection. It is, therefore open to him/her to refuse to
comply with such an order, but at his/her peril either of further proceedings for
contempt of Court- in which case, of course, the Court will have the widest
discretion as to how to deal with it and if it turns out that the order was made
improperly in the first place, the contempt will be dealt with accordingly- but
more important, of course, the refusal to comply may be the most damning
evidence against the defendant at the subsequent trial.30
The order will be made if the plaintiff
i.
Provides an extremely strong prima facie case of infringement,
ii.
Shows that the damage, actual or potential to him/her is very serious, and
iii.
Provides clear evidence that the defendant has in his/her possession
incriminating documents or things and that there is a real possibility that
this material will be destroyed before any application inter partes can be
made. There are certain safeguards which are said to distinguish this sort
of order from a search warrant which are:
1. The plaintiff's solicitor, who is an officer of the Court, must attend.
2. The defendant must be given time to think and must be informed of
his/her right to consult his/her own solicitor and to apply to discharge
the order.
3. The plaintiff must also give a cross-undertaking in damages.
If consequent upon the grant of an Anton Piller order the evidence shows that
the order was in fact justified then the fact that the evidence before the learned
30
Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd edn, Sweet
and Maxwell, London, 1996, at 48.
28
judge was not as strong as it ultimately became, does not provide a ground for
challenging the order itself. However, it will not affect the situation if the order
was obtained mala fide or by some material non-disclosure. Where the Anton
Piller order has been obtained on the basis of non-disclosure of material facts, the
judge has a discretion to exclude evidence obtained as a result of the order. Even
if the non-disclosure was innocent, the Court will not lightly allow a party to
keep the benefit of it. Where the disclosure is serious and substantial it should
only allow use of the yield for good and compelling reasons.
The proceedings turn upon the plaintiff's evidence alone and they occur in
camera. If a single judge is satisfied prima facie that there is infringement and the
likelihood of serious injury, the defendant will know nothing until the inspection
is demanded. It takes considerable temerity then to challenge the findings on
which the order was made. The process has been labeled draconian and
essentially unfair in that it condemns a defendant without having been heard.
The Courts strive to be watchful for plaintiff's who go to excess, seeking for
instance, a means of shutting out the defendant from all business, legitimate as
well as illegitimate. The ground on which defendants have challenged orders
with some regularity is the plaintiff's failure to fully disclose all material
circumstances. This it has been said, should err on the side of excess; for it is for
the Court, not the plaintiff's advisers, to decide whether the order is justified. It is
no answer to a charge of inadequate disclosure that enough was shown to justify
the making of the order.
Search and Seizure
Prior to the Copyright Amendment Act, 1984, seizure of infringing copies by
police was possible only after a magistrate had taken cognizance of an offence
29
relating to infringement under Section 63 [The (Indian) Copyright Act, 1957].
Moreover such seizure could only be of infringing copies and did not extend to
plates used for making infringing copies. After the Act, the powers of the police
have been widened. Now Section 64 provides that where any police officer not
below the rank of sub-inspector of police is satisfied, that an infringement or an
abetment of infringement of copyright in any work has been, or is likely to be
committed, he/she may seize without any warrant all copies of the work and all
plates used for the purpose of making infringing copies of the work, wherever
found and the copies so seized must be produced before a magistrate as soon as
practicable.
Moreover, if business records have been seized, they should be retained until
trial, but should be returned after necessary information has been extracted from
them; and where infringing material has been seized it should be handed over to
the defendant's solicitor, once he/she is on the record, upon his/her undertaking
to keep it in safe custody and produce it, if required, at the trial.
No Court inferior to that of a Presidency Magistrate or a Magistrate of the First
Class, can try an offence under the Act. Any person can make a criminal
complaint and a magistrate will be competent to take cognizance of any offence
upon receiving a complaint of facts which constitutes such offence irrespective of
the qualifications or eligibility of the complainant to file a complaint. Ordinarily
however, it is the owner of the copyright or any person who has an interest in the
copyright, for example the licensee who files a complaint. A joint author can also
file a complaint. The conduct of the criminal proceedings is governed by the
Criminal Procedure Code.
The defendant is protected only by the discretion on costs and the plaintiff's
cross-undertaking in damages. If the order was not justified- whether or not it is
30
subsequently discharged- the defendant will be entitled to compensatory
damages for the contumely or affront in the way the proceedings were used
against him/her, and even to exemplary damages.
Right against self-incrimination
The acute difficulties of balancing efficacy against fairness have surfaced equally
over the element of instant discovery in any Anton Piller Order, which requires
answers on sources of supply or customers. Since these answers would in many
cases furnish evidence of criminal conduct, defendants at first sought to plead in
response a privilege against self-incrimination. The House of Lords uphold this
plea in any case where there is more than a remote or fanciful chance that a
serious charge, attracting heavy penalties might result. This meant that the
privilege was available to those who ran substantial piracy operations and so
were likely to be charged with conspiracy as to defraud, as distinct from (say) a
summary offence under the copyright or trade descriptions legislation, which
might be appropriate against a street trader. Because the upshot was to offer a
haven to those apparently most culpable, Parliament proved willing to intervene.
By the Supreme Court Act 1981, Section 72, in proceedings for infringement of
intellectual property rights31 or passing off, a defendant may after all be
compelled to answer a question or comply with an order which would tend to
expose him/her to proceedings for a related offence or recovery of a related
penalty. It is however, not possible to use any statement or admission so
procured in any equivalent criminal proceedings.
Discovery of names
Sometimes the only lead that a right-owner can pick up about infringing goods is
that they are passing through the hands of some person in the course of transit.
31
This, is the first statutory use of the term, encompassing 'patents, trademark, copyright, registered design,
technical or commercial information or other intellectual property ': Section 73(5).
31
That person may however not be infringing or be likely to do so. The Court may
order such a person to disclose the names of the consignors or consignees
responsible, if this is the only way for the plaintiff to discover whom he/she
should act against and of the person against whom the order is made, is shown
(however unwittingly) to be facilitating the wrongful acts.
Discovery will not be ordered against anyone who can give information as to the
identity of the wrongdoer. But discovery to find the identity of a wrongdoer is
available against anyone whom, the plaintiff has a cause of action in relation to
the same wrong. It is not available against a person who has no other connection
with the wrong, than that he/she was a spectator or has some document relating
to it in his/her possession.
Interlocutory orders to furnish the names and addresses of persons responsible
for supplying infringing copies to the defendant can be obtained in suitable
cases. The principle applied in such cases has been stated as "where a person,
albeit innocently and without incurring any personal liability became involved in
the tortious acts of others, he/she came under a duty to assist one injured by
those acts, by giving him/her full information by way of discovery and
disclosing the identity of the wrongdoers, and for that purpose, it mattered not
that such involvement was the result of voluntary action or the consequences of
the performance of a duty statutory or otherwise.
There is no rule of evidence that evidence disclosed under compulsion cannot
subsequently be used against the person disclosing it either in another civil
action or in a criminal prosecution.
32
Mareva Injunction
[More in general evolution in interlocutory procedure: the Mareva Injunction is
directed, not to the uncovering of assets belonging to the defendant which may
be needed to satisfy judgement in the action, particularly if they may otherwise
be removed from the jurisdiction. Orders are frequently made which contain
both Anton Piller and Mareva terms. These may relate to bank accounts and
other financial assets. Equally, there have been orders directed to the seizure of
specified valuables, in which according to the evidence, the proceeds of
infringement have been invested. Just as a defendant is permitted an allowance
for living expenses out of financial assets that are subject to a Mareva order, so
also, where the order relates to other assets, he/she will not be deprived of
things needed for living and conducting legitimate trade.]
Discoveries, Interrogatories, Inspection
English Courts have generally been careful to protect defendant against
speculative suits that are no more than fishing expeditions- proceedings begun to
find out what, if anything might really be claimed. Accordingly, infringement
actions cannot be launched effectively unless the plaintiff can specify, in his/her
statement of claims, particulars of at least one act of infringement. If he/she does
not give them and does not comply with any order for further and better
particulars he/she will be unable to defend himself/herself on a motion to strike
out pleadings or actions.
Provided that he/she can show enough to repel attacks on his/her pleadings, the
plaintiff will carry his/her case forward to the stage of pre-trial preparations. As
in other types of civil litigation, discovery of documents and the administration
of interrogatories are steps, which on occasion may provide important evidence
or admissions. In the United States such steps have been inflated into a form of
discovery that allows wide-ranging preliminary cross-examination of party by
33
party. If the documents discovered contain confidential information the other
party may be restrained from using the information for other purposes such as
revelations in the press or further litigation.
Beyond this there are special procedures for cases involving industrial
techniques. The plaintiff may need to discover what the defendant is doing; but
the defendant may fear that the inspection by him/her will reveal the
defendant's own secrets- a fear that, in the race to get ahead, is sometimes acute.
The Court has power to order inspection even against this sort of objection. But
while it will not require first to be satisfied prima facie that the defendant is
infringing, it may need to be shown that there are formidable grounds rather
than a mere suspicion. It may try to alleviate the defendant's anxieties by
requiring an independent expert to make the inspection, then it may have to be
done by the plaintiff and his/her advisers; but possibly on condition that nothing
is copied or taken away and that, all involved, are placed under obligations to
respect confidence.
In the main it is not isolated acts of infringement but runs of production that
provoke the owner of intellectual property rights into taking action. Accordingly,
a defendant's stake is likely to be high; and it may well become higher if
proceedings against him/her are delayed until he/she has established
commercial production and tied himself/herself to distribution arrangements.
The question here is: within what period after a particular infringement has been
perpetrated must a writ be issued? The various infringement actions in our field,
being tortious in character, must normally be begun within six years, of the
wrongful act. The same applies to actions based upon breach of contract. Only
the actions for breach of confidence may differ (when not founded in contract)
34
because of its equitable origin: probably the only principle is that a period of too
great delay (laches) must not be allowed to lapse.
An action, which is commenced within the limitation period, but then allowed to
stagnate, may be struck out for want of prosecution. But under current practice,
this will only be done if there is a real prejudice to the defendant, as well as
inordinate delay. Such prejudice might arise if witnesses in a patent action would
have to testify to the state of an art which has receded a considerable distance in
time.
Software Piracy: the norm or the exception.
Infringement of copyright in software occupies the pride of place among all cases
of copyright infringement. This problem is especially rampant in all developing
countries, with poor enforcement mechanisms contributing in no small measure
to it. More importantly, it has to do with a situation wherein people are unable to
afford them, yet they are indispensable tools for their day to day operations in a
fast growing technological world. Such clandestine or covert dealings, which are
more the norm than the exception in countries like India and China, costs the
industry a good billion dollars every year. In fact, if the author were to make a
confession, the author is presently writing this research paper on a pirated copy
of Microsoft Word!
The process by which the piracy is effected is very simple and that explains the
all-pervasive nature of the same32. More importantly, the lack of specially trained
judicial machinery and a capable force to deal with such complex and varied
infringements, has not helped in any manner33. In this context, it is necessary to
understand as to what constitutes software, as to understand what is being
protected.
Dhar, P.M., “Intellectual Property in Computer Programs: Weaknesses of the Indian Copyright Act,
1957”, JILI, Vol.28, No.4, 1982, p.487.
32
35
Computer Software: The Essential IngredientsComputer Software is explained to constitute the following three elements34:
 ‘Computer Program’- which is a set of instructions capable, when put in a
computer, of causing a machine having information processing capabilities to
indicate, perform or achieve a particular function, task or result;
 ‘Program Description’-which is a comprehensive procedural presentation,
in verbal, schematic or other form, in sufficient detail to determine a set of
instructions constituting a corresponding computer program;
 ‘Supporting Material’-which is any material other than a computer program
or a program description, created for aiding the understanding or application
of a computer program, i.e. a problem description and user instructions.
Computer Programs:
The Indian Copyright Act defines a computer program as “a set of instructions
expressed in words, codes, schemes or in any other form including the machine
readable medium capable of causing computer to perform a particular task or
achieve a particular result.”
Computer programs are written in two ways:
 Object code, and
 Source code.
Statements written in machine language is written in object code and language
that is understandable only by the programmer is called source code. A program
33
Ibid.
World Intellectual Property Organisation (hereinafter referred to as WIPO), Model Provisions on
Protection of Computer Software, (1978). See also, Puri, Kanwal, Copyright in Software, National Law
School Journal,Vol.1, 1989,p.32.
34
36
called the Compiler translates the source code into object code.35 Since programs
in source code are not comprehensible to the computer they are translated into
object code by another program.36
It is well settled that computer programs are subject to copyright37. Source code
satisfies the various tests and is thus subject to copyright38. However, that is not
of great relevance as the software is distributed only in the object form. The
underlying source code is generally not available to the public. The ‘pirate’
would require a compiler to convert the programme from source code to object
code, which is not that easy. The only question is whether the object code is
subject to copyright39.
Proving Piracy:
35
Ibid..
Supra, n.15, p.160.
37
See the decision of the Canadian High Court in Apple Computers v.Macintosh Computers. See also,
WIPO documents in this regard, the proposed protocol to the Berne Convention regarding copyright
protection for computer programs. The TRIPS agreement in the GATT final agreement also talks of the
same. c.f.Supra n.15.
38
Supra n. 34. However, there have been umpteen objections to making source code subject to copyright on
the grounds that There is a lack of accessibility. The tradition has been to protect works produced in a
written text .The main objection has been the absence of readability or appearance to the eye or visibility.
The question is whether the absence of these would present a difficulty in proving whether there was an
infringement.
39
The problem that is put forth which also seems to be a problem in proving piracy of works in the object
code seems to be that the object code is in the form of sequences of electrical impulses and that this is not a
material form. Since comparison is what is necessary it must be asserted that comparison is definitely
possible because programmes can be read out of ROM and therefore compared. The other problem is with
regard to the perceptibility –visibility question and he contention that an object programme cannot be
perceived by the senses and therefore must not be subject to copyright. This is warped logic because the
very reasons enumerated just now put forth the case that piracy of object code can be done by a person who
has no knowledge at all in the area and detection of such piracy is all the more difficult owing to these
reasons. This means a better way of policing such violations must be evolved. The ROM contains electrical
impulses that embody instructions that emanate from a written description. The computer can reproduce an
object code from a magnetic tape, floppy disk or ROM in a printed form. Object code is only a mechanical
translation of the source programme into another language. Besides if there is no protection to the object
code there is no point in protecting the source code. See, Supra n.34. Also, as per the Indian Copyright Act,
all programmes expressed in codes is entitled to protection if it can perform a particular task or achieve a
particular result, thus object code is covered. Besides India has signed the Berne Convention and the GATT
Final Act and the definition has to therefore be interpreted to include source code and object code. Also see
Apple Computer v. Franklin Computer Corp, 714 F.2d. 1240.
36
37
Just as in the case of written works, there must be a manual comparison of the
two works in the case of software such a comparison is possible. As per Section
45 of the Indian Evidence Act, an expert may be employed to prove a point
involving any “foreign law or science” and since such a comparison involves an
expert’s evidence an expert may be employed.
Piracy in software can occur at two levels:
 At the object code level40, and
 At the source code level41.
In order to find out whether there has been a violation of the source code, a
process of "reverse engineering” is necessary. The decompilation or disassembly
of the object form is necessary. It is in such situations that expert intervention is
actually necessary.
Where object code has been blindly copied, all that is necessary is a verification
of the bar code with every copy of the original program, and a violation can be
detected.
Non-Literal Elements of Computer Software:
The non-literal elements of computer software are elements of the software other
than the source code and object code such as the overall layouts, menus,
structure and look and feel. At one point there appeared to be a significant
amount of protection for the non-literal elements of computer software. The
courts even went so far as to apply the notion that taking the "total concept and
40
41
This is for those who require merely the executable program.
This is for competitors who seek to understand the structure and logic of the program.
38
feel" of a computer program (which had been found to be illegal with respect to
television characters)42 constitutes a copyright infringement43.
In the 1990's the courts began restricting protection of non-literal elements in
computer programs under copyright law. The two leading cases in this regard
are Computer Associates, Inc. v. Altai, Inc44. and Lotus Dev. Corp. v. Borland Int'l,
Inc45.
In the Altai case, Computer Associates had developed a scheduling program
and, separately, an "ADAPTER" to allow the scheduling program to be operated
on a number of different operating systems. Altai, a competitor of Computer
Associates, desired to develop an "adapter type" program to allow its scheduling
program to be used on an additional operating system. Altai hired an employee
of Computer Associates who, without Altai's knowledge, brought over code
from the ADAPTER program. After Computer Associates filed suit, Altai
realized what had happened, admitted liability for the direct copying and
reconstructed the program without any literal copying. The court had to
determine whether the non-literal copying constituted an infringement. The
Court of Appeals approved the statements of the district court below that had
said "references to structure, sequence, and organization" are no longer
necessarily relevant to how computer programming is done. With object oriented
programming,
and
especially
with
Windows
based
object
oriented
programming, such as Visual Basic, it is difficult to point to any particular
sequence of a computer program. The court went on to describe its three step test
for determining what, if any, of the non-literal elements of a computer program
are protectable under copyright law.
42
See, Sid and Marty Krofft Television Productions v. McDonald's Corp., 562 F.2d 1152 (9th Cir. 1977).
See generally, Scott On Computer Law, Second Edition, Section 3.47(C)(1).
44
982F.2d 693 (2d Cir. 1992).
43
39
The first step is "abstraction" where the court goes through a sort of "reverse
engineering." The court determines what are the various levels of abstraction of
the program. At the lowest level are the actual instructions organized into a
hierarchy of modules. At a higher level are the functions of each module. (Note
that a selection and organization of modules could involve creativity that is
protectable if at that level the program survives Step 2 "filtration" (discussed
below), as compilations may be protectable under the Copyright Act.)
The second step is filtration of each level of abstraction. Here the court filters out
the following at each level:
(a) Elements that constitute ideas or are dictated by
efficiency;
(b) Elements dictated by external factors such as
standard techniques rather than creative originality
on the part of the programmer; and
(c) Elements taken from the public domain.
The third step is the comparison test. From the filtration step, the court has
determined what of the plaintiff's program is protectable expression and then the
court determines whether or not the "defendant copied any aspect of this
protected expression, as well as an assessment of the copied portion's relative
importance with respect to the plaintiff's program." The Court of Appeals also
held that the district court's appointment of its own expert witness was
appropriate. Following these tests, the court held that there was no infringement.
45
489 F.3rd 807 (1st Cir. 1995). See also, Softel, Inc. v. Dragon Medical & Scientific Communications,
Inc., 118 F.3rd 955 (2nd Cir. 1997).
40
The court did hold that there was a possibility of misappropriation of trade
secrets. The court said that state trade secret law is not pre-empted under Section
301 of the US Copyright Act.
In Lotus v. Borland, Borland had developed a competitive spreadsheet program
that included an option which provided "a virtually identical copy of the 1-2-3
menu tree" contained in the Lotus spreadsheet program. There was no
contention that the underlying code or protected elements of computer screen
displays had been copied. Lotus' only contention was that Borland had
unlawfully copied its menu command hierarchy. The trial court concluded that
Lotus' menu hierarchy was protectable expression because, for example, many
different words could be used for the same commands. The Court of Appeals
reversed. Referring to 17 U.S.C. §102(b), the Court of Appeals said:
We hold that the Lotus menu hierarchy is an uncopyrightable
method of operation. We do not consider whether it could also be a
system, process, or procedure.
The Supreme Court granted certiorari to Lotus on an appeal from the First
Circuit Court of Appeals decision, but the Supreme Court affirmed by default
when it turned out that the Justices were equally divided on the issue.46
As courts became reluctant to protect non-literal elements of computer programs
under copyright law, courts, at the same time, became more comfortable with
granting patent protection to computer programs.
Shifting much of the protection for non-literal elements of computer programs
from copyright to patent law has created a situation that makes it much more
41
difficult for start up companies to protect their software because of the much
higher expense of filing for patent protection. In the author's view it also allowed
for monopoly protection of some matters that would not have ever been
protected by copyright law that are too easy to create in the software context to
fairly be the subject of patent protection. There is so much programming code
created every day that much of the software for which patent protection is
granted is already being used by others in the industry who just have not gone to
the trouble of applying for a patent. The author submits that a modified hybrid
of trade secret, patent and copyright law should be developed for the protection
of computer software.
46
116 S.Ct. 804 (1996).
42
INTERNATIONAL CONVENTIONS
The TRIP's agreement of Final Act embodying the results of the Uruguay Round
of Multilateral Trade negotiations to which India is a signatory, has tried to
adopt the regime of copyright protection provided for in the Berne Convention.
Article 9.1 of the TRIP’s agreement obliges members to comply with Articles 1 to
21 of the Berne Convention and the Appendix thereto. In other words it purports
to amend the Berne Convention. The latter provides its own amendment
procedures, requiring revision conferences in one of the countries of the Berne
Union with voting proceeding on the basis of unanimity. As this procedure has
not been followed, Article 9 is either ultra vires or should be read with the
prefatory words- for the purposes of this Agreement...47
Under Article 7(1) of the Berne Convention, the general term of protection is for
the life of the author and 50 years. Article 12 of the TRIP’s Agreement provides
that whenever the term of protection of a work, other than a photographic work
or a work of applied art, is calculated on a basis other than the life of a natural
person, “such term shall be no more than 50 years from the end of the calendar
year of authorize publication”, or where authorized publication does not occur,
50 years from the end of the calendar year of the making of the work. TRIP’s
provides under Article 61 for criminal remedies against the infringement of
intellectual property rights. In addition, Members shall be free to provide for
criminal procedures and penalties to be applied,
Consequently upon India signing the GATT and entering the global market
economy, a number of changes have been made in The (Indian) Copyright Act,
47
Blakeney, Michael, Trade Related Aspects of Intellectual Property Rights: A Concise Guide to the
TRIPS Agreement, Sweet and Maxwell, London, 1996, at 45.
43
1957 by the Amending Act of 1994, to give effect to the obligations arising from
the signing of the GATT.
Finally, mention must be made here of the Model Law of Copyright blessed by
both UNESCO and WIPO for developing countries, was finalized at Tunis. 48 To
cater for the specific needs of developing countries and to facilitate the access of
these countries to foreign works protected by copyright, while ensuring
appropriate international protection for their own works, the two convention,
that is - the Berne Convention for the protection of literary and artistic works and
the Universal Copyright Convention were revised in Paris.
48
Jhala, H.M., Intellectual Property and Competition Law in India with Special Reference to Patents,
Trademarks, Copyrights, and Know-How Contracts, N.M. Tripathi Private Limited, Bombay, 1985, at 146.
44