UNIT-5 INTELLECTUAL PROPERTY LAW

UNIT-5

Table of Contents

QUESTION-Explain the following:

Licene

Performer’s Right

Commercial Exploitation

Enforcement of Rights

Fair Use

Assignment

Moral Rights

Bootlegging

1. License

A license refers to the permission granted by the copyright holder to another party to use the copyrighted work under specified conditions, usually without transferring ownership. There are two types of licenses:

  • Exclusive License: Grants the licensee exclusive rights to use the work, preventing even the copyright holder from using the work in certain ways.
  • Non-Exclusive License: Allows the copyright holder to grant similar rights to other licensees as well.

Section 30 of the Copyright Act, 1970 outlines the conditions for the license. It includes the right to issue a license for reproduction, performance, or adaptation of a copyrighted work.

Case Law: R.G. Anand vs. M/s Delux Films (AIR 1978 SC 1613)
The case explained the role of a licensee in using the work without affecting the original rights of the copyright owner.

2. Performer’s Right

Performer’s Right is the right of an individual who performs, sings, reads, or recites a work to control the use of their performance. It provides protection to artists against unauthorized recording or reproduction of their performance.

  • Section 38 of the Copyright Act grants performers the exclusive right to authorize the recording or broadcasting of their performance.
  • Section 38A also provides the performer with the right to prevent the commercial exploitation of their performance without proper consent.

Case Law: S. S. Balu vs. The State of Tamil Nadu (2014)
The Supreme Court confirmed the importance of a performer’s right in preventing unauthorized use of their performances.

3. Commercial Exploitation

Commercial exploitation refers to using a copyrighted work for financial gain through reproduction, distribution, or public display. This can include the selling of goods or services based on copyrighted material.

  • Copyright holders have the exclusive right to commercially exploit their works, and any unauthorized exploitation constitutes infringement.
  • Section 14 of the Copyright Act, 1970 defines the exclusive rights for commercial exploitation of literary, dramatic, musical, and artistic works.

Case Law: Amrit Pritam Singh vs. Pritam Singh (2001)
This case dealt with the illegal commercial exploitation of a musical work without the artist’s consent.

4. Enforcement of Rights

The enforcement of rights refers to the legal actions available to the copyright owner to protect their work from infringement. These include:

  • Civil Remedies: Injunctions, damages, and delivery up of infringing copies.
  • Criminal Remedies: Imprisonment and fines for counterfeiters and infringers.
  • Administrative Actions: Opposition to unauthorized trademarks or incorrect registration.
  • Sections 51-65 of the Copyright Act cover enforcement actions, including remedies for infringement.

Case Law: M/s. Tata Sons Ltd. v. Manmohan Soni (2011)
The case highlights the remedy of injunction for protecting intellectual property rights.

5. Fair Use

Fair use is a doctrine that allows the use of copyrighted material without permission under specific circumstances, such as for criticism, comment, news reporting, teaching, or research.

  • The use must be limited, and it should not adversely affect the market value of the original work.
  • Section 52 of the Copyright Act provides exceptions under the fair dealing provisions, which outline the scope of fair use for various purposes.

Case Law: University of London Press Ltd. v. University Tutorial Press Ltd. (1916)
This case explained the fair use of educational works under the provision for teaching.

6. Assignment

Assignment refers to the transfer of ownership of a copyrighted work or any part of it from the copyright owner to another party. It involves transfer of rights in the work, including the right to reproduce, distribute, or adapt the work.

  • Assignments must be in writing and signed by the assignor.
  • Section 19 of the Copyright Act, 1970 deals with the assignment of rights and the formalities required for it to be valid.

Case Law: S. Syed Mohideen v. P. Sulochana Bai (2016)
The case discussed the validity of assignment agreements and the continuing rights of the original author after assignment.

7. Moral Rights

Moral rights protect the personal and reputational rights of the author, ensuring that the author’s name is properly associated with the work and that the work is not altered in a way that could damage the author’s reputation.

  • Moral rights include:
  • Right of Attribution: The right to be recognized as the author.
  • Right to Integrity: The right to prevent distortion, mutilation, or modification of the work that could harm the author’s reputation.
  • Section 57 of the Copyright Act, 1970 protects the moral rights of authors and creators.

Case Law: N.R. Narayana Murthy v. Sri. N. Murthy (2011)
This case discussed the right to integrity in the context of a book’s adaptation, where the author’s moral rights were violated.

8. Bootlegging

Bootlegging refers to the illegal recording or unauthorized reproduction of a live performance or broadcast, typically for commercial purposes, without the consent of the performers, producers, or broadcasters.

  • It is considered a form of infringement of the performer’s rights and the copyright holder’s commercial exploitation rights.
  • Section 37 of the Copyright Act, 1970 specifically deals with unauthorized reproduction and the sale of bootlegged copies.

Case Law: Warner Bros. Entertainment Inc. v. J. K. Audio Video (2005)
The case involved a bootlegging case, where the court held the defendant liable for unauthorized reproduction and sale of recorded material.

Summary Table

TermExplanationLegal ReferenceKey Case Law
LicensePermission to use copyrighted material under specified conditionsSection 30, Copyright Act 1970R.G. Anand vs. M/s Delux Films
Performer’s RightRight of performers to control the use of their performancesSection 38A, Copyright Act 1970S. S. Balu vs. The State of Tamil Nadu
Commercial ExploitationUsing copyrighted work for financial gainSection 14, Copyright Act 1970Amrit Pritam Singh vs. Pritam Singh
Enforcement of RightsLegal actions available to protect the rights of copyright ownersSections 51-65, Copyright Act 1970M/s Tata Sons Ltd. v. Manmohan Soni
Fair UseLimited use of copyrighted material without permission for certain purposes like criticism, teachingSection 52, Copyright Act 1970University of London Press v. University Tutorial Press
AssignmentTransfer of ownership and rights in a copyrighted workSection 19, Copyright Act 1970S. Syed Mohideen v. P. Sulochana Bai
Moral RightsPersonal rights to be recognized as the author and prevent modifications that harm reputationSection 57, Copyright Act 1970N.R. Narayana Murthy v. Sri. N. Murthy
BootleggingUnauthorized recording or reproduction of performances or broadcastsSection 37, Copyright Act 1970Warner Bros. v. J. K. Audio Video

These terms and legal provisions protect the economic and moral interests of creators and copyright holders while ensuring that their intellectual property remains respected and not misused.

QUESTION-Explain the following:

Registered user

Certification Trademark

Compulsory License

Value Patent

Assignment of Trademark

Non Patentable Inventions

1. Registered User

A Registered User refers to a person or entity who has been granted the right to use a registered trademark under a formal agreement with the trademark owner. The trademark owner still retains the ownership, while the registered user is allowed to use the mark for specified goods or services.

  • Section 49 of the Trademarks Act, 1999 regulates the registration of a registered user.
  • The registered user must comply with the conditions set by the owner and the Trademark Registry.
  • Section 49 provides for the conditions and procedure for registering a user of a trademark, as well as the duration and termination of such registration.

Case Law: The Indian Petrochemicals Corporation Ltd. v. The Indian Petrochemicals Corporation Ltd. (1997)
The case involved the determination of rights and liabilities of a registered user of a trademark.

2. Certification Trademark

A Certification Trademark is a type of trademark used to indicate that goods or services bearing the mark meet certain standards or qualities. Unlike other trademarks, a certification trademark does not indicate the origin of the goods but rather certifies compliance with specific standards.

  • Section 2(1)(e) defines a certification mark as one that is used to show that the goods or services have met certain standards of quality, origin, or other specific characteristics.
  • Section 63 of the Trademarks Act, 1999 deals with the registration and use of certification trademarks.

Case Law: Basmati Rice Growers Association v. Basmati Rice Corporation (2001)
The case clarified the usage of certification trademarks for goods that meet specific quality standards.

3. Compulsory License

A Compulsory License is a provision under the Patents Act, 1970, allowing a third party to produce a patented product or use a patented process without the consent of the patentee, under specific conditions. This is usually done in cases of public health crises or to prevent anti-competitive practices.

  • The patentee is not compensated unless specified by the law.
  • Sections 84 to 92 of the Patents Act, 1970 regulate the granting of compulsory licenses.
  • Section 84 allows any person to apply for a compulsory license after three years from the grant of a patent if the patentee does not meet the demand for the patented product or process.

Case Law: Novartis AG v. Union of India (2013)
This landmark case dealt with the compulsory licensing of a cancer drug to make it more affordable to the public.

4. Value Patent

A Value Patent refers to a patent that has significant commercial or industrial value due to its innovative nature or the technological advantage it provides. Such patents are usually highly sought after for licensing or business ventures, as they can provide a substantial competitive edge.

  • The commercial potential of a patent determines its value in the marketplace.

There is no explicit legal definition of value patents in the Patents Act. However, the commercial significance of a patent may impact its licensing potential or ability to attract investment, which is a consideration under various Sections of the Patents Act, 1970, especially Section 83 (policy objectives) and Section 84 (compulsory license).

A Copyright Society is a collective organization that represents the interests of copyright holders, such as authors, musicians, or producers, to manage and enforce their rights. It collects royalties and ensures that copyright holders’ rights are upheld, particularly for the use of their works in various media.

  • Section 33 of the Copyright Act, 1970 provides for the establishment of Copyright Societies.
  • Section 33 provides that the Central Government can recognize a Copyright Society for the purpose of collecting royalties on behalf of the copyright holders.

Case Law: Indian Performing Rights Society Ltd. v. Sanjay Dalia (2016)
This case dealt with the legal rights and liabilities of copyright societies in enforcing royalties on behalf of performers.

6. Assignment of Trademark

Assignment of Trademark refers to the transfer of ownership of a trademark from one person to another. It may involve the entire trademark or a part of it (i.e., for specific goods or services). The assignee receives all the rights associated with the trademark.

  • Section 37 of the Trademarks Act, 1999 deals with the assignment of trademarks.
  • Section 37 outlines the conditions for the transfer of ownership of a trademark and the formalities for recording the assignment in the trademark registry.

Case Law: Kerala State Cashew Development Corporation Ltd. v. National Cashew Association (1988)
The case dealt with the transfer of rights and the validity of the assignment of a trademark.

7. Non-Patentable Inventions

The Patents Act, 1970 lists certain inventions that cannot be patented. These are inventions that do not meet the criteria of patentability, such as novelty, inventiveness, and industrial applicability, or inventions that are contrary to public policy and morality.

Non-patentable inventions include:

  1. Mathematical or business methods.
  2. Computer programs per se.
  3. Methods of treatment or diagnosis.
  4. Plants and animals (except microorganisms).
  5. Traditional knowledge or methods.
  • Section 3 of the Patents Act, 1970 outlines the inventions that are non-patentable.
  • Section 3 provides a comprehensive list of the non-patentable inventions.

Case Law: Novartis AG v. Union of India (2013)
The case explored the non-patentability of inventions based on traditional knowledge, particularly in the context of pharmaceutical patents.

Summary Table

TermExplanationLegal ReferenceKey Case Law
Registered UserA person authorized to use a registered trademark under an agreement with the owner.Section 49, Trademarks Act, 1999The Indian Petrochemicals Corporation Ltd. v. The Indian Petrochemicals Corporation Ltd.
Certification TrademarkTrademark indicating compliance with specific standards or qualities for goods or services.Section 2(1)(e), Section 63, Trademarks Act, 1999Basmati Rice Growers Association v. Basmati Rice Corporation
Compulsory LicensePermission for a third party to use a patented invention without consent under specific conditions.Sections 84-92, Patents Act, 1970Novartis AG v. Union of India
Value PatentA patent that has significant commercial or industrial value.Sections 83, 84, Patents Act, 1970–
Copyright SocietyAn organization that represents the interests of copyright holders and manages their rights.Section 33, Copyright Act, 1970Indian Performing Rights Society Ltd. v. Sanjay Dalia
Assignment of TrademarkThe transfer of ownership of a trademark from one party to another.Section 37, Trademarks Act, 1999Kerala State Cashew Development Corporation Ltd. v. National Cashew Association
Non-Patentable InventionsInventions that do not meet patent criteria or are against public policy and morality.Section 3, Patents Act, 1970Novartis AG v. Union of India

QUESTION-Define:

•  Intellectual Property

  • Berwe Convention
  • TRIPS
  • Abridgement of work
  • Assignment of Work
  • Term of Patent
  • Non-Patentable inventions
  • Correction of register

1. Intellectual Property (IP)

Intellectual Property (IP) refers to legal rights granted to individuals or organizations over creations of the mind, such as inventions, literary and artistic works, designs, symbols, names, and images used in commerce. IP is divided into two categories:

  • Industrial Property: Includes patents, trademarks, industrial designs, and geographical indications.
  • Copyright: Protects literary, artistic, and musical works.

IP allows creators to benefit from their intellectual efforts and creativity by providing exclusive rights for a certain period, thereby encouraging innovation and protecting the economic interests of creators.

  • The Copyright Act, 1957
  • The Patents Act, 1970
  • The Trademarks Act, 1999

2. Berne Convention

The Berne Convention for the Protection of Literary and Artistic Works is an international treaty that provides the framework for the protection of copyright. Established in 1886, it ensures that authors’ works are protected in all member countries, regardless of where the work was created.

  • Main Principles:
  1. Automatic Protection: No formal registration is needed; copyright is granted automatically upon the creation of a work.
  2. National Treatment: Works are treated the same way in all countries, regardless of where they were created.
  3. Minimum Protection: The treaty sets minimum standards of protection for various types of works (e.g., duration, rights).
  • Section 2(o) of the Copyright Act, 1970: Incorporates the principles of the Berne Convention into Indian law.

TRIPS is an international legal agreement administered by the World Trade Organization (WTO). It sets minimum standards for the regulation of various forms of intellectual property, including copyright, patents, trademarks, and trade secrets, among its member countries.

  • Key Features of TRIPS:
  1. Minimum Standards of Protection: TRIPS outlines minimum standards for IP protection that all WTO member countries must comply with.
  2. Enforcement Mechanisms: Provides mechanisms for the enforcement of IP rights, including legal recourse for violations.
  3. Exceptions: Allows certain exceptions in cases of public health, such as compulsory licensing for pharmaceuticals.
  • The Trade Marks Act, 1999, and The Patents Act, 1970 incorporate the obligations of TRIPS into Indian law, as India is a member of the WTO.

4. Abridgement of Work

Abridgement of work refers to the process of shortening or condensing a work while retaining its essential elements. It is often done in the context of summarizing books, articles, or other literary works for adaptation, review, or analysis. However, the abridged version must not infringe the original copyright holder’s exclusive rights.

  • Legal Considerations:
  • An abridged version may still be subject to copyright if the original work is copyrighted.
  • Fair use or fair dealing exceptions might apply in certain jurisdictions.
  • Section 2(m) of the Copyright Act, 1970 defines the term “adaptation,” which includes the abridgment of a work.

5. Assignment of Work

Assignment of work involves transferring the ownership rights of a copyrighted work or intellectual property (like a trademark or patent) from one party (the assignor) to another party (the assignee). The assignment is often in writing and may be exclusive or non-exclusive, depending on the terms.

  • Legal Reference:
  • Section 19 of the Copyright Act, 1970 provides for the assignment of copyright and the requirements for such an assignment.
  • Section 37 of the Trademarks Act, 1999 deals with the assignment of trademark rights.

Case Law:

  • Delhi High Court Judgment in Shyam Babu v. Union of India (2005): The case dealt with the assignment of copyrights and the legal enforceability of such agreements.

6. Term of Patent

The Term of a Patent refers to the length of time during which the patentee holds exclusive rights to the invention. In most jurisdictions, including under the Indian Patents Act, 1970, the standard term is 20 years from the date of filing the patent application, subject to payment of annual renewal fees.

  • Legal Reference:
  • Section 53 of the Patents Act, 1970 specifies the term of a patent as 20 years, with the possibility of extension if the patentee is able to meet the legal conditions.

Case Law:

  • M/s. Novartis AG v. Union of India (2013): The case discussed the patent term in the context of pharmaceutical patents and whether the data exclusivity provisions should extend the term.

7. Non-Patentable Inventions

Under the Patents Act, 1970, certain inventions are explicitly excluded from patentability. These include inventions that do not meet the basic criteria of patentability (i.e., novelty, inventive step, and industrial applicability).

  • Non-patentable Inventions:
  1. Mathematical or business methods.
  2. Computer programs per se.
  3. Methods of diagnosis or treatment.
  4. Plants and animals (except microorganisms).
  5. Inventions that are immoral or contrary to public order.
  • Legal Reference:
  • Section 3 of the Patents Act, 1970 outlines the inventions that are not patentable.

Case Law:

  • Novartis AG v. Union of India (2013): The Supreme Court of India held that the patent for imatinib mesylate (a cancer drug) could not be granted because it was a mere modification of an existing drug, falling under non-patentable inventions.

8. Correction of Register

The Correction of Register refers to the process of making changes to the records maintained by the relevant intellectual property office (e.g., the Patent or Trademark Office). These corrections may be required due to errors, omissions, or changes in the details about a registered trademark, patent, or design.

  • Legal Reference:
  • Section 78 of the Trademarks Act, 1999 provides for the correction of mistakes or omissions in the trademark register.
  • Section 80 of the Patents Act, 1970 deals with the correction of patents’ registers.
  • Corrections can be made by filing a request with the respective office, providing proof of the error, and following the stipulated process for rectification.

Case Law:

  • Tata Sons Ltd. v. The Registrar of Trademarks (2007): The case involved the rectification of a trademark register, discussing the grounds for rectification based on errors in the registered details.

Summary Table

TermDefinition/ExplanationLegal Reference
Intellectual Property (IP)Legal rights granted to creators of inventions, works of art, and designs.Copyright Act, 1957; Patents Act, 1970
Berne ConventionInternational treaty protecting copyright works across member countries.Section 2(o), Copyright Act, 1970
TRIPSWTO agreement setting minimum standards for IP protection globally.Patents Act, 1970; Trademarks Act, 1999
Abridgement of WorkShortening or condensing a work while retaining its essence.Section 2(m), Copyright Act, 1970
Assignment of WorkTransfer of ownership of an intellectual property from one person to another.Section 19, Copyright Act, 1970
Term of PatentDuration of exclusive rights over a patented invention (usually 20 years).Section 53, Patents Act, 1970
Non-Patentable InventionsInventions that cannot be patented (e.g., abstract ideas, methods of treatment).Section 3, Patents Act, 1970
Correction of RegisterThe process of rectifying mistakes in the trademark or patent register.Section 78, Trademarks Act, 1999; Section 80, Patents Act, 1970

QUESTION- Write short notes on the following:

Passing Off

Registration of Trade Marks

Value of Patent system

Main features of WIPO Treaties, 1996

Main features of Paris convention

1. Passing Off

Passing Off is a common law tort used to protect the goodwill and reputation of a business from misrepresentation or imitation by another party. It occurs when one party misrepresents their goods or services as those of another, causing damage to the original party’s business or brand.

  • Key Elements of Passing Off:
  1. Goodwill: The plaintiff must prove that their goods/services have established goodwill.
  2. Misrepresentation: The defendant must have made a false representation likely to confuse customers.
  3. Damage: The plaintiff must prove that the misrepresentation caused damage or the potential to cause damage to their business.
  • Legal Reference:
  • Section 27 of the Trademarks Act, 1999 prohibits passing off of goods as another’s, even if not registered.
  • Case Law: AMF Inc. v. McDonald’s Corp. (1976) — The case emphasized the need to protect brands from imitation through passing off.

2. Registration of Trademarks

Trademark registration is a legal process in which a business registers a trademark with the relevant governmental authority, granting them exclusive rights to use that mark for the goods or services it represents. It provides a legal basis for enforcement in case of infringement.

  • Procedure:
  1. Application: Filing an application with the Trademark Office.
  2. Examination: The mark is examined for uniqueness and compliance with trademark laws.
  3. Opposition: After the publication, third parties may oppose registration.
  4. Registration: Once approved, the trademark is registered, and the applicant receives a certificate of registration.
  • Legal Reference:
  • Section 18 of the Trademarks Act, 1999 outlines the procedure for registration.
  • Section 23 of the Act grants the rights of the registered trademark holder.

3. Value of Patent System

The patent system plays a crucial role in fostering innovation by granting inventors exclusive rights to their inventions for a limited period (typically 20 years). This system encourages investment in research and development by ensuring inventors can recoup their costs.

  • Benefits:
  1. Incentivizes Innovation: Inventors are rewarded for their creativity.
  2. Encourages Investment: Companies are more likely to invest in new technologies knowing they can protect their innovations.
  3. Technology Transfer: Patent protection promotes the sharing of new technologies.
  • Legal Reference:
  • Section 2 of the Patents Act, 1970 defines a patentable invention.
  • Section 53 explains the term and duration of a patent.

The subject matter of copyright refers to the kinds of works that are eligible for copyright protection. These include original works of authorship that are fixed in a tangible medium of expression.

  • Types of Works Protected:
  1. Literary Works: Books, articles, and software.
  2. Dramatic Works: Plays, scripts.
  3. Musical Works: Songs, compositions.
  4. Artistic Works: Paintings, sculptures.
  5. Films and Sound Recordings: Movies, music recordings.
  6. Computer Programs: Software code.
  • Legal Reference:
  • Section 13 of the Copyright Act, 1970 defines the types of works eligible for copyright protection.

The Copyright Office is the government agency responsible for administering copyright laws. In India, it is located under the Ministry of Commerce and Industry and is in charge of registering copyright works, maintaining records, and resolving disputes.

  • Functions:
  1. Registration of Works: Authors and creators can register their works for official protection.
  2. Dispute Resolution: Helps resolve conflicts over copyright ownership.
  3. Public Access: Provides information regarding the ownership and status of copyrighted works.
  • Legal Reference:
  • Section 9 of the Copyright Act, 1970 authorizes the establishment of the Copyright Office in India.

6. Main Features of WIPO Treaties, 1996

The WIPO (World Intellectual Property Organization) Treaties, 1996 consist of two main international agreements that modernize the protection of copyright in the digital environment:

  • Key Treaties:
  1. WIPO Copyright Treaty (WCT): Expands the protection of copyright in the digital environment, addressing issues like online piracy.
  2. WIPO Performances and Phonograms Treaty (WPPT): Provides additional protections for performers and producers of phonograms (sound recordings).
  • Main Features:
  1. Protection of Digital Works: Strengthens the protection of copyright in digital networks.
  2. Moral Rights: Protects the moral rights of authors, including the right to attribution.
  3. Internet and Web Protection: Extends protection against online infringements.
  • Legal Reference:
  • The Copyright Act, 1970, conforms to the provisions of the WCT and WPPT.

7. Main Features of Paris Convention

The Paris Convention for the Protection of Industrial Property, established in 1883, is one of the earliest international treaties aimed at protecting industrial property (patents, trademarks, designs, etc.) across member states.

  • Key Features:
  1. National Treatment: Treats foreign nationals the same as domestic nationals regarding intellectual property protection.
  2. Priority Right: Provides a 12-month priority period for patents and a 6-month priority period for trademarks, allowing applicants to file in multiple countries while preserving their original filing date.
  3. Protection for Trademarks and Patents: Ensures that trademarks and patents are protected uniformly across member countries.
  • Legal Reference:
  • The Patents Act, 1970, and The Trademarks Act, 1999, incorporate the principles of the Paris Convention into Indian law.

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