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by Justice Rajesh Tandon++

Cite as : (2004) 8 SCC (J) 9

Today's subject-matter of the Round Table is role of the judiciary in intellectual property rights development and adjudication.

Intellectual property rights are divided into various parts. One of the parts is known as copyright. Apart from the Copyright Act governing copyright there are several other intellectual property laws in India i.e. the Patents Act, 1970, the Trade Marks Act, 1999, the Designs Act, 1911, the Geographical Indications of Goods (Registration and Protection) Act, 1999, the Press Council Act, 1978, the Press and Registration of Books Act, 1867, the Architects Act, 1972, the Information Technology Act, 2000 and the Young Persons (Harmful Publications) Act, 1956. First we will deal with the Copyright Act, 1957 which is similar to other Acts.

The first piece of legislation was the Copyright Act of 1709, which was made for the encouragement of learning by vesting the copies of printed books in the authors or purchasers of such copies. The authors of the books were given sole rights of printing, then in 1775 an Act was passed to enable the universities to hold, for perpetuity, their copyright in books given or bequeathed to them "for the advancement of useful learning and other purposes of education". Thereafter the Copyright Act was passed in the year 1842. Ultimately Act 2 of 1914 was passed to modify and add to the provisions of the Copyright Act, 1911, which extended to the whole of British India.

After the Act of 1914, there had been considerable and notable technical developments all over the world as regards gramophone records, cinematographs, power, sound and television broadcasts, etc.

On 2-6-1928 the Berne Convention was held. It was further revised in Brussels on 26-6-1948. Thereafter comprehensive legislation was introduced both in England and India.

The Copyright Act, 1957 was passed on 4-6-1957 which came into force on 21-1-1958. Drastic amendments in the Act were brought about by the Copyright (Amendment) Act, 1983. Further, another amendment was introduced in 1992. Thereafter the Act was again thoroughly amended by the Copyright (Amendment) Act, 1994.

Copyright has been defined from time to time. Section 1 of the English Copyright Act, 1956 means the exclusive right by virtue and subject to the provisions of the Act, to do and to authorise other persons to do, certain acts in relation to that work.

Section 14 of the Copyright Act, 1957 has stated that "copyright" means the exclusive right, subject, of course, to the provisions of the Act, to do or authorise the doing of certain acts; what those certain acts are, have been enumerated differently for purposes of (1) literary, dramatic or musical work; (2) computer work; (3) artistic work; (4) cinematography film; and (5) sound recording.

With regard to intellectual property rights an agreement of trade-related aspects was introduced where Article 2 defines the intellectual property convention.

In order to separate the relationship between the words "Intellectual Property Organisation" known as WIPO as well as relevant organisations, Article 1 provides that intellectual property refers to all categories of intellectual property that are the subject of Section 1. The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

Article 41 relates to the enforcement of intellectual property rights. This article reads as under:

"1. Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringement. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trades and to provide for safeguards against their abuse.

2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

3. Decisions on the merits of a case shall preferably be in writing and reasoned. They shall be made available at least to the parties to the proceeding without undue delay. Decisions on the merits of a case shall be based on evidence in respect of which parties were offered the opportunity to be heard.

4. Parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions and, subject to jurisdictional provisions in a member's law concerning the importance of a case, of at least the legal aspects of initial judicial decisions on the merits of a case. However, there shall be no obligation to provide an opportunity for review of acquittals in criminal cases.

5. It is understood that this Part does not create any obligation to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of members to enforce their law in general. Nothing in this Part creates any obligation with respect to the distribution of resources as between enforcement of intellectual property rights and the enforcement of law in general."

Further Article 50 provides preventive measures for ensuring the judicial authority to order prompt and effective provisional measures:

(a) to prevent an infringement of any intellectual property right from occurring and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance;

(b) to preserve relevant evidence in regard to the alleged infringement.

Article 61 provides for criminal procedures and penalties to be applied at least in cases of wilful trade mark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular, where they are committed wilfully and on a commercial scale.

The matter of intellectual property under the Copyright Act, 1957 was taken up for the jurisdiction of the court under Section 62 under the chapter "Civil Remedies". It provides that every suit or other civil proceeding arising under this chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the District Court having jurisdiction.

Enforcement of intellectual property rights

The enforcement provisions are contained in Part III of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement). On 15-12-1993, the negotiations under the Uruguay Round in the framework of the General Agreement on Tariffs and Trade (GATT) were concluded. One of the many areas of negotiations was intellectual property, which had not before been under the GATT regime. The result of the negotiations is contained in the TRIPS Agreement. GATT including the TRIPS Agreement was formally signed at Marrakech, Morocco on 15-4-1994 and entered into force on 1-1-1995. The new organisation set up under the Uruguay Round, the World Trade Organisation (WTO) started its work on 1-1-1995.

The TRIPS Agreement contains a special regime for intellectual property which is partly self-contained, partly based on the contents of the conventions administered by WIPO primarily the Paris, Berne and Rome Conventions and also the Washington Treaty on Integrated Circuits.

There are three principal features of the TRIPS Agreement:

(1) adequate norms and minimum standards for the protection of intellectual property;

(2) effective enforcement of these norms and standards, both domestic and at the border;

(3) availability of an effective dispute settlement mechanism to ensure the obligations to provide adequate norms and standards and their effective enforcement are complied with by members.

The enforcement provisions in the TRIPS Agreement represent a remarkable first step forward in the protection of intellectual property rights. The task of crafting a set of obligations which could apply both in civil law and common law countries was formidable. The enforcement provisions of the TRIPS Agreement set forth in some detail the procedures and remedies that each member must make available in its domestic laws to enable right-holders to enforce the intellectual property rights established in Part II of the TRIPS Agreement. In addition, the Agreement establishes performance requirements against which each member's fulfilment of its obligations to effectively enforce these intellectual property rights will be measured. Undoubtedly there will be disputes regarding the extent and scope of the obligations and a certain gloss will be added to the literal wording of the text. Fortunately the link of Articles XXII and XXIII of GATT, 1994 in Article 64 of the TRIPS Agreement raises the consequences for any nation which might be tempted not to give full effect to the provisions of the TRIPS Agreement as required by its Article 1.

Part III of the TRIPS Agreement (Articles 41 to 61 inclusive) on enforcement contains five sections:

1. General obligations (Article 41).

2. Civil and administrative procedures and remedies (Articles 42-49).

3. Provisional measures (Articles 51-60).

4. Special requirements related to border measures (Articles 51-60).

5. Criminal procedures (Article 61).

Although not included under the enforcement umbrella, Part IV of the TRIPS Agreement on acquisition and maintenance of intellectual property rights and related inter partes procedures is clearly part of the overall scheme of enforcement of intellectual property rights.

In the case Exphar Sa v. Eupharma Laboratories Ltd.1 the Supreme Court has held as follows: (SCC p. 693, paras 12-13)

"12. We would like to emphasise the word 'include'. This shows that the jurisdiction for the purposes of Section 62 is wider than that of the court as prescribed under the Code of Civil Procedure, 1908. The relevant extract of the report of the Joint Committee published in the Gazette of India dated 23-11-1956 which preceded and laid the foundation for Section 62(2) said:

'In the opinion of the Committee many authors are deterred from instituting infringement proceedings because the court in which such proceedings are to be instituted is situated at a considerable distance from the place of their ordinary residence. The Committee feels that this impediment should be removed and the new sub-section (2) accordingly provides that infringement proceedings may be instituted in the District Court within the local limits of whose jurisdiction the person instituting the proceedings ordinarily resides, carries on business, etc.'

13. It is, therefore, clear that the object and reason for the introduction of sub-section (2) of Section 62 was not to restrict the owners of the copyright to exercise their rights but to remove any impediment from their doing so. Section 62(2) cannot be read as limiting the jurisdiction of the District Court only to cases where the person instituting the suit or other proceeding, or where there are more than one such persons, any of them actually and voluntarily resides or carries on business or presently works for gain. It prescribes an additional ground for attracting the jurisdiction of a court over and above the 'normal' grounds as laid down in Section 20 of the Code."

In the case of Indian Performing Right Society Ltd. v. Eastern Indian Motion Pictures Assn.2 Krishna Iyer, J. has held as under: (SCC pp. 833-34, paras 22 & 24)

"22. The creative intelligence of man is displayed in multiform ways of aesthetic expression but it often happens that economic systems so operate that the priceless divinity which we call artistic or literary creativity in man is exploited and masters, whose works are invaluable, are victims of piffling payments. World opinion in defence of the human right to intellectual property led to international conventions and municipal laws, commissions, codes and organisations, calculated to protect works of art. India responded to this universal need by enacting the Copyright Act, 1957.

24. A somewhat un-Indian feature we noticed in the Copyright Act falls to be mentioned. Of course, when our law is intellectual borrowing from British reports as, admittedly it is, such exoticism is possible. 'Musical work', as defined in Section 2(p), reads:

'2. (p) musical work means any combination of melody and harmony or either of them printed, reduced to writing or otherwise graphically produced or reproduced.'

Therefore, copyrighted music is not the soulful tune, the superb singing, the glorious voice or the wonderful rendering. It is the melody or harmony reduced to print, writing or graphic form. The Indian music lovers throng to listen and be enthralled or enchanted by the nada brahma, the sweet concord of sounds, the raga, the bhava, the laya and the sublime or exciting singing. Printed music is not the glamour or glory of it, by and large, although the content of the poem or the lyric or the song does have appeal. Strangely enough, 'author', as defined in Section 2(d), in relation to a musical work, is only the composer and Section 16 confines 'copyright' to those works which are recognised by the Act. This means that the composer alone has copyright in a musical work. The singer has none. This disentitlement of the musician or group of musical artists to copyright is un-Indian, because the major attraction which lends monetary value to a musical performance is not the music-maker, so much as the musician. Perhaps, both deserve to be recognised by the copyright law. I make this observation only because art, in one sense, depends on the ethos and the aesthetic best of a people, and while universal protection of intellectual and aesthetic property of creators of 'works' is an international obligation, each country in its law must protect such rights wherever originality is contributed. So viewed, apart from the music composer, the singer must be conferred a right. Of course, law-making is the province of Parliament, but the court must communicate to the law-maker such infirmities as exist in the law extant." (emphasis in original)

The Supreme Court has further defined intellectual property in Tata Consultancy Services v. State of A.P.3 It has been held as under: (SCC p. 631, para 2)

"2. The case advanced on behalf of the appellants is that the branded software which is an intellectual property being the product of thought, creativity and intellectual efforts cannot be 'goods' for the purpose of the Act; that it is an intangible intellectual property and, therefore, cannot be 'goods'; that software is an essentially classic form of intellectual property; that the value of the tapes on which it is sold is much less than the value of the software program itself; that the software program is always transferred on to the hardware and then the tapes are useless; that, therefore, the licensee/payer is paying for the program and not for the tapes or discs; these discs are different from music cassettes and videotapes, music reels, etc. because the program on the discs is separable and is always transferred to the hardware, whereas in the case of music cassettes, etc. though they may be separable and can be transferred to another cassette or tape this is not generally done and the music or movie always remains on the tangible property on which it was stored when sold; that there are other methods by which a software program can be installed, like, the program directly keying in the program through the console keyboard; that what is transferred is the right to use the program (which is a set of instructions) and not the tape on which it is stored;"

In Gramophone Co. of India Ltd. v. Mars Recording (P) Ltd.4 the Supreme Court has interpreted Section 52 of the Copyright Act in respect of the record. The Supreme Court has held: (SCC p. 108, para 8)

"Thus the use of the words 'records embodying the record' or the 'record embodying the same record' clearly mean that it is only when the same signal has been kept, would there be a violation. If another signal is created, such as in the case of version recording, it is not an infringing copy within the meaning of Section 2(m). On this basis, it was submitted that Respondent 1 had satisfied the requirements of Section 52(1)(j) of the Act which is a defence to infringement of copyright."

The role of the judiciary, therefore, in the matter of intellectual property rights, its development and adjudication has been to take very drastic measures and the judiciary from time to time has interpreted various provisions of the infringement of copyright. In Eastern Book Co. v. Navin J. Desai5 the Delhi High Court has defined when the copyright work shall be deemed to be infringed. Section 51 of the Copyright Act provides:

"51. When copyright infringed.-Copyright in a work shall be deemed to be infringed-

(a) when any person without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act-

(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or

(ii) permits for profit, any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or

(b) when any person-

(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, or

(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright,...."

Patents Act, 1970

The object of patent law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which, after the expiry of the fixed period of the monopoly, passes into the public domain.

The fundamental principle of patent law is that a patent is granted only for an invention, which must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what was already known before the date of the patent.

Trade Marks Act, 1999

This Act was promulgated to amend and consolidate the law relating to trade marks for goods and services and for the prevention of the use of fraudulent marks.

Designs Act, 1911

Under the Designs Act a design is required to be a new or original design not previously published in India in order that it may be registered.

Geographical Indications of Goods (Registration and Protection) Act, 1999

This Act is provided for the registration and better protection of geographical indications relating to goods.

Press Council Act, 1978

This Act is promulgated to establish a Press Council for the purpose of preserving the freedom of the press and of maintaining and improving the standards of newspapers and news agencies in India.

Press and Registration of Books Act, 1867

This Act was enacted for the regulation of printing presses and newspapers, for the preservation of copies of books and newspapers printed in India, and for the registration of such books and newspapers.

Architects Act, 1972

This Act provides for the registration of architects and for matters connected therewith.

Information Technology Act, 2000

This Act provides legal recognition for transactions carried out by means of electronic data interchange and other means of electronic communication, commonly referred to as "electronic commerce", which involve the use of alternatives to paper-based methods of communication and storage of information, to facilitate electronic filing of documents with government agencies and further to amend the Indian Penal Code, the Indian Evidence Act, 1872, the Bankers' Books Evidence Act, 1891 and the Reserve Bank of India Act, 1934 and for matters connected therewith or incidental thereto.

Designs Act, 2000

This Act was promulgated for the purpose of consolidation and amendment of law relating to protection of designs.

As the result of discussion on the various subjects of IPRDA, remedy is available before the civil court. The civil courts should follow the procedure prescribed under Order 39 Rule 1 CPC while exercising the powers of granting and refusing injunction. The National Judicial Academy should also take steps to circulate reading materials for the subordinate judiciary. So far as Order 39 Rule 1 is concerned, sufficient guidelines have already been given by the Supreme Court from time to time. The lower judiciary should also follow the principles laid down under Order 39 Rule 1 CPC before granting or refusing injunction. For reference see Gurubax Singh v. District Judge6


+ Round Table held on 30-6-2004 at National Judicial Academy, Bhopal. Return to Text
++ Judge, Uttaranchal High Court. Return to Text
1 (2004) 3 SCC 688 Return to Text
2 (1977) 2 SCC 820 Return to Text
3 (2001) 4 SCC 629 Return to Text
4 (2002) 2 SCC 103 Return to Text
5 (2002) 25 PTC 641 (Del) (DB) Return to Text
6 (2003) 2 ARC 517


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