WEB JOURNAL/INTELLECTUAL PROPERTY/EMERGING AREAS/INFORMATION TECHNOLOGY LAWS/ADDRESSES/SPEECHES/MESSAGES

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Intellectual Property Law in the New Technological Age†
by Justice P.S. Narayana*

Cite as : (2002) PL WebJour 6

The term or expression "intellectual property" is not only a popular expression worldwide but also equally an attractive one. This field in the recent past had expanded its tentacles too far so as to engulf the new areas too. In the fitness of the present-day trend, the topic "Intellectual Property Law in the New Technological Age" is very relevant and an apt topic too, chosen by the organizers of this seminar and I do congratulate the organizers for choosing such a topic for discussion.

Intellectual property may be characterized as information that can be incorporated in tangible objects at the same time in unlimited number of copies at any place in the world and the property is in the information in those copies and not in such copies as such. Broadly speaking, this subject may relate to copyrights, trademarks, designs, patents, geographical indications of goods, architects and information technology as well. The relevant legislations are well known.

The cyber law or information technology has assumed global importance and the law relating to same is at the infant stage and yet to grow. The march of law in this field even in other nations appears to be very limited.

The Information Technology Act, 2000, is an Act to provide 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 involves the use of alternatives to paper-based methods of communication and storage of information to facilitate electronic filing of documents with government agencies and also to amend the Indian Penal Code, Indian Evidence Act, Bankers Book Evidence Act and the Reserve Bank of India Act and matters connected therewith or incidental thereto. In exercise of the powers under Section 87 of the said Act the Information Technologies Certifying Authorities Rules, 2000 and Cyber Regulations Appellate Tribunal Procedural Rules, 2000 were also framed. In both UK and USA the relevant legislations are the UK Data Protection Act, 1998, the Communications Decency Act, 1996, the Utah Digital Signature Act, 1995, the No Electronic Theft Act, 1998, the Digital Era Copyright Enhancement Act, 1997, the Digital Copyright Clarification and Technology Education Act, 1997 and N.I.I. Copyright Protection Act, 1995. The first parliamentary intervention in the world in this field can be traced to Statute of Monopolies 1624, Copyright Act, 1709.

In the case of internet jurisdiction, multiple parties will be involved belonging to different parts of the world and hence the international law, international covenants, UNCITRAL Modern Law on electronic commerce, became very relevant for the purpose of implementing different legislations. It is pertinent to note that the documentary evidence relating to computers can be real or hearsay or it can be derived also and under the UK Police Criminal Evidence Act, 1984 and UK Civil Evidence Act, 1968 this kind of evidence can be admitted provided certain tests specified are satisfied.

Intellectual property can be broadly divided as property falling under copyright and property falling under what can be called as industrial property which is inclusive of patents, designs, trademarks and geographical indications of source etc. Section 2(i) of the Information Technology Act defines computer, Section 2(3) computer network, Section 2(4) computer resource, Section 2(l) computer system, Section 2(p) digital signature, Section 2(r) electronic forum, Section 2(s) electronic gazette, Section 2(t) electronic record, and Section 2(v) information. Chapter II of the said Act deals with digital signature. Chapter III — Electronic Governance, Chapter IV — Attribution, Acknowledgement and Dispatch of Electronic Records, Chapter V — Secure Electronic Records and Secure Digital Signatures, Chapter VI — Regulation of Certifying Authorities, Chapter VII — Digital Signature Certificates, Chapter VIII — Duties of Subscribers, Chapter IX — Penalties and Adjudication, Chapter X — The Cyber Regulations Appellate Tribunal, Chapter XI — Offences, Chapter XII — Network Service Providers not to be liable in certain cases, Chapter XIII — Miscellaneous.

The growing global importance of the cyber law is posing new challenges and in view of the peculiarity involved in this field, the understanding between the nations of the world by treaties or covenants, may be of considerable importance in the absence of which the implementation of the legislations may be very near to an impossibility. In Chairman, Rly. Board v. Chandrima Das1 the Apex Court observed that the international covenants and declarations adopted by UN have to be respected by signatory States and the principles may be read into domestic jurisprudence, if need be. Both in the case of enforcing contracts and dealing with cyber crimes, the jurisdictional problems are involved. In Apple Computer v. Franklin Computer Corpn.2 the copyrights in the field of software had been dealt with. Likewise in Inset Systems Inc. v. Instruction Set Inc.3 the jurisdictional aspect vis-a-vis contractual relationship was considered.

"Literary work" is defined by Section 2(o) of the Copyright Act, 1957 as amended by Act 38 of 1994 and Act 46 of 1999 as literary work includes computer programs, tables and compilations including computer, databases. In Indian Performing Right Society Ltd. v. Eastern Indian Motion Pictures Assn.4 it was held: (SCC p. 834, para 22)

"World opinion in defence of the human right to intellectual property led to international conventions and municipal laws, commissions, codes and organizations, calculated to protect works of art, India responded to this universal need by enacting the Copyright Act, 1957."

In Penguin Books Ltd. v. India Book Distributors5 it was held that copyright law is a territorial concept and each nation has its own laws.

Chapter IV of the Copyright Act, 1957 deals with ownership of copyright and the rights of the owner. Chapter V deals with the term of copyright, Chapter XI with infringement of copyright, Chapter XII — Civil remedies, Chapter III — Offences. Copyright may be in relation to original literary works, dramatic works, musical works, computer programs etc. Our courts have been following "lay observer test" for determining infringement of copyright. In Fateh Singh Mehta v. O.P. Singhal6 it was held that even a student can sue for infringement of copyright relating to his thesis. In Garapati Prasada Rao v. Parnandi Saroja7 it was observed that infringement of copyright is a question of fact. Where novels are not similar, there is no infringement of copyright8 In R.G. Anand v. Delux Films9, the following principles were laid down by the Apex Court: (SCC pp. 140-41, para 46)

1. There can be no copyright in an idea, subject-matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work.

2. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the copyright work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.

3. One of the surest and safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen 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.

4. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.

5. 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.

6. As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying the various tests laid down.

7. Where, however, the question is of the violation of the copyright of stage play by a film producer or a director the task of the plaintiff becomes more difficult to prove piracy. It is manifest that unlike a stage play a film has a much broader perspective, wider field and a bigger background where the defendants can by introducing a variety of incidents give a colour and complexion different from the manner in which the copyrighted work has expressed the idea. Even so, if the viewer after seeing the film gets a totality of impression that the film is by and large a copy of the original play, violation of the copyright may be said to be proved.

The concept of trademark is distinct from property mark10 Trademark means a mark which is capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and it may include shape of goods, their packaging and combination of colours. The essential features of trademark were explained in S.T. Shanmugham, In re11 In Parle Products (P) Ltd. v. J.P. & Co.12 deceptive similarity was explained. In K.R. Chinna Krishna Chettiar v. Shri Ambal & Co.13 striking similarity was explained. In G.T.C. Industries Ltd. v. I.T.C. Ltd.14 modifications to trademark was dealt with. A predecisional hearing is necessary in case of dispute relating to assignment of trademark15 Unless an assignment or transmission is registered, no right can be claimed on the ground of assignment or transmission16 In the case of assignment of trademark the assignor does not have any interest and the assignee alone can oppose proceedings17 For passing off and infringement of trademark see Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories18

Section 3, sub-section (1) of the Geographical Indications of Goods (Registration and Protection) Act, 1999 specifies that the Controller General of Patents, Designs and Trademarks appointed under Section 3(1) of Trade Marks Act, 1999 shall be the Registrar of geographical indications. Section 2(e) of the said Act defines geographical indication.

Patents can be either product patents or process patents. Article 27(1) of the Trips Agreement deals with patentable subject-matter. In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries19 the object of patent law was explained. In Standipack (P) Ltd. v. Oswal Trading Co. Ltd.20 the expression "invention" was dealt with.

The definitions of "design" in Section 2(5) of the 1911 Act and Section 2(d) of the 2000 Act are slightly different and the present definition has certain additional features. For registration of a design it must be novel and original as well. It should not have been previously published in India21 For registration of designs see Delhi Metro Plastic Industries v. Galaxy Footwear22

The march of law in this branch and contribution of courts in this regard is really noteworthy. Courts are expected to decide only real questions in controversy and not hypothecated questions and hence several questions are not answered since such questions never come up for consideration before the courts and these gaps will be filled only by passage of time.

India also is a signatory to WTO Agreement and consequently bound by TRIPS Agreement too. Effective and proper understanding between the nations, may be the need of the day, being an immense necessity arising out of compulsions due to new technological developments of the cyber world and other like new challenges.

† Lecture delivered at a Seminar on 29th and 30th of June 2002 at Madras Return to Text

* Judge, Andhra Pradesh High Court Return to Text

1. (2000) 2 SCC 465 Return to Text
2. 714 F 2d 1240 Return to Text
3. 937 F Supp. 295 (SDNY 1996) Return to Text
4. (1977) 2 SCC 820 Return to Text
5. AIR 1985 Del 29 Return to Text
6. AIR 1990 Raj 8 Return to Text
7. AIR 1992 AP 230 Return to Text
8. R. Madhavan v. S.K. Nayar, AIR 1988 Ker 39 Return to Text
9. (1978) 4 SCC 118 Return to Text
10. Sumat Prasad Jain v. Sheojanam Prasad, (1973) 1 SCC 56 Return to Text
11. AIR 1965 Mad 214. See also Kirloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149; State of U.P. v. Ram Nath, (1972) 1 SCC 130; Rediff Communication Ltd. v. Cyberbooth, AIR 2000 Bom 27 Return to Text
12. (1972) 1 SCC 618 Return to Text
13. (1969) 2 SCC 131 Return to Text
14. AIR 1992 Mad 253 Return to Text
15. Brakes International v. Tilak Raj Bagga, AIR 1998 Del 146 Return to Text
16. Ratansi Mulji v. Vinod Ratilal Gandhi, AIR 1991 Bom 407 Return to Text
17. Hardie Trading Ltd. v. Addisons Paints and Chemicals Ltd., (1991) 1 MLJ 218 Return to Text
18. AIR 1965 SC 980 Return to Text
19. (1979) 2 SCC 511 Return to Text
20. AIR 2000 Del 23 Return to Text
21. See Kemp & Co. v. Prima Plastics, 2000 PTC 96 (Bom); Joginder Singh v. Tebu Enterprises (P) Ltd., AIR 1989 Del 81; Niky Tasha India (P) Ltd. v. Faridabad Gas Gadgets (P) Ltd., AIR 1985 Del 136 Return to Text
22. 200 PTC 920 (Del) Return to Text