Eastern Book Company v/s Navin J.

Desai 2001 (58) DRJ 103

Introduction
This is a case where the question whether copyright can be granted on judgement of a court was in
question. This was for the first time that such a question came up before a court that an
arrangement of decision of court shall be considered under the category of literary work or not.

Factsi
 The plaintiffs in this case i.e. Eastern Book Company is a leading publication house that
prints and publishes various books of law. They claim to have expertise in the legal
publications and that they are recognised as a leading law publication around the globe.

 The plaintiffs were engaged in publishing various legal commentaries, journals and digests
along with publication of law reports under the name of Supreme Court Cases (SCC).

 They claim to have copyright over a large number of legal writings i.e. more than 500 in
number that is distributed in more than 560 cities around the world including in India.

 One of the several works undertaken by the plaintiff is to make headnotes and indices of the
case judgements and to publish them in an order and style entirely created by them.

 The third plaintiff was engaged in publication of such work in the form of CD ROM where
people can easily find judgements of courts presented to them in a very easy to read and
understand type of format. Such services were provided by the plaintiff under the name of
Online Supreme Court Case Finderii.

 Such case finder created by the plaintiff was Microsoft Windows compatible and included
around 84000 headnotes created and published by plaintiff themselves.

 The plaintiffs have a suspicion that the defendant has copied all the material of plaintiff from
their CD ROM and have used verbatim in their product named “the Laws” and “jurix”.

 Plaintiffs claim that they have applied a lot of skill and energy in writing headnotes and in
arranging the judgments. They have pleaded that they are not seeking protection on the
judgment of courts but on the work done by them using their skills.

 The writing of headnotes, the plaintiffs claim, needs an in depth analysis of the judgment
and requires a lot of skill and energy in being written. Also, that the original form of
judgment is generally in a rough form and is not very properly arranged so as to be easily
understood.
  But the plaintiffs have not only written headnotes including brief headnotes and descriptive
headnotes but they have also made an effort in arranging and somewhere simplifying the
judgments in their original work.

 They claim that the defendants have without applying any skill merely copied the work of
the plaintiff verbatim and are trying to launch their CD ROM having such materials.

 The illustration of work copied by the defendants, as provided by the plaintiff, is that the
defendant has not made even a little effort to correct the mistaken errors made by them in
printing or for changing the font style or type of the text as well. They have just blatantly
copied the work of plaintiff.

 They contended a monetary loss, loss of reputation, loss of prospective market and
therefore a loss of business suffered by them due to act of defendant.

 Therefore the plaintiff contended to pass an injunction against the defendant to restrain
them from launching their product in market and have also asked for passing an interim
injunction for restraining them from doing so during the pendency of the suit.

 The defendants contended that the material available on their platform was more in number
than that was available on plaintiff’s platform and that they had not infringed any copyright
of plaintiff as court’s writings and judgements cannot be subject to copyright by anyone.

 Also that the work of defendant was unique in nature as it provided for certain features like
hyperlinking that were not available in the plaintiff’s work altogether and pleaded that
defendants work was itself eligible for copyright.

 They also pleaded that the plaintiff merely wanted to restrain any of their competitors from
coming into market as the products of plaintiff were much expensive than the defendants
and so they were afraid that their market would be spoilt by this act of defendant.

Issues Raised
There were following basic issues raised before the court-

1) Whether the plaintiff could claim copyright over the judgments of the courts merely on the
basis of change done by them in writing or font style.

2) Whether the act of defendant was sufficient to infringe the copyright of the plaintiff.

3) Whether the suit instituted by plaintiff was merely an effort to restrain competition in the
market.
Judgment and decisioniii
 The court while deciding on injunctions initially allowed the injunction orders retraining the
defendants from launching their CD ROM in the marketiv. Defendants thereafter appealed
against the decision of single judge of court allowing injunction.

 The injunctions were thereafter dismissed by an order in appeal stating that the appellants
can market their CD ROM provided that they write headnotes of their own and do not copy
them from the respondents (plaintiffs).

 Further, on deciding on the issue whether Eastern Book Company or SCC can enjoy copyright
over the headnotes and further arrangement of judgments, the court decided in negative.

 It was held that the judgments of Supreme Court are in public domain and can be used by
anyone without any distinction. Simply correcting typographical errors, applying or removing
comma and full stop and renumbering the paragraphs does not make it the original work of
plaintiff.

 Further court also observed that the plaintiff did not come with clean hands and had failed
in revealing material facts which clearly shows their malafide intention of controlling
competition in the market and therefore they cannot be given any remedy in this case.

 Regarding headnotes the court stated that it shall be considered as a mere reproduction of
parts of judgments and therefore are not original works.

 Therefore plaintiff’s contentions were denied and the suits were dismissed.
Dr Snehlata C. Gupte v. Union of India &
Ors (W.P. (C) No 3516 and 3517 of
2007) Delhi HC)
Introduction
This is another landmark judgment in the history of Intellectual Property Rights litigation in India
where the court made an attempt to answer a very interesting though short question that when
shall a patent be considered to be granted.

In this case the court had complied various petitions that involved the same question and heard
them through this judgment.

Factsv
All the petitions involved in this case had different facts but the question involved in each of them
was the same. The facts of all the cases involved are as follows:

 The respondent no. 5 in this case, J. Mitra and Co. had filed two patent applications namely
590/Del/2000 and 593/Del/2000 with the Controller of Patent which were published
subsequently in the official gazette on Nov, 2011.

 The pre grant opposition according to the law at that time had to be filed within 4 months
from publication. But such period of opposition could further be extended to a period of
one month.

 Span Diagnostics Ltd. filed a pre grant opposition against the alleged patents of the
Respondent no. 5 which was rejected on August, 2006 by the controller thereby stating “I
hereby order to grant patent….”

 Next day, Dr. Snehlata Gupte filed an opposition contending that according to the new
amendment to S. 25(1) the period of opposition stood extended till the time when the
patent is actually entered on the register and thereby sealed.

 Subsequently, Mr. Girish Randhani filed a similar pre grant opposition.

 The Controller rejected the two pre grant oppositions stating that they were time barred as
they were filed after the order granting patent was made by the Controller himself.

 Similar were the facts in another case where patent applications made by Respondent No.
1, Lalit Mahajan were granted by the Controller and sealed as well before the pre grant
opposition was made by Petitioner Zephyr Bio-medicals.
  The pre grant opposition was denied by the Controller due to the fact that such opposition
was time barred. The Petitioner thereafter challenged such decision of Controller
contending that such opposition was made during the statutory time limit prescribed by the
Act and therefore should not have been rejected on this ground.

 Similarly, Cipla Ltd. filed a pre grant opposition which was also rejected by Controller on the
same ground of being time barred. But later, the Controller allowed the pre grant
opposition thereby refusing the grant of patent to the applicant on ground of lack of
inventive step.

 It was contended by Cipla Ltd. that a mere order of Controller shall not be considered grant
of Patent according to the provisions of S. 15 and S. 43 the Act thereby stating that unless
the procedure laid down under S. 25(1) and 11A have been complied with, the patent shall
not be considered to be granted.

 Hence the court complied all these similar cases to answer the common question involved
in them.

Issues raised
1) The only issue involved in this case was when it shall be considered that the patent has been
granted.

Judgment and decisionvi

The court analysed and laid down its decision in this case as follows:

 The court had in this case decided on two relevant points namely that when shall the patent
be considered to be granted and the timeline within which pre grant oppositions can be
made.

 It was held that the date of grant of patent is the important factor in determining the
timeline for allowing pre grant opposition under section 25(1) of the Act.

 According to the Act and Rule 24 thereunder publication of the patent application shall be
made only after 18 months from the date of application of the patent.

 Also, according to Rule 55(1-A) no patent shall be granted before expiry of six months from
the date of publication of the patent as it is presumed that no one can have knowledge of
supplication being made unless it is published in the official gazette.

 Hence, a patent cannot be granted before the expiry of period of 24 months i.e. 2 years from
the date of application of patent made before the Controller. Therefore pre grant opposition
can be made only within this period of 24 months from the date of application of patent.
  Patent can be granted by the Controller on grounds that i) it is not opposed and the
opposition is not valid according to the Controller and ii) Such patent is not in violation of
any of the provisions of the Act.

 Hence patent is considered to be granted on the date when the Controller passes an order
to that effect. So, as soon as the final order for grant of patent is passed and noted on the
file by the Controller it is supposed to be the date on which patent was granted. After such
date of grant of patent, no pre grant opposition can be filed by anyone.

 However, the Act makes provision for post grant opposition which is still available for the
person willing to oppose the grant of patent.

i
http://www.lawyerservices.in/Eastern-Book-Company-Versus-Navin-J-Desai-2002-09-27
ii
http://www.the-laws.com/Encyclopedia/Browse/Case?CaseId=102002546100
iii
https://indiankanoon.org/doc/977497/
iv
https://www.casemine.com/judgement/in/56b48d3c607dba348fff2084
v
https://www.bananaip.com/ip-news-center/delhi-hc-interprets-date-of-grant-of/
vi
http://www.talwaradvocates.com/landmark-judgements-patent-law/