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What is copyright?
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
recording made without the license of the owner of the copyright in that work will constitute infringement
of that work.
1
to express his/her ideas. The fundamental purpose of copyright
protection, therefore is to promote societal development and thus the
improvement of all persons- by encouraging the production and
dissemination of creative works.
2
the expression " Jack and Jill went up the hill", a copyright violation will
not be committed if the expression "Jack went up the hill along with
Jill” is used3. 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.
3
is an infringement, whereas in the case of primary infringement any
such knowledge is not an ingredient of the cause of action.
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.
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.
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
7
the work under criticism is in fact a copy. That is a question for the
judge.
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
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.
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
9
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4.
10
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, the objective similarity of the
defendant's work, the inherent probability of coincidence…10
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, 3rd 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, 3rd 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
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 collation of information
or as a means of checking his/her own independent research.
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.
12
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.
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.
13
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.
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.
14
those elements are a substantial part of the allegedly copyrightable
work.
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.
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.
17
24 UPSQ 2d 1081 (N.D.Cal. 1992); Ibid.
18
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.
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.
15
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 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'.
16
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.
21
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-12.
17
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 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
22
Cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd
edn, Sweet and Maxwell, London, 1996, at 363.
18
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.
23
Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-15.
19
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.
20
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.
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
21
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.
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.
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.
26
(1978) 1 All ER 1223 at 131.
22
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.
27
The Copyright, Designs and Patents Act, 1988, Sections 31 (incidental inclusion), 58 (record of spoken
words), 62 (artistic works on public display).
23
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
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.
24
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.
25
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.
26
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
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.
27
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.
28
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
30
Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet
and Maxwell, London, 1996, at 48.
29
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 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.
30
answer to a charge of inadequate disclosure that enough was shown to
justify the making of the order.
31
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.
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).
32
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. 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.
33
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.
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.]
34
better particulars he/she will be unable to defend himself/herself on a
motion to strike out pleadings or actions.
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.
35
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) because of its
equitable origin: probably the only principle is that a period of too
great delay (laches) must not be allowed to lapse.
36
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.
Computer Programs:
32
Dhar, P.M., “Intellectual Property in Computer Programs: Weaknesses of the Indian Copyright Act,
1957”, JILI, Vol.28, No.4, 1982, p.487.
33
Ibid.
34
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.
37
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.”
35
Ibid..
36
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.
38
which is not that easy. The only question is whether the object code is
subject to copyright39.
Proving Piracy:
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.
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.
40
This is for those who require merely the executable program.
41
This is for competitors who seek to understand the structure and logic of the program.
39
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:
42
See, Sid and Marty Krofft Television Productions v. McDonald's Corp., 562 F.2d 1152 (9th Cir. 1977).
43
See generally, Scott On Computer Law, Second Edition, Section 3.47(C)(1).
44
982F.2d 693 (2d Cir. 1992).
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
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.
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:
41
(b) Elements dictated by external factors such
as standard techniques rather than creative
originality on the part of the programmer; and
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.
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.
42
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.
46
116 S.Ct. 804 (1996).
43
INTERNATIONAL CONVENTIONS
Consequently upon India signing the GATT and entering the global
market economy, a number of changes have been made in The
47
Blakeney, Michael, Trade Related Aspects of Intellectual Property Rights: A Concise Guide to the
TRIPS Agreement, Sweet and Maxwell, London, 1996, at 45.
44
(Indian) Copyright Act, 1957 by the Amending Act of 1994, to give
effect to the obligations arising from the signing of the GATT.
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.
45