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Mahindra Prabu M
Asst. Professor of Law
TNNLS

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• 1529 – Stationers Company (earlier guild) (Intermediaries)

• 1556 – Royal Charter – Registration of all published works
• 1662 – Licensing Act – Prohibited printing of any book which was not licensed
and registered with the stationer’s company (repealed 1679)
• 1709 – Statute of Queen Anne (Authors and Publishers)
• 1911 – Act abolished Common law Copyright and repealed some 20
legislations on the subject matter

• 1847 – Indian Copyright Act

• 1914 – ICA (Modelled on 1911 UK Act)
• 1957 – ICA (Replaced earlier Acts)
• 2012 – Amendment Act (WCT, WPPT)

• 27.1 – Everyone has the right freely to participate in the

cultural life of the community, to enjoy the arts and to
share in scientific advancement and its benefits.

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assures
but encourages others to build freely upon the
ideas and information conveyed by a work.

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Economic Rights & Moral Rights

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• Idea Expression Dichotomy

• Originality / Creativity
• Fixation
• Fair Dealing

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• Blackwood & Sons Case, AIR 1959 Mad 410

Test
Ashdown v. Telegraph Group Ltd., (2001) 4 All ER 666

Blackwood & Sons Ltd Case, AIR 1959 Mad 410

Assignment:

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Examples of fair dealing

• In the course of education

Non Commercial Public libraries

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Moral Rights
• Droit moral
• Berne Convention

• Right to Paternity

• Right of Integrity

• S. 57 of Copyright Act, 1957

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Important Cases on Moral Rights

Mannu Bhandari Case, AIR 1987 Del 13

Amar Nath Sehgal Case

2005 (30) PTC 253

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Infringement of
Copyrights &
Remedies
MAHINDRA PRABU M
ASST. PROFESSOR OF LAW
TNNLS

What is Infringement of Copyright?

 Infringement of copyright means the unauthorized use of

material covered under copyright law, in a manner that
violates one of the copyright owner’s exclusive rights
 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.
 There are two main factors that help in determining the
infringement. They are
 Copying

 Substantial taking

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Copying

 Casual connection: It means that there should be a

substantial objective similarity
 Sub-conscious copying: If a person does a work
without knowing what he is doing then it is called
sub-conscious copying.
 Indirect copying: It means copying from
intermediate copy i.e. a work may be copied by
copying a copy of it.

Substantial taking:

 Unaltered copying.
 Character of Plaintiffs’ and defendants’ work
 Extent of defendants’ alteration
 Nature of plaintiffs’ effort
 Extent of plaintiffs’ effort
 Manner in which defendant has taken advantage of plaintiffs’ work
 Extent of interference with plaintiffs’ exploitation by defendants’
acts

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What acts constitute infringement?

 “what is required is the reproduction of substantial part of what is original in the

copyrighted work” - Warwick film production Ltd v. Eisinger, 1 Ch 508
 Non-Registration of work doesn’t bar action for infringement. See Nav Sahitya
Prakash v. Anand Kumar, AIR 1981 All 200
 In Blackwood & Sons v. Parasuram, AIR 1959 Mad 410 the court held that “Intention is
immaterial for infringement” and it further held that if the essential portion is copied
then it amounts to infringement.
 Exact reproduction is not necessary to constitute infringement. See C.Cunnaih & Co.,
v. Balraj & Co., AIR 1961 Mad 111
 For example, in D. Narayana Rao v. Prasad, (1979) 2 APLJ 231, the defendant had
borrowed a part of speech which was only of 2 ½ minutes duration in a film of 3 ½
hrs. It was held that the substantial part of speech has been copied.

Tests to determine infringement

 In R.G. Anand v. M/S Delux films, AIR 1978 SC 1613 the

Supreme Court held that, “One of the safest tests to
determine whether or not there has been a violation of
copyright is to see whether the subsequent works appears to
be a copy of the original.” It is also called as lay observer test.
 “whether or not there has been a violation of the copyright is
to see if the reader or spectator or the viewer, after having
read or seen both the works would be clearly of the opinion
that the subsequent work appears to be the copy of the
first”. Therefore if the impression formed by the lay observer is
so then the subsequent work is an infringed work.

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Contd.,

 In S.K. Dutt v. Law Book Company, AIR 1954 All 570 the court held
that whether a book is a copy of another the external and
internal features of the book should be looked into. The external
features of the book are ‘get-up’ and ‘overall scope’ and the
internal features are general layout, manner of treatment of
subject matter and amount of material contained in the book.
 The term piracy is nothing but exact copy of the original. In
Lallubhai v. Laxmi Shankar, AIR 1945 Bom 51 the high court held
that the test to detect piracy is to see mistakes and deviations
occurring in the original also have been reproduced.

In order to succeed in an action

for infringement the plaintiff has
to establish:
 That there is a close similarity between two works
 That the defendant has directly or indirectly made an unlawful
use of the plaintiffs’ work
 That there is chain of causation linking the plaintiffs’ copyright
work with the defendants’ alleged infringing copy, and
 The defendant had access to the plaintiff’s work or an
infringing copy of the work.

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What cannot be the Defences?

 In Performing Rights Society Limited v. Urban District Council

of Bray, AIR 1930 PC 314
 The court held that, “innocence is no defence” to copyright
infringement.
 In Power Control Appliances v. Sumeet Machines Pvt Ltd,
(1994)2 SCC 448
 The Supreme Court held that the plea of honest or
concurrent user (for securing concurrent registration) is not a
defence to infringement of copyright.

Remedies
 Civil Remedies
 Interlocutory Injunctions

 Anton Pillar Order (Search & Seizure)

 Ashok Kumar Order (Unknown Persons)
 Mareva Injunction (Freeze the assets)
 Norwich Pharmacal Order (Discovery of information)
 Criminal Remedies
 Search & Seizure
 Imprisonment 6 months to 3 years
 Fine 50000 to 200000

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Mahindra Prabu M
Asst. Professor of Law
TNNLS

Performer’s Right:

Who are Performers?

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Law of Designs
MAHINDRA PRABU M
ASST. PROFESSOR OF LAW
TNNLS

HISTORY

UNITED KINGDOM
 Designing and Printing of Linens Act 1787
(Textile materials – 2 months protection was given – Infringers were fined)
 Designing and Printing of Linens Act, 1789
(The protection period was extended to 3 months)
 Copyright of Design Act, 1839
(It extends to fabric composed of wool, silk/cotton/hair and mixed fabrics; 3 years
protection was extended)
 Design Act, 1842
(It expanded the scope of the design and the subject-matters)

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UK Contd.,

 Patent, Design and Trademark Act, 1883

(the protection period was extended to 5 years)
 Patent and Design Act, 1907
(It extended the protection period to 15 years and most importantly remedy for
groundless threat for infringement was introduced)
 Registered Design Act, 1949
(introduced the basic requirements for design registration)
 Copyright Designs and Patents Act, 1988

INDIA

 Patent and Design Act, 1872

 Invention and Design Act, 1888
 Patent and Design Act, 1911 (was in force till 2000)
 Designs Act, 2000

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Definition of Design
Sec. 2(d) of Design Act 2000 reads-
Design means
 only the features of shape, configuration, pattern, ornament or composition
of lines or colors
 applied to any article
 whether in two dimensional or three dimensional or in both forms
 by any industrial process or means, whether manual, mechanical or chemical
, separate or combined
 which in the finished article appeal to and are judged solely by the eye,

but does not include [S.2(d) Contd.,]

 any mode or principle of construction or

 anything which is in substance a mere mechanical device
and
 does not include any trade mark as defined in Sec. 2 of
Trade mark Act 1999 or
 property mark as defined in Sec 479 of IPC
 orany artistic work as defined in cl. (C) of Sec. 2 of the
Copyright Act 1957

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Mathew Swain v. Thomas Barker (1967) RPC 23

The Court held that a design containing some elements which

constitute a striking feature making an immediate appeal to the
eye would suffice to prove ample novelty and originality.

Amp. Inc. v. Utilux Pty. Ltd. 1972 RPC 103

Function v. Visual Appeal

The Court said that the features that are applied to the article
must appeal to the eye in the sense of catching or attracting eye
particularly the eye of potential buyer.

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Philips v. Harboro Rubber (1920) 37 RPC 233

No design will be counted as new or original unless it is

distinguished from what previously existed by something
essentially new or original, which is different from
ordinary trade variants which may have been common
matters of taste or choice in the trade.

Whole of the design need not be novel

In Re Clark’s Design, (1896) 13 RPC 320

The court pointed out that a combination of known designs

may be considered novel, if the appearance of the combination
as a whole is new

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Designs which are registrable

In order to be registrable, a design must be:

 new or original
 not published (i.e. disclosed to the public either in India or abroad in
a tangible form or through use or in any other way before the
application is filed)
 significantly
distinguishable from known designs or combinations of
known designs and
 devoid of scandalous or obscene matter.

Copyright in Designs (S.11 of Designs Act,2000)

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Registration and Term Protection

 Registered Design and Unregistered Design

 Unregistered Design Protection in UK
Unregistered Design
Unregistered Community Design
 Term Protection:
10 + 5 years (Max. 15 Years)

Piracy of Registered Design (S.22)

 Rs. 25000 – 50000 (limited) (or)

 Suit for recovery of damages
 Jurisdiction: District Court
 Defence: Cancellation of Registration – HC

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Test for determining infringement

Test: Fraudulent obvious imitation

Eye is the sole arbiter
Hawkins Cookers Ltd v. Zaverchand Liladhar Shah &
Others, 2005 (31) PTC 129 (Bom)
The court held that it was ultimately for the court to ascertain
whether design was different or similar by having a look at the
same.

Kemp & Co. & Others v. Prima Plastics Ltd,

2000 PTC 96
 The word imitation doesn’t mean exact replica.
 If visual features of shape, configuration, pattern of two designs are similar
or strikingly similar by the eye, it is not necessary that it must be exactly
identical or same. The matter must be looked at, as one of the substance and
essential features of design ought to be considered.

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Food for thought

a) Whether a suit of infringement can be filed against a registered proprietor of
design?
b) Whether the common law remedy of passing off is available under the Designs
Act?
c) Whether a suit for both infringement and passing off is maintainable in a court
of law?
For answers, read
1. Whirlpool of India v. Videocon Industries, 2013 (1) Mh.L.J
2. Micolube v. Rajesh Kumar Trading, AIR 2013 Del 143 (FB)

Assignment

 Eicher Goodearth Ltd. v. Krishna Mehta, 2015 SCC OnLine Del10139

 Ritika Pvt. Ltd. v. Biba Apparels Pvt. Ltd.,(2016) 230 DLT 109
 Reckitt Benkiser India Ltd v. Wyeth Ltd., AIR 2013 Del 101 (FB)
 Bharat Glass Tube Limited v. Gopal Glass Works Limited, (2008) 10 SCC 657

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