Lex Speaks

Maximizing Value of Software Intellectual Property

2009-08-18T11:51:00.002+05:30

by: Andrew Allemann
Over the past decade large companies have turned to intellectual property as a revenue source. But most of the focus has been on monetizing patents and trademarks. Little attention has been given to internally-developed software, which isn’t necessarily patented. Out-licensing software is usually faster—and often more lucrative—than patent licensing campaigns.
Maximizing the commercial value of internally-built software begins with the Information Technology department. There are a number of steps IT departments can take to create software with a high likelihood of commercialization.

1. Track return on investment of applications. Most organizations use business cases to decide which applications deserve IT's efforts. Use these business cases as a baseline, but follow-up with actual results.
2. Make software versatile. Avoid hard-coding business processes. A hard-coded business process must be completely re-written when used by another company. Use of variables and input options will allow the software to be easily manipulated for another company's processes.
3. Create web-based software when possible. The ASP software model is growing and easier to bring to market.
4. Use the most popular programming languages. Although this will improve chances of a successful licensing agreement, older languages do not preclude software from being commercialized. Most licenses are interested in licensing the process of the software and are less concerned about the actual code.
5. Limit use of Open Source code in software development. The General Public License (GPL) allows open source code to be used in software development, but there are restrictions when the software is sold. Having some open source code in an application does not prevent commercialization, but knowing the extent of use is important.
6. Retain rights on co-developed software. Many IT departments work with outside vendors to develop internal applications and systems. Ownership rights are usually detailed in engagement contracts.

By focusing on the beginning stages of internal software development, companies can maximize the commercial potential. Intellectual Property departments can use software licensing to show quicker results compared to licensing patents. Expect to hear a lot more about software commercialization over the next few years as companies begin realizing the benefits.
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Drafting and Interpretation of Patent Claims

2009-06-03T10:47:00.003+05:30

by: Manisha Singh Nair

A patent is a right to exclude others from practicing the patented invention which makes it imperative for others to know the contours of the invention.

An invention in a patent application is explained through specification and claims, however, patent claims gain precedence as they demarcate through their language the boundaries of an invention.

The claims thus define, in technical terms, the extent of the protection conferred by the granted patent or sought to be protected in a patent application. In the event of an improper drafting of claims, the aspects or elements of invention uncovered by it, become part of the prior art when the patent application is published or when the patent is granted.

Patent claims define the boundaries of patent protection. They give shape to the exclusive rights conferred on a patentee to exclude others from making or practicing the invention without consent. Due to this reason the scope, characteristics and structure of the claims becomes a key factor in receiving complete patent protection. Clear and complete claims supported by the description also act as a key element in sufficiently disclosing the inventive features.

One of the most important requirements of patent law is that a patent application discloses a claimed invention in sufficient detail so that, once it comes in the public domain after the expiry of the patent term, the person skilled in the art can carry out that invention. This requirement is known as sufficiency of disclosure or enablement, depending on the jurisdiction.

The rationale behind grant of a patent, or for that matter any IPR, is that after the expiration of the term of the grant the invention or any IP created enriches the public domain. This is sort of a quid pro quo wherein the protection of intellectual property is bargained for its being a part of a public domain. This puts an obligation on the patentee to describe his invention sufficiently clear and in complete terms so that once in public domain, it can be worked upon by any individual. This feature of the patent protection is known as the enablement requirement for patentability i.e. how to make and how to use the invention, which entails clear and complete disclosure of an invention in the patent application.

The disclosure requirement of the patent law reflects the quid pro quo arrangement between the state and the inventor. The government grants an inventor a monopoly for a given period of time in exchange for the inventor disclosing to the public how to make or practice his or her invention. If a patent fails to contain such information, then the bargain is violated, and the patent is unenforceable.

Most patent law systems require sufficient disclosure of the claimed invention.

In Europe, Article 83 of the European Patent Convention states that an application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. The requirement of Article 83 must be complied with in order for a patent to be granted. Insufficient disclosure is also a ground for opposition under Article 100(b). Insufficiency in disclosing an invention in a patent application is also a ground for revocation under Section 72 of the UK Patents Act.

In the United States' patent law, the patent specification must be complete enough so that a person of “ordinary skill in the art” can make and use the invention without “undue experimentation”. The factor of “undue experimentation” is relative to the art of the invention. The sufficiency of disclosure requirement is complemented by an additional requirement: the “best mode requirement” which is the inventor's “best mode” of making or practicing the invention. The “best mode requirement” only applies to what the inventor knows at the time the application was filed, not as to what was subsequently discovered.

The U.S. patent law further requires, among other things, that patent specifications “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same” (35 U.S.C. 112(1)). The requirement “to enable” a person of ordinary skill in the art to make and use the invention is referred to as the “enablement” requirement. A patent that does not meet the enablement requirement may be declared invalid by a court.
Requirements of “Enablement” in India

... that the description of the method or the instructions for the working of the invention as contained in the complete specification are by themselves sufficient to enable a person in India possessing average skill in, and average knowledge of, the art to which the invention relates, to work the invention...
1. The standard for determining whether the specification meets the enablement requirement is presented by the question - Is any experimentation that may be needed to practice the invention of such a magnitude as to be considered unreasonable? Unreasonable experimentation requires that the description of the claimed invention must enable any person skilled in the art to make and use the invention from the description provided in the patent combined with information known in the art without undue experimentation.
2. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is not due. These factors include, but are not limited to:
· breadth of the claims;
· nature of the invention;
· state of the prior art;
· knowledge level of one with the ordinary skill in the art;
· level of predictability in the art;
· amount of direction provided by the inventor;
· existence of working prototypes;
· quantity of experimentation needed to make or use the invention based on the content of the disclosure.
3. The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as predictability in the art.
4. The specification needs to be enabling only to a person having “average skill and knowledge of the art to which it pertains, or with which it is most nearly connected.” The pertinent art to be considered regarding enablement is, in general, defined in terms of the problem solved by the invention rather than in terms of the technology area, industry, trade, etc. for which the invention is used.
5. An extended period of experimentation may not be unreasonable if the notional skilled person is given sufficient direction. The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.
6. All questions of enablement are evaluated against the claimed subject matter. The focus of the examination inquiry is whether everything within the scope of the claim is enabled.
The requirements for a disclosure of the invention are generally not laid down in specific detail which in turn allows flexibility to disclose adapted to the needs of the technical field and the nature of the invention.
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Published at:

http://www.ipfrontline.com/depts/article.asp?id=22886&deptid=4

Age bar in legal studies challenged by a Lady Constable

2009-04-08T23:53:00.014+05:30

After a PIL filed by a Mumbai based lawyer, this time a lady constable Shabnam Amin Mulani, mother of two and sole bread earning member in the family has filed a Writ Petition before the Bombay High Court with a prayer to quash & set aside Rule 28 of Schedule III of the Resolution No. 110/2008 of the Bar Council of India which introduced age bar on admissions to law Colleges.

The lawyer of Shabnam Amin Mulani, Mr. Mahesh Vaswani said that the main contention of the Petitioner is that she has necessary percentage of marks at Graduation level to study law and therefore had applied for admission to the GJ Advani Law College in Bandra, Mumbai for the studying law in the 3 year LL.B. degree course of Mumbai University for the ongoing academic year 2008-2009. Further, her present job is of such nature which requires investigative work to be done and which is to be done on the basis of established legal principles, such that it would stand the test of judicial scrutiny, also to deal with under-trials and convicted prisoners in custody which require updates on human rights of prisoners and updates on related issues, it is only imperative that she ought to posses proper legal knowledge by undergoing a formal education discipline of Laws.

Advocate Mr. Mahesh Vaswani further said that that age bar laid down in impugned Resolution, under Advocate’s Act, 1961, is blatantly ultra vires, arbitrary and denial of equality to his client and others similarly placed, According to him the impugned Resolution of Bar Council of India is violative of his client’s fundamental right enshrined in Article 14 of the Constitution.

Advocate, Mr. Mahesh Vaswani has informed that this Writ Petition petition would come up for hearing on 17th April 2009 at 11 a.m. before the Division Bench comprising the Chief Justice Hon'ble Swatanter Kumar and Hon'ble Justice S.C. Dharmadhikari of the Bombay High Court.

On 17th April 2009, the Bench comprising Hon'ble Justice P. B. Majmudar And Hon'ble Justice R. M. Savant heard the case and after admitting this case issued Notices to Respondents including the Mumbai University, the Union of India and the Bar Council of India directing them to file affidavits in the matter by June 10th 2009. The Petitioner has been given time to file rejoinders to the Respondents' affidavits by June 15th after they file their affidavits. The matter has been fixed for commencing arguments on 17th June 2009.

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Limited Liability Partnership: A Need of Professional Firms

2009-03-28T08:04:00.006+05:30

By Vikram Kumar*

Limited Partnership (LP) and Limited Liability Partnership (LLP) are both businesses with more than one owner, but unlike general partnership, the Limited Liability Partnership (LLP) provides all of its owners with limited personal liability. The concept of LLP is particularly well-suited to professional groups, such as lawyers, company secretaries, chartered accountants etc. The professionals prefers LLP to general partnership, corporations or limited liability companies, because they don’t want to be personally liable for another partner’s problems particularly those involving malpractice claims.

Under general partnership the concept of ‘mutual agency’ operates, under which, each partner acts as the agent of the firm and of other partners for the purpose of the business of the firm. Further every partner is held liable jointly and severally with all the other partners for all acts of the firm done, while he is a partner. This unlimited liability of partners has become an increasing cause for concern in light of increase in the incidence of litigation for professional negligence, the size of claims and the risk to a partner's personal assets when a claim exceeds the sum of the assets of the partnership. The ‘unlimited liability’ of partners has been one of the main hurdles before the partnership of professionals to cope with the challenges posed by international competitions. The concept of LLP though gives some relief by allowing the partners to adopt whatever form of internal organization they prefer while at the same time limiting their liability with respect to the LLP to their individual contributions.

Some features which induce the professional firms to adopt the concept of LLP are as follows:
▪ The LLP is a body corporate formed and incorporated under a separate enactment and it is a legal entity separate from its partners. It will have perpetual succession.
▪ There is no limit on the maximum number of partners in a LLP.
▪ In LLP, a partner would not be liable for the independent or unauthorized actions of other partners. In this way it protects a partner from joint liability created by wrongful business decisions or misconduct of other partner.
▪ The liability of a partner in LLP is limited to his agreed contribution, which may be in the form of tangible or intangible assets.
▪ The merger and amalgamation of LLP is possible.

LEGISLATIVE RESPONSES:

United Kingdom – In United Kingdom the LLP is introduced by the enactments i.e.- the Limited Liability Partnerships Act 2000, applicable in England, Wales and Scotland and the Limited Liability Partnerships Act (Northern Ireland) 2002 applicable in Northern Ireland. Herein, members of a LLP have a collective responsibility up to the extent they may agree in the ‘LLP Agreement’, but no member is responsible for other’s action. Likewise a limited company or corporation, the member of a LLP cannot loose more than his investment, unless there is fraud or wrongful trading from his end. Upon the Tax matters the LLP in UK is similar to partnership and it is not subject to taxation rather its member pays tax in respect of income or gain received through LLP.

United States – In United States each individual state has its own law regulating the affairs of LLP. The Uniform Partnership Act, 1996 is the standard statute and laws in majority of states regulating LLP are corollary of this. One common feature of laws in U.S. States is the limited liability of partners of LLP like that in corporation. Likewise partnership or company with limited liability, the profits or gains of LLP are allocated among the partners for the purpose of tax payment. In United States the LLP is prevalent in various business fields, but it is especially popular among professionals. In some U.S. States namely - California, New York, Oregon and Nevada, the LLP is formed only for professional uses.

India – In India the LLP is to be implemented by the Limited Liability Partnership Act 2008, which has been published in the Official Gazette of India on January 9, 2009 but has not yet notified. The relevant rules are also in the stage of preparation. The first LLP in India is expected by 1st April 2009 but delay is inevitable because of general elections scheduled in April and May.

The important features of LLP in India under the Limited Liability Partnership Act 2008 are as follows:
(1) The LLP shall be a body corporate and a legal entity separate from its partner. It will have perpetual succession.
(2) Minimum two persons, out of which one has to be an Indian resident, are required for incorporating the LLP by registering it before Registrar of Companies. There is no limitation on the maximum number of partners and this enables it to grow like a company and to take on global competition.
(3) There is provision for conversion of existing partnership firm, private limited company and unlisted public company into a LLP by registering the same with the Registrar of Companies (ROC)
(4) The Registrar of Companies is empowered to strike off defunct LLP.
(5) Electronic filing of returns by LLP is allowed.
(6) The Central Government is empowered to make rules for effectively applying the Act.

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* The author has completed his LL.B. (Gold Medal) & LL.M. from B.H.U. He qualified the UGC-NET exam in December, 2003. Presently, he is working with Legal Department of Sahara India at Lucknow.

Record Number of Cybersquatting Cases in 2008

2009-03-26T08:28:00.005+05:30

by: WIPO

Geneva, March 16, 2009 - Allegations of cybersquatting by trademark holders continued to rise in 2008, with a record 2,329 complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), a quick and cost-effective dispute resolution procedure administered by the WIPO Arbitration and Mediation Center. This represented an 8% increase over 2007 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes handled and brings the total number of WIPO cases filed under the UDRP since it was launched ten years ago to over 14,000. To improve efficiency and respond to growing demand, WIPO proposed in December 2008 an “eUDRP Initiative” to render the UDRP paperless.

The increasing number of cases filed with the Center is occurring at a time when the Internet Corporation for Assigned Names and Numbers (ICANN), responsible for managing the generic top level domain space (gTLD) is preparing to launch large numbers of new gTLDs. ICANN’s current expectation is to begin accepting applications by late 2009. This is a watershed moment in the development of the Domain Name System (DNS), and is of genuine concern for trademark holders.

“The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally,” said Mr. Francis Gurry, WIPO Director General. “Cybersquatting remains a serious issue for trademark holders. Supported especially by registrar and registry stakeholders, the sale and broad expansion of new top level domains in the open market, if not properly managed, will provide abundant opportunities for cybersquatters to seize old ground in new domains,” said Mr. Gurry. In this regard, he recalled that one of the recommendations of the Report of the First WIPO Domain Name Process which also gave rise to the UDRP, was that any new gTLDs should be introduced and monitored in a controlled manner.

“If ICANN’s considerations lead it to proceed with the broad introduction of new gTLDs, trademark owners as well as consumers will expect a careful framework to be put into place to address top level operators permitting or undertaking abusive registration practices. To this end, WIPO has been working with ICANN in the development of pre- and post-delegation procedures and standards for the new gTLDs, insofar as they relate to intellectual property,” said Mr. Gurry, adding that “failure to implement such safeguards carries the risk of stakeholders in the Domain Name System becoming involved in protracted court litigation.” The Director General stressed that this is not just an issue of protecting rights of trademark holders under existing law, but also of “the reliability of the addressing system of the Internet in matching interested parties with authentic subjects,” noting that WIPO looks forward to continuing to assist ICANN and its stakeholders in the policy work in this regard.
WIPO Caseload

Since the launch of the UDRP in December 1999 through December 2008, the WIPO Center has received 14,663 UDRP or UDRP-based cases (gTLDs and ccTLDs), covering 26,262 separate domain names. Reflecting the truly global scope of this dispute mechanism, named parties to WIPO cases represented over 100 countries in 2008 alone. The United States of America (US), France, the United Kingdom (UK), Germany, Switzerland and Spain were the most frequent bases for complainants, while the US, the UK, China, Spain, Canada, and France were the most represented countries by named respondent party.

English remained the most common language for WIPO case proceedings (86%) in 2008, largely because the vast majority of domain names involved were registered with US-based registrars. Cases were also processed in 12 other languages, including (in order of frequency) Spanish, French, Dutch, German, Chinese, Korean, Japanese, Italian, Romanian, Russian, Hebrew and Portuguese. The character set of the disputed domain names themselves remained overwhelmingly ASCII (English alphabet), with a small number of names in Chinese, French, Hebrew, Spanish, and Swedish. The .com gTLD remained the solid leader in terms of the number of domain names included by complainants in cases filed with WIPO (79%).

In line with a global percentage increase in the share of ccTLD registrations in recent years, the WIPO Center saw the number of cases involving ccTLD domain name jump from 1% in 2000 to 7% in 2007 to 13% in 2008. The number of ccTLD registries which have designated WIPO to provide domain name dispute resolution services rose to 56 with the addition of Bermuda (.bm), Montenegro (.me), the Commonwealth of the Northern Mariana Islands (.mp) and Sierra Leone (.sl). With the addition of Bolivia (.bo) in early 2009, the total number has grown to 57.
Case Outcomes

In 2008, almost 30% of all cases were settled without a panel decision. Of the remainder, 85% of the panel decisions favored the complainant, while 15% of the complaints were denied, leaving the names in the possession of the registration holder. Cases were handled by 285 WIPO panelists from 40 countries.

Main Sectors

In 2008 cases covered a wide variety of sectors, reflecting prevailing public interest, business activity and upcoming events (e.g., Singapore Flyer observation wheel, Madrid 2016 Olympic bid, Montreal Jazz Festival, Golden Globes); transportation (e.g., Air France, Austrian Airlines, BMW, Lufthansa, Southwest Airlines, Subaru); hotels (e.g., Taj Hotels, InterContinental Hotels, The Sheraton/Westin Hotels); media and publishing (e.g., the BBC, Edmonton Journal, National Geographic, Harvard University Press); educational institutions (e.g., The John Hopkins University, Sydney University, Yale University, TOEFL); computers and electronics (e.g., Research in Motion’s BlackBerry, computer manufacturer Gateway, Samsung); sports teams, leagues and personalities (e.g., English Premier League, the Arsenal Football Club, as well as its player Cesc Fàbregas, yachting’s Volvo Ocean Race, former basketball star Dennis Rodman, Adidas); actors and personalities past (e.g., Ian Fleming, Gene Kelly) and present (e.g., Scarlett Johansson); fashion (e.g., Christian Dior, Lancôme); popular culture (e.g., Barbapapa, Bob the Builder, Marvel Comics’ Xmen); numerical identifiers (e.g., 4711); and other familiar enterprises and groups such as Breitling, Canada Post, Coca-Cola, Ebay, Ghirardelli Chocolate, the International Organization for Standardization (ISO), Google, Hard Rock Café, LEGO, Nestlé, Ticketmaster, and Western Union. A case was also filed by the Thomas Jefferson Foundation in relation to the Monticello.

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Trade domination over IPR under the TRIPS Agreement

2009-03-25T12:09:00.012+05:30

Pawan Kumar Pandey*

The Agreement on Trade Related Aspects of Intellectual Property Rights (the TRIPS Agreement[1]) which constitutes Annex 1C of the Agreement Establishing the World Trade Organization (WTO) is the most comprehensive and far-reaching international agreement on the subject of intellectual property to date and the most important milestone in the development of international law in this area. The complexity of TRIPS Agreement and its numerous links to the areas that are outside intellectual property, such as the environment and public health, human rights and non-tariff barriers to international trade, only to mention a few, make it very difficult to apprehend all the aspects and implications of the Agreement. Taken alone the area of international trade vis a vis protection of intellectual property has resulted into many misconceptions. TRIPS is an innovative instrument on intellectual property in international trade and It is of utmost importance to understand the relationship between intellectual property and international trade as to how protection or non-protection of intellectual property affects free trade.

There should not be any dilemma in saying that the TRIPS Agreement is the most comprehensive agreement in respect of protection of intellectual property as, firstly, it crosses the traditional line that separates the two main categories of intellectual property rights i.e., copyright and industrial property[2]. Secondly, unlike previous conventions, it contains detailed enforcement provisions[3].

The agreement contains minimum substantive standards for intellectual property protection in ‘nearly all’ the categories. It goes beyond Berne and Paris Conventions to set up even higher and more specific norms of protection of intellectual property. For example, firstly, the rule of “national treatment” is indeed the cornerstone of the Paris Convention for the Protection of Industrial Property[4], the Berne Convention for the Protection of Works of Literature and the Arts[5], and the Universal Copyright Convention[6] (UCC). The rule simply obliges Member States to grant to the nationals of other Member States exactly the same substantive protection on the same conditions. The national treatment requirement of the TRIPS Agreement[7] encompasses a broader range of rights than any of these conventions.

The obligation on national treatment under TRIPS Agreement pivots not on rights “in respects of works” as does Berne or “industrial property” as does Paris but on “protection of intellectual property” defined to include nearly all forms of intellectual property that are subject matter of the Agreement.[8] Again, the obligation, under TRIPS Agreement, on member states is to accord treatment “no less favorable” as opposed to “same” treatment as provided in any of these conventions. The practical consequence of the difference in the language of the agreements is that, even where a WTO member fails to protect the right of their own nationals, the rights of nationals of other WTO members must nevertheless be protected up to the minimal levels as imposed by the TRIPS Agreement. Secondly, the TRIPS provision represents, for the first time, the “most favored nation” principle[9] which is a common feature of international trade agreements. Previously, such provisions had appeared only in bilateral agreements.

Intellectual property rights affect international trade flows in several ways. A firm, for example, may be deterred to export its patented goods into a foreign market, if potential “pirates” can diminish the profitability of the firm’s activity in that market because of a weak IPR regime. Accordingly, a strengthening of a countries Patent regime would tend to increase imports as foreign firms would face increasing net demand for their products reflecting the displacement of pirates. On the other hand, a firm may choose to reduce its sale in a foreign market as a response to strong IPRs protection because of its greater market power in an imitation safe environment.

The protection of intellectual property rights under the TRIPS Agreement appears incidental as the first and foremost objective being regulation of international trade. The first clause of the preamble indicates that the main objective of the Agreement is “to reduce distortions and impediments to international trade”[10]. This objective is to be accomplished “taking into account” the need to protect and enforce intellectual property rights. This clause of the preamble also recognizes that measures to enforce intellectual property rights may become obstacle to trade. Border measures, for example, might be implemented in a way that allow intellectual property holder to inhibit legitimate trade opportunities of producers. Ineffective protection of intellectual property rights may indeed constitute a barrier in the way of legitimate trade. For example, sale price of a particular patented product when exported to some other country must adequately reflect the costs of R&D as well of manufacturing and distribution of the product. Non protection of Patent rights in that country may lead to counterfeiting and copying of that particular product ultimately resulting into non-competitiveness and thus discouraging the manufacturer to export. In contrast, sometimes intellectual property rights may act as trade barriers. For example, if a particular government grants patents without adequate attention to whether true novelty and inventive steps are involved, it may create unjustified impediments to market entry for a product both of local and foreign origin.
Further, the second paragraph of the preamble addresses the issue of “applicability of the basic principles of GATT 1994”[11]. As a result, this assimilation of intellectual property into a GATT framework inescapably makes the same GATT principles in respect of trade in goods applicable to intellectual property.

The intention of the drafters was not to create the system of IPR protection that would be considered “optimum” by a particular right holders group, but one that is adequate to protect the basic integrity of the trading system. This statement is further supported by the fact that TRIPS provisions do not cover a number of areas of industrial property which have been dealt with specifically in Paris Convention viz. utility models, trade names and collective marks etc.[12]
The reason is that the TRIPS Agreement focuses on trade-related aspects of intellectual property rights, and thus focuses on those areas where Parties to the General Agreement on Tariff and Trade (GATT) perceived that existing differences as to levels of protection led to distortions and impediments to trade. Thus it can be safely said that the substantive and adjective standards provided by the TRIPS primarily aim to foster international trade. The objective of the intellectual property laws is not to provide the maximum possible returns to the right holders, but to strike the proper balance of private and public interests. In the trade context, the objective is to avoid distortion to the trading system.

Rightly also in India – Patent Protection for Pharmaceutical and Agricultural Chemical Products[13] the Panel reported:

“…we must bear in mind that the TRIPS Agreement, the entire text of which was newly negotiated in the Uruguay Round and occupies a relatively self contained, sui generis status in the WTO Agreement, nevertheless is an integral part of the WTO system…..Since the TRIPS Agreement is one of the Multilateral Trade Agreements, we must be guided by the jurisprudence established under GATT 1947 in interpreting the provisions of the TRIPS Agreement unless there is a contrary provision.”

Specifically speaking international copyright and international trade is inextricably linked. Any time one country undertakes, within its borders, to protect works originating in other country, it makes at least implicitly a calculation of the decision’s implications for its balance of trade.[14] Also the major processes of internationalization in copyright law, including the Berne Convention, TRIPS Agreement, EU harmonization directives[15], and the WIPO Internet Treaties[16], all side-step the issue of moral rights in technological works. Instead, there appears to be a tacit consensus in the international community towards moral rights of authors.

In most countries an author’s moral rights are doctrinally separate from his economic rights, a fact reflected in the Berne Convention[17], guarantying the rights of attribution and integrity.

Express exclusion of authors’ rights under Article 9.1 of the TRIPS Agreement[18] can lead us to the conclusion that perhaps the authors were not the intended beneficiaries and protection or non-protection of these rights do not directly affect international trade. The reason for the exclusion of the moral rights from the scope of Article was the concern of some countries from the Anglo-American copyright system that strengthened moral rights could possibly represent obstacles to the full enjoyment by a purchaser of a legally obtained license[19].

Similarly, in patent field Article 29.1 to the TRIPS Agreement[20] confers obligation on inventor to disclose the ‘best mode’ to carry out the invention. The best mode is supposed to be known by the inventor (mostly applicants’ employees), not by the applicant (mostly inventors’ employers)[21]. This specific choice of words has not been accidental. The TRIPS negotiators have simply recognized that inventors and patent applicants seldom are the same person or entity. Fascinatingly, Article 29.1 contains the only reference to the inventor throughout the entire TRIPS Agreement. This ‘discloser of best mode known to the inventor’ does not confer any sort of right on ‘inventors’ but, it being a source of information, ultimately benefits the ‘investors’[22].

On the similar pattern drafting the TRIPS Agreement, in the area of Geographical Indications (GIs), was far from an unadulterated exercise in intellectual property theory. Treating different types of goods differently for purposes of GI protection may, to some, appear to be unjustified because the definition of GIs does not distinguish between product types.[23] Nothing in Article 22.1 suggests that different types of GIs are meant to be treated differently. If the ‘extension’ discussions were purely one of intellectual property policy, it would make sense to treat all products in the same manner legally. However, one may note that the WTO TRIPS Council discussions take place in the context of trade policy and the additional protection provided to geographical indications for wines and spirits resulted from the Uruguay Round of multilateral trade negotiations. One submission on this issue explains that the compromise was due to the link at that time between the negotiations on GIs and negotiations on agriculture.[24] Further, exception provided under Article 24.4 is also primarily guided by trade policy.[25]

Even in the area of Industrial Designs, the interface of Intellectual Property and Trade is evident under Article 25.2 of the TRIPS Agreement[26] in the form of concessions made in respect of textiles.

The TRIPS Agreement also establishes a binding, transparent and rules based dispute settlement mechanism. The WTO Understanding on the Rules and Procedures Governing the Settlement of Disputes enforces the commitments made by WTO Members under TRIPS. The availability of a binding dispute settlement mechanism to enforce obligations under TRIPS helps to ensure that exporters from any member state can continue to expand and diversify trading opportunities in intellectual property and value-added products. Further, the agreement has created a transparency mechanism i.e., each WTO member is required to provide details of their national intellectual property laws and systems, and to answer questions about their intellectual property systems.[27]

The relationship between intellectual property and international trade has legal consequences, namely that intellectual property, under present WTO/GATT setup, may not be considered in isolation. In this perspective trade rules are not necessarily the same that have historically been and now under TRIPS Agreement the GATT principles of international trade are being applied to intellectual property. “In a way it can be said that TRIPS model of intellectual property is very much one of individual property rights freely assignable in the market place. Moral rights have not been stressed. The TRIPS has very little to offer to secondary producers and end users, even independent local inventors, developers, artists and performers who are not antagonistic to the notion of property rights.”[28]

The TRIPS Agreement is a ground-breaking document that offers new grounds to cover a field creatively related to international trade that is not covered in the GATT 1994. The agreement recognizes that widely varying standards in the protection and enforcement of intellectual property rights and the lack of a multilateral framework of principles, rules and disciplines dealing with international trade in counterfeit goods have been a growing source of tension in international economic relations. Rules and disciplines were needed to cope with these tensions. To that end, the agreement addresses the applicability of basic GATT principles and those of relevant international intellectual property agreements; the provision of adequate intellectual property rights; the provision of effective enforcement measures for those rights; multilateral dispute settlement; and transitional arrangements.

It can be safely concluded that in the present day context of globalized economy the TRIPS Agreement has, for once, shifted the center of magnitude of the international intellectual property regime, by making it subject to external forces. The theoretical principles of intellectual property have been modified to suit trade necessities. TRIPS is intended to maximize the contribution of intellectual property systems to economic growth through trade and investment. In other words, Intellectual Property Rights are invariably and inevitably getting affected by international trade policies and what the TRIPS provisions mirror is the intellectual property in international trade and the same fact has to be accepted as a daylight reality.

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* Lecturer in Law, Dr. Ram Manohar Lohia National Law University, Lucknow , India. He has previously served as Lecturer in Law at University of Delhi and National Law University, Jodhpur. He has been actively involved in research and writings in the field of Intellectual Property Law. He has been member of Chair in IPR at the National Law University Jodhpur established by Ministry of Human Resource Development, Government of India. He has also coordinated a National workshop on Copyright and has presented research papers at several national conferences and seminars. In May 2008 he was invited by Albert-Ludwigs University, Freiberg, Germany to present a research paper in “Indo-German Conference on IPR”. During his visit to Germany he also participated in round – table meet on “Innovation in India: Current Policy and Trends” organized by the BMW Foundation. Again, he visited the European Patent office (EPO), Munich, and participated in the deliberations on “EC-ASEAN Intellectual Property Rights Co-operation Programme.

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References:
[1] The acronym “TRIPS” appeared for the first time in GATT document MTN.GNG/NG11/10 of November 30, 1988, paragraph 14.
[2] Prior to the TRIPS, IPRs were principally regulated at international level by a number of treaties administered by World Intellectual Property Organization (WIPO). For example, two earlier WIPO administered treaties i.e. Berne Convention on Literary and Artistic Works (1971) and Paris Convention on Industrial Property (1967) covered areas of copyright and industrial property respectively.
[3] Though Berne and Paris Conventions already had certain enforcement provisions but they were general in nature and mainly depended on existence of national laws. See Berne Convention, Articles 5.2, 6bis.3, 10bis.1, 13.3 and 16; Paris Convention, Articles 9, 10 and 13ter.
[4] Article 2
[5] Article 5
[6] Article II
[7] The TRIPS Agreement, Article 3.1
[8] Article 1.2
[9] The TRIPS Agreement, Article 4
[10] Preamble to the TRIPS Agreement can be referred here. Para 1to the preamble reads: “Desiring to reduce distortions and impediments to international trade, and taking into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade”.
[11] Para 2 (a) to the preamble reads:
“Recognizing, to this end, the need for new rules and disciplines concerning:
the applicability of the basic principles of GATT 1994 and of relevant international intellectual property agreements or conventions
[12] See Paris Convention, Articles 1.2, 4, 7bis and 8
[13] WT/DS50/R, of September 5, 1997. Later on Appellate Body upheld two of the Panel’s findings and reversed one (see WT/DS50/AB/R, of December 19, 1997).
[14] Paul Goldstein, International Copyright: Principles, Law, and Practice, Oxford University Press, New York, 2001, p.47, para. 2.3
[15] The E-Commerce Directive (2000/31/EC); and the InfoSoc Directive (2001/29/EC).
[16] The two international treaties administered by WIPO viz. WIPO Copyright Treaty (WCT) and WIPO Phonograms and Performances Treaty (WPPT) form part of WIPO’s ‘Digital Agenda’ and provide for the protection of copyright and related rights on internet.
[17] Article 6bis of Berne Convention
[18] Article 9.1 of the TRIPS Agreement exempts WTO Members from rights and obligations under Berne Convention in respect of Protection of Moral Rights of the authors.
[19] This position is based on the view that moral rights can not be waived by the author. Although there is a popular tendency to view moral rights as absolute, legislation in only a few countries follow this extreme. France, for example, recognizes these rights as “perpetual, inalienable and imprescriptibly”. (France, Intellectual Property Code Article L 121-1).
[20] Article 29.1 of the TRIPS Agreement can be referred here.
[21] In most of the Patent legislations throughout the world the right to apply for a Patent belongs to the owner of the invention i.e. the inventor himself, or any one who can claim the invention from him. Most inventions are made by employees, as part of their job. In such cases the employer owns the invention and can apply to patent it, although he needs the inventor’s signature.
[22] See WIPO document WIPO/GRTKF/IC/2/9, of December 3, 2001: “….patent law is not necessarily about protection of inventors, but about appropriating inventions.”
[23] The TRIPS Agreement , Article 22.1

[24] See Council for Trade-Related Aspects of Intellectual Property Rights, Communication from Bulgaria et al. 6, IP/C/W/204 (Sept. 18, 2000).
[25] The TRIPS Agreement, Article 24.4 permits the continued use of Geographical Indications in good faith, or even sometimes in bad faith, when used before a specified date i.e. April 15, 1994. (the date when the Agreement was signed in Marrakesh).
[26] The TRIPS Agreement, Article 25.2
[27] The TRIPS Agreement, Article 63
[28] Autar Krishen Koul, The General Agreement on Tariffs and Trade (GATT)/World Trade Organization (WTO) Law Economics And Politics, Satyam Books, New Delhi, 2005, Pp. 480, 481.

Legislative & Judicial Response against “Ragging”

2009-03-23T23:05:00.006+05:30

By SHAIWAL SATYARTHI

The term “ragging” means different things to different people. To some of us it constitutes just “fun and frolic” including “singing and dancing” in front of seniors. To some others, it means working on assignments for seniors and doing their daily chores. For many others it constitutes physically tiring, verbally abusive or even sexually assaulting acts.

"'Ragging' is the doing of any act which causes, or is likely to cause any physical, psychological or physiological harm of apprehension or shame or embarrassment to a student, and includes– (a) teasing or abusing of playing Practical joke on, or causing hurt to any student; or (b) asking any student to do any act, or perform any thing, which he/she would not, in the ordinary course, be willing to do or perform."

However, there is a general agreement that there must be a line defined which should not be crossed. Who should define the line and how should it be measured is the next question that arises. Again there are conflicts and several opinions on the same.

Ragging is different from other crimes because the motive is solely to get perverse pleasure. Ragging is also different from other crimes as it is actively promoted by certain sections of the society.

Legislative Response:-

The Prevention of Ragging in Colleges and Institutions Bill as a Private Member’s Bill was introduced in 2005. The said Bill was aimed to empower the Central Government to ban ragging in educational institutions and make it punishable with rigorous imprisonment for three years and fine of Rs 25,000.

The said Bill would also have empowered the government and its agencies such as the University Grants Commission (UGC) to penalize institutes that failed to take steps to curb ragging. One of the most important clauses of the Bill was that it wanted to empower Central and state governments to set up task forces to monitor the implementation of the anti-ragging law and take action against any violation.

Apart from above, the following criminal acts under the provisions of Indian Penal Code, 1860 can be categorized under ragging; especially if they take place inside a school or college:

▪ unlawful coercion
▪ criminal intimidation
▪ assault
▪ battery
▪ sexual abuse
▪ rape
▪ murder

Many states have also passed laws against ragging. But unfortunately, college authorities are not willing to accept their role and responsibility in this.

Judicial Response:-

The Supreme Court in its verdict, in response to a PIL filed by Vishwa Jagriti Mission in August 2001, had put a ban on ragging.

Further, a Committee for giving specific recommendations on effective prevention of ragging in educational institutions was constituted by the apex court while it admitted and heard some SLPs filed in relation to the menace of ragging in Technical Institutions/ Universities/ Colleges in the Country. The Committee had submitted a detailed report with suitable recommendations and measures required to effectively curb the menace. The recommendations of the Committee were duly accepted and the following directives have been issued to all the educational institutes for necessary implementation by the Supreme Court on May 16, 2007 in University of Kerala Vs Council, Principals’, Colleges; Kerala & Ors:-

I. Factors enlisted by the committee:

1. Primary responsibility for curbing ragging rests with academic institutions themselves.
2. Ragging adversely impacts the standards of higher education.
3. Incentives should be available to institutions for curbing the menace and there should be disincentives for failure to do so.
4. Enrolment in academic pursuits or a campus life should not immunize any adult citizen from penal provisions of the laws of the land.
5. Ragging needs to be perceived as failure to inculcate human values from the schooling stage.
6. Behavioral patterns among students, particularly potential ragging supporters, need to be identified.
7. Measures against ragging must deter its recurrence.
8. Concerted action is required at the level of the school, higher educational institution, district administration, university, State and Central Governments to make any curb effective.
9. Media and the Civil Society should be involved in this exercise.

II. Recommendations approved by the Supreme Court

1. The punishment to be meted out has to be exemplary and justifiably harsh to act as a deterrent against recurrence of such incidents.

2. Every single incident of ragging where the victim or his parent/guardian or the Head of institution is not satisfied with the institutional arrangement for action, a First Information Report must be filed without exception by the institutional authorities with the local police authorities. Any failure on the part of the institutional authority or negligence or deliberate delay in lodging the FIR with the local police shall be construed to be an act of culpable negligence on the part of the institutional authority. If any victim or his parent/guardian of ragging intends to file FIR directly with the police, that will not absolve the institutional authority from the requirement of filing the FIR.

3. In the prospectus to be issued for admission by educational institutions, it shall be clearly stipulated that in case the applicant for admission is found to have indulged in ragging in the past or if it is noticed later that he has indulged in ragging, admission may be refused or he shall be expelled from the educational institution.

4. It shall be the collective responsibility of the authorities and functionaries of the concerned institution and their role shall also be open to scrutiny for the purpose of finding out whether they have taken effective steps for preventing ragging and in case of their failure, action can be taken; for example, denial of any grant-in aid or assistance from the State Governments.

5. Anti-ragging committees and squads shall be forthwith formed by the institutions and it shall be the job of the committee or the squad, as the case may be, to see that the Committee's recommendations, more particularly those noted above, are observed without exception and if it is noticed that there is any deviation, the same shall be forthwith brought to the notice of this Court.

6. The Committee constituted pursuant to the order of this Court shall continue to monitor the functioning of the anti-ragging committees and the squads to be formed. They shall also monitor the implementation of the recommendations to which reference has been made above.

III. Action to be taken by the Institute:

i. Formation of Committees & Squads:

Complying with the directives of the Supreme Court of India, the Institution has to form the following Anti-ragging committees and squads for overseeing the implementation of the provisions of the verdict with immediate effect: The Institution level Anti-ragging Squads and Hostel level Anti-ragging Squads shall work in co-ordination with the Institution level Anti-ragging committee and oversee the implementation of the recommendations.

ii. Undertaking from Students and Parents:

Each student of the Institute and his/her parents and, or Guardian are required to submit a combined undertaking at the time of registration, in the prescribed format, which is mandatory for registration. All concerned officials of the Institute, students, parents & guardians of the students, members of Anti-ragging committees & Anti-ragging squads are requested to adhere to the stipulations and effectively monitor and comply with the provisions made in the directives.

Despite the apex court's direction to all educational institutions to take stringent anti-ragging measures, including slapping criminal cases against erring students, ragging incidents remain unchecked in the country. "Ragging is an organized crime as students prepare months before the new academic year starts. It has been observed that ragging often ends up in sexual or physical harassment for the victim. It is important for us to curb the menace at the earliest by formulating a law against physical or sexual harassment while ragging.

In fact, ragging is a problem of law enforcement and saving reputations. In spite of several legislations passed over the years, laws of the land are seldom enforced.

As there is no effective enforcement law against ragging, it continues to fascinate us as a psychological and social problem. However, even as a legal debate for curbing the menace of ragging in progress, it raises several questions and directions to pursue in order to find a lasting legal solution to this problem.

Unfortunately, ragging does not have a quick-fix solution. Passing a severe law or even implementing it will not solve the problem absolutely. We must understand that unless the society condemns it, ragging cannot be eliminated. Hence; we require a focused and concentrated effort to educate the masses.

“STOP RAGGING”

Protection of Traditional Knowledge in Arts and Crafts

2009-03-19T23:35:00.022+05:30

By Ms. Nisha Jha*

The first and foremost concern of Traditional Knowledge holders for preserving and protecting their knowledge, particularly in the field of arts and crafts has become the need of an hour these days. Apart from other areas of traditional knowledge, there have been discussions and debates about the sustainability of knowledge in the abovementioned field. It is pertinent to note that Traditional Knowledge is information which is passed down from generation to generation and thus, categorizes into various species such as, health and care, agriculture, arts and crafts, music, dance and literature.

Since, Traditional Knowledge has been more or less codified in the form of traditional medicine but the greater part of this area is still to be legally recognized such as, arts and crafts, folklore, and indigenous medicine. Art refers to a diverse range of human activities, creations, and expressions that are appealing or attractive to the senses or have some significance to the mind of an individual. Craft is used to describe the output of artists working primarily with glass, clay, wood, fiber, and etcetera. In India, craft began with man's attempt to make tools to make his life easier. It went on to an attempt to improve on the natural resources available to him. As basic needs were met, craft became an expression of creativity, a record of the times and a celebration of faith.

In the present scenario arts and crafts imparts a significant role in the national economy. In many countries and particularly in India, crafts are probably the second largest informal sector after agriculture sustaining the livelihood of many communities. But this sector is vanishing gradually due to the industrial efficiency which is undoubtedly valued more than the traditional know-how. Since, the local communities’ people sole survival is based on its’ creativity and, it is high time that their knowledge should be maintained in order to bring coherence, consistency and continuity of their cultural identity.

Customary laws though have been efficient in frequently protecting Traditional Knowledge but are not sufficient to regulate in the broader context of global world. Therefore, legal instruments to support traditional knowledge on national, regional and international levels must be devised in order to protect traditional knowledge against misappropriation and misuse and hence, Intellectual Property Rights could better recognize "traditional knowledge" as a right which encompasses the knowledge, innovations and practices of indigenous peoples and local communities.

Intellectual Property Rights can somehow be purposefully placed to preserve such knowledge but IPRs generally advocate about private monopoly rights, economic rights, and exclusive rights which are entirely different from the concept of community owned knowledge such as, Traditional Knowledge. Further, for indigenous people and local communities, Traditional Knowledge is form of bundle of relationships rather than a bundle of economic rights. Nonetheless, the role of economic rights can not be overlooked in commercializing different parts of its knowledge, for the protection, preservation and promotion of the Traditional Knowledge. But efforts are being made at the global level with few conventions and committees to standardize and strengthen the value and need of such creativity in the international market. These are as follows:

1. The Indian Arts and Crafts Act, 1990- This Act broadly applies to the marketing of arts and crafts in the United States.

2. Intergovernmental Committee- The Standing Committee of Intergovernmental Committee in December 2002 discussed the issues of intellectual property protection of expressions of folklore (or, as in the documents”) and debates of the Standing Committee (it is frequently called, “traditional cultural expressions”) were discussed, for the first time in quite a detailed manner.

Indigenous arts and crafts, form part of Expression of Folklore and are important sources of income for Indigenous artists and communities. If such Indigenous artists and communities have no right to control the use and reproduction of their arts and crafts, this may result in undesirable competition from non-Indigenous people who may obtain by cheap imitations, mass-produce similar arts and crafts. This will definitely cause economic harm to indigenous artists and communities in the sense that the market becomes more crowded and their economic opportunities are inevitably reduced. Therefore, legal protection on the Expression of Folklore is justified in Copyright.

3. Convention of Biological Diversity- It advocates about the sui generis protection system which many countries has so far enacted laws in their process of applying the abovementioned protection.

4. In India “The Biological Diversity Act, 2002” provides that all foreigners must get previous approval of the National Biodiversity Authority to “obtain any biological resource occurring in India or knowledge associated thereto, for research or for commercial utilization or for bio-survey bio-utilization”.

Besides the laws and policies being experimented and applied in this field, it is indispensable that awareness should be fostered about protection of Traditional knowledge among the indigenous and local communities. Further, innovation potential of local and indigenous communities, other modes of protection apart from Intellectual Property Rights, the commercial value of Traditional Knowledge-based products & the role of customary laws should be recognized for effective protection of arts & crafts.

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* The author has completed her LL.B. & LL.M. from B.H.U. (Varanasi) and P.G. Diploma in Labour Law from Indian Law Institute (ILI), New Delhi. Presently, she is working as RTA with School of Law, Indira Gandhi National Open University (IGNOU), New Delhi.

Internet: A tool of Copyright Infringement

2009-03-18T17:15:00.004+05:30

By Vikram Kumar*

The advent and use of Internet or the World Wide Web (www) has become the unavoidable addition in our lives. The Internet can be better known as a kind of global meeting place where people from all parts of the world can come together. It is a service available on the computer, through which everything under the sun is now at the fingertips of anyone who has access to the Internet. The internet makes possible the access to the materials in the forms of text, graphics, audio, and video etc., stored in the files of millions of individual computers.
The materials posted in the Internet are not granted to be in the public domain, and it does not grant permission to users to do further copying except such sort of copying, the poster might have expected in the ordinary course. The copying of postings available in the Internet, in violation of express notice of posters (publishers), may amount to Copyright infringement. Thus, the Internet has come heavily on the rights of Copyright owners and it threatens to upset the balance between private and public interest created by the Copyright legal system. The root cause of problem lies in the conflict between two ideologies associated with the Internet i.e. - ‘Freedom of Information’ and ‘Freedom to Information’. In other words there is no restriction to the information available on Internet in any form, one can access it and use it in any manner that one desires to. On the other hand if one is to look at the ideology of Intellectual Property protection, it can be reasoned, that it is meant to give protection to the author of the work. When these two ideologies are juxtaposed the problem becomes evident.
The Copyright infringement through Internet takes place by following acts:-

By Linking:-

By Linking a connection is made between the contents of two different files located on the same webpage or elsewhere on the Internet. Generally Linking does not amount to Copyright infringement and reason is that going online creates an implied license for any one with a computer to view the webpage. But, Linking in violation of the express notice of the Copyright owner is the infringement. If the author of a webpage don’t want any one to link inside and one do it and facilitates others in copying the material available through Linking, one would be held liable for contributory infringement. Though, in absence of any express notice, there is an implication that authors of webpages welcome links to them and give permission for this to happen.

By Framing:-

The practice of Framing is related to Hyperlinking and Deeplinking. Framing is the building of multi-pane web page containing another person’s web page inside a frame with one’s own contents, leads to the creation of a composite or derivative work without the permission of the author of the main component and this infringes Copyright, as the webpage attempts to ‘pass off’ other’s materials.

By Caching:-

Caching is fundamental to the efficient operation of Internet and it usually involves storing the materials of webpage in the computer memory cache, which can quickly retrieves the materials on request. Caching involves the copying of documents displayed on the computer screen, when one is browsing the web page or it involves temporary retaining of the copies of documents which are reviewed by the user in past and when the computer receives a request for the documents previously viewed, it brings up the cached copies rather that retrieving the documents from Internet. Caching is also concerned with E- trading, wherein the documents are stored by an ISP (Internet Service Provider) and whenever request is made by browser, the ISP checks of the documents already stored in the machine and if it has stored it, the server sends this cached copy of the document to the browser. In all types of Caching, there involves potential infringement of ‘right of reproduction’. In addition it may amount to infringement of the rights of public distribution, public display, public performance, and digital performance. Since, copies of copyrighted works may be further distributed and displayed or performed from the cache server to the public.

By Archiving:-

Archiving is the process of downloading and storing the materials of one webpage to another so that second webpage can provide its users with the material of first webpage without having hyperlink to the former to retrieve the materials. Hence, the user when clicks on the hyperlink, instead of going to the webpage, the user will be taken to another area of same webpage, where the materials are stored and this amounts to copyright infringement.

Remedies:-

The remedies available are Civil, Criminal and Administrative. Under Civil remedies, one can get the relief in the form of Injunctive relief, Compensatory relief, Account of Profit, Delivery of infringing copies and Damages for conversion. The cost of the parties in any proceedings of infringement shall be at the discretion of the court. The infringement is covered under the category of grave offences and strongly policed. The infringer can be punished with imprisonment or fine or both. Special powers to Police are given for seizure of infringing copies under the enactments. The competent authority can also take administrative action by banning the import of infringing copies and by securing the delivery of the confiscated infringing copies to the owner of the copyright.

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* The author has completed his LL.B. (Gold Medal) & LL.M. from B.H.U. He qualified the UGC-NET exam in December, 2003. Presently, he is working with Legal Department of Sahara India at Lucknow.

Authorship of Copyright in Cinematograph Film: The Rise of the Film Director

2009-03-17T01:05:00.005+05:30

By SHAIWAL SATYARTHI

Copyright is a property right. Although it differs from most other forms of property in that it is intangible, it nevertheless has the essential elements of property and is governed by the principles of property ownership

The Berne convention appears to leave a total Freedom to signatory states.[1] There is no definition of the term author in the convention and its usual meaning is still the subject of controversy.[2] In addition, when it comes to cinematographic works, the convention clearly avoids the questions of authorship and original entitlement to copyright and tackles film protection in terms of ownership.[3] This compromise indicates that a conventional concept of the author as the 'natural person who has made the work[4] could be departed from in relation to cinematographic works and that the producer, individual or body corporate, employer or commissioner, could be granted authorship by signatory states.[5]

However in UK, for films made from July 1, 1994 onwards the directive requires the Principle director of a film to be considered one of its authors. Film making, has today acquired an irreversible status as an art - form and the Directive acknowledges the clear case of Directors to be treated as authors. The acceptance of their case revolves one of the major conflicts between British copyright and continental author's rights.[6]

Almost all author's Rights system have now reverted to a system of creative authorship for films, which will be described in detail below. Although the list of film co-authors varies, the film director is the only contributor who is always recognized as the author or one of the authors of the film. It is important to note, however, that pre-eminence of the film director over other contributors is a recent phenomenon. It can be seen as a consequence of the ideas on film authorship developed in the 1950s in France.
Following the success of sound movies, in the 1930s and the 1940s, the director as creator became secondary to the writer. This conception of the director as a mere technician was clearly adopted in Europe in pre-war case[7] law and legal literature. In this respect it is interesting to observe that, under the list of co-authors set by the Italian Copyright Act of 1941 and the French Copyright Act of 1957, the director comes last, the first author mentioned being the scriptwriter. Then, so called auteur theory initiated by French film critics came in lime light.[8] To a large extent, the theory itself appears to be a late application to film studies of the concept of romantic authorship. But if by attention to the inclusion of Hollywood cinema the theory was beneficial to film studies, the rise in importance of the director was detrimental to other contributors, especially scriptwriters. The director was to emerge as a leading figure in the eyes of film critics and remains so for the public today, despite attacks of later film studies theories.[9] Clearly a film is now defined by the name of its director, whereas before the 1990s it was defined by the name of the scriptwriter, the acting star or the producer.

On the other hand the British government indicated that it would implement this obligation by creating an admixed, author-cum-neighbor, copyright for films. If this proves to be the manner in which the Duration Directive is incorporated into British Law, copyright in film will be given jointly to the producer and to the principal director. This must count as the ultimate hybrid among intellectual property rights and it demonstrates a thoroughly British determination not subscribe to the author's right-neighboring right dichotomy.[10]

If one puts on one side the correlative enhancement of term the impending change in the director's copyright status may be of greater ideological than practical consequence. In the first place, the principal director's entitlement is subject to the general rule that works created in the course of employment are prima facie the property ab initio of the employer, and, secondly, even directors who are commissioned rather than employed must normally expect to assign copyright to their producers, if they have an extraordinary reputation they may contract to do this on royalty-sharing or other special terms. The additional prestige which directors may derive from attaining the rank of author is subtle. Over time if it may well contribute to their earning power as a class but they are likely to be helped at least as much by collective action, either in the form of trade union pressure or the institution of collecting societies to enforce their rights directly against users.[11]

However in Australia also, the Australian Copyright Council had made his submission on film director’s copyright.[12] They support the recognition of film director's authorship in relation to the economic rights in a cinematograph film. Their proposal is as follows-
1. where a film has a Principal director, the Principal director be deemed to be the author of the film
2. for some films, there may be no principal director
3. where there is a principal director, the copyright in the film would be first co-owned by:
(i). the director, or the director's employer, or the assignee of the director's future copyright interest, and
(ii). the maker, or the person who commissioned the maker to make the film, or the assignee of the maker's future copyright interest.
4. Where there is no principal director, the copyright would be first owned solely by the 'maker' or the person who commissioned the maker to make the film, or the assignee of the maker's future copyright interest;
5. In some cases, the same person may be the first owner of both the maker's interest and director's interest
6. The current definition of 'cinematograph film' would remain
7. In addition to the current bases on which copyright may subsist in a film, copyright would also subsist if the director were a citizen or resident of Australia, or of a country listed in the International Protection Regulations.
8. If the film has a Principal director, the period of protection would be the life of the director plus 50 (or 70) years; in other cases, the period of protection would be 50 (or 70) years from first publication
9. The rights applying to films would remain the same as would the exceptions to those rights; and
10. The new provisions would apply to films made after amending legislation.
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References:-
[1] Allen Kent and Harold Lancour, Copyright: Current viewpoints on History, Law, Legislation, London and New York, R.R. Bowker Co. 1972 at p. 8
[2] Supra note 59 at pp. 630 - 631.
[3] Art. 14bis 2(a)
[4] R. Ricketson, The Berne Convention on the Protection of Literary and Artistic Works, London, Kluwer Publication, 1987, p. 159.
[5] Ibid.
[6] Peter Graham (ed.), The New Wave, London, Secker & Warburg,1 968 at p. 342
[7] Guerlais V. Roubaud, Gazette do palais, 936, IP p. 691 as cited in Pascal Kamina, "Film Copyright in the European Union", Cambridge, Cambridge University Press, 2002 at p. 155.
[8] Peter Graham (ed.), The New Wave, London, Secker & Warburg,1 968 at pp. 17-23.
[9] Ibid at p. 156
[10] Ibid at p. 342
[11] Ibid.
[12] "Submission on Film Director's Copyright" available at http://www.copy right.org.au
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Copyright Protection for Digital Multimedia Works

2009-03-17T00:15:00.006+05:30

By SHAIWAL SATYARTHI

With the development of digital technology, there has been some uncertainty emerged regarding application of copyright protection to Digital Multimedia Works this new form of technology. The Australian Copyright Act 1968 was drafted in the 1960s and is technology specific in that it refers to the kinds of technologies which were already known or being developed at that time. As could be expected, it makes no reference to 'Multimedia', of particular concern has been whether the existing categories under the Act provide adequate protection or whether digital multimedia works are so distinctive in character that consideration needs to be given to the introduction of a special new category subject matter to encompass them.

The question of the protection of multimedia works was briefly considered by the Australian Copyright Law Review Committee ("CLRC") in its final report on computer software protection which was released in 1995. The CLRC concluded that multimedia works fall within the scope of the protection offered to cinematograph films under the Copyright Act, 1968 and that the interactive and composite nature of multimedia works did not require the introduction of a new category designed specifically to include these works. Nor was the committee's conclusion affected by the fact that the various elements, which make up a multimedia works are assembled by the use of a computer, a process which the CLRC likened to the use of a computer to write a novel. However, the CLRC thought that, as it required some stretching of a generally accepted meaning of cinematograph film to use this category to protect multimedia works, that heading should be replaced with a more appropriate and inclusive one such as 'audiovisual work'.

While the CLRCs recommendations on the protection of multimedia works received widespread support, the Act has not yet been amended to give effect to them. In the meantime, notwithstanding the CLRCs views on protection for multimedia works, doubts were expressed about the availability of protection under the cinematograph film heading for works in which the images and sounds were generated by the multimedia software and varied with the user's responses. In particular, problems were seen to stem from the reference to an aggregate of visual images and embodiment in another article in the definition of cinematograph film and from the effects of user interactivity on the material protected.

However the authoritative decision of the full Federal court in Galaxy Electronics Pvt. Ltd. Vs Sega Enterprises Ltd. (Glaxy v. Sega) has done much to throw light on the operation of copyright protection for multimedia works.
The first instance and appeal decisions of the Federal Court in Glaxy v. Sega litigation have clearly established that the computer generated images and sounds produced by multimedia software will be protected as cinematograph films under the Copyright Act. An issue in the case was whether copyright protection subsisted in an interactive video game stored in an integrated circuit, in which the moving images appearing on the screen were generated by the multimedia software and varied according to user input.

The issue for determination by the Court was whether the computer generated moving images produced by the video games fell within the definition of cinematograph film and were protected by copyright under part IV of the Australian Copyright Act 1968. If the video games were not protected under Part IV they would not be subject to copyright protection at all by virtue of sec. 24(2) of the Circuit Layouts Act 1989, the effect of which is to exclude protection for part III works stored on integrated circuits. Since the other possible headings of protection for multimedia works, compilation and computer program both falls within the part III category of literary works, the only option available to the respondents was to claim protection under Part IV cinematograph films heading.

On appeal, the court upheld the first instance decision that the visual images generated by each of the video games constituted a 'cinematograph film' and was protected by copyright under Part IV of the Act. Since this is the first time the Australian Court has considered the application of the provisions of the Copyright Act in relation to this form of technology, the reasoning of the court in reaching this conclusion is particularly informative.

In reaching its conclusions, the Court held that the definition of 'cinematograph film; should be given a liberal interpretation as it was clearly intended to apply to new technologies. The emphasis is on the end product - motion pictures - rather than the means adopted to create those pictures. The court agreed with Burchett J. at first instance that the Copyright Act should not be given a narrow literal interpretation, but should be construed literally so that it covers works produced using newly developed technologies which achieve the same result.

In the UK Laws, a multimedia work on CD-ROM could convey a dramatic audiovisual work, the existence of which would be determined in accordance with the criteria used in relation to, say, documentaries. However, this implies that the multimedia work is not only a mere compilation, such as an encyclopedia, but carries a scenario or a story (even if this scenario can be modified to a certain extent by the input of the user). The audiovisual dramatic work would be distinct from the underlying script (itself a Dramatic work), since new elements have been added (sound effects, images, animation etc.).

Under French Law, screen displays of videogames can enjoy separate protection as audiovisual works. However in Vincent v. CUC Software, the court of appeal of Versailles held that a videogame on CD-ROM could not be considered as an audiovisual work because of its interactive nature, as opposed to the sequential and linear presentation of images in audiovisual works, and the accessory nature of audiovisual parts. This emphasis on 'interactivity' appears to add to the definition in the French Act and contradicts the solutions adopted by the French Court in relation to screen displays of videogames. The criterion of the accessory nature of the audiovisual work is more convincing.

But this exclusion does not mean that no videogames or multimedia works could be considered as audiovisual works. They could meet the definition if, for example, their 'audiovisual part' is not considered accessory to the rest of the works. Also in any case their audiovisual component will attract protection as pre-existing audiovisual work.

By analyzing the way copyright protection applies to the components of digital multimedia works and in particular, drawing a distinction between the protection for the computer program and its visual effects, the court in Glaxy v. Sega has provided valuable guidance for those in the industry. The court's interpretation of the scope of the cinematograph film category in Glaxy v. Sega is consistent with the CLRCs recommendations and indicates that a broad range of multimedia works are likely to be protected under the cinematograph film heading, even if in its present form.

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Interface Between The Trade Marks Act, 1999 And The Copyright Right Act, 1957

2009-03-16T23:24:00.009+05:30

By SHAIWAL SATYARTHI

Intellectual property law rests on an elegant model that divides the field into seven principal sub-fields – copyright, patent, trademark, design, geographical indication, breeders and farmers right, and semiconductor and integrated circuit – each protecting a distinct subject matter and promoting a unique social goal. India has enacted seven laws related to aforesaid sub-fields providing a range of distinct legal platforms for protection of fruits of human creativity.

An appropriate combination of laws needs to be exploited to achieve optimal protection of a specific intellectual asset. For example a patent can protect an invention related to the "ball-point" in a "ball-point pen". The shape of a pen can be protected by a design registration, the name of the pen can be a trademark, the style in which certain words are inscribed on the pen or the literature accompanying it could be protected by copyright. Similarly, the internals of a restaurant can be registered as a service mark, its name as a trademark that would help to differentiate it from other restaurants involved in similar service.

Under the copyright law, a composition of lines or colours made by an artist and as applied to an article in the shape of a label or a carton can perform the role of a "trade mark" as the same is capable of being used in relation to goods and it is for this reason under Section 45 of the Copyright Act, the Registrar of Trade Marks in empowered to issue a search report in respect of such artistic works as are used as a trade mark as a pre-requisite for Copyright registration. The Trade Marks Rules 2002 in Rule 24(3) provides that any person may request the Registrar in Form 60 (TM-60) to cause a search to be made and for issue of certificate under section 1 of section 45 of Copyright Act, 1957 to the effect that no trade mark identical with or deceptively similar to such artistic work, as sought to be registered as copyright under the Copyright Act, 1957 has been registered as a trade mark under the Trade Marks Act, 1999 in the name of or that no application has been made under that Act for such re-registration by any person other than the applicant. Similarly Rule 16 of The Copyright Rules, 1958 says that “every application for registration of copyright shall be made in accordance with Form IV ” and column 13A of Statement of Particulars of Form IV, which is given in first schedule of The Copyright Rules,1958, says that “if the work is an ‘artistic work’ which is used or is capable of being used in relation to any goods, the application shall include a certificate from the Registrar of the Trade Marks in terms of the proviso to sub-section(1) of section 45 of the Copyright Act,1957 .This would mean that an artistic composition of lines or colours as applied to an article can perform the role of a "trade mark".

The Copyright Act, 1957 (CRA, 1957) has emerged as an important enactment for the protection of trade marks, particularly label or wrapper marks which are also a subject matter of copyright in addition to being a trade mark. In spite of extensive use of the copyright law for protection of trade marks, the literature on trade mark law does not list it as one among the tools of trade mark protection. Incorporation of section 11(3) (b) in the 1999 Act has given the statutory recognition to this fact and has brought the copyright law to the forefront. If the use of a trade mark is liable to be prevented by copyright law, it becomes a specific ground for refusal of registration under section 11(3)(b), when opposed by an earlier right holder.

The practice is to seek relief for violation of trade marks under the copyright law, simultaneously with infringement and passing off action under trade mark law. Protection of trade mark by copyright law is very important because vesting of copyright in a person is not concerned with any specific goods or services. In addition, the plaintiff can invoke the jurisdiction of local courts by joining causes under trade mark and copyright laws. The copyright has the capacity to protect trade mark labels on all types of goods or services, whether same, similar or different, without the mark being well-known mark or enjoying large reputation in the market. Thus, the Copyright law gives impetus to every trade mark becoming absolute for all goods or services when used on anyone of them. Copyright protection is time limited, whereas protection of any copyright material as a trade mark introduces perpetuity under the Trade Mark Law.

Copyright in a Trade Mark

The labels, wrappers or stylized marks used as trade marks, may possess some artistic feature and if some skill and labour has been bestowed in their production, such labels qualify for copyright protection under the CRA, 1957, besides trade mark protection. Section 13 of the CRA, 1957 lists the classes of works in which copyright subsists throughout Indian and clause (a) lists, among others, original artistic works. Such labels or wrappers would be covered in the category of original artistic work. There are no formalities for enjoying or vesting of copyright in the work. For every work there is an owner. Per section 17, ownership vests in the author or sometimes in the authors' employer or more often, as per the terms of the contract, between the author and somebody who commissioned the author on the work. If any label or wrapper as above is used as trade mark and if it qualifies according to definition as artistic work, it shall have copyright in addition to trade mark rights.

As India is a member of the Berne Convention and TRIPS, the owner of the copyright in India shall enjoy copyright protection in all other member counties, as per the copyright law of respective countries. Such other member countries extend national treatment to members of the Berne Convention, including Indians, in the matter of copyright protection. Thus, there shall vest a copyright in such trade marks comprising artistic work in all member countries of the WTO or Berne Convention as per their Intellectual Property laws. But please note that the copyright protection in a trade mark would lapse on expire of 50 years; therefore, it is necessary that artistic trade mark must enjoy perpetual trade mark rights and not rely on copyright.

* Images Sourced from:

http://mslk.com/reactions/?p=1866

http://mslk.com/reactions/?p=1861

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Government of India likely to consider amendment in Hindu Marriage Act, 1955

2009-03-16T09:05:00.002+05:30

In view of the conflicting judgement of the Supreme Court on the issue whether irretrievable breakdown of matrimonial relationship should be a ground for dissolution of marriage, the Union Government is likely to consider if the Hindu Marriage Act, 1955 should be suitably amended. The Law Commission is also of the view that if matrimonial relationship has reached a dead end then it should be allowed to be dissolved as to continue would not be in the interest of the sanctity of marriage. Such a step would also show scant regards for the feeling and emotions of the parties involved. Justice A R Lakshmanan, Chairman of the Law Commission, in his report likely to be submitted to the government, has recommended that irretrievable breakdown should be added in the Hindu Marriage Act as a ground for grant of divorce and the government should consider amending Section 13 (d), which at present has nine grounds for divorce. These include cruelty, desertion, impotency, infectious disease, lunacy as grounds for divorce. Recently, a bench headed by Justice Markandey Katju refused to grant divorce to a couple on the grounds of irretrievable breakdown of matrimonial relationship while earlier judgements of the apex court has repeatedly held that if marriage has reached a point of no return, then the party should not be forced to carry the burden of a dead relationship. The latest judgement on the issue by a Supreme Court bench comprising Justices Katju and V S Sirpurkar has held that it is for the Parliament to amend the Hindu Marriage Act and not for the court to go beyond the Act and make law. The Law Commission has suo motu recommended to the government to amend the law suitably saying, ''The foundation of a sound marriage is tolerance, adjustment and respecting each other. Tolerance of each other's fault to a certain extent has to be inherent in every marriage. The court does not have to deal with ideal husbands and ideal wives. It has to deal with a particular man and woman.'' The report has further noted, '' Once the marriage has broken down beyond repair, it would be unrealistic for the law not to take notice of that fact, and it would be harmful to society and injurious to the interest of the party. Where there has been a long period of continuous separation, it may fairy be surmised that the matrimonial bond is beyond repair. The marriage becomes a fiction, though supported by legal tie. By refusing to sever the tie, the law in such cases does not serve the sanctity of marriage. The courts have, however, been reluctant to grant divorce in the interest of children who are the worst sufferers of a broken marriage for no fault of theirs'. Under such circumstance, interest of children becomes paramount. The commission has concluded by saying, ''The public interest demands not only that the married status should, as long as possible and whenever possible be maintained, but where a marriage has been wrecked beyond the hope of salvage, the public interest lies in recognition of that fact.''

Source: UNI

INTELLECTUAL PROPERTY RIGHTS AND ECONOMICS

2009-03-14T23:58:00.014+05:30

By Ms. Nisha Jha*

Intellectual property protects application of ideas and information that are of commercial value. To put it more clearly, intellectual property rights denotes a cluster of legal doctrines mainly patent, copyright, trademark and trade secret that differ in their structure, scope and spheres of application. Intellectual property thus means ideas, inventions, discoveries, symbols, images, expressive works (verbal, visual, musical, theatrical) or in short any potentially valuable human product that has an existence separable from a unique physical embodiment, whether or not the product has actually been “propertized” that is brought under a legal regime of property rights.
(i) Awareness of economics in intellectual property rights:-
It is significant to note that the intellectual property system which effectively protects innovation and creative expression boosts economic growth and development. Further economics is primarily one of the important elements of IPRs. Stronger systems for protecting intellectual property could either enhance or limit economic growth in theory. This is the reason why economic growth has undoubtedly been one of the major reasons and causes for the phenomenal rise in the study and importance of Intellectual Property over the years, protection and enforcement of IPR are the major components of international economic trade and scientific co-operation.
In ancient India, at pre-historic period especially during “Vedic civilization”, the inventors, creators, authors designers were not eager to conceal or to keep secret their skills and inventions amongst themselves. On the other hand, they used to disclose everything to the public at large with the hope that their inventions or creations shall be more developed and improved at the hands of the any enterprising creator or inventor.
The economics of property rights in physical property are now well understood, and its basic elements can be summarized fairly briefly. These elements such as copyrights, patents and trademarks are the tools for the understanding the essential economic characteristics of intellectual property and for evaluating the pros and cons, the scope and limits, of property rights in intellectual goods. Therefore, the awareness that intellectual property raises distinctive economic issues long predates the modern law and economic movement.
(ii) Relationship between law and economics:-
The economic analysis of intellectual property law is a different subject. The economic interpretation of intellectual property rights is a direct descendant of the theory of labour mixing and property formulated by John Locke (1632-1704). This theory is in fact is the cornerstone of the reasoning that establishes a casual link between creators and ideas which legitimizes the individual’s rights through the institutions of property rights. More importantly, the protection and regulation of intellectual property has the potential not only enriching the economic property and skill of the individual owner or user but also enhance the living standard of the people throughout the world. Economic growth has undoubtedly been one of the major reasons and causes for the phenomenal rise in the study and importance of IP over the years.
(iii) Monopoly:-
Besides this if we weave into details there are other revealing aspects too, it is instructive to note that the right which is extended to intellectual property rights poses a dampening factor in competitive field like, Monopolies interfere with the efficiency of the economy. They lead to lower levels of production and higher prices than would prevail with competition. The premise underlying IP throughout its history has been that the recognition and rewards associated with ownership of inventions and creative works stimulate further inventive and creative, activity that in turn stimulates economic growth. The continuum from problem ® knowledge ® imagination ® innovation ® intellectual property ® the solution in the form of improved products and new technologies, continue to be powerful driver for economic development.
(iv) Valuation of intellectual property:-
Valuation is an art more than a science and in an interdisciplinary study drawing upon law, economics, finance, accounting and investment. More specifically valuation procedure, is essentially, bringing together of the economic concept of value and legal concept of property. The cardinal rule of commercial valuation is that the value of something cannot be stated in the abstract, all that can be stated is the value of a thing on a particular place at a particular time, in particular circumstances. What matters in business is to maximize economic wealth therefore if the establishment cannot maintain the product or the importance of the product has higher commercial value in the hands of other organization, one may just like to exchange hands or shake as it benefits both the parties and makes economic sense. The acceptable methods of the valuation of identifiable intangible assets and intellectual property fall into three broad categories. They are either:
- Market based
- Cost based
- Based on estimates of future economic benefits.
Thus, the owner must first be perspective of its future economic benefits from his product that is the owner must not overlook the enforcement mechanism to protect its product since, once the idea is released, it will be “free as the air” under the background norms of a free market economy. Economists have also taken up the challenge of modeling the consequences of high and low levels of protection and to some extent of testing these models against the empirical evidence. From this perspective, therefore, for the sake of valuation of various forms of intellectual property the focus should be on the application of economic analysis in order to derive the optimal damages rules for use in patent, trade secret, copyright and trademark disputes.

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*The author has completed her LL.B. & LL.M. from B.H.U. (Varanasi) and P.G. Diploma in Labour Law from Indian Law Institute (ILI), New Delhi. Presently, she is working as RTA with School of Law, Indira Gandhi National Open University (IGNOU), New Delhi.

Cybersquatting

2009-03-14T12:00:00.013+05:30

By Vikram Kumar*

Cybersquatting typically refers to the extortionate conduct of the registrant whose Domain Name represents the Trademark or Trade name of someone else which he has registered as his Domain Name with a sole purpose to sell it or offer to sell it to the true owner of the Trademark for ransom. Cybersquatters have also been referred to as ‘Cyberpirates’ and ‘Domain Name Grabbers’. Firstly, in the case of Panvansion Int’l.L.P. Vs.Toeppen, the defendant ‘Toeppen’ was referred as cyber pirates who tried to make business of Domain Names by registering various well known Trademarks with an object to sell them to the rightful Trademark owners. The term ‘Domain Name Grabber’ is generally used when defendant uses another’s Trademark as his Domain Name for carrying on his own business. Similar instances occurred in Maruti Udyog Vs Maruti InfoTech, in which the respondent made an offer to sell his Domain Name to the complainant for USD 3200; in Mahindra & Mahindra Ltd. Vs Neoplanet Solution, in which ,respondent was willing to sell his Domain Name to the complainant for USD 2000; and in Venture Foods. LLC vs. Palhivijay, in which the respondent demanded USD 75 for the transfer of Domain Name to the complainant.

The ‘Cybersquatting’ is a more serious form of ‘Domain Naming Disputes’. Typically, this is done by obtaining a Second Level Domain (SLD) name registration, within the <.com> i.e.- a top level domain (TLD) of a well known company name or brand. Many companies, including McDonalds and Coke, have undergone the experience of learning that someone else had already registered their name or mark under the <.com> TLD. Some other issues had emerged earlier in registration of names such as or i.e. - misspelling of popular brand names. Many persons register slight variations of other’s marks for the sole purpose of diverting traffic to their website through typing errors.

The ‘Cybersquatting’ issues has its origin in the increased significance of Domain Names as the business identifier, which has come into conflict with the system of business identifier that existed before the arrival of the Internet and that are protected by the Trademarks law. The Domain Names have come in conflict with Trademarks law in many respects, they are: (a) The Trademarks law allows concurrent use of the same mark on different goods or services or on the same goods or services provided the users of the Trademark separated by distance and there is no possibility of consumer confusion. This is not possible under the current Domain Name registration system, as the concurrent use of Domain Name is not possible (b) The Domain Name registration is based on “first come first served” principle. Any person who may not be associated in any way with a well known name can register it as his Domain Name with the legitimate owner having good will in that name will be prevented from registering it as his Domain Name.

The courts have decided Cybersquatting cases, till date, making basis the principles which have been considered essential to be proved by the complainant are (a) Bad faith intent; (b) Lack of legitimate interest or right; (c) Profits on the Trademark of rightful owner; (d) Warehousing Domain Names for ransom. (e) Prevent rightful Trademark owner from carrying on business on internet by using Domain Name based on their Trademark.

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* The author has completed his LL.B. (Gold Medal) & LL.M. from B.H.U. Presently, he is working with Legal Department of Sahara India at Lucknow.

New Record for International Trademark Registrations in 2008

2009-03-13T13:24:00.006+05:30

Wednesday, March 11, 2009 by: WIPO

Geneva, March 10, 2009 - International trademark activity remained robust overall in 2008 with WIPO receiving a record 42,075 applications under the 84-member Madrid system for the international registration of trademarks (“the Madrid system”), representing a 5.3% rate of growth. Filing activity was stronger in the first six months of the year (+6.9% compared to the same period in 2007) than in the second half of 2008 (+3.9%) mirroring a slowdown in global economic conditions.
Applicants from Germany topped the list of top filers for the 16th consecutive year, followed by users in France, the United States of America (USA), the European Community (EC), Switzerland, Italy, Benelux, China, Japan and Austria. China remained the most designated country in international trademark applications followed by the Russian Federation, reflecting sustained interest by foreign companies in trading in those countries.
Mr. Francis Gurry, WIPO Director General, said that the continued growth in the use of the international trademark system underlines the pivotal importance of trademarks to business, particularly within challenging economic times. “Trademarks play a key role in engendering consumer confidence, an important factor for businesses facing the challenges of the current economic slowdown.” Trademarks enable companies to build and maintain their reputation in the market place and to add value to their commercial operations. “Even in economically difficult times, businesses continue to recognize that a trademark is a smart investment in a company’s reputation and long-term sustainability,” Mr. Gurry added.
Regional and National Filing Trends
The 27 countries of the European Union accounted for over half of the international applications received – some 27,242 – in 2008. This figure includes both the international applications filed through the national trademark offices of the countries concerned and those filed through OHIM which rose to 3,600 international applications representing an increase of 6.8 per cent over 2007. Since October 2004, applicants from the EC have the option to file their international applications either through their national trademark office or through the EC’s regional trademark office (OHIM) in Alicante.
Users in Germany filed 6,214 international applications representing 14.8% of the total and a growth rate of 2%. Applicants in France accounted for 10% of the total filing 4,218 international applications representing 7.3% increase on figures for 2007. Businesses in the United States of America (USA) filed the third largest number of applications – 3,684 or 8,8% of the total number showing a slight decrease (-1.5%) over 2007. OHIM ranked fourth with 3,600 international applications marking an increase of 6.8% over 2007. Switzerland moved into 5th position with an 8.6 % growth rate (2,885 international applications), overtaking Italy which fell to 6th position with 2,763 international applications or 3.7% growth.
A number of countries demonstrated significant growth rates in 2008 and improved their rankings. Japan, with 29.9% growth and 1,278 international applications moved up to 9th place from 12th in 2007. The Russian Federation (+33.9%) ranked 11, up two places from 13th in 2007. Spain retained its 14th place with 14.2 % growth and Turkey its 15th position with a 24.1% rate of growth. The Czech Republic, with a growth rate of 12% moved up to 16th from 17th place. Poland with a 41.5% rate of growth moved up 5 places to rank 19. Slovenia enjoyed a rate of growth of 62.6 % to move up seven places to 23rd position. Latvia moved into 31st position with a 48.7% growth rate, followed by Liechtenstein in 32nd position with 14.2% growth; and Singapore in 33rd position with 13.7% growth. Greece saw a growth rate of 46.3% moving up from 39th to 34th; and Lithuania moved into 38th position with a 19.2% growth rate.
Developing countries accounted for 2,133 filings in 2008, representing 5.1% of total filings. The developing country with the highest growth rate in 2008 was Viet Nam with a 51.6% growth rate.
The total number of international registrations in force reached 503,650 (this includes the record figure of 40,985 registrations made in 2008, representing a 6.5 per cent increase on 2007). These registrations belong to 166,398 right holders who are mostly small and medium-sized enterprises.
Top Holders and Top Applicants
With 216 international trademark applications, Lidl from Germany was the largest filer in 2008, followed by Nestlé (Switzerland), Henkel (Germany), Boehringer Ingelheim (Germany), Novartis (Switzerland), Janssen Pharmaceutica (Belgium), BSH Bosch und Siemens (Germany), Zhejiang Medicine Company (China), L’Oréal (France), Deutsche Telekom (Germany), AstraZeneca (Sweden), KRKA (Slovenia), Glaxo Group (UK), Beiersdorf (Germany), MIP Metro (Germany), Hofer Kommanditgesellschaft (Austria), 3 Suisses International (France), ITM Enterprises (France), Egis Gyógyszergyár (Hungary), Actavis Group PTC (Iceland). In 2008, a Chinese firm, Zheijiang Medicine Company, broke into the top 10 ranking for the first time.
Henkel (Germany), with a total of 2,731, holds the largest number of international trademark registrations under the Madrid system. The top twenty holders by the end of 2008 were: Henkel (Germany), Janssen Pharmaceutica (Belgium), Novartis (Switzerland), L’Oréal (France), Nestlé (Switzerland), Unilever (Netherlands), Sanofi-Aventis (France), ITM Enterprises (France), Siemens (Germany), BASF (Germany), Lidl (Germany), Biofarma (France), Richter Gideon (Hungary), Boehringer Ingelheim (Germany), Syngenta (Switzerland), Philips (Netherlands), Kraft Foods (Switzerland), Ecolab (Germany), Merck (Germany) and Deutsche Post Immobilienservice (Germany).
Top Designated Countries
A record 378,894 new designations (made in international registrations or as subsequent designations) of Madrid Union members were notified in 2008, representing a 2.3% increase over 2007. When submitting an international trademark application, applicants must designate those member countries in which they want their mark to be protected. Applicants can also extend the effects of an international registration to other members at a later date by filing a subsequent designation. In this way, the holder of an international registration can expand the geographical scope of the protection of a mark in line with evolving business needs.
For the fourth consecutive year, China was the most designated country. With 17,829 designations, it accounted for 4.7% of the total number of new designations and enjoyed a 6.9% increase in such designations over 2007. The second most designated country was the Russian Federation with 16,768 designations (+8.5%), followed by the USA with 15,715 designations (+7.5%), Switzerland with 14,907 designations (+2.6%), the European Community with 14, 502 (+13.8%) and Japan with 12,748 designations (+3.7%).
The EC continues to be a favorite target market for designations. Having received 14,502 designations in 2008 (+13.8%), the EC confirms its 5th position in the ranking of most designated members of the Madrid Union.
Some of the countries that have moved up in the ranking of most designated countries compared to 2007 are Ukraine (from 8th to 7th place), Singapore (from 14th to 12th place), Belarus (from 19th to 15th place), Serbia (from 21st to 16th place), Montenegro (from 35th to 23rd place) and Viet Nam (from 29th to 24th place).
Profile and Costs of Registrations Recorded in 2008
In 2008, on average, 8 Madrid Union members were designated per registration by applicants seeking international trademark protection under the Madrid system and 59% of the registrations recorded in 2008 contained one to five designations.
In submitting a trademark application, an applicant has to specify the goods or services to which the trademark will be applied in accordance with an international classification system known as the “Nice Classification.” The most popular classes of goods and services in international trademark registrations recorded in 2008 were Class 9 (which covers, e.g., computer hardware and software) representing 8.5% of the total, Class 35 (which covers services such as office functions, advertising and business management) which represented 7.1% of the total, Class 42 (which covers services provided by e.g., scientific, industrial or technological engineers and computer specialists) which represented 5.6% of the total, Class 25 (which covers clothing, footwear and headgear) representing 4.9% of the total and Class 41 (which covers services in the area of education, training, entertainment, sporting and cultural activities) representing 4.5% of the total.
In 2008, applicants paid on average 3,734 Swiss francs for an international registration; for 80% of the registrations the fees paid were less than 5,000 Swiss francs.
The number of trademark renewals went up by 11.4 per cent to reach a total of 19,472. The Madrid system allows for the central administration of an international trademark portfolio, as it provides for procedures which enable trademark holders to record modifications to international registrations (for example, changes of ownership, changes in name or address of the holder or changes in the appointment of the representative of the holder) through the submission of a single request at WIPO. Modifications recorded in 2008 totaled 91,300 representing a 7.1% increase over 2007.
Development of the Madrid System
Membership of the Madrid Union expanded from 81 to 84 members in 2008 with the accession of Ghana, Madagascar and Sao Tome and Principe. An expanding membership and an ever wider geographical spread of the system make it a more attractive option for businesses operating in international markets.
Madrid system operations became fully trilingual (English, French and Spanish) in 2008 meaning that an international application can now be filed in any of these, irrespective of which treaty or treaties governs the application. The Madrid Assembly also commissioned a study on the implications of introducing additional filing languages to the system.
On the legal side, users saw the repeal of the “safeguard clause”. This means that for states bound by both the Madrid Agreement and the Madrid Protocol - the two treaties which govern the Madrid system - only the provisions of the Protocol, the most recent and flexible of the two treaties, will apply. The Madrid Protocol relaxes certain provisions of the Agreement, in order to allow adherence by states and intergovernmental organizations (IGOs) whose trademark registration systems do not match with the provisions of the Agreement, in particular in respect of the fees to be paid by applicants and the applicable time-limits.
An IT modernization program was launched in 2008 which will further enhance the services available under the Madrid system. This will allow WIPO and national/regional trademark offices to improve and expand electronic communication of international applications and notifications under the procedures of the Madrid system, as well as to upgrade the web-based information products and other services available on the WIPO website, such as the ROMARIN database and the WIPO Gazette of International Marks. New features allow users to track their international registrations in designated countries.
For further information please contact the Media Relations Section at: Tel: (+41 22) - 338 81 61 or 338 95 47, Fax: (+41 22) - 338 82 80, Email: publicinf@wipo.int.

Shape of goods & its Protection under Indian IPR Laws

2009-03-08T11:24:00.001+05:30

The definition of trademarks contained in the Indian Trade Marks Act, 1999 includes the shape of goods, but the scope of its protection is unclear, as statutory protection for the shapes of goods was only introduced in 2003. Whether the shape of goods may be protected under the principles of design law or trademark law is also a more interesting question especially in India where the definition of “design” under the Designs Act, 2000 excludes trademarks.

A decision by the Delhi High Court provides some assistance on the seemingly overlapping protection. In Corning Inc. & Ors. v. Raj Kumar Garg & Ors., 2004 (28) PTC 257, the Delhi High Court illuminated the fundamental distinction between a trademark and a design:

“trademark” signals to the mind, the source or identity of the producer/manufacturer of the article,whereas a “design” appeals to the eye and attracts the consumer/purchaser. A “trademark” may also be attractive and appealing to the eye but it should be directly relatable to the producer/manufacturer of the goods whereas the “design” may be merely appealing or attractive to the eye and need not give any indication to the consumer/purchaser about the identity of the manufacturer or producer of the article.”

The court also held that a design protects only the features of shape and configuration. This distinction is significant in view of the inclusion of shapes in the definition of trademarks under the Act, because it may be concluded that whereas trademark law protects the shape of goods, design law merely protects the features of such shapes. With regard to the issue of distinctiveness, there is no case law in India relating specifically to shape marks. However, pronouncements on product packaging or trade dress may provide guidance on the path that the courts are likely to take when faced with such an issue.

It has been repeatedly held that the trade dress cannot be inherently distinctive and while a claim of passing off is available, the plaintiff claiming passing off has to prove that the trade dress has acquired secondary meaning or reputation in the market in relation to the trade dress. Such reputation need not be based on the use in India alone but may also be in the form of trans-border reputation of a trademark that has travelled into India from some other countries.

Such cases have also indicated that the amount of evidence establishing reputation in relation to a shape mark is required to be more than that required for a word mark.

PROTECTION OF TRADE SECRETS

2009-03-07T23:33:00.013+05:30

By Vikram Kumar*

What are Trade Secrets?

A Trade Secret is generally the information recognised to be valuable to competitors, not generally known in the trade, acquired at some expense or effort by its owner who makes reasonable efforts to keep it secret. Matters of general knowledge or information already published or disclosed can’t usually be covered by Trade Secrets. Any information that is readily ascertainable by proper means does not constitute Trade Secret.

The protection of Trade Secrets has been considered to be a part of the subject of unfair competition. Acts of competition contrary to honest industrial or commercial practices are considered to be acts of unfair competition. These acts would include passing off some other enterprise’s goods or services as one’s own or misappropriation of a competitor’s industrial or business secrets by unfair means. Protection against such acts of unfair competition is the part of business law in most countries. It has also long been linked to the protection of Intellectual Property under the segment of Industrial Property. The Paris Convention for the Protection of Industrial Property introduced provisions on unfair competition in the year of 1900. Further TRIPS extend these concepts specifically to Trade Secrets.

For non disclosure of Trade Secrets to public at large the owner makes reasonable efforts to preserve its secrecy. The employees, licensees, customers or clients to whom the secret is revealed must be told of its secret nature and can be made to sign confidentiality agreements. Physical security measures, such as cordoning off an area at manufacturing facilities can be taken.

TRIPS & Trade Secrets:
Under TRIPS, Trade Secrets are defined as information that (a) is secret in the sense that is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) has commercial value because it is secret; and (c)has been subject to reasonable steps under the circumstances, by the person lawfully in the control of the information, to keep it secret. This definition is quite substantially based on the Uniform Trade Secrets Act of the U.S. and the case laws in that country.

Legislative Response:
For protection of Trade Secrets, many Commonwealth countries seems to feel that no amendment to the law is necessary as this obligation can be met by contract law and by common law with respect to breach of confidence. However, it is unclear how the obligation against third parties can be implemented without specific legislation. In many civil law countries and in most states of the U.S., such legislation already exists. Certainly, even in the absence of such extension to cover third parties, there is no complaint that protection of Trade Secrets is inadequate in these countries. This would imply that common law developing countries can continue to follow standards derived from the English law and need not have a specific legislation on the subject.

Judicial Response:
The responses of judiciary towards the protection of Trade Secrets are reflected under the heads of – (a) Contract not to divulge Trade Secrets; (b) Implied Contract; (c) Equity of Confidence; and (d) Third Party Liability.

Where there is a contract not to divulge confidential information, the question would depend upon the construction of the contract. An employee has the right to the personal skill he may have acquired when in employment and on leaving the service, he cannot be restrained from using the knowledge so acquired either in the employment of another person or in setting up a rival business, but he cannot make use of particular knowledge imparted to him in confidence. He may have been expressly informed that on certain matters, he must be deemed to have realised that they were, Trade Secrets and he cannot use those, once he has left the service.

There may be an implied agreement that Trade Secrets will not be used for any purpose beyond the permitted use and will not be disclosed to third parties. By two ways a term may be implied, one by implication from the circumstances and the other by implication from the construction of the contract.

The protection to Trade Secrets is also given by the broad principle of equity that “he who has received information in confidence shall not take unfair advantage of it….” Three elements are required if, apart from contract, a case of breach of confidence is to succeed. First, the information itself must have the necessary quality of confidence about it. Secondly, the information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorized use of that information to the detriment of the party communicating it. Equity, however, does not help the parties whose Trade Secrets are illegal.

Where a third party either induces an employee of another business to part with confidential information, or knowing that the information is confidential accepts it from such employee, he will be restrained from its use by an Injunction and will liable to pay Damages. On the other hand, where the third party has the innocence as to confidential information not knowing it to be confidential, he will not be liable either for an Injunction or for Damages.
Although damages or injunction cannot be decreed against an innocent third party who has obtained the information for value, it may be granted against the third party who has acquired or may have acquired information to which he was not entitled without notice of any breach of duty on part of the man who imparted the information to him but who cannot claim to be a purchaser for value.
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* The author has completed his LL.B. (Gold Medal) & LL.M. from B.H.U. Presently, he is working with Legal Department of Sahara India at Lucknow.

PIL against age bar in legal studies

2009-03-06T07:21:00.005+05:30

There may still be some hope for those in their 30s who want to enrol for law this year. The newly introduced age bar on admissions to law Colleges being challenged. Terming the new rule brought in by the Bar Council of India (BCI) to prevent the 30-plus from joining a three-year LLB degree course as an unjustifiable restriction and violation of the basic fundamental rights to education and profession, a Mumbai-based lawyer has filed a public interest litigation (PIL) before the Bombay high court to have it quashed before the 2009-10 academic year began. The BCI, the apex lawyers' body in India, is empowered to deal with issues governing admission to law colleges. "The very upholders of law and legal rights are now grossly violating a citizen's fundamental rights,'' the PIL said. The Petitioner pointed out that the old rules contemplated even the setting up of a correspondence course in law studies to widen the student base. The old regulations "expected'' that "universities and colleges in the country will continue to impart liberal education in law and expand it to large sections of people by conducting correspondence programmes if necessary''.

THE AGE ISSUE:

* Those over 20 years of age are barred from the five-year integrated law degree which one joins after the HSC exam (22 years in case of SC/ST)

* Those over 30 years are barred from the three-year LLB degree course that one can join after completing a bachelor's degree in any faculty (35 yrs in case of SC/ST)

* There is no age bar abroad for legal studies

"Published in TOI"

Update on said PIL:-

This PIL is in Pre-Admission stage. The Last Date for this PIL was fixed on 26/03/2009 before the Division Bench comprising Hon'ble The Chief Justice & Hon'ble Shri Justice Dr. D.Y. Chandrachud of Hon'ble Bombay High Court.

Sanjay Dutt approaches SC seeking permission to contest parliamentary elections

2009-03-06T04:25:00.003+05:30

Sanjay Dutt, who is all set to make his political debut from Lucknow as the Samajwadi Party candidate for Lok Sabha elections, has moved Supreme Court seeking a stay on his conviction under the Arms Act. The SC stay is required to clear his path for contesting the elections. One near parallel is cricketer-turned-politician Navjyot Singh Siddhu's case. He had to give up his Lok Sabha membership after the Punjab and Haryana High Court set aside his acquittal on charges of culpable homicide not amounting to murder. Navjyot Singh Siddhu then appealed in the Supreme Court against his conviction and made a specific plea for staying his conviction to enable him to contest in the bypolls. The SC, just a day before the deadline for filing his nomination in 2006, stayed Siddhu's conviction in the road rage case and ensured that he could contest the Amritsar Lok Sabha by-election.

Law on this issue:

Under Section 8 of the Representation of the People Act, 1951 anyone sentenced to more than two years' imprisonment is barred from contesting elections from the date of such conviction and shall continue to be disqualified for a further period of six years since his release till a court of law stays the conviction and sentence.