Using Copyright works owned by others & Infringement of Copyright NIFT & WIPO 21st June 2005. Prathiba M.Singh Singh & Singh Advocates [email protected] © 2005 singh & singh.
Download ReportTranscript Using Copyright works owned by others & Infringement of Copyright NIFT & WIPO 21st June 2005. Prathiba M.Singh Singh & Singh Advocates [email protected] © 2005 singh & singh.
Using Copyright works owned by others & Infringement of Copyright NIFT & WIPO 21st June 2005. Prathiba M.Singh Singh & Singh Advocates [email protected] © 2005 singh & singh COPYRIGHT - A GLOBAL RIGHT Right exists on creation No registration is needed Protectible in all Convention/WTO countries. Almost 150 countries are covered Reciprocal protection in all countries COPYRIGHT – Categories of copyrighted works literary artistic musical Dramatic Cinematograph films Sound Recordings Broadcaster’s rights Performer’s Rights Introduction I. COPYRIGHT: 1. Artistic work: painting, drawing, sculpture, engraving, photograph, architectural work or any work of artistic craftsmanship 2. Broadcast: Any communication to the public by means of wireless diffusion whether in signs, sounds or visual images or by wire and includes a re-broadcast Copyright 3. Literary works: This is not an exhaustive definition but an inclusive definition. It includes computer programs, tables, compilations, databases. This category of works shall also include all traditional literary works including books, journals etc., Copyright 3. Musical works: Any work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music. 4. Sound recording: Means a recording of sounds from which sounds may be produced. Copyright 5. Cinematograph film: Any work of visual recording produced through a process from which a moving image may be produced and includes a sound recording accompanying such visual recording. 6. Government work: A work published by or under control of the Government, Legislature or any Court, Tribunal or judicial authority. Copyright 7. Dramatic work: includes any piece of recitation, choreographic work or entertainment in dumb show, scenic arrangement or acting, form of which is fixed in writing or otherwise excluding a cinematograph film. 8. Performer includes an actor, singer, musician, dancer, a person delivering a lecture or any person making any performance. Copyright “Computer” includes any electronic or similar device having information processing capabilities (added by amendment in 1995) “Duplicating equipment” means any mechanical contrivance or device used or intended to be used for making copies of any work. “Reprography” means the making of copies of a work, by photocopying or similar means Copyright “Publication means making a work available to the public by means of copies or by communicating the work to the public.” But by a review of cases one can see that protection against what is contemplated under the new WIPO treaty has already been granted by judge-made law. Examples of some works Choreography: is the art of arranging designing of ballet or stage dance in symbolic language. It is a form of dramatic work. In order to qualify for the copyright protection it must be reduced into writing. Ballet: The elements of ballet are the music, the story, the choreography, the scenery, and the costumes. It is thus a composite work. Such work could be the subject matter of copyright. Examples of some works Painting : is an artistic work whether or not it posses any artistic quality . To be entitled to copyright protection a painting must be original i.e. it should originate from the painter and not a mere copy of another painting. A painting must be on a surface of some kind. Facial make-up as such, however idiosyncratic it must be an idea, cannot possibly be a painting for the purpose of copyright act. Examples MERCANDISING CORPORATION v HARPBOND(1983) FSR 32 P, 32 (Facial make-up was not held a painting within the meaning of sec 3 of the U.K. copyright act.) Examples Sculpture: is included in the definition of artistic work and the work of sculpture includes casts and models. Sculpture means the art, act, process of carving cutting, hewing, molding or constructing materials into statutes , ornaments, figures The act, art, process of producing figures or groups in plastic or hard materials. The art of sculpture is the branch of the visual arts that is especially concerned with the creation of expressive form in three dimensions. A sculpture should in some way express in three dimensional form an idea of the sculptor. NEW ENCYCLOPEDIA QUOTED IN WHAM-O CASE. A Frisbee was a sculpture. Copyright subsists original sculpture. The creation of a sculpture no doubt involves good amount of skill and labor Examples Works of artistic craftsmanship: Copyright subsists in original work of artistic craftsmanship The act does not define the term artistic craftsmanship. Prototype furniture: In GEORGE HENSHER v RESTAWILE UPHOLSTERY (1975) RPC 31 at p 5455 the HL held that a prototype of upholstered chairs and settees which consisted of light frame with upholstery nailed with it so as to resemble a chair not a work of artistic craftsmanship. The respondent copied the chair and thus the prototype as well. In the action of infringement the injunction was refused TERM OF COPYRIGHT The term of copyright – for literary, dramatic musical or artistic work is lifetime of author + 60 years – for anonymous or pseudonymous work is 60 years from the date of publishing – for a photograph, sound recording, cinematographic film and government work is 60 years from date of publishing of the work INFRINGEMENT OF COPYRIGHT What constitutes infringement? – Doing or authorizing to do any of the following acts without the consent or license of owner of copyright: reproduce the work including its storage by any electronic means issue copies to the public perform/communicate the work to public make translation of the work make adaptation of the work To make any cinematograph film or sound recording in respect of the work. INFRINGEMENT OF COPYRIGHT permit for profit any place to be used for communication of the work when infringement To permit for profit any place to be used for the communication constitutes infringement of the copyright in the work unless he is not aware or has reasonable grounds for believing that such communication to the public will be an infringement of copyright make infringing copies of work for sale, hire or display or offer for sale or hire import infringing copies in India Types of copyright in one work BOOKS: 1. Rights of the author 2. Rights of the publisher in India and abroad 3. Rights of a person publishing the book on CD Rom/multimedia format 4. Rights on the Internet Types of copyright in one work MUSIC: 1. Right of lyricist 2. Music director 3. Singer 4. Orchestra 5. Music company 6. Version recordings Types of copyright in one work Machinery This can be submatter of patent & copyright. But drawings of machinery falls in copyright. Escorts Construction case. Types of copyright in one work PEPSI CAN 1. Copyright in the packaging, colours etc. 2. Trade mark in Pepsi 3. Copyright in circular device 4. Copyright in manner of writing Pepsi Adaptations of various works MUSIC -- SONGS Original album New albums Remixes Version Recordings Pop versions DJ versions Adaptations of various works STORY PUBLISHED IN A BOOK STORY ENACTED IN A DRAMA TRANSLATION TELE-SERIAL CINEMATOGRAPH FILM Adaptations of various works STORY OPERA/BALLET MUSICAL VERSION COMPILATION Each of the above works, once created have a separate, new copyright, protectable as original works. Adaptations of various works POEMS SONGS SOUND RECORDINGS PERFORMANCES POETRY BOOKS COMPILATIONS OF POETRY, including expert comments Adaptations of various works PAINTINGS Licensing as covers for books Licensing on stamps Create new versions by changing the sizes of the painting Calendars Exceptions-fair use Section 52 of the Copyright Act enlists acts which do not constitute infringement, viz. – Fair dealing for the purpose of private use, including research and criticism or review of the work. – Fair dealing for the purpose of reporting current events in a newspaper, etc. – reproduction for the purpose of judicial proceeding or report of judicial proceeding. Exceptions-fair use – Making of temporary or back-up copies to provide against destruction or damage – Observation, study or testing of functioning of the computer programme – making of copies of software from a legal copy for non-commercial personal use Fair Dealing – – – – Fair dealing is permitted for the purposes of private study or research , criticism or review or the reporting of current events. Fair dealing with the literary, dramatic, musical or artistic work for the purposes of research or private study does not infringe any copyright in the work, or in the case of a published edition, in the typographical arrangement. The aim of this provision is to give students and researchers greater access to copyright works. Making a maximum of 3 copies for the use of a public library. SEC 52(1)(o) Fair Dealing or Permitted Acts Case law: University of London Press v University Tutorial Press(1916)2 ch 601,p 613 Publication of a collection of examination papers with answers for the private study of students would not be fair dealing of examination papers and would constitute infringement of its copyright. No acknowledgement is required in connection with the reporting of current events by means of a sound recording film, broadcast or cable program. SEC 52(1)(b) Fair Dealing or Permitted Acts Sec 52(1)(c) Reproduction for judicial proceedings or for the purpose of a report of a judicial proceeding. ‘Judicial proceedings’ are defined as including proceedings before any court, tribunal, or person having authority to decide any matter affecting a person’s legal rights or liabilities. Reproduction in newspaper and magazine of the article of the current economic, political, social or religious topic in certain situation. SEC 52 (1)(m) Fair Dealing or Permitted Acts Reproduction of unpublished work kept in a museum or library for the purpose of research or study. SEC 52(1)(p) Reproduction in any work prepared for the exclusive use of members of any legislature or publication of a translation of acts of legislature or rules Sec 52(1)(d) Reproduction by a teacher or a pupil in the course of instruction, or as part of a question paper or in answers to such questions. Sec 52(1)(h) e.g. It seems that the teacher may copy onto a blackboard a substantial part of a literary work, and pupil may copy it down. The teacher may however not photocopy the same material for the use by students in absence of a licensing agreement. Fair Dealing or Permitted Acts Reading and recitation in public of extracts(literary or dramatic).SEC 52(1)(f) Publication in collection for the use of educational institution in certain circumstances. SEC 52 (1)(g) Performance in course of activities of educational institutions in certain circumstances. Sec 52(1)(I) WORK OF ARCHITECTURE: SEC 52(1)(s) The making or publishing of a painting ,drawing, engraving or photograph of a work of architecture does not constitute infringement. Fair Dealing or Permitted Acts WORK OF ARTISTIC CRAFTSMANSHIP: SEC 52(1)(t) The making or publishing of a painting, drawing, engraving, or photograph of a sculpture, or other artistic work falling under the category of a work of artistic craftsmanship if the work is permanently situate in a public place or any premises to which the public has access will not constitute infringement. Fair Dealing or Permitted Acts AUTHOR’S RIGHT TO USE MOULD, CAST etc. OF WORK: SEC 52 (1)(v) The author of an artistic work may not be the owner of the copyright thereof for it might have been assigned to somebody or the author might have made the work in the course of employment under a contract of service. In such cases the author can however ,use any mould, cast, sketch, plan, model or study made by him for the purpose of work. but by such use he should not thereby repeat or imitate the main design of the work. This will be a rather difficult provision to apply in practice. It may not be easy to determine what is the main design of the work on which opinion may differ. Since there is no copyright in the ideas a creative artist may be able to reproduce substantially the original work made by him without copying the original. Fair Dealing or Permitted Acts The exceptions to infringement listed under s. 52(1) in relation to literary, or dramatic, musical artistic work will apply also in relation to any translation or adaptation of such work SEC 52(2) Whether registration is essential? Particulars needed for registration: 1. Name of author 2. Date of publication 3. Whether assignments are obtained 4. If it is an artistic work, then noobjection from Trade Marks Registry Whether registration is essential? Advantages of registration: 1. Documentation comes in place in terms of assignments/no-objections from authors 2. Evidence of date when the work was created 3. Prima facie evidence of particulars 4. Easier to take action especially criminal action where police are convinced with copyright certificate. (re:software, music) Remedies Civil remedy A suit for infringement of copyright can lie in the District Court or in a High Court of Original Jurisdiction. Remedies contd., Civil remedy Reliefs to be claimed: 1. Injunction coupled with Anton Piller orders, John Doe orders & Mareva injunction 2. Rendition of accounts, damages 3. Delivery Up Remedies contd Criminal: Copyright infringement is a cognisable offence. A criminal complaint can be filed either before the police or a Magistrate and search & seizure orders can be obtained. Pros & Cons of Civil remedies PROS Proper judicial determination of rights Likelihood of earning damages Less subject to challenge Commissioner’s seizure orders are more respected CONS Delays - Trial, Appeal, Supreme Court Damages not usually awarded No severe punishment for violation of rights Pros & Cons-Criminal remedies PROS Quick remedy Greater possibility of curbing violation quickly because of fear of being arrested in a criminal case CONS Chances of seizure of goods may be less as there can be a leakage Difficulty in coordinating with police authorities CRIMINAL REMEDIES Section 63 of the Copyright Act,1957 defines offence of infringement of copyright. Infringement of copyright is a cognizable offence punishable with imprisonment upto 3 years and fine upto 2 lakh rupees RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Pltf & def manufacture ladies clothing. CR claimed in 3 stages of Manuf. Procedure viz., - design sketches, - cutting patterns - prototype garments RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Def argued – Prototype is not work of artis.crtms. – No one author is involved – Cutting patterns are functional – One of the sketches was copied from earlier dress – Dress could not reproduce a sketch – Stiffness was to be given otherwise it is not a dress – Delay RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Court Held: – It is work of A.C – Need not unite with one author – Dress can be a 3 dimensional reprodn of a sketch – Huge diff between the earlier dress and new one, hence pltf work is original BRIGID FOLEY Ltd. v ELLOT (1982) RPC 433 It has been observed that if there is a direct copying from a garment which one person has designed and produced by himself, doing all the cutting , stitching, and so on, there might be a case for saying that there would be a breach of doing that. BERNSTEIN v SYDNEY MURRAY(1981) RPC 303 The plaintiffs were owners of copyright in certain sketches for ladies’ garments in which the garments were shown as worn by ladies. They had displayed garments made from such sketches in fashion shows and shop windows. Defendants have copied the dresses produced from plaintiff’s sketches. It was held that this constituted infringement of copyright in sketches. BURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS (1936) CH D 400 The plaintiff’s alleged that defendants had infringed the copyright in the sketch described as “ frock being worn by a young lady ” It was also alleged that there was infringement of artistic copyrights in dresses made up by the plaintiff’s in accordance with those sketches, which dress themselves were said to be works of artistic craftsmanship It was held that thee was no infringement of a sketch by a frock. In MERLET v MOTHERCARE Ltd (1984) FSR 358 (1986) RPC 115 The plaintiff made a prototype baby cape for her child. The cape was subsequently manufactured by the second plaintiff. The defendants copied the plaintiff’s garments and made baby cape in accordance with the copy. The plaintiff claiming the handmade prototype garment as a work of crafsmanship it was not a work of artistic craftsmanship brought an action for infringement of copyright. In MERLET v MOTHERCARE Ltd (1984) FSR 358 (1986) RPC 115 It was held that though the prototype was a work of craftsmanship it was not a work of artistic craftsmanship. It was held that in approaching the question the garment has to be considered by itself and neither as worn nor as containing a baby. No aesthetic satisfaction unless worn on the baby Action was dismissed. An appeal against infringement of certain drawings was dismissed. KOMESAROFF v MICKLE (1988) RPC 204 at 210 ( Australian case ) A product called (moving sand pictures) comprising a mixture of liquid, colored sands, and a layer of air bubbles encased within two glass panels was held not a work of artistic craftsmanship. They are functional – not regd design OVERLAP OF DESIGN, COPYRIGHT & TRADE MARK Design is for aesthetic appearance. Anything functional is not registrable as a design Copyright in a design comes to an end if the work has industrial application and is reproduced more than 50 times Que: Is there diff. between copyright in a design and copyright in a drawing. Yes. One judgement of Delhi High Court. Confusion is worse with Trade mark definition being amended Shape is also a trade mark – But articles like dresses, sculpture etc., cannot come in trade marks. However commercial products have more overlaps in protection. Designs Design As per Copinger and Skone James on ©, a design is, inbroad terms, the plan or scheme for the appearance of an article (or a part of an article). It primarily concerns with what an article looks like or is intended to look like. It is not concerned with how an article performs its function. The design of an article may be recorded in any form including the written description, sketch, drawing, photograph or it could actually be embodied in the article itself. “Design” has also been defined as the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article[1]. [1] Copinger & Skone James on ©, 15th Edn., Vol. 1, pg. 730 Infringement Infringement in the context of Indian Textiles, Apparels and Life Style Industry: Indian Textiles: If artistic patterns are drawn up on a piece of cloth to be used for any purpose, including but not limited to for instance, making of garments, bed sheets, sofa covers, table cloths, etc., then the artistic patterns printed on the piece of cloth are protected as copyrights. On the other hand, if a designer of clothes creates a new pattern of garment to be used as a fashionable attire, then the sketch/ drawing that is drawn of the pattern of the garment is protected as a copyright. Infringement However, once the idea of the creative pattern is implemented on the piece of cloth, then the same may be protected as a design right. If, the intention of the designer is to ensure that only one piece of the garment is manufactured, then the same could also be protected as the artistic work imprinted on the piece of cloth having copyrights. Alternatively, if the designer’s intention is to produce several thousands of garments in different scheme of colours, etc., then the intention of the designer is to use the said design in the industry. Accordingly, the latter form of use of the same material may be considered to be a design. There is an ongoing debate on the issue and a lot depends on the manner, in which the author of the work intends to use the work. Ford Motor Co.1993 RPC 399 Vehicle parts are not subject matter of design becos’ they have no value in commerce except as part of a vehicle Mirrors, seats, etc., were capable of registration as substitution was possible without affecting shape of the vehicle. The distinction that seems to have been drawn is that there are several parts which are mostly hidden and never seen, such parts cannot be registered as designs. However, parts and their circuits if in drawing form are artistic works Escorts Construction George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 Upholstered chairs & settees. One prototype was evolved – chairs were copied from it and sold Def. copied the chairs and hence the prototype Trial Court granted injn. Appeal court dismissed the injn. HL refused protection George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 Artistic craftsmanship need not necessarily mean “work of art”. The product may be a commercial success but need not be of Art.craftsmanship Merchandising Corpn Vs. Harpbond 1983 FSR 32 Adam from the pop group Adam & Ants New look for himself with RedIndian face markings Two red lines in grease paint, light blue line in between, heart over left eyebrow & a beauty spot Def. made a poster of it & made a portrait & superimposed new look over an old poster In infringement action Ct held that this is not a painting and hence not protectable. Animal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985) Novelty slippers Resembles a bear’s foot or paw Slipper’s design features separate from its utilitarian features, incl. impractical width of sole, shape of sole, profile of slipper, toes which are unrelated to function and copyrightable. Injunction granted. Faber Castell Vs. Pikpen 2003 PTC 538 Faber Castell “Textliner”. A dark green body Unique cap of same colour as colour of ink Gold lettering on green body Regd design. Prior Publication could be through prior documents or some other prior user. Injunction granted Hello Mineral Vs. Thermoking California Design of water coolers/ dispensers Cylindrical shape is no novelty Colour combination should be changed Preeti Gupta Vs. Rajendra Prahladkar 2002 PTC 64 Design of photoframes Registered design Defendant no.2 was an employee of plaintiff Injunction granted protecting the copyright in the design of photoframes Samsonite Vs. Vijay Sales 1998 PTC 372 Suitcases made by pltf copied by defendant The entire range was copied Claim was based on drawings & copyright No registered design No protection granted as it is manufactured industrially more than 50 times. Karamchand Vs. Godrej Sara Lee Judgement of May 2005 ALL OUT VS. GOOD KNIGHT A commercial was telecast showing a product of ALL OUT and calling it “15 saal purani technology” The lady plugs ALL OUT apparatus and plugs in the Good Knight Turbo Apparatus. ALL OUT VS. GOODKNIGHT ALL OUT APPARATUS Infringement of copyright in an apparatus Disparagement Unfair Competition ALL OUT VS. GOODKNIGHT Good Knight showed an actress using a plasma tv, lap top etc., and other modern gadgets. The background was LATEST, LATEST, LATEST. So when you are using latest, why are you using 15 year old technology of All Out. Use Good Knight Turbo refill. Court injuncted the commercial. CONCLUSION Technological advancement made the job of the creator easy ………it also made the job of the copyer easy. Consciousness in IPR is the only way to prevent the latter.