Transcript Marcus Evans conference: Corporate Legal Counsel Forum Roadmap for Intellectual Property Rights protection in the globalised world Taj Lands End, Mumbai 24th – 25th May.

Marcus Evans conference:
Corporate Legal Counsel Forum
Roadmap for Intellectual Property Rights
protection in the globalised world
Taj Lands End, Mumbai
24th – 25th May 2007
Karnika Seth
Attorney at law & Partner
SETH ASSOCIATES
ADVOCATES AND LEGAL CONSULTANTS
© Seth Associates, 2007 All Rights Reserved
Presentation plan
 Discovering ways to manage and protect a company’s IP
 Discussing the legal and practical issues on IP law in India
 Recent case laws on IP and their implications
 Protecting trademarks, copyright & patents in India
 Expounding copy rights challenges in digital age
 Understanding the role of legal due diligence in digital rights
management and asset protection
 Understanding how the New Companies Bill 2006 interferes with
e-governance
© Seth Associates, 2007 All Rights Reserved
Discovering ways to manage and
protect a company’s IP
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What is IP ? Output of intellect having commercial importance/value
Intangible assets of a company-trademarks, patents, copyrights ,etc
Why manage or protect IP? Requires huge investment of time and money and
can be exploited by commercialization
Few characteristicsIPR can be held by legal entities/individuals
IPRs can be simultaneously held in same IP in many countries at the same
time
Non working can prove fatal
Territorial right except Copyright (as per Berne Convention.)
Fixed term rights except trademark and geographical indication
How to manage IP? IPR can be assigned, gifted and licensed, mortgaged
Sign non disclosure, confidentiality agreements with
employees/investors/service providers
How to protect IP? By and large ,statutory registration necessary for
protection .
Enforce IP rights incase of infringements through legal redress
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Trademark &
domain names
Copyright
Trade secrets
Patent
Categories of
IP rights
Utility model/Designs
Geographical
Indications
Plant Breeder’s
rights
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Classification of IPR
Intellectual Property
IPR
Trademarks
Broadcasting
Copyright
Patents
Music
Dramatics Works
Literature
Sound Recording
Industrial Design
Works of Art
Geographical
Indications
Computer Programs
© Seth Associates, 2007 All Rights Reserved
Reasons Why IP is Ignored
Under estimation
of its
importance
Lack of Awareness
Time Required for Grant
of a Patent/registration of TM
Myth that it can’t be
computed /valued
Cost of Patenting
Enforcement of IPR
© Seth Associates, 2007 All Rights Reserved
Rights that different IP assets protect
 Intellectual Property can be clearly distinguished from Goodwill. UK
& Australian Generally Accepted Accounting Principles (GAAP) has
specified goodwill as an umbrella concept consisting of
unidentifiable intangible assets and should not include those
Intellectual Properties which are capable of individual identification
and can be sold separately.
 Copyright- is a bundle of rights granted to an author of an original
artistic, literary or musical work to print ,publish and sell copies of his
work and other allied rights. Copyright protection also extends to
cinematographic film and sound recordings.
 Designs- The designs entitled to protection are new and original
designs having aesthetic value which have not been previously
known or published in India or elsewhere.
© Seth Associates, 2007 All Rights Reserved
Rights that different IP assets protect
(Cond.)
 Trademarks- is an identification symbol which may be a word, a device, a
label or numeral etc. or a combination thereof used in the course of trade
that enables the purchasing public to distinguish one trader’s goods from
similar goods of other traders
 ( distinctive/acquired distinctiveness)
 The purpose of Brand is:
• To uniquely identify a company and its product.
• To differentiate them from competitor.
• To enhance the perceived value, the quality and satisfaction that a
customer experiences.
• To evoke distinct associate stands for certain personality traits and
carries emotional
attachment.
• Above all brand is supposed to inspire trust. Trust failure can lead to
brand failure and brand failure can be fatal.
 Patents- is the grant of a monopoly right to an inventor who has used his
skill to invent something new. (novelty, non obviousness, usefulness)
© Seth Associates, 2007 All Rights Reserved
World's three most valuable
trademarks!
 1992 Financial Week
listed, as the world's
three most valuable
trade marks,
 "Marlboro", worth 31
billion US dollars,
 "Coca-Cola", worth 24
billion US dollars,
 and "Budweiser", worth
10.2 billion US dollars.
35
30
Coca-Cola
25
20
15
Marlboro
10
5
Budweiser
0
© Seth Associates, 2007 All Rights Reserved
Global IP protection International Organizations
 World Intellectual Property Organisation (WIPO)
 WIPO was established by the WIPO Convention in 1967 with a mandate
from its Member States (184)to promote the protection of IP throughout the
world through cooperation among states and in collaboration with other
international organizations. Its headquarters are in Geneva, Switzerland
 International Association for the Protection of Industrial Property (AIPPI)
AIPPI The World's leading non-government organisation for research into,
and formulation of policy for, the law relating to the protection of intellectual
property
 International Trademark Association (INTA)
The International Trademark Association (INTA) is a not-for-profit
membership association of more than 5,000 trademark owners and
professionals, from more than 190 countries, dedicated to the support and
advancement of trademarks and related intellectual property as elements of
fair and effective national and international commerce. The Association was
founded in 1878
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International Organizations
 European Patent Office -The European Patent Organisation is an
intergovernmental organisation that was set up on 7 October 1977
on the basis of the European Patent Convention (EPC) signed in
Munich in 1973. It has two bodies, the European Patent Office and
the Administrative Council, which supervises the Office's activities.
The Organisation currently has 32 member states.
 The WTO’s Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS), negotiated in the 1986-94 Uruguay
Round, introduced intellectual property rules into the multilateral
trading system for the first time. The TRIPS Agreement, which came
into effect on 1 January 1995, is to date the most comprehensive
multilateral agreement on intellectual property
© Seth Associates, 2007 All Rights Reserved
WIPO administered IP protection
treaties
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Conventions
. Berne Convention
Topic
Year
No. Contracting parties
Copyright
1886
163
broadcasting
1974
30
Film Register Treaty
Copyright
1989
13
Madrid Agreement
Indications of Source)
1891
35
Nairobi Treaty
Olympic symbol
1981
46
Paris Convention
Industrial property
1883
171
Patent Law Treaty
patent
2000
14
Phonograms Convention
phonograms
1971
76
Rome Convention
copyright
1961
86
Singapore Treaty on the Law of
Trademarks
trademark
2006
not yet in force
Trademark Law Treaty
trademark
19994
38
Washington Treaty
Integrated circuits
1989
not yet in force
WCT
Copyright
1996
63
WPPT
phonograms
1996
61
Brussels Convention
© Seth Associates, 2007 All Rights Reserved
WIPO administered IP protection
treaties
Global Protection
System
Conventions
Topic
Year
No.Contracting parties
Budapest Treaty
Microorganism. Patent
1977
67
Hague Agreement
Industrial design
1925
47
Lisbon Agreement
GI
1958
26
Madrid Agreement
(Marks)
trademark
1891
57
Madrid Protocol
trademark
1989
72
PCT
patent
1970
137
Classification
Conventions
Topic
Year
No.Contracting parties
Locarno Agreement
Industrial design
1968
49
Nice Agreement
trademark
1957
80
Strasbourg Agreement
patent
1971
57
Vienna Agreement
Figurative mark
1973
23
© Seth Associates, 2007 All Rights Reserved
Different Statutes governing IPR in
India
Trade Marks
Patents
Copyright
Designs
Geographical Indications
The Trade Marks Act, 1999
The Patents Act, 1970
The Copyright Act, 1957
The Designs Act, 2000
The Geographical Indications
Of Goods Act, 1999
The Protection of plant varieties and
Plant Varieties
Semi conductor IC layout
Farmers’ Right Act, 2001
Semi conductor IC layout design
Act,2000
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IP- Duration of Term of Protection
 Patents (20 years)
 Trademarks (10 years + renewals)
 Copyrights in published literary, dramatic, musical, and artistic works (Lifetime of
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author +60 years).
Copyright in photographs ,cinematographic film, sound recordings –(60 years
from year in which it was published)
Broadcast reproduction right-(25 years from the beginning of the calendar
year next following the year in which the broadcast is made.)
 Performers right-(25 years from the beginning of the calendar year next
following the year in which the performance is made)
 Industrial designs (10 years+ renewal permitted once for 5 years )
 Trade-secrets and know how collectively “proprietary technology” (contract
period-protected by contract provisions, doctrine of breach of trust)
© Seth Associates, 2007 All Rights Reserved
Management of IPR assets
Source: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore, on
.
28 Nov 2006
© Seth Associates, 2007 All Rights Reserved
Management of IPR assets
Source: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore,
on 28 Nov 2006
.
© Seth Associates, 2007 All Rights Reserved
Source: Commercialization of Intellectual property Rights, Informedia conference held in Bangalore on
.
28 Nov 2006
© Seth Associates, 2007 All Rights Reserved
Practical tips for IP owners
 Secure your rights
 Invest in investigations
 Stringent and watertight agreements
 Timely actions
 clear enforcement strategy
© Seth Associates, 2007 All Rights Reserved
Discussing the legal and practical
issues on IP law in India
Recent amendments made in IP law of India
 New Trade Mark Law (effective from September 15, 2003)
 The new legislation is in compliance with the TRIPS agreement and
contains important provisions which have been widely welcomed by
IP owners and practitioners. Service marks have been introduced
and it is now possible to obtain registration for service marks in
India.
 Well known marks defined and broader protection given:
 The new Act has laid down criteria for well known marks and
provided broad protection in respect of them. It has also recognized
the theory of dilution in respect of well known marks. Well known
marks are given statutory protection, even when the allegedly
infringing mark is being used on goods that are dissimilar to those
for which the mark is registered.
© Seth Associates, 2007 All Rights Reserved
Recent amendments in Indian
Trademark law
 Infringement redefined
 The scope of infringement has been widened. One of the important
changes has been to make it clear that use of a registered trade
mark as part of a company name/business name will constitute
trade mark infringement. This is quite useful for IP owners since,
with the growth of the service industry in the last 10 years, there has
been a growing tendency for infringers to adopt well known marks
as part of their trade name/trading style.
 Further use of marks, or deceptively similar marks, on similar goods
(or even, in some circumstances, on dissimilar goods) may now
amount to infringement.
 Enforcement streamlined
 Misuse of a trade mark has been made a cognizable and non bailable offence. Powers have been given to police officers to search
and seize premises in case of trade mark infringement. The police
officer is, however, required to obtain the opinion of the Trade Marks
Registrar on infringement of the trade mark.
© Seth Associates, 2007 All Rights Reserved
Recent amendments in Indian
Trademark law
 Jurisdiction further stretched
 Jurisdiction under the 1958 Act was invoked where the defendant
had its offices for gain or profits or where the infringing activities
were conducted. The 1999 Act has extended the scope of
jurisdiction by allowing the plaintiff to institute proceedings where the
plaintiff has its office for profit or gain so as to render the provisions
of jurisdiction under the Trade Marks Act on a par with those under
the Copyright Act. From a brand management perspective, this is
again a major milestone, as it enables the plaintiff to institute
proceedings at the jurisdiction of its convenience and location as
opposed to the physical discomfort of bringing proceedings where
the defendant resides or infringes.
 The 1999 Act allows assignments of pending applications without
goodwill.
© Seth Associates, 2007 All Rights Reserved
Recent amendments in Indian
Patent Act
 Patent Law amended
 Amendments to the Patents Act have been the subject of
intense debate, particularly those relating to the grant of
pharmaceutical product patents. The Patent Law despite
controversies and lobbying for and against finally saw
light of the day on January 1, 2005 in compliance of
India’s obligations as a WTO member. The act has been
amended and product patent in relation to
pharmaceutical products can now be registered in India.
© Seth Associates, 2007 All Rights Reserved
Recent amendments in Indian
Copyright law
 Copyright Protection
 The copyright law in India is largely TRIPS compliant. Major
changes were made to the Indian Copyright Act in June 1994,
coming into effect in May 1995. The amendments to the Act were a
landmark in the copyright industry. The much required protection
was given to computer software, clarifying the rights of the user to
make backup copies and imposing heavy punishment and fines on
infringers of software copyright. The Act is once again proposed to
be amended in order to address challenges posed by digital
environment in particular downloading of music, movies, books,
software and other copyrighted material from the internet. The
proposed amendments are awaiting approval from the parliament.
The amendments would provide room for stricter Copyright law
provisions in line with international standards.
© Seth Associates, 2007 All Rights Reserved
Discussing the legal and practical
issues on IP law in India
Existing Hurdles to clear…..
 Procedure of registration is lengthy , cumbersome and costly
especially patents.
 Copyright violations and trademark violations other infringements of
IPR rampant despite law and enforcement machinery in placeprocedures are lengthy, cost intensive, need of cohesion , police
protection necessary for raids, Court injunction required, litigation
delays.( piracy in software, media and books maximum)
 The Madrid system for the international registration of marks, also
conveniently known as the 'Madrid system', is the primary international
system for facilitating registration of trademarks in multiple jurisdictions
around the world.
India is in process of making amendments to its tradelaw regime to
streamline its trademark law and to make it consistent with evolving
international trademark law regime and is also contemplating
accession to the Madrid System.
© Seth Associates, 2007 All Rights Reserved
Existing Hurdles to clear…
 India is not currently in compliance with TRIPS on a
number of issues including business methods, but, it is
hoped, they will move in that direction. "The Indian law
… adds an exclusion that precludes patents on business
methods, which have been the basis of significant recent
filings in the United States." Fortunately, there is a strong
indication that India’s emerging technology community
will positively affect compliance with TRIPS. Ironically,
with an emerging software industry and the prevalence
of the English language, India could benefit
tremendously from an expansion of patentable subject
matter to include business methods.
© Seth Associates, 2007 All Rights Reserved
Recent case laws on IP and their
implications
 Spill over reputation and well known marks
 Until the 1999 Act was enforced, the 1958 Act dealt with reputation and
goodwill in a mark as a basis for restraining the use of an identical or
deceptively similar mark for identical or similar goods. In the case of
foreign plaintiffs whose marks did not enjoy direct use in India, spill over
reputation was adequately recognized by the courts and there are several
judgments including those in N R Dongre v Whirlpool Corp 1996 PTC
476, Caterpillar Inc v Mehtab Ahmad 2002 CTMR 354 Delhi, Alfred
Dunhill v Kartar Singh Makkar 1999 PTC 294 and Kamal Trading
Company v Gillette 1988 PTC 1 where the foreign plaintiff's mark was
protected against dishonest adoption in India through the demonstration
of international use and reputation in a manner which could have resulted
in the foreign mark acquiring reputation and goodwill in India.
© Seth Associates, 2007 All Rights Reserved
Recent Ruling-Protection of
colour marks
 The 1999 Act includes the combination of colours and shapes in the
definition of trade marks. In a recent landmark decision in the case of
Colgate Palmolive Company & Another v Anchor Health and Beauty Care
Pvt Ltd, 2003 (27) PTC 478 (Delhi), the colour combination of red and
white of the plaintiff's company has recently been protected against the
defendant. It was stated that if the first glance of the article without going
into the minute details of colour combination and get up appearing on the
container and packaging gives the impression of deception or close
similarities in respect of these ingredients, it is a case of confusion and
amounts to passing off of one's goods as those of the other with a view to
benefiting from the goodwill and reputation of the latter.
 The defendants were restrained from using the colour combination of red
and white on the containers and packaging of their goods, as there was
every likelihood of confusion as to the source on account of the similarity
of a substantial portion of the container having a particular colour
combination and also the shape of the container.
© Seth Associates, 2007 All Rights Reserved
Evasive Tactics In Infringement
Checked With Punitive Damages
 The Delhi High Court in the case of Asian Paints (India) Ltd. V Balaji
Paints & Chemicals & Ors 2006 (33) PTC 683 (Del), reflects the
current position as it has taken a strong view, that defendants who
choose to stay away from proceedings of the court purely to escape
damages should be burdened with the punitive damages, because
on top of the impugned issue defendant’s action impinges on the
reputation of the plaintiff.
 Reinforced with the principles formulated in the recent judgment of
Hero Honda Motors Ltd. V Shree Assuramji Scooters, 2006 (32)
PTC 117 (Del.), the Court quantified and awarded the damages of
Rs. Three Lakhs for choosing to stay away from the proceedings of
the Court despite service.
© Seth Associates, 2007 All Rights Reserved
Landmark case fighting Biopiracy
 India has won a 10-year-long battle at the European
Patent Office (EPO) against a patent granted on an
anti-fungal product, derived from neem. EPO initially
granted the patent to the US Department of Agriculture
and multinational WR Grace in 1995.
 But the Indian government successfully argued that the
medicinal neem tree is part of traditional Indian
knowledge.
 The winning challenge comes after years of campaigning
and legal efforts against so-called "bio-piracy".
© Seth Associates, 2007 All Rights Reserved
The Novartis patent case..
 A court in southern India on Wednesday reserved its
verdict on a challenge by Novartis AG <NOVN.VX>
against an Indian law that blocks patenting of minor
improvements in known molecules.
 India is a vital source of cheap generic medicines and
campaign groups are worried that the poor in the
developing world could lose access to vital drugs if the
Novartis challenge succeeds.
 The giant Swiss drug maker has argued that tightening
of intellectual property laws would boost investment in
developing more medicines, and says that the Indian
patent system stifles innovation.
© Seth Associates, 2007 All Rights Reserved
Case against software piracy
 In another landmark decision, delivered in
Microsoft vs Yogesh Papat [2005 (30) PTC 245],
the Delhi High Court calculated the actual loss of
business caused to the plaintiff by the defendant
selling pirated software as 'freeware' with
assembled computers, and awarded damages
of Rs.1.97 million. This is the highest award for
damages given by an Indian court to date for
trademark and copyright infringement.
© Seth Associates, 2007 All Rights Reserved
Domain names protected by Indian
courts
 In a recent case the Supreme Court of India held that domain names are
subject to the legal norms applicable to other intellectual property. While
restraining a subsequent proprietor from using another proprietor’s
registered domain name, the Supreme Court considered various
definitions under the Trademarks Act and held that a ‘domain name’ is a
word or name that is capable of distinguishing the subject of trade or
service made available to potential users of the Internet.
 Satyam Infoway Ltd, a leading IT services company and one of India’s
largest internet service providers, has been the registered proprietor of
several domain names, including ‘sify.net’, ‘sifymall.com’ and
‘sifyrealestate.com’, since June 1999. It claimed that the word ‘sify’ was a
word invented by using elements of its corporate name. Another
company, Sifynet, which started an internet marketing business using the
domain names siffynet.net and siffynet.com in June 2001, was restrained
from using these domain names (Satyam Infoway Ltd v Sifynet Solutions
Pvt Ltd, 2004 53 SCL 26 (SC)).
© Seth Associates, 2007 All Rights Reserved
Protecting trademarks,
copyright & patents in India
© Seth Associates, 2007 All Rights Reserved
Passing off, Trademark
infringement and dilution
Passing off
“No body has any right to represent his goods as the goods of
somebody else”
Lord Halsbury
Passing off action allows trader A to prevent trader B from passing their
goods off as if they were A’s.
Passing off is available where there is a prospect of confusion of identity
through the unauthorized use of similar marks or get up, and such use
damages, or is likely to damage the goodwill and reputation of a business.
Passing off can apply to virtually any name, mark, logo or get-up which
distinguishes a company, business, product or service from the other.
Passing off attracts doctrine of strict liability: the intention of the person
passing itself off as another trader is irrelevant.
© Seth Associates, 2007 All Rights Reserved
Attributes of Passing Off
Lord diplock in Erven Warnink v J Townend 1979
(2)AllER 927-To Succeed in an action for passing
off, a claimant should establish that:
The claimant has a goodwill
Passing off is made in the course of trade.
The defendant made a misrepresentation
that is likely to deceive the public.
The misrepresentation damages or is
likely to damage the goodwill of the
claimant.
© Seth Associates, 2007 All Rights Reserved
Passing off action under the
Trade Marks Act, 1999
 A registered Trademark has the backing of
infringement and passing off remedies under the
TMA act.
 The Act does not provide for infringement action
in respect of unregistered Trademarks.
 Only Passing off remedy is available in case of
unregistered Trademarks.
(Section 27 of TMA Act, 1999).
© Seth Associates, 2007 All Rights Reserved
Trademark infringement
Section 29 of the Trademark Act states that when a registered trade mark is
used by a person who is not entitled to use such a trade mark under the
law, it constitutes infringement. A registered trade mark is infringed ,if:1. The mark is identical and is used in respect of similar goods or services or
2. The mark is similar to the registered trade mark and there is an identity or
similarity of the goods or services covered by the trade mark
3. And Such use is likely to cause confusion on the part of the public or is likely
to be taken to have association with the registered trade mark.
For example, if you are not the Nike® company or authorized by it, it is
an infringement to sell sports clothes called "Nikestuff “
Legal remedies under Indian Trademarks ActInjunction ,damages, delivery up of infringing goods, destroying infringing
goods and material, etc.
For cases see heading cybersquatting
Satyam infoway vs Sifynet solutions 2004 (6)SCC 145..
© Seth Associates, 2007 All Rights Reserved
Dilution
 Dilution is a trademark law concept forbidding the use of a famous
trademark in a way that would lessen its uniqueness. In most cases,
trademark dilution involves an unauthorized use of another's
trademark on products that do not compete with, and have little
connection with, those of the trademark owner. For example, a famous
trademark used by one company to refer to hair care products, might
be diluted if another company began using a similar mark to refer to
breakfast cereals or spark plugs.
 A trademark is diluted when the use of similar or identical trademarks
in other non-competing markets means that the trademark in and of
itself will lose its capacity to signify a single source. In other words,
unlike ordinary trademark law, dilution protection extends to trademark
uses that do not confuse consumers regarding who has made a
product. Instead, dilution protection law aims to protect sufficiently
strong trademarks from losing their singular association in the public
mind with a particular product, perhaps imagined if the trademark
were to be encountered independently of any product (i.e., just the
word Pepsi spoken, or on a billboard).
© Seth Associates, 2007 All Rights Reserved
Trade Mark Infringement
Kind of Infringement
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The taking of any essential feature of the
mark or taking the whole of the mark and then
making a few additions and alterations would
constitute infringement.
The infringing mark must be used in the
course of trade, i.e, in a regular trade wherein
the proprietor of the mark is engaged.
The use of the infringing mark must be printed
or usual representation of the mark in
advertisements, invoices or bills. Any oral use
of the trade mark is not infringement.
Advertising with the unauthorized use of the
registered trade mark is also an act of
infringement.
Any or all of the above acts would constitute
infringement if the same is done in such a
manner as to sender the use of the mark
likely to be taken as being used as a trade
mark.
Relief




Sec 135
Relief in suits for infringement or for
passing off, includes injunction and at
the option of the plaintiff, either
damages or an account of profits.
In brief, the relief to which a plaintiff is
entitled are An injunction restraining further
use of the infringing mark.
 Damages or an account of profits.
 An order for delivery-up of
infringing labels and marks for
destruction or erasure.
Injunction may be of the following
types: Anton Piller Order
 Mareva Injunction
 Interlocutory Injunction
 Perpetual injunction.
© Seth Associates, 2007 All Rights Reserved
Geographical Indications of
Goods - Infringement
Kind of Infringement
 Sec 22- A registered geographical

indication is infringed by a person
who, not being an authorized user,
uses such indication on the goods or
suggests that such goods originate in
some other geographical area other
than the true origin of the goods
which mislead the public.
A registered geographical indication is
infringed by a person who, not being
an authorized user, uses such
indication to the goods which
although literally true as to the
territory, region or locality in which
goods originate, falsely represents to
the public that the goods originate in
the region, territory or a locality in
respect of which such registered
geographical indication relates.
Relief
In case false geographical indication
is established, it carries penalty with
imprisonment for a term which shall
not be less than six months but which
may extend to three years and with
fine which shall not be less than fifty
thousand rupees but may extend to
two lakh rupees.
© Seth Associates, 2007 All Rights Reserved
Legal remedies-Copyright
infringements
There are three types of remedies against copyright infringement
Civil
Criminal
Administrative
Sections 54 to 62 deals with civil remedies for infringement of copyright. Civil
remedies include injunction, damages and accounts, delivery of infringing
copies and damages for conversion.
Costs: The costs of all parties in any proceedings in respect of the
infringement of copyright shall be at the discretion of the court.
© Seth Associates, 2007 All Rights Reserved
Legal remedies-copyright
infringement
The Law provides civil and criminal remedies in case of infringement of copyright.
Copyright infringement is a cognizable offence where a Police Officer not below the
Rank of a Sub-Inspector can arrest the offender without the warrant and conduct the
search even without prior authorization of a Court.
Copyright infringement if proved in a Court of Law carries a minimum mandatory
sentence of imprisonment of six months and minimum fine of Rs. 50,000 which can
extend up to Rs. 2 lakh. The Act further provides that there will be an enhanced
penalty in case of second and subsequent convictions.
In Civil Cases, the District Court can be persuaded not only to give an interim
injunction without notice to the other party but also usually gives a direction under
Order 39 Rule 7 of C.P.C. where a Commissioner appointed by the Court will visit the
premises of the infringers and will be empowered to conduct a search of the inventors
premises and cease infringing material from the infringers premises. The seized
material can be used at a later point of time to establish infringement.
In UK these types of orders are called ANTON PILLOR ORDERS
© Seth Associates, 2007 All Rights Reserved
Legal remedies-copyright
infringement
Section 63 defines what constitutes a criminal offencecopyright infringements.
Any person who knowingly infringes or abets the infringement of(a) the copyright in a work, or
(b) any other right conferred by the Act (except the right conferred by
section 53A, which is the right to share in the resale price of the
original copy will be punished with imprisonment for a minimum
term of six months and a maximum of three years and with a fine
which may vary from a minimum of 50,000 rupees to two lakh
rupees.
© Seth Associates, 2007 All Rights Reserved
Legal remedies-combating
copyright infringements in India
Administrative Remedy –Against Importation of infringing copies:
The Act provides for an effective administrative remedy to prevent importation
into India of copies of a copyright work made outside India, which if made in
India, would infringe the copyright in the work.
Section 53 of the Copyright Act empowers the Registrar of Copyright to make an
order prohibiting the importation into India of such copies on the application of
the owner of the copyright in any work, or his duly authorized agent, after
making such enquiry as he deems fit. The Registrar’s order prohibiting such
import brings into play the provisions of the Customs Act as goods the
importation of which is banned in the Act. The only difference is that the copies
confiscated under this provision do not vest in the Government of India but are
to be delivered to the owner of copyright in the work.
Section 64 Copyright Act -power to police to seize infringing copies and plates
for purpose of making infringing copies of the work
Possession of plates to make infringing copies-bailable offenceimprisonment upto 2 years and fine (Section 65)
© Seth Associates, 2007 All Rights Reserved
Enforcement of Copyright
Kind of Infringement

Copy in a work will be considered infringed- 
1. when any person, without a licence granted
by the owner of the copyright, or the
Registrar of Copyrights, or in contravention
of the conditions of a licence so granted, or
of any condition imposed by a competent
authorityi.
does anything, the exclusive right
to do which is by this Act
conferred upon the owner of the 
copyright, or
ii.
permits for profit any place to be
used for the communication of the
work
to the public where such
communication
constitutes
an
infringement of the copyright in the
work, unless he was not aware
and
had
no
reasonable
ground
for
beleiveing that such communication
to the public would
be
an
infringement of the
copyright; or
Relief
Civil Remedies:
 Injunction
 Damages
 Account of profit
 Delivery of infringing copies
 Damages for conversion
Criminal Remedies:
 Imprisonment of the accused or
imposition of fine or both
 Seizure of infringing copies.
© Seth Associates, 2007 All Rights Reserved
Copyright Infringement (Contd.)
Kind of Infringement
2. when any personi.
makes for sale or hire, or
sells or lets for hire, or
by
way of trade displays or offers for
sale or hire, or
ii.
distributes either for
the
purpose of trade or
to
such an extent as
to
affect
prejudicially
the
owner of the copyright, or
iii. by way of trade exhibits in
public, or
iv. Imports into India, any
infringing copies of the
work.
Relief
Administrative remedies:
 Administrative
remedies
consist
of
moving
the
Registrar of Copyrights to
ban
the
import
of
infringement is by way of
such importation and the
delivery of the confiscated
infringing copies to the owner
of the copyright and seeking
the delivery.
© Seth Associates, 2007 All Rights Reserved
Legal remedies for infringement
of Patent
 Indian Patent Act-Section 108
 Injunction
 Damages or account of profits
 Infringing goods and materials be
destroyed.
 Suit be filed in district court or high court
having original civil jurisdiction
© Seth Associates, 2007 All Rights Reserved
Patent Infringement
Kind of Infringement





Where any person threats any
other person with proceedings
for infringement of a patent.
The colorable imitation of an
invention.
Immaterial variations in the
invention.
Mechanical equivalents.
Taking essential features of the
invention.
Relief



Section 106. Court has the power to grant following
relief in cases of groundless threats of infringement
proceedings:
 A declaration to the effect that the threats are
unjustifiable.
 An injunction against the continuance of the
threats and
 Such damages, if any, as he has sustained
thereby.
Section 108-The relief which a court may grant in
any suit for infringement includes an injunction and at
the option of the plaintiff, either damages or an
account of profits.
In brief, the relief which may be awarded in a suit for
infringement are Interlocutory/interim injunction.
 Damages or account of profits.
 Permanent injunction.
© Seth Associates, 2007 All Rights Reserved
Design Infringement
Kind of Infringement
 Sec 22- lays down that the following
acts amount to piracy To publish or to have it published or
expose for sale any article of the
class in question on which either
the design or any fraudulent or
obvious imitation has been applied.
 To either apply or cause to apply
the design that is registered to any
class of goods covered by the
registration, the design or any
imitation of it.
 To import for the purpose of sale
any article belonging to the class in
which the design has been
registered and to which the design
or a fraudulent or obvious imitation
thereof has been applied.
Relief
The judicial remedy for infringement
of
a
registered
design
recommended in the Act is damages
alongwith an injunction. Section
22(2) stipulates remedy in the form
of payment of a certain sum of
money by the person who pirates a
registered design. A suit in the
appropriate manner for seeking the
relief in the form of an injunction is
also recommended.
© Seth Associates, 2007 All Rights Reserved
The Semiconductor Integrated Circuits
Layout-Design Act, 2001 - Infringement
Kind of Infringement
 According to Section 18, a person who does any act of reproducing, whether by
incorporating
in
a
semiconductor
integrated circuit or otherwise, a
registered layout-design in its entirety or
any part thereof, except such act of
reproducing any part thereof which is not
original.
 does any act of importing or selling or
otherwise distributing for commercial
purposes a registered layout-design or a
semiconductor
integrated
circuit
incorporating such registered layoutdesign or an article incorporating such a
semiconductor
integrated
circuit
containing such registered layout-design
for the use of which such person is not
entitled under this Act.
Relief
Any person who infringes the
right of registered proprietor shall
be punishable with imprisonment
for a term which may be
extended to three years, or with
fine which shall not be less than
fifty thousand rupees but which
may extend to ten lakh rupees,
or with both under section 56 of
the Act.
© Seth Associates, 2007 All Rights Reserved
Expounding copyrights challenges
in digital age
 The Internet makes it possible to distribute any kind of digital
information, from software to books, music, and video, instantly and at
virtually no cost. The software industry has struggled with piracy since
the advent of the personal computer, but as recent controversy over
file-sharing systems such as Napster and Gnutella ,Aimster. ( ,
demonstrates, piracy is now a serious issue for any individual or
business that wants to be compensated for the works they create. And
since the Internet knows no borders, piracy is now a serious global
problem.
 Strong legislation such as the Digital Millennium Copyright Act
(DMCA), cooperation between nations to ensure strong enforcement of
international copyright laws, innovative collaboration between content
producers and the technology industry, and standards developed by
organizations like the Secure Digital Music Initiative (SDMI) that can
prevent or deter piracy have already made an impact on addressing
this problem. But as more and more digital media becomes easy to
distribute over the Internet, the government and private sector must
work together to find appropriate ways to protect the rights of
information consumers and producers around the world.
© Seth Associates, 2007 All Rights Reserved
Types of Copyright Infringement
Direct Infringement
It is wholesale reproduction and distribution of
Copyrighted works
Contributory Infringement
It occurs when someone knowingly encourages
infringing activity
Vicarious Infringement
When for financial benefit the operator in spite
of his ability to control and check infringements
deliberately restrains from checking the users
from committing such acts-playboy enterprises inc vs
webbworld,inc 991 F Supp 543(N.DTex.1997)
© Seth Associates, 2007 All Rights Reserved
E-Copyright Protection and digital
music
 The MP3 revolution
 The Napster story
 P2P file sharing technology facilitates 1-store MP3 music files on individual




computer hard drives available for copying by other Napster users 2-search
for MP3 music files stored on other users computers and 3-transfer exact
copies of the contents of other users MP3 files from one computer to
another via the Internet.
Napster free of charge music share software ,napster internet site. It
provided technical support for indexing and searching of MP3 files also.complaint for being contributory and vicarious copyright infringer. Napster
used fair use defence.
Court held Napster is guilty of contributory and vicarious copyright
infringement
DMCA 1998-Section 512-safe harbour doctrine for ISPs-ISP to prove that it
lacks requisite knowledge of infringing activity. (analogous to Section 79 IT
Act,2000)
New avtaars-Gneutella and kazaa.
© Seth Associates, 2007 All Rights Reserved
Digital downloads and
reproduction & display rights
 Kelly v Arriba Soft Corp 280 F3d 934(9th
Cir2002)
 Plaintiff leslie kelly had copyrighted many images
of American west. Some were located on her
website. Defendant produced thumbnail pictures
in its search engine’s search results and by
clicking on them, larger version could be viewed
within Arriba’s page.
 Circuit court held, use of thumbnails is fair use but
display of larger image within its webpages is
violation of author’s exclusive right to publicly
display his works.
© Seth Associates, 2007 All Rights Reserved
Digital downloads and distribution
rights
 Marobie –Fl.inc v National Association of Fire Equip
Distributors 983 F Suppl1167(NDIll)
 Court held that the act of placing unauthorised copies of
Plaintiff’s electronic clip art files on the defendant’s
webpage constitutes an infringement of distribution rights
of the plaintiff as plaintiff’s files became available for
downloading by internet users.
 Another case in point-Playboy enterprises ,inc v Frena
839 F Supp 1552(M.D.Fla1993)
© Seth Associates, 2007 All Rights Reserved
Understanding the role of legal due
diligence in digital rights management
and asset protection
 Legal vetting of web content -a must
 Cross jurisdictional impact. Ref: Section 75 of IT Act, 2000
 Avoidance of any possible unintended violation of rightful owner’s




trademarks, copyrights ,patents.
Infringement of IPR in online mode –same legal principles apply as in
offline mode-IPR statutes govern e-space as well –legal position
most countries including India
Indian IT Act,2000 , amended provisions of IPC ( electronic record
definition- Section 29A) , Section 65B-admissibility of electronic
records of Indian Evidence Act,1872 & Indian courts have recognized
equal application of IPR protection principles in online medium.
Electronic document legally recognized equal to written document in
offline mode.
Domain names equated with Trademarks if indicative of source of
origin of goods and services
© Seth Associates, 2007 All Rights Reserved
PRECEDENT ON LINKING
Ticketmaster vs. Microsoft
Facts: In April, 1997, Ticketmaster filed a complaint in federal court in the
Central District of California alleging that "Microsoft's actions diluted their
trademarks; created a false, deceptive and misleading representation that
there was a formal relationship between the two of them; constituted unfair
competition and business practices; and constituted a commercial misuse of
their trademarks.“
Microsoft at that time operated Sidewalk, a recreational and cultural guide
Web site. What Microsoft was doing was simple -- if a Sidewalk user wanted
to buy a ticket to a particular event mentioned on the site, Sidewalk offered
them a link to Ticketmaster's ticket purchase page. They were actually
promoting Ticketmaster sales and sending them customers. A month after
the suit was filed; Ticketmaster blocked Sidewalk users from their site. Links
set up from Sidewalk then took users to a Ticketmaster page that read,
"This is an unauthorized link and a dead end for Sidewalk.“
Status: In February of 1999, the 2-year-old lawsuit was settled out of court.
"Details of the settlement were not made public, but the deep links were
removed, directing Sidewalk users to the Ticket master homepage.
© Seth Associates, 2007 All Rights Reserved
Example: Indian Case on Passing off
/trademark infringement
in e- world
Yahoo! Inc. vs Akash Arora(1999)
FACTS: The defendant installed a website
Yahooindia.com nearly identical to plaintiff’s renowned
yahoo.com and provided services similar to those of
the plaintiff.
DECISION: The Delhi High Court granted an
injunction restraining defendant from using yahoo
either as a part of his domain name or as a trade
mark .It held that trade mark law applies with equal
force on the internet as it does in the physical world.
© Seth Associates, 2007 All Rights Reserved
Indian case on e-passing off
Example 2:
In the case of Rediff Communication Limited
v. Cyberbooth and Ramesh Nahata of
Mumbai (1999), the Bombay High Court
supported an action of passing off when the
Defendants used the term ‘RADIFF’ (similar to
the name ‘REDIFF’ of the Plaintiff) to carry on
business on the Internet.
© Seth Associates, 2007 All Rights Reserved
Similar legal position world
over…Universal vs. Movie-List
Facts: Movie-List , a collection of links to over 900 movie trailers, was deep linking
to trailers within the Universal Web site. Originally, they were actually running the
trailers, which were the property of Universal Studios, on the Movie-List server. Not
only were they deep linking to trailers, Movie-List was also selling CD-ROMS with
trailers they had downloaded. Universal then sent them a cease and desist, stating,
"You are not permitted to link to other sites that contain our copyrighted material
without our authorization. Accordingly, you must remove all images from our films as
well as links to other sites that have our servers.“
Status: All trailers have been removed from the Movie-List server, and the owner no
longer sells the CD-ROMS. He has removed all of the deep linking to Universal
pages.
Case law on framing- Washington post Co v Total news inc97Civ1190(SDNY)
© Seth Associates, 2007 All Rights Reserved
CASES ON FRAMING
The Washington Post Company et al.
vs.
Total News, Inc.
Facts: As a one-stop news site, TotalNews.com linked to many news sites, but
kept a frame, or border around them, which the news sites argued made it look
like the content was from TotalNews.com, changed the ad layout on the page,
and kept totalnews.com as the address for book marking purposes.
In the complaint the news companies claimed that TotalNews misappropriated
their trademarked and copyrighted material, thereby engaging in a host of
crimes including unfair competition, federal trademark dilution, and trademark
and copyright infringement. The news organizations said that their websites,
as they appeared within the Totalnews frames, were substantially altered from
the form in which they intended them to appear to users and that it was done
solely for Totalnews' profit.
TotalNews argued that the case was in essence about its freedom to link,
which it claimed was a fundamental right on the Internet.
Status: The court never decided the TotalNews case because the parties
settled. Totalnews agreed to remove the frame.
© Seth Associates, 2007 All Rights Reserved
Understanding how the New Companies Bill
2006 interferes with e-governance







The object and reasons of THE COMPANIES (AMENDMENT) BILL, 2006 may be
summarized as follows:
1) Implementing a comprehensive e-Governance system and programme to enable the
operations carried out by the Ministry and its field offices to be performed more efficiently
and effectively through the use of contemporary information technology and computers.
2) Implementing an e-Governance initiative through a project named as “MCA-21” which
provides the public, corporate entities and others an easy and secure online access to
the corporate information, including filing of documents and public access to the
information required to be in the public domain under the statute, at any time and from
anywhere.
3) Inserted new sections 610B, 610C, 610D and 610E in the Companies Act, 1956 so as
to make provision for electronic filing system and for payment of fees through electronic
form under the Companies Act which are essential for the successful implementation of
the MCA-21 Project.
As passed by the Rajya Sabha on 21/3/2006 and the Lok Sabha on 15/5/2006)
Project MCA 21 has been successfully implemented.
© Seth Associates, 2007 All Rights Reserved
Thank You!
SETH ASSOCIATES
ADVOCATES AND LEGAL CONSULTANTS
New Delhi Law Office:
C-1/16, Daryaganj, New Delhi-110002, India
Tel:+91 (11) 65352272, +91 9868119137
Corporate Law Office:
B-10, Sector 40, NOIDA-201301, N.C.R ,India
Tel: +91 (120) 4352846, +91 9810155766
Fax: +91 (120) 4331304
E-mail: [email protected]
© Seth Associates, 2007 All Rights Reserved