IPR Assignment
Student’s Name: ADARSH MEHER
Enrolment No: 18FLICDDN01063
Batch Name & Year: BBA-LL.B. (Hons.)
Subject- IPR- Assignment-2
Submitted by Submitted to
ADARSH MEHER Samriddhi Singh
BBA-LL.B.(Hons) 2018-2023 Assistant Professor
SECTION B
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Explain modicum of creativity and sweat of the brow with help of
relevant case laws.
Originality is the basic yardstick used by the copyright regimes in the world to
evaluate the availability copyright protection to a particular work. The threshold of
originality varies from jurisdictions. Section 13(1) of the Indian Copyright Act
1957[1] states that copyright subsists in “original literary, dramatic, musical and
artistic works.” However, the Act fails to give any definition or test to determine
originality of a work. This leaves the court with the duty to decide the amount
originality required for a work to claim copyright protection.
The copyright law does not mean to apply the word ‘originality’ in its literal sense. In
case of any art, or any fruit of human creativity, inevitably there must be some influence
from the works of the predecessors. Copyright law only requires existence of some
creative efforts by the creator. .
However, the degree of creativity expected to make a work original is still a grey area.
There is no clarity as to when will the work be considered as original in the eyes of law.
Especially in case of derivative works, it is very unclear as to when a derivative work can
be identified as a separate work of art and claim legal protection of copyright.
Since there is no definite, single and unified concept of originality, there exist different
doctrines used in different jurisdictions of law, which are analysed and compared in the
following paragraphs.
SWEAT OF BROW DOCTRINE
According to this doctrine, an author gains rights through simple diligence during the
creation of a work. Substantial creativity or “originality” is not required. The creator is
entitled to such rights on account of efforts and expense put in by him in the creation of
such a work. For Example, the creator of a telephone directory or a database must have a
copyright over the product not because such a compilation of data showcases any
creativity, or the author has expressed anything original, but merely because of the effort,
time and money invested by the creator to collect and organise all the data in a specific
manner. But such a compilation must be the work of the author himself and must not be
copied from another source.[2]
MODICUM OF CREATIVITY DOCTRINE
The concept of “originality” has undergone a paradigm shift from the “sweat of the brow”
doctrine to the “modicum of creativity” standard put forth in Feist Publication Inc. v.
Rural Telephone Service[3] by the United States Supreme Court. The doctrine of “sweat
of the brow” provides copyright protection on basis of the labour, skill and investment of
capital put in by the creator instead of the originality. InFeist’s case[4], the US Supreme
Court totally negated this doctrine and held that in order to be original a work must not
only have been the product of independent creation, but it must also exhibit a “modicum
of creativity”. The Supreme Court prompted ‘creative originality’ and laid down the new
test to protect the creation on basis of the minimal creativity. This doctrine stipulates that
originality subsists in a work where a sufficient amount of intellectual creativity and
judgment has gone into the creation of that work. The standard of creativity need not be
high but a minimum level of creativity should be there for copyright protection.
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Now, let’s understand the position in different countries with respect to doctrines adopted
by the courts in deciding originality of the work.
POSITION IN ENGLISH LAW (UK)
University of London Press v. University Tutorial Press[5] is a very important case where
the test of “originality” was explained by the Chancery Division of England which is also
commonly cited as an archetypal “sweat of the brow”. The Facts of the case follows-
A resolution by the University of London stated that the copyright of all the examination
papers set by the examiners employed by the University vested with the University.
Examiners were appointed for the purpose of setting the examination papers for
matriculation examinations. They were free, subject to a syllabus and having regard to the
knowledge expected from students, to choose their own questions. The University entered
into an agreement with the University of London Press Limited to assign the copyright
and all rights to publish the matriculation examination papers to the later for a
consideration. Later, the University Tutorial Press Limited issued a publication which
included sixteen out of forty-two matriculation papers. The papers were not copied from
the publication of the University of London Press Limited, but were taken from copies of
the examination papers supplied by students. In addition to the question papers, the
publication also contained answers to the questions in some of the papers and also made
some criticism on the way the papers were set. The plaintiff, University of London Press,
sued University Tutorial Press for infringement of copyright.
The plaintiff contended that the term “literary work” as used in the Act has a very broad
meaning covering work which are expressed in print or writing, irrespective of whether
the quality or style is high and includes maps, charts, plans, tables, and compilations.
Therefore the examination papers will also fall under the category of “literary work”. The
defendant contended that questions were of common type and were not unique or distinct
enough to claim copyright.
The Court held that the Copyright Act does not require that expression be in an original or
novel form. It does, however, require that the work not be copied from another work. It
must originate from the author. The question papers are original within the meaning of
copyright laws as they were originated from the authors . The court held that merely
because similar questions have been asked by other examiners, the plaintiff shall not be
denied copyright.
This doctrine “sweat of the brow” was used in Walter v. Lane[6] and later in the case
of Ladbroke (Football) Ltd. v. William Hill (Football) Ltd[7] where the Court said that it
is immaterial whether work is wise or foolish, accurate or inaccurate, or whether it has or
does not any literary merit. The case reiterated the requirement of ‘labour, skill and
judgement’ and the requirement of originality is limited to the extent that the work
originated from the author.[8] This doctrine is also followed in various other jurisdictions
including Canada, Australia and India.
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POSITION IN THE UNITED STATES OF AMERICA
USA has the oldest and the most developed Copyright laws in the world. The courts have
given importance to both the creative and subjective contribution of the authors since the
late 17th century.[9] It also gives emphasis to literary and artistic merits of the work.[10]
In the case of Bleistein v. Donaldson Lithographing Co.[11] decided in 1903, the United
States Supreme Court revisited the questions of originality with respect to copyright and
rejected the notion that originality should be decided with reference to the artistic merits
of the work. The court did not consider the novelty or creativity of the work, but rather
the presence or absence of the putative artist’s personal expression. If the item exhibits a
“distinguishable variation” from another work, the law presumes that such a variation
bears the imprint of the author’s person, thereby entitling the work to copyright
protection.[12]This Bleistein test was later applied in various other cases especially the
ones relating to copyright of fine arts.[13]
Feist Publications[14] is alandmark judgment in which the US Supreme Court insisted
for a minimum amount of creativity as a prerequisite to claim copyright protections. The
facts of the case are as follows. Rural Telephone Service Company was public utility
providing telephone services. Under some local regulation, all telephone companies had
to issue annually an updated telephone directory. Rural Telephone Service published a
telephone directory using this data. Feist Publications Inc. was a publishing company
specialized in area-wide telephone directories. Feist’s directories covered a wide range of
geographical area covering 11 different telephone service areas. Both the companies
distribute the directories free of cost to its subscribers and earn revenue on the
advertisements in yellow pages. Both competed vigorously for yellow pages advertising.
Feist not being a telephone company, lacked independent access to any subscriber
information. To obtain the listings for its directory, Feist approached each of the 11
telephone companies operating in the area and offered to pay for the right to use its white
pages listings. Rural refused to license its listings to Feist. Thus Feist used Rural’s listings
without their consent. Feist then hired personnel to investigate and verify the data.
Therefore Feist’s listing had more information that Rural’s. But some of these listings
were identical to that of Rural. Rural telephone Service sued Feist Publications for
copyright infringement.
The major question of law was whether a compilation like that of a telephone directory is
protected under the Copyright law. The court held that the facts like names, addresses etc
are not copyrightable, but compilations of facts are copyrightable. This is majorly owing
to the unique way of expression by way of arrangement and if it possesses at least some
minimal degree of creativity, it will be copyrightable. The Court held that Rural’s
directory displayed a lack of requisite standards for copyright protection as it was just a
compilation of data without any minimum creativity, which was a requirement for
copyright protection. Hence, Rural’s case was dismissed.. In Key Publications, Inc. v.
Chinatown Today Publishing Enterprises Inc[15], the US Supreme Court defined
creativity negatively by describing how a compiler’s work might fail to satisfy the
requirement; selections and arrangements that are mechanical, routine, common place,
typical, garden variety, obvious, inevitable, time-honoured, age-old, or dictated by law
will fail to pass muster[16] However, the opinion does not make clear whether originality
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is to be found by looking at the work or by evaluating the mental processes that went into
producing it.
In this case, the US Supreme Court laid down three requirements for a compilation to
qualify for copyright protection:
1. The collection and assembly of pre-existing data;
2. Selection, coordination or arrangement of the data; and
3. The resulting work that comes into being is original, by virtue of the selection,
coordination or arrangement of the data contained in the work.
POSITION IN INDIA
India strongly followed the doctrine of ‘sweat of the brow’ for a considerably long time.
The Supreme Court of India, following the approach of English Courts, observed that
copyright law does not prevent a person from taking what is useful from an original work
with additions and improvements.[17] The Court has held neither original thought nor
original research are necessary for claiming copyright and even compilations such as
dictionaries, gazettes, maps, arithmetic, almanacs, encyclopaedias etc. are capable of
having copyright.[18] In the case of Burlington Home Shopping v Rajnish Chibber [19],
were the facts were similar to that of Feist’s case [20], the court following the doctrine
held that a compilation is copyrightable.
However, the standard of ‘originality’ followed in India is not as low as the standard
followed in England. The Bombay High Court in its judgement regarding copyright of a
news article stated that there is no copyright for happenings and events which could be
news stories and a reporter cannot claim any copyright over such events because he/she
reported it first.[21]The ideas, information, natural phenomena and events on which an
author spends his/her skill, labour, capital, judgment and literary talents are common
property and are not the subject of copyright. Hence, there is no copyright in news or
information per se. However, copyright may be obtained for the form in which these are
expressed because of the skill and labour that goes into the writing of stories or features
and in the selection and arrangement of the material.[22]
The most important Indian Case on this subject is Eastern Book Company v. D.B.
Modak[23], where the Supreme Court discarded the ‘Sweat of the Brow’ doctrine and
shifted to a ‘Modicum of creativity’approach as followed in the US. The dispute is
relating to copyrightability of judgements. The facts of the case is that SCC, the Supreme
Court Case reporter, was aggrieved by other parties infringing their copyright and
launching software containing the judgements edited by SCC along with other additions
made by the editors of SCC like cross references, head notes, the short notes comprising
of lead words and the long note which comprises of a brief description of the facts and
relevant extract from the judgments of the court and standardisation and formatting of
text, etc. The notion of “flavour of minimum requirement of creativity” was
introduced in this case. It was held that to establish copyright, the creativity standard
applied is not that something must be novel or non-obvious, but some amount of
creativity in the work to claim a copyright is required. The Court held that these inputs
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made by the editors of SCC can be given copyright protection because such tasks require
the use of legal knowledge, skill and judgement of the editor. Thus, this exercise and
creation thereof has a flavour of minimum amount of creativity and enjoy the copyright
protection.
Accordingly, the Court granted copyright protection to the additions and contributions
made by the editors of SCC. At the same the Court also held that the orders and
judgments of the Courts are in public domain and everybody has a right to use and
publish them and therefore no copyright can be claimed on the same.
In subsequent cases, the Indian courts followed this approach and completely rejected the
plea to protect mere works of compilation under copyright.[24] Copyright is conferred on
those works which has originated from author and which is not merely a copy of the
original work. This does not push the standard of originality expected to a considerably
high level, but brings in a subtle balance between ensuring reward for the efforts of an
author while also maintaining a reasonable standard in the materials protected under law.
CONCLUSION
The primary objective of copyright is not to reward the labour of authors but rather to
protect expression while encouraging others to build freely upon the ideas and
information conveyed in the expression. But the standard of originality cannot be placed
at a high threshold since majority of the work would fall out of the preview of copyright,
at the same time it should not be so low that the degree of protection of work conferred by
law degrades to a position where any derivative work with just trivial modifications from
that of the original work will be brought under the purview of protection.
This balance is very crucial and is to some extend achieved by the US jurisprudence,
which follows the criterion of ‘Modicum of Creativity’ which has a slightly higher
expectation of originality from the authors as compare to the jurisprudence in UK, which
follows the doctrine of ‘Sweat of the Brow’.
The jurisprudence relating to ‘Originality’ of copyright in India is developing in the right
direction. Since the Modak Case[25], we have deviated from the UK jurisprudence and
are coining our own checks and balances so that the literature and other works, with a
degree of originality,are properly brought under copyright protection while denying such
protection to mere compilation without any degree of creativity from such privileges.
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REFERENCES:
[1] Sec 13(1), Indian Copyright Act, 1957- Works in which copyright subsists.- Subject to
the provisions of this section and the other provisions of this Act, copyright shall subsist
throughout India in the following classes of works, that is to say –
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) sound recordings;
[2] Hailshree Saksena, DOCTRINE OF “SWEAT OF THE
BROW” http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1398303)
[3] 499 U.S. 340, 342 (1991)
[4] Id.
[5] England, Chancery Division. [1916] 2 Ch. 601
[6] [1900] AC 539
[7] [1964] 1 WLR 273
[8] Alex Lyon, A European Invasion: The effect of Infopaq on the ‘labour, skill and
judgement’ criterion of originality within UK copyright law (available
at http://www.sjol.co.uk/issue-6/a-european-invasion-the-effect-of-infopaq-on-the-labour-
skill-and-judgement-criterion-of-originality-within-uk-copyright-law)
[9] Abraham Drassinower, Sweat of the Brow, Creativity, and Authorship:On Originality in
Canadian Copyright Law. http://www.uoltj.ca/articles/vol1.1-2/2003-2004.1.1-
2.uoltj.Drassinower.105-123.pdf
[10] Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)
[11]188 U.S. 239
[12] Supra Note 1
[13] Alfred Bell & Co. v. Catalda Fine Arts, Inc.,191 F.2d 99 (2d Cir. 1951)
[14] Supra Note 3
[15] 945 F.2d 509, 511 (2d Cir. 1991)
[16] 945 F.2d 509, 511 (2d Cir. 1991)
[17] Kartar Singh Giani v. Ladha Singh, Air 1934 Lahore 777.
[18] Mishra Bandhu v. Shivratan,AIR 1970 MP 261
[19] 1995 PTC (15) 278
[20] Feist Publications v. Rural Telephone Service, 499 U.S. 340, 342 (1991)
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[21] Indian Express Newspaper (Bombay) Pvt Ltd v Jagmohan, ( AIR 1985 Bom 229); RG
Anand v Delux Films and Others, (AIR 1978 SC 1614)
[22] Indian Express Newspaper (Bombay) Pvt Ltd v Jagmohan, ( AIR 1985 Bom 229)
[23] 2002 PTC 641
[24] Dr.Reckeweg and Co. Gmbh. and Anr.Vs.Adven Biotech Pvt. Ltd, MANU/DE/0961/2008
[25] Eastern Book Company v. D.B. Modak, 2002 PTC 641
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Steps for registration of Trademark in India.
Trademark is a symbol, word, phrase, logo, or combination of these that legally
distinguishes one entity’s product from any others. Any infringement on trademark is
illegal and therefore grounds for the entity owning the trademark to sue the infringing
party. Trademark registration, however, is a long process involving a host of steps. In this
article, we have enumerated the 6 steps of trademark registration in India:
Trademark Search
This is conducted by a professional from the trademark database. This search will reveal all
information about an identical trademark that has already been filed with the Trademark
authorities. A trademark search report is formulated on the basis of this.
Trademark Filing
After the formulation of the search report, application for registration will be made. The
application shall be in the manner as prescribed by the govt and has to be filed alongwith
requisite Govt fees. This application can be filed online. An application shall contain the
following mandatory details:
Logo/mark/tagline or the mark
Name & Address of owner (individual/company/firm)
Classification of Trademark class
Date since which the logo/mark/tagline is used
Description of goods/services
Once the application is filed, the registry will issue an official receipt with the filing date and
number allotted to the application. Although the official process of trademark registration in
India ranges from 18-24 months, priority of application is allotted as per this
acknowledgement number. Further, the applicant can start using the TM symbol on receiving
this application number.
Vienna Code Classification
The Vienna Codification was established by the Vienna Agreement (1973). It is an
international classification of figurative elements of marks. Vienna code classification is the
next stage after filing of the application. In this stage, Registrar will apply the Vienna
classification to the trademark based on the figurative elements of the mark. You can
understand that your application is in this stage when the status of your application shows
“Sent for Vienna Codification”.
Examination
This is the next stage after Vienna Codification. Upon completion of Vienna Codification, the
application will reach the desk of a designated Trademark Officer (TO). The TO has the right
to either accept the application and send it over to the next stage or raise objections. The TO
reviews the application and issues an examination report for this purpose.
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If the application is objected to by the TO, the applicant may appear before him and present
his plea. If the TO is satisfied by the representation, he will approve the application and send
over to the next stage. I f he is not satisfied, he will not pass the application. The applicant
further has a right to appeal against this objection with the Intellectual Property Appellate
Board.
Journal Publication
This is the next stage after the application is passed by the TO, wherein the proposed
trademark is published in the Trademark Journal. The Trademark journal is published every
week. Once the mark is published in the Journal, public has an opportunity to object to it if
they have substantial grounds. The third party has to file the trademark opposition within 3
months (extendable by 1 month) from the date of publication of the trademark.
If the mark is objected to, a hearing is held by the Trademark Hearing Officer. In this hearing
both the parties are given a fair representation to present their cases. Upon hearing both
parties and based on evidences, the hearing officer will give his judgement. Appeal can be
made against this decision with the Intellectual Property Appellate Board.
Trademark Registration
If there are no oppositions within 4 months from the date of advertisement in the Trade Marks
Journal, then the trademark registration certificate will be issued. A registered trademark is
valid for a period of 10 years from the date of application. The registration can then be
renewed indefinitely as long as the renewal fees are paid every 10 years.
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