Module 4

Copyrights and Related rights

Trademarks
 Part A: Copyrights and related rights ©

•Copyrights are legal rights granted to creators of original works, primarily in

literature and computer software.
•Related rights cover works in dramatics, sound recordings, film, paintings,
architecture, and similar fields.
Legal Framework:
•Governed by the Copyright Act, 1957 in India.
•The Act provides rights of reproduction, public communication, adaptation,
and translation of the work.
Understanding Key Terms:
•Author: The individual creating the work, such as a writer, programmer,
composer, producer, or photographer.
•Work: Refers to creative output in fields like literature, drama, music, art,
cinema, and sound recordings.
Classes of copyrights
➢Literature:
Includes books, essays, research articles, oral speeches, lectures, compilations,
computer programs, software, and databases.
➢Dramatics:
Covers screenplays and dramas.
➢Sound Recordings:
Encompasses recordings of sounds in any medium, such as phonograms and
CD-ROMs
➢Artistic:
Includes drawings, paintings, logos, maps, charts, photographs, architectural
works, engravings, and craftsmanship.
➢Musical:
Covers musical notations, excluding words or actions to be sung or performed
with the music. Written form is not required for copyright protection.
➢Cinematograph Films:
Visual recordings made by any process that includes sound recordings, such as
motion pictures, TV programs, visual recordings, and sound recordings.
Criteria for Copyright
➢Physical Form Requirement:
The work must exist in a physical or tangible form, even if temporarily.
➢Forms of Expression:
•Any form of expression that can be viewed or listened to qualifies for copyright protection, including
brief notes.
➢Originality:
•The work must be original, created independently by the author without duplication, known as an
Original Work of Authorship (OWA).
➢Similarity to Existing Works:
The work may resemble existing works but must not be identical.
➢Quality and Merit Irrelevant:
Copyright does not consider the quality, quantity, or aesthetic merit of the work.
➢Creative Effort Requirement:
The work must involve at least minimal creative effort, which is subjectively assessed by the Copyright
Registrar.
➢Examples of Non-Eligible Works:
Simple changes like resizing a book or arranging data alphabetically (e.g., telephone numbers) do not
meet the creativity requirement and are not copyrightable.
Ownership of Copyright
• Original Owner: The creator of the work is the first (original) copyright
owner.
• Employment Context: If the author is an employee contracted by a
proprietor (e.g., a company or organization), the proprietor owns the
copyright.
• Government Ownership: For government works, the government is the
primary copyright owner unless stated otherwise.
• Speeches: The speaker is the first copyright owner of their speech.
• Permission for Use: To use copyrighted material, permission must be
obtained from the legal copyright owner, which could be the original author,
legal heir, or publisher.
• Details Required in Permission Request: Information to include: title,
author/editor, edition, specific material, number of copies, purpose (e.g.,
educational, research), distribution method (e.g., hard copy, online), and if
the material will be sold.
Copyright of the author
➢Legal Protection: Section 14 of the Copyright Act, 1957 protects the
copyrights of the author, preventing others from using or publishing the work
without consent.
➢Types of Rights: Authors have two types of rights: Economic Rights
(Proprietary Rights) and Moral Rights (Personal Rights).
➢Economic Rights: These rights focus on financial benefits from the
copyrighted work. The owner can:
• Authorize or prohibit reproduction in any form (e.g., print or sound
recordings).
• Control the distribution of copies.
• Authorize public performance of the work.
• Approve broadcasting or communication of the work to the public.
• Control translation into other languages.
• Approve adaptations (e.g., turning a novel into a screenplay).
➢Moral Rights:
• Right of Paternity: The author retains the right to claim authorship,
even if the copyright is transferred to another party (e.g., a publisher).
• Right of Integrity: The author has the right to prevent alterations or
misuse of the work that could misrepresent it or damage the author's
reputation.
➢Multiple Rights Holders:
A single work can have multiple rights holders (e.g., in a musical sound
recording, there may be lyricists, composers, singers, musicians, and
sound recorders).
Copyright Infringements
As per the Copyrights Acts, 1957, the following acts are
regarded as an infringement of Copyrights:
• Making copies for sale or hire or selling or letting them for hire
• without permission.
• Permitting any place for the performance of owned work (in
• public) where such performance constitutes an infringement of
• Copyright.
• Distributing infringing copies for trade or to such an extent to
• affect the interest of the owner of the Copyright prejudicially.
• Public exhibition of infringing copies for trade purposes.
• Importation of infringing copies.
• Translating a work without the permission of the owner.
Liability of Owner of an Auditorium/Hall
the liability of the owner of an auditorium/hall regarding copyright
infringement:
Liability for Unauthorized Use:
The owner of an auditorium or hall can face legal consequences if they
knowingly allow their premises to be used for the communication of illegal
copyrighted material (e.g., songs, music, dramas) to the public.
Profit-Related Offense:
If a person permits a venue to be used for profit to communicate copyrighted
work to the public, they may be liable for copyright infringement.
Lack of Awareness Defense:
The owner may defend themselves against liability if they can prove they were
unaware and had no reasonable grounds to believe that the public
communication would infringe copyright.
Copyright Infringement as a Criminal Offense
Definition: Knowingly infringing copyright qualifies as a criminal offense under
Section 63 of the Copyright Act, 1957.
Punishments:
• First Offense:
• Imprisonment for six months.
• Minimum fine of ₹50,000.
• Second and Subsequent Offenses:
• Imprisonment for one year.
• Minimum fine of ₹1,00,000.
Dedicated IP Division: There is a specialized Intellectual Property (IP) division
that handles copyright cases.
Copyright Board: The Central Government established a Copyright Board in
1958 to adjudicate specific claims regarding copyright.
 Fair Use Doctrine
Copyrighted material cannot be used without the legal owner's consent.
However, limited uses for teaching and research are legally permitted under the Fair Use Doctrine.
Character of Use: Must be educational, non-profit, and personal.
Nature of the Work: Preferably factual rather than imaginative.
Portion Used: Small portions may be used without permission (though this remains a debated area).
Effect on Market Value: Use that doesn’t harm the author’s economic and moral rights is more likely
to be excused.
Examples of Fair Use:
• Personal study or research.
• Quoting within a work.
• Reporting current events in media (newspapers, radio, TV).
• Teachers or scientific researchers reproducing the work.
• Government official duties, such as judicial proceedings or legislative reports.
• Certified copies made or provided by law.
• Limited reproduction (e.g., making three or fewer copies of a book).
• Bonafide religious ceremonies, including marriages.
Copyrights and Internet
In the digital age, Copyright law has adapted to address the complexities
of internet usage and content distribution. Key considerations:
1. Copyright and Internet Use
➢Online Transmission: Digitized content can be quickly transmitted and
accessed online, which has led to updates in Copyright law to address
issues unique to digital medium.
➢Permission Awareness: Not all online content is freely available. Some
material may be posted without the author’s consent, so users must
ensure that they’re legally permitted to download or use any
copyrighted material.
2. Personal Use and Restrictions:
➢Material posted by the copyright owner online can generally be used by
others for personal purposes but not for commercial gain.
➢Distribution Warning: Copyright owners often add disclaimers, such as:
“This work is protected by Copyright laws and is provided for educational
instruction only. Any infringing use may result in disciplinary or legal action.”
3. Copyright Act on Digital Works:
➢Definition: According to Section 2(o) of the Copyright Act, 1957, "Literary
Work" includes computer programs, tables, and compilations (e.g.,
databases).
➢Registration Requirements: For registering software, Source Code and Object
Code must be submitted as part of the application.
Adhering to these guidelines helps protect creators’ rights and prevents legal
consequences for misuse of copyrighted material on the internet.
 Non-Copyright work
Certain works and types of content fall outside the scope of Copyright
protection, either due to their nature or because they don’t meet the criteria.
Guidelines associated to non-copyrightable works:
1. Ideas, Concepts, and Principles:
• Only the expression of ideas can be copyrighted, not the ideas, concepts, or
principles themselves.
• For instance, historical facts or scientific discoveries are public domain once
discovered, even if it took extensive research to uncover them.
2. Facts and Information:
• Factual content, such as scientific data or historical information, is not
copyrightable. Others may use these facts freely, provided they express them
uniquely.
• Example: The factual details about Buddhism collected for a book are not
protected, though the author’s unique expression or presentation of those
details is.
3. Short Phrases, Titles, and Slogans:
• Titles, short word combinations, slogans, names, methods, or factual
statements are generally ineligible for copyright.
4. Certificates:
•Due to the limited creativity involved, certificates do not qualify for
copyright.
5. Digital Works and Internet Content:
•Digital forms of copyright-protected works retain their protection when
posted online.
•Websites: While an entire website cannot be copyrighted as a whole,
individual components—like code, images, and databases—may each
receive separate copyright protection.
6. Apps and Software:
1. Computer and mobile applications can be copyrighted as self-contained
programs designed for specific tasks and user interaction.
7. Misuse of Online Content:
1. Unauthorized use of someone’s online content—like images, songs, or videos—
constitutes copyright infringement, even if the material is freely accessible
online.
Understanding what content is outside copyright helps creators navigate
what is permissible for use and protects original work from unintended
misuse.
Copyright Registration
In India, it is not mandatory to register a work to claim copyright protection.
Copyright is automatically granted once a work is created in a tangible form.
Registration serves as prima facie evidence in legal matters, such as disputes
over ownership, financial claims, or transfer of rights, and it strengthens an
author's legal standing if issues arise.
Key Points:
• Automatic Protection: Copyright is automatically granted upon the creation
of a work, with no formal application necessary.
• Role of Registration: While it doesn’t confer additional rights, a registered
copyright serves as an entry in the Copyright Register. This can provide
substantial legal benefits, including documented proof of ownership.
• Advised for Legal Assurance: Registration is recommended as it offers better
legal protection in cases of disputes.
The administration of copyright registration in India is governed by the
Copyright Act, 1957 and the Copyright Rules, 2013.
Application Process for Copyright Registration:
• Filing: Applicants submit a filled Form XIV either by post or online
through the e-filing portal (www.copyright.gov.in) to the Copyright
Office in New Delhi.
• Eligibility: Only the author or assignee of the work can file the
application.
• Processing Timeline: Registration typically takes 2-3 months, with a 30-
day mandatory waiting period for objections. If objections are raised,
the Registrar will provide both parties an opportunity to be heard before
making a decision.
• Review and Resolution: Following objection resolution, examiners
review the application. Applicants may respond to any further queries
within a 45-day window.
Copyright Symbol
While not mandatory, including a copyright symbol can strengthen a case in
court if infringement occurs. Here’s what to consider when marking a
copyright:
➢Symbols: Use the symbol © (a circled "C"), the word "Copyright," or the
abbreviation "Copr.“
➢Date of Creation: For compilations or derivative works, specify the year of
the first publication. This date can be omitted for certain artistic or decorative
works, such as sculptures, greeting cards, and toys.
➢Owner’s Name: Include the copyright owner’s full name, a recognizable
abbreviation, or an alternative designation of the owner.
➢Sound Recordings: Use the symbol ℗ (a circled "P") specifically for sound
recordings, following similar guidelines as for literary and artistic works.
This practice can serve as a legal safeguard by establishing a clear notice of
ownership on the work.
 Interesting Copyright cases
1. David vs. Macaques, Indonesia, 2011
• Background:
• In 2011, UK-based photographer David Slater set up his camera on a
tripod in an Indonesian wildlife sanctuary to capture images of
macaques.
• One macaque monkey interacted with the camera, capturing a famous
"selfie" photograph, sparking a unique copyright controversy.
• Copyright Dispute:
• Theoretically, since the monkey physically took the photograph, it
could be argued that the macaque holds the copyright.
• Practically, David Slater claimed copyright, as he owned the equipment
and set up the scenario.
• Legal Proceedings:
• Parties Involved: The case saw involvement from People for the Ethical
Treatment of Animals (PETA), which argued that the monkey should
benefit from the photograph.
• Judicial Review: The dispute escalated to judicial quarters to determine
copyright ownership.
•Settlement:
•Outcome: David Slater retains copyright over the image due to his
"substantial contribution" in setting up the shot.
•Royalty Agreement: Slater agreed to pay 25% of royalties to the wildlife
sanctuary where the macaque lives, acknowledging the sanctuary’s role in
the creation of the image.
•Source: Detailed information on the case and outcome can be found at
WIPO: WIPO Magazine, 2018.
 Interesting Copyright cases
1. David Vs. Macaques, Indonesia, 2011
Background:
• In 2011, UK-based photographer David Slater set up his camera on a tripod in an Indonesian wildlife sanctuary to
capture images of macaques.
• One macaque monkey interacted with the camera, capturing a famous "selfie" photograph, sparking a unique
copyright controversy.
Copyright Dispute:
• Theoretically, since the monkey physically took the photograph, it could be argued that the macaque holds the
copyright.
• Practically, David Slater claimed copyright, as he owned the equipment and set up the scenario.
Legal Proceedings:
• Parties Involved: The case saw involvement from People for the Ethical Treatment of Animals (PETA), which
argued that the monkey should benefit from the photograph.
• Judicial Review: The dispute escalated to judicial quarters to determine copyright ownership.
Settlement:
• Outcome: David Slater retains copyright over the image due to his "substantial contribution" in setting up the shot.
• Royalty Agreement: Slater agreed to pay 25% of royalties to the wildlife sanctuary where the macaque lives,
acknowledging the sanctuary’s role in the creation of the image.
2. “Happy Birthday to you” case law
Background:
• The melody of "Happy Birthday to You" originated from the song "Good Morning to
All," attributed to American sisters Patty Smith Hill and Mildred J. Hill in 1893.
• The sisters created "Good Morning to All" to engage children with a fun, memorable
melody.
Copyright and Royalties:
•In 1935, the Summy Company registered the piano arrangement of the song, claiming
copyright over the melody.
•Warner/Chappell acquired the Summy Company in 1999 and began charging
royalties for "Happy Birthday to You," generating significant revenue.
Legal Challenge:
•A Federal court reviewed the song's copyright status, revealing that only the melody,
not the lyrics, was registered.
•Warner/Chappell was required to settle with "thousands of people and entities" who
had paid licensing fees since 1949.
3. Amitabh Bachchan to lose Copyrights over his father’s works in 2063
Author Background:
• Harivansh Rai Bachchan, father of actor Amitabh Bachchan, was a celebrated Hindi poet
and writer.
• Known for his famous work Madhushala (1935), he received the Sahitya Akademi Award
and Padma Bhushan.
• He also translated Shakespeare's Macbeth and Othello into Hindi.
Copyright Duration:
• Harivansh Rai Bachchan passed away on January 18, 2003, at the age of 95.
• According to the Copyright Act, 1957, copyright on his works lasts for his lifetime plus 60
years.
• Therefore, rights over his work will expire in 2063, making them public domain thereafter.
4. Other cases in India:
Saregama Vs. Emami (“Ude jab jab Zulfien” )
ANI Vs. PTI (plagiarism of videos)
Sony Music, Universal Music Group, and Warner Records v. Suno and Udio (copyright
infringement)
Part B: Trademarks
Trademark – a unique symbol capable of identifying and differentiating
products or services of an organization from others
“Mark” can be a sign, design, phrase, slogan, symbol, name, numeral,
devise or a combination of these.
Eligibility Criteria
1. Distinctiveness: protection for uniqueness for goods and services
2. Descriptiveness: TM should not be describing the description pf
concerned goods or services.
3. Similarity to prior marks: Mark should not have any resemblance with
the existing marks
Who can apply for a TM?
➢Proprietor(s)
➢An organization
➢An association

Acts and Laws

➢In India the Trademarks are governed by The Trademark Act, 1999.
➢Trademark Rules are governed by Trademarks Rules, 2002.
➢Latest amendments were done in 2010 and 2017.

Designation of Trademark Symbols

Classification of Trademarks (NICE Agreement)
Trademark classification by goods and services follows the Nice
Classification, created under the Nice Agreement (1957) and
administered by WIPO.
Used by 149 countries (84 signatories and 65 additional adopters),
including entities like the African Intellectual Property Organization and
EU Trademark Office.
Class Structure:
➢Classes 1-34: Goods (e.g., chemicals, textiles, electronics).
➢Classes 35-45: Services (e.g., legal, security, personal/social services).
Examples:
Class 1: Industrial chemicals, fertilizers, unprocessed plastics.
Class 45: Legal services, security services, personal/social services.
Figurative Elements (Vienna Agreement)
The Vienna Classification organizes figurative trademark elements by
type, for international standardization.
Class structure:
➢Categories: 1 to 29 (e.g., humans, animals, natural elements).
➢Divisions: 1 to 19.
➢Sections: 1 to 30.
Example: "A little girl eating" is coded as 2.5.3 (human beings, children,
girls) with auxiliary section 18 for eating children.
Registration of a trademark
➢Is not compulsory, but comes with advantages:
Legal protection – a registered trademark can serve as a potent evidence
of the lawful proprietorship of the trademark.
Exclusive right – grants the owner full rights to use it in lawful manner
Brand recognition – helps create brand value over time
Asset creation – it is an intangible property of the organization, enhances
the business of the company

More info: Trade Marks | Intellectual Property India

Validity of registration: 10 years (can be renewed before expiry)
 Types of Trademarks Registered in India
Definition of a Trademark:
A trademark should be easy to speak, spell, and remember.
Prefer invented or unique words and geographical names.
Recommendations for Choosing a Trademark:
Avoid common geographical names, personal names, or descriptive words like
"best" or "super" that praise product quality.
Conduct a market survey to ensure no similar mark is in use.
Examples of Registerable Trademarks:
Personal Names or Surnames: Names associated with the applicant or
predecessors in business, e.g., "BAJAJ" (named after industrialist Jamnalal
Bajaj).
Unrelated Words: Words with no direct relevance to the products/services,
e.g., "INDIA GATE" for food grains.
Letters or Numerals: Combinations or abbreviations like "YAHOO" (originally
an acronym) that have become widely recognized.
Trademark registry
Process of Trademarks Registration
➢Filing the Application:
The trademark proprietor fills out an application, either personally or via an
agent.
Prior art search is recommended before applying to check if the trademark is
unique.
➢Prior Art Search:
Ensures the intended trademark is not already registered or similar to existing
ones.
Search platforms include:
• CGPDTM Public Search (https://tmrsearch.ipindia.gov.in/tmrpublicsearch/)
• WIPO's Global Brand Database (https://pct.wipo.int/ePCT/)
• Trademark Electronic Search System (TESS)
• MARKARIA Trademark Search Engine
• VAKIL Search
➢Application Submission:
Once convinced of the trademark’s distinctiveness, the applicant submits
Form TM-A to the Trademarks Office under the appropriate
jurisdiction.
➢Application Processing:
The application receives an application number, which can be tracked
online.
A professional examiner reviews the application:
If valid, it is published in the official Trademark Journal.
If issues arise, the examiner raises objections for the applicant to rectify.
If unresolved, the applicant may appeal to the Intellectual Property
Division.
➢Publication and Objections:
The trademark is published in the official journal, allowing the public 90
days to file objections.
An officer resolves any objections and decides on proceeding with or
rejecting the trademark.
Unfavorable decisions can be appealed to the IPAB.
➢Issuance of Registration Certificate:
Upon completion of formalities, a registration certificate is issued to the
applicant.
➢Additional Requirements:
Non-English trademarks require an English translation.
If claiming priority from an earlier application, details of that application
must be provided (application number, date, country, goods/services).
➢Corrections in Application or Register:
Corrections are allowed as long as they don’t significantly alter the trademark’s
identity.
➢Removal of a Registered Trademark:
A trademark can be removed if:
• It was registered without intent to use.
• It hasn’t been used for 5 years post-registration or 3 months before applying.
• It was mistakenly registered despite being disallowed.
• The Trademark Registrar can remove it on their own authority (suo moto).
➢Registrability of Sound or Smell:
• Sound and smell can be registered if they’re distinct and graphically
reproducible.
• For sound, it must be recordable in MP3 format and depicted graphically.
➢Restricting Third-Party Use of Similar Marks:
• Generally, registered users can’t stop third parties from using a similar
mark if the third party has been using it for the same goods/services
before the registered mark's use or registration.
• Both registered and unregistered trademarks can use the common law
tort of passing off to protect goodwill, but only registered marks can file
infringement suits.
➢Trademark Protection in Foreign Countries:
• Applicants have two options:
• File directly with the trademark office of the desired foreign country.
• Use WIPO’s Madrid System to file in multiple countries with a single
application and fee, claiming priority if filed within six months of the first filing.
• The Madrid Protocol list of member countries can be found here.
➢ Increase in Trademark Activity:
•Between 2010-2020, trademark filings increased by 95%, examinations by 65%, and registrations by 154%.
•Filing Trends:
•A steady increase was observed in trademarks filed during this period.
•Examination Trends:
•Examination rates fluctuated from 2010-2016.
•The peak number of examinations occurred in 2016-17 with 5,32,230 applications.
•This was followed by a sharp decline in 2017-18, almost halving the previous year’s numbers.
•Recovery was noted in 2018-2020, with 3,38,551 applications examined in 2019-20.
•Registration Trends:
•Registrations declined in the first five years (2010-2015).
•A significant surge, nearly fourfold, occurred in 2016-17.
•The highest registrations (3,16,798) were recorded in 2018-19.
International Treaties and Conventions
Provision for International Trademark Application:
•Allows filing in multiple countries (Convention countries) for trademark
protection.
Key Treaties and Agreements Administered by WIPO:
•Madrid Agreement (1891): For international registration of marks. Link
•Nice Agreement (1957): For international classification of goods and
services. Link
•Trademark Law Treaty (TLT) (1994): Standardizes trademark
registration processes. Link
•Vienna Agreement (1973): For classification of figurative elements in
trademarks. Link
Famous Case Law:
• Coca-Cola Company vs. Bisleri International Pvt. Ltd. case:
1.Background:
1. Trademark in Dispute: "MAAZA," a popular mango drink trademark in India, originally owned
by Bisleri International Pvt. Ltd.
2. Transfer of Rights: Bisleri transferred the rights (including formulation, IPR, and goodwill) for
"MAAZA" in India to Coca-Cola.
2.Issue:
1. In 2008, Bisleri applied to register "MAAZA" in Turkey and began exporting the drink under
this mark, despite the prior transfer to Coca-Cola in India.
3.Legal Action:
1. Coca-Cola's Claim: Coca-Cola argued that since it held exclusive rights to "MAAZA" in India,
any production or export by Bisleri under this mark constituted infringement.
2. Coca-Cola filed for a permanent injunction and damages for passing-off and trademark
infringement.
4.Court Ruling:
1. The court granted an interim injunction, restraining Bisleri from using the "MAAZA" trademark
for both the Indian and export markets.
2. The use by Bisleri was deemed a trademark infringement due to Coca-Cola’s ownership of
"MAAZA" in India.