IPR

Supreme Court on copyright in title

Supreme Court on copyright in title.

Facts:
Respondent claims copyright in a synopsis of a story written by him with the title “Desi Boys” which was also registered with the Film Writers Association. He sent the synopsis of the story by email to accused through his friend. Later the complainant saw the promos of a film bearing the title “Desi Boys”, actually spelt as “Desi Boyz”.

He contended that the adoption of the title “Desi Boyz” was infringement of the copyright in the film title “Desi Boys”. And hence filed complaint being criminal case u/s. 63 of the Copyright Act and charges were also levied u/Ss. 406 and 420 of IPC r/w s. 34 of IPC. Upon issue of process by Metropolitan Magistrate, accused appealed to Bombay High Court u/s. 482 of Cr.P.C. for quashing the complaint and the process. Hon’ble dismissed the appeal and thus matter came before the Supreme Court.

Decision:
On 15th October 2015, the bench of Hon’ble Supreme Court comprising Justice Lokur and Justice Bobde in Krishika Lulla v. Shyam Vithalrao Devkatta held that generally there would not be any copyright protection for titles of literary works. Such protection can only be claimed in exceptional circumstances, where the title itself was of an inventive nature.

The Court noted that S. 13 of the Copyright Act, 1957 provides protection for original literary works. The Court stated that title by itself is in the nature of a name of a work and is not complete by itself, without the work. A title does not qualify for being described as “work”. It is incomplete in itself and refers to the work that follows.

The Court also referred to precedent from the Madras high Court (( In E.M. Forster and Anr. v. A.N. Parasuram reported in AIR 1964 Madras 331, and in R. Radha Krishnan v. Mr. A.R. Murugadoss & Ors. reported in 2013-5-L.W. 429 )) and Delhi High Court (( In Kanungo Media (P) Ltd. v RGV Film Factory & Ors. reported in (2007) ILR 1 Delhi 1122 )) as well as foreign Courts (( In Hogg v. Maxwell reported in (1866-67) L.R.2 Ch. App. 307, and in Francis Day & Hunter Ltd. v. Twentieth Century Fox Corporation Ltd. and Ors. reported in AIR 1940 Privy Council 55 )) which evidenced the well- settled position that there can be no copyright in the title of a work.

It may be noted that ‘title’ can be protected as trademark. P. K. Pandya & Co. provides service related to trademarks and copyright.

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IPR

Trade Marks

The Indian Trade Marks law, viz. the Trade Marks Act 1999 provides protection for

  • marks of goods and services
  • collective marks
  • certification trademarks, and
  • well-known marks.

Under Indian law it is not mandatory to register trade marks to avail the legal protection.

The usage of trade marks is more important and protection of law in the form of passing off is available. However, the relief in the form of infringement can be availed only if the trade mark is registered under the Trade Marks Act.

The registration of mark does not give precedence over usage of the mark.

The registration is valid for 10 year and can be renewed thereafter.

In appropriate cases, police can seize without warrant the counterfeit goods. Further penalty under the law is in the form of imprisonment for 6 months to 3 years and monetary fines.

The Trade Marks Act, 1999 has come into force from the 15th of September 2003. An important feature of the Act is the introduction of the registration of Service Marks in India. Previously, Service Mark registration in India was not allowed. Protection of service marks was available only under the common Law. From September 2003, it has now become possible to separately register and therefore legally protect Service Marks.

What is Service Mark?

Service Marks are marks used in any form of service business where actual goods under that mark are not traded. Services are identifying the source of Service provided by Company/Firm/Individuals. For instance, a Hotel or a restaurant is a service: under the marks Taj, Oberoi, Sheraton, Meridian, Sher-e-Punjab, Khyber, Chinese Room, no goods are traded, but services are offered and purchased, these marks are legally protected under the Act. Similarly, marks for software services or business process outsourcing services, or health, insurance, repair services or airlines services or educational services can be protected by registration.

Following Services are now protected as a SERVICE MARK in INDIA under the Trademarks Act, 1999.

  • Insurance; financial affairs; monetary affairs; real estate affairs
  • Building construction; repair; installation services
  • Telecommunications
  • Transport; packaging & storage of goods; travel arrangement
  • Treatment of materials
  • Education; providing of training; entertainment; sporting & cultural activities
  • Scientific & technological services, research & design;
  • industrial analysis & research services;
  • design & development of computer hardware & software;
  • legal services;
  • Services for providing food & drink;
  • temporary accommodation;
  • Medical services;
  • veterinary services;
  • hygienic and beauty care for human beings or animals;
  • agriculture, horticulture and forestry services;
  • Personal and social services rendered by others to meet the needs of individuals;
  • security services for the protection of property and individuals.

Goods and Services are classified under various classes. Under the old trademark law, Only 34 classes for goods were available. Under the Trademark Act of 1999, 11 more classes have been created for protection of service marks, i.e. classes 35 to 45.

It may be noted that following nature of trade marks can not be registered under Section 9 of the Trade Marks Act, 1999.

Trade marks which are –
(a) devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

However if a trade mark has acquired a distinctive character as a result of the use made of it before the date of application for registration or is a well-known trade mark, then the same cannot be refused registration.

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IPR

COPYRIGHT ACT

The Indian Copyright Act 1957, as amended by the Copyright (Amendment) Act 1999 provides protections to the creators of literary, dramatic, musical and artistic works and producers of cinematographic films and sound recordings.

Copyright is given to the creators of a wide range of material, such as literature, art, music, sound recordings, films and broadcasts, economic rights enabling them to control use of their material in a number of ways, such as by making copies, issuing copies to the public, performing in public, broadcasting and use on-line. It also gives moral rights to be identified as the creator of certain kinds of material, and to object to distortion or mutilation of it. Material protected by copyright is termed a “work”.

Copyright is a right given to or derived from any works, and it is not a right in novelty of ideas.

It is based on the right of an original owner to prevent another person copying an original work.

The law of copyright provides the legal framework for the creation of works by the major cultural industries, the publishing, film, broadcasting and recording industries, and the computer, software industries. The object of copyright law is to encourage authors and owners to create original works by rewarding them with the exclusive right for a limited period to reproduce the works. The copyright law is to protect the author of the copyright work from unlawful reproduction or exploitation of his work by others.

The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized uses. Unlike the case with patents, copyright protects the expressions and not the ideas. There is no copyright in an idea. Copyright does not ordinarily protect titles by themselves or names, short word combinations, slogans, short phrases, methods, plots or factual information. Copyright does not protect ideas or concepts. To get the protection of copyright a work must be original.

Copyright protects the rights of authors, i.e., creators of intellectual property in the form of literary, musical, dramatic and artistic works and cinematograph films and sound recordings Ordinarily the author is the first owner of copyright in a work.

The Computer software is protected under the Copyright law.

Copyrights protection is automatic as soon as there is a record in any form of the material that has been created.

The registration of Copyright is not mandatory.

Under the Indian Copyright Act there is a provision to register copyright although this is voluntary. Creators can also take certain steps to help prove that material is this.

The owner of the copyright in an existing work or the prospective owner of the copyright in a future work may assign to any person the copy right either wholly or partially and either generally or subject to limitations and either for the whole term of the copyright or any part thereof. It shall be in writing signed by the assignor or by his duly authorized agent. It shall identify the specific works and specify the rights assigned and the duration and territorial extent of such assignment. It shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.

India is a party to

  • the Berne Convention on Copyrigthts,
  • the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement,
  • the Geneva Convention for the Protection of Rights of Producers of phonograms, and
  • the Universal Copyright Convention.

The Indian law also offers protection to the performer’s rights, as under the Rome Convention. However, India is not member of  WIPO Copyrights Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT).

The Copyright violator can be prosecuted under both civil and criminal law.

Under the Indian Copyright Law, a body called Copyright Board was created and is authorized to deal with certain kinds of disputes pertaining to copyright.

 

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