NLIU Journal of Intellectual Property Law

QUALIFICATIONS OF COPYRIGHT CANDIDATE IN INDIA

Prof. (Dr.) Ghayur Alam*

Copyright is a bundle1 of statutory2 exclusive3 economic4 and divisible (fragmentable5) rights in relation to six types of works,6 limited both in time7

* Professor of Business Law and Intellectual Property Rights, Ministry of Human Resource Development Chair & Chairperson of Centre of Science, Technology and Law at the National Law Institute University, Bhopal. The author would like to acknowledge the research assistance provided by Mr. Sumit Bhattachrya and Mr. Abhinav Pradhan, Research Associates, MHRD Chair on IPR at the National Law Institute University, Bhopal. 1 The constituents of divisible bundle of copyright right in relation to different types of works are enumerated under Section 14 of the Copyright Act, 1957 (hereinafter referred to as ‘the Act’) as under: Meaning of copyright.-For the purposes of this Act, “copyright’’means the exclusive right subject to the provisions of this Act, to do or authorize the doing of any of the following acts in respect of a work or any substantial part thereof, namely:- (a) in the case of a literary, dramatic or musical work, not being a computer program- (i) to reproduce the work in any material form (ii) to issue copies of the work to the public (iii) to perform [or communicate] the work in public (iv) to make any cinematograph film or sound recording (v) to make translation (vi) to make adaptation (b) in the case of a computer program (i) to do any of the acts specified in clause (a); (ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer program: (c) in the case of an artistic work,- (i) to reproduce the work in any material form (ii) to communicate the work to the public; (iii) to issue copies of the work to the public (iv) to include the work in any cinematograph film; (v) to make any adaptation of the work; (d) In the case of cinematograph film, - (i) to make a copy of the film, including a photograph of any image forming part thereof; (ii) to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the film to the public; (e) In the case of sound recording, - (i) to make any other sound recording embodying it; (ii) to sell or give on hire, or offer for sale or hire, any copy of the sound (iii) to communicate the sound recording to the public. For purposes of meaning the Act has grouped the copyrightable works, which are six in number, into five categories, namely (i) literary, dramatic or musical work except computer program, (ii) computer program, (iii) artistic work, (iv) cinematograph film, and (v) sound

[17] Qualifications of Copyright Candidate in India

recording. Each of the rights mentioned in the all the clauses of Section 14 are divisible in as many parts as the owner of the copyright desires them to be divided into. For example, right to issue copies may be divided into right to issue in newspaper, or in journal, or in a book, on internet etc. Also see, A HAND BOOK OF COPYRIGHT LAW, Government of India, Ministry of Human Resource Development, Department of Secondary Education and Higher Education, at http://copyright.gov.in/Documents/handbook.html last visited on 26-12-2011: “[I]t is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work.” Also see Camlin Private Limited v. National Pencil Industries, [2002] 96 DLT 8. 2 Copyright is a statutory right and not a common law right by virtue of the provisions of Section 16 of the Act which provides: No copyright except as provided in this Act: No person shall be entitled to copyright or any similar right in any work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or any other law for the time being in force, but nothing in this Section shall be constructed as abrogating any right or jurisdiction to restrain a breach of trust or confidence. Also see, Eastern Book Company v. D.B. Modak, AIR 2008 SC 809, 829 for the following proposition: Copyright is purely a creation of the statute under the 1957 Act. What rights the author has in his work by virtue of his creation, are defined in Sections 14 and 17 of the Act. These are exclusive rights, but subject to the other provisions of the Act. In the first place, the work should qualify under the provisions of Section 13, for the subsistence of copyright. Although the rights have been referred to as exclusive rights, there are various exceptions to them which are listed in Section 52. Also see, Ladbroke (Football), Ltd v. William Hill (Football Ltd., [1964] 1 All E.R. 465, 475 for the proposition that “Copyright is a statutory right which by the terms of the Act… would appear to subsist, if at all, in the literary or other work as one entity. ” 3 “Exclusive” means “restricted to the person.”See C. SOANES (ED.), THE COMPACT OXFORD REFERENCE DICTIONARY, 284 (Oxford University Press, 2003).] Copyright is described as a negative right because it is not a positive right. In Deshmukh and Co. (Publishers) Pvt. Ltd. v. Avinash Vishnu Khandekar, 2006 (32) PTC 358 (Bom.) (SB) the Bombay High Court observed: Copyright is not a positive right but is negative right that is the right to stop others from exploiting the work without the copyright owner's consent or licence. 4 The term ‘copyright’ refers to economic rights and not ‘special rights’ enumerated under the Act. The Act refers to “author’s special right” under Section 57. Author’s special right is popularly known as ‘moral right’ as distinguished from economic right (copyright). The Act also makes provisions for special rights “broadcast reproduction right” and “performer’s right” under Sections 37 and 38 respectively. These rights are generally referred to as the neighboring or related rights as distinguished from economic right. 5 See A Justification for Allowing Fragmentation in Copyright, 124 HARV. L. REV. 1751 (2011). 6 Section 2 (y) of the Copyright Act, 1957 defines ‘work’ as under: “work” means any of the following works, namely: (i) a literary, dramatic, musical or artistic work; (ii) a cinematograph film; (iii) a sound recording.

[18] NLIU Journal of Intellectual Property Law and space8 and subject to certain statutory limitations and exceptions9. Like any other legal rights copyright is also a relative and limited right and not an absolute right.10

7 Under Section 22 copyright shall subsist in any literary, dramatic, musical or artistic work published within the lifetime of the author until sixty years from the beginning of the calendar year next following the year in which the author dies. Under Section 23(1) in the case of a literary, dramatic, musical or artistic work which is published anonymously or pseudonymously, copyright shall subsist until sixty years from the beginning of the calendar year next following the year in which the work is first published. Under Section 24 in the case of a literary, dramatic or musical work or an engraving, in which copyright subsists at the date of the death of the author, or in the case of any such work of joint authorship, at or immediately before the date of the death of the author who dies last, but which, or any adaptation of which, has not been published before that date, copyright shall subsist until sixty years from the beginning of the calendar year next following the year in which the work is first published or, where an adaptation of the work is published in any earlier year, from the beginning of the calendar year next following that year. In the case of a photograph (Section 25), a cinematograph film (Section 26) and a sound recording (Section 27) copyright shall subsist until sixty years from the beginning of the calendar year next following the year in which the photograph, film and sound recording are published. In the case of Government work (Section 28) and public undertaking (Section 28-A) work, where Government and public undertaking are the first owner of the copyright therein, copyright shall subsist until sixty years from the beginning of the calendar year next following the year in which the record/work is first published. Under Section 29 in the case of a work of any international organization to which the provisions of Section 41 apply, copyright shall subsist until sixty years from the beginning of the calendar year next following the year in which the work is first published. 8 Copyright is territorial, i.e., limited within the boundary of the country. Section 13 (1) of the Copyright Act, 1957 provides that “Subject to the provisions of this Section and the other provisions of this Act, copyright shall subsist throughout India. Section 13 (2) further provides: Copyright shall not subsist in any work specified in sub-Section (1), other than a work to which the provisions of Section 40 or Section 41 apply, unless,- (i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the time of his death, a citizen of India; (ii) in the case of an unpublished work other than a [work of architecture] the author is at the date of the making of the work a citizen of India or domiciled in India; and (iii) in the case of [work of architecture] the work is located in India. ” Article 5 (3) of the Berne Convention, 1886 provides: Protection in the country of origin is governed by domestic law. However, when the author is not a national of the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country the same rights as national authors. Under Article 1.1, Trade Related Aspects of Intellectual Property Rights (TRIPS) provides: Members shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this

[19] Qualifications of Copyright Candidate in India

The objective of copyright law is to enrich public domain of knowledge (scientific and non-scientific) and art so as to get more production and dissemination of knowledge and art to advance learning, knowledge, entertainment and pleasure for betterment of human life and social good. Law seeks to achieve this objective by rewarding the author/owner with copyright. Although copyright law claims to encourage authorship as a means to promote social good, yet it ends up by largely promoting appropriation of fruit of labor of author by the owner. Elsewhere I have argued that the existing regime of copyright law is largely detrimental to 'authorship' and is more favorable to the interest of the owner of copyright as it fails to adequately protect the interest of authors of the literary, dramatic, musical and artistic works in particular by creating default rules relating to first ownership, in the absence of agreement to the contrary, in favor of proprietor, publisher, employer and government.11 Default rules relating to first ownership of copyright could have been in favor of the author for the basic objective of copyright law is to encourage and promote authorship and not ownership. The issue of authorship/ownership divide is of seminal importance in copyright jurisprudence. Therefore, what brings copyright into existence is also of salient significance. A literature review, however, reveals that this question is a neglected question which creates a gap in copyright jurisprudence. The purpose of this study, therefore, is to fill up this gap in the Indian copyright jurisprudence. It is submitted that neither any book nor any article nor any judgment clearly and particularly identify and distinguish the essential and desirable qualifications of copyright candidate for protection under existing copyright law. It appears from a perusal of

Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice. 9 See Sections 31, 31A, 32, 32A and 52 of the Act regarding limitations and exceptions to copyright. Such limitations and exceptions are provided to further social good for the primary purpose of law is to promote learning and make knowledge, information and other art accessible to public. 10 See, The Federation of Hotels and Restaurants Association of India v. Union of India, 2011 VIIIAD(Delhi)720, para. 16. in which the Court observed: [T]he amendments carried out in the Copyright Act, 1957 are calculated to guarantee a fair return to the authors, composers or lyricist or sound recorders, as the case may be. There is no absolute, untrammeled or unbridled right existing or granted to the public at large to enjoy fruits of such creation without any payment in recompense or for payments, which the public may be willing to give. 11 Ghayur Alam, The Philosophy of Copyright Act in S. N. SAXENA ET AL (eds.), SPOTLIGHTS ON INTELLECTUAL PROPERTY RIGHTS, 74 (Lucknow, New Royal Book Co., 2005).

[20] NLIU Journal of Intellectual Property Law available literature that the question: what makes a work eligible for protection under copyright law is either a non-issue or the answer is simply very clear and easy, i.e., existence of copyright is ‘automatic’.12 Logically, therefore, there seems to be no need of probing into this question. This simplicity however is terribly misleading and deceptive and seems to be far from the truth. For example, the Courts have quashed criminal copyright infringement proceedings merely on the ground that the work in question was not registered with the Registrar of copyright.13 This Paper, therefore, argues that neither the existence nor the enforcement of copyright is automatic. It is submitted that even the most automatic machines made by man require ‘something’ to trigger the automation. This paper therefore seeks to identify and explain the factors which trigger the existence of copyright. These factors may be identified as "essential qualification" and "desirable qualification". The essential qualifications are qualifications that a ‘candidate’ must, and the desirable qualifications are qualifications that a candidate may, possess to claim copyright. It is hypothesized that a copyright candidate must possess three essential qualifications, namely: one, the candidate must be a work in the copyright law sense; two, the work must be original in the copyright law sense and three the work must be fixed on a tangible medium; and he may have two desirable qualifications namely: firstly, the work may be published and secondly it may be registered with the copyright office. It is submitted that the desirable qualifications do not bring copyright in a work in existence but they do confer certain procedural and evidentiary advantages. It is further submitted that the question of qualification of the candidate is generally raised in an infringement proceeding and not only for determining whether a particular work is protected under copyright law. The claim of copyright is a valid claim only if it is infringed.

12 Mrinalini Kochupillai, The Protection and Utilization of Public Funded Intellectual Property Bill, 2008: A Critique in the Light of India’s Innovation Environment, 15(1) JIPR 19, 27 (2010). Also see, Dr. Sreenivasulu, N.S. & Nagarathna A., An Overview of Copyright Law in India, Legal Protection of Copyright, para. 6. http://www.manupatrafast.in/pers/Personalized.aspx, last visited on 29-03-2012. Further see, JAYASHREE WATAL,INTELLECTUAL PROPERTY RIGHTS IN THE WTO AND DEVELOPING COUNTRIES, 207 (Oxford University Press, 2005)(2001). See, Challenger Knitting Mills v. Kothari Hosiery Factory, 2002 (24) PTC 756, 763 (CB). 13 B.K. Dani v. State of M.P., 2005 CriLJ 876 (SB).

[21] Qualifications of Copyright Candidate in India

For purposes of convenience, this paper is divided into six parts. First three parts deal with the essential qualifications that a candidate must posses to claim copyright. Part - I seeks to identify the candidates of the copyright. Part - II will explain the proposition that candidate must be a ‘work’ in the copyright law sense. Second part seeks to explain the threshold of ‘originality’ in the sense of copyright law for different types of candidates. Part - III seeks to explain the requirement of fixation of the work, for different types of work, on a tangible medium for the existence of copyright. Remaining two parts deal with the desirable qualifications of the candidate. Part IV deals with the requirement of publication of the work. Part V deals with the requirement of registration of the work with the copyright office. Part VI concludes.

I. CANDIDATE OF COPYRIGHT

In the light of the provisions Sections 2 (y) and 13 of the Act, candidate of copyright protection is ‘work’. The term ‘work’ in the copyright law sense is narrower than its ordinary sense.14 In the copyright law sense there are six numbers of works: original literary, dramatic, musical and artistic works, on the one hand; cinematograph films and sound recordings on the other hand by virtue of the provisions of Section 2 (y) read with Section 1315 of the Act.

14 In the ordinary sense ‘work’ means ‘use of bodily or mental powers with the purpose of doing or making something.’ See, OXFORD ADVANCED LEARNER’S DICTIONARY OF CURRENT ENGLISH, 992 (Delhi, Oxford University Press, 1987). 15 Section 13, Copyright Act, 1957. Works in which copyright subsists.- (1) 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) Copyright shall not subsist in any work specified in sub-Section (1), other than a work to which the provisions of Section 40 or Section 41 apply, unless,- (i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the time of his death, a citizen of India; (ii) in the case of an unpublished work other than a [work of architecture] the author is at the date of the making of the work a citizen of India or domiciled in India; and (iii) in the case of [work of architecture] the work is located in India. Explanation.- in the case of a work of joint authorship, the conditions conferring copyright specified in this sub-Section shall be satisfied by all the authors of the work. (3) Copyright shall not subsist-

[22] NLIU Journal of Intellectual Property Law

“Literary work” 16 includes computer programs17, tables and compilations including computer databases. The definition of “literary work” is an inclusive18 one for it has employed the connector “includes”. This definition is not a definition for it does not provide a test to determine as to what constitutes a literary work for purposes of copyright law. In University of London Press Ltd.19 it was held that “The meaning of literary work has been explained to cover work which is expressed in print or writing20, irrespective of the question whether the quality or the style is high21. The Supreme Court

(a) in any cinematograph film a substantial part of the film is an infringement of the copyright in any other work; (b) in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has been infringed. (4) The copyright in a cinematograph film or a [sound recording] shall not affect the separate copyright in any work in respect of which or a substantial part of which, the film, or as the case may be, the sound recording is made. (5) In the case of a work of architecture copyright shall subsist only in the artistic character and design and shall not extent to processes or methods of construction. 16 See Section 2 (o), Copyright Act, 1957. 17 Section 2(ffc) defines “computer program” to mean “a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result.” 18 Fateh Singh Mehta v. O P Singhal, AIR 1990 Raj 8, 12. The definition of “literary work” given in Section 2(o) of the Copyright Act, 1957 . . . is an inclusive definition and, therefore, not exhaustive. . . Dissertation is, therefore, prima facie a literary work. 19 University of London Press Ltd. v. University Tutorial Press Ltd., (1916) 2 ChD 601, 608. This case has been cited in Eastern Book Co. v. D.B.Modak, AIR 2008 SC 809, 833. 20 Emphasis added. The idea that “work which is expressed in print or writing” recognizes the requirement of fixation of expression on a tangible medium. See infra, Part III of this Paper. 21 Id. As per Peterson J.: Although a literary work is not defined in the Act, S. 35 states what the phrase includes; the definition is not a completely comprehensive one, but the Section is intended to show what, amongst other things, is The word ‘literary’ seems to be used in a sense somewhat similar included in the description “literary work,” and the words are “’Literary work’ includes maps, charts, plans, tables, and compilations.” It may be difficult to define “literary work” as used in this Act, but it seems to be plain that it is not confined to “literary work” in the sense in which that phrase is applied, for instance, to Meredith’s novels and the writings of Robert Louis Stevenson. In speaking of such writings as literary works, one thinks of the quality, the style, and the literary finish which they exhibit. Under the Act of 1842, which protected ‘books,’ many things had no pretensions to literary style acquired copyright; for example, a list of registered bills of sale, a list of foxhounds and hunting days, the trade catalogues; and I see no ground for coming to the conclusion that the present Act was intended to curtail the rights of the authors. In my view the words “literary work” cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word ‘literary’ seems

[23] Qualifications of Copyright Candidate in India of India has divided “literary work” into two categories: (a) primary works and (b) secondary or derivative literary works. 22 In short “literary work means “works expressed in print or writing”. Printing or writing therefore is a necessary threshold, though not sufficient, condition for protection of literary work under the copyright law.

Certain examples of literary work are: books23, novels, songs and lyrics24, articles in journals, question papers25, compilations26, abridgment27,

to be used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed matter. 22 Eastern Book Co. v. D.B.Modak, AIR 2008 SC 809, 830. The Court observed as under: Broadly speaking, there would be two classes of literary works: (a) primary or prior works: These are the literary works not based on existing subject-matter and, therefore, would be called primary or prior works; and (b) secondary or derivative works: These are literary works based on existing subject-matter. Since such works are based on existing subject-matter, they are called derivative work or secondary work. 23 See, Macmillan v. Suresh Chunder Deb, (1890)ILR 17Cal1183 para. 4. A book contained selected poems of many English authors of various periods, the Court observed that: In the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from materials which are open to all, the fact that one man has produced such a work does not take away from anyone else the right to produce another work of the same kind, and in doing so to use all the materials open to him. … this principle has been applied to maps, to road books, to guide books, to street directories, to dictionaries, to compilations on scientific and other subjects. 24 Songs and lyrics are excluded from the definition of “musical work”. See, Section 2 (p) of the Copyright Act, 1957. 25 See, Jagdish Prasad Gupta v. Parmeshwar Prasad Singh, AIR 1966 Pat 33, 35. In this case the question was that whether copyright can exist in examination papers. The High Court observed that 'literary works' referred to in Section 13 are not confined to works of literature in the commonly understood sense, but must be taken to include all works expressed in writing, whether they have any literary merit or not. The Court referred to University of London Press Ltd. v. University Tutorial Press Ltd., 1916-2 Ch 60, in which it was held that question papers set for examinations were “iterary works because they were “work which is expressed in print or writing, irrespective of the question whether the quality or style is high”; and it was further pointed out that “the word 'literary' seems to be used in a sense somewhat similar to the use of the word 'literature' in political or electioneering literature and refers to written or printed matter”. Relying upon this observation, the Allahabad High Court in Agarwala Publishing House v. Board of High School and Intermediate Education, AIR 1967All 91, and Delhi High Court in The Chancellor Masters and Scholars of The University of Oxford v. Narendera Publishing House, 2008 (38) PTC 385 (Del), 388 observed the same. 26 V. Govindan v. E.M.Gopalkrishna, AIR 1955 Mad 391, 393. the Court observed that: Many men have not got the brains, skill and labour to compile dictionaries, gazetteers, grammars, maps, almanacs, encyclopedias and guide books. Nor are all of such compilations of the same nature. Then it will be obvious that only one dictionary gazetteer, grammar, map, almanac, encyclopedia or guide book will, sell, and not the rest. Any man who refers to the Oxford Dictionary, Webster dictionary and Chambers dictionary can easily find out the

[24] NLIU Journal of Intellectual Property Law catalogues and brochures28, computer databases29, head notes and foot notes of judgments30 etc.

“Dramatic work” 31 includes any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise but does not include a cinematograph film. This definition is also an inclusive definition. It is in two parts. Part one is inclusionary and part two is exclusionary. In Fortune Films difference between these dictionaries. There is considerable difference in dealing with the subject-matter. That, will be specially so when the dictionary is not of all the words in the language, but of 'select words' considered suitable for high school boys,' where the very same words in one dictionary being taken over to another and later dictionary will certainly prove piracy. It further observed that: It is clearly recognized that all these books are capable of having copyright in them. In law books and books of" the above description, the amount of 'originality' will be very small," but that small amount is 'protected by law', and no man is entitled to steal or appropriate for himself the result of another's brain, skill or labour even in such works. 27 See, Macmillan and Co. v. K. and J. Cooper, AIR 1924 PC 75. The Court observed: [A]bridgment of an author's work means a statement designed to be complete and accurate of the thoughts, opinions and ideas by him expressed therein, but set forth much more concisely in the compressed language of the abridger. A publication of the text of which consists of a number of detached passages selected from an author's work, often not contiguous, but separa.ted from those which precede and follow them by considerable bodies of print knit together by a few words so as to give these passages, when reprinted, the appearance as far as possible of a continuous narrative, is not an abridgment at all. It only expresses, in the original author's own words, some of the ideas, thoughts and opinions set forth in his work. And it is obvious that the learning, judgment, literary taste and skill requisite to compile properly and effectively an abridgment deserving that name would not be at all needed merely to select such scraps as these taken from an author and to print them in a narrative form. 28 See, Lamba Brothers Pvt. Ltd. v. Lamba Brothers, AIR 1993 Delhi 347. The High Court held that written words or "expression" created by stringing words together is copyrightable subject matter; as "tables" are prepared by expenditure of skill and labor such tables are also protected by copyright; photographs are copyrightable too. The catalogue/brochure is, therefore, a combination of different types of copyrightable subject matter, which is afforded protection under the Copyright Act, 1957. 29 Burlington Home Shopping Pvt. Ltd. v. Rajnish Chibber, (1995) 15 PTC 278, 284. The Court observed: [O]n comparison of the data made available by the plaintiff with the data available on the floppies seized from the custody of the defendant it is found that a substantial number of entries are compara.ble word by word, line by line and even space by space. In some of the entries the locations of commas and full stop (punctuation marks) are compara.ble. In a good number of entries spelling mistakes occurring in the plaintiff's data are to be found in the data compilation of the defendant as well. 30 supra, n.22. 31 See Section 2(h), Copyright Act, 1957.

[25] Qualifications of Copyright Candidate in India

International v. Dev Anand,32 the question before the Court was whether the performance of an actor in a cinematograph film is covered under the definition of “artistic work” or “dramatic work”. Answering the question in negative and holding that the performance of an actor in a cinematograph film is not covered under the definition of “artistic work” or “dramatic work” in the copyright law sense the Court explained the meaning of “dramatic work” as under:

On a plain reading of the definition of “dramatic work” it is not possible to accept that the motion picture could be regarded as a piece for recitation or a choreographic work or entertainment in dumb show. Under the definition to be found in Sub-Section (h) of the Copyright Act, 1957, only for a dramatic work of any of these three types specified i.e. (i) piece for recitation, (ii) choreographic work or (iii) entertainment in a dumb show would be included, and then further only where the scenic arrangement or acting form of which (in the three types) is fixed in writing or otherwise. When this requirement is satisfied then the work under consideration will amount to a “dramatic work” which will be protected by the provision contained in the Copyright Act. It is true that the words “or otherwise” are to be found in the definition of “dramatic work”. But in our opinion these words are there, it seems, only to provide for the modern means of recording such as a tape-recorder or a dicta phone and similar instruments. Again, it must be observed that the concluding portion of the definition of “dramatic work”. . . excludes a cinematograph film, would seem to clearly shut out any contention that the dramatic performance of a cine artiste which is fixed or recorded in the film negative will be “dramatic work” within the meaning of this definition and therefore protected by the Copyright Act. It is true that the definition is an inclusive definition; but it would not be permissible to extend it to cover all cases where the work can be popularly described as exertions or efforts of a dramatic nature. In this connection it may be clarified that we are not concerned with the work on a stage or performance in a drama

32 AIR 1979 Bom 17.

[26] NLIU Journal of Intellectual Property Law

(which may be of several types) which may or may not be covered by the definition of “dramatic work”. Again, the words “fixed in writing or otherwise” would seem to suggest a point of time prior to the acting or scenic arrangement, which requirement would be required to be satisfied before the work can qualify to be a “dramatic work” and secure protection. It is debatable whether the record of the acting or scenic arrangement made on a film after the scene is arranged or acting done or contemporaneous therewith, would be covered by the definition.

“Musical work” 33 means a work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music. This definition is in three parts. The first part is the main part which says “musical work” means “a work consisting of music”. What constitutes “music” is not defined in the Act. The second part of the definition is inclusionary and includes “graphical notation” of musical work. The third part is exclusionary and unambiguously excludes “words or any action intended to be sung, spoken or performed with the music”. Dictionary meaning of "music" is “art of making pleasing combinations of sounds in rhythm, harmony and counter point; the sounds and combinations so made; written or printed signs representing these sounds”34. In the light of this dictionary meaning it may be said that for the existence of music it is not necessary that it must be fixed on a tangible medium. Nor it is necessary some musical instrument must have been used to compose music. What if the combinations of sounds in rhythm are not pleasing but disgusting? It may be argued that copyright law is not concerned with the dictionary meaning of music or with the effect of music whether pleasing or disgusting or nauseating. For protection under the copyright law it seems to be a necessary condition that combination of sounds in rhythm, harmony and counter point is expressed in an original form and must be fixed on a tangible medium.

33 See Section 2(p), Copyright Act, 1957. 34 See OXFORD ADVANCED LEARNER’S DICTIONARY OF CURRENT ENGLISH, 557 (Delhi, Oxford University Press, 1987).

[27] Qualifications of Copyright Candidate in India

“Artistic work” 35 means (i) a painting, a sculpture36, a drawing (including a diagram, map, chart or plan), an engraving37 or a photograph38, whether or not any such work possesses artistic quality; (ii) a work of architecture39; and (iii) any other work of artistic craftsmanship. This definition lists seven types of works. In case of a painting, a sculpture, and drawing the definition explicitly provides that the artistic quality of such works has nothing to do with the copyrightability of the work. In Aananda Expanded40 the works submitted for registration were reproduction of a series of fonts comprising of alphabets in Bengali language and some other symbols. The issue before the Registrar was whether fonts/typefaces can be registered as artistic work. The Registrar observed that there are artistic works which are beyond protection of copyright as artistic work. If any country desires to protect works of applied art it will have to provide a term of protection also. Fonts/Typefaces are clearly works of applied art, hence if they are protected the term of protection will also have to be provided in the Act. Unless such specific provisions exist, a work does not get protection under copyright. This is clear from Section 16 of our Act also. The Copyright Board held that typeface design does not constitute a work, which is entitled copyright protection under the Act. Meaning of ‘artistic work’ in the copyright law sense, therefore, is narrower than its ordinary meaning.

“Cinematograph film” 41 means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording and “cinematograph” shall be construed as including any work produced by any process analogous to cinematography including video films. In comparison to the definitions of other types of works, this definition seems to be exhaustive. Necessary conditions for a work to be a

35 See Section 2(c), Copyright Act, 1957. 36 “Work of sculpture” includes casts and models. See Section 2 (za), Copyright Act, 1957. 37 “Engravings” include etching, lithographs, wood-cuts, prints and other similar works, not being photographs. See Section 2 (i), Copyright Act, 1957. 38 “Photograph” includes photo-lithograph and any work produced by any process analogous to photography but does not include any part of a cinematograph film. See Section 2 (s), Copyright Act, 1957. 39 “Work of architecture” means any building or structure having as artistic character or design, or any model for such building or structure. See Section 2 (b), Copyright Act, 1957. 40 2002 (24) PTC 427 (CB), Zakir T. Thomas, Registrar delivered the opinion. 41 See Section 2(f), Copyright Act, 1957.

[28] NLIU Journal of Intellectual Property Law cinematograph film are: (i) there must be a visual recording, and (ii) that recording must be produced through a process from which a moving image may be produced. In short a “cinematograph film” is a combination of moving visual recording which can be reproduced. The Act has created a separate copyright in respect of a cinematograph film.42 Section 13 of the Act recognizes ‘cinematograph film’ as a distinct and separate class of ‘work’.43 Owing to the scientific advancement, the technologies those are analogous to produce the same result, as that of a cinematograph film had, been held by Courts44 to be included under the definition of a cinematograph film. Before the amending Act 38 of 199445 the Courts have declared that television and video films are cinematograph film46 but after this amendment the Parliament has put this controversy at rest by expressly including video films in the definition of cinematograph film. The copyright in a cinematograph film is infringed only when actual copy is made of a film by a process of duplication i.e., by using mechanical contrivance that it falls under Section 14(d) (i). The expression ‘to make a copy of the film’ would

42 See Entertaining Enterprises, Madras v. State of Tamil Nadu, AIR 1984 Mad 278 (DB). 43 See Indian Performing Right Society Ltd. v. Eastern Indian Motion Pictures Association, [1977] 3 SCR 206. 44See, supra n.42; Tulsidas v. Vasanthakumari, [1991] 1 LW 220 and Cine India v. Muthu Enterprises, [1992] 1 LW 74. 45 Amendment was brought into force with effect from May 10, 1995. 46 See, supra n.42 at 278, 290 in which it was observed: As a result of the inclusive definition of cinematograph film including any work produced by any process analogous to cinematography, the exhibition of film right was recognized in a television through video tapes in which a cinematograph film is recorded, will also fall within the definition of cinematograph film. Though there is no separate provision creating a copyright in a video film, we have to hold that since video tape comes within the expression “cinematograph film” in view of the extended definition contained in the Act, the copyright should also be taken to have been created in respect of a video film under the Copyright Act, 1957. In Raj Video Vision v. K. Mohanakrishnan, AIR 1998 Mad 294, 298 in which the Court has observed: In Rathna Movies v. Muthu Enterprises, (1991) 2 LW 581, 586 this Court held that it is well established principle of case laws that both the video and television are cinematograph and that both jointly and severally become the appara.tus for representation of movie pictures or series of pictures, and that the video is an appliance capable of, use for the reception of sign, signals, images and sounds. When a Video Cassette Recorder is used for playing pa-recorded cassettes of movies on the television screen it is certainly used as art appara.tus for the representation of moving pictures or series of pictures and comes within the definition of cinematograph as defined under the Cinematograph Act. The above decision has to be affirmed for the proposition that both video and television are cinematograph.

[29] Qualifications of Copyright Candidate in India mean to make a physical copy of the film itself and not an another film which merely resembles the film.47 In order to constitute infringement of copyright two elements must be present. First, there must be sufficient objective substantial similarity between the allegedly infringing cinema and the copyrighted cinema. Secondly, the copyrighted cinema must be the source from which the infringing work is derived, but, it need not be the direct source.48 It is therefore, abundantly clear that a protectable copyright comes to vest in a cinematograph film on its completion which is said to take place when the visual portion and audible portion are synchronized.49 “Sound recording” 50 means a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is the method by which the sounds are produced. This definition is exhaustive. In short “sound recording” is a recording of sounds which can be reproduced. In Gramophone Co. of India Ltd. v. Supper Cassette Industries Ltd., the Court observed as under: [P]rinted or written word or something graphically produced or reproduced relates to the visual and in some cases to the sensation of touch. A written or printed word produces no sensation in the organs of hearing. Sound, on the other hand, produces such sensation when the surrounding air is set in vibration in such a way as to affect these. Sound, thus, is not a printed or written word. It is the audible articulation corresponding to them.51 Explaining the meaning of “sound recording” the Court observed: The definition of “sound recording” in Section 2(xx), in fact, distinguishes between the material/medium on which the sound is recorded and the recording itself. This is clear from the use of the words in the definition “means a recording of sounds” and not the words means the “material containing the recording of sounds”. Secondly the words in Section 2(xx): “regardless of the medium on which such recording is made or the method by which the sounds are produced” militates against ...[the] submission[s], both as

47 See Star India Pvt. Ltd. v Leo Burnett (India) Pvt. Ltd., 2003(2)BomCR655. para 6. 48 See Raj Video Vision v. K. Mohanakrishnan, AIR 1998 Mad 294, 297. 49 See supra n.43, at 221. 50 See Section 2 (xx), Copyright Act, 1957. 51 See Gramophone Co. of India Ltd. v. Super Cassette Industries Ltd., 1995IIAD(Delhi)905, para. 13.

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regards the medium on which the recording is made as well as the method by which the recording is made and the sounds are produced from such medium[52]. The copyright subsists, therefore, in the sound recording meaning thereby that particular recording of the musical and literary work transposed on the medium by any process. ... [T]his does not obliterate the separate copyright that exists in the underlying musical and literary works independent of or otherwise than as contained in the authorized sound recording. It can hardly be suggested that the producer of the sound recording has a copyright in the hardware/medium. He cannot possibly acquire a copyright, if there is one, in hardware by recording therein a performance of musical and literary works. Nor can he thereby possibly acquire a copyright, assuming there is one, in the technological process of recording sounds on to a medium. The producer of a sound recording would then not acquire a copyright in anything at all. The interpretation would render Section 14 (e) (i) otiose.”53 While interpreting the provisions of Section 14 (e) (i) & (iii) of the Act as to the meaning and scope of copyright in “sound recording”, the Court further observed: That this interpretation is erroneous is also clear from Section 14 (e) (iii) which permits the owner of a copyright in a sound recording to communicate the sound recording to the public. Section 14(e)(iii) entitles him “to communicate the sound recording to the public.

52 See, Music Broadcast Private Ltd. v. IPRS, 2011(113) BomLR3153, para. 25. It was argued by one of the parties that: [A] sound recording is only the medium i.e. the hardware such as a compact disc, cassette or record on which the recording is made and from which sounds are produced. This, he stated, was the product of technological developments and innovations over the years entailing the fixing/fixation of sounds on a particular medium. In other words, according to him, a sound recording comprises of the hardware and the technical process of recording the sounds and nothing more. It does not include the sounds viz. the musical and literary works.” The above argument was disapproved by the court which observed that, “The submission is contrary to the plain language of Section 2(xx). In [such a] case the section would have been worded entirely differently.” 53 See id. at para. 26, 27.

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The [argument] that sound recording only means the material / hardware and the technological innovation in making the same and nothing more, if accepted, would in effect require Section 14 (e)(iii) to be read thus: to communicate the material on and the technological process by which the sounds are recorded to the public.”54

The Court further observed: The owner of the material/hardware does not communicate the material/hardware even assuming he is the owner of the copyright, in the hardware. It is difficult to understand how hardware can be communicated to the public especially by broadcasting it. It is equally difficult to see how the technological or scientific innovation enabling the making of a sound recording is or can be communicated to the public by broadcasting the sound recording. The listener of a broadcast on an FM station does not see the hardware when the sound recording is broadcast. The listener does not see or hear the technological or scientific innovation. Neither of these elements can be communicated to the public. It is axiomatic, therefore, that what the Legislature intended by Section 14(1)(e)(iii) was the right to communicate the sound recorded on the material by whatever device.”55 In the light of above discussion, this Part of the Paper may be concluded by noting that as to the meaning of “work” in the sense of copyright law, the work must be a work in the sense of the provisions of Section 13 read with Section 2 (y) of the Act. The Supreme Court has observed that the types of work are not exclusive of each other, but one work may have an interface with the other.56 In this Part we have identified the candidate eligible for the protection of copyright. Now we move on to explain the

54 Id at para. 28. 55 Id. at para. 29. 56 See Academy of General Edu., Manipal v. B. Malini Mallya, AIR 2009 SC 1982, 1987(FB), the Court observed as under : Broadly speaking, a dramatic work may also come within the purview of literary work being a part of dramatic literature.

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requirement of originality, the second essential qualification that the candidate must possess to claim protection under the copyright law.

II. REQUIREMENT OF ORIGINALITY

The term ‘original’ has been used in the Act. But the same has not been defined or explained by or under the Act. Dictionary meaning of the term "original" is ‘first or earliest . . . newly formed or created; not copied or imitated’57. It is italicized dictionary meaning which is relevant for our purposes. The term ‘originality’ in the copyright law sense is narrower than its dictionary sense. As per the Copyright Act, 1957, the classification of works in which copyright subsists has been provided in Section 13. Therefore, emphasis is on the “originality.58“ To claim protection under the copyright law a work is required to be original though the threshold of originality varies from work to work. Section 13 of the Act provides as under: Works in which Copyright subsists.- (1) 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; Section 13 recognizes three classes of work in which copyright can subsist. The works enumerated in clause (a) of Section 13 have a qualifier “original”. But the works mentioned in clauses (b) and (c) do not have the qualifier “original”. It follows from here that ‘originality’ is an essential qualification for the works mentioned in clause (a). But for the works mentioned in clauses (b) and (c) there seems to be no requirement of originality59. However, the provisions of Section 13 (3) makes it abundantly

57 See OXFORD ADVANCED LEARNER’S DICTIONARY OF CURRENT ENGLISH, 592 (Delhi, Oxford University Press, 1987). 58 Glaxo Orthopaedic U.K. Ltd. v. Samrat Pharm, AIR 1984 Delhi 265. 59 In supra n.22, 829. the Court observed: Copyright Act of 1957, which is the current statute, has followed and adopted the principles and provisions contained in the U.K. Act of 1956 along with introduction of many new provisions. Reference on this point therefore can be made to Hansard, H.L. Vol.493, cols 1057; HL Deb 23 February 1988 vol. 493 cc1054-120 for the proposition that the requirement of ‘originality’ is deliberately omitted in case of “sound recording”and “cinematograph film”.

[33] Qualifications of Copyright Candidate in India clear that even in case of cinematograph film and sound recording copy of copyrighted work will disqualify such works from copyrightablity.60 Now we move on to explain the meaning of originality in general as enunciated by the Courts. In Eastern Book Company, the Supreme Court explaining the meaning of 'originality' observed as under:

The word ‘original’ does not mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought, and in the case of literary work, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work - that it should originate from the author; and as regards' compilation, originality is a matter of degree depending on the amount of skill, judgment or labor that has been involved in making the compilation. The words 'literary work' cover work which is expressed in print or writing irrespective of the question whether the quality or style is high. The commonplace matter put together or arranged without the exercise of more than negligible work, labor and skill in making the selection will not be entitled to copyright. The word 'original' does not demand original or inventive thought, but only that the work should not be copied but should originate from the author. In deciding, therefore, whether a work in the nature of a compilation is original, it is wrong to consider individual parts of it apart from the whole. For many compilations have nothing original in their parts, yet the sum total of the compilation may be original. In such cases the courts have looked to see whether the compilation of the unoriginal material called for work or skill or expense. If it did, it is entitled to be considered original and to be protected against those who wish to steal the fruits of the work or skill or expense by copying it without taking the trouble to compile it themselves. In each case, it is a question of degree whether the labor or skill or ingenuity or expense

60 See infra Part 2.5 of this Paper.

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involved in the compilation is sufficient to warrant a claim to originality in a compilation. Originality therefore means 'not a copy'. The meaning of 'copy' is also not given in the Act. However, the term 'infringing copy' is defined at two places in the Act. Section 2 (m) of the Act provides as under: “infringing copy” means: (i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof otherwise than in the form of a cinematograph film; (ii) in relation to a cinematograph film, a copy of the film made on any medium by any means; (iii) in relation to a sound recording, any other recording embodying the same sound recording, made by any means; (iv) in relation to a program or performance in which such a broadcast reproduction right or a performer's right subsists under the provisions of this Act, the sound recording or a cinematograph film of such program or performance, if such reproduction, copy, or sound recording is made or imported in contravention of the provisions of this Act.

Explanation to the provisions of Section 51 of the Act provides: For purposes of this Section, the reproduction of a literary, dramatic, musical or artistic work, in the form of a cinematograph film shall be deemed to be an “infringing copy”. The gist of “copy” therefore seems to be “reproduction”61. In R.G. Anand v. Deluxe Films62for the meaning of originality reference was made to an

61See Ladbroke (Football), Ltd v. William Hill (Football), Ltd., [1964] 1 All E.R. 465, 469. Lord Reid observed as under: Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. If he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what has been taken. One test may be whether the part which he has taken I novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So I may sometimes be a convenient shortcut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiff’s work as a whole is “original” and protected by copyright, and then to inquire whether the part taken by defendant is substantial. A wrong result can easily be reached if one begins by dissecting the plaintiff’s work and asking, could Section A be the subject

[35] Qualifications of Copyright Candidate in India

English decision for the proposition that “a copy is that which comes so near to the original as to give to every person seeing it the idea created by the original”63. Therefore, we may say that “what is not original is a copy” and “a copy gives an irresistible impression of the original”. Both the terminologies ‘copy’ and ‘original’ are referral points of each other and are both a ‘determinant’ and ‘determined’ at once. These terms are complementary and supplementary to each other and are circuitous by nature. The Supreme Court has said it time and again that “copy” must be “a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.” 64 As to the provisions of subsections (2) and (3) of Section 1365 of the Act, it has been observed by the Court that: The rights of the owners of the copyrights in each type of work are prescribed by the provisions of the Act. Chapter IV deals with the ownership of copyright and the rights of the owner. Section 14 stipulates the exclusive right to do or authorize the doing of the acts mentioned therein in respect of a

of copyright if it stood by itself, could Section B be protected if it stood by itself , and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole can not be. Indeed, it has often been recognized that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright. 62 R.G.Anand v. Delux Films, [1979] 1 SCR 218. 63 See Hanfstaengl v. W.H. Smith and Sons, [1905] 1 Ch. D. 519 cited in R. G. Anand, [1979] 1 SCR 218, 230. 64 See Academy of General Edu., Manipal v. B. Malini Mallya, AIR 2009 SC 1982 (FB). 65 Section 13(2) Copyright shall not subsist in any work specified in sub-Section (1), other than a work to which the provisions of Section 40 or Section 41 apply, unless,- (i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the time of his death, a citizen of India; (ii) in the case of an unpublished work other than [a work of architecture] the author is at the date of the making of the work a citizen of India or domiciled in India; and (iii) in the case of work of architecture the work is located in India. Explanation.- in the case of a work of joint authorship, the conditions conferring copyright specified in this sub-Section shall be satisfied by all the authors of the work. (3) Copyright shall not subsist- (a) in any cinematograph film a substantial part of the film is an infringement of the copyright in any other work; (b) in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has been infringed.

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work or any substantial part thereof. Rights which may be exercised in respect of each class of work are stipulated in Section 14. Section 14 does not indicate any order of priority between the different classes of works. Nor does it place any particular work above the others. It merely prescribes the rights that can be exercised in respect of each class of work.66 According to the Supreme Court of India: The definition of the term ... ‘sound recording’ must be given a wide meaning. Clause (a) of Section 13 protects original work whereas Clauses (b) and (c) protect derivative works. It provides for commercial manifestation of original work and the fields specified therein. Clause (a) of Sub-Section (1) of Section 14 deals with original work. It is extremely broad. In contrast thereto, the copyright on films or sound recording work operates in restrictive field; they provide for a restrictive right as would appear from the provisions contained in Section 14(1) (e) of the Act.67 While explaining the differences between the Section 13 (1) (a) and that of (b) & (c) the Supreme Court further observed as under: It must also be noticed that whereas the term of a copyright in original literary, dramatic, musical and artistic works not only remains protected in the entire life time of the author but also until 60 years from the beginning of the calendar year next following the year in which the author dies, the term of copyright in sound recording subsists only for 60 years, but as indicated hereinbefore, the same would not mean that the right of an owner of sound recording is in any way inferior to that of right of an owner of copyright on original literary work etc.68 In another case the Court observed as under: “[A]lthough Clauses (b) and (c) of Section 13 protects derivative works in a restricted field, whereas Clause (a) thereof protects original works in a broader field, it does not mean that the rights of an owner of a sound recording are, in any way, inferior to those of an owner of copyright in the original literary or musical work.”69

66 supra n.52, at 22. 67 Entertainment Network (India) Ltd. v. Super Cassette Industries, 2008 (37) PTC 353 (SC). 68 Id. 69supra n.52.

[37] Qualifications of Copyright Candidate in India

Now we move on to explain the threshold of originality as enunciated by the Courts for each type of works in particular.

1. Threshold of Originality in Literary Work

Although the Courts have observed that a ‘copyright’ is merely the right of multiplying copies of a published writing and has nothing to do with the originality or literary merits70, yet this paper argues that ‘originality’ is an essential qualification of the claimant of copyright. In University of London Press, Limited v. University Tutorial Press, Limited71 it has been observed: The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought; and in the case of ‘literary work’, with the expression of thought in print or writing. The originality which is required relates to the expression of the thought. But the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work- that it should originate from the author.

In Ladbroke (Football) Ltd.72 while dealing with the concept of originality and infringement in a compilation work the Court held that: The correct approach in deciding if there is infringement of copyright in a literary compilation is first to determine whether the work as a whole is entitled to copyright, and second, to enquire whether the part reproduced by the defendant is a substantial part of the whole; but it is not the correct approach to dissect the work into

70 supra n.27, at para. 33. The Court observed: Lord Davey in his judgment pointed out that copyright is merely the right of multiplying copies of a published writing and has nothing to do with the originality or literary merits of the author or composer, and that the appellant in that particular case only sought to prevent the respondents from multiplying copies of this (the appellant's own report of the speech of Lord Rosebery) and availing himself for his own profit of the skill, labor and expense by which that report was produced and published. 71 University of London Press, Limited v. University Tutorial Press, Limited, [1910] 2 Ch 601. Also see, Macmillan And Company Ltd. v. K. and J. Cooper (1924)26BOMLR292 and Camlin Private Limited v. National Pencil Industries, [2002] 96 DLT 8. 72 supra n.61.

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fragments and, if the fragments are not entitled to copyright, to deduce that the whole compilation could not be so entitled. 73

Courts have recognized that it is not possible to lay down a precise test to determine originality. It is much easier to arrive at what does not; than to define what does constitute the proper test74. So it depends on the subject matter put to test as well as on the facts of the individual case, wherein all the reasons may not be explained in words but the effect produced upon the mind75 helps the judges to reach a conclusion. The issue must be solved by the judiciary by taking each of the works to be compared as a whole,76so as to comparatively determine the degree of imitation of the original work. It should be analyzed by the Courts that, whether any mischief which the Act has been designed to repress has been committed by the infringing party77.

73Id. 74 House of Lords in Hanfstaengl v. Baines and Co., [1895] A. C. 26, Lord Watson states: The possibility of laying down any canon which will afford in every case a useful test of what constitutes a copy or colourable imitation of the work or its design is in my opinion, very doubtful. At all events, it is much easier to arrive at what does not than to define what does constitute the proper test. 75 In C. Cunniah and Co. v. Balraj and Co., [1961] AIR Mad111, the Court held: In arriving at a conclusion …, we find ourselves In a … predicament being unable to put into words all the reasons for our conclusion, though we are certain that the effect produced upon our minds by a study of the two pictures is that the defendants picture is a copy of the plaintiffs'. Also, the Court goes on to quote Lord Herschell L. C. in Hanfstaengl v. Baines and Co., as under: Lord Herschell L. C. in delivering his speech if that case, after referring to the similarities and dissimilarities which led him to conclude that the defendants' sketches were not copies of the plaintiffs printing, concluded thus: “My Lords, it is difficult, if not impossible, to put into words all the reasons which lead to the conclusion arrived at on such a question as that now before your Lordships. I have tried to Indicate some of those which have led me to my conclusion; but it depends really on the effect produced upon the mind by a study of the picture, and of that which is alleged to be a copy of it, or at least of its design. ” 76 supra n.74, according to Lord Shand: All that can I think be said is that the question of infringement of the right depends on the degree of resemblance. It must be solved by taking each of the work to be compared as a whole and determining whether there is not merely a similarity or resemblance in some leading feature or in certain of the details, but whether, keeping in view the idea and general effect created by the original, there is such a degree of similarity as would lead one to say that the alleged infringement is a copy or reproduction of the original or the design – having adopted its essential features and substance. 77 Id. Lord Macnaghten observed:

[39] Qualifications of Copyright Candidate in India

In view of the above it may be said that:

i. The word ‘original’ does not in this connection mean that the work must be the expression of original or inventive thought. ii. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought; and in the case of ‘literary work,’ with the expression of thought in print or writing.

The requirement of originality contributes in maintaining the interests of the author as well as that of public in protecting the matters in public domain78that is you cannot take the work from the public domain and claim copyright for it. The word ‘original’ used in Section 13 does not imply any originality of ideas but merely means that the work in question should not be copied from some other work but should originate from the author, being the product of his labor and skill79. For originality neither an original thought nor original research is a required80. A work of compilation may be a mediocre one, but if involves labor and skill81 it meets the requirement of originality. Extent or amount of originality in expression or material form

If the object of the Act be … to protect the reputation of the artist and to preserve … the commercial value of the artist’s work … complained of are not within the mischief which the Act was designed to repress … they cannot I think by any possibility have any injurious effect on the artist’s reputation,…commercial value of artist’s work, or come into competition with it, or reproduction of it. In these circumstances, in a case in which there has been no unfair use and no copying of anything which the artist can claim as his, … it would be straining the Act unduly and using it to no good purpose … to any relief under the provisions of the Act. 78 supra n.22. 79 Agarwala Publishing House v. Board of High School and Intermediate Education. AIR 1967 All 91. 80 Mishra Bandhu Karyalaya v. Shivaratanlal Koshal AIR 1970 MP 261. Neither original thought nor original research is essential for a literary work to be original under Section 1, Schedule I, of the Indian Copyright Act, 1914. 81 supra n.25. A syllabus is prescribed for the examination in each subject and in setting questions the paper-setter has to keep in view the syllabus and the questions must be set within the four corners of that syllabus. The questions should not be lengthy as they have to be answered within specified hours. The questions should be such so that they cover the entire syllabus as far as practicable. These things have to be kept in constant view by a paper- setter and he has to devote himself and apply his mind for the purpose of selecting and arranging the questions, even if he chooses to take the help of some text books for picking out his questions. Section 2(c) itself indicates that “literary work” includes compilations as well.

[40] NLIU Journal of Intellectual Property Law may be very small, but that small amount is protected by law82. Whether enough work, labor and skill is involved, and what its value is, must always be a question of degree.83 Therefore much depends on the skill, labor, knowledge and the capacity to digest and utilize the raw materials contributed by others in imparting to the product the quality and character which those materials did not possess and which differentiates the product from the materials used84. In other words, the whole of the expression must be more than the sum total of the expression available in the public domain. The fact that one man has produced a work, does not take away from any one else the right to produce another work of the same kind and in doing so to use all the materials open to him85. Not every author has the art or the necessary skill to make a compilation nor all compilations are of the same nature or quality86. All books are capable of having a copyright in them.87 Originality does not mean that the composition must be new, non-obvious and revolutionary as most of the literary works are incremental and

82 Govindan v. Gopalkrishna, AIR 1955 Mad 393. 83 supra n.61. Lord Hodson observed as under: [C]ommonplace matter put together or arranged without the exercise of more than negligible work, labor and skill in making the selection will not be entitled to copyright. (quoting Lord Porter in Cramp & Sons, Ltd. v. Frank Smythson Ltd., [1944] 2 All E.R.at p. 97; [1944] A.C. at p. 340. “Whether enough work, labour and skill is involved, and what its value is, must always be a question of degree.” 84 V Errabhadrarao v. B N Sarma, AIR 1960 AP 415. 85supra n.23. The Court observed as under: In the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from materials which are open to all, the fact that one man has produced such a work does not take away from any one else the right to produce another work of the same kind, and in doing so to use all the materials open to him. 86 Mishra Bandhu Karyalaya v. Shivaratanlal Koshal, AIR 1970 MP 261, the Court observed that: [T]he originality in writing of a successful text-book in a subject like arithmetic lies upon the skill of the author. Some authors have not the art or the necessary skill to make a compilation nor are all compilations of the same nature or quality. That is the reason why one dictionary, gazetteer, grammar, map, almanac, encyclopedia, guide-book, etc., would sell and not the others. There lies the skill of the author of the work which brings to him commercial success. The contention that no originality can be claimed in such works can, therefore, hardly be accepted. For instance, a reference to the Shorter Oxford Dictionary or the Webster's New International Dictionary would plainly show the difference in treatment of the same words in contrasting ways. 87Id. the Court further held: Thus, it is clearly recognized that all such books are capable of having a copyright in them. In text-books on arithmetic or books of the above description, the amount of originality of the author may be small, but the extent of his thought, skill and labour may be tremendous, and it is that which is protected by law.

[41] Qualifications of Copyright Candidate in India evolutionary in character.88. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.89 . It is a well- accepted principle of copyright law that there is no copyright in the facts per se, as the facts are not created nor have they originated with the author of any work which embodies these facts90. However, work having some character and quality of its own different from the raw material91 used may not qualify as an “original work”. The Supreme Court in the Eastern Book Company v. D. B. Modak considered the two doctrines followed by the courts these are (i) doctrine of 'Sweat of the Brow'92 and (ii) doctrine of 'Creativity'93. The Court describing these two doctrines as "too low" and "too high" standard of originality constructed a middle path - following CCH Canadian Ltd. v. Law Society of Upper Canada94- of "modicum of creativity", "minimum amount of

88supra n.84. By an original composition we do not mean to convey that it is confined to a field which has never been traversed hitherto by any other person or persons, either in respect of ideas or material comprised therein. Indeed such contributions are few, as most works must depend upon the contribution of others, using them as steps in aid of reaching a particular object which may be original In its design and conception. 89 supra n.56. 90 supra n.22. Also see R.G. Anand v. Delux Films, [1979] 1 SCR 218. 91 Nag Book House v. State of West Bengal, AIR 1982 Cal 245. The syllabi merely prescribing the guidelines to be followed by the textbook writers cannot be termed as an original work having some character and quality of its own different from the raw material used. 92 The Supreme Court referred to the following case law: Ladbroke (Football) Ltd. v. Willim Hill (Football) Ltd., Walter v. Lane [1900] AC 539 (HL), Designers Guild Ltd. v. Russell Williams (Textiles) Ltd, University of London Press Limited v. University Tutorial Press Limited [1916] 2 Ch 601, Kelly v. Morris, Parry v. Moring and Gollancz, Cop Cas, Gopal Das v. Jagannath Prasad and Anr., AIR 1938 All 266, V . Govindan v. E.M. Gopalakrishna Kone and Anr., AIR 1955 Mad 391, C. Cunniah S Co. v. Balraj S Co., AIR 1961 Mad 111, Agarwala Publishing House v. Board of High School and Intermediate Education, AIR 1967 All 91, Gangavishnu Shrikisondas v. Moreshvar Bapuji Hegishte, ILR 13 Bom 358, Rai Toys Industrie. v. Munir Printing Press, 1982 PTC 85, Macmillan and Anr. v. Suresh Chandra Deb, ILR 17 Cal 952. 93 The Supreme Court referred to Feist Publications Inc. v. Rural Telephone Service Co. Inc, Matthew Bender & Co., Inc. v. West Publishing Co., 158 F.3d 674 (2nd Cir. 1933). 94 The Supreme Court of Canada in the matter of CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 (1) SCR 339 (Canada) has noticed the competing views on the meaning of original. The court held that: [T]hose cases which had adopted the sweat of the brow approach to originality should not be interpreted as concluding that labor, in and of itself, would be a ground for finding of originality … On consideration of various cases, it was held that to be original under the

[42] NLIU Journal of Intellectual Property Law creativity" or "some amount of creativity" based on "skill and judgment" applied by the author to a primary work to create a derivative work. The Supreme Court made it categorically clear that: We make it clear that the decisions of ours would be confined to the judgments of the courts which are in the public domain as by virtue of Section 52 of the Act there claim copyright in a compilation, the author must produce the material with exercise of his skill and judgment which may not be creativity in the sense that it is novel or … non-obvious, but at the same time it is not a product of merely labor and capital. The derivative work produced by the author must have some distinguishable features and flavor to raw text of the judgments delivered by the court. The trivial variation or inputs put in the judgment would not satisfy the test of copyright of an author. In view of the above observation of the Court, there remains no doubt that the middle path of "modicum of creativity", "minimum amount of creativity" or "some amount of creativity" based on "skill and judgment" is the test of originality "confined to the judgments of the Court". The Supreme Court in this case has defined the limits of the ratio only to the judgments of the Courts available in the public domain. The limitation put on the ratio of the case by the deciding court cannot be avoided or extended to the areas explicitly excluded by it. If we want to take the ratio of this case to a higher level of abstraction, the highest level of abstraction will be

Copyright Act the work must originate from an author, not be copied from another work, and must be the product of an author's exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. Creative works by definition are original and are protected by copyright, but creativity is not required in order to render a work original. The original work should be the product of an exercise of skill and judgment and it is a workable yet fair standard. The sweat of the brow approach to originality is too low a standard which shifts the balance of copyright protection too far in favor of the owner's right, and fails to allow copyright to protect the public's interest in maximizing the production and dissemination of intellectual works. On the other hand, the creativity standard of originality is too high. A creative standard implies that something must be novel or non-obvious - concepts more properly associated … with patent law than copyright law. By way of contrast, a standard requiring the exercise of skill and judgment in the production of a work avoids these difficulties and provides a workable and appropriate standard for copyright protection that is consistent with the policy of the objectives of the Copyright Act. Thus, the Canadian Supreme Court is of the view that to claim copyright in a compilation, the author must produce a material with exercise of his skill and judgment which may not be creativity in the sense that it is not novel or non- obvious, but at the same time it is not the product of merely labor and capital.

[43] Qualifications of Copyright Candidate in India

"derivative works" and by no stretch of construction or imagination the test laid down in this case can be extended to cover primary works. The threshold of originality in the "primary works", therefore, still remains the same, i.e., of the "Sweat of the Brow", wherein the four determinant factor are (i) Skill, (ii) Judgment, (iii) Labor and (iv) Capital seems to remain the determinants of originality. This distinction between the thresholds of "primary works" and "derivative works" seems to reasonable and plausible for creation of primary works by and in itself is original whereas creation of derivative work is necessarily based on some other works. It is submitted, however, that there will hardly be any work which is truly and strictly primary. Following explains the threshold of originality in dramatic work.

2. Threshold of Originality in Dramatic Work

The Court reiterating the test of substantial similarity observed as under: Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative to the intention to copy95 the original and the coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into existence.96 R.G. Anand v. Delux Films involved a question whether there was an infringement of copyright of a dramatic work by a cinematograph film. Answering this question in negative the Court observed as under: The position appears to be that an idea, principle, theme, or subject matter or historical or legendary facts being common property cannot be the subject matter of copyright of a particular person. It is always open to any person to choose an idea as a subject matter and develop it in his own manner and give expression to the idea by treating it differently from others. Where two writers write on the same subject similarities are bound to occur because the central idea of both are the same but the similarities or coincidences by themselves cannot lead to an irresistible inference of plagiarism or piracy.

95 Emphasis supplied. 96 supra n.56.

[44] NLIU Journal of Intellectual Property Law

Take for instance the great poet and dramatist Shakespeare most of whose plays are based on Greek-Roman and British mythology or legendary stories like Merchant of Venice, Hamlet, Romeo Juliet, Jullius Caesar etc. But the treatment of the subject by Shakespeare in each of his dramas is so fresh, so different, so full of poetic exuberance, elegance and erudition and so novel in character as a result of which the end product becomes an original in itself. In fact, the power and passion of his expression, the uniqueness, eloquence and excellence of his style and pathos and bathos of the dramas become peculiar to Shakespeare and leaves precious little of the original theme adopted by him. . . .similarities as exist between the stage play ...and the film ... do not make out a case of infringement. The dissimilarities, ... axe so material that it is not possible to say that the ... copyright has been infringed.” . . .it is not necessary, ... for the Court to examine all97 the several themes embraced within the plot of the [work] in order to decide whether infringement has been established.98 It is submitted that we have not been able to find a case law in which the Court has enunciated the threshold of originality in dramatic works. The question of originality has arisen in infringement proceedings. The question of originality has not arisen in relation to the issue whether a dramatic work is original. Following seeks to explain the threshold of originality in case of musical works.

3. Threshold of Originality in Musical Work

In Ram Sampath v. Rajesh Roshan99 explaining the threshold requirement of originality in musical work, the Court observed as under: [T]he following factors would be required to be taken into consideration. First is to identify the similarities and the differences

97 Emphasis added. 98 supra n.62. 99 See Ram Sampath v. Rajesh Roshan, 2009 (40) PTC 78, 85(Bom).

[45] Qualifications of Copyright Candidate in India

between the two works. Second is to find out whether the latter would meaningfully exist without the copied part. It may be necessary to find the soul of a musical work. The soul cannot be determined merely by comparing the length of the part copied but whether the part copied is an essential part of a musical work. Though a musical work may have a length of several minutes, the listener often remembers a “catch part” to which he is immediately hooked on. It is necessary to look for such “catch part” or the “hook part”. If the “catch part” or hook part, howsoever small, is copied the whole of the latter work would amount to actionable infringement. It is necessary to remind oneself that the desire, of an infringer, is necessarily to copy “the attractive”, “the catchy”, “the grain” and leave the chaff, for he would attract the audience only by the attractive, and not by the ordinary. These factors are only illustrative and there would be many other factors which may be required to be looked into depending upon the facts and circumstances of each case. The position taken by the Supreme Court of India in the R.G. Anand v. Delux Films100 has been relied upon by the Delhi High Court in its decision while laying down the test for determining the originality of a musical work. The court held as under: The … position of the law laid down by the Hon'ble Supreme Court applies clearly in …[a] case … [where] : (a) The … work is nothing but a colorable imitation of the original musical soundtrack … with some minor and insignificant variations. (b) A lay listener though not an expert listener, on hearing both the works will unmistakably get the impression that the …work [in question] is not different from the original. (c) There [is] no material or broad dissimilarities which negative the … intention to copy the original except … (d) This court should look strictly at such examples of copying.101

100 supra n.62. 101 Super Cassette Industries Limited v. Bathla Cassette Industries Pvt. Limited, 2003 (27) PTC 280 (Del).

[46] NLIU Journal of Intellectual Property Law

The Court extended the logic of “lay observer test” laid down in R.G. Anand to musical work by supplanting “lay observer test” with “lay listener test”. The test of substantive similarity between the two works was once again reiterated by the Court. It is noticeable that the question of originality in case of musical work has only arisen in infringement proceedings. Following explains the threshold of originality in artistic work.

4. Threshold of Originality in Artistic Work

In determining the threshold of originality in case of artistic work, the Court in Microfibres Inc. v. Girdhar & Co., has observed as under:

a. The definition of “artistic work” has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. It may be two dimensional or three dimensional. The artistic work may or may not have visual appeal.

b. The rights to which a holder of an original artistic work is entitled are enumerated in Section 14(c) of the Copyright act.

c. It is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. For example, a drawing of an imaginary futuristic automobile, which is an original artistic work, may be reproduced in the three-dimensional material form using an element, such as a metal sheet.

d. The design protection in case of registered works under the Designs Act cannot be extended to include the copyright protection to the works which were industrially produced.

e. A perusal of the Copyright Act and the Designs Act and indeed the Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc and lesser protection to

[47] Qualifications of Copyright Candidate in India

design activity which is commercial in nature. The legislative intent is, thus, clear that the protection accorded to a work which is commercial in nature is lesser than and not to be equated with the protection granted to a work of pure Article

f. The original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright protection as evident from the definition of the design under Section 2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant.

g. This is precisely why the legislature not only limited the protection by mandating that the copyright shall cease under the Copyright Act in a registered design but in addition, also deprived copyright protection to designs capable of being registered under the Designs Act, but not so registered, as soon as the concerned design had been applied more than 50 times by industrial process by the owner of the copyright or his licensee.

h. In the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work per se.102

In an artistic work the threshold of originality is not dependant on the conception of a similar idea by the same artist or a different artist who creates a work as it was held in a decision of the Copyright Board that the artists who created the two artistic works, namely, [X] and [Y], may have been driven by similar ideas but then they applied their originality, skill,

102 Microfibres Inc. v. Girdhar & Co., 2009 (40) PTC 519 (Del).

[48] NLIU Journal of Intellectual Property Law knowledge and labor and the result of the efforts was an artistic work which is independent of each other and not a copy of the other103.

In another decision a High Court opined that:

The law protects originally of expression but not originality of the central idea, not merely because of the balancing of two conflicting policies. The first is that the law must protect originality of artistic work, thereby allowing artists to reap the fruits of their labor and stopping unscrupulous pirates from enjoying those fruits. The second policy is that the protection must not become an over protection, thus, curbing down future artistic activity. If mere plots and character were to be protected by copyright, on original artist could not write anything “original” at all, on a similar plot or on similar characters. The law recognizes these policies; but the law is also in accordance with, what could be called the idea of fair protection, even if that idea of fairness were to be formed by an artist or a writer, who does not know even a single thing about copyright law.104

In the above decision the Court defined the threshold of originality of an artistic work. In determining the threshold of originality and protection of an artistic work the Court further stated that:

The copyright law does not protect basic plots and stock characters. If it granted such protection, four or five writers writing 15 or 20 novels with stock characters and stock plots could stop all writers of pop literature from writing anything thenceforth.105 In another case the Court observed that “No doubt ... (titles) will not as a rule be protected, since alone they would not be regarded as a sufficiently substantial part of the book or other copyright document to justify the preventing of copying by others.”106

103 Abdul Rashid v. M.R. Bidi Factory, 2005 (30) PTC 287 CB. 104 Barbara Taylor Bradford v. Sahara Media Entertainment Ltd., 2004 (28) PTC 474 (Cal). 105 Id. 106 V.T.Thomas v. Malayala Manorama Co. Ltd., AIR 1988 Ker 291.

[49] Qualifications of Copyright Candidate in India

Following seeks to explain the threshold of originality in case of cinematograph films.

5. Threshold of Originality in Cinematograph Films

The threshold of originality in the case of ‘cinematograph film’ is lower than those in the case of literary, dramatic or artistic work for the term ‘cinematograph film’ is qualified by the term “original” under Section 13 (1) of the Act.107 In Star India Pvt. Ltd. v. Leo Burnett (India) Pvt. Ltd. the Court held as under: A comparative analysis of the provisions of Section 14(d) and (e) on the one hand and Section 14(a),(b) and (c) on the other, in the latter case the owner of the copyright has exclusive right to reproduce the work in ‘any material form. This is absent and excluded insofar as the former case (cinematograph film/sound recording). The exclusive right in the former is to copy the recording of a particular film/sound recording. It is, therefore, clear that production by another person of even the same cinematographic film does not constitute infringement of a copyright in a cinematograph film. It is only when actual copy is made of a film by a process of duplication i.e., by using mechanical contrivance that it falls under Section 14(d)(i). The expression ‘to make a copy of the film’ would mean to make a physical copy of the film itself and not an another film which merely resembles the film. The making of another film is not included under Section 14(d)(i) and such other film, even though it resembles completely the copyrighted film, does not fall within the expression ‘to make a copy of the film’. Therefore, if the film has been filmed or shot separately by a person and it resembles the earlier film, the subsequent film is not a copy of the first film and, therefore, does not amount to infringement of whole of the copyright of the first film. The position in the case of literary, dramatic or artistic work seems to be different. A narrow copyright protection is accorded to

107 Reference on this point can be made to Hansard, H.L. Vol.493, cols 1057; HL Deb 23 February 1988 vol. 493 cc1054-120 for the proposition that the requirement of 'originality' is deliberately omitted in case of “sound recording” and “cinematograph film”.

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film/sound recordings than for literary, dramatic or artistic work. The reason perhaps could be that they have to be original to satisfy the test of copyrightability, whereas the requirement of originality is absent for claiming copyright in cinematograph films/sound recordings. 108 Reiterating the above point, in Zee Entertainment Enterprises Ltd. v. Gajendra Singh,109 the Court observed that: As pointed earlier contrasting Sections 14(d) and (e) on the one hand and Sections 14(a), (b) and (c) on the other, in the latter case the owner of the copyright has exclusive right to reproduce the work in any material form. This is absent and excluded insofar as the former case (cinematograph film/ sound recording). The exclusive right in the former is to copy the recording of a particular film/sound recording. It is, therefore, clear that production by another person of even the same cinematographic film does not constitute infringement of a copyright in a cinematograph film. It is only when actual copy is made of a film by a process of duplication i.e. by using mechanical contrivance that it falls under Section 14(d)(i). The expression to make a copy of the film would mean to make a physical copy of the film itself and not another film which merely resembles the film. The making of another film is not included under Section 14(d)(i) and such other film, even though it resembles completely the copyrighted film, does not fall within the expression 'to make a copy of the film'. Therefore, if the film has been filmed or shot separately by a person and it resembles the earlier film, the subsequent film is not a copy of the first film and, therefore, does not amount to infringement of whole of the copyright of the first film. The position in case of literary, dramatic or artistic work seems to be different. A narrow copyright protection is accorded to a film/sound recording than for literary, dramatic or artistic work. The reason perhaps could be that they have to be original to satisfy the test of copyrightability, whereas the requirement of originality is absent for claiming copying in cinematograph films/sound recordings....

108 supra n.47. 109 2008 (36) PTC 53 (Bom) (SB).

[51] Qualifications of Copyright Candidate in India

It is submitted that the above approach of the Court cannot withstand the demands of Section 13 (3) of the Act which provides: Copyright shall not subsist – (a)in any cinematograph film a substantial part of the film is an infringement of the copyright in any other work; (b) in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has been infringed.

In view of the provisions of Section 13 (3), it may be safely concluded, or at least may be argued, that in case of works mentioned in clause (a) of Section 13 (1), it is immaterial whether the work claiming protection of copyright is a copy of a copyrighted work or a copy of an uncopyrighted work. To disqualify such works from copyrightability it is sufficient if the claimant is a copy of any work copyrighted or uncopyrighted. But in case of works mentioned in clauses (b) and (c) of Section 13 (1) the claimant cannot be denied copyright if it is copy of uncopyrighted work unless it is also shown that the claimant is a copy of a copyrighted work. Following explains the threshold of originality in sound recording.

6. Threshold of Originality in Sound Recording

The threshold requirement of originality in cinematograph film and sound recording seems to be the same for these works are not qualified by the word 'original'. It has been observed by the Courts that, “the right of an owner of sound recording is in any way inferior to that of right of an owner of copyright on original literary work, etc.”110 In case of a “sound recording” the owner of the copyright is the producer of the “sound recording”111. “The Legislature has conferred specific rights upon the owners of copyrights in

110 supra n.52. 111 See, Id. Also see Music Broadcast Private Ltd. v. IPRS, 2011 (113) Bom LR 3153 in this decision the Court opined on the ownership of copyright of a “sound recording” as : “Once a sound recording is made, it is only the producer, as the owner thereof, who can exploit it exclusively in the manner provided in Section 14(1)(e). However, those rights are confined to that particular sound recording and that sound recording alone. The owner of the sound recording can communicate the same to the public, inter-alia, by broadcasting it or playing it in public places. The owners of the underlying musical and literary work embodied in such sound recording cannot interfere with these rights of the owner of the sound recording qua that sound recording.”

[52] NLIU Journal of Intellectual Property Law each class of works and it is not open to the Court to restrict the rights based on the Court’s perception as to which of the works is more valuable or important than the other.”112 However, “the rights conferred upon the owner of derivative works [“sound recording” & “cinematograph films”] [is to be construed] in a restricted manner viz-a-viz the rights conferred by Sections 14 on the owners of copyright in the original work, is not well founded.”113 While explaining the requirement of originality in sound recording the Court quoted Nimmer on Copyright: A sound recording must be distinguished from, on the one hand, the material object on which the sound is recorded, and, on the other hand, the underlying musical composition, or dramatic or literary work that is recorded and transposed into aural form by the sound recording. Clearly, a sound recording copyright vests no proprietary rights in the material object as such. Likewise, the sound recording copyright does not attach to the underlying work per se, but only to the aural version of such work as fixed on the material object. A sound recording is, in this sense, a derivative work. Thus, the originality that may be claimed in a given musical work will not in itself constitute the originality necessary to support a copyright in a sound recording of such musical work. . . . . A phonorecord is a material object in which sounds are fixed. . . . Such sounds may consist of a literary, musical or dramatic work. No copyright may be claimed in a phonorecord as such, but a literary, musical or dramatic work will be eligible for copyright if it is fixed in any tangible medium of expression, including that of a phonorecord. See 203(B) supra. In addition, a separate copyright may be claimed in the manner in which such a work is performed or rendered on the phonorecord. This is the sound recording copyright. See 2.10 supra. The distinction may be summed up as the difference between a copyright in a Cole Porter song, and a copyright in Frank Sinatra’s recorded performance of that song. The former would be a musical work copyright and the latter would be a sound recording copyright, although both may be embodied in the same

112 Id. 113 Id.

[53] Qualifications of Copyright Candidate in India

phonorecord. Daboub v. Gibbons, 42 F. 3d 285, 388 (5th Cir. 1995) (Treatise quoted). A further distinction pertains between recorded performances and live performances. . . . The Court observed: The making of sound recording pursuant to authority to do so by the owners of the underlying works does not affect in any manner whatever, the existence of the copyright in the underlying works de- hors the sound recording. In particular, it does not prevent the owners of the copyright in the underlying musical and literary works from making any other sound recording embodying the same underlying work. This is clear from Section 14(1)(a)(iv) which provides that copyright means the exclusive right, inter-alia, to make any cinematograph film or sound recording in respect of a literary, dramatic or musical work not being a computer program. The word “any” makes this clear. This, of course, would be subject to a contract to the contrary. For instance, if the authors of the literary, dramatic or musical work agree to transfer all their rights in the underlying work to another subject to any statutory bar, they would divest themselves of any ownership right therein. However, absent any contract to this effect, the owners of literary and musical work retain the right to make any sound recording in respect of a work even though they may have permitted another to make a sound recording thereof.114 In another case, the Court observed as under: The limited rights conferred by Section 14(e) on the owner of copyright in a sound recording (viz. the exclusive right to make other sound recording embodying it; to sell or hire any copy of the sound recording; or to communicate the sound recording to the public) harmonizes with the rights which vest in the owner of the primary literary, dramatic and musical work utilized to make a sound recording. The owner(s) of copyright in the literary, dramatic and musical works can make or authorize the making of a new sound recording by utilizing the same literary, dramatic or musical work which may earlier have been utilized for making an earlier sound recording. This right is not abridged or taken away by the

114 Id.

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said provision. Therefore, it is permissible to make another sound recording, may be by utilizing the same or different set of musicians, singers or artists by utilizing the same literary, dramatic or musical work. The owner of the Copyright in the earlier produced sound recording cannot object to the making of such subsequent sound recordings or version recordings merely because he is the owner of the copyright in the earlier made sound recording. His exclusive rights are confined to the exploitation of ‘his’ work i.e. ‘his’ sound recording in which he owns the copyright and does not give him the right to interfere or intermeddle with the exploitation of copyright(s) in the original primary works viz. the literary, dramatic and musical works by the author(s). This position is clear from Sub-Section (4) of Section 13 of the Act, which states that the copyright in a sound recording shall not affect the separate copyright in any work in respect of which the sound recording is made. Any other interpretation would render Sub-Section (4) of Section 13 otiose, and nullify the copyrights conferred on the author of a literary, dramatic or musical work to make or authorize, inter alia, the making of any subsequent sound recording of his work, once his work has been utilized by any person to make a sound recording. From Section 2(m) it is clear that unless a sound recording actually embodies a previous sound recording or a substantial part thereof, there is no copying or infringement of the copyright of the owner of a sound recording. The copyright of the owner of a sound recording does not get infringed on account of the making of another sound recording by using the same original literary, musical or dramatic work.115 (a) In the light of the above, it may be said that in case of literary, dramatic, musical and artistic works the requirement of 'originality' is a directly essential qualification. And in case of cinematograph film and sound recording 'originality' is an indirect essential qualification. III. REQUIREMENT OF FIXATION

115 Gramphone Company of India Ltd. v. Super Cassette Industries Ltd., 2010 (44) PTC 541 (Del).

[55] Qualifications of Copyright Candidate in India

It is hypothesized that the Copyright Act, 1957 requires that for claiming copyright protection, subject matter of copyright must be tied to a physical, material or tangible form. “Fixation of work in a tangible medium” is an essential condition for copyrightability.116 To ‘fix’ means to make permanent117 or reify. Copyright Law of the United States of America explicitly provides that copyright subsists in creative works that are “fixed118 in any tangible medium of expression.”119The Copyright Act, 1957 is not worded like the US copyright law. However, the requirement of “fixation” has been incorporated under the provisions of the Act both explicitly and implicitly. In case of dramatic work, cinematograph film and sound recording the requirement is explicit. Whereas, in case of literary, musical and artistic work the requirement of fixation is implicit. At this juncture, it must be submitted that the most contested work regarding fixation is 'musical work' for which there is an argument after the amendment of the Act in 1994 the requirement of fixation has been done

116 See Zee Telefilms Ltd. v. Sundial Communications Pvt.Ltd,, 2003(27) PTC 457(Bom) it was observed that “Copyright protects material that has been reduced to permanent from.” This point was reiterated in Urmi Juvekar Chiang v. Global Broadcast News Ltd., 2008 (36) PTC 377 (Bom.). HALSBURY’S LAW OF INDIA,INTELLECTUAL PROPERTY, 24 (New Delhi, Lexis Nexis Butterworths, 2004). Fixation in material form: The requirement of fixation in material form is a precondition for copyright to subsist in work. The rational of this principle is the requirement of certainty as to what the work is. Another reason or it is to define the limits of copyright so that it does not extend to ideas or underlying information. Fixation may not be permanent but may be temporary or transient. To illustrate the original extempore speech is protected as a literary work, provided some record of it is maintained. It may further be noted that the word ‘work’ has been footnoted and explained as under: As the work in which copyright subsists, the word literary is used in a sense somewhat similar to the use of the word ‘literature’ in political or electioneering literature and refers to written or printed matter. 117 See HENERY CAMBELL BLACK,BLACK’S LAW DICTIONARY WITH PRONUNCIATION 637 (Minneapolis, 6th ed., West Publishing, 1990). Term (fix) imports finality; stability; certainty; definiteness. 118 17 U.S.C., § 101 (2006). A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purpose of this title if a fixation of the work is being made simultaneously with its transmission. Also see CORPUS JURIS SECUNDUM, 18 (West Publishing Co., 102). 119 17 U.S.C., § 102(a) (2006).

[56] NLIU Journal of Intellectual Property Law away with.120 Further, a careful reading of the Section 14 of the Act makes it clear that a holder of the exclusive right is authorized to do certain acts in respect of a “work” under the provisions of the Act. Any of the acts authorized to be done by the copyright holder has to be carried out from a work that physically exists or fixed in some tangible medium otherwise copyright in a work will be meaningless. Research on this point is few and far between121. A few Indian scholars have merely paid a lip service to “fixation” requirement122. Interestingly, there exist a category of the scholars, who are of the opinion that “fixation” is not an essential requirement at all for the purposes of copyrightability. 123 However, this view is not supported either by any authority - statutory or judicial - nor any reason whatsoever. We now proceed to examine the hypothesis that that the Copyright Act, 1957 requires that for claiming copyright protection, subject matter of copyright must be tied to a physical, material or tangible form.

120 T. C. James, Copyright Law of India and the Academic Community 9 JIPR 207, 214 (2004). 121 A few scholarly works which fall in this category are: T. VIDHYA KUMARI,COPYRIGHT PROTECTION, (Hyderabad, Asia Law House, 2004); A.SUBBIAN,INTELLECTUAL PROPERTY RIGHTS HERITAGE SCIENCE AND SOCIETY UNDER INTERNATIONAL TREATIES, (New Delhi, Deep & Deep Publications Pvt. Ltd.,); A. Nagarathana, Protection of Copyrights: An Appraisal of Copyright Law in India, in SREENIVASULU N.S., INTELLECTUAL PROPERTY RIGHTS (New Delhi, Regal Publication, 2007); N.S.GOPALAKRISHNAN,INTELLECTUAL PROPERTY &CRIMINAL LAW, (Bangalore, National Law School of India University, 1994); JAYASHREE WATAL,INTELLECTUAL PROPERTY RIGHTS IN THE WTO AND DEVELOPING COUNTRIES, (New Delhi, Oxford University Press, 2005); nd P.NARAYANAN,INTELLECTUAL PROPERTY RIGHTS, (Kolkata, 2 ed., Estern Law House, 1997). 122 rd P.NARAYANAN,COPYRIGHT AND INDUSTRIAL DESIGNS, 16 (Kolkata. 3 ed., Eastern Law House, 2002). Copyright exists in a work only when it is represented in a material form. This principle is referred to as fixation. 123 N.S.GOPALKRISHNAN & T.G.AGITHA, PRINCIPLES OF INTELLECTUAL PROPERTY, 143 (Lucknow, Eastern Book Company, 2009). [I]t is important that unlike the English Law, the Indian Copyright Act does not necessitate that a work, to be entitled to copyright protection should be fixed in any tangible form. Also see page 160 of the above book, wherein the authors while comparing the definition of “musical work” as has been incorporated under Section 2(p) of the Act by the amendment of 1994; makes an arbitrary interpretation without any citation of sources that: “The earlier definition insisted for requirement of fixation …the new definition is included to cover all forms of music irrespective of it being fixed.”

[57] Qualifications of Copyright Candidate in India

1. Requirement of Fixation in case of Literary Work

The Section 2(o)124 of the Act provides that “literary work” computer programs, tables and compilations including computer data bases. About the literary work the Courts have vehemently reiterated that the work must exist in print or writing. 125 Further, none of the works enumerated in the definition of literary work can exist without a tangible medium in ejusdem generis sense for the meaning of words of general import 'literary work' is to be understood in the light of the words of particular import, i.e., computer programs, tables and compilations including computer data bases. Fixation of the literary work on a tangible medium therefore is an essential qualification for protection under the copyright law at least for two reasons. Firstly, the Courts have said so if the Act has no said so in so many words. Secondly, it is clearly implicit in the words of the Act that only those works which are tied to a tangible medium are the subject matter of protection under the copyright law. Recently in Emergent Genetics India Pvt. Ltd. v. Shailendra Shivam126 the Delhi High Court heard an argument on the requirement of "fixation". But

124 Section 2(o) “literary work” includes computer programs, tables and compilations including computer “literary data bases”. 125 See Eastern Book Company v. D.B. Modak, AIR 2008 SC 809 (DB). Also see, Agarwala Publishing House v. Board of High School and Intermediate Education, AIR 1967 All 91, 92; University of London Press Ltd. v. University Tutorial Press Ltd., 1916-2 Ch 601. 126 Emergent Genetics India Pvt. Ltd. v. Shailendra Shiva, 2011 (125) DRJ 173. It was argued as under: It was urged that unlike the United Kingdom, “fixation” (i.e. the existence of a literary or copyrightable work in tangible form) is not a pre-condition for a copyright to subsist in a work in India. Learned Counsel relied on the definition of “work” and “literary work” under the Copyright Act, and further submitted that according to Article 2(2) of the Berne Convention it is a matter for municipal legislation in the signatories to prescribe that works in general or any specified categories of works shall not be protected unless they have been fixed in some material form. It was also argued that the actual DNA sequence will be a matter of evidence, but evidence of fixation is not necessary to show the subsistence of copyright. It was also argued that even before the amendment of the laws, in the UK and in the USA, computer databases and computer programs were afforded copyright protection. It was further argued that while “fixation” may not be required under Indian law, knowledge and expression of an idea are required. Knowledge exists though it may be intangible. In the case of hybridization of cross pollination, the knowledge as to DNA sequencing is not known.

[58] NLIU Journal of Intellectual Property Law the Court preferred to remain silent on the issue leaving the question undecided.

2. Requirement of Fixation in case of Dramatic Work

Section 2 (h) of the Act defines “dramatic work” to include "any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting form of which is fixed127 in writing or otherwise but does not include a cinematograph film". Here the statutory provisions themselves make it categorically clear that fixation is an essential eligibility qualification of dramatic work for protection under the copyright law. Here, the text of the Statute is explicit and hence it is conclusive.

3. Requirement of Fixation in case of Musical Work

Section 2(p) of the Act provides that “musical work” means a work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music". There is a view that "In order to provide copyright protection to improvised Indian music, an exception to principle of fixation exists in India law as regards musical works. Since, a composer is defined as a person who composes music, regardless of whether he records it in any form of graphical notation"128. This view, however, cannot withstand the judicial scrutiny as the following analysis reveals. In Indian Performing Right Society Limited v. Aditya Pandey129the Court while dealing with the requirement of “fixation” in the case of a musical work referred to Sawkins v. Hyperion Records130and held that: In the absence of a special statutory definition of music, ordinary usage assists: as indicated in the dictionaries, the essence of music is combining sounds for listening to. Music is not the same as mere noise. The sound of

127 Emphasis added. 128 HALSBURY’S LAW OF INDIA,INTELLECTUAL PROPERTY-I, 24 (New Delhi, LexisNexis Butterworts, 2004). 129 Indian Performing Right Society Limited v. Aditya Pandey, 2011 (47) PTC 392, 424 (Del). 130 Sawkins v. Hyperion Records, All 2005 3 ER 636, 648.

[59] Qualifications of Copyright Candidate in India music is intended to produce effects of some kind on the listener's emotions and intellect. The sounds may be produced by an organized performance on instruments played from a musical score, though that is not essential for the existence of the music or of copyright in it. Music must be distinguished from the fact and form of its fixation as a record of a musical composition. The score is the traditional and convenient form of fixation of the music and conforms to the requirement that a copyright work must be recorded in some material form. But the fixation in the written score or on a record is not in itself the music in which copyright subsists. There is no reason why, for example, a recording of a person's spontaneous singing, whistling or humming or of improvisations of sounds by a group of people with or without musical instruments should not be regarded as “music” for copyright purposes.131 The fact that in musical copyright the sounds are more important than the notes in the text is recognized, for example, in the approach to infringement. The test of substantial reproduction is not a note-by-note textual comparison of the scores. It involves listening to and comparing the sounds of the copyright work and of the infringing work. So it is possible to infringe the copyright in a musical work without taking the actual notes. . . .132In principle, there is no reason for regarding the actual notes of music as the only matter covered by musical copyright, any more than, in the case of a dramatic work, only the words to be spoken by the actors are covered by dramatic copyright. Added stage directions may affect the performance of the play on the stage or on the screen and have an impact on the performance seen by the audience. Stage directions are as much part of a dramatic work as plot, character and dialogue. . . . . It is wrong in principle to single out the notes as uniquely significant for copyright purposes and to proceed to deny copyright to the other elements that make some contribution to the sound of the music when performed, such as performing indications, tempo and performance practice indicators, if they are the product of a person's effort,

131 Emphasis added. 132 Footnotes omitted.

[60] NLIU Journal of Intellectual Property Law skill and time, bearing in mind, of course, the “relatively modest” level . . . The observation of the Court that "There is no reason why, for example, a recording of a person's spontaneous singing, whistling or humming or of improvisations of sounds by a group of people with or without musical instruments should not be regarded as “music” for copyright purposes" goes on to show that recording of the music on a tangible medium is an essential eligibility requirement. Although it is not necessary that the music must be recorded by way of graphical notation, yet if recorded by way of graphical notation the requirement of fixation is fulfilled.

4. Requirement of Fixation in case of Artistic Work

Section 2(c) of the Act defines “artistic work” to mean- (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) work of architecture; and (iii) any other work of artistic craftsmanship; In view of the above provisions it may be said that none of the works enumerated in the definition of artistic work can exist without a tangible medium in ejusdem generis sense for the meaning of words of general import 'artistic work' is to be understood in the light of the words of particular import, i.e., a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, work of architecture; and any other work of artistic craftsmanship. Fixation of the artistic work on a tangible medium therefore is an essential qualification for protection under the copyright law at least for one reason, namely, it is clearly implicit in the words of the Act that only those works which are tied to a tangible medium are the subject matter of protection under the copyright law.

5. Requirement of Fixation in case of Cinematograph Films

[61] Qualifications of Copyright Candidate in India

Section 2(f) of the Act defines “cinematograph film” to mean "any work of visual recording133 on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording and “cinematograph” shall be construed as including any work produced by any process analogous to cinematography including video films". Here the statutory provisions themselves make it categorically clear that recording (fixation) is an essential eligibility qualification of cinematograph films for protection under the copyright law. Here, the text of the Statute is explicit and hence it is conclusive.

6. Requirement of Fixation in case of Sound Recording

Section 2(xx) defines “sound recording” to mean "a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced". Here the very name of the work is 'record' and hence the statutory provisions themselves make it categorically clear that recording (fixation) is an essential eligibility qualification of sound recording for protection under the copyright law. Here, the text of the Statute is explicit and hence it is conclusive. In view of the above, it may be said that the Act of 1957 requires that to claim copyright protection, the work must be fixed on a tangible medium. Now we move on to amylase the desirable qualification of copyright candidate.

IV. PUBLICATION

133 Emphasis added. The word “record” is not defined in the Act of 1957. Black’s Law Dictionary reads as under: record (v.) To commit to writing, to printing, to inscription, or the like. To make an official note of; to write, transcribe, or enter in a book, file docket, register, computer tape or disc, or the like, for the purpose of preserving authentic evidence of . . . the act or fact of recording or being recorded; reduction to wring as evidence, also, the writing to made. See, HENRY CAMPBELL BLACK,BLACK'S LAW DICTIONARY WITH PRONUNCIATIONS, 1273, (Minneapolis, 6th Ed., West Publishing, 1990).

[62] NLIU Journal of Intellectual Property Law

It is hypothesized that publication of work is only a desirable qualification and not an essential eligibility qualification for the existence of copyright in a work. A perusal of the provisions of Section 13 (2) of the Act makes it abundantly clear that copyright subsists in an unpublished work. Section 13 (2) reads as under: Copyright shall not subsist in any work specified in sub-Section (1), other than a work to which the provisions of Section 40 or Section 41 apply, unless,- (i) in the case of a published134 work, . . . (ii) in the case of an unpublished work other than a work of architecture, the author is at the date of the making of the work a citizen of India or domiciled in India.

Under Section 40 (b) of the Act the Central Government may by order direct that the provisions of this Act shall apply to unpublished foreign works.135 Section 41 of the Act makes provisions for existence of copyright in the works of certain international organization and provides that in "any work is made136 or first published . . .there shall be . . . be copyright in the work throughout India." The word "work made" in Section 41 is an alternative to "first published". In other words making of the work is necessary but publication is of the work is not necessary for the existence of the copyright in a work. A perusal of the other provisions of the Act reveals that publication of the work is not an essential requirement. Section 3 of the Act provides that "publication means making a work available to the public by ‘issue of copies’ or by ‘communicating the work to the public’137. Publication

134 See HALSBURY’S LAWS OF INDIA,INTELLECTUAL PROPERTY, 139 (New Delhi, Lexis Nexis Butterworths, 2004) for the proposition that "a work cannot be orally published and there can be no publication of a work of which there exists only a single copy." 135 See International Copyright Order, 1958, Gazette of India, Extraordinary, Part II, Section 3 at 181. 136 Emphasis added. 137 Under Section 2 (ff) "communication to the public" means making any work available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing copies of such work regardless of whether any member of the public actually sees, hears or otherwise enjoys the work so made available. Explanation.- For the purposes of this clause, communication through satellite or cable or any other means of simultaneous communication to more than one household or place of

[63] Qualifications of Copyright Candidate in India generally refers to issue of copies of the work to public138. Section 4139 identifies the situations under which a work would not be deemed to be published or performed in public. Section 5140 identifies the condition when work deemed to be first published in India. In Warner Bros. Entertainment Inc. v. Santosh V.G.141 while explaining the meaning of publication the High Court observed that, "[I]mportation for the specified purpose may be a necessary step in the process of issuing to the public, and therefore it amounts to publishing." Under Section 6 certain disputes like question relating to publication of a work; or as to the date on which a work was published for the purposes of determination of term of copyright; or the term of copyright for any work is shorter in any other country shall be decided by Copyright Board. Section 6 further provides that if in the opinion of the Copyright Board, the issue of copies or communication to the public referred to in Section 3 was of an insignificant nature it shall not be deemed to be publication.142 In Lahari Recording Company Private Limited v. Sourabh Marketing and Agencies Private Limited143, considering the nature of the questions to be decided by the Board under Section 6 and the machinery provided for its decision, the Court held that, "[T]he Board has the exclusive jurisdiction to decide such questions and the Civil Courts will have no jurisdiction to decide them."

residence including residential rooms of any hotel or hostel shall be deemed to be communication to the public. 138 Warner Bros. Entertainment Inc. v. Santosh V.G., MIPR 2009 (2) 175. 139 Under Section 4 except in relation to infringement of copyright, a work shall not be deemed to be published or performed in public, if published, or performed in public, without the licence of the owner of the copyright. 140 Under Section 5 a work published in India shall be deemed to be first published in India, notwithstanding that it has been published simultaneously in some other country, unless such other country provides a shorter term of copyright for such work; and a work shall be deemed to be published simultaneously in India and in another country if the time between the publication in India and the publication in such other country does not exceed thirty days or such other period as the Central Government may, in relation to any specified country, determine. 141 supra n. 138. 142 But certain questions are not clear like how many copies are essentials to constitute a significant nature is not clear. Similarly the other questions will be like what constitutes a copy, how is it different from the ‘original-copy’ dichotomy. 143 ILR 2000 Kar 5057.

[64] NLIU Journal of Intellectual Property Law

Under Section 16 of the Copyright Act, the copyright subsists in both the published as well as unpublished work144. Though copyright subsists in unpublished work also, the significance of publication cannot be undermined. Under the Act, its significance remains for different purposes, including in determination of citizenship and domicile145, place of first publication146, calculating the time within which the copyright owner must act to take advantage of copyright protection.147 Another respect in which publication remains significant is that the Copyright Act measures the term of copyright148. Under Indian copyright law149 publication of the work is not necessary at the time of making an application for copyright registration. Both published and unpublished works can be registered.150 Chapter IV of the Copyright Rules, 1956 sets out the procedure for the registration of a work. Under Rule 15 of the Copyrights Rules 1958 the Registration Office shall kept the register in the four parts (one part for each works) and under Form III particulars

144 Section 16: No person shall be entitled to copyright or any similar right in any work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or any other law for the time being in force, but nothing in this Section shall be constructed as abrogating any right or jurisdiction to restrain a breach of trust or confidence. 145 Under Section 7 Where, in the case of an unpublished work, the making of the work is extended over a considerable period, the author of the work shall, for the purposes of this Act, be deemed to be a citizen of, or domiciled in, that country of which he was a citizen or wherein he was domiciled during any substantial part of that period. 146 See Section 13(2), Copyright Act, 1957. 147 Section 31A(1) Where, in the case of an Indian work referred to in sub-clause (iii) of clause (a) of Section 2, the author is dead or unknown or cannot be traced, or the owner of the copyright in such work cannot be found, any person may apply to the Copyright Board for a licence to publish such work or a translation thereof in any language. 148 Chapter V (Sections 22 to 29) of the Copyright Act, 1957 deals with the term of Copyright. 149 Under US Copyright Law publication assumes greater significance, particularly when applying for copyright registration. See Melville B. Nimmer, Copyright Publication, 56(2) COLUM. L. REV., 185 (1956), http://www.jstor.org/stable/1119728; Ilan Jenkins, What is a Publication under the Copyright Act, http://www.scottandscottllp.com/main/publication_under_copyright_act.aspx; Thomas F. Cotter, Toward a Functional Definition of Publication in Copyright Law, 92 MINN. L. REV. 1724, 2008, http://www.lexisnexis.com/hottopics/lnacademic/. 150 When a work has been registered as unpublished and subsequently is it published, the applicant may apply for changes in particulars entered in the Register of Copyright in Form V as prescribed in the first schedule to the Copyright Rules, 1958, along with the prescribed fee and in accordance with Rule 16 of the Copyright Rules, 1958.

[65] Qualifications of Copyright Candidate in India relating to whether the work is published or unpublished have to be furnished. In view of the above discussion, it may be concluded that publication is not an essential qualification for the existence of copyright in a work. However, if the owner of the work fails to publish the work, he may be compelled to forgo certain rights in the work as discussed above. Following explains the requirement of registration of copyright.

V. REGISTRATION

It is hypothesized that registration of the work is not an essential requirement for existence of copyright in a work. 151 Registration means recording; enrolling; inserting in an official register, act of making a list, catalogue, schedule, or register particularly of an official character or of making entries therein.152Since copyright is an intellectual property which is a branch of property right, the question arises whether registration is always compulsorily necessary for the existence of property and transfer of property. For example for the ownership and transfer by way of sale of an immovable property it is compulsorily necessary that there must be an official record or registration ownership. But it is not compulsorily necessary for the existence and transfer of all types of property. Most of sale of goods transactions of daily use take place without any official record or

151 Similar view was taken by the Division Bench of Kerala High Court in R. Madhavan v. S. K. Nayar, AIR 1988 Ker 39 that Section 44 and 45 of the Copyright Act are only enabling provisions and do not effect the common law right to sue for infringement of copyright. While reiterating that an idea per se has no copyright, in Anil Gupta v. Kunal, AIR 2002 Delhi 379(SB) Delhi High Court held that if the idea is developed into a concept fledged with adequate details, then the same is capable of registration under the Copyright Act. 152 See, HENERY CAMBELL BLACK,BLACK’S LAW DICTIONARY WITH PRONUNCIATION, 1284 (Minneapolis, 6th ed., West Publishing, 1990). Register means an officer authorized by law to keep a record called a “register” or “registry;” as the register for the probate of wills. A book containing a record of facts as they occur, kept by public authority; a register for births, marriage, and burials. Raja Bhattacharya, Intellectual Property Rights in Outer Space and Patents, in SHIV SAHAI SINGH, THE LAW OF INTELLECTUAL PROPERTY RIGHTS, 121 (New Delhi, Deep & Deep Publication, 2004). Registration means entering or recording the name of the owner and his/her creation in the statutory Register in prescribed form.

[66] NLIU Journal of Intellectual Property Law registration. Same is the case with copyright. Copyright in a work exists and is assigned without any registration for the provisions of Section 19 of the Act while making provisions for mode of assignment does not make registration of assignment a compulsorily necessary requirement. It does not follow from here that a work may not be registered. For copyright and other intellectual property rights law has made provisions for registration which only creates a prima facie presumption as to the validity of the right.153 Provisions of the Copyright Act, 1957 nowhere provide that registration of the work shall be or shall not a necessary requirement for the protection of work. Further, none of the decisions of the Supreme Court say that registration is or is not a necessary and essential qualification. However, in none of the decisions given by the Supreme Court involved a registered copyright. The position of the Supreme Court on this point therefore is abundantly clear in view of its speaking silence. It may be noted that an author is of the view that registration is a prerequisite for copyright

153 Section 48 of the Copyright Act 1957 Register of Copyrights to be prima facie evidence of particulars entered therein-- The Register of Copyrights shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts there from certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all Courts without further proof or production of the original. Section 31 of the Trademarks Act 1999 Registration to be prima facie evidence of validity (1) In all legal proceedings relating to a trade mark registered under this Act (including applications under Section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. Section 23(1) of the Geographical Indication Act 1999, Registration to be prima facie evidence of validity: In all legal proceeding relating to a geographical indication, the certificate of registration granted in this regard by the Registrar under the Act, being a copy of the entry in the register under the seal of the Geographical Indication Registry, shall be prima facie evidence of the validity thereof and be admission in all Courts and before the Appellate Board without further proof or production of the original. Section 10 of the Designs Act 2000 Register of designs, sub-Section (4) The register of designs shall be prima facie evidence of any matter by this Act directed or authorized to be entered therein. Only under Section 28 the Protection of Plant Varieties and Farmers’ Rights Act, 2001 it confer an irrebuttable presumption on registration as under sub Section (5) The Registrar shall issue a certificate of registration under sub-Section (4) to the applicant after such registration and shall enter in the certificate the brief conditions of entitlement, if any, in the prescribed manner, and such certificate shall be the conclusive proof of such entitlement and the conditions or restriction thereof, if any.

[67] Qualifications of Copyright Candidate in India protection.154 Others are of the view that registration is not prerequisite for copyright155. Registration is merely a piece of evidence156, or it only raises a presumption that the person shown is the actual author of the work157. Some authors have discussed the procedure relating to registration of work.158There are conflicting scholarly opinions on this point but the majority view is that registration of the work is not necessary. The High Courts have also taken conflicting views on the point. This Paper, therefore, seeks to analyze the relevant statutory provisions and case law on the point. There was a mandatory provision for registration in the Indian Copyright Act, 1847159 but under the Indian Copyright Act, 1914 it was made

154 Registration, Protection and Infringement of IPRs which have become the integral part of the IPRs, it may be right to establish a correlation between the three by stating that law prescribes registration to ensure protection against infringement to facilitate transfer/trade. The owner a legally enforceable right over the IP only after he/she gets his/her creation registered. Raja Bhattacharya, Intellectual Property Rights in Outer Space and Patents, in SHIV SAHAI SINGH, THE LAW OF INTELLECTUAL PROPERTY RIGHTS, 121 (New Delhi, Deep & Deep Publication, 2004). 155 Unlike the other intellectual property rights, such as, patents and trademarks, registration is not pre requisite for claiming copyright rights. See Nawnnet Vibhaw & Abishek Venkataraman, Recording that Different Version-An Indian Raga, 12(5) JIPR 2007, 480, 481. Also see Anirban Mazumdar, Copyright: Overview, in CASES AND MATERIALS ON COPYRIGHT, 174 (Kolkata, The West Bengal National University of Juridical Sciences, th 2002); R.SRINIVAS IYENGER,COMMENTRY ON THE COYRIGHT ACT, 188 (New Delhi, 7 ed., Universal Law Publishing, 2010); P.NARAYANAN,COPYRIGHT AND INDUSTRIAL DESIGNS, 338 (Kolkata, 3rd ed., Eastern Law House, 2002); Praveen Dalal, Data Protection Law in India: The TRIPS Perspective, 11(2) JIPR 125, 127, 2006; P.NARAYANAN,INTELLECTUAL PROPERTY nd LAW, 220 (Kolkata, 2 ed., Eastern Law House, 1997); JAYASHREE WATAL,INTELLECTUAL PROPERTY RIGHTS IN THE WTO AND DEVELOPING COUNTRIES, 207 (New Delhi, Oxford University Press, 2005). 156 HALSBURY’S LAWS OF INDIA,INTELLECTUAL PROPERTY, 148 (New Delhi, Lexis Nexis Butterworths, 2004). 157 T. VIDHYA KUMARI,COPYRIGHT PROTECTION, 88 (Hyderabad. Asia Law House, 2004) 158 th B.L.WADEHRA,LAW RELATING TO INTELLECTUAL PROPERTY, 338 (New Delhi, 4 ed., Universal Law Publishing, 2007); A. Nagarathana, Protection of Copyrights: An Appraisal of Copyright Law in India, 86 in SREENIVASULU N.S., INTELLECTUAL PROPERTY RIGHTS (New Delhi, Regal Publication, 2007); Sanjay Pandey, Neighbouring Rights Protection in India, 9 (4) JIPR 356 ,357, 2004. 159 Indian Copyright Act 1847, Section 14. “no proprietor of copyright shall maintain, under the provisions of this Act, any action or suit at law or in equity, or any summary proceedings in respect of any infringement of such copyright, or any summary proceedings in respect of any infringement of such copyright unless he shall before commencing such action, suit or proceeding, have caused an entry to be made in the book of registry, provided always that the omission to make such entry shall not effect the copyright in any book, nor the right to sue or proceed in respect of the

[68] NLIU Journal of Intellectual Property Law optional160. Under the Copyright Act, 1957, on the one hand the Statement of Objects and Reasons of the Act encourages registration of copyright161, and on the other hand there is no provision in the Act which makes a provision in furtherance to the words of Statement of Objects and Reasons. Judicial opinions as to the legal weight of Statement of Objects and Reasons are not uniform.162 In majority of the cases Supreme Court has been of the

infringement thereof under the provisions of this Act.” Also see Venkta Rao v. Padmonabha Raju, AIR 1927 Mad. 1981. Similarly in the former State of Hyderabad had its own Hyderabad Copyright Act II of 1334F, under which Section 3 there was a provision that every author shall enjoy the copyright in regard to every book registered. See V. Errabhadrarao v. B.N. Sarma, AIR 1960 AP 415. 160 Section 14 of the Indian Copyright Act, 1914 dealt with effect of non registration under the Act XX of 1847- No suit or other civil proceeding instituted after the 30th of Octber,1912 regarding infringement of copyright in any book the author whereof was at the time of making the book resident in India, or of any book first published in India shall be dismissed by reason only that the registration of such book had not had been affected in accordance with the provisions of the Indian Copyright Act 1847 (XX of 1847). In Mishra Bandhu Karyalaya v. Shivratanlal Koshal, AIR 1970 MP 261, 267 (DB) it was held that the Indian Copyright Act, 1914, had nowhere made any provision for the registration of copyrights. Under the law relating to copyright then prevalent, the Imperial Copyright Act, 1911, as adopted or modified to suit Indian conditions by the Indian Copyright Act, 1914, a person had an inherent copyright in an original composition or compilation without the necessity of its registration. The Indian Copyright Act, 1914 was silent about registration. N.S.GOPALKRISHNAN,INTELLECTUAL PROPERTY AND CRIMINAL LAW, 239 (National Law School of India University, 1994). 161 It provides that "In order to encourage registration of copyrights, provision is made that no proceeding regarding infringement of copyright shall be instituted unless copyright is registered in the copyright office." 162 In State of West Bengal v. Subodh Gopal Bose, [1954] 1 SCR 587 (CB), Das J., was of the opinion that referring to it (statement of objects and reasons) only for the limited purpose of ascertaining the conditions prevailing at the time which actuated the sponsor of the Bill to introduce the same and the extend and urgency of the evil which he sought to remedy. In The Central India Spinning and Weaving and Manufacturing Company, Limited, The Empress Mills,Nagpur v. The Municipal Committee, Wardha, [1958] 1 SCR 1102 (CB), Kapur J. held that it is also a recognised principle of construction that general words and phrases however wide and comprehensive they may be in their literal sense must usually be construed as being limited to the actual objects of the Act. In Central Bank of India v. Their Workmen [1960] 1 SCR 200, S.K., Das, J. held that the statement of objects and reasons is not admissible, however, for construing the Section; far less can it control the actual words used. In Utkal Contractors and Joinery Pvt. Ltd. v. State of Orissa, [1987] 3 SCR 317, (DB), Chinnappa Reddy was in opinion that a statute is best understood if we know the reason for it. The reason for a statute is the safest guide to its interpretation. The words of a statute take their colour from the reason for it.

[69] Qualifications of Copyright Candidate in India opinion that the statement of objects and reasons appended to the Bill should be ruled out as an aid to the construction of a statute.163 While explaining this view in Aswini Kumar Ghosh v. Arabinda Bose164 the Supreme Court observed as under:

In Utkal Contractors and Joinery (P) Ltd. v. State of Orissa, [1988] 1 SCR 314 (DB). K. Jagannatha Shetty J. held that…. the Statement of objects and reasons of the Act or Ordinance cannot control the actual words used in the legislation. On the other hand in S.C. Prashar v. Vasantsen Dwarkadas, [1964] 1 SCR 29, (CB), S.K. Das, J. held that it is indeed true that the Statement of Objects and Reasons for introducing a particular piece of legislation cannot be used for interpreting the legislation if the words used therein are clear enough. But it can be referred to for the purpose of ascertaining the circumstances which led to the legislation in order to find out what was the mischief which the legislation aimed at. Similarly while acknowledging the importance of the statement of objectives and reasons in Ashwani Kumar v. Regional Transport Authority Bikaner, [1999] Supp 3 SCR 211 (DB) the Supreme Court held that accepting the submissions made on behalf of the appellants would result in frustration of the objective sought to be achieved by the Act. In The Quarry Owners Association v. State of Bihar, [2000] Supp 2 SCR 211 (DB)., A.P. Misra, J. held that whenever there are two possible interpretations, its true meaning and legislature's intent has to be gathered, from the Preamble, Statement of Objects and Reasons and other provisions of the same statute. In United Bank of India v. The Debts Recovery Tribunal, [1999] 2 SCR 496 (DB), G. B. Pattanaik J. held that the Act and the relevant provisions will have to be construed bearing in mind the objects for which the Parliament passed the enactment. 163 Like in State of West Bengal v. Union of India, [1964] 1 SCR 371, 382 (CB), the court observed that: [I]t is however well settled that the Statement of Objects and Reasons accompanying a bill, when introduced in Parliament cannot be used to determine the true meaning and effect of substantive provisions of the statute. They cannot be used except for the limited purpose of understanding the background and the antecedent state of affairs leading up to the legislation. But we cannot use this statement as an aid to the construction of the enactment or to how that the legislature did not intend to acquire the proprietary rights vested in the State or in any way to affect the State Governments' rights as owner of minerals. A statute, as passed by Parliament, is the expression of the collective intention of the legislature as a whole, and any statement made by an individual, albeit a Minister, of the intention and objects of the Act cannot be used to cut down the generality of the words used in the Statute. In State of Haryana v. Chanan Mal, [1976] 3 SCR 688, 706 (CB), the court observed that: [W]e have to judge the character of the. Act by the substance and effect of its provisions and not merely by the purpose given in the statement of reasons and objects behind it. Such statements of reasons are relevant when the object or purpose of an enactment is in dispute or uncertain. They can never override the effect which follows logically from the explicit and unmistakable language of its substantive provisions. Such effect is the best evidence of intention. A statement of objects and reasons is not a part of the statute, and, therefore, not even relevant in a case in which the language of the operative parts of the Act leaves no room whatsoever, as it does not in the .. Act, to doubt what was meant by the legislators. 164 [1953] 4 SCR 1, 28,(CB).

[70] NLIU Journal of Intellectual Property Law

[I]t (the statement of objects and reasons) seeks only to explain what reasons induced the mover to introduce the Bill in the House and what objects he sought to achieve. But those objects and reasons may or may not correspond to the objective which the majority of members had in view when they passed it into law. The Bill may have undergone radical changes during its passage through the House of Houses, and there is no guarantee that the reasons which led to its introduction and the objects thereby sought to be achieved have remained the same throughout till the Bill emerges from the House as an Act of the Legislature, for they do not form part of the Bill and are not voted upon by the members. But in certain cases it appears that the Supreme Court has given importance to the Statement of Objects and Reasons appended to the statute. In State of Maharashtra v. Marwanjee P. Desai165 it was observed: [T]he Statute shall have to be considered in this entirety and picking up of one word from one particular provision and thereby analyzing it in a manner contrary to the statement of objects and reasons is neither permissible nor warranted. ….True intent of the Legislature shall have to be gathered and deciphered in its proper spirit having due regard to the language used therein. Statement of objects and reasons is undoubtedly an aid to construction but that by itself cannot be termed to be and by itself cannot be interpreted. It is a useful guide but the interpretations and the intent shall have to be gathered from the entirety of the Statue and when the language of the Section providing an appeal to a forum is clear and categorical no external aid is permissible in interpretation of the same. The question, therefore, remains unanswered or at least incompletely answered. However, it is a well established principle of statutory interpretation is that reference to the statement of objects and reasons is permissible for understanding the background, the antecedent state of affairs, the surrounding circumstances in relation to the statute, and the evil which the statute sought to remedy.166 In State of A.P. v. Nagoti Venkataramana167 the Statement of Objects and Reasons to the Copyright

165 AIR 2002 SC 456, 462 (DB). 166 th G.P.SINGH,PRINCIPLES OF STATUTORY INTERPRETATION, 195 (7 ed., Wadhwa, & Company, 1999), referred in Bhaiji v. Sub Divisional Officer, Thandla, [2002] SUPP 5 SCR 116 (FB). 167 [1996] Supp 4 SCR 812 (DB).

[71] Qualifications of Copyright Candidate in India

Amendment Act 65 of 1984 was taken into consideration. Now we move on to explain the relevant provisions of the Act which deal with registration. Chapter X (Section 44- 55A) of the Act and Chapter VI (Rules 15-20) of Copyright Rules 1958 make provisions regarding registration of copyright. Under Section 44168 Register of Copyrights to be kept at the Copyright Office169 in the prescribed form170 in which the names or titles of works and the names and addresses of authors, publishers and owners of copyright and such other particulars may be entered. Section 44, while stipulating that register be maintained for taking entries of the works that have been registered under this Act, it does not stipulate that registration is mandatory to claim protection under the Act. Section 45 provides as under: (1) The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form171 accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights:

168 Section 44 Register of Copyrights –There shall be kept at the Copyright Office a register in the prescribed form to be called the Register of Copyrights in which may be entered the names or titles of works and the names and addresses of authors, publishers and owners of copyright and such other particulars as may be prescribed. 169 The Copyright Act provides a Copyright Board to settle copyright disputes, a Copyright Office for registration of copyright works and setting up of copyright societies to do copyright business. See Sanjay Pandey, Neighbouring Rights Protection in India, 9(4) JIPR 356, 357. 170 Rule 15 Form of Register of Copyrights. — (1) The Register of Copyrights shall be kept in six parts as follows: Part I - Literary works other than computer programs, tables and compilations including computer data bases and dramatic works. Part II - Musical works. Part III - Artistic works. Part IV - Cinematograph films. Part V - Sound recordings. Part VI - Computer programs, tables and compilations including computer data bases. (2) The Register of Copyrights shall contain the particulars specified in Form III. 171 Rule 16 of Chapter VI, Copyright Rules 1958 lists out the procedural formalities which on application have to fulfill when filing an application for registration of copyright. th B.L.WADEHRA,LAW RELATING TO INTELLECTUAL PROPERTY, 338 (4 ed., Universal Law Publishing 2007). Rule 16 Application for Registration of Copyright (1) Every application for registration of copyright shall be made in accordance with Form IV and every application for registration of changes in the particulars of copyright entered in the Register of Copyright shall be made in accordance with Form V. (2) Every such application shall be in respect of one work only, shall be made in triplicate and shall be accompanied by the fee specified in the Second Schedule in this behalf. (3) The person applying for registration shall give notice of his application to every person who claims or has any interest in the subject-matter of the copyright or disputes the rights of the applicant to it.

[72] NLIU Journal of Intellectual Property Law

Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in Section 4 of the Trade and Merchandise Marks Act, 1958, to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant. (2) On receipt of an application in respect of any work under sub-Section (1), the Registrar of Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the Register of Copyrights.172 As per Sections 44 and 45 of the Act, the owner or the other person interested in the copyright may make an application to the Registrar of Copyrights for entering particulars of the work in the register of copyrights.173 Since 'owner' of the copyright may make an application for registration, the ownership of the copyright therefore is an incidence prior to registration and not an incidence after the registration. In other words, the fact of registration only creates a record which is only a prima facie evidence of validity and nothing more than that. Under Section 48 of the Act, the Register of Copyrights shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts there from certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all Courts without further proof or production of the original.174 The registration only raises a presumption that the person

172 Rule 16 (4) If no objection to such registration is received by the Registrar of Copyrights within thirty days of the receipt of the application by him, he shall, if satisfied about the correctness of the particulars given in the application, enter such particulars in the Register of Copyrights. (5) If the Registrar of Copyrights receives any objections for such registration within the time specified in sub-rule (4), or, if he is not satisfied about the correctness of the particulars given in the application, he may, after holding such inquiry as he deems fit, enter such particulars of the work in the Register of Copyrights as he considers proper. (6) The Registrar of Copyrights shall, as soon as may be, send, wherever practicable, a copy of the entries made in the Register of Copyrights to the parties concerned. 173 See BinjRajka Steel Tubes Ltd v. State, Criminal original petition no. 39226, decided on 08/11/2044. 174 But if registration only has the effect of a rebuttable presumption that the facts registered are valid, it is not a formality (unless it is still applied in a way that, in spite of the original

[73] Qualifications of Copyright Candidate in India shown is the actual author of the work. The presumption is not conclusive and where contrary evidence is forwarded, the registration may be cancelled. As per Section 49 the Registrar of Copyrights may, in the prescribed cases and subject to the prescribed conditions, amend or alter the Register of Copyrights by- (a) correcting any error in any name, address or particulars; or (b) correcting any other error which may have arisen therein by accidental slip or omission.175 Under Section 50 the Copyright Board, on application of the Registrar of Copyrights or of any person aggrieved, shall order the rectification of the Register of Copyrights by- (a) the making of any entry wrongly omitted to be made in the register, or (b) the expunging of any entry wrongly made in, or remaining on, the register, or (c) the correction of any error or defect in the register. The judicial decisions on whether the registration is compulsory or not for copyright subsistence are conflicting. Supreme Court has not discussed this point in any case176 In Entertainment Network (India) Ltd. v. Super Cassette

legal regulation, it becomes a de facto formality, because, for example, Courts only deal with any infringement case if a certificate of such a registration is presented. Survey of National Legislation on Voluntary Registration Systems for Copyright and Related Rights, SCCR/13/2, www.wipo.int/edocs/mdocs/copyright/en/sccr_13/sccr_13_2.doc 175 Under Rule 17 The Registrar of Copyrights may, on his own motion or on application of any interested person, amend, or alter the Register of Copyrights in the manner specified in Section 49 after giving, wherever practicable, to the person affected by such amendment or alteration, an opportunity to show cause against such amendment or alteration, and communicate to such person the amendment or alteration made. 176 Like in R.G. Anand v. Delux Films, [1979] 1 SCR 218 (FB) whether drama 'Hum Hindustani' was registered, or, in Gramophone Co., of India Ltd. v. Mars Recording Pvt. Ltd., AIR 2001 SC 2885 (DB) whether sound recording of 'kallusakkare kolliro' and others were registered, or in Vicco Laboratories v. Art Commercia Advertising Pvt. Ltd.. AIR 2001 SC 2753 (DB) whether of the serial "Yeh Jo Hai Zindagi”was registered, or in Eastern Book Company v. D.B. Modak, AIR 2008 SC 809 (DB) whether law report ‘Supreme Court Cases’ was registered, or in Academy of General Edu., Manipal v. B. Malini Mallya, [2009] 1 SCR 615 (FB) whether the `dramatic work' of ‘Yakshagana' was registered. It is to be noted that, in the above mentioned cases, the SC did not speak on the essentiality of registration in a copyright. Also, none of the parties had argued on the point of registration as a condition precedent.

[74] NLIU Journal of Intellectual Property Law

Industries Ltd.177 it has been observed that "Section 16 provides that a right, inter alia, in respect of any work must be claimed only under and in accordance with the provisions of the Act unlike Trade Mark and `passing off rights’ can be enforced even though they are not registered." This observation of the Court creates an impression that registration of a copyrighted work is a condition precedent. Some of the High Courts178 have observed that registration is compulsory for copyright subsistence, but in majority of cases the High Courts179 have observed that registration is not compulsory for copyright subsistence. In Mishra Bandhu Karyalaya v. Shivratanlal Koshal180 it was held that: Under the Copyright Act 1957 it appears that under Sections 13 and 45, the registration of book with the Registrar of Copyrights, is a condition for acquiring copyright with respect to it. A plain reading of the several provisions of the Act, leaves no doubt that a copyright in a book now is only secured if it is an original compilation and has been duly registered according to the provisions of the Act. Once it is so registered, the author is deemed to acquire property rights in the book. The right arising from the registration of the book can be the subject-matter of civil or criminal

177 2008 (37) PTC 353, 378. 178 Madhya Pradesh High Court in Mishra Bandhu Karyalaya v. Shivratanlal Koshal AIR 1970 MP 261 (DB), B.K. Dani v. State of M.P., 2005 Cri LJ 876 (SB); in this case, the court referred Shiv Lal Agarwals & Co. Publishers, Indore v. State of M. P,. M.Cr.C. No. 4765/96, in which the Single Bench of the Madhya Pradesh High Court held that registration of copyright is a condition acquiring copyright in a book. Orissa High Court in Bnindahan Sahu v. B. Rajendra Subudhi, AIR 1986 Ori. 210(SB) 179 Bombay High Court in Burroughs Wellcome (India) Ltd. v. Uni-sole Pvt. Ltd.,1997 (3) MhLj 914; Asian Paints (I) Ltd. v. Jaikishan Paints & Allied Products, (2002) 4 BOM LR 941 (SB); Calcutta High Court in Satsang v. Kiron Chandra Mukhopadhyay, AIR 1972 Cal 533 (SB), Zahir Ahmed v. Azam Khan, 1996 CriLJ 290 (Cal (SB); Delhi High Court in Glaxo Orthopedic U.K. Ltd. v. Samrat Pharma, AIR 1984 Delhi 265 (SB), Visakha Chemicals v. Mala Ram, 2006 (32) PTC 441 (Del))(SB), Mattel Inc. v. Jayant Agarwalla, 2008 (38) PTC 416 (Del) (SB); Rajesh Masrani v. Tahiliani Design Pvt. Ltd., AIR 2009 Del 44; Madras High Court in Jayanthilal M. Munoth v. M. Durairajan, 2006 (33) PTC 330 (Mad) (SB); Andhra Pradesh High Court in Muppala Ranganayakamma v. K. Ramalakshmi, Criminal revision case no. 200/1981, decided on 10/06/1985; Allahabad High Court in Nav Sahitya Prakash v. Anand Kumar, AIR 1981 All 200 (SB); Kerala High Court in Kumari Kanaka v. Sundararajan, (1972) Ker LR 536 (DB), R. Madhavan v. S.K. Nayar (AIR1988Ker39)(DB); Madhya Pradesh High Court in K.C. Bokadia v. Dinesh Chandra Dubey, 1999 (1) MP LJ 33 (FB); Patna High Court in Radha Kishna Sinha v. State of Bihar, 1979 Cri LJ 757 (Patna) (SB). 180 AIR 1970 MP 261, 267(DB).

[75] Qualifications of Copyright Candidate in India remedy, so that, without it the author can have no rights, nor remedies in spite of the fact that his work is an original one. Full Bench of Madhya Pradesh High Court in K.C. Bokadia v. Dinesh Chandra Dubey181 has observed that there is no legislative intent to make registration of a copyright mandatory. The Court observed as under: A careful analysis of the Scheme and the provisions of the Act does not disclose any legislative intention to make registration of copyright mandatory or to take away civil or criminal remedies in the event of n on- registration of copyright. On the other hand, some of the provisions point a contrary conclusion. Copyright is the exclusive right, subject to the provisions of the Act, to do and authorize the doing of any of the acts enumerated in Section 14 in respect of a work or substantial part thereof. The first owner of the copyright shall be the author of the work. In other words, the ownership of the copyright is a logical consequence of the authorship. Copyright does not arise from registration of copyright. Provision regarding registration and maintenance of register is basically a provision to enable entries to be made in respect of relevant particulars including the names of owners of copyright. Unless there is an existing copyright and a person is the owner of a copyright, the question of applying for or making entries in the register of copyrights does not arise. Registration follows the copyright and not vice versa. Certified copies entries in the register are only prima facie evidence without further proof and they are not conclusive. A copyright when it is propounded or challenged has to be duly established in a competent Court. The Court further observed: In Mishra Bandhu Karyalaya’s case, the Division Bench of this Court was concerned with the State of affairs governed by the Copyright Act, 1914 which did not contain any provision for registration. Therefore, the question of registration being mandatory or not did not arise for consideration. Their Lordships of the Division Bench in passing adverted to the provisions of Copyright Act, 1957 and indicated that registration is mandatory and legal proceedings cannot be initiated in absence of registration. The observations were unnecessary for the disposal of the case under consideration and are

181 1996 JLJ 63.

[76] NLIU Journal of Intellectual Property Law clearly ‘obiter dicta’. The decision also does not rest on any specific statutory provision or any recognised principle of law. With great respect, we hold that Mishra Bandhu Karyalaya’s case, AIR 1970 MP 261, does not lay down correct law; so also the decision in Bnindahan Sahu’s case, AIR 1986 Ori. 210. With respect we agree with the view taken by the High Court of Calcutta, Allahabad, Madras, Kerala and Patna. Delhi High Court has taken a similar view in Glaxo Operations UK Ltd. v. Samrat Pharmaceuticals, AIR 1984 Delhi 265. K.C. Bokadia v. Dinesh Chandra Dubey182 overruled Mishra Bandhu Karyalaya v. Shivratanlal Koshal183. However, in year 2005 the Single Bench of Madhya Pradesh High Court in B.K. Dani v. State of M.P184 observed that "in the absence of registration, the respondent ....never acquired copyright". B.K. Dani did not follow K.C. Bokadia, the precedent of full bench of the same High Court. B.K. Dani is therefore per incurium. B.K. Dani demonstrates the confusion regarding the requirement of the registration for the copyright. Reiterating the same point, the Delhi High Court in Camlin Pvt. Ltd. v. National Pencil Industries185 observed as under: The certificates under the Copyright Act only prima facie, show that the particulars mentioned in the certificate are entered in the Copyright register. The mere fact that something is entered in the Copyright Register, does not as a matter of law establish that what is registered is in fact and in law copyrightable subject-matter. This is so because, the sine qua non to the existence of copyright, is the expenditure of skill and labor on any work which originated from its author and unless the original work, on which skill and labor has been expended by its author is produced in Court to prima facie show that the work has originated from an author, it cannot be said that there is copyright in any work. In view of the above way we can say that in most of the decisions, the High Courts have held that registration is not compulsory for the copyright subsistence. To deal with such a situation where there are conflicting

182 Id. 183 AIR 1970 MP 261(DB). 184 2005 CriLJ 876, 877(SB). 185 AIR 1986 Delhi 444, 451 (SB).

[77] Qualifications of Copyright Candidate in India opinions of the two or more High Courts, the Law Commission of India, taking the matter suo motu in its 136th on "Conflicts in High Court Decisions on Central Laws - How to Foreclose and How to Resolve" submitted on February 21, 1990 to the Ministry of Law and Justice, Government made the following recommendations with the hope that the gravity and urgency, of the situation will be appreciated and the needful will be done as soon as possible: (1) When High Court "A" is faced with e problem pertaining to on all— India law (excluding the Constitution of India) on which High Court "B" has already made a pronouncement, if High Court "A" holds at view different or inconsistent from the view already pronounced by High Court "B", High Court "A", instead of making its own pronouncement, shall make a reference to the Supreme Court. The order of reference shall be accompanied by a reasoned opinion propounding its own view with particular specification of reasons for differing from the view pronounced by High Court "B". (2) (a) The party supporting the reference may arrange for appearance in the Supreme Court but will not be obliged to do so. (b) The said party will have the option of submitting written submissions supplementing the reasoning embodied in the order of reference. (c) The party opposing the reference shall also have a similar option for engaging an advocate in the Supreme Court and submitting written submissions, inter alia to counter the written submissions, if any, submitted by the other side. (3) The Supreme Court may require the Government of the State in which the High Courts "A" and "B" are situated to appoint at the State’s cost any advocate from the State panel of lawyers of the concerned States to support by oral arguments the view points of the respective High Courts. (4) All such references may be assigned to a Special Bench which may endeavor to dispose of all such references within six months of the receipt of the references in the Supreme Court in view of the inherent urgency to ensure uniformity. (5) If any SLP or appeal is already pending on the same point from judgment of High Court "B" or any other High Court, the said matter may

[78] NLIU Journal of Intellectual Property Law be clubbed alongwith the reference. Any interested party may be permitted to appear as interveners. (6) The Supreme Court may return the reference if it appears that the parties are acting in collusion. (7) The Attorney General may be served with a copy of the reference and he shall be entitled to urge the point of view of the Central Government in regard to the relevant provision of the concerned Central Statute, if so desired. (8) The referring High Court shall finally dispose of the appeal on all points in the light of the decision of the Supreme Court in regard to the referred point. (9) The decision of the Supreme Court in the reference will have no impact or effect on the decision of High Court "B" in the event of the Supreme Court upholding the reference in ease it has become final between the parties by reason of the matter not having been carried to the Supreme Court and the said decision shall remain undisturbed as between the parties in High Court "B". In addition to above the Commission also drafted a Bill for legislation on the problem. But nothing has happened so far either from the side of the Government and Parliament or from the side of the Supreme Court or High Court. The situation is grim and fraught with the lethargy of the Government. This is generally the forgone conclusions and fate of the reports of the Law Commission of India. The point is if the Government does not have the time and willingness to discuss and implement the recommendation of the Commission, why the Commission exists? Does it exist to do research work only? Following seeks to note the conclusions of this Paper and also makes certain suggestions in the light conclusions arrived at.

VI. CONCLUSIONS AND SUGGESTIONS

In view of the above, it is submitted that the hypothesis that " a copyright candidate must possess three essential qualifications, namely: one, the

[79] Qualifications of Copyright Candidate in India candidate must be a work in the copyright law sense; two, the work must be original in the copyright law sense and three the work must be fixed on a tangible medium; and he may have two desirable qualifications namely: firstly, the work may be published and secondly it may be registered with the copyright office . . .the desirable qualifications do not bring copyright in a work in existence but they do confer certain procedural and evidentiary advantages" stands verified. It may be concluded that the Act itself has identified the candidates of copyright protection and there exists very little doubt as to meaning of work particularly after the decision in Dev Anand case (supra). As to the meaning and standard of “originality” there is no strict principle or test through which the degree of originality could be precisely determined. Hence, it would be case to case basis approach that Courts may follow to determine this question. Doctrine of sweat of the brow still enjoys the prominence in determining the threshold of originality in at least "primary works". The Supreme Court has also recognized the threshold of 'modicum of creativity' for reporting of judgments of courts and this threshold may be extended to cover other derivatives works but not primary works for the Supreme Court itself has categorically limited the scope of its ratio to judgments of the courts. The requirement that a work must be fixed in a tangible medium has not been unequivocally and unambiguously clarified either by the Parliament or judiciary. However, this study makes it clear that this requirement is an essential eligibility requirement for existence of copyright in a work. As to the requirement of "publication", it has been made clear that there can be a copyright both in a published work as well as in an unpublished work. Though copyright subsists in unpublished work also, the importance of publication cannot be ignored under the copyright law. As to the question: whether registration is mandatory requirement or not, there still persists a significant level of confusion both in academia and judiciary. In view of the above, it suggested that one of the functions of law is to avoid and minimize disputes besides resolving them. One of the methods of avoidance and minimization of disputes is bringing certainty and clarity in

[80] NLIU Journal of Intellectual Property Law law for uncertainty in law breeds unnecessary disputes and litigation. Although it is not possible to bring in certainty in all the dimensions of law for flexibility in law is also an equally important value, yet some areas of law may be made certain very easily for certainty in these areas are not only desirable but also possible. The law relating to 'fixation', 'publication' and 'registration' is possible to be made certain. The Copyright Act, 1957 may make provisions either ways, i.e., it may provide that 'fixation', 'publication' and/or 'registration' is compulsory or is not compulsory. However, it is suggested that the requirements of 'fixation' should be made compulsory and the requirements of 'publication' and 'registration' be made optional in clear terms. It is submitted that the Copyright (Amendment) Bill, 2010 as amended in 2011 does not capture these issues. It is further submitted that the Copyright Act, 1957 should also provide that whether the offences under the Act are cognizable or non-cognizable; bailable or non-bailable as there are conflicting opinions of the High Courts.186 Hence, it is suggested that the Copyright Act, 1957 should be suitably amended to remove the ambiguities in it.

186 High Courts of Kerala and Gauhati on the one hand and the High Court of Andhra Pradesh had the occasion to deal with the question: whether the offences under 63 of the Copyright Act a cognizable one or not? High Courts of Kerala and Gauhati answered the question in affirmative and held that the offences under Section 63 are non-balibale. High Court of Andhra Pradesh answered the question in negative and held that the offences under Section 63 are bailable. See Jitendra Prasad Singh v. State of Assam, 2003(26)PTC486(Gau); Amarnath Vyas v. State of A.P., 2007 Cri. LJ 2025(SB); Sureshkumar v. The Sub Inspector of Police, 2007(3)KLT363(SB).

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