World Intellectual Property Organisation (WIPO) is a world renowned name in the field of Intellectual Property Rights (IPRs). It has been actively working in the direction of protecting and strengthening IPRs at the international level.
One of the areas that are covered by WIPO is Patents. In order to ensure adequate and proper patent protection at international level, a Standing Committee on the Law of Patents (SCP) has been formulated at WIPO.
The SPC was created in 1998 and serves as a forum to discuss issues, facilitate coordination and provide guidance concerning the progressive international development of patent law. The Committee is composed by all Member States of WIPO and/or of the Paris Union, and, as observers, certain Member States of the UN non-members of WIPO and/or Paris Union, as well as a number of intergovernmental and non-governmental organisations.
Since its establishment, the SCP has been working on the international harmonisation of Patent law. The main achievement of the SCP in the recent past was the negotiation of the Patent Law Treaty (PLT) and its Regulations on Patent formalities and procedures. The PLT was adopted by a Diplomatic Conference on June 1, 2000 and entered into force on April 28, 2005.
Discussions on the draft Substantive Patent Law Treaty (SPLT) started at the fifth session of the SCP in May 2001. The discussions focus on issues of direct relevance to the grant of patents, in particular, the definition of prior art, novelty, inventive step/non-obviousness, industrial applicability/utility, the drafting and interpretation of claims and the requirement of sufficient disclosure of the invention. The SCP further agreed that other issues related to substantive patent law harmonisation, such as first-to-file versus first-to-invent systems, 18-month publication of applications and a post-grant opposition system, would be considered at a later stage.
During the subsequent SCP meetings, following proposals by a number of delegations, the contents of the draft SPLT has been progressively broadened. While discussions led to some agreement of principle among delegations on a number of issues, other topics have generated more difficulties in terms of reaching agreement.
Recently the SPC has discussed very important issues of public health, technology transfer, and exceptions and limitations to patents. In the meeting held on 16-20 May some consensus regarding these crucial aspects was seen and most countries felt “optimistic about the way forward”. Perry4Law and Perry4Law Techno Legal Base (PTLB) welcome this effort of WIPO and all countries. Let us see how SPC would help in further development and growth of international Patents laws.
Tuesday, May 31, 2011
World Intellectual Property Organisation (WIPO) is a world renowned name in the field of Intellectual Property Rights (IPRs). It has been actively working in the direction of protecting and strengthening IPRs at the international level.
Sunday, May 15, 2011
With the growing innovation, IPRs in general and patents in particular required a different outlook and protection. The technological issues of IPRs in India need to be kept in mind while formulating and amending the IPRs laws of India.
These would require not only ICT skills development in India but also techno legal IPRs skill development in India. Further, existing innovative inventions must also be protected in one form or other. Utility models protection can fill this much needed requirement.
Although utility models protection is available in many countries of the world, India is not extending any such protection. This is despite the fact that the utility model framework is well recognised in international treaties and conventions relating to intellectual property. However, protection of utility models has not been specifically mandated in the TRIPS Agreement and each country has freedom to limit the scope of protection depending upon its national policies.
Utility models protection would greatly help small, medium and rural sector industries and innovators. However, it needs a legal framework to be effective and implementable. The Department of Industrial Policy and Promotion (DIPP) has been seriously considering this issue and public inputs can be provided to it in this regard.
Monday, May 9, 2011
At Perry4Law and Perry4Law Techno Legal Base (PTLB) we provide the Exclusive Techno Legal IPR Services in India. Further, PTLB is also the Exclusive Techno Legal IPR LPO and KPO Services Provider of India.
Issues like Domain Name Protection in India require domain specific expertise. Similarly, Cyber Crimes are affecting Trade Secrets in India and World wide and to effectively tackle the same, one must have good Techno Legal Skills. Patent Law of India would also change in future and it would require Techno Legal Acumen to deal with future Patent related IPR issues in India.
At PTLB we provide exclusive Techno Legal IPR Skill Development in India. Issues like Domain Name, Cyber Squatting, Cyber Crimes, Digital Evidencing, Data Protection, Trade Secrets in Cyberspace, Cyber Law, Cyber Forensics, etc are clubbed with traditional IPRs and Techno Legal IPR Skill Development Trainings and Education is provided by PTLB.
If you are interested in having a Partnership, Collaboration, Consortium Forming, etc, in this regard or otherwise you may Contact Us with your proposal and terms and conditions.
For instance, there are very few Professionals, Firms and Institutions that can provide Techno Legal IPR Services in India. At Perry4Law and Perry4Law Techno Legal Base (PTLB) we provide the Exclusive Techno Legal IPR Services in India. Further, PTLB is also the Exclusive Techno Legal LPO and KPO Services Provider of India.
Further, issues like Domain Name Protection In India requires domain specific expertise. Similarly, Cyber Crimes are affecting Trade Secrets in India and World wide and to effectively tackle the same, one must have good Techno Legal Skills. Patent Law of India would also change in future and it would require Techno Legal Acumen to deal with future Patent related IPR issues in India.
Copyright Law of India needs urgent amendments. Although Indian Copyright Act is due for amendments yet Digital Issues of Indian Copyright Act 1957 are yet to be addressed by Indian Legislature. The Copyright Amendment Bill 2011 of India would be introduced very soon but it is still far from perfect to cover these issues.
In short, Techno Legal Issues of IPRs in India have not yet been addressed properly. Keeping in mind the importance of these issues it would be appropriate if immediate action is taken by Indian Government in this regard.
However, at least some action regarding upgrading the old Copyright Law of India has been taken though Techno Legal Issues of Copyright Law of India have still not got the attention of Indian Government and Indian Parliament.
Although the Copyright Law in India is suitably protecting the Copyrights of traditional works yet it has not been very successful in protecting online contents. This is the reason why Copyright Law of India needs urgent Amendments.
Copyright Law of India is incorporated in the Indian Copyrights Act, 1957. It is one of the best and most stringent laws of the World. While Copyright Law of India is a good piece of legislation it has yet to take care of issues arising out of Information and Communication technology (ICT). Use of ICT is changing the way Intellectual Property Rights in India (IPRs in India) are required to be protected in India and world wide.
Further, Plagiarism is omnipresent in Indian Legal Research Community. Law students and fresh law graduates do not wish to do the real hard work and take the shortcut of copy and paste. This is not only violating the Copyright Law of India but is also reflecting poorly upon the Legal Research Skills of India. We need Techno Legal IPR Skills Development in India at all levels and for all stakeholders.
There are many issues that Law Ministry of India and Ministry of Human Resource Development of India need to address before bringing Amendments to the Copyright Law of India.
The copyright law protects the intellectual creations in original works. The subject matter of copyright is literary and artistic work. The copyright protection commences as soon as the work is created and it does not require any registration formalities. Traditionally the concern of copyright law was limited to books, music, paintings or films. Copyright protection has now taken new dimensions and today it extends to even computer software and compilations of data.
Copyright has some closely related rights that confer similar principles of protection. These are known as “related rights” or “neighbouring rights”. These rights protect persons, other than the creators, who are involved in the dissemination of copyrighted work. These rights are confined to three specific categories of persons: performers, producers of phonograms and broadcasting organizations. In some countries such rights may be a part of the copyright law,while in others there is different legislation to protect these rights.
The Berne Convention for the protection of Literary and Artistic works, as revised up to 1971, provided the highest level of international legal protection for copyright, prior to TRIPS. With the conclusion of TRIPS under the Uruguay Round of multilateral trade negotiations, protection of copyright and related rights became, for the first time, a subject covered by the international trade law. Articles 9 to 13 of TRIPS prescribe the “minimum standards” for the protection of copyright. Article 9.1 of TRIPS establishes that WTO members must comply with Articles 1 to 21 of the Berne Convention, 1971, including the Appendix thereto. The Berne Convention requires that the enjoyment and exercise of copyright cannot be subjected to any formality such as registration. The only exception to adherence to the Berne Convention is Article 6bis, which obliges the members to protect the moral rights of the authors. Article 9(2) of the Berne Convention contains exceptions to the exclusive right of reproduction conferred by the copyright law. The pre-requisites for the applicability of this Article are:
(a) These limitations and exceptions should be granted in certain special cases,
(b) These should not conflict with the normal exploitation of the work, and
(c) These should not unreasonably prejudice the legitimate interests of the author.
In the context of copyright, TRIPS does not confine this Berne exception only to the right of reproduction but extends it to all exclusive rights conferred by copyright.
Indian Perspective On Copyright Protection
The Copyright Act, 1957 provides copyright protection in India. It confers copyright protection in the following two forms:
(A) Economic rights of the author, and
(B) Moral Rights of the author.
(A) Economic Rights: The copyright subsists in original literary, dramatic, musical and artistic works; cinematograph films and sound recordings. The authors of copyright in the aforesaid works enjoy economic rights u/s 14 of the Act. The rights are mainly, in respect of literary, dramatic and musical, other than computer program, to reproduce the work in any material form including the storing of it in any medium by electronic means, to issue copies of the work to the public, to perform the work in public or communicating it to the public, to make any cinematograph film or sound recording in respect of the work, and to make any translation or adaptation of the work. In the case of computer program, the author enjoys in addition to the aforesaid rights, the right to sell or give on hire, or offer for sale or hire any copy of the computer program regardless whether such copy has been sold or given on hire on earlier occasions. In the case of an artistic work, the rights available to an author include the right to reproduce the work in any material form, including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work, to communicate or issues copies of the work to the public, to include the work in any cinematograph work, and to make any adaptation of the work. In the case of cinematograph film, the author enjoys the right to make a copy of the film including a photograph of any image forming part thereof, to sell or give on hire or offer for sale or hire, any copy of the film, and to communicate the film to the public.These rights are similarly available to the author of sound recording. In addition to the aforesaid rights, the author of a painting, sculpture, drawing or of a manuscript of a literary, dramatic or musical work, if he was the first owner of the copyright, shall be entitled to have a right to share in the resale price of such original copy provided that the resale price exceeds rupees ten thousand.
(B) Moral Rights: Section 57 of the Act defines the two basic “moral rights” of an author. These are:
(i) Right of paternity, and
(ii) Right of integrity.
The right of paternity refers to a right of an author to claim authorship of work and a right to prevent all others from claiming authorship of his work. Right of integrity empowers the author to prevent distortion, mutilation or other alterations of his work, or any other action in relation to said work, which would be prejudicial to his honour or reputation.
The proviso to section 57(1) provides that the author shall not have any right to restrain or claim damages in respect of any adaptation of a computer program to which section 52(1)(aa) applies (i.e. reverse engineering of the same). It must be noted that failure to display a work or to display it to the satisfaction of the author shall not be deemed to be an infringement of the rights conferred by this section. The legal representatives of the author may exercise the rights conferred upon an author of a work by section 57(1), other than the right to claim authorship of the work.
The response of Indian judiciary regarding copyright protection can be grouped under the following headings:
(1) Ownership of copyright,
(2) Jurisdictional aspect,
(3) Cognizance taken by the court,
(4) Infringement of copyright,
(5) Availability of alternative remedy, and
(6) Rectification of copyright.
(1) Ownership of copyright: The ownership in copyright may vest in different persons under different circumstances.
In Eastern Book company v Navin J.Desai the question involved was whether there is any copyright in the reporting of the judgment of a court. The Delhi High court observed:
“It is not denied that under section 2(k) of the Copyright Act, a work which is made or published under the direction or control of any Court, tribunal or other judicial authority in India is a Government work. Under section 52(q), the reproduction or publication of any judgment or order of a court, tribunal or other judicial authority shall not constitute infringement of copyright of the government in these works. It is thus clear that it is open to everybody to reproduce and publish the government work including the judgment/ order of a court. However, in case, a person by extensive reading, careful study and comparison and with the exercise of taste and judgment has made certain comments about judgment or has written a commentary thereon, may be such a comment and commentary is entitled to protection under the Copyright Act”. The court further observed:
“In terms of section 52(1)(q) of the Act, reproduction of a judgment of the court is an exception to the infringement of the Copyright. The orders and judgments of the court are in the public domain and anyone can publish them. Not only that being a Government work, no copyright exists in these orders and judgments. No one can claim copyright in these judgments and orders of the court merely on the ground that he had first published them in his book. Changes consisting of elimination, changes of spelling, elimination or addition of quotations and corrections of typographical mistakes are trivial and hence no copyright exists therein”.
In Godrej Soaps (P) Ltd v Dora Cosmetics Co the Delhi High Court held that where the carton was designed for valuable consideration by a person in the course of his employment for and on behalf of the plaintiff and the defendant had led no evidence in his favour, the plaintiff is the assignee and the legal owner of copyright in the carton including the logo.
(2) Jurisdictional aspect: The question of territorial jurisdiction of the court to deal with copyright infringement was considered by the courts on several occasions.
In Caterpillar Inc v Kailash Nichani the plaintiff, a foreign company, was carrying on business in several places in India including Delhi, through its Indian distributors and collaborators. The plaintiff claimed the relief of ad-interim injunction for preventing infringement of its copyright by the defendant, though the defendant was dealing in different goods. The Delhi high Court held that it was not necessary to show that the business being carried on by the plaintiff in Delhi should necessarily be in respect of footwear and articles of clothing as well. It is sufficient if the business was being carried on by the plaintiff in Delhi and further that there was an infringement of plaintiff’s copyright in respect of certain goods, which were being sold by the defendant in Delhi. The court further held that section 62 of the Copyright Act makes an obvious and significant departure from the norm that the choice of jurisdiction should primarily be governed by the convenience of the defendant. The legislature in its wisdom introduced this provision laying down absolutely opposite norm than the one set out in section 20 CPC. The purpose is to expose the transgressor with inconvenience rather than compelling the sufferer to chase after the former.
In Lachhman Das Behari Lal v Padam Trading Co the Delhi High Court observed that the plaintiff being a firm functioning at Delhi, the suit filed by it in the Delhi courts is maintainable and is not liable to be rejected under Order 7 Rule 11 of the CPC as prayed. The Court further observed that the plea regarding want of territorial jurisdiction is not covered by Order7 rule 11 of CPC. The court observed that even if it is held that this court has not the territorial jurisdiction, the plaint cannot be rejected. At the most it can be returned for presentation to the proper court.
In Exphar Sa & Anr v Eupharma Laboratories Ltd & Anr the Supreme Court finally settled the position in this regard. The Court observed:
“Section 62(2) cannot be read as limiting the jurisdiction of the District Court only to cases where the person instituting the suit or other proceeding or where there are more than one such persons, any of them actually and voluntarily resides or carries on business or presently works for gain. It prescribes an additional ground for attracting the jurisdiction of a court over and above the “normal” grounds as laid down in Section 20 of the C.P.C. Even if the jurisdiction of the Court were restricted in the manner construed by the Division Bench, it is evident not only from the cause title but also from the body of the plaint that the Appellant No 2 carries on business within the jurisdiction of the Delhi High Court. The Appellant No 2 certainly “a person instituting the suit”. The Division Bench went beyond the express words of the statute and negatived the jurisdiction of the Court because it found that the Appellant No 2 had not claimed ownership of the copyright, infringement of which was claimed in the suit. The appellant No 2 may not be entitled to the relief claimed in the suit but that is no reason for holding that it was not a person who had instituted the suit within the meaning of Section 62(2) of the Act”.
(3) Cognizance taken by the court: To prevent copyright infringement, timely cognizance taking by the appropriate court is absolutely essential. The taking of cognizance by the court depends upon the limitation period as mentioned in the Limitation Act, 1963 and Cr.P.C, 1973.
In David Pon Pandian v State the Madras High Court, while dealing with section 68A of the Copyright Act, observed:
“The Court can take cognizance of the offence if the charge sheet is filed within the period of limitation prescribed under Section 468 of the Cr.P.C and in computing the period of limitation, the date of commission of the offence is to be reckoned as the starting point. If the charge sheet is not filled so, the Court has no power to entertain the complaint”
The court referred the decision of the Supreme Court in State of Punjab v Sarwan Singh in which it was observed:
“The object of Cr.P.C in putting a bar of limitation on the prosecution was clearly to prevent the parties from filing cases after a long time, as a result of which material evidence may disappear and also to prevent abuse of the process of Court by filing vexatious and belated prosecutions long after the date of the offence. The object, which the statute seeks to sub-serve, is clearly in consonance with the concept of fairness of trial as enshrined in Article 21 of the Constitution. It is, therefore, of utmost importance that any prosecution, whether by State or a private complainant, must abide by the letter of the law or to take the risk of the prosecution failing on the ground of limitation”
In Shree Devendra Somabhai Naik v Accurate Transheet Pvt Ltd the Gujarat High Court explained the inter-relationship between Article 137 of the Limitation Act, 1963 and section 50 of the Copyright Act, 1957. The Court observed:
“The order passed by the by the Copyright Board is an order whereby it is held that the provisions of Article 137 of the Limitation Act are not applicable and the board has also held that the Copyright Board is a Tribunal and quasi-judicial authority for all other purposes except for the purposes which are specifically provided in the Copyright Act. It is an order by which an application under Section 50 of the Copyright act is entertained and the Copyright Board will decide the same on merits. The Copyright Board does not believe the delay alleged by the present appellant. Entertaining an application is a matter of discretion. In the present case, the Copyright Board in its wisdom, overruling the contention that the application was barred by limitation, decided to entertain the application. It is a discretionary order”.
(4) Infringement of copyright: A copyright owner cannot enjoy his rights unless infringement of the same is stringently dealt with by the Courts .The approach of the Indian Judiciary in this regard is very satisfactory.
In Prakashak Puneet Prashant Prakashan v Distt.judge, Bulandshahr &Ashok Prakashan (Regd) the Allahabad High Court held that if the petitioner publishes a book by adding any word before or after the book “Bal Bharati”, he infringes the copyright of the respondent.
In Hindustan Pencils Ltd v Alpna Cottage Industries  the Copyright Board of Goa held that where the similarities between the artistic works of the parties are fundamental and substantial in material aspects, it would amount to copyright violation and the defendant’s copyright is liable to be expunged from the register of copyright.
The Board referred the decision of Prem Singh v Cec Industries wherein it was observed:
“In a case where the first party himself is shown to have adopted or imitated a trademark and copyright of a third party, then Courts can resolutely decline to step in aid of this party because honesty of action is the crux of the matter and Courts protection is extended only on the principle that damage to a party who has acquired goodwill or reputation in certain trading style for making his goods, should not be allowed to be affected by the dishonest user of the same by another”.
The Board further referred the decision of the apex court in R.G. Anand v M/S Delux Films where the Court observed:
“Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case, the Courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work with some variations here and here. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of the act of piracy”.
In Ushodaya Enterprises Ltd v T.V. Venugopal  the division bench of the Andhara Pradesh High Court held that even though the defendant has registered the carton under the Trademark Act, that may not come to the aid of the defendant as the case of the plaintiff is that it owns a copyright of the artistic work under the Copyright Act and no registration is required for the same. Thus the court held that the plaintiff was justified in alleging infringement of his artistic work.
In Khajanchi Film Exchange v state of MP  the appellants apprehending the violation of their copyright in the film, prayed for the writ of “Mandamus” without first exhausting the alternative remedy available under the Copyright Act. The Division Bench of the Madhya Pradesh High Court Observed:
“There is no dispute in the submission that it is the duty of police to be watchful in the area and detect crime and punish the criminal in accordance with law. But the petitioners did not complain that any stage nor did they seek action from other functionaries of the State. They ask for mandamus without putting the grievance before the respondent and seeking their reaction. The writ petition was filed 16 days before the release of the film. Enough time appellants had, to approach the authorities/ police and later to the respondents giving their reaction to the grievance and how it was ready to deal with the matter. Therefore, unless the demand was put across and reaction awaited for some time, moving the court was premature and unsustainable. Therefore, petition was filed on mere apprehension that appellants would be deprived of their rights which did not exist when claim for mandamus was made. Mandamus can be granted only when default, commission, or omission takes place which had not happened in this case”.
In Jolen Inc v Shoban Lal Jain  the Madras High Court held that latches and acquiescence is a good defence to an action for copyright infringement. The court held that the plaintiff having allowed the defendant to carry on the business under the trade name of the plaintiff for 7 years is prima facie guilty of acquiescence and it cannot claim for relief of injunction against the defendant as the balance of convenience is in favour of him.
(5) Availability of alternative remedy: The availability of an efficacious alternative remedy prevents a person from invoking the writ jurisdiction of the High court.
In Khajanchi FilmExchange and Another v State of M.P and others  petitioners instead of approaching the concerned authorities filed a writ petition in the High Court. The Madhya Pradesh High Court observed:
“The film was not yet released. The petitioners did not approach the respondents. There was no failure on the part of the respondents in performance of their legal duties with respect of the right complained of. The entire machinery was put to doubt by the petitioners on the basis of the averments made in the writ petition that it is to the common knowledge that they do not take action. Thus apprehending infringement of their rights, the writ petition was filed. The petitioners should have approached the concerned authorities first; and in the event of their failure to take preventive measures/seizure of cassettes under the M.P.Police Regulations and the copyright Act, the petitioners should have approached this Court. If a writ is entertained and relief readily granted before release of the movie without approaching the respondents who have to prevent threatened violation of copyright, it would open a flood gate of litigation. The copyright Act provides adequate safeguards and procedure. It cannot be said that a mere apprehension that certain offence may take place, a writ can be filed seeking a direction that no such offence be allowed to take place. First authorities have to be asked to prevent it. The function of the police is to prevent piracy and unauthorized exhibition. In the instant case there was no inaction on the part of the police and other concerned officials and they were unnecessarily dragged in writ petition without even putting them to notice of proposed writ. No demand notice was served, no specific complaint was lodged. Thus writ is not maintainable”.
(6) Rectification of copyright: In the rectification proceedings, an entry in the Copyright Register pertaining to a particular copyright can be expunged by the Copyright Board.
In Lal Babu Priyadarshi v Badshah Industries the Division bench of the Patna high Court Observed:
“Rule 16(3) of the Copyright Rules, 1958 which embodies the principle of natural justice provides that when there is a rival claim with regard to subject matter of the copyright then no order can be passed in favour of any party without hearing the application of the other applicant. Non-observance of the said provision will vitiate the order with regard to the entry in the Register of the Copyright. The said requirement cannot be waived nor non-observance of the said provision can be said to be a mere irregularity. If a person making an application under section 45 is not aware of the rival claim then the matter would be different. But in this case, as is evident from the notice sent by the appellants through their counsel, they were aware of the claim of the respondents and as such they should have given notice to the respondents intimating them of their intention to file an application for registration so that the respondents could have raised objections and, thereafter, the matter would have been decided in terms of provisions contained in Section 45, read with Rule 16. In this case Rule 16 has not been followed before making the entry in the Register of Copyright under section 45 and, thus, the Board rightly came to the conclusion that non-observance of the provisions of Rule16 (3), which is mandatory in nature, has vitiated the certificate of registration in favour the appellants”.
On-Line Copyright Issues
The Internet is a paradox. It is everywhere, yet, at the same time, it is nowhere. It is “a worldwide entity whose nature cannot be easily or simply defined. The ease with which computers can transfer and exchange digital information on the Internet have caused concern among intellectual property owners, especially copyright owners. The information technology allows the computer users to easily and secretly transform the copyrighted materials into digital form and store them in their computer memory. Once a user digitized information, he can easily upload it to the Internet. Once the information is available on the Internet anyone in the world with Internet access can download, modify, and distribute it. Thus, in an instant, a copyrighted work can potentially lose its value and significantly suppress an author’s incentive to create new material.
Thus, with the advancement of information technology, copying, modifying, and distributing of copyrighted materials has become very simple and difficult to trace. The copyright owners are now at the mercy of a technology that has raced ahead of the law. Because the Internet “is a cooperative venture not owned by a single entity or government, there are no centralized rules or laws governing its use.
Traditional Copyright infringement Theories: Traditionally there was only one copyright infringement theory known as “primary infringement”, which made the person infringing the copyright personally liable for his acts. Thus, the concept of third party liability or secondary liability was not recognized by the legal systems of various countries all over the world, including the United States. As the society progressed, need was felt to develop new theories to meet the challenges thrown by it. While there were no express provisions, which talked about infringing acts of another, third party liability theories were evolved in the courts over the years. The courts derived these theories from the traditional tort law and patent law theories of contributory and vicarious liability.
The U.S Supreme Court articulated the rationale for incorporating “third party liability” into the copyright law in Sony Corporation of America v Universal Studios, Inc.  The court specifically noted patent law’s explicit statutory prohibition against inducing infringement and against contributory infringement, and held that he absence of express language in the Copyright Act did not preclude third party liability. Moreover, the court reasoned that “vicarious liability is imposed in virtually all areas of law, and the concept of contributory infringement is merely a species of the broader problem of identifying the circumstances in which it is just to hold one individual accountable for the actions of another.”
Direct Infringement: Direct infringement is a strict liability offence and guilty intention is not essential to fix criminal liability. The requirements to establish a case of copyright infringement under this theory are:
(1) Ownership of a valid copyright; and
(2) Copying or infringement of the copyrighted work by the defendant.
Thus, a person who innocently or even accidentally infringes a copyright may be held liable under the Copyright Act of the U.S. and under the laws of various other countries. The guilty intention of the offender can be taken into account for determining the quantum of damages to be awarded for the alleged infringement.
Contributory infringement: The contributory infringement pre-supposes the existence of knowledge and participation by the alleged contributory infringer. To claim damages for infringement of the copyright, the plaintiff has to prove:
(1) That the defendant knew or should have known of the infringing activity; and
(2) That the defendant induced, caused, or materially contributed to another person’s infringing activity.
Vicarious Infringement: Vicarious copyright infringement liability evolved from the principle of respondent superior. To succeed on a claim of vicarious liability for a direct infringer’s action, a plaintiff must show that the defendant:
(1) Had the right and ability to control the direct infringer’s actions; and
(2) Derived a direct financial benefit from the infringing activity.
Thus, vicarious liability focuses not on the knowledge and participation but on the relationship between the direct infringer and the defendant.
Legal precedent for vicarious copyright infringement liability has developed along two general relational lines. The first relational line involves the employer/employee relationship, whereas the second involves the lessor/lessee relationship.
Internet and copyright infringement theories: The advent of information technology has made it difficult to apply the traditional theories to various cyberspace entities and organizations. These cyberspace players can be grouped under the following headings:
(1) Internet Service Providers (ISPs),
(2) Bulletin Board Services Operators (BBSO),
(3) Commercial Web Page owner/operators, and
(4) Private users.
(1) Internet Service Providers (ISPs): An ISP most often provides Internet access and he may be held liable for copyright infringement. In Religious Technology Center v Netcom On-Line Communication Services, Inc a former minister uploaded some of the copyrighted work of the Church of Scientology to the Internet. He first transferred the information to a BBS computer, where it was temporarily stored before being copied onto Netcom’s computer and other Usenet computers. Once the information was on Netcom’s computer, it was available to Netcom’s subscribers and Usenet neighbors for downloading for up to eleven days. The plaintiffs informed Netcom about the infringing activity; nonetheless, Netcom refused to deny the subscriber’s access because it was not possible to prescreen the subscriber’s uploads, and kicking the subscriber off the Internet meant kicking off the rest of the BBS operator’s subscribers. Thus, plaintiffs sought a remedy against Netcom for infringement under all three theories –direct, contributory, and vicarious.
The court first analyzed whether Netcom directly infringed plaintiff’s copyright. Since Netcom did not violate plaintiff’s exclusive copying, distribution, or display rights, Netcom was held not liable for direct infringement.
The court then analysed the third party liability theories of contributory and vicarious infringement.
The court held that Netcom would be liable for contributory infringement if plaintiffs proved that Netcom had knowledge of the infringing activity.
The court then analyzed whether Netcom was vicariously liable. Here, once again the court found that a genuine issue of material fact supporting Netcom’s right and ability to control the uploader’s acts existed. The court found that Netcom did not receive direct financial benefit from the infringement.
Thus, the court found that the Netcom was not liable for direct infringement, could be liable for contributory infringement if plaintiffs proved the knowledge element, and was not liable for vicarious infringement.
(2) Bulletin Board Services: The BBSs are more vulnerable to copyright infringement litigations than the ISPs because they can operate independent of the World Wide Web.
The first case in this category was Playboy Enterprises, Inc v Frena. In this case, the defendant operated a subscription BBS that allowed the subscribers to view, upload, and download material. The court held that Frena had violated Playboy’s exclusive distribution right and their exclusive display right. Because Frena supplied a product containing unauthorized copies of copyrighted work, he has violated the distribution right. Moreover, because Frena publicly displayed Playboy’s copyrighted photographs to subscribers, he violated the display right. The court concluded that Frena was liable for direct infringement, though Frena himself never placed infringing material on the BBS and despite his arguments that he was unaware of the infringement. The court relied upon the strict liability theory and held that neither intent nor knowledge is an essential element of infringement.
In Sega v Maphia the BBS was providing services to numerous subscribers who upload and downloaded files to and from the BBS. The evidence clearly showed that the BBS operator knew that subscribers were uploading unauthorized copies of Sega’s video games to and downloaded from his BBS. The court held that since the BBS operators only knew and encouraged uploading and downloading, but did not himself upload or download any files, he was not liable for direct infringement. The court, however, found the BBS operator contributory liable. Regarding the knowledge element, the BBS operator admitted that he had knowledge of the uploading and downloading activity. The court rejected the BBS operator’s asserted fair use defense since their activities were clearly commercial in nature. Further, the nature of the copyrighted games was creative rather than informative and the entire copyrighted works were copied, uploaded, and downloaded. This copying had adversely affected the Sega’s sale.
(3) Commercial Web sites: The Web Page owners must be cautious of the things they post on their Web Pages so that they do not violate the stringent provisions of the copyright laws. A Web Page owner cannot successfully plead and prove that they were unaware about the copyrighted material because copyright notices are prominently given in authorized software. They also have the controlling power over the content of their pages. The owner are usually the parties that actually perform the uploads to their pages.
(4) Private Users: A computer user who uploads copyrighted material to the Internet is liable for direct infringement. This liability could be avoided only if he can prove the fair use doctrine. Thus, an Internet user should not post copyrighted material on the Internet in a casual manner.
On-line copyright issues in India
The reference to on-line copyright issues can be found in the following two major enactments:
(1) The Copyright Act, 1957, and
(2) The Information Technology Act, 2000.
(1) Copyright Act, 1957 and on-line copyright issues: The following provisions of the Copyright Act, 1957 can safely be relied upon for meeting the challenges of information technology:
(a) The inclusive definition of computer is very wide which includes any electronic or similar device having information processing capabilities. Thus, a device storing or containing a copyrighted material cannot be manipulated in such a manner as to violate the rights of a copyright holder.
(b) The term computer programme has been defined 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. It must be noted that Section13 (a) read with Section 2(o) confers a copyright in computer progamme and its infringement will attract the stringent penal and civil sanctions.
(c) The inclusive definition of literary work includes computer programmes, tables and compilations including computer databases. Thus, the legislature has taken adequate care and provided sufficient protection for computer related copyrights.
(d) The copyrighted material can be transferred or communicated to the public easily and secretly through electronic means. To take care of such a situation, the Copyright Act has provided the circumstances which amount to communication to the public. Thus, 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, may violate the copyright. The communication through satellite or cable or any other means of simultaneous communication to more than one household or place of residence including residential rooms of any hotel or hostel shall be deemed to be communication to the public.
(e) The copyright in a work is infringed if it is copied or published without its owner’s consent. The Copyright Act provides that a work is published if a person makes available a work to the public by issue of copies or by communicating the work to the public. Thus, the ISPs, BBS providers, etc may be held liable for copyright violation if the facts make out a case for the same.
(f) The copyright in a work shall be deemed to be infringed when a person, without a licence granted by the owner of the copyright or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of any condition imposed by a competent authority under this Act-
(i) Does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright, or
(ii) Permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright.
(g) The Copyright Act specifically exempts certain acts from the purview of copyright infringement. Thus, the making of copies or adaptation of a computer programme by the lawful possessor of a copy of such computer programme from such copy in order to utilize the computer programme for the purpose for which it was supplied or to make back-up copies purely as a temporary protection against loss, destruction, or damage in order only to utilize the computer programme for the purpose for which it was supplied, would not be copyright infringement. Similarly, the doing of any act necessary to obtain information essential for operating inter-operability of an independently created computer programme with other programmes by a lawful possessor of a computer programme is not a copyright violation if such information is not otherwise readily available. Further, there will not be any copyright violation in the observation, study or test of functioning of the computer programme in order to determine the ideas and principles, which underline any elements of the programme while performing such acts necessary for the functions for which the computer programme was supplied. The Act also makes it clear that the making of copies or adaptation of the computer programme from a personally legally obtained copy for non-commercial personal use will not amount to copyright violation.
(h) If a person knowingly makes use on a computer of an infringing copy of a computer programme, he shall be held liable for punishment of imprisonment for a term which shall not be less than seven days but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees. However, if the computer programme has not been used for gain or in the course of trade or business, the court may, for adequate and special reasons to be mentioned in the judgment, not impose any sentence of imprisonment and may impose a fine which may extend to fifty thousand rupees.
It must be noted that copyright can be obtained in a computer programme under the provisions of the Copyright Act, 1957. Hence, a computer programme cannot be copied, circulated, published or used without the permission of the copyright owner. If it is illegally or improperly used, the traditional copyright infringement theories can be safely and legally invoked. Further, if the medium of Internet is used to advance that purpose, invoking the provisions of the Copyright Act, 1957 and supplementing them with the stringent provisions of the Information Technology Act, 2000, can prevent the same.
(2) Information Technology Act, 2000 and on-line copyright issues: The following provisions of the Information Technology Act, 2000 are relevant to understand the relationship between copyright protection and information technology:
(a) Section 1(2) read with Section 75 of the Act provides for extra-territorial application of the provisions of the Act. Thus, if a person (including a foreign national) violates the copyright of a person by means of computer, computer system or computer network located in India, he would be liable under the provisions of the Act.
(b) If any person without permission of the owner or any other person who is in charge of a computer, computer system or computer network accesses or secures access to such computer, computer system or computer network or downloads, copies or extracts any data, computer data base or information from such computer, computer system or computer network including information or data held or stored in any removable storage medium, he shall be liable to pay damages by way of compensation not exceeding one crore rupees to the person so affected. Thus, a person violating the copyright of another by downloading or copying the same will have to pay exemplary damages up to the tune of rupees one crore which is deterrent enough to prevent copyright violation.
(c) While adjudging the quantum of compensation, the adjudicating officer shall have to consider the following factors:
(i) The amount of gain or unfair advantage, wherever quantifiable, made as the result of the default;
(ii) The amount of loss caused to any person as a result of the default;
(iii) The repetitive nature of the default.
Thus, if the copyright is violated intentionally and for earning profit, the quantum of damages will be more as compared to innocent infringement.
(d) A network service provider (ISP) will not be liable under this Act, rules or regulations made there under for any third party information or data made available by him if he proves that the offence or contravention was committed without his knowledge or that he had exercised all due diligence to prevent the commission of such offence or contravention.
(e) The provisions of this Act shall have overriding effect notwithstanding anything inconsistent therewith contained in any other law for the time being in force.
The provisions of the abovementioned two enactments show that the Copyright protection in India is strong and effective enough to take care of the Copyright of the concerned person. The protection extends not only to the Copyright as understood in the traditional sense but also in its modern aspect. Thus, on-line copyright issues are also adequately protected, though not in clear and express term. To meet the ever- increasing challenges, as posed by the changed circumstances and latest technology, the existing law can be so interpreted that all facets of copyright are adequately covered. This can be achieved by applying the “purposive interpretation” technique, which requires the existing law to be interpreted in such a manner as justice is done in the fact and circumstances of the case. Alternatively, existing laws should be amended as per the requirements of the situation. The existing law can also be supplemented with newer ones, specifically touching and dealing with the contemporary issues and problems. The Information Technology Act, 2000 requires a new outlook and orientation, which can be effectively used to meet the challenges posed by the “Intellectual Property Rights” regime in this age of information technology. Till the country has such a sound and strong legal base for the protection of Intellectual Property Rights, the judiciary should play an active role in the protection of these rights, including the copyright. The situation is, however, not as alarming as it is perceived and the existing legal system can effectively take care of any problems associated with copyright infringement.
. For instance, in countries like US or India, copyright law covers the rights of producers of phonograms.
 Section 13
 Section 14(a)
 Section 14(b)
 Section 14(d)
 Section 14(e)
 Section 53A
 Explanation to Section 57(1).
 Section 57(2)
 2001 PTC 57(Del)
 2001 PTC 407(Del)
 2002 (24) PTC 405(Del)
 2002 (25) PTC 508(Del)
 2004 (2) Scale 589
 2002 (24) PTC 377(Mad)
 AIR 1981 SC 1054
 2002 (25) PTC 434(Guj)
 2001 PTC 213 (All)
 2001 PTC 504 (CB) (Goa)
 AIR 1993 Del 223
 AIR 1978 SC 1613
 2001 PTC 727 (AP) (DB)
 2003 (26) PTC 183(MP) (DB)
 2001 PTC 216 (Mad)
 2002 (25) PTC 812(MP)
 2002 (25) PTC 173 (Patna) (DB)
 Religious Technology Center v Netcom On-Line Communication services, Inc, 907 F.Supp. 1361(1995)
 Mary Shulman, Internet Copyright Infringement Liability, 27 Golden Gate U.L.Rev.555, 558(1997)
 464 .U.S.417 (1984)
 Gershwin Publishing Corpn v Columbia Artists Management, Inc 443 F2d 1159(2d Cir.1971)
 Netcom, 907 F.Supp. at 1375
 907 F.Supp.1361 (N.D. Cal.1995)
 839 F.Supp.1552(M.D.Fla.1993)
 948 F.Supp .923 (N.D. Cal.1996
 Section 2(ffb)
 Section 2(ffc)
 Section 2(o)
 Section 2(ff)
 Explanation to Section 2(ff)
 Section 3
 Section 51(a)
 Section 52(1) (aa)
 Section 52(1) (ab)
 Section 52(1) (ac)
 Section 52(1) (ad)
 Section 63B
 Section 13(1) (a) read with Section 2(o)
 Praveen Dalal: The Unexplored Dimensions of Right To Privacy (under publication)
 Section 43(a)
 Section 43(b)
 Section 47
 Section 79
 Section 81
Saturday, May 7, 2011
The existence of IPRs is very old. The basic aim of conferring an IPR upon the person owning the same is to give a social recognition to its holder. This social recognition can further bring economic benefits to its holders. It is just and reasonable to award a person an IPR in the form of “limited monopolistic rights” for his/her labour and efforts. At the same time, exceptions in the form of various licences are also made so that public interest cannot be compromised. The public interest and personal interests are thus reconciled in the form of limited period duration of these rights and their abuses can be tackled stringently, especially when public interest demands so. The problem of IPRs violations was not as much in ancient times as it is in the contemporary society. This has happened due to the advent of information technology (IT) and “Conflicts of laws” in various countries. The need of harmonisation of law concerning IPRs was felt at the international level. Thus, the TRIPS Agreement was formulated to bring basic level harmonisation in IPRs laws all over the world. The provisions of TRIPS Agreement are the most extensive and rigorous in nature. They protect all the forms of IPRs collectively. The protective umbrella of TRIPS covers the following IPRs:
(1) Copyright and Related Rights,
(3) Geographical Indications,
(4) Industrial Designs,
(6) Layout designs of Integrated Circuits, and
(7) Protection of Undisclosed Information.
It must be noted that by virtue of Article 1(2) of the TRIPS Agreements, the Control of Anti-Competitive Practices in Contractual Licences has been excluded from the definition of “intellectual property”. Thus, the TRIPS Agreement covers virtually the entire gamut of IPRs.
II. Patents Act, 1970 and TRIPS Agreement
The Indian Patents Act, 1970 provides patent protection in India. The same is in accordance with the provisions of the TRIPS Agreement. The recent conferment of “product patent” along with the “process patent” is an example of such compatibility. The protection to plant varieties has been excluded from the realm of patent law and a separate Act has been made for that purpose. Further, the provisions of “international patent application” and “compulsory licenses” are also in conformity with TRIPS Agreement and Doha Declaration respectively. Thus, the interest of the public at large has also been taken care of by the Indian Patents Act, 1970 and there is no need of being panicked from product patent of medicines. However, there is no need of a “further protection” to pharmaceuticals in the form of “Data Exclusivity” as the protection under the Patents Act, 1970 is not only sufficient but also in conformity with the TRIPS Agreement. The protection in the form of “Data Exclusivity” is a “TRIPS plus” provision to which Indian does not owe any obligation.
III. Salient features of Indian Patent law
The Patent law of India has the following salient features that decide whether a patent will be granted or not:
(a) The object: The object of patent law is to encourage scientific research, new technology and industrial progress. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which, after the expiry of the fixed period of the monopoly, passes into the public domain.
(b) Inventive step: The fundamental principle of Patent law is that a patent is granted only for an invention which must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's own discovery as opposed to mere verification of what was, already known before the date of the patent.
(c) Useful: The previous Act, i.e. Act of 1911, does not specify the requirement of being, useful, in the definition of ‘invention”, but courts have always taken the view that a patentable invention, apart from being a new manufacture, must also be useful.
(d) Improvement: In order to be patentable, an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement, and must independently satisfy the test of invention or an inventive step. It must produce a new result, or a new article or a better or cheaper article than before. The new subject matter must involve "invention" over what is old. Mere collocation of more than one, integers or things, not involving the exercise of any inventive faculty does not qualify for the grant of a patent.
(e) The guiding tests: To decide whether an alleged invention involves novelty and an inventive step, certain broad criteria can be indicated. Firstly if the "manner of manufacture" patented, was publicly known, used or practised in the country before or at the date of the patent, it will negative novelty or `subject matter'. Prior public knowledge of the alleged invention can be by word of mouth or by publication through books or other media. Secondly, the alleged discovery must not be the obvious or natural suggestion of what was previously known.
In short the “invention” must involve an inventive step and the same must be capable of “industrial application”. It must be supplemented by the concept of “non-obviousness”.
The Indian patents Act, 1970 is not only a complete Act but also in conformity with the TRIPS Agreement. It, however, needs enunciations in the form of judicial precedents as the same are lacking in case of patent law. It further must be analysed in the light of International developments in this field. The Indian Patent law must also be analysed in the light of both “Public International law” and the “Private International Law” as the same may create some problems in future. Further, the use of Information and Communication Technology (ICT) is going to be one of the inevitable requirements of a sound Indian Patent System.
 Article 1(2) reads- For the purpose of this Agreement, the term “intellectual property” refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II. The Control of Anti-Competitive Practices in Contractual Licences falls in the 8th category; hence it is excluded from the protective umbrella of intellectual properties.
The aim of this article is to analyse the protection available to domain name holders under the laws of India. The article further explores how the protection provided by the Indian laws is strongest in the world. Thus, a comparative analysis of the Trade Mark and the Domain Name has been made to provide a holistic picture.
The original role of a domain name was to provide an address for computers on the Internet. The Internet has, however, developed from a mere means of communication to a mode of carrying on commercial activity. With the increase of commercial activity on the Internet, a domain name is also used as a business identifier. Therefore, the domain name not only serves as an address for Internet communication but also identifies the specific Internet site. In the commercial field, each domain name owner provides information/services, which are associated with such domain name. A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online internet location. Consequently a domain name as an address must, of necessity, is peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical. As more and more commercial enterprises trade or advertise their presence on the web, domain names have become more and more valuable and the potential for dispute is high. Whereas a large number of trademarks containing the same name can comfortably co-exist because they are associated with different products, belong to business in different jurisdictions etc, the distinctive nature of the domain name providing global exclusivity is much sought after. The fact that many consumers searching for a particular site are likely, in the first place, to try and guess its domain name has further enhanced this value. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services, which already belongs to someone else, it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. Thus, a Domain Name requires a strong, constant and instant protection under all the legal systems of the world, including India. This can be achieved either by adopting harmonisation of laws all over the world or by jealously protecting the same in the municipal spheres by all the countries of the world.
(II) Trade Mark v. Domain Name
There is a distinction between a trademark and a domain name, which is not relevant to the nature of the right of an owner in connection with the domain name, but is material to the “scope of the protection” available to the right. The distinction lies in the manner in which the two operate. A trademark is protected by the laws of a country where such trademark may be registered. Consequently, a trademark may have multiple registrations in many countries throughout the world. On the other hand, since the internet allows for access without any geographical limitation, a domain name is potentially accessible irrespective of the geographical location of the consumers. The outcome of this potential for universal connectivity is not only that a domain name would require world wide exclusivity but also that national laws might be inadequate to effectively protect a domain name. The lacuna necessitated international regulation of the domain name system (DNS). This international regulation was effected through WIPO and ICANN. The outcome of consultation between ICANN and WIPO has resulted in the setting up not only of a system of registration of domain names with accredited Registrars but also the evolution of the Uniform Domain Name Disputes Resolution Policy (UDNDR Policy) by ICANN on 24th October 1999. As far as registration is concerned, it is provided on a first come first serve basis. Besides the UDNDR Policy is instructive as to the kind of rights which a domain name owner may have upon registration with ICANN accredited Registrars.
(III) Dispute resolution under the Uniform Domain Name Disputes Resolution Policy (UDNDR Policy) by ICANN
A person may complain before administration-dispute-resolution service providers listed by ICANN under Rule 4(a) that:
i) A domain name is “identical or confusingly similar to a trademark or service mark” in which the complainant has rights; and
ii) The domain name owner/registrant has no right or legitimate interest in respect of the domain name; and
iii) A domain name has been registered and is being used in bad faith.
Rule 4(b) has listed by way of illustration the following four circumstances as evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the domain name owner/registrant has registered or the domain name owner/registrant has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The domain name owner/registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The domain name owner/registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the domain name owner/ registrant has intentionally attempted to attract, for commercial gain internet users, to its web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of the domain name owner/registrant web site or location or of a product or service on its web site or location.
The defences available to such a complaint have been particularised “but without limitation", in Rule 4 (c) as follows:
(i) Before any notice to the domain name owner/registrant, the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or
(ii) The domain name owner/registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) The domain name owner/registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These rules indicate that the disputes may be broadly categorised as: (a) disputes between trademark owners and domain name owners and (b) between domain name owners inter se. A prior registrant can protect its domain name against subsequent registrants. Confusing similarity in domain names may be a ground for complaint and similarity is to be decided on the possibility of deception amongst potential customers. The defences available to a complaint are also substantially similar to those available to an action for passing off under trademark law. As far as India is concerned, there is no legislation, which explicitly refers to dispute resolution in connection with domain names. But although the operation of the Trade Marks Act, 1999 itself is not extra territorial and may not allow for adequate protection of domain names, this does not mean that domain names are not to be legally protected to the extent possible under the laws relating to passing off.
(IV) The Trademarks Act, 1999
In India, the Trademarks Act, 1999 (Act) provide protection to trademarks and service marks respectively. A closer perusal of the provisions of the Act and the judgments given by the Courts in India reveals that the protection available under the Act is stronger than internationally required and provided. Rule 2 of the UDNDR Policy requires the applicant to determine that the domain name, for which registration is sought, does not infringes or violates someone else's rights. Thus, if the domain name, proposed to be registered, is in violation of another person’s “trademark rights”, it will violate Rule 2 of the Policy. In such an eventuality, the Registrar is within his right to refuse to register the domain name. This shows that a domain name, though properly registered as per the requirements of ICANN, still it is subject to the Trademarks Act, 1999 if a person successfully proves that he has “rights’ flowing out of the Act. This point is further strengthened if we read Rule 2 along with Rule 4(k), which provides the parties have a right to agitate before a court of competent jurisdiction, irrespective of the declaration or decision to the contrary by the ICANN. Thus, a contrary decision of an Indian Court of competent jurisdiction will prevail over the decision of ICANN. The rights and liability to be adjudicated under the Trademarks Act, 1999 can be sub-divided under the following groups:
(a) Liability for infringement, and
(b) Liability for Passing off
(a) Liability for infringement: A trademark on registration is endowed with strong protection under the Act. The Act allows the owner of the registered trademark to avail of the remedies of infringement and passing off. It must be noted that though the passing off remedy can be availed of irrespective of registration, the remedy of infringement can be availed of only if the trademark is registered properly as per the provisions of the Act. Thus, a person holding a domain name violating a registered trademark can be held liable for infringement under the provisions of the Act.
(b) Liability for passing off: The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of some body. In other words a man is not to sell his goods or services under the pretence that they are those of another person. The modern tort of passing off has five elements i.e. (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. The trademark is essentially adopted to advertise ones product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiffs right is against the conduct of the defendant, which leads to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation, which other has established for himself in a particular trade or business. The action is regarded as an action for deceit. Salmond & Heuston in Law of Torts (Twentieth Edition, at p.395) call this form of injury as injurious falsehood and state: - The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves, which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition, which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders. The gist of passing off action was defined by stating that it was essential to the success of any claim to passing off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiffs goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods are the plaintiffs goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. The same principle, which applies to trade mark, is applicable to trade name. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly passing off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendant’s state of mind is wholly irrelevant to the existence of the cause of action for passing off. As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiff’s distinctive trademark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97). Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary.
Broadly stated in an action for passing off on the basis of unregistered trademark, generally for deciding the question of deceptive similarity the following factors to be considered:
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trademarks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage has to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case. A domain name may have all the characteristics of a trademark and could found an action for passing off by applying the abovementioned principles.
(V) Scope of protection under T.M.A, 1999
The Act covers the remedies peculiar to Indian legal system as well as the well-known common law principles of passing off. At the same time it is in conformity with the recognised international principles and norms. Thus, the protection provided under the Act is more reliable and secure. The following provisions are relevant in this regard:
(a) A trademark registered under the Act has the backing of the infringement and passing off remedies. An unregistered trademark is not protected by the Act, except to the extent of availing of passing off remedy. The definition of the terms “mark” and “trademark” is so widely given that it conveniently covers domain name. It must be noted that a “mark” is used, rightly or wrongly, if it is used in printed or other visual representation. It cannot be doubted that a domain name corresponding a mark is definitely used both in the printed form (electronic form) and by visual representation. Thus, the provisions of the Act can safely be invoked to fix the liability in those cases.
(b) A passing off action is maintainable in law even against the registered owner of the trademark, particularly if the trademark has a transborder reputation. This, principle recognises the mandate of protecting the well-known trademarks, as required by the TRIPS Agreement and the Trademarks Act, 1999. Thus, even if a domain name is registered in good faith and innocently, the passing off action is maintainable against the registrant.
(c) The registration of domain name with the Registrars recognised and approved by the ICANN may not have the same consequences as registration under the Trademarks Act, 1999. For instance, a registration under the Act carries with it a presumption of validity.
(d) The Act considers even an innocent infringement or passing off as wrong against the right holder, unlike domain name where mala fides has to be proved. Thus, it does not matter whether the person offending the right does so fraudulently or otherwise.
(e) The Act will have overriding effect over any other law, which is in conflict with it. Further, since it is in conformity with the TRIPS Agreement, it is equally in conformity with the well-accepted international standards. It must be noted that Rule 4 (k) provides that the proceedings under the UDNDR Policy would not prevent either the domain name owner/registrant or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution, either before proceeding under ICANN's policy or after such proceeding is concluded. This shows that there is a simultaneous and double protection available under the Act.
(f) The provisions of the Act are in conformity with the TRIPS Agreement and the W.T.O provisions. These provisions are mandatory in nature unlike the provisions of W.I.P.O, which are persuasive and discretionary in nature. The UDNDR Policy is formulated under the provisions of W.I.P.O; hence it is not binding on parties whose rights are flowing from the Act. The distinction is crucial since in case of conflict between the Policy and the Act, the latter will prevail and will govern the rights of the parties falling within its ambit.
(g) The Act allows the making of an “International application” resulting in automatic protection in designated countries mentioned in it. This gives a wider and strong protection to the trademark and makes its misappropriation harsh and punitive.
(h) The procedure for registration under the Act is more safe and reliable, as it is not granted on a first come first basis. The safeguards provided under the Act are properly followed and only thereafter a trademark is granted. Thus, the right recognised under the Act is more reliable, strong and authentic.
The protection of domain name under the Indian legal system is standing on a higher footing as compared to a simple recognition of right under the UDNDR Policy. The ramification of the Trademarks Act, 1999 are much wider and capable of conferring the strongest protection to the domain names in the world. The need of the present time is to harmoniously apply the principles of the trademark law and the provisions concerning the domain names. It must be noted that the moment a decision is given by the Supreme Court and it attains finality, then it becomes binding on all the person or institutions in India. It cannot be challenged by showing any “statutory provision” to the contrary. This is so because no statutory provision can override a “Constitutional provision” and in case of a conflict, if any, the former must give way to the latter. This settled legal position becomes relevant when we consider the decision of the Supreme Court in Satyam case (supra) in the light of the above discussion. The various landmark judgments of the Supreme Court have conferred the “most strongest protection” to the domain names in the world. The only requirement to claim the same is that we must appreciate them in their true perspective and apply them in a purposive and updating manner.
 M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
 Lakshmikant v Chetanbhat Shah, JT 2001 (10) SC 285.
 World Intellectual Property Organisation.
 The Internet Corporation for Assigned Names and Numbers.
 M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
 M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
 Section 27.
 Lord Diplock in Erwen Warnink BV v J Townend & Sons, 1979(2) AER 927.
 Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd, JT 2001 (4) SC 243.
 Wander Ltd v Antox India Pvt Ltd, 1990 Suppl SCC 727
 Lakshmikant v Chetanbhat Shah, JT 2001 (10) SC 285.
 Cadila Healthcare Limited v Cadila Pharmaceuticals Limited, JT 2001 (4) SC 243.
 M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
 Section 27.
 Sections 2(1) (m) and Section 2(1)(z) respectively.
 Section 2(2) (b).
 N. R. Dongre vs. Whirlpool Corporation, 1996 (16) PTC 583.
 M/s Satyam Infoway Ltd v M/s Sifynet Solutions Pvt. Ltd, (2004) 6 SCC 145.
 Section 31.
 Lakshmikant v Chetanbhat Shah, JT 2001 (10) SC 285.
 Sections 154 and 155.
 Article 141 of the Constitution of India.