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LAW OF EVIDENCE

A Research Paper on

Evidentiary Aspects of Intellectual Property Law


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TABLE OF CONTENTS

TABLE OF CASES..................................................................................................................................4 INTRODUCTION....................................................................................................................................6 METHODOLOGY...................................................................................................................................8 EVIDENTIARY ISSUES IN PATENT LAW.....................................................................................10

THE BASICS..............................................................................................................11 THE EVIDENCE ADDUCING PROCEDURE......................................................12 PROCEEDINGS BEFORE THE PATENT OFFICE........................................................................12 PROCEEDINGS BEFORE A TRIAL COURT.................................................................................12

OBTAINING THE EVIDENCE...............................................................................14 INSPECTION BY THE COURT........................................................................................................14 SECRECY EXCEPTION......................................................................................................................14

TYPES OF EVIDENCE............................................................................................15 DOCUMENTARY EVIDENCE...........................................................................................................15 IRRELEVANCY OF “MOSAICS” IN PROVING ANTICIPATION............................................15 RESULTS OF EXPERIMENTS...........................................................................................................16 RELEVANCY OF PROVISIONAL SPECIFICATION....................................................................16 ORAL EVIDENCE................................................................................................................................17 THE TESTIMONY OF THE INVENTOR.........................................................................................17 TESTIMONY OF PATENT EXAMINER..........................................................................................17 EXPERT EVIDENCE ..........................................................................................................................17

REAL EVIDENCE.....................................................................................................18 THE INCONVENIENCE EXEMPTION............................................................................................18

EXPERT EVIDENCE..............................................................................................19 FACT WITNESSES AND EXPERT WITNESSES............................................................................19 SCOPE OF EXPERT WITNESS’S EVIDENCE................................................................................20 THE RULE THAT THE EXPERT WITNESS DOES NOT DECIDE THE CASE AND IT’S FUTILITY IN THE INDIAN SCENARIO..........................................................................................21 THE DUTIES OF THE EXPERT AS PER IKARIAN REEFER.....................................................21 SUMMARIZING THE PRESENT LAW OF EXPERT EVIDENCE ON PATENTS....................22

CANS...........................................................................................................................22 COURT-APPOINTED SCIENTIFIC ADVISORS............................................................................23


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EXCLUSION OF EVIDENCE.................................................................................24 ESTOPPEL BY CONDUCT.................................................................................................................24 ASSIGNOR ESTOPPED FROM IMPEACHING VALIDITY.........................................................24 ESTOPPEL BY RECORD....................................................................................................................25 THE AMERICAN DOCTRINE OF EQUIVALENTS AND “FILE WRAPPER” ESTOPPEL. .25

PRIVILEGED COMMUNICATION.......................................................................27 THE RULE.............................................................................................................................................27 IT’S APPLICABILITY TO COMMUNICATIONS BETWEEN CLIENTS AND PATENT AGENTS.................................................................................................................................................27 THE AMBIT OF PROTECTION OFFERED BY THE INDIAN EVIDENCE ACT, 1872...........27

THE BURDEN OF PROOF......................................................................................29 THE BURDEN OF PROOF IN OPPOSITION OR REVOCATION PROCEEDINGS................29 THE TRIPS “REVERSE ONUS” CONUNDRUM AND THE PROVING OF INFRINGEMENT ..................................................................................................................................................................29

THE PRACTICE.......................................................................................................31 BURDEN OF PROOF ..............................................................................................37 REGISTRATION...................................................................................................................................37

INFRINGEMENT ACTIONS...................................................................................40 PASSING OFF ACTIONS........................................................................................42 MANNER OF PROVING.........................................................................................43 MANNER OF COLLECTING EVIDENCE...........................................................53 EVIDENTIARY ISSUES IN COPYRIGHT LAWS...........................................................................55 COPYRIGHT.........................................................................................................................................56

EVIDENTIARY ASPECTS......................................................................................59 REMEDIES................................................................................................................76 INTERLOCUTORY INJUNCTIONS.................................................................................................76

SOFTWARE PIRACY..............................................................................................85 INTERNATIONAL CONVENTIONS.....................................................................91 CONCLUSION.......................................................................................................................................93 BIBLIOGRAPHY..................................................................................................................................95

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TABLE OF CASES • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • • •

A& M. Records v. Audio Magnetics [1979] F.S.R. 1. Bailey & Co. Ltd. v. Clark, Sons and Morland Ltd., (1983) 2 All ER 377. Addanki Nayaranappa v. Bhaskara Krishnappa, AIR 1966 SC 1300. Anton Piller K.G. v. Manufacturing Process Ltd. (1976) RPC 719. Apple Computer v. Franklin Computer Corp, 714 F.2d. 1240. Apple Computers v. Apple Leasing, (1993) IPLR 63 (Del. HC). Art.G. Fur Autogene Aluminium Schweissung v. London Aluminium Co. Ltd., (1920) 37 RPC 13. Baume & Mercier v. A. H. moore Ltd., 91958) 2 All ER 113 ; British Celanese Ld. v. Courtaulds Ld., 52 RPC 171. British Syphon Co. v. George Sydney, (1956) RPC 225. British Thomson- Houston Co. v. British Insulated & Helsby Cables Ltd., (1924) 41 RPC 345. British Thomson-Houston Co. Ltd. v. Duram Ltd., (1920) 37 RPC 121. British Xylonite Co. Ltd. v. Fibrinyle Ltd., (1959) RPC 252 (CA). Calico Printers Association Ltd. v. D.N. Mukherjee, AIR 1936 Cal 493. CBS U.K. v. Amstrad [1988] R.P.C. 567. CBS v. Ames [1981] R.P.C. 407. Champagne Perry v. Champagne Cider, 1978 RPC 79. Cheetham v. Oldham and Fogg, (1888) 5 RPC 617. Consolidated Foods Corpn. v. Brander & Co., AIR 1965 Bom 35. Diamond v. Chakraborty, 447 US 303. Dristan v. Registrar of Trademarks, AIR 1986 SC 137. E.M.I. Ltd. and others v. K.N.Pandit.[1975] 1 All ER Ch D 418. Francis Day v. Bron [1963] Ch. 587. Franklin Hocking and Co. Ltd. v. Franklin Hocking, 4 RPC 255. G.T.C. Industries v. ITC Ltd, AIR 1992 Mad 253. Germ Milling Co. Ltd. v. Joseph Robinson, (1884) 1 RPC 217. Glaverbel v. British Coal Corporation, (1993) FSR 478. Gonville v. Hay, 21 RPC 49. Gopal Hosiery v. Deputy Registrar of Trademarks, AIR 1981 Cal 53. Graphics Arts Co. v. Hunter Ltd., 27 RPC 677. Griffin Manufacturing Co v. Gold Dust Co., 252 NY Supp 931 (1935). Gujarat Bottling Co. v. Coca Cola Co., (1995) 5 SCC 545. Habeeb Ahmed v. Registrar of trademarks, AIR 1966 AP 102. Harrods Ltd. v. Harrodian School Ltd., (1996) RPC 79. Hidesign v. Hi – Design Creators, AIR 1991 Del 243. In re Edward Hack’s Application, (1941) 58 RPC 91. Ireland v. Taylor,[1949] 1 KB 300. Jogendra Singh v. State, 1991 CriLJ 2331. Jones v. Great Central Railway, [1910] AC 4. Joseph Crosfield Ltd. v. Techno-Chemical Laboratories Ltd, 30 RPC 297. Joy Music v. Sunday Pictorial [1960] 2 Q.B. 60.


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• • • • • • • • • • • • • • • • • • • • • • • • • •

• • • • • • • • • • • • • •

Kaviraj Pandit Durgadutt v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980. Lakshmi Raj Shetty v. State of T.N., AIR 1988 SC 1274. Lallubhai Chakhubai v. Chimanlal, AIR 1936 Bom 99. Lever v. M.R.T.P.C., AIR 1977 SC 1285. Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd., 51 RPC 349 at p.367. Line v. Taylor, 3 F & F 731. M. O. Shamsuddin v. State of Kerala, (1995) 3 SCC 351. Mahabir Prasad v. Massiuthalah, (1915) 38 All 103. Maneka Gandhi v. Union of India, AIR 1978 SC 732. Minnesota Mining Co.’s case, (1973) RPC 491. Murex Welding Processes Ltd. v. Weldrics, (1933) 50 RPC178. National Bell Co. v. Metal Goods Manufacturing Co., AIR 1964 Punj 77. Nestle’s Products v. Milkmaid Corpn, AIR 1974 Del 40. Oak Manufacturing Co. v. Plessey Co. Ltd., (1950) 67 RPC 71. Osram Lamps Works Ltd. v. British Union lamp Works Ltd, (1914) 31 RPC 309. P. N. Major v. Registrar of Trademarks, AIR 1969 Cal 80. P.N.Kishanlal and others v. Government of Kerala and others, 1995 SCC (Cri) 466. Parkash v. J.N.Dhar, AIR 1977Delhi 73. Parkinson v. Simon, (1894) 11 RPC 493. Polivitte v. Commercial Union Assurance, (1987) 1 Lloyds’ Rep. 379. R v. Uxbridge Justices, (1986) 85 Cr App Rep 367. Re American Greeting Corpn. Application, (1984) 1 All ER 34. Re Coca Cola’s Application, (1986) 2 All ER 274. Roussel v. ICI, (1989) RPC 59. Shoe Machinery Co. v. Cutlan, [1896] 1 Ch. 667. Sid and Marty Krofft Television Productions v. McDonald's Corp., 562 F.2d 1152 (9th Cir. 1977).

Singer Co. v. Registrar of Trademarks, AIR 1965 Cal 417. Skyes v. Howarth, 12 Ch.D. 826 at p.830 Slade v. Tucker, 14 ChD 824. Smith Kline and French Laboratories Ltd. v. Sterling Winthrop Group Ltd., (1975) 2 All ER 578 H.L.). Sodhi Transport Co. v. U. P., AIR 1986 SC 1099. Softel, Inc. v. Dragon Medical & Scientific Communications, Inc., 118 F.3rd 955 (2nd Cir. 1997). Sumat Prasad Jain v. Sheojanan Prasad and State of Bihar, AIR 1972 SC 84. Swain v. Edlin-Sinclair (1903) 20 RPC 435. T. A. Miller Ltd. v. Minister of Housing and Local Govt., (1969) RPC 91. Thomson v. Moore, (1889) 6 RPC 426. Unilever v. Pearce, (1985) FSR 475. Warwick Film v. Eisinger [1969] 1 Ch. 508. Waugh v. BRE, [1980] AC 521. Whitehouse v. Jordan, (1981) 1 WLR 246 at 256.


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INTRODUCTION “To compress, to shape, to label the erratic sequences of life is the perennial function of the judges”1 The law of intellectual property serves as a useful umbrella for a variety of different rights and related matters. The law embraces patents, trademarks, copyright, industrial designs and service marks among other things. It is also one of those areas of law that is constantly being affected by international instruments and the pace of technological development. Disputes involving intellectual property often involve the use of unconventional forms of evidence. In patent disputes, experiments play an important part, while in trademark law the use of surveys is steadily gaining importance. In all these disputes the great value of expert evidence remains a constant feature. In this age of high technology, issues in copyright and trademark law are magnified in cyberspace. In our opinion all these developments mean is that existing principles of law must be moulded to suit to present exigencies. However, the trend amongst most scholars in the area of intellectual property rights is to examine the substantive law. Our analysis of the evidentiary aspects of the law reveals that evidential aspects of the law are as interesting and challenging as the substance of the law. In patent law, questions such as “what do have to show to prove that someone is using your patented process and how do you go about showing that?” as well as “What do you put forth before the judge to convince him of the non-obviousness or obviousness of an invention?” are bound to captivate the minds and interests of all involved in the trial process. The use of experiments is a developing practice indicative of the trends of the court. There is also an increasing tendency in the patent office to allow cross-examination on the contents of a proof affidavit. The day the US Court in Diamond v. Chakraborty2 made living matter patentable it made the process in the trial court all the more the intriguing and expert-dependant. Is the trial court judge equipped to appreciate this evidence? Are opnions of experts eventually becoming the opinions of the judges? Answering some of these intriguing questions was part of our academic pursuit.

1 2

Sybillle Bedford, British Diplomat. 447 US 303.


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In Copyright Law questions such as, “How much matter requires to be duplicated to constitute a copyright violation?” and “Does merely downloading copyrighted information from the net constitute infringement and what evidence does one use to prove downloading with intent to use for commercial purpose?.” What evidence is required to show that the new material is unique from the old one?

In Trademark Law, questions or consideration include: 

What are the Burden of proof requirements?

What sort of evidence may be adduced to fulfill these ?

How is it best to go about fulfilling the Evidentiary requirements for the relief sought?

How may Evidence be Collected?


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METHODOLOGY This research paper is titled “EVIDENTIARY ASPECTS OF INTELLECTUAL PROPERTY LAW”. Its aim is to explore the application of the law of Evidence to Intellectual Property. It also searches for the manner in which the law of Evidence may cope with the rapid changes in the field of Intellectual Property. The paper does not purport to be a thesis on Intellectual Property itself , but is rather a study of only its Evidentiary Aspects. The sources of data include cases, treatises, and articles by authorities on the subject. The internet has also been resorted to. The methodology adopted is Analytical. The style of footnoting is as follows : Books : Author, Title, edition, year of publication, publisher, place of publication, page. Articles : As prescribed and other wise : Author, “Title”, Journal, Volume, year, page. For the purpose of this paper, Intellectual Property Law is dealt with in three modules, concerning Patents, Trademarks and Copyrights. The research questions with regard to each of these are as follows : Trademarks : • What are the Burden of proof requirements? • What sort of evidence may be adduced to fulfill these ? • How is it best to go about fulfilling the Evidentiary requirements for the relief sought? • How may Evidence be Collected? In patent law, questions such as 

“what do have to show to prove that someone is using your patented process and how do you go about showing that?”

“What do you put forth before the judge to convince him of the non-obviousness or obviousness of an invention?”

Is the trial court judge equipped to appreciate this evidence?

Are opinions of experts eventually becoming the opinions of the judges?

In Copyright Law questions such as, “How much matter requires to be duplicated to constitute a copyright violation?” and “Does merely downloading copyrighted information from the net constitute


9 infringement and what evidence does one use to prove downloading with intent to use for commercial purpose?.� What evidence is required to show that the new material is unique from the old one?


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EVIDENTIARY ISSUES IN PATENT LAW


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THE BASICS In the words of Rajagopala Iyengar, “a patent is a statutory grant of monopoly for working an invention and vending the resulting product�.3 Legal disputes in patent law are essentially of three types, opposition (which is an effort on the part of a person to prevent the grant of a patent to the applicant for the patent), revocation (which is an effort on the part of a person to render a patent invalid by proving unpatentability) and infringement proceedings (where the holder of a patent sues another for the wrongful working of a patented product or process). Patent disputes are on the rise because of the increasing strategic importance of patents. A patent means control over a portion of the market for a long period and today the scope of patentability has been extended to living matter such as plants and other organisms.4 To allow a competitor a patent in a particular field is to sound a death knell for ones future prospects in one market. Thus patent disputes are becoming increasingly long drawn and costly. This module of the paper deals with evidentiary aspects of patent disputes. It is confined only to the same and does not venture forth into other questions of law that substantive patent law addresses.

3 4

Ayyangar, Rajagopala, Report on the Revision of the Patents law (Govt. of India, 1959), p.9. Diamond v. Chakraborty, 447 US 303.


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THE EVIDENCE ADDUCING PROCEDURE This paper concerns itself with essentially two types of proceedings involving patents, namely, a) opposition proceedings before a controller and b) suit for infringement with or without counterclaim for revocation. This is usually before a trial court (which in the case of patent infringement proceedings is always the district court). Proceedings before the Patent Office The patent office is a quasi-judicial forum, a tribunal. In the patent office evidence is introduced by affidavit unless the Controller of the Patent Office directs to the contrary. S.79 of the Indian Patent Act, 1970 states that “Subject to any rules made in this behalf, in any proceedings under this Act before the Controller, evidence shall be given by affidavit in the absence of directions by the Controller to the contrary, in any case in which the Controller thinks it right to do so, he may take oral evidence in lieu of, or in addition to, evidence by affidavit, or may allow any party to be crossexamined on the contents of his affidavit.� All affidavits should comply with the requirements of Rule 111 of the Patent Rules. Affidavits are not governed by the provisions of the Indian Evidence Act, 1872.5 Proceedings before a Trial Court The proceedings in the Trial Court are governed by the provisions of the Indian Evidence Act, 1872. It is to be noted that in suit for infringement if the defendant has counter-claimed for revocation then the case will be transferred to the High Court for decision. Since nearly all suits for infringement give rise to a counter-claim for revocation matters such as these are usually tried by the High Court.6 Where the plaintiff relies on any documents (whether in his possession or power or not) as evidence in support of his claim, he should enter such documents in a list to be annexed to the plaint.

5

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In the plaint the plaintiff lays down the particulars of his

Affidavits are not included in the definition of evidence in s.3 if the IEA and are expressly excluded by s.1 of the same; Parkash v. J.N.Dhar, AIR 1977Delhi 73. 6 Proviso to s.104 of the Indian Patent Act, 1970. 7 Order 7, Rule 9 of the Civil Procedure Code, 1909.


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assertions.8 The particulars consist of the acts complained of, the details of the patent sought to be infringed and any other grounds of discontent. The purpose of the particulars of infringement suits is to define the issues, limit the area of inquiry and prevent surprise to the opposite party.9 The extent of particularity will depend upon the subject matter and the facts of the case. The particulars are very important because it is rule of admissibility especially applicable in patent cases. The rule is that evidence of matters coming within the scope of particulars alone will be admitted.10

8

Lallubhai Chakhubai v. Chimanlal, AIR 1936 Bom 99. Glaverbel v. British Coal Corporation, (1993) FSR 478. 10 Skyes v. Howarth, 12 Ch.D. 826 at p.830 c.f. Falconer, Douglas, Aldous, William and Young, David, Terell on the Law of Patents, 12th Edn., Sweet and Maxwell: London, 1971, p.327. 9


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OBTAINING THE EVIDENCE Where a prima facie case for infringement is made out, the plaintiff may get an order for inspection of the defendant’s process of manufacture. 11 Courts have however observed that it is not necessary in all cases for a prima facie case to be made out before order for inspection will be made: provided that the defendants interests are properly and adequately safeguarded, and that there really is a substantial and genuine issue to be tried.12 Inspections of the defendants premises, machines or processes may be limited to scientific or expert witnesses, and legal advisors only.13 Inspection by the Court The Madras High Court in the case of Anasar Chinna Dastagiri Sagar v. Madduleti Buggappa14, stated that in a case of infringement for patents it is vital for the Court or for experts deputed by it to inspect the original machines and the alleged counterfeit machines in order to determine whether there is sufficient similarity to constitute infringement and sufficient novelty to uphold the patent. Secrecy Exception Even if a secret process is set up by the defendant that will not deter the Court from making such orders or arrangements in the action as may be necessary in the interests of justice. But the court will take all reasonable and proper steps to prevent undue advantage being taken of inspection of the secret processes an to insure that wrong is not done to the defendants who are legitimately setting up the possession of a secret process.15 Common law has recognized that the simple expedient of restricting disclosure to the judge or the Courts advisors will usually prevent whatever detriment might otherwise be incurred by forcing a public revelation of the trade secret.16

11

Osram Lamps Works Ltd. v. British Union lamp Works Ltd, (1914) 31 RPC 309; Germ Milling Co. Ltd. v. Joseph Robinson, (1884) 1 RPC 217; Cheetham v. Oldham and Fogg, (1888) 5 RPC 617. 12 British Xylonite Co. Ltd. v. Fibrinyle Ltd., (1959) RPC 252 (CA); Unilever v. Pearce, (1985) FSR 475. 13 Swain v. Edlin-Sinclair (1903) 20 RPC 435; British Syphon Co. v. George Sydney, (1956) RPC 225. 14 AIR 1955 NUC 5672 (Mad). 15 British Thomson-Houston Co. Ltd. v. Duram Ltd., (1920) 37 RPC 121 at 131; Roussel v. ICI, (1989) RPC 59 ; In the latter case court allowed only select members of the plaintiffs legal advisors to inspect the process. 16 Griffin Manufacturing Co v. Gold Dust Co., 252 NY Supp 931 (1935) c.f. Wigmore, Vol.8.


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TYPES OF EVIDENCE Documentary Evidence Irrelevancy of “Mosaics” in proving anticipation In opposition proceedings or in counter-claims for revocation, the plaintiff may be pleading anticipating of the invention that is patented or sought to be patented. The question arises as to what sort of evidence can be said to be legitimate to prove anticipation. If the plaintiff collates excerpts from numerous treatises and states that the thing wrongfully patented or sought to be patented, is anticipated by the idea in that collection of excerpts, will the court accept such evidence? The answer to that question is in the negative. A collection of material which usually bears no substantial connection with each other and the publication of which may be spread out over a period of time is identified as a “mosaic”. Such a mosaic will not be considered by the court to be a relevant fact. In the case of Von Heyden v. Neustadt17 the defendants pleaded anticipation and put in evidence a mass of paragraphs extracted from a large number of publications. The court opined that “the contention of anticipation stands self-condemned if the plaintiff has to take recourse to such a varied lot of material to prove anticipation.” In Lowndes Patent18 the learned judge Tomlin J. succinctly put across the point of law stating that “it is not open to you to take a packet of prior documents and …..by…… putting a puzzle together to produce what you say is a disclosure in the nature of a combination of the various elements which have been contained in the prior documents. I think it is necessary to point to a clear and specific disclosure of something which is said to be like the patentee’s invention.” Let’s consider the following example; “A” is the patent applicant or patent holder of the invention that is the light bulb. “B” in opposition or revocation proceedings puts forth numerous excerpts showing; that under intense heat some substances emit light; that the passing of electricity through some substances causes intense heating and that in a vacuum such light can be made to be emitted consistently. Even though all the features of light bulb are present in the cumulation of those excerpts, the bulb could still withstand the challenge because it is a device that combines those features in a workable manner. The “mosaic” that “B” 17

50 L.J.Ch 126 at p.128 c.f. Falconer, Douglas, Aldous, William and Young, David, Terell on the Law of Patents, 12th Edn., Sweet and Maxwell: London, 1971, p.327. 18 45 RPC 48 at p.57.


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introduced is likely to be disregarded and not considered as relevant in deciding the question before the court. In fact such a document could have an adverse effect because the adjudicator may draw an inference that the bulb is novel because of the incorporation of such features. Results of Experiments In patent infringement cases, it may be necessary to introduce results of experiments to prove infringement. As a general rule the results of any experiments conducted to show the truth of any assertion are admissible. 19 This admissibility is however subject to a mandatory requirement. If either party desires to rely in evidence at the trial upon the result of any experiment prepared for the purpose of the trial then notice thereof should be given to the other party and an opportunity, if desired, of inspecting the same or a repetition thereof.20 The British Celanese case21 expanded this rule by holding that even if the matter arose in the course of the evidence adducing process, evidence of experiments relating to the same could be allowed. After all, all this is for the purpose of facilitating the judge to arrive at a conclusion. Such experiments serve a very practical purpose since a properly conducted experiment would indicate the effect of constructive reduction to practice. Let’s consider an illustrative example; “A” the plaintiff is a manufacturer who has a patent for a process “X” which involves the ingredients p,q and r.. “B” the defendant is a person who manufactures the same product by ingredients p,q,r and s. If by experiment “A” can show that ingredient s is of no functional value and that the process used by “B” is materially the same as the patented process then the weight of that evidence would be tremendous because then even if the defendant has an expert the onus would be on that expert to show that the experiment was faulty. Relevancy of Provisional Specification To get at what is the real object of the plaintiff’s patent one may look at the provisional specification. That is so because the object of the complete specification 19

Art.G. Fur Autogene Aluminium Schweissung v. London Aluminium Co. Ltd., (1920) 37 RPC 13 at 164; British Thomson- Houston Co. v. British Insulated & Helsby Cables Ltd., (1924) 41 RPC 345 c.f. Narayanan, P., Patent Law, 3rd Edn., Eastern Law House: New Delhi, 1998, p.475. 20 Oak Manufacturing Co. v. Plessey Co. Ltd., (1950) 67 RPC 71. 21 (1933) 50 RPC 63 at 84.


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usually, is to carry out in detail that which is more generally expressed in the provisional specification.22 Oral Evidence The Testimony of the Inventor The testimony of the inventor satisfies the requirement of oral evidence under s.60 of the Indian Evidence Act, 1872 since it is the evidence of the witness who perceived it. The inventor is also referred to as fact witness.23 Even though he may be an expert he deposes only to the facts and circumstances 24 of the invention. In the case of Bishwanath Prasad v. Hindustan Metal Industries25, an adverse inference was drawn from the absence of the Inventor as witness. Rule of Corroboration: In the United States the rule of corroboration of the inventors testimony has doctrinal status by virtue of cases such as Weber v. Good and Puzrath26 and Price v. Symsek27. In India it subsists as a matter of appreciation by the adjudicator. Testimony of Patent Examiner Even though the patent examiner is estopped from deposing at the behest of either party the Court may require him to do so. Expert Evidence Expert evidence may be administered in oral or documentary form and has been dealt with in a separate chapter.28

22

Parkinson v. Simon, (1894) 11 RPC 493. See under Expert Evidence. 24 Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd., 51 RPC 349 at p.367. 25 (1979) 2 SCC 511. 26 129 USPQ 32, 42 (Patent Office Board of Patent Interferences). 27 26 USPQ2d 1031 (US Court of Appeals). 28 See separate chapter on Expert Evidence. 23


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REAL EVIDENCE Material objects can be said to fall within the defines of real evidence. In matters involving patents sometimes the judge thinks it necessary to produce such objects. In process patent infringement suits the machine in question is among the facts in issue. In such circumstances the judge may draw an adverse inference if the machine is not produced. The Inconvenience Exemption It may cause inconvenience to bring the desired object before the tribunal and on this ground its production may be forbidden at the courts discretion. 29 Thus an exception to Rule 111 of the Patent Rules can be made in such circumstances.

29

R v. Uxbridge Justices, (1986) 85 Cr App Rep 367; Line v. Taylor, 3 F & F 731 c.f Wigmore Vol.4.


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EXPERT EVIDENCE “Law is not logical” Disputes involving patents usually require expert assistance to be resolved successfully. Where patents involve scientific inventions, questions such as “What was the scope of the patent protection offered by the claims?” and “Whether the allegedly infringing product or process is in fact violating a pre-existing patent?” can be best resolved with expert assistance. However the both the value of expert testimony and the kind of questions that can be addressed to the expert witnesses work under legal constraints that shall be examined in detail later.  Fact Witnesses and Expert Witnesses There is a critical difference between experts who are witnesses and expert witnesses and this is best elucidated in the categorisation of experts introduced to the court as fact witnesses and expert witnesses. A fact witness is one who was privy to the occurrence of facts in the present matter i.e. an inventor of product ‘X’ could be fact witness in a matter involving the same.30 He may be an expert but his status at the time of the deposition is unique since he is an interested party. An expert witness, quite simply is an expert, uninterested in the disputed matter but who has valuable knowledge on the subject matter of the dispute. He gives his informed and reasoned opinion on the matter and such evidence bears great weight in terms of appreciation by the adjudicator. After accepting the distinction the question that is bound to be asked is “what difference does the distinction make?”. There are essentially two differences; a) expert witnesses can give opinions on the matters within their area of expertise whereas a fact witness can only report the process of patenting etc, b) opposing counsel cannot interview a fact witness before deposition but a expert witness can be interviewed.

30

Pearson, Hillary, Miller, C.G., Commercial Exploitation of Intellectual Property, Universal Book Traders: Delhi, 1994, p.310.


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 Scope of Expert Witness’s evidence In patent cases, experts may be called upon; 

to explain the technical terms employed;

to instruct the court in any relevant scientific principles;

to show the state of scientific knowledge at the time of the grant;

to explain the nature, working characteristic features and probable mechanical results of an invention, together with what is old or new in the specification, and how far any scientific advance has been made thereby, as well as;

in the case of rival inventions, to point out the similarities and differences therein and how far these are material or unimportant.31

However in common law the principle of evidence behind expert evidence is clear. The function of an expert was clearly put forth in Brooks v. Steele and Currie32 . While accepting the importance of experts opinion Lindley L.J. concluded that “…… But after all the nature of the invention has to be determined by the judge and not by a jury, nor by any expert or other witness. This is familiar law though often disregarded when witnesses are being examined.” 33 The practical implication of the exposition of this common law rule is that experts cannot be asked to give their opinions directly upon the facts in issue i.e. their evidence must be confined to the relevant facts upon such decision may be based. Thus, an expert cannot be asked whether or not there has been an patent infringement34 or whether or not the invention is obvious35, but he may be asked as to matters such as the nature of the alleged infringing acts. To sum up precisely the common law rule of evidence; for an expert witness to pronounce on the fact-in-issue would be to foreclose what is rightly the prerogative of the adjudicator and that is not acceptable, in principle or in practice. The expert witness does not decide the case.

31

See Narayanan, P., Patent Law, previously cited. 14 RPC 46 at p.73. 33 See also the cases of Graphics Arts Co. v. Hunter Ltd., 27 RPC 677 at p.687; and Joseph Crosfield Ltd. v. Techno-Chemical Laboratories Ltd, 30 RPC 297. 34 In a Infringement action. 35 In an Opposition or Revocation proceeding. 32


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The Rule that the Expert Witness does not decide the case and it’s futility in the Indian Scenario The question that now is posed before us is whether the above rule is logically sound and further is the rule applicable in the Indian context. Addressing the question of logical soundness, it is submitted that this rule does nothing more than state the obvious and create hurdles during examination proceedings. According to this rule the expert can only lay out the meanings of the various technical facts of the matter and leave the judge to decide thereupon. Academically this seems arguable but in practice this amounts to nothing but legal fiction! Let us consider an example: An expert is deposing in the court in the matter of a patent infringement. According to the rules of practice stemming from the rule mentioned above, the lawyer cannot put to the expert the question “has there been an infringement of a patent?” He can instead ask him questions such as “Does the allegedly infringing product possess structural and functional similarity to the patented product?” Yes, the questions may differ in semantics but what is the difference in effect? In both cases the judge is not bound by the expert evidence. In other words this rule is nothing but expression of the formalities of court proceedings. In my opinion s.45 of the Indian Evidence Act, 1872, excludes the rule that the expert cannot opinionate on the fact-in-issue. S.45 states that “when the court has to form an opinion on an question of science or art then it can take the opinion of experts on those questions.” What happens when the fact-in-issue is essentially a question of science or art as in the case of matters concerning patent disputes? S.45 answers that the expert can opinionate on the fact-in-issue. In fact, in common law itself the confusion is exemplified by the decisions of the courts in cases such as R v. Mason 36 in which courts have held to be valid the proposition that where the issue is substantially one of science or skill then the expert may be asked the very question which the adjudicator has to decide.37

The Duties of the Expert as per Ikarian Reefer 36

7 Cr App R 67. See also cases of Ireland v. Taylor,[1949] 1 KB 300 c.f. Howard, M.N., Crane, Peter and Hochberg, Daniel Art., Phipson on Evidence, 14th Edn., Sweet and Maxwell: London, 1990,p.811. 37


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In the Ikarian Reefer38 case Crosswell, J., summarised the duties and responsibilities of the expert witness as follows;

1. Expert evidence prevented to the court should be, and should be seen to be, the independent product of the expert uninfluenced as to form of content by the exigencies of litigation.39

2. An expert witness should provide independent assistance to the court by way of objective unbiased opinion in relation to matters within his expertise. 40 An expert witness cannot assume the role of an advocate. 3. An expert witness should state the facts or assumptions on which his opinion is based. He should not omit to consider material facts which could detract from his concluded opinion. 4. An expert witness should make it clear when a particular question falls outside his expertise. 5. If an expert’s opinion is not properly researched because he considers that insufficient data is available, then this must be states with an indication that the opinion is no more than a provisional one. 6. If, after exchange of reports, an expert witness changes his view on a material matter having read the other sides’ expert’s report or for any other reason then such a change of view must be communicated to the other side and the court without any delay. Summarizing the present law of expert evidence on patents CANS According to the present law the expert can give evidence on; 

The state of the art

Meaning of technical terms

Whether the product protected or sought to be protected corresponds to the scope of protection set forth in the claims

38

What is the working result of a product or process.

(1993) FSR 563 at 565. Per Lord Wilberforce in Whitehouse v. Jordan, (1981) 1 WLR 246 at 256. 40 Polivitte v. Commercial Union Assurance, (1987) 1 Lloyds’ Rep. 379 c.f. Narayanan, p.473. 39


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CANNOTS The expert cannot (neither can the counsel ask); 

The meaning of the specification

Whether the given step or alteration is obvious.41

Court-Appointed Scientific Advisors Under Rule 88 of the Patent Rules, 1972, the Controller must maintain a roll of scientific advisors for the purposes of s.115 of the Patent Act, 1970. S.115 enables the Court to take the assistance of scientific advisors in determining any question of fact involving technicalities.

41

Per Lord Tomlin in British Celanese Ld. v. Courtaulds Ld., 52 RPC 171 at p.196. See also Minnesota Mining Co.’s case, (1973) RPC 491 at 536 c.f. Narayanan, P., Narayanan on Patent Law, Eastern Law House Calcutta, 1975, p.318.


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EXCLUSION OF EVIDENCE Rules of Estoppel Estoppel can be treated as a exclusionary rule of evidence 42 since by virtue of it a party to litigation is prevented from disputing a certain fact or set of facts. 43 Estoppel can operate in three ways i.e. by conduct, by record and by deed. S.115 of the Indian Evidence Act incorporates all these three forms of estoppel. Estoppel by Conduct Assignor estopped from impeaching validity The rule of Estoppel here is that the assignor of a patent i.e. the person to whom the grant for working a patent (registered in the name of the assignor) is made, cannot dispute the validity of the patent in an action for infringement against him.44 For instance; “A” is the patentor who has assigned his patent (given the rights associated with owning a patent) to “B”. A suit is filed against him by “B” for manufacturing the patented product after he has assigned the right to that away i.e. a patent of infringement. “A” is estopped from claiming that the patent is invalid and consequently cannot file a counter claim for revocation. The principle is that the grantor cannot defeat his own grant.45 Licencee estopped from impeaching validity A licensee of a patent cannot dispute the validity of the patent as against the licensor. In the landmark case of Clarke v. Adie46, Blackburn J. compared the position of a licensee who is working under a patent right, for which another has got a patent, as

42

It is important to note that estoppels only operate when they are pleaded and this is counter to the other rigid rules of exclusion of evidence. 43 Tapper, Colin, Cross on Evidence, 7th Edn., Butterworths: London, 1990, p.73. 44 Gonville v. Hay, 21 RPC 49 at p.51 c.f. Narayanan, p.199. 45 Under s.115 of the Indian Evidence Act this rule is expressly recognised; Franklin Hocking and Co. Ltd. v. Franklin Hocking, 4 RPC 255 at p.259. 46 (1877) 2 App Cas 423 (HL).


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being analogous to that of a tenant under a lease.47 He laid down the following propositions; 1.

During license period the licensee cannot contest the patent though he can adduce evidence to prove that the patent has expired48

2.

The licensee might however adduce evidence to prove that any act of his under question was not under the protection of the patent 49 and could have been done by the general public and thus he does not have to pay royalties

Estoppel by Record Where judgement has been given in an actions, and the record shows that some question has been put in issue and decided,50 whether such judgement be by consent or otherwise,51 either party to the litigation is thenceforth estopped in subsequent proceedings between the same parties from alleging and proving facts inconsistent with the correctness of such a decision. This rule is incorporated in matters concerning patent disputes. As far back as in Thomson v. Moore52, the court held that where judgement is given for a plaintiff in an action for infringement, the patent being held to be valid and to have been infringed, the defendant if sued again by the patentee will be estopped from the denying that the acts earlier complained of were infringing or that the patent is valid, 53 even though he may seek to attack its validity along totally different grounds.54 The American Doctrine of Equivalents and “File Wrapper” Estoppel The doctrine of equivalents

involves a reasonable construction of patent

specifications to protect patent holders against copyists who make unimportant changes to patented products and processes and then claim no-infringement. One limit 47

He further stated “So long as the lease remains in force remains in force and the tenant has not been evicted from the land he is estopped from denying that his lessor had a title to the land. When the lease is at an end the man who was formerly the tenant, but who has now ceased to be so, may show that it was altogether a mistake to have taken that lease, and that land really belonged to him; but during the continuance of the lease he cannot show anything of that sort; it must be taken as against him, that a lessor had a title to that land. Now, a person who has taken a license from a patentee, is bound upon the same principle and in exactly in the same way. “c.f Sarkar, S., Sarkar on Evidence, 48 See Clarke v. Adie, previously cited. 49 Ibid. 50 See Murex Welding Processes Ltd. v. Weldrics, (1933) 50 RPC 178 at p.182. 51 Thomson v. Moore, (1889) 6 RPC 426. 52 Ibid. 53 Ibid. 54 Shoe Machinery Co. v. Cutlan, [1896] 1 Ch. 667.


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to the use of this doctrine involves a review of the patent holders negotiations (patent file/ “wrapper”) with the patent office. If the patent holder relinquished a claim with respect to his device in response to the patent examiner’s objections and the claim he gave up is the same as the accused’s mode of operation then the court will not apply the doctrine of equivalents. This form of extoppel is called “file wrapper estoppel.” 55

55

Lautsch, John C., American Standard Handbook of Software Business Law, Reston Pub: Virginia, 1985, p.74.


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PRIVILEGED COMMUNICATION The Rule Confidential communications between a person and his solicitor and counsel are privileged documents.56 The rule is established for the protection of the client, not of the lawyer and is founded on the impossibility of conducting professional assistance without privity of communication.57 Since it is for the client’s assistance it may be waived by the client and not by the lawyer. 58 Just as in the use of estoppel it is party pleaded exclusionary rule and not a statutory incorporation. It’s applicability to Communications between Clients and Patent Agents Communications between a man and a person who is merely his patent agent are not privileged.59 The question of his privilege arises in present times where the solicitors act as the patent agents as well. In situations where the patent agent acts in the capacity of a patent advisor, privilege can be availed of by the client under common law.60 This is the sole exception to the rule that agents cannot avail of the privilege. Section 15 of the British Civil Evidence Act, 1968 mandates that “communications between patent agents and their clients are privileged from disclosure in civil proceedings where made for the purpose of any pending or contemplated proceedings under the Patents Act 1949 before the Comptroller or the Appeal Tribunal.”61 The ambit of protection offered by the Indian Evidence Act, 1872 Section 280 of the Copyright, Designs and Patent Act, 1988 enlarged the privilege given by s.15 of the Civil Evidence Act, 1968 to include non-litigous communications. Now in Britain clients and patent agents (in non-litigous capacity) can avail of the privilege. The question that arises is whether the Indian Evidence Act or the Indian Patent Act provides for such protection. Section 126 of the Indian Evidence Act, 1872 mandates that the privilege applies to communications between a client and his 56

S.126 of the Indian Evidence Act, 1872, Jones v. Great Central Railway, [1910] AC 4, 5; Waugh v. BRE, [1980] AC 521 c.f. Phipson on Evidence, p.500. 58 s.126 and s.127 of IEA. 59 Slade v. Tucker, 14 ChD 824 c.f Sarkar, S and Manohar, V.R., Sarkar on Evidence, 14th Edn., Wadhwa: Nagpur, 1993, p.1861. 60 s.15 of the Civil Evidence Act. 61 Extracted from Carter, P.B., Cases and Statutes on Evidence, 2nd Edn., Sweet and Maxwell: London, 1995, p.663. 57


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“barrister/ attorney/ pleader / vakil”. By specifying the types of lawyers the section denies protection to patent agents acting in the capacity of legal advisors even if the communication is for the purpose of litigation. The lawyer must be a “barrister/ attorney/ pleader / vakil”. However it can be argued that since s.129 uses the term “legal professional advisor” the patent agent advising on litigation could be brought under that section, but this would only stop the opposition from compelling the client to disclose the information and would not stop the patent agent from telling all (for that protection is required under s.126). It is submitted that protection must be offered to patent agents otherwise the purpose of the law of privileged communication is not served.


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THE BURDEN OF PROOF As is the case in civil cases the burden of proving whether an invention is obvious or whether a product has infringed a patent lies squarely on the person who asserts the claim. The Burden of Proof in Opposition or Revocation Proceedings As far back as in 1936 the Calcutta High Court in the case ruled out the argument that facts-in-issue in patent disputes came under the definition of facts “especially within knowledge” under s.106 of the Indian Evidence Act, 1872 and that therefore the burden of proof should be on the defendant. 62 There is a clear presumption of validity of the patent. The TRIPS “reverse onus” Conundrum and the Proving of Infringement The Indian Patent Act, 1970 does not address the question of burden of proof thus subjecting itself to the accepted rule of burden of proof in civil cases. Logically even in infringement cases the burden of proving infringement should lie on the person asserting the claim. The TRIPS agreement transfers this burden of proof to the defendant; it mandates through Art.34(1) that “For the purpose of civil proceedings in respect of the infringement of the rights of the owner …… , if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process.” The provision then proceeds to incorporate a “presumption of infringement”. Such a reversal of burden of proof is not unusual since s.100 of the British Patents Act 1977 has incorporated the same since 1977. Also in British Thomson Houston Co. Ltd. v.

Charlesworth Peebles and Co.63 the court held that if the defendants

manufacture is carried on abroad and it is impossible for the plaintiff to ascertain the actions of the defendant then it is sufficient for the former to make out a prima facie 62

Calico Printers Association Ltd. v. D.N. Mukherjee, AIR 1936 Cal 493; See also Monir, M., Principles and Digest of the Law of Evidence, Vol.2, 6th Edn., University Book Agency: Allahabad, 1986,p.1136. 63 (1923) 40 RPC 426.


30

case. However in the Indian context besides running counter to present practice and law this reversal is bound to cause considerable hardships to poor Indian manufacturers.64

64

Banneejee, Shyamal, GATT 1994: The WTO and India, Meharia: Calcutta, 1994, p.245.


31

THE PRACTICE It is submitted that the do’s and the do not’s outlined by this paper will be best understood in the context of a proper proceeding. Let us consider a hypothetical proceeding; “A” is a patent holder who suspects that “B” is using his patented process to manufacture the same product. “B” confesses to his patent agent that in substance the patented process is being used. “A” files a suit of infringement and “B” files a counter-claim for revocation. 

“B’s” communications with his patent agent are not protected under the Indian Evidence Act so “B” cannot claim privilege.

To prove that “B” infringed the patent “A” may seek inspection of the machine through his experts and the Court’s scientific advisors.

After the TRIPs agreement takes effect in Indian evidence law “A” may make lay out the base fact that the same product is being made and the Burden of Proof will be transferred to the defendant (reverse onus).

“B” to prove unpatentability can introduce specific material which has the effect of anticipating the allegedly wrongly patented product. “B” may not introduce “mosaics” to anticipate.


32

EVIDENTIARY ISSUES IN TRADEMARK LAW


33

ISSUES IN TRADEMARK LAW What is a trademark ? “Trade mark” means a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate a connection in the course of trade between the goods and some person having either as a proprietor or as a registered user to use the mark, whether with or without any indication of what the identity of the person is.65 The concept of a trademark is open ended and limitless in its strictest sense. The only boundaries it knows are those of the human imagination. The definition provided above is wide, but cannot in any way be said to be exhaustive. The definition of the term in Section 2(1)(j) of the Trade and Merchandise Act, 1958 is inclusive and cannot be said to exhaust our understanding of it.66 Law however outlines the concept so as to regulate its use. This outline is necessarily limited by the purpose for which trademarks exist. Purpose of Trademarks : They are representations, whether by way of words or symbols, or a combination of the two or otherwise that manufacturers use to brand their products so that consumers may associate those products with the manufacturers. Primary to this association is the nexus with the qualitative features that such a manufacturer is known for. In other words trademarks are to enable customers to buy goods of the quality of their choice, made by the manufacturer of their choice. Retailership would be a failure to both the manufacturer and the customer, if the customer was not able to chose the manufacturer of the good that he purchased. Thus trademarks are of importance not only for the consumer, but to the manufacturer. He may thus reap the rightful rewards of the investments that he made in popularizing his product. Consequently a trademark is a proprietary interest. 67 The Trade and Merchandise Act, 1958 uses the term “proprietor” in relation to a trademark, indicating this. Thus a broad understanding of trademark would include any feature of a product, or its packaging that allows customers to associate it with the maker of it. The Trade and Merchandise Act, 1958 recognizes only a certain manner of achieving this object; that is by affixing a mark consisting of words or symbols, or both or in to the product or 65

Re American Greeting Corpn. Application, (1984) 1 All ER 34. Gujarat Bottling Co. v. Coca Cola Co., (1995) 5 SCC 545. 67 Consolidated Foods Corpn. v. Brander & Co., AIR 1965 Bom 35. 66


34

its packaging. At this stage it is important to remark that Trademark Law, on account of its open-ended nature is not bound by the statute book and extends to Common Law. Variations of the Concept : While the statute only recognizes certain limited marks, 68 Common Law recognizes any manner of making the product distinctive of the manufacturer. For example, no registered trademark may exist of the shape of a bottle of a world famous beverage;69 however the company using that bottle does have a proprietary right over the shape of its bottle. Thus it is not only the particular symbol of a manufacturer, but the get-up of the good, its shape, color or any other distinctive feature that comes under the wider understanding of the term “trademark”. 70 An allied concept that also falls under the same umbrella, though it is technically outside the term “trademark” is Goodwill. While Goodwill also extends to the product, its mark, etc., it refers to a wider scope of affairs, such the name of a firm, its clientele and customers, it location, its assets, and other factors that are related to the reputation of a firm. This too is a proprietary right and is legally protected. The distinguishing feature of goodwill, is that it is attached to the business concern and not to its product. No independent existence : One of the main features of trademarks( and also goodwill) is that is intangible property. A trademark does not exist in vacuo. It is this feature that entails number of evidentiary implications, as no right with regard to a trademark may be proved without reference to a product. Necessarily, there is a complication of evidentiary principles in this regard. Thus a trademark may only exist in relation to certain goods or certain categories of goods. The use of a trademark for other goods will not amount to an infringement, except in certain cases of dilution, which shall be dealt with later. How trademarks come into existence : A trademark may come into existence in two ways : 1. By registration of the mark. 2. By long usage of a mark, it may come to be identified with the manufacturer of a product and consequently enjoy the status of a trademark. The former manner of creation of a trademark is envisaged by statute itself. It envisages the registration of trademarks along with the categories of products to 68

See Sumat Prasad Jain v. Sheojanan Prasad and State of Bihar, AIR 1972 SC 84. Re Coca Cola’s Application, (1986) 2 All ER 274. 70 Narayanan, Intellectual Property Law, ***** 69


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which they may relate with the Registrar of Trademarks at the Registry of Trademarks. Once registered, a trademark receives protection from imitation subject to other requirements, which shall be discussed. The latter manner of establishing a trademark comes into question only where a violation of an un-registered mark is claimed or where the feature that is sought to be protected is not strictly registrable. 71 The evidentiary aspects of these two are also discussed in this paper. The Bottomline requirement of a trademark : The bottomline of a trademark is that it must be distinctive.72 This is on account of three reasons. Firstly, from the point of view of the owner it must be one that potential customers distinguish as originating from the particular manufacturer. Secondly, from the point of view of public policy, it is necessary that no person be given a monopoly over a word or mark that is common usage. This would unreasonably deprive others of the use of the mark. Thirdly from the point of view of other manufacturers, they must be excused for using a mark in good faith, if the mark is of such a nature that its use would be in the ordinary course of nature. For all these reasons it generally desirable that every trademark be distinctive, one that does not cause confusion and one that is not in general usage in any field. It is in proving such a nature that complicated evidentiary implications emerge. As will be seen later in the course of this paper different parties will have to prove positions on the distinctiveness of a trademark, in different proceedings. Trademark violations : Trademarks, or rights to their usage, like all property, can be transferred. Subject to restrictions, they may be assigned or transferred. In addition the right to use a trademark may be licensed by the owner to other parties who are desirous of sharing its reputation. Such transmissions must be entered in the register where the trademark is recorded in the case of registered trademarks. Also like other forms of property trademarks may be protected. Unauthorized use may result is legal proceedings, which may of a Civil or of Criminal Nature. Criminal proceedings however are limited to registered trademarks, are slow and involve a greater burden of proof. By and large most actions in trademark law are of a Civil Nature as these provide faster and efficacious relief including compensation, etc. What must be 71

Smith Kline and French Laboratories Ltd. v. Sterling Winthrop Group Ltd., (1975) 2 All ER 578 (H.L.). 72 Hailsham, Halsbury’s Laws of England, Vol. 48, 4th ed., p. 584.


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proved in these proceedings for a violation of trademark to be proved ? How is it to be proved ? When a person wishes to bring action against another for the violation of a trademark right, there are two types of proceedings that he may resort to: 1. Infringement proceedings under the Trade and Merchandise Marks Act, 1958. 2. Passing off Action under Common Law. While the former may be used only with regard to trademarks registered under the said Act, the latter applies to trademarks, both, registered and unregistered. Both these sorts of proceedings have their own advantages and may be resorted to in varying situations. Usually the plaintiff would seek to conduct both, if he can satisfy the requirements. Reliefs : The plaintiff may seek a number of reliefs under the above mentioned proceedings. These include : (i)

An injunction to prevent the defendant from using the trademark.

(ii)

Damages or an account of profits.

(iii)

Delivery up of the offending Articles for erasure or destruction.

(iv)

Temporary injunctions and a variety of interim orders.

The last category of reliefs are of particular importance in trademark law. They also include the controversial Anton Pillar injunction which shall be discussed later. These interim reliefs require proof of a peculiar nature and have interesting evidenciary implications.


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BURDEN OF PROOF REGISTRATION Any person claiming to be the proprietor of the Trademark used or proposed to be used can apply for the registration of the same before the Registrar of Trademarks in the Registry. The procedure for doing so is specified in sections 18 – 26 of the Trade and Merchandise marks Act, 1958 and rules 3 – 70 of the Trade and Merchandise Marks Rules, 1959. Firstly it must be noted that the Registration process is not per say an adversarial procedure, but it may turn into one at any time. The reason for this is that any person may object to the applicant’s claim to the proprietorship over the trademark by means of the procedure established for that purpose. Once this is done, the proceedings take on all the aspects of an adversarial procedure.73 The registrar gives the applicant an opportunity to file a counter statement. He then considers the objections and the evidence in support of them. The applicant is also given a chance to adduce evidence in favour of his claim. The Registrar then decides the case after giving an opportunity to both parties to be heard. The Onus of proof is primarily on the applicant. He must establish a number of factors to be entitled to the registration of his mark. These are as follows : 1. If the mark is already registered in any person’s name, it is not prima facie registrable.74 If after making a preliminary inquiry into the matter, he applies, the burden of proving that the mark is not him. 75 Applying the general principles in Section 106 of the Indian Evidence Act, it is up to the registrar to show that the mark has already been registered as that is within his special knowledge. Further in the case of an objection by another person the burden of proving that he has registered a similar mark, in on that person, for the same reason.76 2. Descriptive names and geographical names are not prima facie registrable. These may interfere with the bona fide use of the trademark by others. Thus if the applicant shows that the mark he proposes is not simply descriptive of the product or is not a geographical name, he goes a long way in succeeding in his endeavours.77 73

Narayanan, P., Intellectual Property Law, 2nd ed., 1997, Eastern Law House, Calcutta, p. 203. Singer Co. v. Registrar of Trademarks, AIR 1965 Cal 417. 75 P. N. Major v. Registrar of Trademarks, AIR 1969 Cal 80. 76 Kaviraj Pandit Durgadutt v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980. 77 See section 19 of the Trade and Merchandise Marks Act, 1958. 74


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3. The trademark must not be such as to interfere with any person’s bona fide use of his own name, or that of his place of business or his bona fide description of his product or its character or quality.78 4. Even if the above situations have been fulfilled, there may be a number of other persons who have been using an identical or similar mark. There would be obvious hardship to him if he were deprived of that right. It is not possible for the applicant to show conclusively that there is no such person. Thus all he needs to establish is prima facie contentions. The principles of Sections 114 and 56, read together may be applicable. The registrar may take notice of a state of affairs that would enable it to raise a presumption that according to “the common course of natural events, human conduct, and public and private business” such a situation does not exist. The capacity of presumptions under section 114 is not limited by the illustrations.79 However, if an objection is raised, such a presumption would not be raised. Then the burden is on the objecting person to prove his case in accordance with the principle of section 101 of the Evidence Act. He must also prove that the registration of the mark would be of material detriment to him. 5. Above all the applicant must prove that the mark is distinctive. This expression in relation to the goods in respect of which the mark is sought to be registered means that it should distinguish the goods with which the proprietor is of may be connected from the goods in the case of which no connection exists.80 The expression also receives a definition in section 9(3) of the Trade and Merchandise Marks Act. The burden of proving this is much higher. After all the object required to be proved is a probability (on account of the principle of section 114 of the Evidence Act). Thus mere prima facie proof of the same can suffice.81 6. Notwithstanding, the proof of the above, the defendant must establish that the following conditions exist : (1) The mark is not likely to decieve or cause confusion(s. 11(a)); (2) in other words there is no deceptive similarity with any other mark registered in respect of the same goods(s. 12(1)); (3) It is not the accepted name of any chemical substance(s. 13) 78

Ibid. Jogendra Singh v. State, 1991 CriLJ 2331 cited Stephen’s digest on the Law of Evidence to cometo this conclusion. It used this proposition to show the vast discretion given to the Courts under section 114. 80 National Bell Co. v. Metal Goods Manufacturing Co., AIR 1964 Punj 77. 81 Dristan v. Registrar of Trademarks, AIR 1986 SC 137. 79


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(4) The mark is not contrary to law(s. 11(b)), scandalous or obsecene(s. 11(b)), likely to offend religious sentiments(s. 11(d)), or otherwise disentitled to protection(s. 11(e)). The burden in respect of these matters is entirely on the applicant. Concurrent registration : In exceptional circumstances the Concurrent registration of the same or similar trademarks would be allowed. Here the applicant is allowed to independently adopt the same or similar marks, subject to certain qualifications, limiting the territory or the nature of products they can produce. This is subject to the policy factors, so that the original owner is not subjected to undue constraints. However a heavy burden lies on the applicant to prove the existence of the following conditions without which concurrent trademarks will not be registered : 1. The adoption and subsequent use of the mark must be honest; 2. The quantum of concurrent user is commercially significant and substantial having regard to the duration, area and volume of the trade; 3. The degree of confusion is likely to follow from the resemblance of the rival trademarks; 4. The relative hardship which would be caused to the applicant, if registration is not granted should be great; and the inconvenience caused to the public should be minimal.82 Findings on these points are necessarily subjective in nature. Consequently, the Court enjoys great discretion in the quantum of the burden on the applicant by using the twin tools of sections 114 and 71 of the Evidence Act. Registration under Part B : Trademarks that satisfy the requirements of section 10 of the Trade and Merchandise Act may be registered under Part B. The protection granted to these trademarks is much less than that extended to Part A trademarks(those referred to above). The applicant need not prove that the trademark is distinctive for registration under Part B. A lower threshold of proof is placed on him – merely that the mark is capable of distinguishing the goods and that it is not ordinarily required to by other traders for bona fide descriptive purposes.83

82 83

G.T.C. Industries v. ITC Ltd, AIR 1992 Mad 253. Habeeb Ahmed v. Registrar of trademarks, AIR 1966 AP 102.


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INFRINGEMENT ACTIONS The right to bring an action for infringement of trademark is expressly provided by statute, under section 29 of the Trade and Merchandise marks Act, 1958. Being a statutory right, it is limited to the parameters laid out by the Act. The burden of proving these is strictly on the plaintiff. 84 Infringement Actions are the manner in which registered trademarks are protected. While infringement also constitutes a noncognizable offence, in criminal actions, the burden of proof is one that is beyond reasonable doubt. In civil proceedings, the standard in a balance of probability. In order to successfully maintain an infringement proceeding, the plaintiff must prove the following : 1. He has a right to bring an action on account of the registered trademark. 2. That the defendant has unauthorizedly used the same mark or one that is deceptively similar. Presumptions in favour of the Plaintiff : Under sections 79 of the Evidence Act, 85 the genuineness of the Registration of a Trademark is presumed. On presenting a certified copy of the Registration, the plaintiff needs to prove no more on the genuiness of its contents. The presumption may also be made under section 81 which envisages a similar presumption in case of documents directed to be kept in the custody of a particular persons. However a distinction needs to be made between a presumption as to the genuiness of a document and one as to its validity. The mere registration of a trademark does not have any implications on whether it creates a proper proprietary interest in the mark. This is indicated by the use of the term “the registration of a trademark ….. shall, if valid, give to the registered proprietor …” Clearly it was not the intention of the legislature to raise a presumption in favour of the validity of the registration. Hence the registration is clearly outside the mischief of illustration (e) of section 114. The Merchandise and Trademarks Act is a specific legislation and its provision would override those of the Evidence Act. However, even the Evidence Act, by the use of the word “may”, merely grants the judge discretion in the matter. The exercise of such discretion must obviously be in accordance with the provisions of law.86 84

Addanki Nayaranappa v. Bhaskara Krishnappa, AIR 1966 SC 1300. Presumption as to genuiness of certified copy. 86 Sodhi Transport Co. v. U. P., AIR 1986 SC 1099. 85


41

The Trade and Merchandise Act, however, does provide assistance in this regard – section 31(1) states that registration of the trademark shall be prima facie evidence of its validity. This is of a more limited nature than a presumption. It eases the burden of the plaintiff in applications for interlocutory relief, where the matter is judged on prima facie considerations. It merely creates a situation where the Plaintiff need not prove the validity of the registration, i.e., it merely relieves him of this burden. This is completely different from a presumption against the defendant. 87 It is merely that the burden of proof may lie on him on account of sections 101 to 103 of the Evidence Act, if the plaintiff succeeds in proving his case. The burden of proving deceptive similarity lies firmly on the plaintiff. The manner in which he may do so is discussed in the next chapter. Shifting of the Burden of Proof : Once plaintiff has proved the above requirements, the burden shifts onto the defendant.88 The defendant now requires the Court to believe him if his case is not to fail. Hence sections 102 and 103 of the Evidence Act are relevant in this regard. He may prove the following defenses : (i)

that the registration was not valid,

(ii)

he was sing the mark outside the periphery allowed to the plaintiff,

(iii)

it is one of the Acts under s. 30 which does not constitute infringement,

(iv)

that he was a prior user of the same or a similar mark,

(v)

it a bona fide use of his own name or place of business or the character and quality of his good, or the name is that of an article or a substance,

(vi)

where on account of the passage of time, the trademark becomes the name of an article or substance

(vii)

the plaintiff has lost his right by abandonment.89

Part B Trademark : In an action for the infringement of a Part B trademark the defendant is granted the extra defense of proving that that the mark complained of is likely to deceive or cause confusion. The burden of proving this lies on the defendant on account of sections 101 to 103 of the Evidence Act. The plaintiff does not have to prove the absence of such a factor.

87

While For a parallel view in the NDPS Act See P.N.Kishanlal and others v. Government of Kerala and others, 1995 SCC (Cri) 466. 89 See Baume & Mercier v. A. H. moore Ltd., 91958) 2 All ER 113 ; http://www.bitlaw.com/trademark/dilution.html. 88


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PASSING OFF ACTIONS Passing is a remedy in Common Law for the violation of trademarks. It is based not on any statute, but is an action of Tort. No registered trademark is required in an action for passing off. It can also be used to protect goodwill, and other related rights. A passing off action seeks to prevent any other person from “passing off” his goods as those of the plaintiff.90 Its object is to protect the plaintiff from the damage caused as a result of violation of his trademark, and to protect the trademark per se. Consequently, the concept of trademark that is adopted is expansive and not limited to those which are registered.91 Hence the question as to what constitutes a trademark is all the more intriguing. The utility of a passing off action is that it may be used even in the cases of unregistered trademarks, and all associated rights. Further such proceedings offer greater scope for compensation, and several interlocutory reliefs. Usually, the plaintiff will institute proceedings in respect of both, infringement and passing off. In order to sustain a passing off proceeding, the plaintiff must prove the following : 1. That he has acquired a sufficient goodwill and reputation in a trademark, get – up, or other badge, or trade name in relation to some goods or business in India; 2. That what the defendant is doing has actually caused or is likely to cause deception among the particular class of customers of the goods or business; 3. The plaintiff has suffered or is reasonably likely to suffer damage or injury to his business or goodwill as a consequence of the defendant’s action. Reputation and distinctiveness in a trademark – The first point of distinction between a passing off action and an infringement action is that the plaintiff is place under the burden of proving his right in the former, while it is place on the defendant to show that he does not92 have it in the latter. In an infringement action the plaintiff avails of the statutory premium on registration; however in a passing off action, the burden falls in its natural place – on the plaintiff. This is on account of sections 101- 103 of the Evidence Act. The plaintiff must prove that the reputation and distinctiveness of the name, symbol, get-up, trade-name, or other such badge that is in question is such as to cause the consumer to associate with his firm. If the symbol, word, etc., is a word that is descriptive, or in common usage the burden will be correspondingly higher to show that consumer associate it with him and not any other thing. On the 90

Champagne Perry v. Champagne Cider, 1978 RPC 79. Ibid. 92 Hidesign v. Hi – Design Creators, AIR 1991 Del 243. 91


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other hand, if it of a sort that is uncommon, or ad-hoc, then the burden would be correspondingly lighter.93 In the latter variety of cases it is easier to prove that when consumers see the mark in question, they associate it with the plaintiff. However, the defendant may still maintain that consumers associate the name with nothing in particular. This would have to be preempted by proof. The plaintiff must show that a substantial number of potential consumers make the association. Deceptive similarity : The plaintiff must show that the mark used by the defendant is such as to lead the average potential consumer to believe that the products concerned originate from him. It is not very often that the defendant uses exactly the same mark as the plaintiff.94 However, this does not prevent the mark form causing confusion in the minds of the Customers. The term “deceptive similarity� was evolved as a result. Varying burdens of proof : According to the nature of the mark used, the degree of burden on the defendant varies : Fanciful or imaginative marks : There is a negligible burden to prove deceptive similarity in such cases, as there is very little possibility that the defendant used a similar mark bona fide. In these cases, the burden of proof shifts to the defendant to show that his use of the mark was in fact innocent. Such a shifting of the burden is warranted under section 106 of the Evidence Act. Suggestive marks : The burden in these cases lies more heavily on the defendant to show that a similarity of these marks deceives the customer. The reason for this is that such marks may be used genuinely by the plaintiff as they are suggestive of the nature of the product or is quality. Descriptive marks : The burden in these cases is extremely heavy. The chances of the defendant using such marks to describe his goods bona fide, or that the consumers relate the mark to the product concerned and not its source are extremely high. In such cases, unless the plaintiff shows overriding reasons as to why the mark is associated with him particularly, he will not be granted the right to enforce such a right.

MANNER OF PROVING 93

Gilson, Jerome, trademark Protection and Practice, Vol. 1, 3rd ed., 1997, Matthew Bender & Co., New York, p. 346. 94 White, T. A. & Roein, Jacob, Kurly’s Law of Trademarks and Tradenames, 11th ed., 1983, Sweet and Maxwell, London, p. 213.


44

The peculiar requirements of trademark matters, whether they be for registration, infringement or passing off, poses intriguing question of how the burden of proof is to be fulfilled. The key factor to be considered by the Registrar in the case of registration of trademarks, or by the Courts, in the case of infringement or passing off matters, is whether the mark sough sought to be registered, or the mark which is alleged to be violating an existing trademark is deceptively similar to any existing mark. The standard to testing whether a mark is deceptively similar is that of a “person of reasonable intelligence and reasonably well informed”. 95 In other words, the impact of the mark on the average customer is to be tested. How is the Court to ascertain the nature of such an impact ? In addition to this, in passing off actions, the Court has to ascertain whether the plaintiff’s mark indeed has the reputation that he claims it does. In proceedings relating to the dilution of a trademark, it has to ascertain those factors which the customer would associate with the plaintiffs mark. 96 These are considerations that are not only difficult to prove in Court, but which also create a situation which most Courts are unfamiliar with dealing with. Novell problems such as these require novell solutions. Oral Evidence and Documentary Evidence : Under section 13 of the Trade and Merchandise Marks Act, 1958, evidence is to be submitted to Registrar by way of affidavits or documents. Such evidence includes the mark sought to be registered, statements on oath by the Applicant that it is indeed unique, details of the products with respect to which the mark is sought to be registered. However, the Registrar is given the option of taking oral evidence. Extracts of the Register of Trademarks, or official publications of trademarks that have been registered may also be submitted. The latter two are Public Documents. The Register of trademarks is a public document under Section 74(1) (ii) of the Evidence Act as an Act of a Tribunal. The Registrar functions as a tribunal, while granting registrations of trademarks. 97 The official publications of trademarks that have been registered count as Records of the Acts of a Tribunal. It must be noted that records that are not official will not be admitted a Public documents. Consequently secondary evidence of these may be given of these as under Section 65 of the Act. Every Applicant has the right to receive certified copies of these documents under section 76. It is relevant to note here that 95

Supra, n. 9 at p. 211. Apple Computers v. Apple Leasing, (1993) IPLR 63 (Del. HC) 97 Gopal Hosiery v. Deputy Registrar of Trademarks, AIR 1981 Cal 53. 96


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only marks that can be reduced to the form of documents may be registered. Consequently it is necessary that the mark sought to registered can be reduced to the form of a document.98 It is a interesting point as to whether the mark is a matter which is required by law to be reduced to the form of a document, as that is the only manner in which trademark may be registered. If such were the case, there would be an exclusion of oral evidence by documentary evidence under Section 91. The significance of this is that the parties would be precluded form giving any sort of oral evidence regarding the mar. In many cases it may be essential that such evidence may be given on account of the fact that trademarks are often not such as to be characterized or understood alone, without their context, or the special meaning to be given to any part of. It would seem probable that a trademark would come under the mischief of Section 91.99 As a result it is necessary to find provisions under which oral evidence may be given of the meaning, or representation that a mark implies, or any significance that it may imply. The provisos of Section 92 do not provide any exceptions whereby such evidence may be allowed. The only proviso that may yield certain benefit is provision 6 which states that “Any fact may be proved which shows in what manner the language of a document is related to the existing facts.” 100 In addition to this, sections 95 and 96 are relevant. However these too have very limited applications. They only refer to cases where it is not clear how the language of the document refers to the facts in existence.101 Further they only refer to “ language” in particular, and trademarks often include signs, symbols and other characteristics. The only provision under which these can be referred to in oral evidence is section 97. This refers to “illegible or not commonly intelligible characters, of foreign, obsolete, technical, local or provincial expressions, of abbreviations or of words used in a particular sense”. It is submitted that since the Indian Evidence Act is ill – equipped to deal with the present aspect, this provision must be given a wide interpretation so as to allow oral evidence to be given of the significance of various symbols, etc. that may constitute a trademark.

98 99 100

This is proviso too is limited only to show how the document is related to existing facs – see Hindustan Lever v. M.R.T.P.C., AIR 1977 SC 1285. 101 Mahabir Prasad v. Massiuthalah, (1915) 38 All 103.


46

The Registrar would normally seek to admit oral evidence only where his investigations indicate that there already exists a trademark of the nature that the Applicants wish to register, or if there is an objection raised by any other party in response to the publication of a proposed registration of a trademark. The matter of Evidence by affidavit shall be examined subsequently in the same chapter. In infringement actions the validity of the trademark granted may be questioned by the defendant and in passing off actions. In these actions, it is not only necessary for the plaintiff to adduce a copy of his registered trademark, but he must also adduce evidence to show that the defendant has used it. 102 Even in passing off actions it is necessary for the plaintiff to adduce evidence of the marks used by the defendant. To this effect the plaintiff may adduce as evidence advertisements by the defendants, the labels of his products, or the product itself, where the mark cannot effectively separated from it.103 All these materials may be classified as documentary evidence, as per the definition of document in section 3. Whether secondary evidence may be adduced of these is a pertinent question. With regard to advertisements the question arises as to whether they violate the hearsay rule. It is a settled principle of law, both in Common Law and in Indian Courts, that the documentary rule of hearsay too exists.104 However, a differentiation may be said to exist between documentary reports of the claims of the defendant, and advertisements directly included by him. The reason for this differentiation is that while reports are matters of opinion, whereby there is greater chance for misrepresentations, advertisement, are by and large a true representation of the defendants claims.105 The Court in this regard must also presume the genuineness newspapers or journals. In the context of advertisement telecast on the television, a recording of the advertisement would serve as documentary evidence. A troublesome issue is sometimes the genuineness of the evidence provided by the plaintiff, as in most cases there is no such presumption to assist the Court. There have been a number of instances where there has been fabrication of the trademarks that were allegedly employed by thedefendant. On the other hand the defendant may deny his use of a trademark that he has utilized. On occasions where the product and the marks used by the defendants are of common knowledge, the judge may make use of his knowledge as a potential consumer by taking judicial notice of the facts. However 102

Sarkar, J. S., Trademarks Law and Practice, 3rd ed., 1997, Kamal Law House, New Delhi, p. 347. Ibid. 104 R. v. Myers, *****; R.v. Patel, ***** 105 See Lakshmi Raj Shetty v. State of T.N., AIR 1988 SC 1274. 103


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where the product involved is not one of such common consumption, there may arise greater difficulty in testing the veracity of the depositions. In such cases the Court will admit oral evidence to corroborate the claims made by the respective parties. 106 Where the mark on the product cannot be removed from it, the product itself may be brought before the Court as evidence. But where the product is one which cannot be easily transported, secondary evidence of the same may be produced under section 65(a). Often the evidence may be only in the possession of the defendant, in that case, after sending a notice under section 66, the plaintiff may take leave to produce secondary evidence of it under section 65. In passing off matters, proceedings may be brought for similar get up of the product. In such cases it is not merely the label, but the entire appearance(including the packaging, the shape, the colour, etc.) which creates a deceptively similar image in the mind of the consumer to that which the product of the defendant creates. Here the entire product may be admitted as real evidence.107 Oral Evidence or Documentary Evidence : The crux of the Evidentiary requirements is to show that the mark of the defendant is deceptively similar to that of the plaintiff’s. In other words the plaintiff must show that the label is such as to create an impression in the mind of the average consumer that the defendant’s products actually originated from him. The Court must apply the standard of the reasonable mind, with respect of the potential consumer. 108 The word “potential” is stressed, for it the nature of the product may be such that only highly aware consumers may seek to purchase it. Examples of such products are professional equipment, literature, etc. The question arises, as to how the Court is to come to a finding on this question. Is it to look at the matter in isolation, applying the standard of the reasonable man, as it does in cases of tort proceedings ? Or is it to take evidence from the potential consumers themselves ? The approach that has met with more approval is the latter, though is often put into practice along with the active mind of the Court in applying its own standards of reasonableness. If evidence were to be given in only the former manner, the need for evidence would be minimalised, as all the Court would require is the marks of the respective parties, once it has been shown that such marks were indeed those utilised by the parties. However, if the latter method is followed the Court 106

Nestle’s Products v. Milkmaid Corpn, AIR 1974 Del 40. Saharay, H. K. & Chowdhary, Salil, Law of Trademarks, Copyrights, Patents and Designs, 1st ed., 1996, Kamal Law House, New Delhi, p. 368. 108 Harrods Ltd. v. Harrodian School Ltd., (1996) RPC 79. 107


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would have to admit evidence of a very peculiar nature from the parties. Both parties seek to adduce evidence from deponents, seeking to prove their case. While the plaintiff would seek to adduce evidence form them that they were misled by the mark in question, the defendant would have to show that this is not the case. It must be remembered that under section 118 all persons may testify unless the Court considers that they prevented from understanding the questions put to them. Such evidence become relevant under section 6 as “facts, which are the occasion, cause or effect, immediate or otherwise of relevant facts, or facts in issue or which constituted the state of things under which they happened”. The fact in issue in this regard is whether there is deceptive similarity between the product of the marks used by the plaintiff and defendant. In addition to this section 51must be kept in mid : “Whenever the opinion of any living person is relevant, the grounds on which such opinion is bases are also relevant”. This gives scope for the plaintiff to show in exactly what manner the defendant has attempted to imitate his product. However the question still remains as to the manner in which such evidence may adduced. It is not uncommon for the plaintiff to seek to admit the testimony of a series of witnesses who claim that they were deceived by the defendant’s products. On the other hand defendants also introduce evidence of a number of witnesses claiming that they were not deceived, and in fact that they wished to purchase the goods of the defendant. In such circumstance, there is a need for the Court to play a strong role to regulate the manner in which evidence is adduced. It may use his powers under section 136 in this regard. Another approach may be adopted by the parties – they may seek to admit affidavits from persons on the same lines. However, the Court needs to exercise caution in this regard as the deponents are not subject to cross – examination. 109 All through, however there is an active application of judicial mind, as the particular nature of the evidence that is adduced renders it extremely difficult to place a great deal of reliance upon it. As a result, there is only a limited role that the such evidence can play. All ultimately depends upon the satisfaction of the judge as to a particular finding. Survey Evidence :

As has been stated above the use of witnesses may create

confusion on a matter which is essentially one of opinion, and on which there can be no water-tight finding. Consequently no great reliance in placed on any one witness or group of witnesses. Rather it is the cumulative opinion of the witnesses that plays an 109

In re Edward Hack’s Application, (1941) 58 RPC 91.


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important role in deciding the mind of the judge. It must also be remembered that such great reliance can be placed on such evidence so as to arrive at a finding exclusively on it. In this context the matter of survey evidence may be considered. The finding on the question of deceptive similarity or that on the existence of a distinctive mark in the case of passing off action is centered on the effect that it has on the potential customer. Consequently, the most relevant evidence that may be adduced is a statistical analysis of how consumers view a particular product. 110 A well known technique of doing this in trademark cases is that of providing a survey. A survey is the best way of providing cohesive information to the judge on which he may base his findings. The evolution of scientific methods of conducting such a survey has lead to a greater role in the Courts. Commentators regard survey evidence as the most probative for the purpose of trademark cases. The essence of surveys lies not only in the answers to the individual questions, but also in the manner in which the survey is conducted.111 In a number of cases the Courts have expressed a view that a survey is preferable to a large numbered of depositions, whether by way of oral evidence or by way of affidavit.112 At first appearance, the quality of survey evidence may yield a certain amount of doubt regarding the veracity of the findings; but the Courts have held that evidence in the form of affidavits are subject to the same weakness. 113 In addition, there is a limit to the number of witnesses who may be cross examined in Court. In any case a survey will not be accepted by the Court unconditionally and without and checks on its veracity. There lies however, only one alleged barrier to the admissibility of survey evidence and that is the hearsay rule. The reason why this is raised is as follows : The persons questioned in the survey are not available for cross examination before the Court. The main concern behind the rule against hearsay is that fabrication may occur. However, it is submitted that such a concern is misplaced. Firstly, the other methods of adducing evidence in trademark are insufficient. But besides this a clear understanding of the Hearsay principle would reveal that survey evidence may be admissible. The survey itself is relevant and admissible under section 9 as a fact necessary to support an 110

Caughey, Reginald, “The use of public Polls, Surveys and Sampling as evidence in Litigation, and particularly Trademark and Unfair Competition Cases”, California Law Review, Vol. 44, 1956, p. 539. 111 Notes, “Public Opinion Surveys as Evidence : The Pollsters go to Court”, Harvard Law Review, Vol. 66, 1953, p. 508. 112 A. Bailey & Co. Ltd. v. Clark, Sons and Morland Ltd., (1983) 2 All ER 377; T. A. Miller Ltd. v. Minister of Housing and Local Govt., (1969) RPC 91. 113 In Bulova Accoutron, the Court expressed great doubt in accepting a series of affidavits that were identical in all respects, and stated that such circumstance raise a fear that the deponents were tutored.


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inference relating to a relevant fact. The objection rather seems to he concentrated on the statements of persons questioned. However another view on surveys is suggested. A survey does not seek to admit the evidence on the statements of such persons, but rather the findings of the person who conducted the survey. Thus the survey is merely presented as relevant evidence. The survey by itself is the evidence submitted to the Court and not the statements made by the respondents. Thus it is the survey that must be scrutinised, and nothing comes in the way of the Courts examining the manner in which it has been conducted, and rejecting it if it does not satisfy them. The matter was considered in detain in Zippo Manufacturing Company v. Rogers Imports, Inc..114 Zippo received a number of lighters which had been manufactured by Rogers from customers of the latter, who thought that the product was originating from the Zippo. Consequently, the Applicant conducted a survey, by showing to the respondents, the respective lighters, after removing the identification marks. The respondents recognised even the Rogers lighters as those of Zippo. The Court was satisfied with the sample of the population chosen. It rejected the contention that the evidence was Hearsay on the ground that the survey was adduced to enable the Ocurt to ascertain the state of mind of the public and not to submit the statements of the respondents of the survey. In the light of this interpretation, it may be possible to adduce the survey under section 14 as evidence of the state of mind. The American Law of Evidence of Experts has progressed to a great extent, and allows as expert evidence any evidence “of the type reasonably relied on by experts in the field”. This would clearly allow a survey to be adduced as expert evidence. On the hand, the Indian Evidence Act is sparing in the words that it uses to describe an expert in section 45. It includes the words “science or art”. It is submitted that a wide interpretation of these terms must be advocated in order to enable the Act to keep up with the times 115 and so that it may not be found lacking with respect to the major form of evidence in trademark related cases. Prima Facie proof : The nature of trademark matters is such that often, interim relief is the most essential form of action by the Court that the plaintiff desires. Such interim relief is usually in the form of a temporary injunction restraining the defendant from using the offending mark until the matter is finally disposed of. As the plaintiff is 114

216 F. Supp. 670. See Stephen, Digest on the Law of Evidence, 12th ed., 1946, Art. 49.

115


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suffering damage as a consequence of the violation of his trademark, it is of the essence that he receive immediate relief, and not have to wait for the termination of the suit. At the same time, the defendant would probably change his mark, if such an interim injunction is given against him, as the other option for him would be to stop production till the end of the suit. There may even be cases where the suit requires no further proceedings, as both parties wish to have no further litigation on account of the satisfactory nature of the alternate arrangements made by them on account of the interim order. On the other hand the defendant’s interests would be virtually irreversibly affected if a temporary injunction were given against him and he were made to wait until the completion of the proceedings. The plaintiff must satisfy the Court that there is a prima facie violation of his trademark, before it would oblige him with an order in his favour. Consequently the manner in which a prima facie case may be set up is significant. The provisions under which the Court may grant temporary injunctions are to be found in Order 39 of the Civil Procedure Code. The injunction may be by way of interim relief, in which case the defendant is heard before the order is passed, or in cases where it is proved that the object of granting the injunction would be defeated by delay, it may be by way of an ad – interim relief, that is, without notice to the defendant. In both these matters, the Applicant must rove three things – •

He must prima facie prove his right to relief

He must show that irreparable damage would result if the relief is not granted

He must show that the balance of convenience is in his favour.

During proceedings for interim relief, evidence is usually given by way of affidavits. The rules regarding this are laid down in Order 19 of the Code of Civil Procedure. However, if the Court deems it fit, it may examine the deponent on oath. Along with such evidence is submitted documentary evidence. This would include a certified copy of the relevant extract form the register of Trademarks, relevant documents showing the plaintiff’s and defendant’s trademark, and documents necessary to show that considerable loss would be suffered if the relief is not granted. The standard of evidence required would of course not be as high as that in the proceedings, bu tit is essential that the proper evidence be submitted, for Courts do not usually reconsider matters of interim relief, once they have rejected applications for them. Order 19 specifies that affidavits must be limited to matters which the deponent is able to prove


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of his own knowledge. However, it makes an exception in regard to affidavits submitted in regard to interlocutory applications.116 This allows the plaintiff to include matters within his “information” as evidence in the application for interlocutory relief. It is extremely difficult for a person to be indicted for false statements in an affidavit, if these are in the way of matters within his “information”; such statements cannot be subjected to objective standards. It is through this mechanism that the plaintiff may make his contentions regarding the violation of his trademark and the damages likely to be suffered by him as a result. Where the defendant is given the opportunity to be heard, he must through his own affidavits bring before the Court sufficient evidence to resist the plaintiff’s claims. In N. C. Singhal v. Union of India117, the Supreme Court considered the evidentiary value of admissions made in affidavits. It came to the conclusion that the Court may come to a conclusion solely on the basis of these. Under normal circumstances unliquidated damages are not ordered by the Court. Consequently the plaintiff must show the amount of losses that he has suffered. To this effect he must submit documentary evidence to show not only that his sales declined, but also the consequent losses that he suffered. These documents may be by way of sales statistics, balance sheets, etc. It is prudent to adduce these at the time of the pleadings for interlocutory relief itself. It would vastly assist his case if the defendant was asked to show that the sales of his product did not rise at the same time. The burden of showing this is on the defendant on account of it being specially within his knowledge(section 106).

116 117

Order 19, Rule 3. AIR 1980 SC 1255.


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MANNER OF COLLECTING EVIDENCE The collection of evidence in trademark violations involves a peculiar difficulty. In most Civil matters the plaintiff approaches the Court in relation to an illegal act committed directly against him or an omission of a duty owed directly to him. Because of the essential role that he plays at every part of the transaction, it is simpler for the plaintiff to collect evidence, as he is personally at the receiving end of all actions that he wishes to challenge. However in a trademark violation, the plaintiff is not a party to the transaction that violates his rights. Consequently it becomes that much more difficult for him to collect evidence. For this he must depend on the defendant himself or on any person with whom the defendant is dealing while he is violating the trademark. In response to these difficulties, the Courts have responded by creating innovative methods of collecting evidence. Two such controversial methods are : Anton Piller : There is fear in most violation cases that the defendant will destroy the offending article, conceal them, or dispose of them. It is essential that these articles be procured in order to be able to produce evidence of the violation by the defendant. In the case of Anton Piller v. Manufacturing Processes118, the Court obliged the plaintiff with an order which would minimise such risks. The Order has consequently come to be identified as the Anton Piller order. The plaintiff may approach the district court : In camera, without notice to the defendant, for an order that 1. he along with his advocate be allowed to inspect the premises of the defendant; 2. he may seize, copy or photograph the material relevant to the infringement and deliver up the infringing goods; 3. he may keep the infringing stocks and papers and seek information about the source of supply or the destination of the stock; 4. an injunction against infringement may be granted; 5. the offending articles may be destroyed so that further loss is not caused to him on account of them. The order effectively ensures that firstly the defendant receives no notice of the impending action so that he may take steps to deny the plaintiff access to the evidence and secondly that the plaintiff is able to retreive the evidence without undue difficulty. Such orders are made by the court, only if the plaintiff satisfies the burden of proving 118

(1976) RPC 719.


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a strong prima-facie case. In addition the plaintiff must show that the defendant is in the possession of the offending articles that he is not likely to yield them and that he is likely to take steps to destroy them or dispose of them. He must satisfy that serious damage actual or potential is likely to be caused to him if the order is not made. Serious doubts have been raised regarding the wisdom and the validity of such orders.119 Indian courts regularly grant Anton Piller orders without sufficient checks to ensure that the plaintiff does not abuse or unduly take advantage of them. Cases have arisen, where the plaintiff has been found to fabricate or plant evidence or cause undue harassment to the defendant. Further the constitutional validity of these orders may be impugned. It maybe contended that such orders violate Art.14 on account of arbitrariness and the Maneka120 dictum on account of being unreasonable. Further it is submitted that such orders may violate the constitutional guarantee against self incrimination enshrined under Art. 20(3), of the Constitution. While the concern about the destruction of evidence is indeed a valid one the wisdom of the Anton Piller is wanting. A fair substitute would be an ad interim order attaching the plaintiff’s properties until he submits the relevant articles and documents to the safe keeping. Trap orders: Evidence may also be obtained by the plaintiff, by the purchase of the defendant’s goods bearing the spurious mark. The plaintiff or his agent my do this by placing an order with the defendant for such goods. The defendant falls prey to the “trap order” by responding to it and sending the goods. These are admitted by the court if it finds that the trap order is fairly given. As was held in Shamsuddin’s case,121the court may base its findings solely on the evidence collected by way of a trap. It merely advocated caution while dealing with evidence acquired through a trap. Presently the jurisprudence of trademark violations regarding domain names on the internet is emerging. The manner of collection and production of such evidence poses interesting problems. Is it possible to provide primary evidence regarding these, or is the only manner in which they can be adduced secondary evidence under section 65. An investigation of such issues would require diversion from the scope of this paper and a dilution of the same. 119

See Narayanan, P., Trademark Law, 3rd ed., 1985, Wadhwa, Nagpur, p. 566. Maneka Gandhi v. Union of India, AIR 1978 SC 732. The apex court laid down the composite code theory whereby Arts. 14, 19 & 21 should be read together so as to mandate that all state action be just, fair and reasonable. 121 M. O. Shamsuddin v. State of Kerala, (1995) 3 SCC 351. 120


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EVIDENTIARY ISSUES IN COPYRIGHT LAWS


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COPYRIGHT What is copyright? Copyright law is concerned in essence with the negative right of preventing the copying of physical material. It is not concerned with the reproduction of ideas, but with the reproduction of the form in which ideas are expressed. Today, not only is protection given to literary, dramatic, musical and artistic works, but also to sound recordings122, films, broadcasts, cable programs, computer programs and the typographical arrangement of published editions. The difference between a copyright and a patent is while a copyright on the one hand is a limited monopoly having its origin in protection closely analogous to patent rights, protecting the fruits of author's exertions in literary, dramatic, artistic or musical compositions, the protection afforded by the patents law is broader than in the case of copyright. By grant of a patent, the patentee acquires an exclusive right to make, use and vend the thing patented by copyright, while the owner of the copyright acquires the exclusive right of multiplying copies and doing other things analogous to this. The patent law protects the production and use of the creative conception reduced to practical shape in various forms; the copyright law protects publication of the copies in the form of the creative conception in which it has been expressed by the author. The right secured by the copyright is the right to that arrangement of words which the author has selected to express his/her ideas. The fundamental purpose of copyright protection, therefore is to promote societal development and thus the improvement of all persons- by encouraging the production and dissemination of creative works. Copyright are exclusive rights subject to the provisions of the Act, to do or authorize the doing of any of the acts laid down in the Act. These rights include: 122

A sound recording may be of a literary work spoken or recited, the spoken dialogue of a dramatic work or of a song. There may be copyright subsisting in the subject matter recorded. Since making of a sound recording of a literary, dramatic or musical work constitutes infringement of that work a sound recording made without the license of the owner of the copyright in that work will constitute infringement of that work. A sound recording may be of a literary work spoken or recited, the spoken dialogue of a dramatic work or of a song. There may be copyright subsisting in the subject matter recorded. Since making of a sound recording of a literary, dramatic or musical work constitutes infringement of that work a sound recording made without the license of the owner of the copyright in that work will constitute infringement of that work.


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1. the right to reproduce the work, 2. to issue copies of the work to public, 3. to perform the work in public, 4. to communicate the work to public, 5. to make a cinematograph film or sound recording, 6. to make any translation or adaptation of the work, 7.

to sell or give on hire any copy of the computer program or sound recording 123., and so on.

There is no copyright in ideas, subject-matter, themes, plots or historical or legendary facts, however original or brilliant and is confined to the form, manner and arrangement and expressions of the idea by the author of the copyright work. What copyright protects is not the raw materials from which the work is created but the skill and labor employed by the author in the creation of the work. Any other person can produce substantially the same work using the same raw materials or even ideas without infringement if he/she does it originally without copying from the other work. Suppose, I hold a copyright for the expression " Jack and Jill went up the hill", a copyright violation will not be committed if the expression "Jack went up the hill along with Jill� is used124. In determining whether there is an infringement, where the subject matter of the work is not original, the question is how far an unfair or undue use has been made of the work. If a person instead of obtaining the subject matter from common sources avails himself/herself of the labor of his/her predecessor, adopts his/her arrangements and quotations, or adopts them with a colorable variation it is an illegitimate use. Another related concept is that of passing-off. Apart from statute, an action will lie for the passing-off of a work as the work of the plaintiff, if its title or appearance is such as to lead the public to believe that they are purchasing, or using, a work of the 123

Dealers in musical records may have a record lending library, the subscribers to the scheme paying a subscription and a borrowing fee. The subscribers may use the hired records for home taping. It has been held that such activities of a dealer did not amount to authorizing infringement of copyright. The defendant's had at the request of the plaintiff's displayed warning notices and attached stickers to the records regarding the copyright position; See A. & M. Records v. Audio Magnetics [1979] F.S.R. 1; CBS v. Ames [1981] R.P.C. 407.; CBS U.K. v. Amstrad [1988] R.P.C. 567; Cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd edn, Sweet and Maxwell, London, 1996, at 369. 124 Muralidharan, R., Legal Protection of Computer Software, at 3.


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plaintiff and injury is likely to accrue to the plaintiff; it is not necessary to show an intention to deceive. The thing said to be passed off must however, resemble the thing for which it is passed off. Such an action may be brought by publishers who have acquired the copyright in a work from the author, to restrain a publication of a similar work using the author’s name so as to induce the public to believe it was the same as the original work.125 Infringements of copyright may be divided into primary or direct infringement, which consist of the unauthorized exercise by persons (not being the copyright owners) of rights restricted by the Copyright Acts, and secondary, or indirect infringement, which consist mainly of unauthorized dealings with articles which were made in infringement of copyright, together with various other acts. A basic distinction between the two is that secondary infringement requires the defendant to have some degree of knowledge that what is being done is an infringement, whereas in the case of primary infringement any such knowledge is not an ingredient of the cause of action. These are some of the basic preliminaries which need to be covered before an intense discussion on the topic at hand can be commenced.

125

Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974, at 513.


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EVIDENTIARY ASPECTS In a copyright infringement case, pre-trial pending work requires a lot of evidential analysis on which to structure the suit. Some of the important steps to be initiated and clarified are as follows: Issues In a suit for infringement of copyright the following issues arise: 1. Is the plaintiff entitled to file the suit? In other words is he/she the owner of a copyright as defined in Section 54 of the Act? 2. Does copyright subsists in the work alleged to have been infringed? 3. Does what the defendant done, or proposes to do constitute infringement of the copyright in the work? 4. Does the defendant's act come within the scope of any of the exceptions to the infringement listed in Section 52? 5. What remedies the plaintiff is entitled to? Evidence to be adduced The plaintiff will be the one to adduce evidence to establish the following: 1. The copyright work is original or otherwise qualifies for subsistence of copyright under the Act. 2. The date of coming into existence of the work. 3. The term of copyright has not expired on the date of filing the suit or on the date of committing the alleged infringement. 4. Particulars of the act done by the defendant, alleged to constitute infringement, or the acts proposed to be done likely to constitute infringement when completed. 5. The acts done or likely to be done by the defendant would constitute infringement of the copyright work. The defendant's evidence will depend upon how far the plaintiff establishes a case of infringement. He/she may adduce evidence to prove that the alleged copyright work is not original or that it is not entitled to copyright, the term of the copyright has expires, the alleged acts done by him/her were not done by him/her or if done by him/her, they do not constitute infringement of copyright or that it comes within the scope of one or


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other of the statutory exceptions and that the plaintiff has not suffered or is likely to suffer any damages from the activities of the defendant. Direct Evidence In most cases there will be no direct evidence of copying. Copying can only be deduced by inference from all the surrounding circumstances. In the case of infringement of literary works, the defendant's work containing the same errors as in the plaintiff's work, similarity in language and idiosyncrasies in style, may constitute some evidence of copying. When materials in which copyright is claimed are not produced at the hearing then their nature must be proved by other evidence. As Lord Esher M.R., said in Lucas v. Williams126: ‌to produce the original picture and the alleged copy, so that the jury may compare the two, may be the most satisfactory evidence of imitation, but it does not follow that it is the only evidence of it which can be given, nor does it follow that the evidence which was given in his/her case is only secondary evidence. Primary evidence is evidence which the law requires to be give first: and Secondary evidence is evidence which may be given in the absence of the better evidence which the law requires to be given first, when a proper explanation is given of the absence of that better evidence. In other words, what difference is there in principle between a man's handwriting and a picture, which he/she paints? The witness says, Looking at the picture which the defendant sold, I say it is exactly like XXX's picture. When he/she is asked, How do you know that?, he/she answers, Because I have seen XXX's picture. This is not secondary evidence, but original evidence. Different kinds of evidence may be used to prove the same fact, and this is another way of proving the fact that, the picture which the defendant's sold is a copy of the original picture in respect of which there is a copyright. Burden of Proof [The burden of proving infringement is on the plaintiff. In establishing the defenses pleaded the burden is on the defendant. Where there is substantial similarity between 126

(1892) 2 QB 113 at 116.


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the plaintiff's copyright work and the defendant's alleged infringing copy, that would be sufficient to raise a prima facie case of actual copying and if the defendant did not call evidence to rebut the prima facie case, then copying is proved. The defendant may refute by evidence that notwithstanding the similarity there was no copying but independent creation. Evidence of access to the plaintiff's product and evidence of striking general similarities between the products gives rise to a prima facie case of infringement. But the defendant could give alternative explanation of the similarities in a convincing manner.] Expert Evidence Expert evidence may be called to point out similarities, coincidences and the like, in order to support a contention of copying, or the converse, but the expert must stop short of giving his/her opinion that the work under criticism is in fact a copy. That is a question for the judge. Infringement of a musical work is not to be determined by a note for note comparison, but should be determined by the ear as well as by the eye. The question whether the defendant has copied the plaintiff's work depends to a large extent on the judge's own impression and on expert evidence. In cases of technical and scientific works, to decide the question of infringement of copyright, expert evidence may be necessary. Where the case involves minute scrutiny of alleged similarities and dissimilarities and extensive and lengthy comparison, it is not only proper but essential, that the case should be tried with the aid of experts who might be appointed commissioners to investigate and report similarities. But the commissioner's evidence is no evidence. A distinction between direct and indirect infringers has been already drawn at the outset127, though it is an analysis disputed by the majority. It differentiates between one who copies an original and one 'who copies a copy, supposing it to be an original'. An indirect (or, secondary) infringer should only be liable to an injunction and 127

In the Introduction, at 5.


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compelled to return profits made on the infringement. The plaintiff must prove that, directly or indirectly, the defendant's alleged infringement is taken from the work or subject-matter in which he/she claims copyright. Thus the two elements necessary to the plaintiff's case in an infringement action are: a. ownership of the copyright by the plaintiff, and b. copying by the defendant. OWNERSHIP: Subject to certain exceptions128 the author of a literary, dramatic, musical or artistic work is entitled to the copyright in the work. The author is the person who actually writes, compiles, composes or draws the work in question, although the idea of the work may have been suggested by another, or the work may have been subsequently altered in accordance with the advice of another.129 Where, however, the compiler of a directory or work of reference collects written material from a large number of individuals and arranges and publishes the result, the compiler and not the individuals supplying the information, is the author of the work. A mere copyist or a person to whom words are dictated for the purposes of being written down is not an author; but a translator from one language into another or a reporter of legal decisions or of a speech is an author. The author of a photograph is the person who, at the time when the photograph is taken, is the owner of the material on which it is taken. The author of the design of a building in which copyright subsists is the architect who makes the plans and supervises the work and not the builder Joint Authors Joint authors are in the position of tenants in common and not of joint tenants. One joint author cannot lawfully reproduce the work himself/herself or grant licenses to others to reproduce it without the consent of the other joint author(s), but he/she may by himself/herself take proceedings for infringement. Where copyright would not have subsisted in a work if one of the joint authors had been the sole author (or if

128

As to works by an author under a contract of service or apprenticeship, commissioned artistic works, works of joint authorship, etc. 129 Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974, at 548.


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more than one of the joint authors had been the sole joint authors), the copyright is owned by the other joint author(s). Ownership by the plaintiff (the copyright owner usually) breaks down into the following constituent parts:130 1. Originality in the author. 2. Copyrightability of the subject matter. 3. Citizenship status of the author such as to permit a claim of copyright. 4. Compliance with applicable statutory formalities. 5. (If the plaintiff is not the author), a transfer of rights or other relationship between the author and the plaintiff so as to constitute the plaintiff the valid copyright claimant. With respect to most of the above elements of ownership, the copyright registration certificate constitutes prima facie evidence, in favor of the plaintiff. This is clearly true on the issue of originality, as well as in establishing the copyrightability of the subject matter and the citizenship status of the author. Satisfaction of the statutory formalities is likewise presumed by reason of the registration certificate, as is the plaintiff's chain of title from the author, where the plaintiff obtained an assignment of rights prior to registration. By reason of the benefit of such presumption, the only evidence required of the plaintiff to establish prima facie ownership in addition to the registration certificate is evidence of plaintiff's chain of title from the original registrant. Once the plaintiff has established prima facie his/her ownership, the burden of proof then shifts to the defendant to counter this evidence. COPYING It has been accepted that copying could occur subconsciously where a person reads, sees or hears a work, forget about it but then reproduces it, genuinely believing it to be his/her own. In such cases, proof of copying depends on‌a number of composite elements; the degree of familiarity with the plaintiff's work, the objective similarity of the defendant's work, the inherent probability of coincidence‌131 130

Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4. Per Wilberforce J., Francis Day v. Bron [1963] Ch. 587, at 614; cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd edn, Sweet and Maxwell, London, 1996, at 361. 131


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Also, a work may be copied by imitating a copy of it. If the plaintiff owns a copyright drawing and then turns it into a three dimensional article and this is copied in three dimensional by the defendant, the causal connection for indirect copying of the drawing will be established. Likewise, if a novel is turned into a play, which is in turn converted into a ballet- but the causal chain must run in the right direction.132 Where the defendant has reworked the plaintiff's material, there comes a point beyond which the plaintiff has no claim. Whatever may have been the position in the past, the fact that the defendant has himself/herself added enough by way of skill, labor and judgement to secure copyright for his/her effort does not, under the present law, settle the question whether he/she has infringed; rather the issue is whether a substantial part of the plaintiff's work survives in the defendant's so as to appear to be a copy of it.133 Thus, would book reviews constitute a copyright infringement if we extended this logic?134 Where the plaintiff's work records information, the use that a defendant may make of it for his/her own purposes may not be a substitute for exercising his/her own labor, skill and judgement, but is to be taken as a starting point for his/her own collation of information or as a means of checking his/her own independent research. It is generally not possible to establish copying by direct evidence, since it is rare that the plaintiff has available a witness to the act of copying. Apart from the unavailability of witnesses, copying may occur without any objective physical manifestation since copying from memory is no less actionable than is copying from direct view. Therefore copying is established indirectly by the plaintiff's proof of access and substantial similarity- although proof of access and substantial similarity are sine qua non to a finding of copying, such evidence does not require the trier of fact to find copying.135 132

Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4. In Joy Music v. Sunday Pictorial [1960] 2 Q.B. 60, a song lyric had been parodied in pursuit of Prince Philip; but only one repeated phrase was taken, and that with pointed variation. There was held to be no infringement as a way of emphasizing that nothing substantial must remain from the plaintiff's work: Cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet and Maxwell, London, 1996, at 364. 134 In Warwick Film v. Eisinger [1969] 1 Ch. 508 where an author published an edited version of Oscar Wilde's trials an earlier version previously having appeared, he acquired copyright in the whole by virtue of his work in selecting and providing linking passages. But a defendant who took from large passages from the transcript, but very little of his own work was held to infringe, thereby neatly adjusting the scope of protection to the author's literary effort. 135 .Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-6. 133


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But, despite proof of access and substantial similarity, the trier of fact may uphold a finding of no copying if such trier believed the defendant's evidence of independent creation, except where the similarity between the two works is such that no explanation other than copying is reasonably possible. If the defendant in fact copied from a work other than that of the plaintiff's (and such work was not itself copied from the plaintiff's) it is irrelevant in plaintiff's infringement claim that the defendant may have infringed the copyright in such other work. Since a plaintiff ordinarily can do no more than offer evidence of access and substantial similarity in proving the act of copying, the Courts have sought to give some measure of protection to the plaintiff's against a trier's uncritical acceptance of the defendant's answering claim of independent creation. This has been achieved through the imposition on the defendant of a high standard of proof of independent creation where the plaintiff has clearly established access and substantial similarity. Where, however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the coincidences appearing in the two works are clearly incidental, no infringement of the copyright comes into existence. Infringement of copyright being a tort, in the ordinary course, an employer will be vicariously liable for any infringement committed by an employee in the course of his/her employment and for the acts of independent contractors which he/she specifically requested. In this The Copyright, Designs and Patents Act, 1988 has introduced three forms of infringement: i.

Authorizing infringement by others [section (16)(2)]

ii.

Permitting a place of public entertainment to be used for performance of a work [section 25]

iii.

Providing apparatus for performing, playing or showing a work, etc.[section 26]

Authorize has been read as bearing its dictionary meaning of sanction, countenance or approve. In line with theses broad synonyms, it has been said that indifference,


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exhibited by commission or omission, may reach a degree from which authorization or permission may be inferred. Permitting performance is expressly stated to be subject to the defense of reasonable belief that there would be no infringement, authorizing is not the subject of specific exceptions, but the meaning given to the word excludes liability when the defendant could not reasonably expect that another would infringe. It is also necessary to show an act of infringement which has occurred as a result of the authorization. Look and Feel Test One of the surest and safest test to determine whether or not there has been a violation of copyright, is to see whether a reasonable man, who is a spectator/viewer after having seen or read both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original. In Lotus Development Corp. v. Paperback Software International 136 the Court laid down the look and feel test as: 1. The decision maker must focus upon alternatives that counsel may suggest, or the Court may conceive, along the scale from the most generalized conception to the most particularized, and choose some formulations- some conceptions or definitions of the idea- for the purpose of distinguishing between the idea and its expression. 2. The decision maker must focus upon whether an alleged expression of the idea is limited, to elements essential to the expression of that idea (or in one of only a few ways of expressing the idea) or instead, includes identifiable elements of expression not essential to very expression of that idea. 3. Having identified elements of expression not essential to every expression of the idea, the decision maker must focus on whether those elements are a substantial part of the allegedly copyrightable work.

136

740. F.Supp. 37 (D.Mass. 1990); wher it was held that Lotus' copyright in its popular 1-2-3 spread sheet program protected the user interface and that Paperback in its spread sheet program had infringed Lotus' copyright by copying a number of aspects; Cited from Gopalakrishnan, N.S., Intellectual Property and Criminal Law, National Law School Of India University, Bangalore, 1994, at 165.


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But the Courts in the subsequent cases of Lotus Development Corp. v. Borland International Inc137., and Apple Computer Inc. v. Microsoft Corp.138 refused to rely on this test, but preferred the abstraction-filtration test. Abstraction-Filtration Test In 1992, there was another test called the abstraction-filtration test, which was an improvement139 over the previous look and feel test developed in the case of Computer Associates International v. Altai.140 1. Breaking down the allegedly infringed program into its constituent structural parts. 2. Examining each of the parts for such things as incorporated ideas, expression that is necessarily incident to those ideas, and elements that are taken from the public domain in order to sift out all non-protectable material 3. Comparing whether 'creative expression' remains after following this process of elimination, with the structure of the allegedly infringing program. The result of this comparison- will determine whether the protectable element of the programs at issue are substantially similar, so as to warrant a finding of infringement. But this test has been criticized on the ground that it is difficult to apply in practice and it seems artificial to break up a program into such constituent parts. ACCESS Some Courts have defined access as the actual viewing and knowledge of plaintiff's work by the person who composed defendant's work. This definition is submitted to be erroneous. Just as it is virtually impossible to offer direct proof of copying, so it is often impossible for a plaintiff to offer direct evidence that defendant (or the person who composed defendant's work) actually viewed or had knowledge of plaintiff's work. Such viewing will normally have occurred, if at all, in a private office or home outside of the presence of any witnesses available to the plaintiff. For this reason it is 137

788 F.Supp. 78 (D.Mass. 1992); Cited from Gopalakrishnan, N.S., Intellectual Property and Criminal Law, National Law School Of India University, Bangalore, 1994, at 167. 138 24 UPSQ 2d 1081 (N.D.Cal. 1992); Ibid. 139 Tripathy, B.P. and P.K.Prabhat, A Case for Effective Legal Protection of Computer Programs in India- A Panacea for the Paradox, 1 Crit Law (1998), 11, at 15. 140 23 USPQ 2d 1241 (2d. Cir. 1992); Cited from Gopalakrishnan, N.S., Intellectual Property and Criminal Law, National Law School Of India University, Bangalore, 1994, at 166.


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clear that even if evidence is unavailable to prove the fact of actual viewing, if it can be shown that the defendant had the opportunity to view, this (when combined with substantial similarity) is sufficient to permit the trier to conclude that copying has occurred. But this result is often reached through the Courts reasoning that the opportunity to view creates an inference of access, which in turn creates an inference of 'copying'. Such an approach tacitly if not expressly adopts the actual viewing definition of access; seeming more just in terms of plaintiff's burden of proof 141 to regard a reasonable opportunity to view as access in itself and not merely as creating an inference of access. This approach is consistent with what is perhaps the more prevailing definition of access, that is, the opportunity to copy. The trier of fact may conclude that the person who created defendant's work had, but did not avail himself/herself of the opportunity to view, but this conclusion is with regards the ultimate issue of copying. Reasonable opportunity as here used, does not cover any bare possibility in the sense that anything is possible. Access may not be inferred through mere speculation or conjecture. There must be a reasonable possibility of viewing plaintiff's work- not a bare possibility. Thus, the mere fact that plaintiff's manuscript is physically in the same city as that in which the defendant resides does not give the defendant an opportunity to view the manuscript notwithstanding the bare possibility of such an access. On the contrary, the mere lapse of a considerable period of time between the moment of access and the creation of defendant's work does not preclude a finding of copying.142

141

Even if the plaintiff is unable to prove actual viewing by the defendant, but is able to establish the reasonable opportunity to view, this should be regarded as a showing of access for the purposes of shifting the burden to the defendant to establish independent creation. If the burden shifts to defendant where physical possession of the manuscript is shown notwithstanding a claim by defendant that he/she had forgotten its contents, or did not read it, the burden should likewise shift where the defendant denies that he/she ever obtained physical possession although he/she had a reasonable opportunity to obtain such possession. In each case the burden should shift because the plaintiff often can no more prove actual physical possession than he/she can, assuming such possession, prove the act of reading and the memory of such reading.; Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-10. 142 Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-12.


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When plaintiff must prove access: The owner must show that a causal connection is the explanation of the similarity between the work and the infringement- the other possibilities being that he/she copied from the defendant, that they both copied from a common source, or that they arrived at their results independently. On the other hand, he/she does not have to show that the defendant knew that his/her copying constituted an infringement. As with other rights of property recognized at common law, the primary exclusive rights may be asserted against even the defendant who honestly believes that he/she purchased the right to reproduce the work. Where there has been copying and all or virtually all of a work is taken without emendation, the proof of infringement is straightforward; difficulties arise to the extent that this is not the case. The Copyright, Designs and Patents Act, 1988, Section 16(3)(a) requires that a substantial part must be copied giving expression to a sense of fair play. Thus this depends on the quantity rather than the quality of what the defendant has taken. It has also been insisted that the copying must be of the expression of ideas, rather than just of the ideas; but this an ill-defined distinction. But Courts are inevitably pressed with cases where the plaintiff's grievance is that he/she thought of the very first instance of a whole type of work (a detective story, a restaurant guide, et al) and wants rights over all subsequent variants. In relation to infringement, the idea/expression dichotomy directs a necessary enquiry to restrict copyright to a taking from the protected work, and there seems no better indicator of the judgement called for. But in the judges view if what is worth copying is prima facie worth protecting, it may considerably stretch the notion of expression. Once convinced that the defendant unfairly cut a competitive corner by setting out to revamp the plaintiff's completed work, they will not be easily dissuaded that the alterations have been sufficient. In this approach, the taking of ideas alone, is confined to cases where the defendant does not start from the completed work at all, save in the sense that he/she goes through a similar process of creation (for example where he/she draws his/her own cartoon for the same basic joke)143 143

Cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet and Maxwell, London, 1996, at 363.


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Ordinarily in order to prove copying by the defendant, the plaintiff must prove access as well as substantial similarity. If, however, the similarity between plaintiff's and defendant's work is sufficiently striking and substantial, the trier of fact may be permitted to infer copying notwithstanding the plaintiff's failure to prove access. Minus access, the similarities must be so striking as to preclude the possibility that the defendant independently arrived at the same result. A defendant who is shown to have adopted the plaintiff's imaginative embellishments or plain errors will be in particular jeopardy. It has been said that although expert testimony is not required to establish substantial similarity, it is required to establish striking similarity such as to dispense with the need for proof of access. But the judges have hesitated to fetter the assessment of each case on its facts by the introduction of rules formally shifting the burden of proof from plaintiff to defendant at any stage of the trial. Even if there is a very striking similarity between the two works, copying may not be inferred without proof of access in the following circumstances:144 i.

If both plaintiff's and defendant's works are trite or commonplace.

ii.

If plaintiff fails to establish prior creation.

iii.

If the identity between the two works may arise from identical functional considerations rather than from copying.

iv.

Where the defendant offers direct and highly persuasive evidence that access could not have occurred.

Where the works in question are non-dramatic, probably more by way of detailed incident and language must be taken before there is substantial copying. Where the works are artistic, and the Court is testing sufficient similarity by appeal to the eye, stress is sometimes laid upon the feeling and artistic character of the plaintiff's work, an idea that can be extended to the screen displays of a computer. Suppose an author creates a work, and subsequently, at a time when he/she does not own the copyright, he/she reproduces it in a second work. Some concession in his/her favor seems called for, in order to allow him/her to continue doing the kind of work at which he/she is proficient. The relation between the two end-products would be 144

Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-15.


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considered rather than the relation between the first work and what has been copied from it. The fact that the author made his/her reproduction unconsciously (if he/she can be believed) would probably enhance any claim not to have infringed. What constitutes proof of access Evidence which directly tends to prove either that the defendant viewed the plaintiff's work or had a reasonable opportunity for such a view is admissible to prove access. Thus, from proof that a plaintiff mailed the allegedly infringed material to the defendant's principal office, it may be inferred that the material was in fact received , and the trier of fact may infer therefrom (unless contradictory evidence is to believed) that the persons responsible for defendant's work had prior knowledge of plaintiff's work.145 Sometimes access may be proved by mere circumstantial evidence. Therefore, unusual speed in the creation of the defendant's work may constitute some evidence that the defendant had access to and used the plaintiff's work, rather than resorting to independent creation. Similarity between the plaintiff's work and other materials created by the defendant which are not the subject of litigation may likewise constitute circumstantial evidence that the defendant had access with respect to his/her creation of the work in issue KNOWLEDGE The Court is not concerned with the knowledge of a reasonable man but is concerned with reasonable inferences to be drawn from a concrete situation as disclosed in the evidence as it affects the particular person whose knowledge is in issue. One must consider the concrete situation disclosed by the evidence and then decide what knowledge is to be attributed to the defendant, either in the way of express knowledge or knowledge that these particular defendants must have inferred. The knowledge which has to be proved is actual not constructive. Once a plaintiff fixes a defendant with notice of the facts relied on as constituting an infringement, the defendant cannot contend that he/she is without knowledge because he/she has in good faith a belief that in law no infringement is being committed.

145

Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-17.


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ACQUIESCENCE/CONSENT Beyond the limitation periods for particular wrongs lies a further question: if a defendant has been left to pursue a course of infringement for a substantial period of time, can the right-owner be taken to have consented to its continuance? If so, no part of his/her activity, even the most recent is actionable. This consent may be expressly given or it may be implied from the circumstances; it may occur before, at the time of, or after the infringing act. Conduct alone can create an implied license in some circumstances where the plaintiff represents, expressly or impliedly, that the defendant's conduct is not an infringement, he/she will thereafter be estopped from asserting his/her right. Where he/she both know, of his/her right against the defendant and that the defendant mistakenly believes that he/she is entitled to do what he/she is doing, yet he/she stands by without asserting his/her right, he/she will be taken to have acquiesced in the wrong. If all this can be proved, there is no need to show any element of delay. In Willmott v. Barber146 Justice Fry has set out five requisites to establish acquiescence. They are as follows: 1. The plaintiff must have made a mistake as to his/her legal rights. 2. He/she must have expended some money or must have done some act on the faith of his/her mistaken belief. 3. The defendant, the possessor of the legal right, must know of the existence of his/her own right which is inconsistent with the right claimed by the plaintiff, for the doctrine of acquiescence is founded upon conduct with a knowledge of the legal rights. 4. The defendant, the possessor of the legal right must know of the plaintiff's mistaken belief of his/her rights. 5. The defendant, the possessor of the legal right, must have encouraged the plaintiff in the expenditure of money or in other acts which he/she has done either directly or by abstaining from asserting his/her legal right. But Buckley LJ, in Shaw v. Applegate147 commented: "I do not think it is clear that it is essential to find all the five tests set out by Fry J literally applicable and satisfied in 146

(1880) 15 Ch D 96 at p. 105; Cited from Narayanan, P., Law of Copyright and Industrial Designs, Eastern Law House, Calcutta, 1995, at 237. 147 (1978) 1 All ER 1223 at 131.


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any particular case. The real test, I think must be whether upon the facts of the particular case, the situation has become such that it would be dishonest or unconscionable, for the person having the right sought to be enforced, to continue to seek to enforce it". FAIR DEALING The requirement of substantial taking prevents the owner from objecting to minor borrowings from his/her copyright work. The three most important exceptions turn upon a qualitative assessment. They exempt copying for certain purposes if it amounts to no more than fair dealing. In these cases the Courts are left to judge fairness in the light of all the circumstances. If there is substantial copying, it is a moot point whether the use could nevertheless be justified for a reason beyond the confines of the statutory exceptions. 1. Research or Private Study- This applies to the copyright in literary, dramatic, musical and artistic works and published editions. The role of these defenses is particularly important in the field of Education. It is plain from the parliamentary evolution of this defense that it may in principle cover research in commerce, industry and government. What is fair will presumably vary to fit each case. 2.

Reporting Current Events- This permits all works, other than photographs, to be used for reporting current events. Photographs have been treated differently in order to preserve the full value of holding a unique visual record of some person or event. To come within the exception, the event itself must be current and not the pretext for reviving historical information. A spate of photographs of Princess Diana and the men in her life being published prior to her untimely death (at the hands of the paparazzi?) was not justified by the British tabloids with a copyright license, demanding professional courtesy in the least. The exception must be read in conjunction with a number of cognate provisions.148

3. Criticism or Review- This is the most general exception, allowing works to be used for purposes of criticism or review (of themselves or another work), one 148

The Copyright, Designs and Patents Act, 1988, Sections 31 (incidental inclusion), 58 (record of spoken words), 62 (artistic works on public display).


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precondition of fairness being that the source should be sufficiently acknowledged (as is the case with footnotes/endnotes). It may concern the ideas expressed as well as the mode of expression (particularly relevant in cases of book reviews, as earlier mentioned) and the Courts will not permit wholesale borrowing to be dressed up as critical quotation. PUBLIC POLICY The judges have kept the power to refuse protection to a copyright owner on public policy grounds. 1. Policy Against Legal Protection- It justifies the refusal of relief on a variety of grounds which express disapproval of the content of the work; because it is obscene, sexually immoral, defamatory, blasphemous, irreligious, heresy, or seriously deceptive of the public. A work which satisfies the general criterion of originality does not lose its copyright, or cease to be enforceable, because it embodies another copyright work to an extent which requires a license and that authority has not been obtained. 2. Policy Favoring Dissemination- The ability to protect confidential information particularly in avoidance of breach of confidence cases is of utmost importance here. PRESUMPTIONS IN COPYRIGHT INFRINGEMENT ACTIONS There are some statutory presumptions which throw the legal (persuasive) burden of proof upon the defendant to infringement proceedings. Where literary, dramatic, musical or artistic copyright is concerned they are: i.

That a person named as author is the author of a work; and that he/she did not produce it in circumstances (such as in the course of employment) which would deprive him/her of the copyright initially. If this does not apply, then

ii.

That if first publication of a work qualifies it for copyright, copyright subsists and was owned at first publication by the person named as publisher.

iii.

That, where the author is dead or unidentifiable when the action is brought, the work was original and was first published where and when the plaintiff alleges.


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As regards copyright in sound recordings, films and computer programs, there are presumptions that statements naming the copyright owner, or giving the date or place of first publication, are true.


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REMEDIES There are many instances where justice can only be done if the Court acts to prevent further damage to the plaintiff pending trial, or to prevent the defendant from doing something that would injure the plaintiff’s chance of getting the relief he/she is entitled to at trial. Ex Parte Injunction An injunction will only be granted ex parte in cases where the plaintiff has shown clearly that there is a real urgency, making it impossible to give the normal notice and that he/she has not delayed in applying for the injunction. They are normally granted for a short period, usually to the first day on which there can be a hearing of the matter, immediate notice to be given to the defendant. Interlocutory Injunctions It is often of importance for a plaintiff to obtain immediate protection from a threatened infringement of his/her copyright. In such a case, he/she should apply for an interlocutory injunction for the purpose of preserving his/her rights from further interference pending the trial of the action and if the granting of such an injunction will not seriously interfere with the defendant, it may be granted although the plaintiff does not fully prove his/her title to the right alleged to be infringement, or has only an equitable title, or although the quantity of the defendant’s work which constitutes the infringement has not been ascertained. An interlocutory injunction will not, however be granted, where the defendant might suffer irreparable injury from an injunction restraining him/her from publishing, pending the trial and the plaintiff can be properly protected, by the defendant being ordered to keep an account, nor will it normally be granted where a bona fide defense of fair dealing has been pleaded, or if the plaintiff has been guilty of undue delay in coming to the Court or his/her conduct has amounted to acquiescence in the infringement, or if there is any substantial doubt as to the plaintiff’s right to succeed.149 149

Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974, at 610.


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The application for the interlocutory injunction is made to the court by notice of motion, which is served on the defendant. This must be accompanied by written evidence supporting the plaintiff’s case and must be sufficient to establish a prima facie case on each of the requirements for the grant of such an injunction. The defendant has the opportunity to submit written evidence in reply, if he/she wishes to contest the motion, else he/she will normally resolve the matter by giving the plaintiff an undertaking not to do the acts specified in the notice of motion. Anton Piller Orders150 The usual basis for claiming substantial damages for infringement relates to the commercial value of the work; as with patents, the claim is either for compensation for lost profits- because the defendant's infringements have lost the plaintiff his/her own opportunities for sale. How far this will be assumed from the very fact of the defendant's piratical sales depends on the particular circumstances. Alternatively, the claim is for the misappropriation- because the plaintiff has lost the chance of licensing or selling his/her copyright to the defendant. As part of such a claim, the plaintiff is entitled to show that the cheap or vulgar form of the defendant's piracy, injured reputation and so lost him/her sales. Purpose and Need [The purpose of an Anton Piller order is that, in extreme cases where there is very clear and strong prima facie evidence of an infringement of copyright, trade mark or other rights, it enables the plaintiff to enter the premises, first, to seize the infringing material and secondly, to obtain information as to persons from whom the defendant obtained the supplies of the infringing material and the persons to whom the defendant in turn has supplied the infringing material.] But an Anton Piller order will not be passed where the defendant are reputable public companies and there is no reason for thinking that they would not punctiliously comply with any order of the Court.

150

Based on the case decision in Anton Piller K.G. v. Manufacturing Process Ltd. (1976) RPC 719; see also E.M.I. Ltd. and others v. K.N.Pandit.[1975] 1 All ER Ch D 418.


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Anton Piller Orders have been a response to growing concern over the current volume of sound recording, video and other copyright piracy and the imitation of popular trade marks, but they are equally available, for instance, in breach of confidence cases. They are invaluable in cases where there is a real possibility that the defendants may destroy such material before any application inter partes can be made. In Anton Piller's case, the Court of Appeal approved a procedure that is of major practical importance to some owners of intellectual property rights. The plaintiff applies to the High Court in camera without any notice to the defendant, for an order that the defendant permit him/her (with his/her solicitor) to inspect the defendant's premises and to seize, copy or photograph material relevant to the alleged infringement. The defendant may be required to deliver up infringing goods, keep infringing stock or infringing papers, and even to give information, for instance, about his/her sources of supply, or the destination of stock passing through his/her hands. An injunction against infringement may be part of the order. Technicalities The form of the order makes it plain that the Court is not ordering or granting anything equivalent to a search warrant. The Order is an order on the defendant in personam to permit inspection. It is, therefore open to him/her to refuse to comply with such an order, but at his/her peril either of further proceedings for contempt of Court- in which case, of course, the Court will have the widest discretion as to how to deal with it and if it turns out that the order was made improperly in the first place, the contempt will be dealt with accordingly- but more important, of course, the refusal to comply may be the most damning evidence against the defendant at the subsequent trial.151 The order will be made if the plaintiff i.

Provides an extremely strong prima facie case of infringement,

ii.

Shows that the damage, actual or potential to him/her is very serious, and

iii.

Provides clear evidence that the defendant has in his/her possession incriminating documents or things and that there is a real possibility that this material will be destroyed before any application inter partes can be made.

151

Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3 rd edn, Sweet and Maxwell, London, 1996, at 48.


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There are certain safeguards which are said to distinguish this sort of order from a search warrant which are: 1. The plaintiff's solicitor, who is an officer of the Court, must attend. 2. The defendant must be given time to think and must be informed of his/her right to consult his/her own solicitor and to apply to discharge the order. 3. The plaintiff must also give a cross-undertaking in damages. If consequent upon the grant of an Anton Piller order the evidence shows that the order was in fact justified then the fact that the evidence before the learned judge was not as strong as it ultimately became, does not provide a ground for challenging the order itself. However, it will not affect the situation if the order was obtained mala fide or by some material non-disclosure. Where the Anton Piller order has been obtained on the basis of non-disclosure of material facts, the judge has a discretion to exclude evidence obtained as a result of the order. Even if the non-disclosure was innocent, the Court will not lightly allow a party to keep the benefit of it. Where the disclosure is serious and substantial it should only allow use of the yield for good and compelling reasons. The proceedings turn upon the plaintiff's evidence alone and they occur in camera. If a single judge is satisfied prima facie that there is infringement and the likelihood of serious injury, the defendant will know nothing until the inspection is demanded. It takes considerable temerity then to challenge the findings on which the order was made. The process has been labeled draconian and essentially unfair in that it condemns a defendant without having been heard.

The Courts strive to be watchful for plaintiff's who go to excess, seeking for instance, a means of shutting out the defendant from all business, legitimate as well as illegitimate. The ground on which defendants have challenged orders with some regularity is the plaintiff's failure to fully disclose all material circumstances. This it has been said, should err on the side of excess; for it is for the Court, not the plaintiff's advisers, to decide whether the order is justified. It is no answer to a charge of inadequate disclosure that enough was shown to justify the making of the order.


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Search and Seizure Prior to the Copyright Amendment Act, 1984, seizure of infringing copies by police was possible only after a magistrate had taken cognizance of an offence relating to infringement under Section 63 [The (Indian) Copyright Act, 1957]. Moreover such seizure could only be of infringing copies and did not extend to plates used for making infringing copies. After the Act, the powers of the police have been widened. Now Section 64 provides that where any police officer not below the rank of subinspector of police is satisfied, that an infringement or an abetment of infringement of copyright in any work has been, or is likely to be committed, he/she may seize without any warrant all copies of the work and all plates used for the purpose of making infringing copies of the work, wherever found and the copies so seized must be produced before a magistrate as soon as practicable. Moreover, if business records have been seized, they should be retained until trial, but should be returned after necessary information has been extracted from them; and where infringing material has been seized it should be handed over to the defendant's solicitor, once he/she is on the record, upon his/her undertaking to keep it in safe custody and produce it, if required, at the trial. No Court inferior to that of a Presidency Magistrate or a Magistrate of the First Class, can try an offence under the Act. Any person can make a criminal complaint and a magistrate will be competent to take cognizance of any offence upon receiving a complaint of facts which constitutes such offence irrespective of the qualifications or eligibility of the complainant to file a complaint. Ordinarily however, it is the owner of the copyright or any person who has an interest in the copyright, for example the licensee who files a complaint. A joint author can also file a complaint. The conduct of the criminal proceedings is governed by the Criminal Procedure Code. The defendant is protected only by the discretion on costs and the plaintiff's crossundertaking in damages. If the order was not justified- whether or not it is subsequently discharged- the defendant will be entitled to compensatory damages for the contumely or affront in the way the proceedings were used against him/her, and even to exemplary damages.


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Right against self-incrimination The acute difficulties of balancing efficacy against fairness have surfaced equally over the element of instant discovery in any Anton Piller Order, which requires answers on sources of supply or customers. Since these answers would in many cases furnish evidence of criminal conduct, defendants at first sought to plead in response a privilege against self-incrimination. The House of Lords uphold this plea in any case where there is more than a remote or fanciful chance that a serious charge, attracting heavy penalties might result. This meant that the privilege was available to those who ran substantial piracy operations and so were likely to be charged with conspiracy as to defraud, as distinct from (say) a summary offence under the copyright or trade descriptions legislation, which might be appropriate against a street trader. Because the upshot was to offer a haven to those apparently most culpable, Parliament proved willing to intervene. By the Supreme Court Act 1981, Section 72, in proceedings for infringement of intellectual property rights 152 or passing off, a defendant may after all be compelled to answer a question or comply with an order which would tend to expose him/her to proceedings for a related offence or recovery of a related penalty. It is however, not possible to use any statement or admission so procured in any equivalent criminal proceedings. Discovery of names Sometimes the only lead that a right-owner can pick up about infringing goods is that they are passing through the hands of some person in the course of transit. That person may however not be infringing or be likely to do so. The Court may order such a person to disclose the names of the consignors or consignees responsible, if this is the only way for the plaintiff to discover whom he/she should act against and of the person against whom the order is made, is shown (however unwittingly) to be facilitating the wrongful acts. Discovery will not be ordered against anyone who can give information as to the identity of the wrongdoer. But discovery to find the identity of a wrongdoer is available against anyone whom, the plaintiff has a cause of action in relation to the same wrong. It is not available against a person who has no other connection with the 152

This, is the first statutory use of the term, encompassing 'patents, trademark, copyright, registered design, technical or commercial information or other intellectual property ': Section 73(5).


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wrong, than that he/she was a spectator or has some document relating to it in his/her possession. Interlocutory orders to furnish the names and addresses of persons responsible for supplying infringing copies to the defendant can be obtained in suitable cases. The principle applied in such cases has been stated as "where a person, albeit innocently and without incurring any personal liability became involved in the tortious acts of others, he/she came under a duty to assist one injured by those acts, by giving him/her full information by way of discovery and disclosing the identity of the wrongdoers, and for that purpose, it mattered not that such involvement was the result of voluntary action or the consequences of the performance of a duty statutory or otherwise. There is no rule of evidence that evidence disclosed under compulsion cannot subsequently be used against the person disclosing it either in another civil action or in a criminal prosecution. Mareva Injunction [More in general evolution in interlocutory procedure: the Mareva Injunction is directed, not to the uncovering of assets belonging to the defendant which may be needed to satisfy judgement in the action, particularly if they may otherwise be removed from the jurisdiction. Orders are frequently made which contain both Anton Piller and Mareva terms. These may relate to bank accounts and other financial assets. Equally, there have been orders directed to the seizure of specified valuables, in which according to the evidence, the proceeds of infringement have been invested. Just as a defendant is permitted an allowance for living expenses out of financial assets that are subject to a Mareva order, so also, where the order relates to other assets, he/she will not be deprived of things needed for living and conducting legitimate trade.] Discoveries, Interrogatories, Inspection English Courts have generally been careful to protect defendant against speculative suits that are no more than fishing expeditions- proceedings begun to find out what, if anything might really be claimed. Accordingly, infringement actions cannot be launched effectively unless the plaintiff can specify, in his/her statement of claims,


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particulars of at least one act of infringement. If he/she does not give them and does not comply with any order for further and better particulars he/she will be unable to defend himself/herself on a motion to strike out pleadings or actions. Provided that he/she can show enough to repel attacks on his/her pleadings, the plaintiff will carry his/her case forward to the stage of pre-trial preparations. As in other types of civil litigation, discovery of documents and the administration of interrogatories are steps, which on occasion may provide important evidence or admissions. In the United States such steps have been inflated into a form of discovery that allows wide-ranging preliminary cross-examination of party by party. If the documents discovered contain confidential information the other party may be restrained from using the information for other purposes such as revelations in the press or further litigation. Beyond this there are special procedures for cases involving industrial techniques. The plaintiff may need to discover what the defendant is doing; but the defendant may fear that the inspection by him/her will reveal the defendant's own secrets- a fear that, in the race to get ahead, is sometimes acute. The Court has power to order inspection even against this sort of objection. But while it will not require first to be satisfied prima facie that the defendant is infringing, it may need to be shown that there are formidable grounds rather than a mere suspicion. It may try to alleviate the defendant's anxieties by requiring an independent expert to make the inspection, then it may have to be done by the plaintiff and his/her advisers; but possibly on condition that nothing is copied or taken away and that, all involved, are placed under obligations to respect confidence. In the main it is not isolated acts of infringement but runs of production that provoke the owner of intellectual property rights into taking action. Accordingly, a defendant's stake is likely to be high; and it may well become higher if proceedings against him/her are delayed until he/she has established commercial production and tied himself/herself to distribution arrangements. The question here is: within what period after a particular infringement has been perpetrated must a writ be issued? The various infringement actions in our field, being


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tortious in character, must normally be begun within six years, of the wrongful act. The same applies to actions based upon breach of contract. Only the actions for breach of confidence may differ (when not founded in contract) because of its equitable origin: probably the only principle is that a period of too great delay (laches) must not be allowed to lapse. An action, which is commenced within the limitation period, but then allowed to stagnate, may be struck out for want of prosecution. But under current practice, this will only be done if there is a real prejudice to the defendant, as well as inordinate delay. Such prejudice might arise if witnesses in a patent action would have to testify to the state of an art which has receded a considerable distance in time.


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SOFTWARE PIRACY Infringement of copyright in software occupies the pride of place among all cases of copyright infringement. This problem is especially rampant in all developing countries, with poor enforcement mechanisms contributing in no small measure to it. More importantly, it has to do with a situation wherein people are unable to afford them, yet they are indispensable tools for their day to day operations in a fast growing technological world. Such clandestine or covert dealings, which are more the norm than the exception in countries like India and China, costs the industry a good billion dollars every year. In fact, if the author were to make a confession, the author is presently writing this research paper on a pirated copy of Microsoft Word! The process by which the piracy is effected is very simple and that explains the allpervasive nature of the same153. More importantly, the lack of specially trained judicial machinery and a capable force to deal with such complex and varied infringements, has not helped in any manner154. In this context, it is necessary to understand as to what constitutes software, as to understand what is being protected. Computer Software: The Essential IngredientsComputer Software is explained to constitute the following three elements155: 

‘Computer Program’- which is a set of instructions capable, when put in a computer, of causing a machine having information processing capabilities to indicate, perform or achieve a particular function, task or result;

‘Program Description’-which is a comprehensive procedural presentation, in verbal, schematic or other form, in sufficient detail to determine a set of instructions constituting a corresponding computer program;

‘Supporting Material’-which is any material other than a computer program or a program description, created for aiding the understanding or application of a computer program, i.e. a problem description and user instructions.

153

Dhar, P.M., “Intellectual Property in Computer Programs: Weaknesses of the Indian Copyright Act, 1957”, JILI, Vol.28, No.4, 1982, p.487. 154 Ibid. 155 World Intellectual Property Organisation (hereinafter referred to as WIPO), Model Provisions on Protection of Computer Software, (1978). See also, Puri, Kanwal, Copyright in Software, National Law School Journal,Vol.1, 1989,p.32.


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Computer Programs: The Indian Copyright Act defines a computer program as “a set of instructions expressed in words, codes, schemes or in any other form including the machine readable medium capable of causing computer to perform a particular task or achieve a particular result.” Computer programs are written in two ways:  Object code, and  Source code. Statements written in machine language is written in object code and language that is understandable only by the programmer is called source code. A program called the Compiler translates the source code into object code.156 Since programs in source code are not comprehensible to the computer they are translated into object code by another program.157 It is well settled that computer programs are subject to copyright158. Source code satisfies the various tests and is thus subject to copyright159. However, that is not of great relevance as the software is distributed only in the object form. The underlying source code is generally not available to the public. The ‘pirate’ would require a compiler to convert the programme from source code to object code, which is not that easy. The only question is whether the object code is subject to copyright160. 156

Ibid.. Supra, n.15, p.160. 158 See the decision of the Canadian High Court in Apple Computers v.Macintosh Computers. See also, WIPO documents in this regard, the proposed protocol to the Berne Convention regarding copyright protection for computer programs. The TRIPS agreement in the GATT final agreement also talks of the same. c.f.Supra n.15. 159 Supra n. 34. However, there have been umpteen objections to making source code subject to copyright on the grounds that There is a lack of accessibility. The tradition has been to protect works produced in a written text .The main objection has been the absence of readability or appearance to the eye or visibility. The question is whether the absence of these would present a difficulty in proving whether there was an infringement. 160 The problem that is put forth which also seems to be a problem in proving piracy of works in the 157

object code seems to be that the object code is in the form of sequences of electrical impulses and that this is not a material form. Since comparison is what is necessary it must be asserted that comparison is definitely possible because programmes can be read out of ROM and therefore compared. The other problem is with regard to the perceptibility –visibility question and he contention that an object


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Proving Piracy: Just as in the case of written works, there must be a manual comparison of the two works in the case of software such a comparison is possible. As per Section 45 of the Indian Evidence Act, an expert may be employed to prove a point involving any “foreign law or science” and since such a comparison involves an expert’s evidence an expert may be employed. Piracy in software can occur at two levels: 

At the object code level161, and

At the source code level162. In order to find out whether there has been a violation of the source code, a process of "reverse engineering” is necessary. The decompilation or disassembly of the object form is necessary. It is in such situations that expert intervention is actually necessary. Where object code has been blindly copied, all that is necessary is a verification of the bar code with every copy of the original program, and a violation can be detected. "" Non-Literal Elements of Computer Software:

programme cannot be perceived by the senses and therefore must not be subject to copyright. This is warped logic because the very reasons enumerated just now put forth the case that piracy of object code can be done by a person who has no knowledge at all in the area and detection of such piracy is all the more difficult owing to these reasons. This means a better way of policing such violations must be evolved. The ROM contains electrical impulses that embody instructions that emanate from a written description. The computer can reproduce an object code from a magnetic tape, floppy disk or ROM in a printed form. Object code is only a mechanical translation of the source programme into another language. Besides if there is no protection to the object code there is no point in protecting the source code. See, Supra n.34. Also, as per the Indian Copyright Act, all programmes expressed in codes is entitled to protection if it can perform a particular task or achieve a particular result, thus object code is covered. Besides India has signed the Berne Convention and the GATT Final Act and the definition has to therefore be interpreted to include source code and object code. Also see Apple Computer v. Franklin Computer Corp, 714 F.2d. 1240. 161 162

This is for those who require merely the executable program. This is for competitors who seek to understand the structure and logic of the program.


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The non-literal elements of computer software are elements of the software other than the source code and object code such as the overall layouts, menus, structure and look and feel. At one point there appeared to be a significant amount of protection for the non-literal elements of computer software. The courts even went so far as to apply the notion that taking the "total concept and feel" of a computer program (which had been found to be illegal with respect to television characters) 163 constitutes a copyright infringement164. In the 1990's the courts began restricting protection of non-literal elements in computer programs under copyright law. The two leading cases in this regard are Computer Associates, Inc. v. Altai, Inc165. and Lotus Dev. Corp. v. Borland Int'l, Inc166. In the Altai case, Computer Associates had developed a scheduling program and, separately, an "ADAPTER" to allow the scheduling program to be operated on a number of different operating systems. Altai, a competitor of Computer Associates, desired to develop an "adapter type" program to allow its scheduling program to be used on an additional operating system. Altai hired an employee of Computer Associates who, without Altai's knowledge, brought over code from the ADAPTER program. After Computer Associates filed suit, Altai realized what had happened, admitted liability for the direct copying and reconstructed the program without any literal copying. The court had to determine whether the non-literal copying constituted an infringement. The Court of Appeals approved the statements of the district court below that had said "references to structure, sequence, and organization" are no longer necessarily relevant to how computer programming is done. With object oriented programming, and especially with Windows based object oriented programming, such as Visual Basic, it is difficult to point to any particular sequence of a computer program. The court went on to describe its three step test for determining what, if any, of the non-literal elements of a computer program are protectable under copyright law. 163

See, Sid and Marty Krofft Television Productions v. McDonald's Corp., 562 F.2d 1152 (9th Cir. 1977). 164 See generally, Scott On Computer Law, Second Edition, Section 3.47(C)(1). 165 982F.2d 693 (2d Cir. 1992). 166 489 F.3rd 807 (1st Cir. 1995). See also, Softel, Inc. v. Dragon Medical & Scientific Communications, Inc., 118 F.3rd 955 (2nd Cir. 1997).


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The first step is "abstraction" where the court goes through a sort of "reverse engineering." The court determines what are the various levels of abstraction of the program. At the lowest level are the actual instructions organized into a hierarchy of modules. At a higher level are the functions of each module. (Note that a selection and organization of modules could involve creativity that is protectable if at that level the program survives Step 2 "filtration" (discussed below), as compilations may be protectable under the Copyright Act.) The second step is filtration of each level of abstraction. Here the court filters out the following at each level: (a) Elements that constitute ideas or are dictated by efficiency; (b) Elements dictated by external factors such as standard techniques rather than creative originality on the part of the programmer; and (c) Elements taken from the public domain.

The third step is the comparison test. From the filtration step, the court has determined what of the plaintiff's program is protectable expression and then the court determines whether or not the "defendant copied any aspect of this protected expression, as well as an assessment of the copied portion's relative importance with respect to the plaintiff's program." The Court of Appeals also held that the district court's appointment of its own expert witness was appropriate. Following these tests, the court held that there was no infringement. The court did hold that there was a possibility of misappropriation of trade secrets. The court said that state trade secret law is not pre-empted under Section 301 of the US Copyright Act. In Lotus v. Borland, Borland had developed a competitive spreadsheet program that included an option which provided "a virtually identical copy of the 1-2-3 menu tree" contained in the Lotus spreadsheet program. There was no contention that the underlying code or protected elements of computer screen displays had been copied.


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Lotus' only contention was that Borland had unlawfully copied its menu command hierarchy. The trial court concluded that Lotus' menu hierarchy was protectable expression because, for example, many different words could be used for the same commands. The Court of Appeals reversed. Referring to 17 U.S.C. ยง102(b), the Court of Appeals said: We hold that the Lotus menu hierarchy is an uncopyrightable method of operation. We do not consider whether it could also be a system, process, or procedure.

The Supreme Court granted certiorari to Lotus on an appeal from the First Circuit Court of Appeals decision, but the Supreme Court affirmed by default when it turned out that the Justices were equally divided on the issue.167 As courts became reluctant to protect non-literal elements of computer programs under copyright law, courts, at the same time, became more comfortable with granting patent protection to computer programs. Shifting much of the protection for non-literal elements of computer programs from copyright to patent law has created a situation that makes it much more difficult for start up companies to protect their software because of the much higher expense of filing for patent protection. In the author's view it also allowed for monopoly protection of some matters that would not have ever been protected by copyright law that are too easy to create in the software context to fairly be the subject of patent protection. There is so much programming code created every day that much of the software for which patent protection is granted is already being used by others in the industry who just have not gone to the trouble of applying for a patent. The author submits that a modified hybrid of trade secret, patent and copyright law should be developed for the protection of computer software.

167

116 S.Ct. 804 (1996).


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INTERNATIONAL CONVENTIONS The TRIP's agreement of Final Act embodying the results of the Uruguay Round of Multilateral Trade negotiations to which India is a signatory, has tried to adopt the regime of copyright protection provided for in the Berne Convention. Article 9.1 of the TRIP’s agreement obliges members to comply with Articles 1 to 21 of the Berne Convention and the Appendix thereto. In other words it purports to amend the Berne Convention. The latter provides its own amendment procedures, requiring revision conferences in one of the countries of the Berne Union with voting proceeding on the basis of unanimity. As this procedure has not been followed, Article 9 is either ultra vires or should be read with the prefatory words- for the purposes of this Agreement...168 Under Article 7(1) of the Berne Convention, the general term of protection is for the life of the author and 50 years. Article 12 of the TRIP’s Agreement provides that whenever the term of protection of a work, other than a photographic work or a work of applied art, is calculated on a basis other than the life of a natural person, “such term shall be no more than 50 years from the end of the calendar year of authorize publication”, or where authorized publication does not occur, 50 years from the end of the calendar year of the making of the work. TRIP’s provides under Article 61 for criminal remedies against the infringement of intellectual property rights. In addition, Members shall be free to provide for criminal procedures and penalties to be applied, Consequently upon India signing the GATT and entering the global market economy, a number of changes have been made in The (Indian) Copyright Act, 1957 by the Amending Act of 1994, to give effect to the obligations arising from the signing of the GATT. Finally, mention must be made here of the Model Law of Copyright blessed by both UNESCO and WIPO for developing countries, was finalized at Tunis. 169 To cater for 168

Blakeney, Michael, Trade Related Aspects of Intellectual Property Rights: A Concise Guide to the TRIPS Agreement, Sweet and Maxwell, London, 1996, at 45. 169 Jhala, H.M., Intellectual Property and Competition Law in India with Special Reference to Patents, Trademarks, Copyrights, and Know-How Contracts, N.M. Tripathi Private Limited, Bombay, 1985, at 146.


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the specific needs of developing countries and to facilitate the access of these countries to foreign works protected by copyright, while ensuring appropriate international protection for their own works, the two convention, that is - the Berne Convention for the protection of literary and artistic works and the Universal Copyright Convention were revised in Paris.


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CONCLUSION All three forms of Intellectual Property deal with the protection of those assets which are acquired by persons either by way of ingenuous ideas, or by way of artistic talent, or by way of dedication and business skill. All seek to prevent third persons from taking advantage of these assets. Evidentiary issues of considerable complexity arise on account of two reasons : 1. The nature of these properties : The intangible nature of these properties renders it difficult to prove that indeed they exist, or that they have been violated; 2. The nature of violations of these properties involves evidentiary issues as to how to prove that third parties have defaulted. There is however a qualitative difference between the nature of patents and copyrights on one hand, and trademarks on the other hand. In the former, the standard for deciding questions as to rights is that of an expert; however in the latter it is the standard of the average consumer that rules. Consequently the nature of the evidence that is significant in these two fields is correspondingly varying. One thing that strikes the person perusing through the Law of evidence as applicable to intellectual property is the increasing importance of expert evidence. Intellectual property disputes involve a wide variety of experts ranging from literary experts to scientific experts. There is an increasing trend to render redundant the common law rule that the expert does not decide the case. Is it really the prerogative of the judge to decide on a matter in which, even after appreciating the facts fully, he is unable to link them up in order to apply the law. With regard to trademark law, where it is the position of the average customer that is to be considered, the most significant form of evidence is that of surveys. The traditional controversy regarding Hearsay evidence is a on –issue. These surveys seek not to adduce the statements of the respondents, but rather the state of mind of the Public itself. The question arises as to whether the Indian Evidence Act is sufficient to deal with evidentiary issues arising in the context of contemporary intellectual property law? There is a trend in India to source all evidentiary principles from the Indian Evidence Act. However, if one were to examine the legal position in other countries, the respective statutes deal entirely with the evidentiary implications of the respective


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issues, be it patent, trademark or copyright. The advantage of the latter is that specific issues of evidence pertaining to the law in question can be addressed in greater length and with greater particularity.. When a rule in the Evidence Act is moulded to suit patent disputes then it is the work of judges while a specific incorporation in a statute is always the work of experts. The latter is always the better option. The Trade and Merchandise Act, 1958 has to a certain extent achieved this, by stating the manner in which the Registrar is to allow the parties to adduce evidence. Such provisions along with a liberalised interpretation of the Evidence Act would be the next best option, in the absence of legislative measure, so that the law of evidence may constantly adjust to the evolving requirements of the Intellectual Property Regime. Certain doctrines such as the doctrine of equivalence in American patent law give a lot of flexibility to the judge when it comes to appreciating evidence. Judges in the United States undergo periodical training to assist them in appreciating technical evidence better. Rules such as the expert does not decide the case cannot operate in an environment when the person who is supposed to decide the case is helpless. Why then blindly impose common law rules. Similarly, why this stiff resistance towards accepting the applicability of the rule of privileged communication between the client and the patent agents. Even the UK has recognised its fault and rectified it by means of S.280 of the Copyright, Designs, Patent Act of 1988. The mandate of Art.34 of the TRIPS Agreement threatens to reverse the onus of proving a case of infringement. Is the average alleged infringer in a position to successfully wage tedious litigation and more so does the constitution permit such a statutory reversal of burden of proof. In our opinion, the answer is in the negative simply because the reversal is not justified on any ground, but convenience of the patent holder which in the TRIPS context is a rich corporation. Public interest certainly does not allow for such change. The law of Copyright stands out as an exception in respect of the fact that it does not involve registration. The principles of presumptions as to documents apply with regard to the registered records in the latter cases. It is a question worth considering whether, in infringement actions the registered documents exclude oral evidence. It is submitted that such cannot be the true position. The Indian Evidence Act has to be given a wide interpretation so as to accommodate oral evidence in these cases.


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BIBLIOGRAPHY Articles •

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Hailsham, Halsbury’s Laws of England, Vol. 48, 4th ed.

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