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EVIDENTIARY IMPLICATIONS OF COPYRIGHT VIOLATIONS ©

LAW OF EVIDENCE


TABLE OF CASES

1. A & M. Records v. Audio Magnetics [1979] F.S.R. 1

2. Anand v. Delux Films AIR 1978 SC 1613 3. Anton Piller K.G. v. Manufacturing Process Ltd. (1976) RPC 719 4. Apple Computer Inc. v. Microsoft Corp 24 UPSQ 2d 108 (N.D.Cal.1992). 5. CBS U.K. v. Amstrad [1988] R.P.C. 567 6. CBS v. Ames [1981] R.P.C. 407

7. Computer Associates International v. Altai. 23 USPQ 2d 124(2d. Cir. 1992). 8. E.M.I. Ltd. and others v. K.N.Pandit. [1975] 1 All ER Ch.D 418. 9, Francis Day v. Bron [1963] Ch. 587. 10, Joy Music v. Sunday Pictorial [1960] 2 Q.B. 60,

11. Lotus Development Corp. v. Borland International Inc 788 F.Supp.78 (D.Mass.1992). 12. Lotus Development Corp. v. Paperback Software International 740.F.Supp.37(D.Mass.1990).

13. Lucas v. Williams (1892) 2 QB 113. 14. Moorhouse v. University of N.S.W. (1975) 6 A.L.R

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INTRODUCTION As defined in the Webster's dictionary, Copyright (noun)is the exclusive right granted by law for a certain number of years, to make and dispose of and otherwise to control copies of a literary, musical or artistic work. 1 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 recordings 2, 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: 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,

1

Webster's Encyclopedic Unabridged Dictionary of the English Language, Gramercy Books, New York, 1994, at p.323. 2 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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7. to sell or give on hire any copy of the computer program or sound recording 3., 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 "Rama killed Ravana ", a copyright violation will not be committed if the expression "Ravana was killed by Rama' is used 4. 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 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. 5 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. 3

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, 3rd edn, Sweet and Maxwell, London, 1996, at 369. 4 Muralidharan, R., Legal Protection of Computer Software, at 3. 5 Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974, at 513. 4


RESEARCH METHODOLOGY This research paper on Evidentiary Implications of Copyright Violations is a study of the various aspects of copyrights as part of the intellectual property rights paradigm and vis-à -vis the Law of Evidence. The aim is to concentrate on copyright infringements and its specific remedies. Though both civil and criminal remedies are available to the copyright owner at infringement though the latter are more effective as it can be disposed of quickly and is distinct and independent of other remedies and can be availed simultaneously to stop further infringement and punish the infringer. The pendency of a civil suit does not justify the stay of criminal proceedings in which the same question is involved. Apart from this, a criminal complaint dismissed merely cannot be on the ground that the dispute is civil in character. These are some of the reasons why the law of evidence plays such an important role in such cases and one of the reasons why the topic is being studied in detail. While perusing the gamut of the research material available, the researcher found a paucity with respect to the evidentiary aspects and thus this restricted the scope of the paper to a large extent. Whatever information has been catalogued is more with respect to the Intellectual Property Acts, and not the Evidence Acts. This limited the various issues, which could otherwise have been discussed in more detail. Thus, the details mentioned vide the Indian Evidence Act are purely the construction of the researcher, and any errors either factual or technical may please be excused. On the basis of the above limitations, and objectives there are some basic matters to discuss: 1. What is meant by a copyright 2. How are copyrights infringed and what are its intricacies? 3. What are the key features of ownership and how does one prove it? 4. What are the means to identify copying? 5. How would one show access? 6. What role does knowledge and consent play in this framework? 7. Would fair use and public policy serve as exceptions to the above? 8. More importantly, what are the remedies available to the aggrieved party? 9. In pursuance of this, what is the evidentiary aspects involved? These research questions formulated have been discussed in detail in the proceeding chapter under segmented heads and have been highlighted distinctly as per the Table of Contents. A uniform standard of citation has been followed throughout. The Analytical school of writing has been adhered to as far as possible, though there is also emphasis on the Descriptive school in many places. Both primary and secondary sources of information have been gathered as resource material during this paper’s research activities and have been duly indexed in the Bibliography.

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EVIDENTIARY IMPLICATIONS OF COPYRIGHT VIOLATIONS WHAT IS A COPYRIGHT? Copyright may subsist, subject to the provisions of the Copyright Act in every original literary, dramatic or musical work or adaptation thereof; in every original artistic work; and in every sound recording, cinematograph 6 film, sound and television broadcast, and published edition of a literary, dramatic or musical work. No one is entitled to the copyright in any work, whether published or unpublished, except under and in accordance with the provisions of that Act or any other statutory enactment for the time being in force. 7 DEFINITION OF INFRINGEMENT In general the copyright in a work or other subject matter is infringed by any person who, not being the owner of the copyright and without the license of the owner, does or authorizes another person to do, in relation to the work or subject matter any of the acts which in the relevant provisions of the Act are designated as acts restricted by copyright in a work or subject matter of the description. Copyright in any work is deemed to be infringed [as per Section 51 of The (Indian) Copyright Act, 1957]: a. when any person without a license from the owner of the copyright, or the Registrar of Copyright, or in contravention of the conditions of a license granted or any conditions imposed by a competent authority under the Act: i. does anything, the exclusive right to do which is conferred upon the owner of the copyright, or ii. permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he/she was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright, or b. where a person, i. makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire, any infringing copies of the work, or ii. distributes, either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, any infringing copies of the work, or iii. exhibits to public by way of trade any infringing copies of the work, or iv. imports into India any infringing copies 8 of the work except one copy of any work, for the private and domestic use of the importer. 6

The owner of the copyright in a dramatic work has the exclusive right to make any cinematograph film or a sound recording in respect of an adaptation of the work. A clever film producer may take the central ideas from the work and make such alterations in the scenario, story, plot and incidents in making the film so as not to infringe the copyright. The case of Anand v. Delux Films (AIR 1978 SC 1613), is an excellent illustration of the difficulties involved in establishing that a cinematograph film is an infringement of a dramatic work. Reprinting individual pictures from the film as still pictures are infringement of the copyright in the film 7 Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, vol. 9, Butterworths, London, 1974, at 527. 8 The reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film will be deemed to be an infringing copy. 6


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 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. Williams9: ‌ 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 9

(1892) 2 QB 113 at 116. 7


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 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 outset 10, 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, 10

In the Introduction, at 5. 8


secondary) infringer should only be liable to an injunction and 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 exceptions 11 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.12 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 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:13 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.

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As to works by an author under a contract of service or apprenticeship, commissioned artistic works, works of joint authorship, etc. 12 Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974, at 548. 13 Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4. 9


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 coincidence‌ 14 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. 15 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. 16 Thus, would book reviews constitute a copyright infringement if we extended this logic? 17 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

14

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, 3rd edn, Sweet and Maxwell, London, 1996, at 361. 15 Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-4. 16 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. 17 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.

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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. 18 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, exhibited by commission or omission, may reach a degree from which authorization or permission may be inferred.

18

.Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 13-6.

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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 International19 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. But the Courts in the subsequent cases of Lotus Development Corp. v. Borland International Inc20., and Apple Computer Inc. v. Microsoft Corp.21 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 improvement22 over the previous look and feel test developed in the case of Computer Associates International v. Altai.23 1. Breaking down the allegedly infringed program into its constituent structural parts. 19

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. 20 788 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. 21 24 UPSQ 2d 1081 (N.D.Cal. 1992); Ibid. 22 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. 23 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. 12


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 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 24 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 24

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.

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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. 25 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) 26 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 25

Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 1312. 26 Cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet and Maxwell, London, 1996, at 363.

14


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: 27 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 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. 28 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 27

Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 1315. 28 Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985, at 1317.

15


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. 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 rightowner 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. Barber29 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. Applegate30 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 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".

29

(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. 30 (1978) 1 All ER 1223 at 131. 16


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.31 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 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

31

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

17


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. 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. 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. 32 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 32

Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974, at 610. 18


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 Orders33 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 profitsbecause 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 misappropriationbecause 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. 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 33

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. 19


important, of course, the refusal to comply may be the most damning evidence against the defendant at the subsequent trial.34 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. 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 nondisclosure. 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. 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 34

Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet and Maxwell, London, 1996, at 48. 20


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 sub-inspector 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. 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 35 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 35

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). 21


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 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, particulars of at least one act of infringement. If he/she does not give them and does not comply with any order for further

22


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 crossexamination 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 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. THE DILEMMA OF INNOCENT INFRINGEMENT Innocent infringement is not a defense against infringement as such. But if the defendant proves that at the date of infringement he/she was not aware and had no reasonable ground for believing that copyright subsisted in the work, the plaintiff will be entitled to only an injunction and a decree for the whole or part of the profits made by the defendant by the sale

23


of the infringement copies as the Court may deem reasonable. The plaintiff will not be entitled to any remedy in respect of conversion of infringing copies, if the defendant proves 1. That he/she had no reasonable grounds to believe that copyright subsisted in the work of which such copies are alleged to be infringing copies, or 2. That he/she had reasonable grounds for believing that such copies or plates do not involve infringement of the copyright in any work. 36 It is evident that copyright law covers behavior which could be labeled innocent, in a wide variety of senses. The most interesting and problematical meaning of the term, in the context of a strict liability system, is that referring to the absence of both intention and negligence as to the infringement- that of the actor who violates the rights of the copyright holder without intending to do so. Four basic patterns of this type of innocent infringement: 1. Use of material on which notice of copyright has been omitted. 2. Deliberate copying in the belief that the material taken is in the public domain or that the copying does not constitute an infringing use. 3. Unconscious plagiarism in which the source of the matter used has been forgotten, and 4. Good faith use of infringing matter received from others in circumstances warranting the reasonable assumption that it is the original material. If the similarity between the works is solely due to coincidence, for example, in photographs of an object, taken by two persons from the same position and angle there is no infringement. In all of these situations, present law imposes liability. The conflict which underlies each of the various cases in which innocence is involved is that, between the full enjoyment of rights by the copyright holder on the one hand, and the interests of users, who even though scrupulously attempting to respect such rights, commit infringement. In explaining why the balance of rights tips against the innocent infringer, that is, following the Aristotelian view that the innocent infringer should disgorge his/her profits, some of the Courts and commentators37 cite four different factors: 1. It is sometimes suggested that innocence is easy for the defendant to allege and difficult for the plaintiff to disprove. 2. It is argued that especially in the case of secondary infringement, a rule of exculpation of innocence would encourage the establishment of fictitious primary users of this material, in order to gain insulation for the main, but now secondary use. 3. The argument is advanced on several levels, that of the two innocent parties, infringer and damaged proprietor, the infringer is usually in a better position to prove against the chance of infringement. Some have suggested that secondary infringers can police the practice of primary ones or use indemnity clauses and then all infringers are in a position to insure against infringement liability. 4. A more basic appeal is since the copyright proprietor is himself/herself an innocent party, purely as a matter of justice it seems that he/she should not be made to bear the damage caused by another party. But it is an infringement of copyright to produce a work similar to a copyright work, although the defendant has never seen the plaintiff's work before, but has copied an intermediary copy which he/she was entitled to copy. If an English book is translated into 36

Section 58 proviso, Copyright Act, 1957. Kent, Sinclair Jr., Liability for Copyright Infringement- Handling Innocence in a StrictLiability Context, California Law Review, Vol. 58, 940, at 950-954. 37

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German and someone, without knowing of the English book, retranslated it into English, that would be an infringement of the copyright in the original English book. Several important doctrines- at the heart of the general scope and protections of copyright law- tend to afford insulation from liability to innocent action in a wide variety of ways. 1. Only violations of specifically listed exclusive rights are actionable, not every use of a copyrighted work will constitute an infringement. 2. Action for copyright infringement may not be maintained in the absence of a showing of copying. 3. Use of ideas or general plots and themes is not actionable in the absence of evidence of substantial piracy. 4. Absence of a copyright notice- the symbol © accompanied by the copyright date and proprietor's name- on a published work precludes recovery for the infringement thereof. 5. Conduct, which would otherwise constitute an infringement, is not actionable if it falls within the judicially constructed fair use exception to the Act. 6. Innocent infringers are protected by the general principles of estoppel recognized in all branches of the law. Thus the cases of innocent infringement are treated under the most indulgent rule, while willful infringers are most frequently subject to cumulative damage and profits awards; the reasoning being the economic hardship caused by forfeiture of profits in such cases serves no purpose, since as an innocent infringement he/she is not a pirate in the first place and thus cannot be deterred. 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...38 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,

38

Blakeney, Michael, Trade Related Aspects of Intellectual Property Rights: A Concise Guide to the TRIPS Agreement, Sweet and Maxwell, London, 1996, at 45. 25


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. 39 To cater for 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

39

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. 26


CONCLUSION Going after infringers is at the very least a nuisance, and generally involves a great deal of time and expense. Why bother? If you are making no use of the Intellectual Property and have no plans to make any use of it, then there is no reason to bother. You can abandon Intellectual Property for anyone to pick up who wants it, just as you can abandon any other kind of property for which you have no further use. However, if the Intellectual Property has any present or future value, infringers cannot simply be ignored. Doing so will involve loss of rights, even loss of the Intellectual Property itself. An Australian University was held to have authorized infringement by allowing library readers to use its own copying machine, without giving precise information about the limits to copying within the copyright legislation and without attempting any supervision to prevent infringement; the degree of indifference was too blatant to escape liability. 40 Would this be possible in the educational scenario present in India currently? Rhetorically, one would definitely not be able to answer this rider in the affirmative. How many people would actually be bothered by such restrictions? On the other hand, those who provide the copying machinery order the material for home taping will rarely be found to have the necessary control over what is then done, to be authorized. The manufacturer of a twin-deck cassette recorder did not authorize infringement, even though he/she advertised the capabilities of his/her product, since he/she also drew attention to copyright obligations. 41 The umpteen audio/video libraries in the country would vouchsafe the fact that this kind of reproduction will continue to happen frequently, unless strict restrictions are imposed. Though its effect could also be questioned, in the light of piracy still underway, though Microsoft Corp. is conducting a fullout program to curb this practice. Its effectiveness has been barely minimal with the people just about sensitised with respect to copyright violations and attached criminal/civil remedies. But trusting the speed and efficacy of the judicial process, people are still unhesitantly and blatantly violating these norms. Though it may seem only appropriate to extend the range of the law to embrace a new technique for copying. If developed, this line of thinking might provide literary copyright in structural information about the human and other genomes which would be infringed whenever the information was copied for use in genetic engineering. On the other hand, there is an evident danger of going too far (particularly with a right so readily conceded and longlasting as copyright) if it were to become infringement merely to carry out another person's instructions to do something (for example- baking a cake). Today brainpower industries pose challenges that are far more complex- whether the intellect of a person is his/her personal property or a public property? Without a stronger system of protection, companies will continue to defend their economic positions by keeping their 40

Moorhouse v. University of N.S.W. (1975) 6 A.L.R.; Cited from Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet and Maxwell, London, 1996, at 369. 41 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; Ibid.

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knowledge a secret. Secrecy is a much bigger deterrent to the expansion of knowledge than any monopolistic system of protection for intellectual property rights. Now focussing on intellectual property rights vis-à-vis the Indian perspective. This framework is structured under the Civil Procedure Code, 1908 and the Indian Evidence Act, 1872. The ways and means of proving ownership, access and copying have already been previously detailed. Applying this now, to a particular example, let us see the intricacies of the subject at hand. Take a situation where I publish the copy of ‘Ramaiya on Company Law’ as ‘Rajaiya on Company Law’, how would the fundamentals above help in proceeding in such a case in India? First, the prima facie evidence must be collected, so as to allow the aggrieved party to claim damages. There are two ways in which such a claim can be launched- civil remedy and criminal remedy. Under the civil case, a plaint would be filed, which would mention the details of the infringement and provide suitable remedies. As the target of this paper has been on the criminal side, the above will be left at that. In the criminal trial, the plaintiff has to collect all the prima facie evidence that he/she can lay his/her hands on directly to prove beyond reasonable doubt that there has been a violation of the copyright law. The plaintiff could set up a decoy agent, who would in this case buy a copy of the infringing book to produce before court as primary evidence under Chapter V of the Indian Evidence Act, 1872 (section 61, 62 and 64 in particular). But this decoy must be differentiated from an agent provocateur, who provocates the defendant to commit the infringing act and which is not admissible by law. In the absence of sufficient evidence, the plaintiff may seek an injunction or an Anton Piller Order whereby, after sufficiently reasonable evidence has been adduced the Court may decide to grant a search order of the defendant’s premises to look for incriminating evidence under Chapter VII of the Code of Criminal Procedure, 1973. Digressing for a minute, the judicial incharge of the conducted search is an Advocate Commissioner, who is appointed under Order 40, Rule 1, of the Civil Procedure Code, 1908. Here it is not a Mareva injunction which is asked for, as that would not facilitate the process. Now this cognisable, warrant case [as arrest can be without warrant and the maximum term of punishment under The (Indian) Copyright Act, 1957 is three year]. Under section 41 of the Code of Criminal Procedure, 1973 the police may arrest any person, without an order from the magistrate. This broad power should be put to constructive use. In the case of an innocent infringer, he/she has had no knowledge of the existence of the copyright, and thus any prosecution will be futile as the court will look upon the infringer partially- the principle being damage without legal injury not resulting in compensation. But if one were to serve a notice to the infringer, and he/she were to blatantly continue violating the copyright, then immediate action can be taken against him/her. If we were to just make the problem more complex, suppose that Ramaiya was on CD-ROM in JAVA and Rajaiya is also on the same media but in COBOL, HTML and SAP. Now how would the court come to the conclusion that there has been a violation, as the form is essentially different. At this point if an expert were to be introduced who could adduce sufficient evidence to point out that there is substantial taking of the form, it would crack the case. Expert evidence produced under section 45 of the Indian Evidence Act, 1872 would

28


further substantiate the evidence against the infringer. In this context, the plaintiff may under sections 56 and 57 of the Indian Evidence Act, 1872 ask the court to take judicial notice of the obvious facts. After all this has been done, the burden of proof on the plaintiff has been successfully discharged. Though throughout the trial, the legal burden never shifted from the plaintiff; but the evidential burden kept vacillating as the defendant raised evidence contrary to the one adduced to rebut the relevant facts introduced. At this stage, the judge will take note of all the developments and in pursuance of the circumstantial evidence too, would decide the case. In this context, two copyrights may be legally possible if it can be shown that there was independent creation on both parts. But the aggrieved party has common law recognition (though there is no right under it) wherein registration of the copyright has not been deemed to be essential, as there is always an inherent protection under the Universal Copyright Convention. Thus unlike statutory intellectual property rights registration is not the sole proof of ownership. Here it would be appropriate to mention that there exists a subtle difference between original and original copies. The original would be the primary evidence as in Bank security of sale deed of land, whereas original copies would be secondary evidence pertaining to certified copies/ public documents. But there is no need for primary or secondary evidence in most cases as it pertains primarily to documentary evidence. What would be more pertinent is direct and indirect evidence. This is an important point to note as otherwise it would be hit by the rule of hearsay which would subsequently invalidate the entire evidence accrued. Also note section 60 of the Indian Evidence Act, 1872 in this context, as oral evidence must be direct raises a number of connotations. The relevant one would be for us a strict statutory reading of the provision, whereby perceived facts (the look and feel test is relevant here) are allowed and so is expert opinion. This would thus end our discussion on the topic and hopefully put to an end certain misconceptions which have been misunderstood by the layman for a considerable period. Though India has not such a chequered history as the United States or the United Kingdom. Thank God for small mercies.

29


BIBLIOGRAPHY I Primary Sources A. 1. 2. 3. 4. 5. 6. 7. 8. 9.

Statutes The (Indian) Copyright Act, 1957 The (United Kingdom) Copyright, Designs and Patents Act, 1988 The Berne Convention For The Protection Of Literary And Artistic Works, 1886 (revised and amended as of 1979) The Code of Civil Procedure, 1908 The Code of Criminal Procedure, 1973 The Copyright Amendment Act, 1984 The Copyright Amendment Act, 1994 The Indian Evidence Act, 1872. The Universal Copyright Convention, (as revised at Paris as of 1971)

II. Secondary Sources A. Articles 1. Ahuja, V.K., Criminal Remedy for Infringement of Intellectual Property Rights in India, Patent and Trademark Reporter, Vol. 3, No.4, 1997, 2. 2. Breyer, Stephen, The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies and Computer Programs, Harvard Law Review, Vol. 84, 1970, 281. 3. Clarifying the Copyright Misuse Defense: The Role of Anti-trust standards and First Amendment Values, Harvard Law Review, Vol. 104, 1991, 1289. 4. Gopalakrishnan, N.S., Criminal Law and Intellectual Property: Current Practice, Journal of the Indian Law Institute, Vol. 36, No. 1, 1994, 381. 5. Kalra, S.K., Intellectual Right to Copy?, Patent and Trademark Reporter, Vol. 4, No.1, 1998, 2. 6. Kent, Sinclair Jr., Liability for Copyright Infringement- Handling Innocence in a StrictLiability Context, California Law Review, Vol. 58, 940. 7. Muralidharan, R., Legal Protection of Computer Software. 8. Towards a Unified Theory of Copyright Infringement for an Advanced Technological Era, Harvard Law Review, Vol. 96, 1982, 450. 9. 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. 10. Verma, S.K., TRIP's- Development and Transfer of Technology, International Review of Industrial Property and Copyright Law, Vol. 27, No. 3, Max Planck Institute, Munich, 1996, 331. B. Books 1. Bainbridge, David, Software Copyright Law, 3rd edn., Butterworths, London, 1997. 2. Band, Jonathan and Masanobu Katoh, Interfaces on Trial, Intellectual Property and Interoperability in the Global Software Industry, Westview Press, United States, 1995. 3. Benko, Robert P., Protecting Intellectual Property Right's- Issues and Controversies, American Enterprise Institute for Public Policy Research, Washington D.C., 1987. 4. Besen, Stanley M, New Technologies and Intellectual Property: An Economic Analysis, RAND Publishing, United States, 1987. 5. Bhalla, Sandeep, The Patents and Trademarks Cases Digest: 1981- 1997, The Patents and Trademarks Cases, Delhi, 1997.

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6. Blakeney, Michael, Trade Related Aspects of Intellectual Property Rights: A Concise Guide to the TRIPS Agreement, Sweet and Maxwell, London, 1996.

7. Chandrachud, Y.V., Ratanlal and Dhirajlal's The Law of Evidence, 19th edn., Wadhwa and Company, Nagpur, 1997. 8. Chowdhry, N.K. and J.C. Aggarwal, Dunkel Proposal- The Final Act 1994- Significance for India and the World Trade, Vol. II, Shipra Publications, Delhi, 1994. 9. Chowdhury, Salil K. Roy and H.K.Saharay, Law of Trademarks, Copyrights, Patents and Designs, Kamal Law House, Calcutta, 1996. 10. Cornish, W.R., Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, 3rd edn, Sweet and Maxwell, London, 1996. 11. Gopalakrishnan, N.S., Cases and Materials on Intellectual Property Law, National Law School Of India University, Bangalore, 1992. 12. Gopalakrishnan, N.S., Intellectual Property and Criminal Law, National Law School Of India University, Bangalore, 1994. 13. Gutterman, Alan and Brown, Robert (Eds.), Intellectual Property Laws of East Asia, Sweet and Maxwell, Asia, 1997. 14. 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. 15. Lal, The Copyright Act, Law Publisher's (India) Private Limited, Allahabad, 1993. 16. Lord Hailsham of St. Marylebone (ed.), Halsbury's Laws of England, Vol. 9, Butterworths, London, 1974. 17. Malik, B., C.D.Field's Law of Evidence, 11th edn., Law Publisher's (India) Private Limited, Allahabad, 1990. 18. Monir, M., Principles and Digest of the Law of Evidence, 9th edn., The University Book Agency, Allahabad, 1993. 19. Narayanan, P., Intellectual Property Law, 2nd edn., Eastern Law House, Calcutta, 1997. 20. Narayanan, P., Law of Copyright and Industrial Designs, Eastern Law House, Calcutta, 1995. 21. Nath, Gopi, Sir John Woodroffe & Syed Amir Ali's law of Evidence, Vol. 2, 3, 16th edn., The Law Book Company Private Limited, Allahabad, 1996. 22. Nimmer, Melville B., Nimmer on Copyright, Vol. 3, Mathew Bender, New York, 1985. 23. Pearson, Hillary E. and Clifford Miller, Commercial Exploitation of Intellectual Property, Universal Book Traders, Delhi, 1994. 24. Sarathi, Vepa P., Law of Evidence, 4th edn., Eastern Book Company, Lucknow, 1989. 25. Sarkar, S.C., Sarkar on Law of Evidence, 10th edn., S.C.Sarkar and Sons Private Limited, Calcutta, 1959. 26. Seltzer, C.E., Exemptions and Fair-Use in Copyrights, 2nd edn, Harvard University Press, Massachussets, 1979. 27. Skone James, E.P., et al, (eds.), Copinger and SkoneJames on Copyright, 13th edn., Sweet and Maxwell, 1996. 28. Wallace, Jonathan D., Understanding Software Law, Alfred Publishing Company, United States, 1988. C. Internet URL's 1. http://www.actla.com/barrister/6a.html 2. http://www.clari.net/brad/copymyths.html 3. http://www.ladas.com

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4. http://www.patents.com/copyrigh.sht 5. http://www.templetons.com/brad/copymyths.html 6. webmaster@ladasparry.com

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