Introduction

Section 30 (3) [1] of the Trade Marks Act, 1999 (“Act”) recognizes ‘exhaustion of rights’ of the proprietor of a trademark after the first sale of goods. Section 30 (3) of the Act states that –

“(3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of—

(c)   the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or

(d)   the goods having been put on the market under the registered trade mark by the proprietor or with his consent.

A bare reading of the Section 30 of the Act raises questions such as – What does the term ‘market’ mean? Whether Section 30 intends to mean the term market as ‘domestic market in India’ or ‘world market’? Whether Section 30 intends to follow the principle of national or international exhaustion? How would a different interpretation of the term ‘market’ in Section 30 determine infringement of a trademark? This is the statutory interpretational issue explored in this article.

Principle of National Exhaustion v. International Exhaustion

Legality of parallel imports is determined through the principle of exhaustion of rights, which examines to what extent the proprietor of the IP can control the distribution of its goods in markets worldwide. The scope and reach of Section 30 of the Act primarily depends on whether the legislature while drafting the provision intended to follow the principle of national or international exhaustion.

From a reading of Section 30 (3), it appears that further sale of goods after initial sale by the right holder in ‘a market’ would not constitute infringement of the registered trademark. Section 30 (4) [2] of the Act provides an exception to this by stating that if the goods are tampered with then the registered proprietor can enforce its rights irrespective of Section (30) (3) of the Act.

However, it is important to note here that the Act fails to clarify the meaning of the term “market” in Section 30 (3) and it could be interpreted to mean either ‘domestic market in India’ or ‘world market’. The scope of the word ‘market’ was analyzed by the High Court of Delhi (“Court”) in the case of Kapil Wadhwa v. Samsung Electronics [3] [2013 (53) PTC 112 (Del.) (DB)]. The Author will examine the Kapil Wadhwa case in detail in the following section since currently this is the only judgement that examines and clarifies on the meaning of the term ‘market’.

Interpretation of the term ‘market’ in Section 30 (3) of the Act

The interpretation of the term ‘market’ in the Section 30 (3) of the Act came before the Court for the first time in the Kapil Wadhwa case. To give a brief background of the case – the appellant purchased Samsung printers outside of India and then imported them into and sold in India. The respondent claimed infringement of its SAMSUNG trademark on the ground that the appellant without its authorization imported and sold the goods. The Division Bench (Pradeep Nandrajog, Siddharth Mridul, JJ.) of the Court examined the Section 30 (3) of the Act and stated that the word ‘market’ in Section 30(3) of the Act means ‘International market’. Accordingly, the Court stated that the legislation in India adopts the Principle of International Exhaustion of Rights”. It also noted that the only prerequisite is that the goods must have been legally acquired in the international market and the importer should have legal title over such goods.

The Court also noted that the right of a trademark owner to oppose further dealing in goods bearing its trademarks is just not limited to when it’s tampered with but also when the conditions of the goods has been changed. Further, the Division Bench referred to US Court decisions and noted that reasons such as difference in advertising and promotional efforts; difference in packaging; differences in quality control, pricing and presentation, etc. can also be a legitimate reason to oppose parallel imports of the goods in India.[1]

Lastly, the Court noted that seller of such parallel imported goods must display a disclaimer that goods sold by them have been imported from abroad and for which the brand owner does not provide any warranty and after-sales service. Also, the parallel importer in addition of display of a disclaimer need to provide an adequate warranty and after-sales services.  

Conclusion

From the above discussion, it is evident that India follows principle of international exhaustion in respect of parallel imports of goods under the Trade Marks Act provided that certain compliances are adhered to. It is also important to note that allowing parallel importation of goods is also viable for economic reasons as it avoids the formation of a trade monopoly and promotes free trade. Further, parallel imports also allow consumers with benefit of buying authentic goods at a cheaper price, provided with the risk of not availing the original warranty and after-sales services.

Endnotes:

1.      Section 30 (3) of the Trade Marks Act, 1999

2.      Section 30 (4) of the Trade Marks Act, 1999

3.      Kapil Wadhwa v. Samsung Electronics [2013 (53) PTC 112 (Del.) (DB)].

[1] Paragraph 68, Kapil Wadhwa v. Samsung Electronics [2013 (53) PTC 112 (Del.) (DB)]

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Introduction

Section 2(o) [1] of the Copyright Act, 1957 (hereinafter referred to as the “Act”) states“ ‘literary work’ includes computer programs, tables and compilation including computer databases.” Section 52 of the Act, enumerates the acts which do not amount to infringement of copyright. Section 52(1)(q) lists the categories, the reproduction or publication of which would not amount to infringement of copyright. In this regard, Section 52(1)(q) (iv) of the Act expressly provides exemption to “any judgment or order of a court, Tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the court, the Tribunal or other judicial authority, as the case may be” Whether compilation of judgments can be treated as original literary work for copyright to subsist in them?

Emphasis on Originality

This statutory interpretational issue is in contention as the market for ready reference to court orders and judgments expand. As judgments and court orders are exempted from copyright protection and are in the public domain, the instances of compiling them and passing them off as original works are commonplace. While compilations are literary works as provided in the statute, the question arises, ‘whether all compilations can be presumed to be original?’ The aim of this article is to analyze whether they fall within the umbrella of copyrightable works in India. 

As per the Practice And Procedure Manual 2018, [2] in order to qualify for copyright protection a compilation must “exhibit some creativity or originality in the selection or arrangement of the contents of the work. If the labour and skill required to make the selection and to compile the tables which form its items is negligible then no copyright can subsist in it.” “The notion of originality of content of the work cannot realistically be present in any kind of compilation. Nevertheless, compilations as such come within the ambit of copyright protection for literary works, since they are referred to as collections in the Berne Convention, but in reality, they do not possess originality in the same sense as genuine literary works. Originality in their case is tested on the grounds of the selection and arrangement of the material used to compile the final work. The author of a compilation does not really create anything new, but merely selects and arranges prior work. In such cases, copyright protection is only provided for the new original literary work of authorship and not to the work as a whole”. Further, as the term ‘compilation’ is not defined in the statute itself, there is a need to go beyond the statute and understand the interpretations attributed to it through judicial pronouncements.

Relevance of Time, Labour and Skill

The courts have looked into certain factors while assessing whether or not copyright subsists in compilation of judgments. In Gurukrupa Mech Tech Pvt Ltd v. State of Gujarat and Ors [3] [(2018) 4 GLR 3324] a Single Judge Bench (J.B. Pardiwala, J.) of the High Court of Gujarat in its order of August 2018, while discussing the landmark Supreme Court decision in Eastern Book Company & Ors. v. D.B. Modak, reiterated, “Where a compilation is produced from the original work, the compilation is more than simply a re-arranged copyright of original, which is often referred to as skill, judgment and or labour or capital. The copyright has nothing to do with originality or literary merit. Copyrighted material is that what is created by the author by his skill, labour and investment of capital, maybe it is derivative work. The courts have only to evaluate whether derivative work is not the end-product of skill, labour and capital which is trivial or negligible but substantial. The courts need not go into evaluation of literary merit of derivative work or creativity aspect of the same.” Further, this Court held, “it is apparent that copyright subsists in those works which can be deemed as original work, predominantly originating from the author.” Recently in February 2021, in the case of A. Sirkar & Co. (Jewellers) Pvt. Ltd. v. B. Sirkar Jahuree Pvt. Ltd.,[4] [2021 (86) PTC 19] a Single Judge Bench (Srikumar Goswami, J.) of the Commercial Court at Alipore while discussing the Delhi High Court’s decision in Burlington Home Shopping v. Rahnish Chibber stated, “…it has been held by the Hon’ble Court that a compilation may be considered a copyright work by virtue of the fact that there was devotion of time, labour and skill in creating the said compilation from many available works”. The courts have through its decisions recognized the presence of time, labor and skill to be of paramount importance while determining whether or not copyright subsists in compilation of  judgments.

Conclusion

Compilation in the simplest of words would mean to collate information. In my opinion, the importance given to time, labor and skill by the courts to ascertain the existence of copyright is correct and sound. A compilation devoid of one or more of these essential elements would not be suitable for copyright protection.

Endnotes:

[1]  https://copyright.gov.in/Copyright_Act_1957/index.html

 [2] https://copyright.gov.in/Documents/Public_Notice_inviting_reviews_and_comments_of_stakeholders_on_draft_guidelines/Literary_Work.pdf

[3] Gurukrupa Mech Tech Pvt Ltd v. State of Gujarat and Ors  [(2018) 4 GLR 3324]

[4]. A. Sirkar & Co. (Jewellers) Pvt. Ltd. v. B. Sirkar Jahuree Pvt. Ltd., [2021 (86) PTC 19]

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Introduction

Section 3 (1) of  The Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Act, 2007 (hereinafter “Sports Act”) provides that, “No content rights owner or holder and no television or radio broadcasting service provider shall carry a live television broadcast on any cable or Direct-to-Home network or radio commentary broadcast in India of sporting events of national importance, unless it simultaneously shares the live broadcasting signal, without its advertisements, with the Prasar Bharati to enable them to re-transmit the same on its terrestrial networks and Direct-to-Home networks in such manner and on such terms and conditions as may be specified.”

Section 3(1) of the Sports Act, thus mandates that the broadcasters of ‘sporting events of national importance’ must share a clean feed of the broadcast with Prasar Bharati.  

Section 3 (2) of the Sports Act provides that subject to Section 3 (1), any advertisement revenue shall be shared between the content rights owner or holder and Prasar Bharati in the ratio of not less than 75:25 in case of television coverage and 50:50 in case of radio coverage.

The purpose behind Section 3 of the Sports Act is to ensure access to public at large of  sporting events of national importance. However, the requirement of sharing the feed without any advertisement creates an issue of statutory interpretation. This is because active sponsor advertising and promotion, common for the sports footage, typically contains sponsor logos and on-seek credits. The sight of sponsors logos on the boundary lines, over the pitch, on the players uniform, on screen with score chart & statistics, etc., are common in sports video. In the absence of a definition of ‘advertisement’ in the Sports Act, it is not clear whether the feeds shared by the broadcaster with Prasar Bharti, with glimpses of the sponsors logo or screen credits, amounts to advertisement or not.

This article seeks to examine whether it is the responsibility of the broadcaster to remove the on-screen credits or sponsors logo by virtue of them amounting to “advertisement” within the Sports Act.

Obligation of the Broadcaster under Sports Act

The plain reading of Section 3 (1) of the Sports Act, makes it clear that the feed has to be shared by the broadcaster without advertisement, thus the obligation is on the broadcaster to remove the advertisements. This was also clarified by the Supreme Court in Star Sports India Pvt Ltd v. Prasar Bharti & Ors. [Civil Appeal No.5252 of 2016], wherein the appellant argued that under Section 3(1) of the Sports Act, the obligation of a television broadcaster is limited to sharing of the feed which it receives from the event organizer as it is, and that the appellant is not obliged to remove any on-screen Credits inserted by the event organizer. The Supreme Court bench [A.K. Sikri, Prafulla C. Pant] in this case clarified that the onus of sharing advertisement free video is on the broadcasters only, and they can’t share it as is received and if advertisement is present in the shared signal, the income generated from such advertisement has to be shared between the Broadcaster and Prasar Bharti within Section 3 (2) of Sports Act.

Sponsor’s logo and on-screen title as advertisement

Pursuant to clarification on the Broadcaster’s obligation, the Supreme court also dealt with the issue whether sponsors logo and/or on-screen titles in the feed would amount to advertisement or not? On this issue, the Supreme Court bench in the Star Sports Case (supra) adopted the purposive interpretation and held that , “No doubt, such logos or On-Screen Credits may appear at the time of featuring replays like ball delivery speed and when a player gets out …etc. Nonetheless, these are the advertisements of the sponsors like Pepsi, LG, Fly Emirates, Reliance, etc. These sponsors have entered into arrangement for showing their logo on the occasions referred to above. …viz. it is intended to advertise their company names for commercial motives in mind. These are, thus, commercials of the sponsors which would clearly be treated as not only advertisements but commercial advertisements.”The Supreme court thus made it clear that the sponsors logo and on-screen credits has to be considered like any other commercial advertisement. The Supreme Court also clarified that the word ‘its’ in ‘without its advertisements’ does not mean the advertisements of only broadcasting service providers, and that the broadcasting signals have to be without advertisements, whether it is of the content rights owner, content holder or that of television or radio broadcasting service provider.

Conclusion

From the above it is clear that the onus of sharing the advertisement free broadcasting signals of a sports event with national importance is upon the broadcaster. If the shared signals contain advertisements, then the broadcaster will have to share the advertisement revenue with Prasar Bharti. By virtue of Supreme Court’s judgement, the on-screen titles and sponsors logo appearing in the sports feed are also not free from the realm of advertisement. Thus, the mere removal of commercial breaks is not enough for an advertisement free feed, but the on-screen titles and sponsors logo must also be removed.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Citation: Khobragade, Jagdish W., “Interface Between Human Rights and Intellectual Property Rights with Special Reference to Patent Regime and Right to Health in India”, Journal of Intellectual Property Rights, (November 2020): pp 204-214 <http://nopr.niscair.res.in/handle/123456789/56331>

Introduction

The research paper attempts to compare and contrast the current landscape of intellectual property rights versus human rights in India, which has unfolded in light of the recent pandemic. It drills down on the impact of Intellectual Property (“IP”) rights on a particular facet of Human Rights, i.e. Right to Health in terms of right to access basic medicines. The study also sheds some light on the influence of developed economies on developing countries like India when it comes to compulsory licensing to maintain a balance between IP rights and Human rights.

IPR & Human Rights: The Conflict

The research paper goes in depth describing the origins of IP rights and the right to access basic medicines in the context of human rights. The study notes how IP rights came into being as a guardian for letting the innovator enjoy the fruits of his innovation and as a result, incentivize further innovation. On the other hand, it also brings light to the right to health as provided under the United Nations Declaration of Human Rights Charter of 1948 and the ambit of Article 21 of the Constitution of India. It is argued that a developing nation such as India, which has a large portion of its population under the poverty line, is finding it difficult to provide basic essential medicines due to hurdles posed by patent rights.

It notes that since the 2005 Amendment to the Patent Act, 1970 when India started granting product patents, the supply of generic, low cost medicines has significantly reduced owing to the fear of trade sanctions on generic manufacturers on the grounds of infringement of patents. However, this appears to be an incomplete outlook towards the issue, as the study fails to highlight the significant increase and impetus provided by product patenting to innovation in the pharmaceutical industry. It ignores a complete study of the number of innovations compared to those before the Amendment.

Compulsory Licensing as Safeguard

The research paper notes the provisions on Compulsory Licensing incorporated in the Patent Act, 1970 as a safeguard against abuse of IP rights. It argues that in an industry driven by monetary profits, compulsory licensing ensures that in times of absolute need, the drugs in question can be made available to the public at competitive prices. It, however, also notes that in spite of this provision, India has granted a Compulsory License on only one previous occasion. 

The research paper posits that the fear of trade sanctions and diplomatic pressure from the developed nations has been a big impediment to the grant of compulsory licenses. This seems, in my view, a bit premature as the entire point is inferred from just a single instance of India’s act of granting a compulsory license being met with criticism from the USA. India has had only three instances of litigation based on Compulsory Licensing. Inferring that India is reluctant in granting compulsory licenses from such a small data set is a tall order.

Role of the Developed Economies

The research paper mentions that USA and its Report 301 play an important role in the landscape of discerning right to health in the context of IP rights. The USA issues an Annual Report to identify other nations which it believes where unable to protect their companies’ IP rights. The research paper asserts  that the USA uses it to threaten developing nations like India and Brazil to deter the issuance of much needed compulsory licenses. The research paper notes that moves like these are one of the reasons why the gap between patent rights and human rights is widening. Such pressure tactics from developed nations make it difficult to reason IP rights in the context of the right to access basic medicines. 

However, the view presented seems very one-sided as the study fails to mention that many multinational companies are based out of the USA which, as result, is acting in the interest of its own people. Hinting to nefarious intention in any other sense may not be justified and appropriate. Most developing nations do not have robust patent protection systems, as a result of which an IP-ownership rich country like the USA stands to lose the most when it comes to infringement or from compulsory licensing on whatever grounds.

Conclusion

The research paper attempts to recognize flaws in the current landscape of Intellectual Property and Patent rights. It provides an insight into how these IP rights can be reasoned in the context of implementing basic right to health without violating the innovators rights. However, much of the research paper comes forth as the author’s assumptions and opinions with very little emphasis on  numerical data or time period comparisons. Overall, the study in the research paper seems, in my assessment, to fall short on empirical data analysis and rigour to be taken at face value.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Citation: Medury R. (2019) Continued Economic Benefit to the Author: Royalties in the Indian Film Industry – Historical Development, Current Status, and Practical Application. In: Liu KC., Racherla U. (eds) Innovation, Economic Development, and Intellectual Property in India and China. ARCIALA Series on Intellectual Assets and Law in Asia. Springer, Singapore. https://doi.org/10.1007/978-981-13-8102-7_9

Introduction

The aforementioned article analyses the copyright law governing the royalty payment to authors of literary and musical works in India. The issue of royalty payment has had a contentious journey in India. This article details how the music production deals exist in India and deals with the relevant statutory provision and judicial precedents which have decided the course of royalty payment. It also delves into the problems posed by the copyright societies in India and analyses the Copyright (Amendment) Act, 2012. After tracing various relevant judicial precedents and statutory developments, the article asserts the importance of ethical copyright societies in shaping the royalty regime in India.

Historical backdrop

The article highlights the different stakeholders involved in music deals, ranging from music composers, lyricists to producers. It states that various stakeholders are involved through individual contracts, all of which results in the composition of the music being commissioned to the producer of the film who might further assign it to a music label. The article elucidates that by virtue of Section 17 of the Copyright Act, in case a literary or musical work is commissioned, the copyright in the entire film, including the literary and musical work therein, vests with the producer. This ultimately leads to exploitation of musical works by film producers and label without any appropriate royalty payment to the music composers and lyricists.

Copyright Societies

The article enumerates the prominent copyright societies in India, namely IPRS, i.e. the Indian Performing Right Society and PPL i.e. the Phonographic Performance Limited. It highlights the substantial changes which took place in the composition of the governing body of IPRS, which effectively forced out independent control of both the societies and established monopoly of sorts. The article also elucidates upon the aftermath of such change, which ultimately led to the emergence of new modes of exploitation of authors. The article picks out the few changes brought about due to the composition of governing bodies but has a peripheral outlook towards it. The article further does not delve into the actual benefit that accrues due to such copyright societies and their importance as well. 

Amendment and Its Impact

The article states that the exploitation of different stakeholders in the music deals led to the introduction of the amendments to the Copyright Act in 2012, which were brought to enforce a new regime of royalty collection and distribution in India. The article highlights that the amendments were modelled on the authors’ remuneration provision contained in the EC Rental Rights Directive, heralding equitable remuneration, unwaivable royalty rights and entrustment to a collecting society. The article goes on to elucidate upon the different changes introduced by the amendment and provides a look into the aftermath of the same. It highlights the tussle which ensued after the enforcement of the requirement of registration of pre-existing copyright societies with the central government within a period of one year. The refusal of pre-existing copyright societies to comply with the amendments and the cunning utilization of the denial of re-registration of these societies has been intricately explained. 

The article further highlights interesting lacunas in the language of the amendments that have been exploited contractually by various parties. The article correctly identifies that though the intention was bona fide, instead of aiding the different stakeholders, the ambiguous language has led to different ways of exploitation. The article highlights that the interpretation of “equal share” of royalties as mandated by the amendments stands to be unclear since the way of appropriate delineation of such royalties when different scenarios come into play has not been explained.

Way Forward

The article after analysing different statutory and judicial changes through the years, and the problems posed thereafter, heralds the role of copyright societies in determining the future of the royalty regime in India. It states that to achieve the same it is essential that the working of copyright societies becomes more transparent. It further emphasises that the interpretation of the several provisions introduced by the amendments need to be unambiguous so as to lead to effective implementation of the same.

Conclusion

The article provides an in-depth analysis of the law governing royalty payments to authors of literary and musical works in India. It extensively elucidates upon the judicial precedents and the statutory developments in relation to royalty payments. Furthermore, the article very befittingly identifies the problems that have ensued due to the amendments brought about in the copyright regime. The article conclusively states that copyright societies are instrumental in changing the royalty payment regime, however, fails to highlight how that would be achieved and how they would aid in making the current copyright regime less exploitative.   

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP