5 Reasons Why Course Packs are Legal in India

The recent order passed against Delhi University restraining it and Rameswhari Photocopy Service from producing course packs provides the context for this post. Quite simply, the order does not even begin to consider the applicable defences and held course packs to be illegal in India. The following points demonstrate why they are in fact legal under current Indian law.

1. Current Indian law allows reproduction in the course of instruction

Section 52(1)(i)(i) of the Indian Copyright Act says ‘reproduction of a literary work in the course of instruction is not copyright infringement'. There can therefore be no argument on merits that photocopying course packs is not permitted under Indian law. The two relevant phrases in question are ‘reproduction’ and ‘course of instruction’:

(a)   Reproduction: It is obvious that making a copy of the course pack by using a photocopy machine is a permitted form of reproduction. One may also reproduce extracts from books in various other ways (one may have it scanned, for example) which is also a permitted form of fair use (see Hathi trust case). With advances in technology, who knows what technological method might be the norm in the coming years. But the legislative intent behind this exception must not be lost sight of. More importantly, Section 32 of the U.K. Copyright Act permits reproduction in such cases, but explicitly prohibits ‘reprography’ (reproduction in printed form). India does not prohibit reprography. Given that S.52(1)(i) is an educational exception and is to be interpreted accordingly, there is no doubt that photocopying of educational material is permitted in India currently. (Thanks to Professor Basheer for pointing this out)

(b)  In the course of instruction: This definition would include any activity that imparts knowledge or skill or generally involves educating. As such, classroom teaching would squarely fall within its ambit. From experience, readings in these course packs are prescribed by teachers to be discussed during class to better understand a particular issue/argument/topic. Thus, course packs would be included in the definition of in the course of instruction.

Finally, read together, ‘reproduction in the course of instruction’ would include photocopying reading material from text books – whether reproduced by a pupil inside the classroom or outside and to be used inside the classroom or outside, as a means to follow an argument, or to facilitate the impartation of knowledge by the teacher (also see the interpretation of S.52(i) by Pranesh Prakesh and Lawrence Liang here).

2. Current Indian law allows fair dealing for private use including research

Section 52(1)(a) of the Act says ‘fair dealing for the purpose of private use, including research’ is not copyright infringement. Fair dealing would include creating a copy of the work as well.  

In a decision delivered this year, the Supreme Court of Canada held that the use of course packs by students falls within the definition of ‘private study or research’. Further, ‘private’ does not mean studying in isolation, but includes the classroom as well. The Court also determined that ‘instruction’ (found in India in Section 52(1)(i)) and ‘research and private study’ (found in S.52(1)(a)) were in fact a unified purpose since the purpose of the copier is to facilitate the research and private study of the student.

In the Indian context, N.S.Gopalakrishnan’s comments in the Annual Survey of Indian Law (2009) also supports this view, wherein it was observed that fair dealing for private use, research and criticism or review permits an individual, in some circumstances, to reproduce the complete work. It is therefore clear that making a copy of complete work or performing a work for private use or research is within the scope of fair dealing.

3. Course packs are legal in other countries

There have been decisions from across the world, holding the making and distribution of course packs for a non-commercial, educational purpose to be completely legal, with no need for a license. In Canada, the Alberta case (discussed above) held the making and circulation of extracts is legal under the ‘private study, or research’ exception. It also said ‘instruction’ and ‘research’ are fused purposes and should be read together and since students use these materials in the course of instruction and for private use, this is permissible fair dealing. In the United States of America, the decision in Cambridge University Press v. Becker clearly indicates that making of course packs without permission of the owners is permitted subject to a fair use threshold of 10% (see Danish’s piece on Kafila for details) This is also important because in the present Delhi University copyright dispute, a majority of reproduction is under 10%.  There are similar legal precedents in several other countries as well.

India’s fair dealing exception is almost identical to Canada’s, with India’s provisions actually wider in scope (the Indian Copyright Act says ‘private use, including research’ while Canada uses ‘private study, including research’). With the additional exception for ‘reproduction in the course of instruction’, there is no doubt that course packs are legal in India.

4. Photocopying of course packs is not piracy and is done bona fidely and systematically

The production of course packs in India, although perceived to be an unregulated practice, is actually a systematic method of furthering instruction by teachers, especially considering the high costs, limited copies with libraries and frequent unavailability of textbooks in India. This is clearly demonstrated by the license agreement between Rameswhari Photocopy Service and Delhi University where strict guidelines have been prescribed by Delhi School of Economics to ensure it is for bona fide uses and for students and faculty only:

It is clear this covers photocopying of course packs as well:

More importantly, the photocopy shop here is only an extension of Delhi University and Ratan Tata Library and is even located within the university campus. They receive instructions from the Department on what exactly to photocopy, based on reading lists made available by professors and are barred from undertaking any ‘outside jobs’. There is a formalised license agreement, with rules and guidelines, including the price that must be charged:

It must also be borne in mind that the vendor was selected by the university after a careful tender process. Moreover, the prevailing market rates for photocopying a page in the vicinity ranges from 1 rupee to 2 rupees. The license agreement states that all operational costs, purchase of equipment, and other expenses must be borne by Rameshwari. This makes it amply clear that it is not a commercial enterprise with a profit motive since the rate of 40 paisa per page is the bare minimum required to operate the said venture.

The above factors are also what distinguish Rameshwari from Kinkos and other commercial photocopy shops that also produce course packs and have been held by American courts to be commercial enterprises.

5. The amounts copied in course packs are within the permitted threshold

The course packs mentioned in the Delhi University case do not reproduce an entire book even in a single case.  In fact, a majority of the reproduction is well below the fair use threshold of 10% (a minimum of 3.5%). However, this figure of 10% itself must be challenged keeping in mind India’s unique socio-economic conditions and the fact that access to knowledge is much easier in the U.S. compared to India.

Given all of this, how is it that the Delhi High Court has passed an order restraining the making of course packs? It just could not have been passed keeping the fair dealing defences in mind since even those cases where about 3% of an entire book is copied has now been declared illegal by the court (which is unarguably permitted, irrespective of the other educational exceptions to copyright). And if it is on the basis of some alleged admission by Delhi University (actually a grammatical mistake), hammered out by counsel for the publishers in court, then this may be overturned in a review petition. If not, there will surely be an intervention petition on this matter in the near future.

(Thanks to Pranesh Prakash and Rijul Kochhar for their inputs. Images from dynamicbookstore.com treehugger.com and mcu.edu)

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Academia struggles to pay up as Journal prices soar!

What is "Open Access"? Explained by PhD comics

In yet another story headlining publishing houses, India's top science officials have expressed concern over not being able to afford subscriptions to international science journals, budgeted at Rs 500 crores for the 5 year period covered by the 12th five-year plan (2012-2017). 

The issue is concisely captured in the quote in the LiveMint article here: "“I’ll try my best to get this (budget for journals) passed, though I doubt whether the Planning Commission will allot Rs.500 crore just for journals,” Ravi (Science minister at the time) said last week as part of a longer speech on the 60th anniversary of the National Institute of Science Communication and Information Resources (Niscair), a CSIR body. Access to academic journals is a basic necessity for professional scientists. Researchers compete to publish their best research in top academic journals and the frequency of articles in top journals is crucial to career progression as well as the general advancement of science." 

According to the article, prices have gone up about 5 times since the previous 5 year plan! It's not only Indian officials who are uncomfortable with the rise in prices. Tired of rising prices, Harvard too, had issued a memo earlier this year requesting their faculty to make their work available freely and/or in open access journals. 

(On a tangentially related note, there is an interesting piece advocating the abolishment of law reviews here) 

But why this sudden rise in prices? Off the top of my head, and (please note, full disclaimer) without looking into the working of the publishing industry and the data etc, I would like to hazard a guess as to what is probably one factor. 

Copyrights are a set of incentives to encourage proliferation of knowledge and information. When it comes to academic work, there are several incentives present for research - the primary ones being reputational benefits, requirements for positions and promotions, and scientific curiousity. The incentives for academics to publish this research, accordingly, also primarily stem from these factors.

However, copyright steps in and gives (financial) incentives to "Publishers" instead of academics, to increase publications. (And in doing so, it disregards the incentives that are already present for the academics to publish). And as all businesses go, business sense requires going after more profits. This does not mean that publishing houses do not require capital or revenues to continue operating, of course. I would not even go so far as to call them a 'necessary evil'.. and would simply call them 'necessary'. However, our policy seems to be geared towards the 'middleman', rather than the creators. And without strict regulation, it is but natural that the middleman rises in importance in the whole equation. The sudden rise? Because with the internet and of course the recession, they seem to be losing control of their hold on the market, and are trying to grab back as much as they can, so they can continue as before. 

With the rise of the digital world however, much of the capital required to disperse information is no longer required. The printing press is replaced with a computer and an internet connection. However, in order to organise the flood of information, there definitely needs to be some organization and quality control. Will open access journals step up to fit this role? We are yet to see. However, given the rising costs of journals, academic institutions may start seeing it fit to invest more into quality control of open access, than traditional methods. Indeed, UK has already said they are going to fully support open access journals in physics, allowing readers free access to journals for particle physics. There may be some controversy over their particular business model, but it shows a big move towards experimenting with non-traditional methods. I see it quite likely that other countries / institutes will be following suit, or trying their own methods of promoting open access. 

I'll leave you with what seems to be a good source for finding open access journals - the Directory of Open Access Journals. 

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First sale doctrine under threat in US

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While Hurricane Sandy has shut down most of the east coast of US, one of the only official buildings still open in Washington DC on Monday was the Supreme Court, as they heard arguments in the Kirtsaeng v. John Wiley & Sons case, a case revolving around the extent of 'protection' that copyright owners should get. 

Textbook prices, it appears, are a problem world over. It makes sense. Without getting into whether it is good policy or not, IP's focus is on ensuring incentives for production, not on ensuring access to the products. Keeping prices at the upper end of the possible price range, makes more business sense than not doing so. And students, especially while entering professional courses, need these books, so they will somehow manage. In the now famous case of Delhi University v. OUP, students managed so far by photocopying course materials (under what I would've considered the educational exception permitting this photocopying. Unfortunately, the court doesn't seem to agree).

The current case too, was due to high text book prices. However, while it may have stemmed from the price of text books, the judgment will have effects on the way business is done in many many sectors. 

Kirtsaeng, a Thai medical student in USA, noted the huge price difference for textbooks in USA as compared to Thailand, where the same, but different 'versioned' books were sold for much cheaper. He then (legitimately) bought several textbooks from Thailand and other countries and imported them to USA, where he could sell them for less than the marked up USA price. The publishers, John Wiley & Sons, charged into court, determined to stop this bleeding of their profits.

The issue here revolves around the application and validity of the first sale doctrine, also (in the case of importing of goods), known as exhaustion. 

The first sale doctrine allows goods to be re-sold after their first point of purchase without requiring permission from copyright owners even if the good in question contains a copyrighted component. 

This has enabled the existence of secondary markets, many online forums like e-bay and craigslist, libraries and more generally the rights of people to actually 'own' the goods they buy. (Note: the first sale doctrine does not cover making copies of a good. That would be infringement). Big media and software companies, in attempts to keep control over the goods even after sale, have in many places replaced 'sales' with 'licenses' (think shrink-wrap licenses) and these licenses often also throw in a bunch of other conditions with the usage of the product. 

The Second Circuit, from which the current appeal arose, held in favour of the publishers, interpreting the statute to mean that the US copyright was not exhausted since the goods were not made in USA. If this decision is upheld in the Supreme Court, it will bring a halt to much of secondary market sales, which accounts for billions of dollars annually, and would be considerably harmful to public interest in US. The right to resell one's stuff would be greatly curtailed, and possibly the absurd effect of needing permission to resell anything which has even one part made in another country, would come into being.

It will however, then allow companies to freely price-discriminate (ie, lower prices) for poorer countries. This doesn't necessarily mean they will, but it does more freely open up the option.

On the flip side, if the decision is overturned, it seems to make more sense for the American public considering the tremendous size of the secondary market, but it also reduces the incentives for companies to price discriminate based on paying ability of the median in other countries. 

During the course of arguments on Monday, the Solicitor General's office argued for a middle ground, between the positions of Kirtsaeng and John Wiley; however Justice Alito put him on the spot when he asked him to choose between the two evils, that the two sides were presenting. He went along with Kirtsaeng's (lawyers') interpretation of the statute (as being the better of the two evils), that the first sale doctrine does apply, noting that it would be less harmful than creating a situation where the copyright holder would get these extra rights giving them control over secondary markets for them to extract more rents from. 

It's currently hard to tell which way the Court will go. Prof Mark Lemley, noted IP expert, seems to feel  that the petitioners (Kirtsaeng) may have gotten the upper hand during the oral arguments. The transcript of arguments are available here and are worth a read. 

Side note: It seems that John Wiley & Sons happen to like this issue. A few years ago, they successfully took action in the Delhi High Court, restraining 2 sets of defendants from exporting low priced edition books to foreign markets. Both judgments seemed to have ignored the very relevant first sale doctrine though. Prashant's analysis of the 2 cases is available here. 

KEI writes about it here; And Patently O covers it here. 

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Guest Post: Ownership and Assignment of Indian Patent Applications

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One of our long time readers, Dr. V. Shankar, has sent us this nuanced guest post on some of the oft-ignored legal & policy issues regarding the registration of title of an Indian patent especially in its pre-grant avatar. By way of introduction, Dr. Shankar is a materials engineer and a registered Indian patent agent with Maxval-IP, a company that provides services and solutions to optimize patent lifecycle management. Maxval is head-quartered in Los Altos, USA and has operations in Coimbatore and Chennai.

I would once again like to remind our readers that they are free to send in guest posts of similar quality to any of our bloggers and we will be happy to run them on the blog. I'm tired of hearing Indian IP practitioners complain constantly about the system without really taking the time out to at least register their protests in public.

Ownership and Assignment of Indian Patent Applications

By. Dr. V. Shankar,

Registration of Ownership of Patents 

Indian patent law recognizes a patent as having the character of an asset with laws applicable according to any “movable property” (section 50 (5)). Section 67 details that the ownership particulars of patents are to be maintained in the “register of patents”. “Patent” is defined in section 2 (1) (m) as any patent granted under the Patents Act. Thus ownership information on granted patents is maintained in the register of patents. However, in the case of published patent applications, there is no provision to record assignment or ownership, except at the time of filing the application when the inventors declare the ownership of the invention by their “assignee”, in case of inventions filed on behalf of a non-individual legal entity. In the published application the “assignee” is referred to as “applicant” and appears on the face of the published application. It would be helpful if recordation of ownership is provided, especially in the period between application filing and its grant as a patent. 

Technology Acquisition and Licensing of Patent Assets 

Any new technology that starts out as a patent application is disclosed first when it is published at the patent office. The publication serves as notice to the public of the existence of the technology for recognized public objectives and enables the inventor to proceed with obtaining commercial benefit for the invention. The inventor could then attract the notice of potential buyers, investors or licensees of the technology and give notice to potential infringers who could be approached after grant of the patent. A very important part of the strategy of companies is to keep an eye on the latest patent publications in the jurisdiction of interest, to be aware of competitor innovations as well as to identify potential opportunities for acquisition/licensing from academic or other potential sources of innovation and technology. 

Any promising new technology therefore would reach the public when either an established player picks up the technology or the inventor takes it further for commercialization himself. For reasons ranging from technological to commercial and according to domain, the lifetime of any viable technology could vary widely from a few years to beyond the statutory 20 years and is independent of the statutory validity of the patent protecting it. Within this period, a considerable fraction, say, 3-5 years may be spent as a published application. 

There arise questions that bear on this period such as: 

· How will a third party verify independently, whether an IP asset in the form of a patent application is indeed owned by the original inventor or applicant? 

· What happens when technology changes hands more than once before grant? Where will that information be recorded, if not in the “register of patents”? 

In case of ownership change, a potential buyer of the technology has to contact the inventor(s) or the present assignee to confirm ownership. In case the applicant changes and a power of authority is executed in favor of a new owner, that document would be accessible through the Application Status tab on the Patent Office Website. 

Information Provided by the IPO on Ownership of Patent Assets 

Information regarding patent ownership is provided on enquiry under section 153, and rule 134 (1) (a) to (k) in respect of “patents and applications” as to when certain actions have taken place with reference to a patent or application. Specifically, rule 134 (k) states that information “as to when any application is made or action taken involving an entry in the register (of patents)”. Another way to obtain information on assignment is to request a certified copy of the register of patents as provided for in section 72. However, the certified copy would only include those items of information that are part of “public record”, and hence both the section 153 and 72 provisions exclude information on ownership prior to grant. 

In other jurisdictions, UK patents act (1977) section 32(2)(a) provides for “registration of patents and published applications for patents”, the US MPEP refers to ownership and assignment of patents in section 301 and cites 35 USC 261 on ownership and assignability of “applications for patent, patents, or any interest therein” and to recordation of such “interest”. However, registration of assignment is not mandatory for applications. Section 72 EPC and rule 22 provide for recordation of applications for patent, which is again not mandatory. Thus ownership of technology represented in a patent application seems to be recognized by global patent regimes and is made available to the public from the date of publication.

The current practice in India is to obtain information relating to a patent or patent application under section 153 or 72 by sending a letter with stipulated fee by regular post for each item of information requested, to the appropriate patent office pertaining to a patent filing (e.g. for xxx/CHE/2008 the applicant or agent needs to write to the Patent Office at Chennai). The time taken for the patent office to respond to the request could vary from at least a month to between two to three months or even longer and may require frequent phone calls and personal visits. There is no provision at the present time to file a service request electronically. Further, there is no commitment on the side of the patent office as to when a service request will be acted upon. To be useful to businesses patent related information must be made available instantaneously or at least within hours or days. With improvement in a) availability of information online from the Patent Office website and b) the quality of that information through automation and online filing, formal information requests under section 153, rule 134 may lose relevance, except when required for court submissions. It is hoped that the forthcoming developments at the Indian Patent Office planned according to the Results Framework Document and slated for release by 2013 will address many of the above issues relating to availability of patent related information.

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Supreme Court grants BharatMatrimony stay against Shaadi.com

Last week a three judge bench of the Supreme Court passed an order restraining Shaadi.com and other rival matrimonial websites from infringing BharatMatrimony’s trade mark. This was in response to a SLP filed by Consim Info P. Ltd, that whenever BharatMatrimony’s name was keyed in on Google search, the names of the rival websites appeared on the right hand side in the Ad words column.

Earlier The Madras High Court had refused to pass an order restraining Google and other matrimonial websites sites from displaying their ads when BharatMatrimony was Google searched. A full report on the order published in last week’s Hindu is available here. The Supreme Court order is available here. Our earlier posts on this dispute are available here and here.

On a related note, in a similar fact scenario involving Interflora and Marks & Spencer (2011) which was referred to the Court of the European Union (ECJ) for a preliminary ruling from the High Court of Justice of England and Wales it was held that  the proprietor of a trade mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the trade mark. The functions the court elaborated on were the trade mark’s advertising, investment and origin function. It was held that use adversely affects the trade mark’s investment function if it substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.

It was further held that the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor has, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby takes unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising is detrimental to that distinctive character (dilution) or to that repute (tarnishment).

Advertising on the basis of such a keyword is detrimental to the distinctive character of a trade mark with a reputation (dilution) if, for example, it contributes to turning that trade mark into a generic term.

However the proprietor of a trade mark with a reputation is not entitled to prevent, inter alia, advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward an alternative to the goods or services of the proprietor of that mark without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark with a reputation. The full ruling is available here.

The ruling in this case is however fact specific and open to wide interpretation, but portions of the ruling were in Interflora’s favour, maybe we could see something similar being passed in the coming days by the Supreme Court going by the initial prima facie ruling in favour of BharatMatrimony.

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IP in the multiverse: Law of Superheroes

The leading American patent law blog, Patently O, reminds us that even serious law folk can have a lighter side once in a while (though not often enough, I would say).

James Dailey and Ryan Davidson, bloggers of Law and the Multiverse, have turned their blog into a book "Law of Superheroes" that will be a delight to all comic-geek lawyers. As excerpted from Patently O:

 (T)he book answers many IP questions that may have vexed comic book readers:

• Does Batman's use of Wayne Enterprises' advanced technologies to stop crimes (at night) negate patentability?
• Does Spiderman infringe any genetic engineering patents?
• In our universe, the Beatles broke up and John Lennon died. However, there are other (far better) universes where that did not happen. What copyright laws would apply when someone wants distribute copies of the Beatles' 40^thAnniversary Album that was brought back from that alternate universe?

One of the book's thirteen chapters focuses on intellectual property. But the book as a whole covers a host of topics ranging from Constitutional law to immigration; from criminal procedure to the legal treatment of non-human intelligence.

IP law is relatively a new arena in India, of course. But I hope that as our academics and authors grow more comfortable with it, they won't hesitate to take a look at the lighter side of life once in a while too. For instance, I would really like an answer to a question that a friend, Kunal Ambasta once posed to me: who would've had the copyright over Mahabharata - Ganesha or Vyasa? 

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Govt. of India follows up on SpicyIP reporting – revokes Avesthagen patent – first Indian victory for TKDL

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Six months after we had first reported on how Avesthagen was proceeding with its Indian patent application, despite abandoning the EPO equivalent of the same after objections raised by the EPO and the TKDL, the ToI has reported that the Government of India has now revoked the Indian patent in question. 

We had initially covered this Avesthagen patent application (1076/CHE/2007) for “synergistic ayurvedic/functional food bioactive composition” in context of the Traditional Knowledge Digital Library (TKDL). That post can be accessed over here. We had pointed out how the TKDL was opposing such patents in Europe and the U.S. on the grounds that they were seeking to patent traditional knowledge known in India but how the corresponding patent applications were proceeding towards grant before the Indian patent office. In fact until we pointed out this anomaly on the blog, the TKDL had never opposed a single TK related patent application in India. We had mentioned three patent applications in that post: one file by Avesthagen and two others filed by Laila Nutrachemicals. 

After we had published that post, the folks at TKDL had filed two pre-grant oppositions under Section 25(1) with the Patent Office against the two patent applications filed by Laila Nutrachemicals. The patent application filed by Avesthagen had however suspiciously been granted within 17 days of our story on this blog. Our initial story was published on April 10th, 2012 – Avesthagen’s patent was granted on the 27th of April, 2012. We covered these facts in an update over here. Technically, TKDL could have filed a post-grant opposition against the Avesthagen patent but for some reason it did not do so. 

On 11th August, 2012 the Financial Express had published a story by Soma Das & Timsy Jaipuria describing basically the same set of facts that we had published in April. The FE story however did have some interesting information which we did not have access to earlier. Apparently after we had published these stories on the TKDL’s functioning, somebody in CSIR wrote to the DIPP pointing out that the Indian Patent Office was granting patents without cross-checking with the TKDL first. Apparently the DIPP had hauled up the patent office and the patent office was reviewing several such TK related grants. 

Earlier this month when we were discussing another related story on how foreign patent office actions were being suppressed by Indian patent agents despite Section 8 requirements, we received an anonymous comment that the Government had initiated proceedings under Section 66 of the Patent Act, 1970 to revoke the patent. I had sent emails to the Department of Industrial Policy & Promotion (DIPP) asking for confirmation of the same since as per Section 66 it is the Central Government and not the Controller General who can revoke such patents. The DIPP never replied to my emails then. However going by the ToI report I think it is safe to confirm that the Government has indeed revoked the patent under Section 66 in ‘public interest’. There is no other section which gives the Govt. suo moto powers to revoke a patent. I reproduce Section 66 below: 

Revocation of patent in public interest: Where the Central Government is of opinion that a patent or the mode in which it is exercised is mischievous to the State or generally prejudicial to the public, it may, after giving the patentee an opportunity to be heard, make a declaration to that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked. 

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I’m yet to access a copy of the final order since the entire Avesthagen file disappeared from the patent office website recently. However the DIPP will have to publish the same in the Official Gazette soon and hopefully we should be able to study the grounds of revocation in more detail at that point of time. 

For the TKDL, this case comes as a major success because it is the first Indian patent to be revoked on the basis of the TKDL since the TKDL was first created in the year 2005. The first Indian patent in seven years when several have already been revoked in Europe and the U.S.………it’s a sad commentary on the state of affairs in India but as they say – better late than never. 

I for one wish the TKDL all the best in its future endeavours to raise the quality of Indian patents. 

As for the DIPP, there is an entire list of dubious patents granted to govt. Unani and Ayurveda institutes – let’s start knocking them off the patent register. 

And of course, if Soma Das is right, in her story, there are also some Big Pharma patents which are looking to be struck down by TKDL. Let the games begin.

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Karnataka High Court temporarily restrains German company from exploiting trade secrets of Homag India

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In an interesting judgment dated 10th October, 2012 the Karnataka High Court, sitting at Bangalore, has passed an interim injunction restraining IMA AG Asia Pacific PTE Ltd. (a German subsidiary based in Singapore) from exploiting the trade secrets of Homag India Ltd. the Indian subsidiary of a German company. The injunction also extends to one of the former employees of Homag India, who is alleged to have leaked the trade secrets, through his official email account, to IMA in exchange for an offer of lucrative employment. The judgment can be viewed here. 

The Addl. City Civil Judge, Bangalore had initially passed an interim injunction on the 9th of December, 2009 restraining only the former employee of Homag India, for a period of one year, from exploiting the trade secrets that he had learned during his employment with Homag. The basis of the interim injunction was the employment contract between Homag and its former employee which clearly placed the former employee (Defendant No. 1) under a strict confidentiality clause. The trial court refused to extend the interim injunction to Defendant No. 2 i.e. IMA AG Asia on the grounds that there was no privity of contract between Homag & Defendant No. 2. The High Court however disagreed with the trial court and has ruled that the interim injunction should have been extended to even the second defendant which had induced defendant no. 1 to breach the confidence of his former employer. One of the reasons for extending the interim injunction to even Defendant No. 2 was the fact that there was prima facie evidence indicating that Defendant No. 2 had induced Defendant No. 1 to breach his duty of confidentiality to the plaintiff. 

One of the other tricky points argued in the case was whether the court could enforce a negative covenant in the employment contract between the Plaintiff and Defendant No. 1, which covenant restrained Defendant No. 1 from taking up the offer of employment by Defendant No. 2. Apart from restrictive employment contracts being inherently controversial, there is also the question of the Specific Relief Act, 1963 which prohibits the enforcement of negative covenants in contracts. 

The High Court however cited the Supreme Court judgement in the case of Best Sellers to hold that such negative covenants can be enforced during proceedings for an interim injunction which are conducted under the Code of Civil Procedure. The High Court also bolstered the basis of its judgement, on the point of enforcing confidentiality clauses in employment contracts by citing other judgements of the Supreme Court in the case of Niranjan Shankar Golikari along with the judgement of the Delhi High Court in the now famous case of John Richard Brady. 

On the basis of all the above judgements and the facts of the case the High Court restrained Defendant No. 1 from taking up the employment offer of Defendant No. 2 for the duration of the lawsuit and not just for one year. The interim injunction against exploitation of the trade secrets was also extended to Defendant No. 2. The case has been remanded to the trial court for a trial which should be completed within one year. 

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Copyright Aggression vs Educational Access: The "Grammar" of Justice?

In a rather unfortunate turn of events, Delhi University (DU) and Rameshwari appear to have lost the now famous DU photocopy case that pits the public interests of students against the private interests of publishers. As reported in earlier blog posts, a leading group of publishers, including OUP, CUP and Taylor & Francis, sued a photocopying shop (Rameshwari Photocoping) and Delhi University (DU) for alleged infringement of copyrights in their books, excerpts of which were compiled into student course packs and sold by Rameshwari (the photocopy shop).

It bears noting that Rameshwari operated under a specific license from DU, whereby they were given a master copy of excerpted articles and book chapters (that formed part of the prescribed syllabus) and tasked with photocopying them for registered DU students at a fixed price that largely reflected their operational costs. Pursuant to this, the photocopy shop created course packs containing the said book chapters/excerpted articles that fell strictly within the prescribed syllabus predetermined by DU/its faculty.

Apparently, an admission from DU in its written statement to the court that the acts complained of by the publishers in the suit were "infringing" formed the basis of the injunction. Although the order is not out as yet, we have several accounts of the order (as verbally recorded by the judge) from various sources. If true, this could set a very dangerous precedent. For, the majority of the acts complained of in the suit amount to copying no more than 10% of the copyrighted material. In some cases, it was as low as 3.5%!

As I'd mentioned earlier, if a rich capitalist economy such as the US can suffer a 10% rule (that the reproduction of 10% of a copyrighted work fell within the contours of the law, when done for educational purposes), we in India should do much better! In any case, Indian copyright law recognises a "fair dealing" exception in section 52(1) (a) and an educational exception in section 52(1)(i) that can potentially offer a much more liberal educational exception than current US law.  But I'll leave this discussion for another post.

The DU Written Statement:

For now, let me revert to DU's submission to the court. A close perusal of this document reveals that the alleged statement of admission (that was forcefully argued by Sandeep Sethi, senior counsel who appeared for the publishers) has been thoroughly misconstrued. Sample the following extracts from DU's written statement:

Paragraph 6: " Individual students and teachers may either read the prescribed books and journal and other related works in the library or else borrow the books and make a photo copy of the relevant chapter and pages in a manner which is within the purview of the provisions of the Copyright Act, 1957 indicated above. This facility of copying certain pages for educational purposes in necessary because purchasing individual books is expensive, and further, in many instances these books are out of print or not available in India..... Members of the University may also collect all the readings from different books together before handing it over for copying."
 

Paragraph 7: "The facility of photocopying limited portions of works for educational and research purposes could have been provided within the library had the University adequate space, resources and manpower at its disposal. Instead it granted the facility of photocopying to Defendant No 1 keeping the interest of the students in mind, and keeping in view the law of the land and permitted the Defendant No. 1 to photocopy pages of chapters of single copy books, out of print books, not to be issued books and rare books on getting requests from faculty members, researchers and students. It is submitted that the Copyright Act, 1957 as amended by The Copyright (Amended) Act, 2012, specifically engrafts such exception to the infringement principle.... This is recognized in the form of Section 52 (1) (i) of the Copyright Act, 1957 which reads as under:-
 

Section 52(1)(i) [exempts] the reproduction of any work –

i. by a teacher or pupil in the course of instruction; or

ii. as part of the questions to be answered in an examination; or

iii. in answer to such questions; 

From bare reading of the aforesaid provision, it is clear that reproduction for the purposes defined in point (i) to (iii) above the same are exempted from the purview of infringement. Conjoint reading of the said averment in the plaint read with Section 52(1)(i) of Copyright Act, 1957 as amended in 2012, would clearly reveal that any such reproduction whatsoever (though the defendants dispute that they have permitted such reproduction) is justifiable as non infringing work."  

Notice the last sentence in the above extract...it is VERY TELLING! DU effectively states that it believes the acts complained of in the suit to be "non infringing". How then can it be restrained on the basis that it admits to the acts being infringing? Sample also the para wise reply of DU to the various allegations in the plaint, wherein it states:

Para 14-17: "It cannot be lost sight of that the same very legislation [the copyright act] balances the competing interest of the society and those who are members of the society so that the protection given to the authors should not unnecessarily impinge upon the legitimate acts done by bona-fide persons. Such balancing of the acts is done in the form of prescribing what infringement is and what is not? Once the Copyright Act clearly provides exceptions so far as it relates to reproduction of any work done by a teacher or a pupil in course of instruction or in furtherance of answering the questions or part of questions to be answered in examination, the said provision has to be interpreted in the light of corresponding benefit which is to be given to the society so as to fulfil the social benefit which is to be given to the children and youth by encouraging the talent in order to enable them to study the books and making them available at reasonable costs by providing photocopy of selected pages of chapters for educational purposes. Therefore, the acts of Defendant No.2 is fair and bona-fide and in the interest of the society. It is denied that defendants [acts] would not constitute fair dealing in the plaintiffs’ publications."

Para 11-13: "Defendant No.2 is an instrumentality of the State and an agency of the State whose paramount duty and motive is to impart education and to work within the constitutional framework by implementing the State Directives envisaged in Para 4 of the Indian Constitution. ...Article 41 which reads – “The State shall, within the limits of its economic capacity and development, make effective provision for securing the right ...to education....” ... Defendant No.2 within its economic capacity, whatever is available to Defendant No.2, is prescribing the courses to the students of Delhi University which includes both rich and poor by facilitating them in the form of Defendant No.1 providing photocopies of pages from selected chapters in books which are somehow giving them good hold of education who are otherwise incapable of purchasing costly books due to their higher prices. If the said aims and objectives are seen under the State Directives in the Constitution read with Copyright Act, it is clear that Defendant No.2 is fulfilling the command of the Constitution by making such effective measures and rather working within the constitutional framework and not infringing anybody’s work much less the plaintiffs herein."

The Alleged Admission:

Notwithstanding all of the above, counsel for the publishers vehemently claimed that  paragraph 21 of DU's written statement amounts to an "admission" of infringement and persuaded the judge to grant an injunction based on this alleged admission. This paragraph reads as under:

"It is submitted that whatsoever has been done if at all so were doing by the Defendant No. 2 only under the impression that they are permissible acts and are done bonafidely in order to serve the goal for which Defendant No. 2 University was formed in order to impart education and give access to the books which are costlier and not available to the students. Defendant No. 2 besides the same has no role to play and categorically states that Defendant No. 2 has no intention to breach any such law by making such reproduction and will not make any such reproduction in relation to the acts complained of in the suit. In any case, the University has no business with that of Defendant No. 1 and therefore the Defendant No.2 cannot be held guilty of any copyright infringement."

Note that DU begins this paragraph by clearly stressing that it believes the acts to be non infringing: "It is submitted that whatsoever has been done if at all so were doing by the Defendant No. 2 only under the impression that they are permissible acts)." DU then goes on to note in the same paragraph that "Defendant No. 2 has no intention to breach any such law by making such reproduction and will not make any such reproduction in relation to the acts complained of in the suit."

Clearly, given the overall tenor of DU's submissions, the phrase "such reproduction" must be taken to mean any "reproduction" that is "infringing". Therefore when DU states that it will not make any "such reproduction in relation to acts complained of", it only means "acts that are finally found by the court to be infringing".  DU does not admit any of these acts to be infringing. That would go against the very grain of DU's overall submissions to the court.

No doubt, the language used leaves much to be desired and it comes as a huge surprise that in a matter of this importance, DU's written submission is rife with grammatical and syntax errors. Given that the University has produced some of the finest lawyers in the country, many of whom are leading senior counsel today, one would have expected it to reach out to them and clean up its submissions prior to filing in court.  After all, this case is a landmark one that will have significant ramifications for the future of education.

But grammar and syntax ought not to determine the course of justice. DU's grammatical flaws cannot and should not be the basis for crafting the law of the land. Clearly, DU did not intend throwing away the future of its students and of several others by explicitly stating that it thought that a mere 3.5% taking of a copyrighted work for the purpose of creating a course pack really amounted to copyright infringement!

In short, a close reading of DU"s written statement makes it clear that it intended to vigorously defend its right to photocopy educational material including inter-alia by creating course packs for its students. DU must therefore immediately file a review petition before the Delhi High Court calling its attention to the fact that the statement in paragraph 21 has been misconstrued and is, at worst, an inadvertent error. It must then proceed to vigorously contest the claims of the publishers: for this case impacts not just DU, but all educational institutions and their students.

IRRO Infiltration:

As suspected all along, this law suit is really an attempt to facilitate the IRRO (Indian Reprographics Rights Organisation) to infiltrate educational institutions. If not for anyone else, the IRRO will certainly argue that this injunction translates to a general legal proposition that no University or student can photocopy a single page without paying rent to the IRRO. It is highly likely that in the aftermath of this order, the IRRO will shoot off letters to all Universities asking them to begin paying up for all copies made, even if it amounts to a paltry percentage of the copyrighted work in question.

The licensing rates proposed by IRRO may appear tantaslising now, but will soon escalate once they have a captive audience. This has been the experience with most other countries that have fallen prey to IRRO's and their equivalents. A little more than a year ago, leading Canadian Universities refused to renew IRRO equivalent licenses in Canada owing to sharp hikes in licensing fees, making it unaffordable for the average student. (thanks to Dhananjay Baijal for pointing me to this).

If the reproduction of educational material within educational institutions falls within the scope of copyright exceptions, IRRO need not be paid a single penny! To this extent, IRRO's entry into educational institutions must be resisted with all the force we have. Our fair use exceptions should not be converted to de facto compulsory licensing regime, for effectively that is what the IRRO wishes. The key difference between a "fair dealing" or an educational defence (as found in section 52 (1) (a) and 52 (1) (i)) of the Indian copyright act) and a compulsory licensing provision is this:

If the copyright act grants a defence (such as copying for research or for educational purposes), then no royalty need to be paid to the copyright owner. However, if a compulsory license is issued, then a certain royalty needs to be paid.

Canadian Parallels:

Given that the Canadian copyright regime is somewhat similar to India, it will be instructive for Indian courts to examine decisions from the land of the maple leaf. Two of the most recent Canadian Supreme Court decisions recognise a fairly liberal copyright defence for research and education. In CCH vs Law Society of Upper Canada, a case involving photocopying of cases and journal article extracts by a law society (on behalf of its member lawyers), the court held that the acts were covered under the "fair dealing" (for the purpose of research) exception. The court went on to famously note that the "fair dealing" exception under copyright law should not be seen as a defence or an exception, but as a strong right accruing in favour of users/consumers:

"...the fair dealing exception is perhaps more properly understood as an integral part of the Copyright Act than simply a defence. Any act falling within the fair dealing exception will not be an infringement of copyright. The fair dealing exception, like other exceptions in the Copyright Act, is a user’s right. In order to maintain the proper balance between the rights of a copyright owner and users’ interests, it must not be interpreted restrictively."

In a more recent case, the Canadian Supreme Court made it clear that school teachers who photocopied course packs and distributed this amongst students were well within the scope of the fair dealing exception. Amlan had blogged on this decision earlier.

Help for Intervention:

And that brings me to my last point. Some of us are planning on filing interventions in this case for and on behalf of both students and academics. We need all the help we can to match the might of the powerful legal arsenal that the publishers and IRRO have put together. Any of you interested in joining us (to help with research, court strategy etc etc), please send me an email at shamnad@gmail.com. We're hoping that many of you are as perturbed about this copyright aggression as we are, given that this case is really about access to education and helping carve out a robust copyright educational exception that will foster an inclusive ecosystem, where a vast majority of India's population can continue to access educational material at affordable rates. 

ps: I want to really thank Anviti Chaturvedi, a student at the National University of Juridical Sciences for painstakingly perusing DU's written submissions and culling out the relevant paragraphs that I have used in this post.

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Rebutting arguments against multiple copyright societies

Image from here.

In response to my last post, I received a dismissive comment from Achille Forler, an insider from the music industry, who like most other folks from the music industry consider any commentary from outsiders as ‘pointless’. In any case, we on the blog seem to be much more receptive of criticism and I’ve taken the time out to rebut each one of the points raised by Forler.

Forler’s comments are in red below, with mine in black:

Dear Prashant, this post is pointless on several counts.

First, the existing Act makes room for only one Society per class of works, so there is no latitude to create competing Societies.

Wrong! The proviso to Section 33(3) allows for the registration of more than one Copyright Society per class of works. The proviso, which has not been deleted in the last round of amendment, is reproduced as follows: “Provided that the Central Government shall not ordinarily register more than one copyright society to do business in respect of the same class of works.” The wording of the proviso clearly allows for the Central Government to register more than one copyright society in respect of the same class of works provided that there is a special reason for the same. If companies like T-Series or the members of the South Indian Music Companies Association (SIMCA) can demonstrate such reasons they should be allowed to start their own copyright societies. In my opinion these companies should not be forced to get into bed with either IPRS or PPL until the Government is able to assuage their fears of mismanagement in these copyright societies. Why is the Government giving the inquiries into IPRS a quiet burial? If there is nothing to hide, let the Registrar of Copyrights make public the results of his inquiries into complaints raised by Akthar and Co. If the Government is not ready to do, it has no business to force companies like T-Series or SIMCA to join tainted copyright societies.   

Second, it is not the Societies but the Copyright Board that will determine the rates; so there is no benefit in setting up competing Societies.

The Copyright Board is going to determine royalties only if content users are not satisfied with the rates demanded by Copyright Societies. Of course, if PPL is going to ask for a looney 20% royalty rate, the matter will surely end up before the Copyright Board. Even presuming that 99% of all matters end up before the Copyright Board, the composition of the copyright society will have a significant bearing on the royalty rate fixed by the Copyright Board. For instance if the member companies of SIMCA form their own copyright society, they can argue to be treated differently from the Bollywood music labels on the grounds that the economics of music and broadcasting in South India are significantly different from the north and west of India. Since the market for South Indian and Bollywood market is so distinct, companies like SIMCA can easily make a case out for royalty rates which are different from the rates imposed on Bollywood. Given the much smaller market in South India, I would argue that the royalty rates for these companies should be higher than for Bollywood music labels which operate in the context of a much larger market where they can benefit from economies of scale.

Third, from a consumer perspective, less Societies is far better than more Societies: ask iTunes, Google, or Indian broadcasters who clamour for a single-window clearance as they feel reporting statements to IPRS and PPL is proving too much! The same picture emerges if you look at the rise of pan-European licensing: who pushed for it if not the consumers?

iTunes, Google or Indian broadcasters are not consumers of music – people like me are consumers of music and there has never been an instance in the history of economics of mankind where a big cartel of music companies working together has resulted in good news for the consumer. In America ASCAP was put through brutal anti-trust decrees by the U.S. Govt. When BMI was formed by broadcasters as a counter-weight to ASCAP, it too was put under a brutal anti-trust decree by the Department of Justice.

There is no reason for having a single super copyright society in India. For Bollywood, let there be one copyright society consisting of the old guard of IPRS & PPL. Let there also be another copyright society consisting of T-Series, Yash Raj Music etc to act as a counter-weight.

If content users like the broadcaster lobby don’t like it – tough luck, they already have a pretty sweet deal under the new amendments. A few reporting requirements aren’t going to sour the deal. My guess, and I’m guessing also the reason for Forler’s opposition, is that the resulting competition between these two different copyright societies will drive down rates to the satisfaction of content-users and most broadcasters will be content enough playing the music of only one copyright societies.

And oh yes, before I forget – India is no Europe! We do business the Indian way.

 
Fourth, the advent of streaming services like Spotify and Deezer, and new tools like TuneSat, we have seen a dramatic increase in both the accuracy of the data and in micro payments. The exploding volume of data to process royalties is saturating the systems of even the largest Societies like PRS and GEMA or ASCAP; SACEM alone invested euros 71 million (INR 495 crores) over 7 years in its IT systems just to cope with this data revolution on which the accuracy for collecting the author's royalties depends.

I don’t see the point of this point. Obviously if you have mega-copyright societies, you are bound to have mega-bills for IT systems. Have smaller copyright societies and I’m sure Indian jugaad will take care of the rest. Moreover if services like Spotify etc. are able to provide accurate information on usage, it should make life simpler for copyright societies and not more difficult as suggested by you.

Fifth, the more Societies you have for one class of works, say literary and musical works, the more companies a publisher has to set up and operate just to collect what he could have collected with one company had there been only one Society.

From what I understand about the Indian music industry, there is no industry of music publishers, as understood in the Western sense. Even presuming that India does have an industry of music publishers, doesn’t it make sense for these music publishers to hedge their bets across multiple copyright societies? Why put all your eggs in one basket and be at the mercy of one thug? With multiple copyright societies, there is more of an incentive for copyright societies to compete with each other and ensure better services for both their stakeholders and clients.

In the coming years, smaller Societies will continue to do the "dirty job" - licensing small local users such as shops and hotels - but they will have no option but to abandon the essence of their power - royalties processing - to bigger Societies. Of course, they can also remain opaque, where a few cronies pocket most of the revenues, but that is not an alternative that we should consider.

In this point Forler contradicts his first point by acknowledging that multiple Copyright Societies can exist under the law. If there are smaller copyright societies, they will have to function under the aegis of the Copyright Act and its attendant reporting requirements under the new amendments. Being opaque may no longer be an option.

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