A presentation about a 'Copy right' related case.

1. Business Law
Case Presentation

2. Introduction to
Gemalto Terminals Pvt Ltd.
• Gemalto is the world leader in protecting, verifying and managing
digital identities and interactions. This enables clients to offer
personal mobile services, payment security, authenticated cloud
access, software monetization, data encryption, machine-to-
machine applications and many other services.
• Gemalto develops and install secure software in
diverse products (SIMs, payment cards, eID documents etc.) used to
access digital services. Our platforms and services continuously
monitor and manage these devices, checking identities, managing
transactions and protecting the data they transmit and store.​

3. • Pine labs is a leading provider of retail POS solutions that simplify
payment acceptance, while creating business opportunities for
Issuers, merchants and brands to connect with consumers.
• Today it has evolved into a payment acceptance partner choice for
more than 30,000 retailers, ranging from large worldwide
enterprises with wide network across India to locally-owned small
businesses.
• Pine Labs provide value added solutions like Instant EMI, Instant
Discounts, Cash Back Programs, Pay by Points, Loyalty Solution, Gift
Solution, Targeted Promotions, Dynamic Currency Conversion etc.
Introduction to
Pine Labs Pvt Ltd.

4. Introduction to Case
• Gemalto engaged Pine Labs for the development of software for
various programs including the one for the IOCL Fleet Card
Program.
• A Master Service Agreement (MSA) was signed in June 2004.
Clause 7 of the MSA provided that Pine Labs "assigns" all
copyright to Gemalto.
• Pursuant to the MSA, Pine Labs authored a software
program known as the Version 1.03 for the IOCL Fleet Card
Program and a complete version of the same was provided to
Gemalto in August 2004. Thereafter, certain other functionalities
were added to the program and subsequent versions were also
provided from time to time.

5. • In 2009, Pine Labs filed a suit in the Delhi high Court
claiming that copyright had reverted to it as the
assignment had expired by virtue of section 19(5) and
19(6) of the Indian Copyright Act Section 19(5) and
19(6) provide that:
– 19(5) If the period of assignment is not stated, it shall be
deemed to be five years from the date of assignment.
– 19 (6) If the territorial extent of assignment of the rights is
not specified, it shall be presumed to extend within India
Cause of Case

6. Contention of Parties
_____________________
Wanted the rights of IOCL
fleet card program on
their name, as it was their
project, which was
developed by Pine labs
under MSA.
______________________
As duration of MSA was
not mentioned and by law
it expired in 5 years from
date of creation, so Pine
Labs wanted rights of IOCL
fleet card program to be
transferred on their name
as they are the creators of
the program.

7. Hearings
• In 2009, Delhi High Court, the bench observed that:
“Since IOCL Fleet Program is developed by Pine Labs, which is the creator of
the said Program as per Section 17 of the Copyright Act, Pine Labs would be
the first owner of the copyright in this work. Section 18 of the Act, however,
permits the copyright owner to assign the copyright either wholly or partially
and either generally or subject to limitation and either for the whole term of
the copyright or any part thereof.
Section 19 of the Act stipulates the mode of assignment. Sub Section (1)
thereof provides that in no uncertain term that assignment has to be in
writing signed by the assignor or by his authorized agent. As per sub Section
(2) of Section 19 of the Act, the assignment of the copyright, any such work
is to identify such work and also specify the rights assigned and the
“duration and territorial extent of such assignment”. Thus by agreement the
assignment can be for a limited duration and limited territory.”

8. Importance of Case
• This judgment is of significant importance in outsourcing contract/
commissioning works, not only for computer software but for all aspects
where an author is contracted to write any literary work. Provisions of
section 19(5) and 19(6) of the Copyright Act, which were inserted only in
1995 through an amendment, are unique to India and are often
overlooked at the stage of drafting of contracts for assignment of
copyright. This judgment clearly lays down that if the parties fail to
provide for the period in the document by which assignment of copyright
is made, then regardless of intention of the parties, the period of
assignment would only be 5 years and the territory would only be the
territory of India. Care should therefore be taken that if perpetual and
worldwide assignment (or an assignment beyond 5 years) of copyright is
envisaged by the parties, this should be specifically mentioned in the
document through which assignment of copyright is made. Authors should
note that in case of past assignments made by them, if more than 5 years
have expired and the document of assignment did not specifically mention
a term, the copyright may have reverted to them.

9. Final Decision
• The Bench relied upon section 19(5) and 19(6) of the Copyright Act
and came to the conclusion that:
as no duration or territorial extent is provided in
agreement or any assignment deed, provisions of
Section 19 (5) (6) of Copyright would be attracted.
• Gemalto contended that the MSA was only an agreement to assign
and not an assignment and it was the equitable owner of the
copyright. As such, section 19(5) and 19(6) of the Copyright Act had
no application and Pine Labs was liable to execute documents
assigning the copyright to Gemalto. This contention was overruled
by the Bench which concluded that section 19(5) and 19(6) of the
Copyright Act applied whether the MSA was an agreement to assign
or an assignment

10. A Presentation By:
Jasleen Kaur
Abhitanjay Chaudhary
Owais Ashraf
Aastha Prasad
Surbhi Kapoor
Rakesh Agarwal
Thank You !!