IP (Copyright and Patent) Litigations in India-S matilal.ppt

IP (Copyright and Patent)
Litigations in India
S. Matilal
Law School, IIT Kharagpur

General: Patent Right and Copyright
Patent
•Protects invention that are
novel, non-obvious and useful
•The term is for a period of 20
years
•Formal application needed to
obtain a patent
•Territorial in nature
Copyright
•Protects original work of
authorship. Every form of
expression in the literary and
artistic domain may be protected
•Term is life of the author and
thereafter for sixty years.
•Formal application not required.
However, optional registration
available.
• Protected in all Berne and WTO
counties.

Property as proprietary rights in rem
• By property we understand the relation
between the property-holder in one hand and
each and every member of the society on the
other hand in relation to a tangible or
intangible object.
• Law confers upon the property-holder a wide
array of rights (a bundle of rights) that allows
the property owner to maintain exclusivity.

Bundle of rights
(pack of sticks)

Infinite Series of Rights
R1,R2, R3, R4, ……. Rn
• Right to possess the thing which he/she owns
• Right to use and enjoy the thing owned
• Right to consume, destroy or alienate the
thing
• Rights of residuary character

Patent Right: Section 48 of the Patent
Act
Subject to the other provisions contained in this Act and the conditions
specified in section 47, a patent granted under this Act shall confer
upon the patentee—
(a) where the subject matter of the patent is a product, the exclusive
right to prevent third parties, who do not have his consent, from the
act of making, using, offering for sale, selling or importing for those
purposes that product in India;
(b) where the subject matter of the patent is a process, the exclusive
right to prevent third parties, who do not have his consent, from the
act of using that process, and from the act of using, offering for sale,
selling or importing for those purposes the product obtained directly
by that process in India:

Copyright: Section 14
For the purposes of this Act, "copyright" means the exclusive right subject to the
provisions of this Act, to do or authorise the doing of any of the following acts in
respect of a work or any substantial part thereof, namely:
(a) in the case of a literary, dramatic or musical work, not being a computer
programme,—
(i) to reproduce the work in any material form including the storing of it in any
medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work; (v) to
make any translation of the work; (vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts
specified in relation to the work in sub-clauses (i) to (vi); (b)

Patent Rights and Copyright
Section 48 of the Patent Act
• Product Patent: The exclusive
right to prevent third parties
from making, using, offering
for sale, selling or importing
• Process Patent: The exclusive
right to prevent third parties,
from using that process, and
from using, offering for sale,
selling or importing the
product obtained directly by
that process
Section 14 of the Copyright Act
• to reproduce the work in any
material form
• to issue copies of the work to
the public
• to perform the work in public
• to communicate the work to
the public
• to make any cinematograph
film or sound recording in
respect of the work
• to make any translation of the
work
• to make any adaptation of the
work

Broad Category of IP Litigations
Civil Litigation
Infringement
Suits
Declaratory
Suits
Suits for
Groundless
Threat

INFRINGEMENT MEANS VIOLATION OF
RIGHTS IN REM
Infringement Suits

Definition of Infringement
Copyright Act
• Section 51
Patent Act
•No Provision
•However, help may taken
from the patent statutes of
other common law countries.
• Example Section 271 of the
U.S. Patent Act

Section 51: When copyright infringed
Copyright in a work shall be deemed to be infringed— (a)
when any person, without a licence granted by the owner of
the copyright or the Registrar of Copyrights under this Act or
in contravention of the conditions of a licence so granted or of
any condition imposed by a competent authority under this
Act— (i) does anything, the exclusive right to do which is by
this Act conferred upon the owner of the copyright, or (ii)
permits for profit any place to be used for the communication
of the work to the public where such communication
constitutes an infringement of the copyright in the work,
unless he was not aware and had no reasonable ground for
believing that such communication to the public would be an
infringement of copyright; or

Continuation
(b) when any person— (i) makes for sale or hire, or sells
or lets for hire, or by way of trade displays or offers for
sale or hire, or (ii) distributes either for the purpose of
trade or to such an extent as to affect prejudicially the
owner of the copyright, or (iii) by way of trade exhibits in
public, or (iv) imports into India, any infringing copies of
the work Provided that nothing in sub-clause (iv) shall
apply to the import of one copy of any work for the
private and domestic use of the importer.
Explanation. For the purposes of this section, the
reproduction of a literary, dramatic, musical or artistic
work in the form of a cinematograph film shall be
deemed to be an "infringing copy".

Section 271 of the U.S. Patent Act
(a)Except as otherwise provided in this title, whoever without authority
makes, uses, offers to sell, or sells any patented invention, within the United
States or imports into the United States any patented invention during the
term of the patent therefor, infringes the patent.
(b)Whoever actively induces infringement of a patent shall be liable as an
infringer.
(c)Whoever offers to sell or sells within the United States or imports into the
United States a component of a patented machine, manufacture,
combination or composition, or a material or apparatus for use in practicing a
patented process, constituting a material part of the invention, knowing the
same to be especially made or especially adapted for use in an infringement
of such patent, and not a staple article or commodity of commerce suitable
for substantial noninfringing use, shall be liable as a contributory infringer.

How Infringement (Violations) Occurs?
Infringement occurs when someone without the permission
of the Patent/copyright owner does any of the exclusive acts,
which Patent/copyright owner alone can do.
Thus, photocopying a copyrighted book will amount to
copyright infringement as the exclusive right to make copies
of that book belongs to the copyright owner.
Producing a patented drug like Ilaprazole (a new Proton-pump
inhibitor for which patent is held II-Yang Pharmaceutical
Company, Ltd. of Korea will amount to patent infringement.

Parties to Infringement Suits
Patent
• Patentee
• Exclusive Licensee. If patentee
has not joined as plaintiff, he
must made defendant. [Section
109] Is he pro forma defendant?
• Anyone who has obtained
compulsory licence where the
patentee neglected and failed to
initiate within a period of two
months after receiving notice.
(patentee must be made
defendant) [Section 110]
•
Copyright
• Copyright owner
• Exclusive Licensee [Section
54] but the owner should
be made party [Section 61]
• Publisher of anonymous or
pseudonymous literary,
dramatic, musical or artistic
work till identity of the
author is disclosed publicly
• Author for enforcement of
moral rights. [Section 57]

Forum where to file?
No suit for a declaration under
section 105 or for any relief under
section 106 or for infringement of
a patent shall be instituted in any
court inferior to a district court
having jurisdiction to try the suit:
Provided that where a counter-
claim for revocation of the patent
is made by the defendant, the
suit, along with the counter-
claim, shall be transferred to the
High Court for decision.
Section 62 (1) of the Copyright
Act
Every suit or other civil
proceeding arising under this
Chapter in respect of the
infringement of copyright in
any work or the infringement
of any other right conferred by
this Act shall be instituted in
the district court having
jurisdiction.

Jurisdiction Determination and forum
shopping
• Determined by C.P.C.?
• Special provision in Copyright.
• The problem of Forum shopping. Forum
shopping refers to the strategy of a plaintiff to
have his action tried in a particular court or
jurisdiction where he feels that he will receive
the most favourable judgment or verdict.

Special Provisions
Section 62 (2) of the Copyright Act
(2) For the purpose of Sub-section (1), a
"district court having jurisdiction" shall,
notwithstanding anything contained in the
Code of Civil Procedure, 1908 (5 of
1908), or any other law for the time being
in force, include a district court within the
local limits of whose jurisdiction, at the
time of the institution of the suit or other
proceeding, the person instituting the suit
or other proceeding or, where there are
more than one such persons, any of them
actually and voluntarily resides or carries
on business or personally works for gain.
Section 134(2) of the Trademark Act
For the purpose of Clauses (a) and (b) of
Sub-section (1), a "District Court having
jurisdiction" shall, notwithstanding
anything contained in the Code of Civil
Procedure, 1908 (5 of 1908) or any other
law for the time being in force, include a
District Court within the local limits of
whose jurisdiction, at the time of the
institution of the suit or other proceeding,
the person instituting the suit or
proceeding, or, where there are more than
one such persons any of them, actually
and voluntarily resides or carries on
business or personally works for gain.

J.S. KHEHAR AND ARUN MISHRA, JJ
INDIAN PERFORMING RIGHTS
SOCIETY LTD.
V.
SANJAY DALIAAND ORS.
(DECIDED ON: 01.07.2015)

Fact
IPRS (Plaintiff/Appellant) filed a suit for copyright violation
against Sanjay Dalia (Defendant No. 1) as the Defendant carried
out infringing activities without obtaining licence from IPRS.
Sanjay Dalia owned cinema halls in Maharashtra and Mumbai
where infringement was alleged and the entire cause of action, as
alleged in the plaint, had arisen in Mumbai, Maharashtra. The suit
was filed in the High Court at Delhi, by virtue of the fact that the
Branch Office of IPRS was situated at Delhi and the Plaintiff was
also carrying on the business at Delhi. However, IPRS's Head
Office was situated at Mumbai. The Defendant raised objection
with regard to the territorial jurisdiction of the Delhi High Court.
The Single Bench and the Division Bench of the High Court have
upheld the objection and held that the suit should have been filed
in the facts of the case, in Mumbai. Hence, the impugned order
has been questioned in the appeals.

Grounds
 That a special right has been conferred Under Section 62(2) of the
Copyright Act and Section 134 of the Trade Marks Act containing non-
obstante clause to the applicability of the Code of Civil Procedure or any
other law for the time being in force, and the Plaintiff has been conferred a
right to file a suit where it carries on its business. That cannot be whittled
down by combining with it the cause of action.
 The impediment of Section 20 of the Code of Civil Procedure is not
applicable. Section 62(2) of the Copyright Act and Section 134 of the Trade
Marks Act have no co-relation to the cause of action and suit can be filed
where Plaintiff resides or carries on his business or personally works for gain.
 The interpretation made by the High Court is contrary to the aforesaid
provisions.
 Convenience of the Defendant is not a relevant consideration.

• Is Convenience of the Plaintiff
the sole criteria?
• What is the intention of the
legislature?

The Parliamentary Debates as to
Copyright Act has been relied upon
Shri P. Trikamdas
Ordinarily it should fall within the jurisdiction of the court
where the infringing copy was published. But there is nothing
to prevent Parliament from making a law, as for instance in
the case of divorce, and saying that the suit may also be filed
at any place where the author resides or where the original
publication took place, so that you could drag the infringer to
that court. Instead of making the author run all over the
country facing the infringer, the right may be given to the
injured party-the author-to sue in the place where the author
resides or where the first copy was published.

Justice Arun Mishra Speaking for the
Court
Considering the very language of Section 62 of the
Copyright Act and Section 134 of the Trade Marks Act, an
additional forum has been provided by including a District
Court within whose limits the Plaintiff actually and
voluntarily resides or carries on business or personally
works for gain. The object of the provisions was to enable
the Plaintiff to institute a suit at a place where he or they
resided or carried on business, not to enable them to
drag Defendant further away from such a place also as is
being done in the instant cases.

Continuation…
On a due and anxious consideration of the provisions contained
in Section 20 of the Code of Civil Procedure, Section 62 of the
Copyright Act and Section 134 of the Trade Marks Act, and the
object with which the latter provisions have been enacted, it is
clear that if a cause of action has arisen wholly or in part, where
the Plaintiff is residing or having its principal office/carries on
business or personally works for gain, the suit can be filed at
such place/s. Plaintiff (s) can also institute a suit at a place where
he is residing, carrying on business or personally works for gain
de hors the fact that the cause of action has not arisen at a place
where he/they are residing or any one of them is residing,
carries on business or personally works for gain.

Continuation…
However, this right to institute suit at such a place has to be read
subject to certain restrictions, such as in case Plaintiff is residing
or carrying on business at a particular place/having its head
office and at such place cause of action has also arisen wholly or
in part, Plaintiff cannot ignore such a place under the guise that
he is carrying on business at other far flung places also. The very
intendment of the insertion of provision in the Copyright Act and
Trade Marks Act is the convenience of the Plaintiff. The rule of
convenience of the parties has been given a statutory expression
in Section 20 of the Code of Civil Procedure as well. The
interpretation of provisions has to be such which prevents the
mischief of causing inconvenience to parties.

Temporary Reliefs
• Order 39, Rules 1 & 2
• Mareva Injunction
• Anton Piller Order
• John Doe Order

Mareva Injunction
 Mareva Injunction is a creation of English court in the case of Mareva Compania
Naviera SA v International Bulkcarriers, decided in 1975. It is a powerful, extreme
tool, which, has now become common in most Commonwealth countries.
 The injuction freezes assets so that a defendant to an action cannot dissipate their
assets from beyond the jurisdiction of a court so as to frustrate a judgment.
 It is recognised as being quite harsh on defendants because the order is often
granted at the pre-trial stage in ex parte hearings, based on affidavit evidence
alone. The purpose of a Mareva injunction is to protect the interests of the
plaintiff during the pendency of the suit and is granted to restrain the defendant
from disposing of his assets within the jurisdiction until the trial ends or judgment
in the action for infringement is passed. Mareva or freezing injunction is passed
when there is evidence or material to show that the defendant is acting in a
manner or is likely to act in a manner to frustrate subsequent order/decree of the
court or tribunal.

Order 38, Rule 5 of the C.P.C.
Arrest & Attachment Before Judgment
•It contemplates that if, at any stage of a suit, the court is
satisfied that the defendant, with intent to obstruct or
delay the execution of any decree that may be passed
against him, is about to dispose of, or remove from the
Court's jurisdiction, the whole or any part of his property,
the court may direct the defendant to furnish security in a
specified sum, and place at the court's disposal the
property or equivalent value as may be sufficient to
satisfy the decree.

Anton Piller Order
• The order is named after the 1975 English case
of Anton Piller KG v Manufacturing Processes Limited.
• Anton Piller order is a court order that provides the
right to search premises and seize evidence without
prior warning. This prevents destruction of
relevant evidence, particularly in cases of alleged
trademark, copyright or patent infringements.
• A Mareva injunction is often combined with an Anton
Piller order in these circumstances.
• Order 39, Rule 7

Order 39, Rule 7 C.P.C.
7. Detention, preservation, inspection, etc., of subject matter of suit.- (1) The court
may, on the application of any party to a suit and on such terms as it thinks fit,—
(a) make an Order for the detention, preservation or inspection of any property which is
the subject matter of such suit, or as to which any question may arise therein;
(b) for all or any of the purposes aforesaid authorize any person to enter upon or into
any land or building in the possession of any other party to such suit; and
(C) for all or any of the purposes aforesaid authorise any samples to be taken, or any
observation to be made or experiment to be tried, which may seem necessary or
expedient for the purpose of obtaining full information or evidence.
(2) The provisions as to execution of process shall apply, mutatis mutandis, to persons
authorized to enter under this rule.

John Doe” orders or “John Doe”
injunctions
•“John Doe” orders or “John Doe” injunctions are “cease
and desist” orders passed by a court against anonymous
entity/entities. These orders in the recent times have
been issued in matters of protecting copyrights.
•Order 7 Rule 1 of the Code of Civil Procedure provides
that the plaint shall contain the name, description and
place of residence of the defendant so far as can be
ascertained. When such identification is unknown, a
“John Doe” suit is maintainable. An U.S. Court held that
for entertaining the John Doe suit, the plaintiff should
identify the missing party with sufficient specificity such
that the Court can determine that the defendant is a
real person or entity who could be sued in federal court.

Reliance Pictures v. ‘John Doe’s I.A. No. 13476/2011 in the Delhi High
Court (“Bodyguard” Movie Case)
• In the Bodyguard Movie Case, the Delhi High Court opined that
“defendants and other unnamed and undisclosed persons, are
restrained from communicating or making available or distributing,
or duplicating, or displaying, or releasing, or showing, or uploading,
or downloading, or exhibiting, or playing, and/or defraying the
movie ‘Bodyguard’ in any manner without a proper license from the
plaintiff or in any other manner which would violate/infringe the
plaintiffs copyright in the said cinematograph film ‘Bodyguard’
through different mediums like CD, DVD, Blue-ray disc, VCD, Cable
TV, DTH, Internet services, MMS, Tapes, Conditional Access System
or in any other like manner. Plaintiff is permitted to publish the
‘John Doe’ injunction order passed today in the local newspapers.”

Special Rule Regarding Burden of Proof
Section 104A(1) in The Patents Act, 1970
(1) In any suit for infringement of a patent, where the subject matter of
patent is a process for obtaining a product, the court may direct the
defendant to prove that the process used by him to obtain the product,
identical to the product of the patented process, is different from the
patented process if,-(a) the subject matter of the patent is a process for
obtaining a new product; or
(b) there is a substantial likelihood that the identical product is made by the
process, and the patentee or a person deriving title or interest in the patent
from him, has been unable through reasonable efforts to determine the
process actually used:
Provided that the patentee or a person deriving title or interest in the patent
from him first proves that the product is identical to the product directly
obtained by the patented process.

Process Patent Explained
Crocin
(P
aracetamol)
Process 1
Process 2
Process 3

Permanent Remedy
• Injunction
• Damages or account of
profits
Section 53 of the Copyright Act
• Injunction
• Damages
• Accounts

Innocent Infringer
• An infringer, becomes responsible for the loss
or damage caused to the Patent/copyright
owner regardless of any fault on his/her part.
• The law, thus, precludes an infringer from
advancing innocence or no-fault as a defence.

Lesser degree of treatment
• No damage or account of
profit
Proviso to Section 55 of the
Copyright Act
• Only injunction

Defenses
Patent
• Section 64
• Acts covered under Section
107A
Copyright
• Fair Dealing [Section 52]
• Copyright Misuse: Copyright
misuse is an equitable defense
against copyright infringement
allowing copyright infringers to
avoid infringement liability if
the copyright holder has
engaged in abusive or
improper conduct in exploiting
or enforcing the copyright.

Patent
• Section 106
Copyright
• Section 60

Section 106, Patents Act
Power of court to grant relief in cases of groundless threats of
infringement proceedings
(1) Where any person (whether entitled to or interested in a patent or an application
for patent or not) threatens any other person by circulars or advertisements or by
communications, oral or in writing addressed to that or any other person, with
proceedings for infringement of a patent, any person aggrieved thereby may bring a
suit against him praying for the following reliefs, that is to say—
(a) a declaration to the effect that the threats are unjustifiable;
(b) an injunction against the continuance of the threats; and
(c) such damages, if any, as he has sustained thereby.
(2) Unless in such suit the defendant proves that the acts in respect of which the
proceedings were threatened constitute or, if done, would constitute, an infringement
of a patent or of rights arising from the publication of a complete specification in
respect of a claim of the specification not shown by the plaintiff to be invalid the court
may grant to the plaintiff all or any of the reliefs prayed for.
Explanation.—A mere notification of the existence of a patent does not constitute a
threat of proceeding within the meaning of this section.

Section 60, Copyright Act: Remedy in the case
of groundless threat of legal proceedings.
Where any person claiming to be the owner of copyright in any work,
by circulars, advertisements or otherwise, threatens any other person
with any legal proceedings or liability in respect of an alleged
infringement of the copyright, any person aggrieved thereby may,
notwithstanding anything contained in section 34 of the Specific Relief
Act, 1963 institute a declaratory suit that the alleged infringement to
which the threats related was not in fact an infringement of any legal
rights of the person making such threats and may in any such suit— (a)
obtain an injunction against the continuance of such threats; and 41
(b) recover such damages, if any, as he has sustained by reason of such
threats. Provided that this section shall not apply if the person making
such threats, with due diligence, commences and prosecutes an action
for infringement of the copyright claimed by him.

Patent
• Section 105
Copyright
• Section 34 of the Specific
Relief Act

(1) Notwithstanding anything contained in section 34 of the Specific Relief Act,1963
(47 of 1963), any person may institute a suit for a declaration that the use by him of
any process, or the making, use or sale of any article by him does not, or would not,
constitute an infringement of a claim of a patent against the patentee or the holder of
an exclusive licence under the patent, notwithstanding that no assertion to the
contrary has been made by the patentee or the licensee, if it is shown—
(a) that the plaintiff has applied in writing to the patentee or exclusive
licensee for a' written acknowledgements to the effect of the declaration claimed and
has furnished him with full particulars in writing of the process or article in question;
and
(b) that the patentee or licensee has refused or neglected to give such an
acknowledgement.
(2) The costs of all parties in a suit for a declaration brought by virtue of this section
shall, unless for special reasons the court thinks fit to order otherwise, be paid by the
plaintiff.
(3) The validity of a claim of the specification of a patent shall not be called in question
in a suit for a declaration brought by virtue of this section, and accordingly the making
or refusal of such a declaration in the case of a patent shall not be deemed to imply
that the patent is valid or invalid.
(4) A suit for a declaration may be brought by virtue of this section at any time after
the publication of grant of a patent, and references in this section to the patentee
shall be construed accordingly.

IP (Copyright and Patent) Litigations in India-S matilal.ppt

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