Tuesday, April 24, 2012

Ownership of "Sound Recording" and Underlying works

In one of our recent posts, Divya has crisply discussed the decision of the Calcutta High Court in the Oh la la/ Dirty Picture controversy. In light of this controversy, I have a few thoughts to share on ownership of sound recording and underlying works.

The first limb of the issue that needs to be understood with clarity is the very definition of “sound recording”. Unless and until there is unanimity/ consensus as to what constitutes a sound recording, i.e. the subject-matter of copyright protection, there is no point in proceeding any further with the discussion.

Sound recording is defined in Section 2(xx) of the Copyright Act, 1957. The definition reads as follows:

"Sound Recording" means a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is made or the method by which the sounds are produced.

From the definition, it becomes clear that the subject-matter of protection is the content of the recording, namely the sounds which form part of the recording/ sounds which are embedded in the recording, and not the recording itself. In other words, the protection is not restricted to a specific recording that is made at a given point in time, but is in fact conferred or bestowed upon the very sound itself. 

Critically, it must be pointed out that sound recording is not synonymous with a song. Songs merely form a subset of sound recording. In a song, which is also a sound recording, the peculiarity is that its constituents, namely the musical composition and the lyrics are themselves protected by distinct/ independent copyrights. Consequently, a song, at its very creation, is a combination of copyrighted works, thereby bringing it within a broad definition of a "Derivative work".

What must be understood here is that, merely because a song which is a sound recording is a combination of underlying copyrighted works, it does not follow that the stand-alone copyright in the sound recording is undermined or is inferior in anyway. In other words, the owner of a sound recording/ owner of a copyright in a song/ producer of a cinematograph film enjoys as much protection under the Copyright Act as the owners of underlying works. Simply put, the scope of protection of the owner of the song extends to the combination of music and lyrics. 

The practical consequence of this protection is that the owner of the song has the exclusive right over the said combination of music and lyrics, the emphasis being on the "combination". Therefore, if either of the ingredients of the combination were to be reproduced individually, the owner of the song would be traversing well beyond the scope of the copyright in the song. In other words, he would be infringing the copyrights of the owner of the underlying work.

The converse is that no third party, including the owners of the underlying works can come together to create the same combination as that of the original song. It follows that the caveat applies not just to re-creation, but also extends to reproduction and copying. This is supported by the bundle of rights conferred under Section 14(e) to the owner of a sound recording. 

The long and short of all the above verbiage is that a sound recording has a "unitary" nature wherein the individual constituents are complete in themselves which enjoy independent copyrights. However, the vestation of such independent copyrights in such ingredients does not affect the unitary nature of a sound recording or its unitary use. Only when the use is not unitary, it results in the infringement of copyrights in underlying works/ ingredients. 

This proposition is beautifully articulated in a decision of the Delhi High Court Super Cassettes v. Chintamani delivered in July 2011. The relevant portion of the judgment reads as follows:

55. There is no quarrel with the proposition that cinematograph films and sound recordings are derivative works, which are eventually derived from original literary, dramatic, musical and artistic works. That does not make copyright in cinematograph films and sound recordings inferior. In Entertainment Network (India) Ltd. (supra), in para 41, the Supreme Court has held that only because the term for holding copyright under section 27 (in relation to a copyright in sound recording) is different from the term of the copyright in relation to original literary, dramatic, musical and artistic works, the same would not mean that the right of the copyright owner in sound recordings is somewhat inferior. Even though the copyright in relation to derived work such as cinematograph films and sound recordings operate in a relatively restrictive field, when compared to the copyright in original literary, dramatic, musical and artistic works, to the extent that the said copyright in derived work is vested by the Act, the same operates with full force and vigour. The decision of the Supreme Court in Entertainment Network (India) Ltd. relied upon by the defendant, India TV in no way advances their submission that cinematograph films and sound recordings are covered by Sections 52(1)(a) and 52(1)(b) of the Act.

Delhi High Court rules on Grant of a Patent: Snehlata Gupte v. UoI

In a decision that was delivered on 20th  April 2012, the then acting Chief Justice of the Delhi High Court  ruled that upon rejection of a pre-grant opposition, a patent is deemed to have been granted. In other words, a patent grant is not contingent on the formal sealing and grant of the patent/ entry into the register, since these are but mere formalities. 

In this case, an application for a patent of J.Mitra was opposed by Span Diagnostics Limited under section 25 the pre-2005 Act, when there did not exist a provision for pre-grant opposition like the one under the current framework. The said opposition was decided in favour of the patent applicant; however, before the patent was formally sealed, the applicant had to undertake a minor amendment to the patent specification under the direction of the Controller.

The said direction was issued as part of the Opposition order. Around the same period, the 2005 amendment to the Patents Act was set to come into force before the formal sealing of the patent. Upon the amended Act coming into force, but before the sealing of the patent, Span Diagnostics filed yet another opposition, this time under Section 25(1) of the amended Act - A pre-grant opposition.

The logic of the opponent was, since the patent had not been formally sealed, it had not been granted yet, and therefore a pre-grant opposition was perfectly justified. The Chief Justice of the Delhi high Court held the following: 

1. Upon the rejection of an opposition under Rule 55(6) of the Patent Rules, it must be deemed that the patent has been granted since a contrary conclusion would result in an endless cycle of oppositions.

2. In the specific facts of the case, the direction of the controller in the pre-grant order to include a reference to another patent application in J.Mitra's patent specification was a routine order which did not affect or take anything away from the factum of grant of the patent to J.Mitra.

3. Simply put, (read para 17 of the judgement) according to the Delhi High Court, the date on which the patent is granted cannot be the date of issuance of certificate, but has to be the date on which order of grant is passed by the Controller. Issuance of certificate of grant is a mere formality which is contingent on the grant of the patent.

What if the patent applicant had failed to comply with the direction issued by the controller as part of the pre-grant order, however minor or formal the direction may be? In other words, if the patent applicant had NOT effected the revision of/ amendment to the patent specification as directed by the controller in the pre-grant order, would the process of grant be complete? If no, how can the direction be a mere formality?  

That said, the logic of the Delhi High Court is, for a refreshing change, pro-patentee. What is to be critically noted is that the High Court has touched upon, in an obscure way, the potency of the pre-grant opposition mechanism to thwart the grant of the patent to the utter frustration of the patent applicant. Hopefully, some day the High Court will also have the opportunity to comment on responsible use of the pre-grant opposition mechanism.

There are certain other aspects of the Patents Act which the High Court has touched upon, or alluded to in passing. The relevant observations of the High Court on these aspects shall be discussed in the posts to come.

We thank "Frequently Anon." for bringing this decision to our attention!

Monday, April 23, 2012

Time for Ooh La La! To say Ui Amma!?!?!?

The Dirty Picture that won perhaps the most awards last year, appears to have fallen into trouble, in spite of making the “Ooh La La”!!! 

The blockbuster song, that had audience’s attention captured, was alleged to be infringing an old song called “Ui Amma Ui Amma”. 

Interestingly, the song Ui Amma (an expression originally meaning Oh Mother! ) was composed by Bappi Lahiri, who gave his voice to Ooh La La.

However, to my eyes, this appears to be a case of crying “Wolf!!! Wolf!!!”. The movie all set to be released for television viewing this Sunday, had the plaintiffs moving just in time to perhaps prevent the same.

The Calcutta High Court heard the interim application,and was of the opinion that damages would suffice in this instance to bring about a balance of convenience. In deciding the verdict, the Hon’ble judge heard both the songs and reached a prima facie finding of infringrment. 

The court ordered for a deposit of Rs. 2 Crores to be made to the Court and ordered the Registrar to invest the deposit the sum in a short term deposit. Being an interim order, am sure we all appreciate that the order is likely to be overturned, either in appeal to the interim order itself, or during the course of trial.

In the course of hearing, the issue of assignment also came about. The court noted, that in the absence of the term of assignment being absent, the same is construed to be for a period of five years. However, in this case, the court observed that the deed was entered into much before this provision was incorporated into the Act. I am not sure how well this argument would play out, in view of all aspects associated with the case.

The Court to my eyes, however has left a few loose ends, perhaps for the final order to address.

The music for the movie, as the Court order points out, was released on October 21, 2011. The Court does not question why a delay was made in instituting the suit for infringement, especially if such a striking aspect of the song was in question. Further, in the normal course of civil proceedings, the limitation period to institute a suit is three months.

This brings us back to the question, that while no copyright exists in the portion of a work of authorship, would the fact that it forms the substantial and representative bit of a work, be enough to make a finding as to infringement.

Further, while the infringing song was sung by Bappi Lahiri and the infringed song was also his composition, it is unlikely that there could have been an instance where he wouldn’t have recognized a striking similarity between the compositions. Even if he did, perhaps Bappi da thought that being the composer of Ui Amma, his singing Ooh La La was an exercise of implied acquiescence to the use of a similar tune/riff. The Court is absolutely silent on this aspect as well.

With the multifarious questions that appear to have been shoved under the carpet, I just find myself wishing for Pink Floyd’s Let There Be More Light!

Sunday, April 22, 2012

Is India “First to File” or “First to Invent”?

I am sure the title of the post must be really annoying because it goes without saying that the Indian Patents Act follows the “first to file” rule...or does it?

One of the things that a litigator’s training teaches you is that, no matter how pedantic it may seem, interpretation of the law must not be based on what people think or assume, but must be solidly grounded in what the statute says, which is further backed by logic and common sense.

Obviously I don’t mean even absurdities which are supported by the letter of the law must be taken seriously. What I mean is that the letter of the law must be given its due, and the enquiry must begin with the wording of the provision, as opposed to a pre-conceived notion of what we think the law is, or ought to be. At least this is how one must approach a legislation from a litigation perspective.

If I had to apply this proposition to the issue at hand, I ought to look at Section 6 of the Act before I make up mind on the position of Indian law:

6. Persons entitled to apply for patents
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,—
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

Section 6 governs the entitlement of a person to file an application for a patent. The provision says that “any person claiming to be the true and first inventor of the invention” may file an application for a patent. The provision uses both “true” and “first”, in that order. This means the person must have invented the invention by himself (or by themselves in case there are several inventors) without being “inspired” by the efforts of another person.  

The second condition is that the person must also be the “first one to truly invent” the invention. Nowhere does the provision seem to convey a “first to file” rule. Given this, where do we get the conclusion from that India follows a “first to file rule” when the emphasis is clearly on the first person to truly invent the invention?

Merely because a person files an application for a patent “claiming to be the true and first inventor”, does it follow that his claim is irrebuttable? Since the requirements under Section 6 are conjunctive and hence two-fold i.e. “true and first”, even if the person’s claim of being the true inventor is in fact true, it is possible that he may not be the first inventor. It is only his belief that he is the first inventor because to the best of his knowledge no one seems to have published the invention in public domain or has filed for a patent.

Be that as it may, his belief could be misplaced, and it might be possible for another person to prove that he (the other person) is not only the true inventor, but was also the first one to invent the invention. If so, does the Act provide for a remedy which could be invoked to prove “true and first inventorship”?

To the best my knowledge and belief, there is no such provision in Section 25(1) or (2) because both refer to an invention which has been “wrongfully obtained”, which is also dealt with under Section 64(1)(c).

However, Section 64(1)(b) refers to “entitlement to apply for a patent”, which in my opinion is a reference to Section 6. If that be so, it follows that “true and first inventorship” is also a legitimate ground that may raised under Section 64(1)(b).

The policy argument that could be used to support this interpretation is that if the true and first inventor does not wish to file for a patent, and instead wishes to throw it open for the public’s consumption, why should another person be granted a patent merely because he is the “first to file”? In other words, why should the public be saddled with the grant of a patent, when the “true and first inventor” wishes to freely share his invention with the public?

I am sure some of us might be tempted to fall back on travaux preparatoires i.e. legislative debates on amendments and the like, to support to the “first to file” position. However, the rule of statutory interpretation is pretty straightforward- Do Not Rely On External Material if there is no ambiguity in the wording of the provision.

To my mind, Section 6 does not exhibit or succumb to ambiguity. Its emphasis is clear- “true and first inventorship”

Comments and corrections are welcome!

Thursday, April 19, 2012

Snippet: Information Technology Intermediary Guidelines to be Reviewed

On April 24, 2012, the Upper House of the Indian Parliament, the Rajya Sabha, may consider a motion to repeal the Intermediary Rules under the Information Technology Act, which were notified last April.

It appears that most of the members of the Opposition share the view that the Rules pose an unreasonable restriction on the freedom of expression, besides being unduly harsh on intermediaries. NASSCOM too seems to be of the same opinion.

The Internet and Mobile Association of India (IMAI) appears to have written to the Minister for Communications expressing their concerns on the vagueness of the Rules. Mr.Subho Ray of IMAI reportedly has said:

“We have asked them to clarify what exactly we are expected to do in 36 hours of receiving a take-down notice and also, who can send such a notice. Everybody can't be an affected party”

We will keep an eye on the developments and keep our readers posted.

Sunday, April 15, 2012

Snippet: Delhi High Court Applies Information Technology Intermediary Guidelines

In a decision delivered on March 30, 2012, the Delhi High Court invoked Rule 3 of the Information Technology (Intermediaries Guidelines) Rules, 2011 in a suit for defamation filed by spiritual teacher Nirmaljit Singh Narula, also known as “Nirmal Baba” against a website Hubpages.com, and one of its anonymous writers/”hubbers”. 

Reportedly, an article was written by the anonymous hubber on the site against Nirmal Baba titled “Is Nirmal Baba a Fraud?” Despite being served by a legal notice, Hubpages did not remove the allegedly defamatory content, which the Court held as being violative of the Intermediary Rules.

Besides issuing a temporary injunction against the website and the hubber, the Court directed that the Registry wherein the website is registered, shall block access to the site if the site did not take down the allegedly defamatory content within 36 hours of the order being passed. The Court further ordered the website to disclose the identity of the anonymous hubber.

In my limited knowledge, this appears to be one of the few cases where the Intermediary Rules have been applied by a Court since their notification last year.

Monday, April 9, 2012

A Twist In the Rectification Tale?

In consequence to my last post on rectification of trade marks, a senior and friend, who has prolific experience in the area, had an engaging discussion with me on the issue. For someone who has a different take and reads the law crystal clear, he brought to attention certain aspects, that to my mind, bring a twist in the tale!

Undoubtedly, rectification petitions, are an opportunity to correct certain errors or defects that may be on the Register with respect to a mark. The provision also allows for removal. However, can the provision be read so broadly as to override all authority and prudence that the Trade Marks Registry exercises while examining a mark?

To my mind, the answer is a May Be Not. The Trade Marks Registry, being a quasi judicial body, does the first round of screening by raising objections under Sections 9 and 11 of the Act. To remind ourselves, Section 9 deals in Absolute grounds for refusal while Section 11 deals in relative grounds for refusal, i.e. cases that cover deceptively similar marks.

If one were to look at the language of Section 57, the section allows “any person”. In this view, it would also allow, commoners like you and me to move a petition. This should be acceptable, since there are grounds under Section 9 that may impact one’s sentiments, such as the ground disallowing marks that are offensive to religious sentiments to be registered.

Perhaps in the Rhizome Judgment discussed, the overriding of the Authority of the Registry is what the Judge aimed to emphasize on. But what if one would really want to challenge the registrability of a mark on either of these two grounds? Could one merely adduce these on the basis of common law, without statutory backing? May be!

I have been thinking of this issue for some time now, but have not been able to find the light. On one hand, it appears that the opposition is aimed at creating a market place where competitors exercise diligence. On the other hand, what if an individual or small scale proprietor, without registered trademark rights, but perhaps long enough existence and repute, miss the opportunity to oppose?

I believe that this twist will need substantial research. I hope some trade mark practioners here, in the meanwhile, will render their valuable inputs.