Difference between Passing Off Cases and Infringement Cases

CASES

In Corn Products case it was observed that the principle of similarity could not to be very rigidly applied and that if it could be prima facie shown that there was a dishonest intention on the part of the defendant in passing off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to court was not a ground to defeat the case of the plaintiff. It bears reiteration that the word ``Glucon-D'` and its packaging had been used by Glaxo since 1940 whereas the word ``Glucose-D'` had been used for the first time in the year 1989.

Dishonest intention can be proved by they use “extra dark” on their packaging and “dark plus” on the pencil”.

In Cadila Health Care case, it has also been held that in the case of a passing-off action the similarities rather than the dissimilarities have to be taken note of by the court.

Trade Dress Cases

A.V. Rajadurai Nadar v. Ayya Nadar and another wherein it was held that the expression 'deceptively similar' as defined in S.2(d) means that the similarity or resemblance must be such as it would be likely to deceive or cause confusion. Any conclusion reasonable and proper can be arrived at by a meticulous examination of each detail and then making a comparison. At the same time what mainly strikes the eye must also be conducive. But, when one looks at it, especially from the standpoint of a person who is most likely to use a particular brand of matches, if it appears that the distinction is prominent and it cannot lead to any similarity or a deceptive similarity or confusion then there could be no objection to the two different trade marks.

J. and P. Coats Ltd. v. Chadha & Company(India) PTC Supp(1) 295 Del(DB), where colour of rival boxes was similar, the following view was taken:-

"Marks, it must never be forgotten, are remembered rather by general impression or by some significant details than by any photographic recollection of the whole. Keeping in view the main idea, the essential feature or the leading characteristic represented by each one of the two rival marks, we feel that those who use the thread may well be expected to distinguish between the two figures of 'dog' and "anchor" and if they happen to be literate, they can easily distinguish one from the other. It is no doubt true that the colour of the boxes is very much similar, but then that is not conclusive nor is that the domination or the leading characteristic."

Vicco Laboratories Bombay v. Hindustan Rimmer, Delhi case also the plaintiffs were selling their goods with descriptive get up and colour scheme for long in 1995 while the defendants started selling their products in 1997 in the cartons which appeared to be copies of the entire get up and the colour scheme adopted by the plaintiff. It was held to be a case of passing off and fit for injuncting the defendants. The foreign decisions relied upon by Mr. Sibal on the concept of trade dress encompassing colour combination, get up and lay out inspite of there being no similarity in the trade name are as under:-

(i) White Hudson & Company Limited v. Asian Organization Limited 1965 RPC 144. In this case the plaintiffs sold their cough sweets in Singapore since 1953. The sweets were sold loose in orange colored cellophane wrappers on which was printed the word "Hacks" in Roman characters only. In March, 1958 the defendants entered the same market with cough sweets in a white cellophane wrapper. But in May of that year they went over to using an orange wrapper similar to the plaintiffs' but bearing the word "Pecto". The plaintiffs brought an action to restrain passing off. The trial judge found that no other wrapper cough sweets had been sold loose, that the sweets were called by the local population "red paper cough sweets", that the plaintiffs' get-up had become distinctive of their goods, that the get-up of the defendants' sweets resembled the plaintiffs' to such an extent as to lead to confusion, that the difference in the names printed on the wrappers was not sufficient to distinguish the goods in the eyes of a purchasing public largely unable to read English, and that passing-off had therefore been established.
(2) Colgate Palmolive Company And ... vs Anchor Health And Beauty Care Pvt. ... on 29 October, 2003
Words "Colgate" and "Anchor" are distinct and have not an iota of similarities either in look or in sound. That is why the ingredients of trade dress, get up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. This criteria flows from the concept of action of passing off developed over the years that it is the similarities and not the dissimilarities which go to determine whether the action for passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing off.
Upshot of aforesaid discussion leads to the most ineluctable conclusion that the plaintiffs have successfully established a prima facie case for injunction the defendant from using the colour combination of red and white in that order as trade dress on the container and packaging. As a consequence the application is allowed and defendants are, by way of ad interim injunction, restrained from using the colour combination of red and white in that order on the container/packaging of its goods viz. the "Tooth Powder".

REVIEW POWER of Intellectual Property Appellate Board

Intellectual Property Appellate Board (Procedure) Rules, 2003

Rule 23: Review petitions.- (1) A petition in triplicate for review of an order of the Appellate Board may be made to the Registry in the prescribed Form 6 under these rules within two months from the date on which the order is communicated accompanied by a statement setting forth the grounds on which the review is sought. Where the order in question concerns more than one respondent, sufficient extra copies of such petition and statement shall be filed.

(2) The Registry shall forward the petition and statement to the respondents to the review petition.

(3) The respondents may file counter statement in Form 1 under these rules within two months from the date of receipt of the review petition and shall forward a copy of the counter statement to the petitioner directly under intimation to the Registry.

(4) The review petition shall be posted for hearing before a Bench by the Chairman.

Judgments

In Grindlays Bank v. Central Government
the Court was required to consider, inter alia whether the Labour Tribunal had any jurisdiction to set aside the ex-parte award particularly when it was based on evidence. The objection as to the jurisdiction of the Tribunal, raised before the Court was in the following terms:
It is contended that neither the Act nor the Rules framed there under confer any powers upon the Tribunal to set aside an ex parte award. It is urged that the award although ex parte, was an adjudication on merits as it was based on evidence led by the appellant, and, therefore, the application made by respondent No. 3 was in reality an application for review and not a mere application for setting aside an ex parte award.

The Supreme Court held as follows:

It is true that there is no express provision in the Act or the rules framed thereunder giving the Tribunal jurisdiction to do so. But it is a well known rule of statutory construction that a Tribunal or body should be considered to be endowed with such ancilliary or incidental powers as are necessary to discharge its functions effectively for the purpose of doing justice between the parties. In a case of this nature, we are of the view that the Tribunal should be considered as invested with such incidental or ancillary powers unless there is any indication in the statute to the contrary. We do not find any such statutory prohibition.

The expression, 'review', it was held by the Supreme Court, in the above case is used in two distinct senses, namely "(1) a procedural review which is either inherent or implied in a Court or Tribunal to set aside a palpably erroneous order passed under a misapprehension by it, and (2) a review on merits when the error sought to be corrected is one of law and is apparent on the face of the record".

Patel Narshi Thakershi v. Pradyuman singh ji

It was further held, that it is in the latter sense that the Supreme Court in Patel Narshi Thakershi v. Pradyumansinghji held that no review lies on merits unless a statute specifically provides for it. It was also held that when a review is sought due to a procedural defect, the inadvertent error committed by the Tribunal must be corrected ex debito justitiae to prevent the abuse of its process, and such powers inheres in every Court or Tribunal.

Godrej Sara Lee Ltd., A Company ... vs Reckitt Benckiser (India) Ltd. on 15 February, 2008

Shri A.K. Gupta learned senior counsel, however, drew our attention to Rule 23 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 which lays down that a petition in triplicate may be made to the Registry in the prescribed Form-6 under these Rules within two months from the date on which the order is communicated, accompanied by a statement setting forth the grounds on which the review is sought. That Rule itself does not confer power on this Board to review its own orders or decisions. The rule merely prescribes the form in which an application for review may be made. The rule may be contrasted with Section 127(c) of the Act. That provision deals with powers of registrar and based upon that the Registrar may on an application made in the prescribed manner 'review its own decision'. There is no such corresponding provision either under the Act or the Rules framed thereunder conferring power on the IPAB to review its orders or decisions.

We are, therefore, of the view that this Board has no jurisdiction or power to review its own orders and decisions except due to procedural defect or inadvertent error which may require correction ex debito justitiae. The instant petition filed for review on merits, in our opinion is, therefore, not maintainable. It is accordingly dismissed without going into the merits of the contentions raised.

Union of Bank of India v. Chanderkant Gordhandas Shah (1994) 6 SCC 271,

 it is submitted that the High Court exercising jurisdiction under Article 226 of the Constitution will not re-examine factual disputes or the evidence and sit in appeal over the concurrent findings of the AR or the IPAB. The scope of the powers of the judicial review were limited to correcting errors of law or procedural errors leading to manifest injustice or violation of principles of natural justice.

On a conspectus of case law, it becomes quite evident that a Court or Tribunal cannot review its own order or Judgment unless there is a statutory provision providing for the same. However, a Court or Tribunal has inherent powers to recall orders obtained by practising fraud on it. There is no question of the Court becoming functus officio, because it retains the jurisdiction to recall such orders. It inheres in a Court or Tribunal to review by recalling the orders on grounds of fraud, misrepresentation or other similar grounds. We may, however, make it clear that the decision of the Division Bench in K.B.G. Tilak v. Spl. Tahsildar (1978) 2 APLJ (HC) 83) is confined to a case of reopening in a case where either it was dismissed for default or a decision was rendered exparte. This decision, as it is peculiarly confined to the facts and circumstances thereof, cannot, therefore, be of any assistance in so far as the case on hand is concerned. We, therefore, reiterate that a Court or Tribunal can review its own order or judgement only where the party, by way of mis-representation, has played fraud upon the Court and not in other cases.”

IN P.P. Buildwell Pvt. Ltd. Vs. P.P.Jewellers Private Ltd.,

Following the decisions of the Supreme Court in Grindlays Bank’s case and the Division Bench of the Andhra Pradesh case we are of the view that if there is nothing provided in the statute the court or the Tribunal will have no powers to deal with the matter. In the interest of justice, it could be done if there is an error due to a procedural defect that definitely could be rectified. In view of the above, we do not find any procedural defect in the instant case to review the same.

Champagne Moet & Chandon vs Union Of India & Ors on 19 September, 2011

It is worth noting, while exercising the power of judicial review under Article 226 of the Constitution of India it cannot be converted into an appeal. The judicial review is directed not against the decision but is confined to the examination of the decision making process. If the reasons ascribed by the authorities or the IPAB are manifestly unreasonable that no reasonable authority entrusted with the power in question would reasonably made such a decision, the concept of judicial review gets attracted.

 

Bunge Agribusiness India (P) Ltd. vs Registrar Of Trade Marks And Anr. on 3 December, 2004
The main contention of the learned Counsel for the appellant is that the Deputy Registrar by his earlier order allowed the opposition filed by the appellant by upholding all the objections raised by the appellant under Sections 9, 11(a), 12(1) and 18(1) of the said Act. The Review Petition has been filed only on the ground that the original documents were not filed at the time of hearing of the application and second respondent having got the possession of the original documents wants to produce the same by way of additional evidence and on the basis of those documents, the matter can be reviewed. The impugned order of the Deputy Registrar does not disclose the particulars of any original document of the second respondent. The earlier order has been reviewed only on the basis that the mark is a common dictionary word and as such, the appellant cannot claim monopolistic rights. Further, the Deputy Registrar has found that the goods of the second respondent have nothing to do with the goods of the appellant as both are different and consequently the Deputy Registrar had observed that there is no need for any detailed discussion and allowed the Review Petition. The impugned order is contrary to law as the grounds made out in the Review Petition were not the issues discussed by Deputy Registrar in his impugned order. Further, it was contented that the review can be done only to correct the mistake and not otherwise.
6. We find some force in the contention of the learned Counsel for the appellant. As stated already, by order dated 26.2.1993, the Deputy Registrar upheld the opposition of the appellant finding that the second respondent's trademark offends Sections 12(1), 9, 11(a) as well as 18(1) of the said Act. In the Review Petition, the Deputy Registrar was persuaded to review the earlier order only on the ground that the second respondent could not produce the material evidence, which is very clear from the following passage of the order of the Deputy Registrar in his order dated 19.10.1993:
The discovery of evidence by the applicants is an important law point. This evident was not present in the Trade Marks Registry when order dated 26.2.1993 was passed by the Ld. Deputy Registrar of Trade Marks. Now, by exercise of due diligence the evidence in original has been made available to the Trade Marks Registry. Had this evidence been filed prior to order dated 26.2.1993 the fate of this case could have been altered. The grounds of the review petition are reasonable, convincing and relevant. Hence, it is a fit case to allow the said Review Petition.

COPYRIGHT: Microfibres Inc. vs. Girdhar & Co., & Anr.

 

The Plaintiff was stated to be engaged worldwide in the business of manufacturing, marketing, selling and exporting of upholstery fabrics directly or through its subsidiaries and affiliates. It claimed that on all its upholstery fabrics n are printed unique and original artistic works conceptualized and drawn by and on behalf of the Plaintiff.  The Plaintiff claimed that its artistic works enjoyed copyright protection in India as a consequence of the Berne and the Universal Copyright Conventions (India and the U.S. being members of the Conventions).  The upholstery fabrics manufactured and sold by the Defendants were stated to bear artistic works which were identical or colorable imitations of the Plaintiff’s  artistic works and thus constituted infringement of its copyright therein. 

In defence, the Defendants submitted:

(i) the Plaintiff’s artistic works were actually designs relating to textile  products which were aesthetic, ornamental and visual in nature  and thus came within the scope of the Designs Act, 2000;

(ii) the Plaintiff had failed to register these designs under the Designs  Act, 2000 or under its predecessor Act and, therefore, could not  claim protection under the Copyright Act;

(iii) the Plaintiff was itself conscious of the fact that registration was  required under the Designs Act since it had registered some of its  upholstery designs in the U.K. under the local Designs Act;

(iv) the certificates relied upon  and issued by the United States  Copyright Office referred to the subject work as fabric designs and  not artistic works;

(v) the Indian Patent and Design Office confirmed in writing that the  subject works were register able and being registered under the

Designs Act, 2000.

In rejoinder, the Plaintiff pointed out that the definition of “design” under the  new Designs Act, 2000 specifically excluded artistic works  and thus did not apply to its artistic works within the meaning of the Copyright Act, 1957.  In  other words, the Plaintiff argued that its upholstery fabric designs could not  have been registered under the Designs Act, 2000 by virtue of the exclusion of  artistic works and thus entitled to copyright protection under the Copyright Act.

Consequently, it was stated that the defence under Section 15 of the Copyright

Act did not apply. 

On its part, the Defendants submitted:

(i) that the interpretation advanced by the Plaintiff would have the  effect of rendering the law of  designs redundant for the simple  reason that each design registered thereunder would be able to  trace its origin to a diagram, chart, drawing and thus cease to be governed by the Designs Act;

 (ii) this could not have been the legislative intent  because the law of  designs is based on the same principle as that applicable to other  monopolies and to fuel industrial innovativeness by granting limited time limit to the monopolies and allow others to make use of them after they have passed into the public domain;

(iii) the plea of the Plaintiff, if accepted, would be anti competitive and would throttle and stagnate the industry;

(iv) that the legislative intent behind the repealed Designs Act, 1911 and that under the Designs Act, 2000 remained the same and the  exclusion of “artistic works” in the new definition was only clarificatory and intended to  exclude artistic works pure and  simple such as paintings, sculptures and works of art;

(v) the statement of objects and reasons of the Designs Bill, 1999 provided that the intent was to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentives for design activities while removing impediments to the very use of available designs;

(vi) the proceedings from the Parliamentary debate also showed that the Act was being amended to provide help and protecting the rights of designers;

(vii) the hand book issued by the Design Office for information to the public also specifically stated;

 “What can be registered as a Design?

- To qualify for registration as a design, an article should relate to the ornamental or new shape, surface pattern, lines or colour with aesthetic look  (designs or industrial plans,  layouts or installation are not registerable).

- It should be applicable to any product reproducible by industrial means (Paintings / Sculptures and ‘works of art’ excluded).

Finding merit in the defence raised by the Defendants, the High Court of Delhi dismissed the Plaintiff’s suit for injunction, holding: “in order for the work of the Plaintiff to qualify as an “artistic works”, it must fall within the definition of sub section (c ) of Section 2 of the Copyright Act. A reading of the said provisions would show that attempt of the Plaintiff can only be to bring it within the concept of “painting.”  The comparison with the paintings of M.F. Hussain would be otiose as the work in question, in the present case, is not a piece of art in the form of a painting. There is no doubt that labour has been put and there is some innovativeness applied to put a particular configuration in place.  Such configuration is of the motifs and designs which by themselves would not be original.  The originality is being claimed on the basis of the arrangements made.  What cannot be lost sight of is the very object with which such arrangements or works had been made.  The object is to put them to industrial use.   An industrial process has to be done to apply the work or configuration to the textile.  It is not something which has to be framed and put on the wall or would have any utility by itself.  The two important aspects are the object with which it is made (which is industrial) and its inability to stand by itself as a piece of art.  In fact, it has no independent existence of itself. In India, we have special legislation governing the protection of different nature of rights.  Insofar as the industrial designs are concerned, the protection is provided under the Designs Act, 2000…..An important and relevant aspect is that both under  the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of design protection by inclusion as a  specific class in the Rules framed

under the Acts…

Furthermore, the legislative intent is also to be kept in mind which is to provide protection for a certain period of time for commercial exploitation.  Thus, nature of protection is quite different for an artistic work under the Copyright Act which is for the life time of the author / creator + 60 years.  This is not so in the case of commercial exploitation as under the Designs Act and the Patent Act, the period is much lesser.  In the present case, the configuration was made only with the object of putting it to industrial /commercial use.”

In view of the above findings, the High Court of Delhi dismissed the suit.

No Res Judicata on Adverse Finding in Previous Cases

In Midnapur Zamindari Co. Ltd. vs. Naresh Narayan Roy, it was observed as under:- "Their Lordships do not consider that this will be found an actual plea of res judicata, for the defendants, having succeeded on the other plea, had no occasion to go further as to the finding against them: but it is the finding of a court which was dealing with facts nearer to their ken than the facts are to the Board now, and it certainly creates a paramount duty on the appellants to displace the finding, a duty which they have now been able to perform."

In Devaki Amma and others v. K.P. Sreedharan, referred to the earlier decision of the same High Court in Cherian v. Kochuvareed, which observed as follows:

"If a High Court remands a case to the lower court, the matters finally disposed of by the order of remand cannot, any of them, be re-opened when the case comes back from the lower court but, if at the time of remand, no final decision is given on a point, though some observations only are made in respect of it, it is open to another Bench, a court of coordinate jurisdiction, when finally determining the case, to come to its own conclusions on it, and that even in a case decided by the first court of appeal other than a case, decided by the High Court, if a Judge on appeal decides certain points and remands the case, his decision is binding on his successor, before whom the case comes up again from the judgment after remand because such a court is a court of coordinate jurisdiction, and, therefore, he cannot go behind the earlier final decision of his predecessor before remand."

In paragraph 11, it is stated as follows:

"The test, therefore, in such a case, to ascertain if a particular finding given by the Judge on appeal is a final decision, or not is to find out, if, by the order of remand, the Judge on appeal has remanded the suit for determination of all the points at issue, or, it has determined some points in controversy, and remanded the suit for determination of the remaining points, which may include the question of maintainability of the plaintiffs' suit itself, in which case the decree of the first court has to be set aside, and, the suit remitted to the court below for a fresh decision of the case according to law. If therefore a final decision is rendered on any point in the order of remand which could have been appealed against, that decision is binding on the parties and is not open to challenge before the same court or even before a superior court in a subsequent appeal. If however no final decision is given but only some observations made on any point, Section 105(2) does not bar consideration of that point in the subsequent stages of the proceeding. The test therefore is whether there is a final decision on any particular point".

From the above survey, the following broad legal principles emerge: (a) An appeal is a creature of statute. Unless statutory conditions are fulfilled, a court of justice has no jurisdiction to entertain an appeal. (b) If the statute prohibits, the court has no jurisdiction to entertain an appeal. (c) A successful party has no right of appeal against a finding against him. Such a decision will not operate as res judicata in a subsequent suit. (d) A question decided and a finding recorded against a losing party will operate as res judicata against him if not challenged by him. (e) A remand order conclusively deciding the rights of parties is a decree within the meaning of Clause (2) of Section 2 of the Code of Civil Procedure and hence appealable. If not appealed against it will operate as res judicata. If the appellate court purports to act under Order 41, Rule 23, CPC an order of remand is appealable. (f) The grounds available to an appellant in such appeals against findings are those which would be available to him in a second appeal. (g) In appeals against orders of remand, the findings of fact other than those relating to the order of remand, cannot be pressed into service. (h) If findings on orders of remand are not appealed against, they will become final and the party aggrieved will be precluded from disputing their correctness. R. Maria Siluvai vs B. Sreekumari Amma And Three ... on 16 December, 1997

Ram Niwas And Ors. vs Shiksha Prasar Samiti Ratangarh ... on 7 November, 2000

Para 13. Having considered the contentions raised by the learned counsel for the appellants, I am of the opinion that in the first instance the finding recorded by the trial court that principle of res judicata cannot be applied to this case does not appear to be correct. It is true that ordinarily a finding recorded against a successful party who has no opportunity to challenge that finding in the appeal does not bind him and such a finding does not operate as res judicata for him in the subsequent litigation but this rule is not without exception and cannot be applied with a straight jacket mind. The principle is well established through a large number of decisions that generally an adverse finding against a defendant in a decree of dismissal of suit would not operate res judicata but it is equally well settled that where such an adverse finding form fundamental part of the decree itself, it operates as res judicata in spite of the fact that the decree is one of dismissal.

Muthiya Pillai vs Ramalingam on 17 December, 2009

Firstly, it is found that there was no finding that the suit properties were the joint family properties in A.S.No.37 of 1996. Secondly, it is found that the said appeal, in fact, ended in favour of the plaintiff herein. Even assuming for the sake of argument that there was some adverse finding as against the plaintiff, the plaintiff, who went on appeal, cannot prefer any appeal as against the mere finding in the said judgment. In view of the above facts and circumstances, I find that the principle of res judicata will not operate in this case.

Venkatachala Padoyachi and Ors. v. Velayudha Padayachi A.I.R. 1935 Mad. 701, where Venkatasubba Rao, J., sitting alone held as follows: An adverse finding against a successful party in a suit on one issue cannot operate as res judicata so as to bind him in a subsequent suit, for he could not have appealed against that finding, the decree having been in his favour.

The  Chief Court in Pateshwari Din v. Mahant Sarju Doss, AIR 1938 Oudh 18 : 1937 OWN 1127 held that where a decree in previous suit is wholly in favour of a person and gives him all the reliefs sought for by him, he has no right of appeal against the decree so as to enable him to contest any adverse finding against him in such suit. Hence, such adverse finding cannot operate as res judicata as against him in a subsequent suit".

In Chandrika Singh v. Chokhe Singh, AIR 1930 Oudh 124, the finding was against the party who was successful. He had no right of appeal. It was held that it would not operate as res judicata. Following the latter decision, in Pateshwari Din v. Mahant Sarju Doss, AIR 1938 Oudh 18 it was held that where a decree in a previous suit is wholly in favour of a person and gives him all the reliefs sought for by him, he has no right of appeal against the decree so as to enable him to contest any adverse finding against him in such suit. Such decision cannot operate as res judicata as against him in a subsequent suit".

In Banarasi Sah. v. Bhagwanlal Sah, AIR 1977 Pat 206, it was held that where a decree is absolutely in favour of a party but some issues are found against him. he has no right of appeal against the decree and plea of res Judicata cannot be founded on adverse decision against him because he had no occasion to go in appeal.

Zamlndart Company Ltd, v. Naresh Ranjan Roy, AIR 1922 PC 241 ; Sri Pal v. Swami Nath, AIR 1968 All 282 ; Smt. Tarabai Mohata v. Union of India, AIR 1971 Col 225 ; Mathura Bai v. Ram Krishna Bhaskar Barve, AIR 1961 Bom 97 ; Sukhani v. Sukhbasi, AIR 1967 All 423, it was reiterated that when a party succeeds in a suit or appeal, an adverse finding against him cannot be the basis of a plea of res Judicata, for having succeeded he had no occasion to prefer an appeal. In Commissioner for the Port of Calcutta v. Bhairadinram Durga Prasad, AIR 1961 Col 39 (FB), it was held that such a party has no right of appeal when a suit is dismissed on a finding that the plaintiff had no right to sue, an adverse finding against the defendant Is not res Judicata, as was held in Markanda Mohapatra v. Varada Kameshwar Rao Naidu. AIR 1949 Pat 197.

Overlaping of Section 15 of Copyright Act and Designs Act

CASES

1.    William Grant & Sons Ltd. vs Mcdowell & Compay Ltd. on 27 May, 1994. 
   
     It follows further that in view of the fact that the plaintiff's label is a mark within the meaning of the Trade & Merchandise Marks Act, Section 15 of the Copyright Act can have no application to the label in question, for the reasons that the same is not an article. The label is permanently affixed on the bottle. It is not sold as an article. Nor is it intended to be sold as anarticle. The sole purpose of the plaintiff's label is to show that the Glenfiddich whisky which is a Single Malt Whisky, which is "Special Old Reserve", is manufactured by William Grant & Sons Ltd., the plaintiff. In this view of the matter, it cannot be said that because of section 5 of the Copyright Act, the copyright of the plaintiff in the label would cease to be, once more than 50 impressions of the label are made. 

2.    Fabric designs covered under designs Act (section 15(2) will apply)

As far as the defendants' arguments on the question of the copyright protection in this case, not being available due to provisions of Section 15 of the Act, and provisions of the Designs Act are concerned, it would be appropriate to set out the observations in Microfibres (supra): ‚In India, we have special legislations governing the protection of different nature of rights. Insofar as the industrial designs are concerned, the protection is provided under the Designs Act, 2000, which came into force from May, 2001 and repealed the earlier Designs Act, 1911. An important and relevant aspect is that both under the old Act and the new Act, fabric designs on textile goods have been classified as proper subject matter of IA NO.2352/2008 IN CS (OS) 344/2008 Page 19 design protection by inclusion as a specific class in the Rules framed under the Acts. In the Designs Act of 1911, Classes 13 and 14 of the Fourth Schedule of the Rules dealt with printed or woven designs of textile goods other than checks and stripes and checks and stripes respectively. Such protection is now provided under Class 5 of the new Design Rules of 2001.

3.       However, there can be no quarrel with the plea of Shri Ramachandran that the operation of Section 15(2) of the Copyright Act does not exclude from the ambit of Copyright protection either the original "artistic work" upon which the design is based or the design which by itself is an artistic work. It cannot be disputed that the original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c).

This clearly shows that the legislature intended that even if the artistic work such as a painting has been used as the basis for designing an industrially produced object for commerce, such as the furnishing in the present case, nevertheless the original painting would indeed enjoy full copyright protection, while the result of the industrial application of such painting, namely, the design used in the industrial production of the ultimate product shall enjoy lesser period of protection as stipulated under the Designs Act provided it is registered as a design under the Designs Act. Thus, we are of the view that an original artistic work initially acquires protection under the Copyright Act as an 'artistic work' or else the protection under the Designs Act qua the product created from the artistic work when industrially applied."Servewell Products Pvt Ltd & Anr vs Dolphin on 9 April, 2010

4.       Rajesh Masrani vs Tahiliani Design Pvt. Ltd on 28 November, 2008,

It is alleged that the drawings which are made in the course of developing the garments and accessories by the plaintiff are artistic works under Section 2(c)(i) of the Copyright Act, 1957. The patterns printed or embroidered on the fabric are also artistic works in their own right and are developed by the plaintiff. The garments or accessories themselves are works of artistic craftsmanship under Section 2(c)(iii) of the Act, while the patterns printed or embroidered on the fabric are also artistic works in++ their own right. The Plaintiff does its creative work on computers and claims to be the author under Section 2(d) (vi) of the Copyright Act. The Plaintiff claims to be the first owner of Copyright in all the products of the company under Section 17(c) of the Copyright Act.

It seems to me, going backwards in the order of the claims, that the Plaintiffs must succeed on the ground of infringement of copyright. The Plaintiffs? design was an artistic work within the meaning of the Copyright Act and it has been copied, there is no doubt about it at all. The small differences that have been introduced on behalf of the Defendants do not make any substantial difference: substantially, in the words of Sec. 49 of the Copyright Act, 1956, the Plaintiffs? work has been reproduced on behalf of the Defendants and, therefore, it seems to be quite plain that there has been an infringement of the Plaintiffs? copyright in their picture, which is quite an artistic picture within its limitations, and the Plaintiffs are entitled to succeed on that ground.

26. We are, therefore, of the opinion that the plaintiffs? work is entitled for protection under Section 2(c) of the copyright Act and is an original artistic work. Since the work is an ?artistic work? which is not covered under Section 2(d) of the Designs Act,2000, it is not capable of being registered under the Designs Act and the provisions of Section 15(2) is not applicable.

5. A. F. Products v. A. B. Works, . It was held in this case that a design is

necessarily part and parcel of the article manufactured while a trade mark is necessarily not so. Thus the label to be put on a carton to be used as a container for the goods can never amount to design within the meaning of Section 2(5) of the Designs Act. Section 15(2) of the Copyright Act, 1957 has no application to this case. No such contention is raised in any of the affidavits filed on behalf of the defendant.

The defence raised by the defendants under Section 15 of the Copyright Act has certainly to be considered at the time of trial. That cannot be rejected off-hand as a frivolous ground. Learned Counsel for the appellant attempted to argue that Section 15 of the Copyright Act would apply only to designs on the article itself and not to designs on the package. That is a question of law turning on the interpretation of Section 15 of the Copy Right Act and the provisions of the Designs Act. That is not a matter which can be decided at the interlocutory stage. In fact, we directed learned Counsel for the appellant not to argue the question raised by the defendants under Section 15 of the Copy Right Act.

7. Warner Brothers v. Roadrunner 1988 FSR 292 however, if the intended industrial use of the work was contemporaneous with its coming into existence, Section 15 of the Copyright Act would apply. I may hasten to clarify that it is not suggested that if any design is registered, copyright under no circumstance exist in the drawings. Section 15 lays down that on registration of a design under the Designs Act, the copyright shall not subsist in that design and not in the drawings. Therefore, it is possible that when the moulded plastic article of novel shape is made from a working drawing, as in the instant case, the drawing may qualify as an original work entitled to copyright protection and, at the same time, a registered design for the shape of the article would be protected under the Designs Act. If an unauthorized copy is made of the article, it may constitute an indirect copy of the drawing and therefore may infringe the copyright.

8. So labels cannot be registered as Designs under Designs Act 2000.

There is no need to stick or affix the design to the article. Applying a design to produce an article or a machine means using the design as a model or pattern to be multiplied by an industrial process. A design applicable to a thing for its shape can only be applied to the thing by making it in that shape or pattern. When a design is applied to an article it means that the characteristic features e.g. shape, configuration, lines, etc. are reproduced in conformity with the model design. It is a naive argument submitted by the respondent that application means sticking the paper on which the design is printed. It has no logic and if accepted would make the whole provision namely Section 15(2) nugatory and worthless. Such an interpretation being contrary to all canons of interpretation cannot be adopted. Accurate Transheat Pvt. Ltd. vs Devendra Somabhai Naik on 4 June, 2004

Order 41 rule 22 cannot apply on appeal and writ petition (Successful Party)

Jabalpur Development Authority vs Y.S. Sachan And Ors. on 12 February, 2004

The question that falls for consideration before the Full Bench is framed thus:-

"Under Order 41, Rule 22 of the Code of Civil Procedure there is a specific provision for the filing of cross-objections. These provisions admittedly apply to all appeals filed under Clause 15 of the Letters Patent. So much so, against the judgment rendered by the learned Single Judge upon a first appeal when a Letters Patent Appeal is filed, in that Letters Patent Appeal, cross-objections could be filed by the respondent therein. We fail to see how and when the writ appeal also is filed under Clause 15 of the Letters Patent, the provisions of Order 41, Rule 22, Civil Procedure Code could be excluded, there is no rule in the Writ Proceedings Rules which can be said to be inconsistent with Order 41, Rule 22, Civil Procedure Code. In fact the rules are silent as to whether cross-objections could be filed or not. We may add that the Writ Proceedings Rules by themselves do not provide any remedy. They regulate the proceedings which may be instituted by virtue of some other provisions of substantive law, the writ petitions are filed under Article 226 of the Constitution and the writ appeals are filed under Clause 15 of the Letters Patent. It is to govern these proceedings that the writ proceedings Rules have been framed. This was necessity for the reason that in the Appellate Side Rules, there is no specific provision governing the writ petitions. Moreover, specific procedure had ' to be devised for regulating the petitions filed before this Court on the Original Side invoking the extra-ordinary jurisdiction of the High Court. The rules are procedural rules and do not confer or take away the substantive right of appeal or the right of filing of cross-objections.

On the other hand there is an express provision in Rule 24 that in relation to causes and matters coming up before the High Court on the original side or the appellate side, the provisions of the Code of Civil Procedure will govern. We therefore, fell no hesitation in holding that the writ appeal being a proceeding on the appellate side of the High Court and being a civil proceeding, the provisions of the Code of Civil Procedure would apply and Order 41, Rule 22, Civil Procedure Code which makes, a provision for the filing of cross-objections, would therefore, equally apply to a writ appeal. Consequently, the cross-objection, which in this case is termed as 'cross writ appeal' are maintainable. The mere fact that it has been numbered as an independent writ appeal does not affect to the character of the petition filed by the writ petitioner. The 'cross writ appeal' is accordingly treated as 'cross objections' under Order 41, Rule 22, Civil Procedure Code and the same having been filed before expiry of thirty days of the filing of the main Writ Appeal No. 967/82 no question of limitation arises. In objection as to maintainability of Writ Appeal No. 1093 of 82 is overruled."

Mangala D/O Dinkar Shankar ... vs Laxman Ganpat Jadhav on 19 September, 2007

Para8 “Whenever a party who is successful in getting a decree finds that there is an adverse finding recorded against the said party in the judgment, the said party cannot prefer an appeal challenging the decree. The remedy of such party to challenge those findings is by way of cross objection whenever the other party has filed an appeal challenging the decree. But if the other party has not filed the appeal then in that circumstances such findings cannot be challenged by the party like appellant. In the present matter the respondent-husband has not challenged the decree passed by the Family Court and therefore the objections to the findings as raised by the appellant cannot be entertained even by way of a cross objection or cross appeal. Therefore, we find that the appeal on that ground is not maintainable.”

Union Bank Employees Association vs Union Bank Of India on 6 August, 2001

6. The award of the Central Industrial Tribunal is in favour of the management and there was no occasion or necessity for the management to file a writ petition in this Court. I do not find any substance in the contention of the learned counsel for the petitioners that against the adverse findings given on a particular point though ultimately decision is in favour of the litigant still writ has to be filed. In case where the writ petition would have been filed by the respondent management challenging the finding of the Industrial Tribunal regarding the appointment of Ashok Kumar I have my own reservation whether it could have been admitted by the court. The management could not have filed any cross objection as the provisions of Code of the Civil Procedure are not applicable in the proceedings under Article 226 of the Constitution.

Keshab Narayan Banerjee vs Commissioner Of Income-Tax And ... on 28 August, 1998

“8. Sub-rule (1) of Rule 22 of Order 41, Civil Procedure Code, reads as under ;

"Any respondent, though he may not have appealed from any part of the decree, may not only support the decree but may also state that the finding against him in the court below in respect of any issue ought to have been in his favour; and may also take any cross-objection to the decree which he could have taken by way of appeal, provided he has filed such objection in the appellate court within one month from the date of service on him or his pleader of notice of the day fixed for hearing the appeal, or within such further time as the appellate court may see fit to allow."

9. Proceedings in a writ application filed under Article 226 of the Constitution and an appeal arising therefrom under Clause 15 of the Letters Patent strictly would not be civil proceedings in the sense that technically they are not governed by the provisions of the Code of Civil Procedure, yet they being in the nature of civil proceedings, the principles contained in Order 41, Rule 22 of the Civil Procedure Code, should apply in all Letters Patent appeals. After all a respondent who was partly successful in the writ proceedings should clearly decide whether to appeal against the unsuccessful part of the judgment of the learned single judge or to agitate in the appeal court the finding which may go against him. Such a partly successful respondent, therefore, can prefer its own appeal against that part of the judgment which goes against it or may, in the appeal of the writ petitioner decide to file cross-objection(s) in respect of the findings which have gone against him. If he does neither, it is still open to him to take recourse to the provision contained in Rule 22(1) of Order 41, Civil Procedure Code, and urge the court hearing the appeal that the finding against him by the learned single judge in respect of an issue ought to have been in his favour. This is the limited right made available under the amended Rule 22(1). This right, however, has to be exercised with clear limitation and a contingent condition that the ultimate result of the appeal shall not amount to upset the judgment of the learned single judge in so far as the nature and extent of the relief granted to the writ petitioner (appellant in the Letters Patent appeal) is concerned. A person, the respondent in the writ application, who does not choose to file appeal against the judgment of the learned single judge, even though a substantial part of such judgment goes against him, nor does he choose to file cross-objections in the appeal filed by the writ petitioner, cannot be permitted to urge the court to set at naught even that relief which was partially given to the writ petitioner by the learned single judge. Subject to such limitation and contingent condition, such a respondent may be allowed to assail a finding on an issue returned by the learned single judge which went against him. In the present case, as noticed, the Revenue has neither filed any appeal against the judgment of the learned single judge nor did it file any cross-objections in the appeal filed by the petitioner and yet it wanted to challenge the aforesaid two findings regarding the mode of service based on "refusal" and "affixation". If the respondent is allowed to challenge these two findings, or even one of them, and if the challenge is successful, the result would be that in the appeal we shall have to hold that the service of notice by "refusal mode" or "affixation mode", as the case may be, or by both of them was proper, and, if once we take that view, even the limited relief given by the learned single judge to the appellants would have to be set aside. The net result, therefore, would be that the appellant who filed the appeal against the part of the relief which was not given to him by the learned single judge would be deprived of even that part which was given to him, only because he came up in appeal against the unsuccessful part, even though the respondent did not prefer any appeal against any part of the judgment, successful or otherwise. We have no hesitation to hold that such a course of action, from the interpretation of Rule 22(1) is not permissible. We, therefore, did not permit Mr. Prasad to challenge these two findings under Rule 22(1). These two findings, therefore, in our view, have assumed finality and cannot be upset or disturbed by us in this appeal.”

S.K. Awasthy vs M.R. Bhope, Presiding Officer, ... on 29 January, 1993

The learned Counsel for Respondent No. 2 invited the attention of the Court to the provisions contained in Order 41, Rule 22 and Order 41, Rule 33 of the Code of Civil Procedure as and by way of analogy. Order 41, Rule 33, Code of Civil Procedure empowers the appellate Court to pass any order it deems fit even though the appeal is filed against part of the decree and no cross appeal or cross objections are filed by the respondents as more particularly set out therein. In my opinion, Order 41, Rule 33 or Order 41, Rule 22 of the Code of Civil Procedure cannot be applied to a writ petition by analogy. A writ petition is not an appeal. The jurisdiction and powers of Writ Court shall have to be ascertained independently of Order 41, Rule 22 or Order 41, Rule 33 of the Code of Civil Procedure. In one sense, powers of writ Court are wider and in another sense narrower.

Declaration on Free Access to Law

In October 2002 the meeting of LIIs in Montreal at the 4th Law via Internet Conference, made the following declaration as a joint statement of their philosophy of access to law. There were some further modifications of the Declaration at the Sydney meeting of LIIs in 2003 and at the Paris meeting in 2004.

Legal information institutes of the world, meeting in Montreal, declare that,

· Public legal information from all countries and international institutions is part of the common heritage of humanity. Maximising access to this information promotes justice and the rule of law;

· Public legal information is digital common property and should be accessible to all on a non-profit basis and free of charge;

· Independent non-profit organisations have the right to publish public legal information and the government bodies that create or control that information should provide access to it so that it can be published.

Public legal information means legal information produced by public bodies that have a duty to produce law and make it public. It includes primary sources of law, such as legislation, case law and treaties, as well as various secondary (interpretative) public sources, such as reports on preparatory work and law reform, and resulting from boards of inquiry. It also includes legal documents created as a result of public funding.

A legal information institute,

· Publishes via the internet public legal information originating from more than one public body;

· Provides free, full and anonymous public access to that information;

. Does not impede others from publishing public legal information; and

· Supports the objectives set out in this Declaration.

All legal information institutes are encouraged to participate in regional or global free access to law networks.

Therefore, the legal information institutes agree,

· To promote and support free access to public legal information throughout the world, principally via the Internet;

· To cooperate in order to achieve these goals and, in particular, to assist organisations in developing countries to achieve these goals, recognising the reciprocal advantages that all obtain from access to each other's law;

· To help each other and to support, within their means, other organisations that share these goals with respect to,

o Promotion, to governments and other organisations, of public policy conducive to the accessibility of public legal information;

o Technical assistance, advice and training;

o Development of open technical standards;

o Academic exchange of research results.

· To meet at least annually, and to invite other organisations who are legal information institutes to subscribe to this declaration and join those meetings, according to procedures to be established by the parties to this Declaration.

· To provide to the end users of public legal information clear information concerning any conditions of re-use of that information, where this is feasible.

Access to Legal information in India

There are three broad pillars of Indian democracy: the legislatures who make laws, the executives who enforce laws and the judiciary that interprets laws. The laws regulate a number of activities like criminal offense, civil cases, taxation, trade, social welfare, education and labour rights.

A number of attempts have been made to bring the knowledge of law to the common people. The Government of India took active efforts to present all laws along with their amendments at indiacode.nic.in and all court judgments at judis.nic.in. Similar efforts have been taken up by other privately owned websites.  While it is commendable to make law documents available to common people, it is still quite difficult for common people to easily find the required information.

The first problem is that acts are very large and in most scenarios just a few section of laws are applicable. Finding most applicable sections from hundreds of pages of law documents is too daunting for common people.

Secondly, laws are often vague and one needs to see how they have been interpreted by the judicial courts. Currently, the laws and judgments are separately maintained and to find judgments that interpret certain law clauses is difficult. This is one of the reasons that the private individuals have taken initiatives to publish legal information on internet.

Now the problem arises when the legal information is published on to the internet by an individual, they claim to have copyright of that literary work and also its scenario under Information Technology Act.

Indian Scenario

Copyright and judicial information

It is very important to know certain details about copyrights before analyzing the topic in hand which is copyright in judgments.

Meaning of copyright

"copyright" means the exclusive right subject to the provisions of this Act, to do or authorize 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) in the case of a computer programme,-
                                    (i) to do any of the acts specified in clause (a);

Copyright shall not subsist –

SECTION 52

Sub Section 1(c) the reproduction of a literary, dramatic, musical or artistic work for the purpose of a judicial proceeding or for the purpose of a report of a judicial proceeding;

Sub section 1(d) the reproduction or publication of a literary, dramatic, musical or artistic work in any work prepared by the Secretariat of a Legislature or, where the Legislature consists of two Houses, by the Secretariat of either House of the Legislature, exclusively for the use of the members of that Legislature;

The most important and relevant being the case of Eastern Book Company and Ors vs D.B Modak and Anr

In this case Appellant No. 1 - Eastern Book Company is a registered partnership firm carrying on the business of publishing law books. Appellant No. 2 - EBC Publishing Pvt. Ltd. is a company incorporated and existing under the Companies Act, 1956. The said appellants are involved in the printing and publishing of various books relating to the field of law. One of the well-known publications of appellant No. 1 - Eastern Book Company is the law report "Supreme Court Cases" (hereinafter called "SCC").

Headnotes are prepared by appellant No. 3-Surendra Malik. As per the said appellant (plaintiff No. 3 in the suits filed in the Delhi High Court), the preparation of the headnotes and putting the various inputs in the raw text of the judgments and orders received from the Supreme Court Registry require considerable amount of skill, labour and expertise and for the said work a substantial amount of capital expenditure on the infrastructure, such as office, equipment, computers and for maintaining extensive library, besides recurring expenditure on both the management of human resources and infrastructural maintenance, is made by the plaintiff-appellants. As per the appellants, SCC was a law report which carried case reports comprising of the appellants' version or presentation of those judgments and orders of' the Supreme Court after putting various inputs in the raw text and it constituted an 'original literary work' of the appellants in which copyright subsisted under Section 13 of the Copyright Act, 1957 and thus the appellants alone had the exclusive right to make printed as well as electronic copies of the same under Section 14 of the Act. Any scanning or copying or reproduction done of or from the reports or pages or paragraphs or portions of any volume of SCC by any other person, was an infringement of the copyright in SCC within the meaning of Section 51 of the Act.

The defendant-respondent No. 2 Spectrum Business Support Ltd. (in Civil. Appeal No. 6472/2004) has brought out a software called "Grand Juriy" published on CD-ROMs and the defendant-respondent No. 2 Regent Data Tech Pvt. Ltd. (in Civil Appeal No. 6905/2004) brought out software package called "The Laws" published on CD-ROMS. As per the appellants, all the modules in the defendant-respondents' software packages had been lifted verbatim from the appellants' work; the respondents had copied the appellants' sequencing, selection and arrangement of the cases coupled with the entire text of copy-edited judgments as published in the plaintiff-appellants' law report SCC, along with and including the style and formatting, the copy-editing paragraph numbers, footnote numbers, cross-references, etc.; and such acts of the defendant-respondents constitute infringement of the plaintiff-appellants' exclusive right to the same.

It was held in the case that the reports in the Supreme Court Cases (SCC) of the judgments of the Supreme Court are a derivative work in public domain. By virtue of Section 52(1) of the Act, it is expressly provided that certain acts enumerated therein shall not constitute an infringement of copyright. Sub-clause (iv) of Clause (q) of Section 52(1) excludes the reproduction or publication of any judgment or order of a Court, Tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the Court, the Tribunal or ocher judicial authority from copyright. The judicial pronouncements of the Apex Court would be in the public domain and its reproduction or publication would not infringe the copyright. That being the position, the copy-edited judgments would not satisfy the copyright merely by establishing amount of skill, labor and capital put in the inputs of the copy-edited judgments and the original or innovative thoughts for the creativity are completely excluded.

Accordingly, original or innovative thoughts are necessary to establish copyright in the author's work. The principle where there is common source the person relying on it must prove that he actually went to the common source from where he borrowed the material, employing his own skill, labour and brain and he did not copy, would not apply to the judgments of the courts because there is no copyright in the judgments of the court, unless so made by the court itself. To secure a copyright for the judgments delivered by the court, it is necessary that the labour, skill and capital invested should be sufficient to communicate or impart to the judgment printed in SCC some quality or character which the original judgment does not possess and which differentiates the original judgment from the printed one. The Copyright Act is not concerned with the original idea but with the expression of thought. Copyright has nothing to do with originality or literary merit. Copyrighted material is that what is created by the author by his own skill, labor and investment of capital, maybe it is a derivative work which gives a flavor of creativity. The copyright work which comes into being should be original in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author.

For the reasons stated above, the appeals were partly allowed. The High Court did grant interim relief to the plaintiff-appellants by directing that though the respondent-defendants shall be entitled to sell their CD-ROMS with the text of the judgments of the Supreme Court along with their own head notes, editorial notes, if any, they should not in any way copy the head notes of the plaintiff-appellants; and that the defendant-respondents shall also not copy the footnotes and editorial notes appearing in the journal of the plaintiff-appellants.

Interplay between Public Domain, Freedom of Expression and Copyright

“The general rule of law is, that the noblest of human productions—knowledge, truths ascertained, conceptions, and ideas—become, after voluntary communication to others, free as the air to common use”

The freedom speech and expression does not only protect freedom of ideas but also the form in which it is expressed.  But Copyright law curtails this freedom of expression.

Freedom of Speech and Expression

•       Right to receive information

•       Right to disseminate information

Justifications for copyright being beyond the purview of Article 19(1)(a) of the Constitution a reasonable restriction under Article 19(2)

•       Economic incentive vis-à-vis promotes free speech and production

•       Right to steal is not included within the freedom of speech and expression

The Idea/Expression Dichotomy

1.     ‘original’ u/s 13 of the Copyright Act, 1957:

Copyright shall subsist throughout India in the following classes of works, that is to say,-

(a) Original literary, dramatic, musical and artistic works;

(b) Cinematograph films; and

(c) Sound recordings;

2.     Sweat of the brow: conferring copyright on works merely because time, energy, skill and labour was expended, that is, originality of skill and labour

3.     Modicum of creativity: in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat  different in character is produced by the author”. - Eastern Book Company v. DB Modak

The Supreme Court too recognized this shift and in Eastern Book Company v. DB Modak (supra), following the approach laid down by the Canadian Supreme Court in CCH Canadian Ltd., Vs. Law Society of Upper Canada (2004) SCC 13, rejected the sweat of the brow doctrine, (which conferred copyright on works merely because time, energy, skill and labour was expended, that is, originality of skill and labour), and held that the work must be original ?in the sense that by virtue of selection, co-ordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author?. It is noteworthy that our Supreme Court noticed that the two positions i.e. the sweat of the brow on the one hand, and ?modicum of creativity? were extreme positions; it preferred a higher threshold than the doctrine of ?sweat of the brow? but not as high as ?modicum of creativity?. Thus, our law too has recognized the shift, and mandates that not every effort or industry, or expending of skill, results in copyrightable work, but only those which create works that are somewhat different in character, involve some intellectual effort, and involve a certain degree of creativity. It is in the light of this standard of originality, that the plaintiffs claim to copyright in the questions as well the copyright in the arrangement of the exercises in each chapter and the internal arrangement of questions therein, needs closer scrutiny.

Eastern Book company v Navin J.Desai, the question involved was whether there is any copyright in the reporting of the judgment of a court. The Delhi High court observed: It is not denied that under section 2(k) of the Copyright Act, a work which is made or published under the direction or control of any Court, tribunal or other judicial authority in India is a Government work. Under section 52(q), the reproduction or publication of any judgment or order of a court, tribunal or other judicial authority shall not constitute infringement of copyright of the government in these works. It is thus clear that it is open to everybody to reproduce and publish the government work including the judgment/ order of a court. However, in case, a person by extensive reading, careful study and comparison and with the exercise of taste and judgment has made certain comments about judgment or has written a commentary thereon, may be such a comment and commentary is entitled to protection under the Copyright Act”.

The court further observed: “In terms of section 52(1)(q) of the Act, reproduction of a judgment of the court is an exception to the infringement of the Copyright. The orders and judgments of the court are in the public domain and anyone can publish them. Not only that being a Government work, no copyright exists in these orders and judgments. No one can claim copyright in these judgments and orders of the court merely on the ground that he had first published them in his book. Changes consisting of elimination, changes of spelling, elimination or addition of quotations and corrections of typographical mistakes are trivial and hence no copyright exists therein.