Click Here to Download Presentation

Slide 1:Protecting Intellectual Property in the Internet Age

Seminar on �THE EMERGING ISSUES IN CYBERLAWS & CYBERSECURITY IN INDIA� 29 August 2008 PHD House, New Delhi Karnika Seth Cyber-lawyer & Managing Partner, SETH ASSOCIATES ADVOCATES AND LEGAL CONSULTANTS

Slide 3:INTRODUCTION TO INTELLECTUAL PROPERTY RIGHTS (IPR)

Intellectual Property (IP) is defined as any "original creative work manifested in a tangible form that can be legally protected� Rights associated with intellectual property which gives legal protection is referred to as IPR. When we speak of IP rights, we refer to controlling the way IP is used, accessed or distributed.

Slide 5:Classification of IPR

Intellectual Property Copyright

Slide 6:Intellectual Property can be clearly distinguished from Goodwill. UK & Australian Generally Accepted Accounting Principles (GAAP) has specified �goodwill� as an umbrella concept consisting of unidentifiable intangible assets and should not include those Intellectual Properties which are capable of individual identification and can be sold separately. Copyright- is a bundle of rights granted to an author of an original artistic, literary or musical work to print ,publish, distribute, and sell, lease copies of his work and other allied rights. Copyright protection also extends to cinematographic film and sound recordings. Designs- The designs entitled to protection are new and original designs having aesthetic value which have not been previously known or published in India or elsewhere.

Rights that different IP assets protect

Slide 7:Trademarks- is an identification symbol which may be a word, a device, a label or numeral etc. or a combination thereof used in the course of trade that enables the purchasing public to distinguish one trader�s goods from similar goods of other traders The purpose of Brand is:� To uniquely identify a company and its product.� To differentiate them from competitor.� To enhance the perceived value, the quality and satisfaction that a customer experiences.� To evoke distinct associate stands for certain personality traits and carries emotional attachment.� Above all brand is supposed to inspire trust. Trust failure can lead to brand failure and brand failure can be fatal. Patents- is the grant of a monopoly right to an inventor who has used his skill to invent something new.

Rights that different IP assets protect

Slide 9:IP- Duration of Term of Protection

Patents (20 years) Trademarks (10 years + renewals) Copyrights in published literary, dramatic, musical, and artistic works (Lifetime of author +60 years). Copyright in photographs ,cinematographic film, sound recordings �(60 years from year in which it was published) Broadcast reproduction right-(25 years from the beginning of the calendar year next following the year in which the broadcast is made.) Performers right-(25 years from the beginning of the calendar year next following the year in which the performance is made) Industrial designs (10 years+ renewal permitted once for 5 years ) Trade-secrets and know how collectively �proprietary technology� (contract period-protected by contract provisions, doctrine of breach of trust)

Slide 10:�Most creations resulting from human endeavors in various fields of art, literature ,science and technology constitute Intellectual Property�

Intellectual Property

Slide 11:Its creation is both time and cost intensive Requires an assembled trained workforce for its creation Requires building of goodwill through advertising programs Generates customer loyalty Adds to commercial value of organization Its exploitation brings consistent additional profits to an organization

Why are IP assets important ?

Slide 13:Need To Protect IPR

Slide 14:Need To Protect IPR (Contd.)

Leads to increased global trade Example: Jordan- where strengthened patent protection has been linked to tangible economic benefits. The International Intellectual Property Institute (IIPI) released a comprehensive report in August 2004 that analysed the establishment of globally competitive pharmaceutical and biomedical technology industries in Jordan. The findings of the report indicate that "Jordan's economy has benefited greatly from the recent adoption of better intellectual property protections This was reflected in a jump in the health-service contributions to the Jordanian GDP from 2.8 percent in 1997 to 3.5 percent in 2001. Employment in the health-services sector has increased 52 percent since 1997.�

Slide 15:There are multiple perspectives about intellectual property rights on the Internet

Nature of internet- Borderless space, ease of flow of information, promptness, anonymity, easy to share, distribute and copy information at very less cost. These multiple perspectives to IPR include: "Information Wants to be Free." There should be no copyrights or other protections of intellectual property; everything made publicly available should be public domain. "Right of Attribution." The only rights owed to authors and creators is the right of attribution; otherwise, all information is free. "Limited Use Rights." That copyright has validity but minor infringing behavior, whether "fair use" or not, should be legal. "Strong IP Regimes." Adhere strictly to intellectual property protections. (Note that there is also the moral rights perspective, which exists on a different scale but is most closely aligned with the Strong IP Regimes category.)

Slide 16:Concerns of protecting intellectual property.

The Internet makes it possible to distribute any kind of digital information, from software to books, music, and video, instantly and at virtually no cost. The software industry has struggled with piracy since the advent of the personal computer, but as recent controversy over file-sharing systems such as Napster and Gnutella ,Aimster demonstrates, piracy is now a serious issue for any individual or business that wants to be compensated for the works they create. And since the Internet knows no borders, piracy is now a serious global problem. Strong legislation such as the Digital Millennium Copyright Act (DMCA), cooperation between nations to ensure strong enforcement of international copyright laws, innovative collaboration between content producers and the technology industry, and standards developed by organizations like the Secure Digital Music Initiative (SDMI) that can prevent or deter piracy have already made an impact on addressing this problem. But as more and more digital media becomes easy to distribute over the Internet, the government and private sector must work together to find appropriate ways to protect the rights of information consumers and producers around the world.

Slide 17:International Initiatives

The World Intellectual Property Organization (WIPO) copyright regime is one of the earliest initiatives aiming to balance the interests by addressing the copyright issues in cyberspace. The Copyright Treaty 1996 and Performances and Phonograms Treaty 1996 are the two major international legal instruments relating to cyberspace created under the auspices of WIPO.  WTO regime attempts to broadly but effectively protects IPR under its TRIPS Agreement Paris Convention 1883 (as amended in 1967-generally �Paris Convention�) (Industrial Property), Berne Convention 1886 (Copy right), Rome Convention (Neighbouring rights), Washington Treaty 1989 (Integrated Circuits), UNESCO Universal Copyright Convention 1952 

Slide 18:Some EU initiatives

A number of directives have been adopted/proposed by the EC which are: Directive 91/250/EEC on the legal protection of computer Programs: Through this directive computer programs are now protected by copyright as literary works. Directive 93/83/EEC on the co-ordination of certain rules concerning copyrights and related rights applicable to satellite broadcasting and cable retransmission provides uniform legal framework for the development of satellite and cable in Europe. This directive introduces the concept of �communication to the public�. The Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, commonly known as the EU Copyright Directive (EUCD) or the Information Society Directive (Infosoc)

Slide 19:Protecting Copyright in the digital millennium

Copyright is about protecting original expression. In contrast to traditional analog methods of recording works of intellectual property - on paper, film , on magnetic tape etc. now is the era of digitalization. Digitization converts all words, images, sounds, graphics and films into some binary numbers, either ones or zeros. These digitally stored works, disassociated from their physical form, are then transferred over the networks to be finally reconstructed into recognizable art by a reference to their binary values. This transformation represents that we are no longer transferring fixed expression of works as we would buy a book or license a video, but the digital representation of those works. This liberation of works from their form or media, calls for a change in the way that we protect and enforce intellectual property rights and copyright in particular.

Slide 20:Protecting Copyright in the digital millennium (contd.)

With the advent of digital technology some new types of work came into being and questions arose about how, and to what extent, they should be protected: Computer programs have some of the characteristics of a literary work but are not written to be read directly by another person; rather a computer program is a set of instructions for a machine. European approach-to be patentable it should lead to a technical effect. A technical contribution typically means a further technical effect that goes beyond the normal physical interaction between the program and the computer. Even though the European Patent Convention and its Article 52 excludes the patentability of programs for computers as such and despite the fact that the European Patent Organisation (EPO) subjects patent applications in this field to a much stricter scrutiny when compared to their American counterpart, that does not mean that all inventions including some software are de jure not patentable. T 928/03, Konami, Video Game System -how to make the computer easier to use .

Slide 21:The question of new, sui generis form of protection was seriously considered in the 1970s, but copyright protection became the norm. the TRIPS Agreement requires that �Computer program, whether in source or in object code, shall be protected as literary works under the Berne Convention�. Case on point-Ibcos computers v Barclays FinanceLtd(1994)FSR 275,Apple computer inc vs Franklin ComputerCorpn714F2d1240(3rd Cir 1983). India party to Berne convention, Paris convention and UCC1952. India-Copyright Act-Section 2(o)-computer programme is literary work. Section 2(ffc) defines computer programme. Section 2(ffb) defines computer-copyright �tangible �storage in any medium

Protecting Copyright in the digital millennium (contd.)

Slide 22:Five Exclusive Rights of a Copyright owner-

Section 14 Copyright Act,1957 To fix information in any tangible form To reproduce copyrighted work To sell, rent, lease or otherwise distribute copies Perform and display copyrighted work To prepare derivatives of a copyrighted work.

Slide 23:Making of a RAM copy without authorization would constitute infringement

MAI systems corp v Peak computer 991F2d511(9th circuit 1993) Copyright owner of OS software sued a computer repair company for infringement, based on repair company�s turning on a computer running the OS for servicing the machine. In doing so, the defendant was able to view the software program to assist him in diagnosing the problem. Held, loading of copyrighted computer software into the memory of a cpu causes a copy to be made which in absence of permission from copyright owner constitutes infringement.

Slide 24:Digital downloads and reproduction & display rights

Kelly v Arriba Soft Corp 280 F3d 934(9th Cir2002) Plaintiff leslie kelly had copyrighted many images of American west. Some were located on her website. Defendant produced thumbnail pictures in its search engine�s search results and by clicking on them, larger version could be viewed within Arriba�s page. Circuit court held, use of thumbnails is fair use but display of larger image within its webpages is violation of author�s exclusive right to publicly display his works.

Slide 25:Digital downloads and distribution rights

Marobie �Fl.inc v National Association of Fire Equip Distributors 983 F Suppl1167(NDIll) Court held that the act of placing unauthorised copies of Plaintiff�s electronic clip art files on the defendant�s webpage constitutes an infringement of distribution rights of the plaintiff as plaintiff�s files became available for downloading by internet users. Another case in point-Playboy enterprises ,inc v Frena 839 F Supp 1552(M.D.Fla1993)

Slide 26:Types of Copyright Infringement

Direct Infringement Contributory Infringement Vicarious Infringement It is wholesale reproduction and distribution of Copyrighted works It occurs when someone knowingly encourages infringing activity When for financial benefit the operator in spite of his ability to control and check infringements deliberately restrains from checking the users from committing such acts-playboy enterprises inc vs webbworld,inc 991 F Supp 543(N.DTex.1997)

Slide 27:E-Copyright Protection and digital music

The MP3 revolution The Napster story P2P file sharing technology facilitates 1-store MP3 music files on individual computer hard drives available for copying by other Napster users 2-search for MP3 music files stored on other users computers and 3-transfer exact copies of the contents of other users MP3 files from one computer to another via the Internet. Napster free of charge music share software ,napster internet site. It provided technical support for indexing and searching of MP3 files also.-complaint for being contributory and vicarious copyright infringer. Napster used fair use defence. Court held Napster is guilty of contributory and vicarious copyright infringement DMCA 1998-Section 512-safe harbour doctrine for ISPs-ISP to prove that it lacks requisite knowledge of infringing activity. (analogous to Section 79 IT Act,2000) New avtaars-Gneutella and kazaa.

Slide 28:Passing off, Trademark infringement and dilution

Passing off �No body has any right to represent his goods as the goods of somebody else� Lord Halsbury Passing off action allows trader A to prevent trader B from passing their goods off as if they were A�s. Passing off is available where there is a prospect of confusion of identity through the unauthorized use of similar marks or get up, and such use damages, or is likely to damage the goodwill and reputation of a business. Passing off can apply to virtually any name, mark, logo or get-up which distinguishes a company, business, product or service from the other. Passing off attracts doctrine of strict liability: the intention of the person passing itself off as another trader is irrelevant.

Slide 29:Attributes of Passing Off

Lord diplock in Erven Warnink v J Townend 1979 (2)AllER 927-To Succeed in an action for passing off, a claimant should establish that: The claimant has a goodwill The misrepresentation damages or is likely to damage the goodwill of the claimant. Passing off is made in the course of trade. The defendant made a misrepresentation that is likely to deceive the public.

Slide 30:Example of passing off action

Domain name similar to that of known companies are used by persons in order to promote their products or services. A company creates a website to promote his business of soft drinks and deliberately gives it the domain name www.cocacola.com , now this domain name is bound to confuse and mislead the customers as that of the well known Coca-Cola and encourage them to buy the product which infact is of another company. This can be termed as passing off.

Slide 31:Cases on Passing off

Yahoo! Inc. vs Akash Arora(1999) FACTS: The defendant installed a website Yahooindia.com nearly identical to plaintiff�s renowned yahoo.com and provided services similar to those of the plaintiff. DECISION: The Delhi High Court granted an injunction restraining defendant from using yahoo either as a part of his domain name or as a trade mark .It held that trade mark law applies with equal force on the internet as it does in the physical world.

Slide 32:Precedents on Passing off

In the case of Marks & Spencer Plc and others v. One in a Million Ltd. and others, the deputy judge of the English Court held that: "Any person who deliberately registers a domain name on account of its similarity to the name, brand name or trade mark of an unconnected commercial organization must expect to find himself on the receiving end of an injunction to restrain the threat of passing off, and the injunction will be in terms which will make the name commercially useless to the dealer.� In the case of Rediff Communication Limited v. Cyberbooth and Ramesh Nahata of Mumbai (1999), the Bombay High Court supported an action of passing off when the Defendants used the term �RADIFF� (similar to the name �REDIFF� of the Plaintiff) to carry on business on the Internet.

Slide 33:Passing off action under the Trade Marks Act, 1999

A registered Trademark has the backing of infringement and passing off remedies under the TMA act. The Act does not provide for infringement action in respect of unregistered Trademarks. Only Passing off remedy is available in case of unregistered Trademarks. (Section 27 of TMA Act, 1999).

Slide 34:Section 29 of the Trademark Act states that when a registered trade mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. A registered trade mark is infringed ,if:- 1. The mark is identical and is used in respect of similar goods or services or 2. The mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark 3. And Such use is likely to cause confusion on the part of the public or is likely to be taken to have association with the registered trade mark. For example, if you are not the Nike� company or authorized by it, it is an infringement to sell sports clothes called "Nikestuff � Legal remedies under Indian Trademarks Act-civil & criminal Sections 135-Injunction ,damages, delivery up of infringing goods, destroying infringing goods and material, etc. Section 103- penalty for applying false trademark, trade description-minimum 6months imprisonment and fine of INR50,000 Section 104- penalty for selling goods to which false mark applies -description-minimum 6months imprisonment and fine of INR50,000

Trademark infringement

Slide 35:Dilution is a trademark law concept forbidding the use of a famous trademark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection with, those of the trademark owner. For example, a famous trademark used by one company to refer to hair care products, might be diluted if another company began using a similar mark to refer to breakfast cereals or spark plugs. A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (i.e., just the word Pepsi spoken, or on a billboard).

Dilution

Slide 36:Case law on Dilution

Avery Dennison Corporation Vs. Jerry Sumpton, et al. Facts: Jerry Sumpton and his company Freeview registered thousands of domain names - primarily typical surnames - and used these domain names to offer "vanity" email addresses to people who want an address incorporating their name.� Two of the names registered included avery.net and dennison.net.� Avery Dennison brought suit against Sumpton claiming trademark dilution. Decision: The Ninth Circuit held that Avery Dennison failed to meet the required of elements of dilution.� The court concluded that the Avery and Dennison trademarks were not famous.� Although the court acknowledged that the trademarks had reached a level of distinctiveness, dilution requires that a mark be both distinctive and famous.� According to the court for a mark to meet the "famousness" element of dilution it must be truly prominent and renowned. Additionally, the court held that Avery Dennison failed to meet a second requirement for dilution:� commercial use.� Commercial use under the dilution statute requires that the defendant use the trademark as a trademark, capitalizing on its trademark status.

Slide 37:Cases on Dilution

Teletech Customer Care Management, Inc. vs Tele-Tech Company, Inc Facts: The plaintiff, a large provider of telephone and Internet customer care services, had been continuously using the mark for approximately fifteen years and had waged an extensive promotion and advertising campaign for its services. The defendant, a contractor providing engineering and installation services to the telecommunications industry, registered the domain name teletech.com. Decision: The court held that there was no likelihood of confusion, because the parties� businesses were so dissimilar. However, the court found dilution, ruling that TELETECH was a famous mark, and ordered the defendant to transfer the domain name to the plaintiff.

Slide 38:Metatagging

Metatagging, sponsored listings amount to trademark infringements Playboy Enterprises inc v Netscape Communictions corp 55 FSupp2d1070(S.D Cal1999)-plaintiff trademarks �playboy, playmate alleged infringement by defendant by marketing selling 450 words including these trademarks to advertisers., bannerads on search results page ,diversion of traffic Held PEI cannot monopolize these words. violates First amendment rights of netscape, other trademark holders of these words ,users of search engines. Playboy Enters v Calvin designer label 985 F supp 1220(NDCal1997)-Defendants repeated use opted words �playboy� within machine readable code in defendants internet webpages constituted trademark infringement

Slide 41:PRECEDENT ON LINKING

Ticketmaster vs. Microsoft Facts: In April, 1997, Ticketmaster filed a complaint in federal court in the Central District of California alleging that "Microsoft's actions diluted their trademarks; created a false, deceptive and misleading representation that there was a formal relationship between the two of them; constituted unfair competition and business practices; and constituted a commercial misuse of their trademarks.� Microsoft at that time operated Sidewalk, a recreational and cultural guide Web site. What Microsoft was doing was simple -- if a Sidewalk user wanted to buy a ticket to a particular event mentioned on the site, Sidewalk offered them a link to Ticketmaster's ticket purchase page. They were actually promoting Ticketmaster sales and sending them customers. A month after the suit was filed; Ticketmaster blocked Sidewalk users from their site. Links set up from Sidewalk then took users to a Ticketmaster page that read, "This is an unauthorized link and a dead end for Sidewalk.� Status: In February of 1999, the 2-year-old lawsuit was settled out of court. "Details of the settlement were not made public, but the deep links were removed, directing Sidewalk users to the Ticket master homepage.

Slide 42:Universal vs Movie-List

Facts: Movie-List , a collection of links to over 900 movie trailers, was deep linking to trailers within the Universal Web site. Originally, they were actually running the trailers, which were the property of Universal Studios, on the Movie-List server. �Not only were they deep linking to trailers, Movie-List was also selling CD-ROMS with trailers they had downloaded. �Universal then sent them a cease and desist, stating, "You are not permitted to link to other sites that contain our copyrighted material without our authorization. Accordingly, you must remove all images from our films as well as links to other sites that have our servers.� Status: All trailers have been removed from the Movie-List server, and the owner no longer sells the CD-ROMS. He has removed all of the deep linking to Universal pages. Case law on framing- Washington post Co v Total news inc97Civ1190(SDNY)

Slide 43:Shetland Times vs. Shetland News

Facts: The first deep linking case was filed in 1996 in Scotland, involving The Shetland Times, a newspaper and The Shetland News, a news delivery Web site.�The News posted headlines from the Times, using actual Times headlines as the text of the hypertext link. For example, one such link on the Shetland News home page was "New Prime Minister Elected," which linked directly to a story in the Shetland Times with the exact same headline. The links also bypassed the Shetland Times home page which carried large volumes of advertising. Decision: In October, 1996, Scotland's Court of Session banned the links, "finding it plausible that a headline is a literary work and that the News practice of incorporating the Times headlines verbatim in its link lines violated the latter's copyright" (Kaplan). The Scottish Court did not rule on the matter of deep linking.

Slide 44:CASES ON FRAMING

The Washington Post Company et al. vs. Total News, Inc. Facts: As a one-stop news site, TotalNews.com linked to many news sites, but kept a frame, or border around them, which the news sites argued made it look like the content was from TotalNews.com, changed the ad layout on the page, and kept totalnews.com as the address for book marking purposes. In the complaint the news companies claimed that TotalNews misappropriated their trademarked and copyrighted material, thereby engaging in a host of crimes including unfair competition, federal trademark dilution, and trademark and copyright infringement. The news organizations said that their websites, as they appeared within the Totalnews frames, were substantially altered from the form in which they intended them to appear to users and that it was done solely for Totalnews' profit. TotalNews argued that the case was in essence about its freedom to link, which it claimed was a fundamental right on the Internet. Status: The court never decided the TotalNews case because the parties settled. Totalnews agreed to remove the frame.

Slide 45:Framing

Hard Rock Caf� International (USA) Inc. vs. Morton Facts: Peter Morton was a founder of the Hard Rock Caf� who sold his interests in the business to the parent company. Morton retained ownership of a Hard Rock Hotel and Casino and was granted a license to use certain service marks and trademarks. The parent company later sued Morton, claiming that he violated the license agreement by illegally framing the site to sell CDs. Decision: The court pointed out that the framing made it unclear to a user whether he or she had left the Hard Rock Hotel website, especially since, though the content on the page changed, the bookmark able domain name stayed the same. This use was found to violate the license agreement and Morton was ordered to either permanently cease framing the CD store�s website or present evidence that it can frame that site in accordance with the terms of the license agreement.

Slide 47:Cybersquatting

Panavision International vs. Toeppen Facts: Toeppen engaged in dilution by cyber squatting in registering the domain panavision.com offered to sell the domain to the plaintiff for $13,000. Mr. Toeppen put a map of Illinois up on his panavision.com website. Decision: The Ninth Circuit upheld the lower court�s conclusion that Mr. Toeppen was engaged in extortive efforts and was diluting the famous PANAVISION mark. Mr. Toeppen�s cause was not helped by the fact that he had registered many domains containing known brands, such as deltaairlines.com, neimanmarcus.com, eddiebauer.com and lufthansa.com.

Slide 48:Domain name dispute resolution policy

Judicial dispute resolution under Federal Trademark dilution Act-Comp examiner agency vs juris inc Judicial Dispute Resolution under Anti cybersquatting Consumer Prevention Act, Dispute resolution under UDRP-ICANN approved domain name dispute resolution service providers.3 elements identical/deceptively similar mark,no legitimate use, bad faith registration CPR institute for dispute resolution, National arbitration forum, WIPO example Tata sons ltd case,Bennett coleman and co case, Asian paints.com case

Slide 50:Reverse engineering

Process of moving backwards in order to understand the ideas, principles, and algorithm, contained or expressed in computer programme. Processes used are disassembly and decompilation. Sega Enterprises ltd vs Accolade inc 977F2d1510(9th Cir 1992)-held access code part of interface between console and game cartridge was a functional element unprotected by copyright India protects this right-copyright Act,Section 52 (1)(ab),(ac)

Slide 51:The DMCA Act

The Digital Millennium Copyright Act (DMCA) is an extension to United States copyright law passed unanimously on May 14, 1998[1], which criminalizes the production and dissemination of technology that allows users to circumvent technical copy-restriction methods. Under the Act, circumvention of a technological measure that effectively controls access to a work is illegal if done with the primary intent of violating the rights of copyright holders. Reverse engineering of existing systems is expressly permitted under the Act under specific conditions. Under the reverse engineering safe harbor, circumvention necessary to achieve interoperability with other software is specifically authorized. 

Slide 52:The CSS and DeCSS

CSS- Content Scramble system is an access control and copy prevention system for DVDs developed by motion picture studios. Encryption based system. Jon Johansen in 1999 devised a computer programme that circumvents CSS called deCSS on 2600.com Led to 2 complaints-copyright infringement under DMCA and trade secret misappropriation-US Courts granted permanent injunction. Universal city studios inc v corley 273 F 3d 429(2d Cir 2001) Superior court enjoined defendants from disclosing or distributing on their websites or elsewhere the Decss and master keys or algorithms of Content Scrambling system.

Slide 53:Database Protection

Copyright protection to tables, compilations and computer databases does not extend to any data itself, but only to the way in which it is organized. This fundamental copyright principle is expressed in Article 10.2 of the TRIPS Agreement: Compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright subsisting in the data or material itself.� UK Database Protection Act, EU Directive on Data base protection India has no separate legislation on database protection. Provisions of copyright Act, IT Act, IPC prevail. The WIPO Copyright Treaty (WCT), although not binding on WTO members that have not joined the WCT, similarly provides in Article 4: "Computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention. Such protection applies to computer programs, whatever may be the mode or form of their expression."

Slide 54:Legal remedies-Copyright infringements

Slide 57:Legal remedies-copyright infringements

Slide 58:Copyright Infringement

Copy in a work will be considered infringed- 1. when any person, without a licence granted by the owner of the copyright, or the Registrar of Copyrights, or in contravention of the conditions of a licence so granted, or of any condition imposed by a competent authority- 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 the copyright; or Kind of Infringement Relief Civil Remedies: Injunction Damages Account of profit Delivery of infringing copies Damages for conversion Criminal Remedies: Imprisonment of the accused or imposition of fine or both Seizure of infringing copies.

Slide 59:Copyright Infringement (Contd.)

2. 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. Kind of Infringement Relief Administrative remedies: Administrative remedies consist of moving the Registrar of Copyrights to ban the import of infringement is by way of such importation and the delivery of the confiscated infringing copies to the owner of the copyright and seeking the delivery.

Slide 60:Trade Mark Infringement

The taking of any essential feature of the mark or taking the whole of the mark and then making a few additions and alterations would constitute infringement. The infringing mark must be used in the course of trade, i.e, in a regular trade wherein the proprietor of the mark is engaged. The use of the infringing mark must be printed or usual representation of the mark in advertisements, invoices or bills. Any oral use of the trade mark is not infringement. Advertising with the unauthorized use of the registered trade mark is also an act of infringement. Any or all of the above acts would constitute infringement if the same is done in such a manner as to sender the use of the mark likely to be taken as being used as a trade mark. Sec 135 Relief in suits for infringement or for passing off, includes injunction and at the option of the plaintiff, either damages or an account of profits. In brief, the relief to which a plaintiff is entitled are- An injunction restraining further use of the infringing mark. Damages or an account of profits. An order for delivery-up of infringing labels and marks for destruction or erasure. Injunction may be of the following types:- Anton Piller Order Mareva Injunction Interlocutory Injunction Perpetual injunction. Kind of Infringement Relief

Slide 61:Geographical Indications of Goods - Infringement

Sec 22- A registered geographical indication is infringed by a person who, not being an authorized user, uses such indication on the goods or suggests that such goods originate in some other geographical area other than the true origin of the goods which mislead the public. A registered geographical indication is infringed by a person who, not being an authorized user, uses such indication to the goods which although literally true as to the territory, region or locality in which goods originate, falsely represents to the public that the goods originate in the region, territory or a locality in respect of which such registered geographical indication relates. Kind of Infringement Relief In case false geographical indication is established, it carries penalty with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but may extend to two lakh rupees.

Slide 62:Legal remedies for infringement of Patent

Indian Patent Act-Section 108 Injunction Damages or account of profits Infringing goods and materials be destroyed. Suit be filed in district court or high court having original civil jurisdiction

Slide 63:Patent Infringement

Where any person threats any other person with proceedings for infringement of a patent. The colorable imitation of an invention. Immaterial variations in the invention. Mechanical equivalents. Taking essential features of the invention. Section 106. Court has the power to grant following relief in cases of groundless threats of infringement proceedings: A declaration to the effect that the threats are unjustifiable. An injunction against the continuance of the threats and Such damages, if any, as he has sustained thereby. Section 108-The relief which a court may grant in any suit for infringement includes an injunction and at the option of the plaintiff, either damages or an account of profits. In brief, the relief which may be awarded in a suit for infringement are- Interlocutory/interim injunction. Damages or account of profits. Permanent injunction. Kind of Infringement Relief

Slide 64:Design Infringement

Sec 22- lays down that the following acts amount to piracy- To publish or to have it published or expose for sale any article of the class in question on which either the design or any fraudulent or obvious imitation has been applied. To either apply or cause to apply the design that is registered to any class of goods covered by the registration, the design or any imitation of it. To import for the purpose of sale any article belonging to the class in which the design has been registered and to which the design or a fraudulent or obvious imitation thereof has been applied. Kind of Infringement Relief The judicial remedy for infringement of a registered design recommended in the Act is damages alongwith an injunction. Section 22(2) stipulates remedy in the form of payment of a certain sum of money by the person who pirates a registered design. A suit in the appropriate manner for seeking the relief in the form of an injunction is also recommended.

Slide 65:The Semiconductor Integrated Circuits Layout-Design Act, 2001 - Infringement

According to Section 18, a person who- does any act of reproducing, whether by incorporating in a semiconductor integrated circuit or otherwise, a registered layout-design in its entirety or any part thereof, except such act of reproducing any part thereof which is not original. does any act of importing or selling or otherwise distributing for commercial purposes a registered layout-design or a semiconductor integrated circuit incorporating such registered layout-design or an article incorporating such a semiconductor integrated circuit containing such registered layout-design for the use of which such person is not entitled under this Act. Kind of Infringement Relief Any person who infringes the right of registered proprietor shall be punishable with imprisonment for a term which may be extended to three years, or with fine which shall not be less than fifty thousand rupees but which may extend to ten lakh rupees, or with both under section 56 of the Act.

Slide 66:Thank You!Copyrighted� SethAssociates(2008)

SETH ASSOCIATES ADVOCATES AND LEGAL CONSULTANTS New Delhi Law Office: C-1/16, Daryaganj, New Delhi-110002, India Tel:+91 (11) 65352272, +91 9868119137 Corporate Law Office: B-10, Sector 40, NOIDA-201301, N.C.R ,India Tel: +91 (120) 4352846, +91 9810155766 Fax: +91 (120) 4331304 E-mail: mail@sethassociates.com