Copyrights & Trademarks

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Copyrights: Overview Definition: Legal device granting exclusive rights to original creative expression. Ownership: Usually the original creator, but rights can be sold. Scope: Includes dramatic, literary, artistic, musical works – all intellectual works. Requirements for Copyright Protection Originality: Must be an original work. Relates to the expression of thought , not the underlying idea. Independently created, not copied. No Merit Requirement: Protection irrespective of creative elements, quality, or value. Fixed Form: Needs to be in a tangible material form. Copyright Notice Procedure: No formal procedure, but advisable to inform others and identify owner. Purpose: Assists those seeking permission, cheap safeguard. General Notice Consists Of: "Copyright" or $\copy$ symbol Name of the copyright owner Year of first publication "All Rights Reserved" Example: $\copy$ [Year] [Name]. All rights reserved. Scope of Copyright Protection - Economic Rights Protects author's financial interests, allowing profit from work exploitation. Rights and limitations vary by work type and country. Generally includes exclusive rights to: Reproduce/copy work in various forms Distribute work to the public Rent or lend copies Make translations or adaptations Communicate work to the public Perform, show, or play work in public Works Protectable Under Copyrights (Section 13 of the Act) Original literary, dramatic, musical, and artistic works. Cinematograph films. Sound recordings. Types of Works Defined Literary Works: Expressed in words, numbers, or symbols (not audiovisual). E.g., manuscripts, books, code. Dramatic Works: Published or unpublished, e.g., plays, scripts, pantomimes, choreography. Main determinant is originality. Musical Works: Lyrics (literary work) and musical tune (musical work) can be protected. Must be in written format. Artistic Works: E.g., paintings, sculptures, graphics, photographs, caricatures. Cinematograph Films: Visual recording with accompanying sound. Sound Recording: Recording of sounds that can be produced regardless of medium. Copyright Registration Procedure File an Application (e.g., via copyright.gov.in) Examination Registration Note: Registration is not mandatory; copyright exists upon creation and material fixation. Copyright Registration Workflow Summary Application filing with fee. Diary No. issued. 30-day waiting period for objections. If no objection: Scrutinization by Examiner. If no discrepancy: Application accepted & Registration Approved. Extracts sent to applicant. If discrepancy found: Discrepancy letter issued. Applicant replies. Hearing by Registrar (if needed). If objection filed: Letter sent to both parties. Replies from both. Hearing by Registrar. Application accepted/rejected. Powers of the Registrar of Copyrights (Section 74) Summon and enforce attendance, examine under oath. Require discovery and production of documentary evidence. Receive evidence on affidavits. Issue orders for examination of witnesses/documents. Request public sound recordings or copies from any court. Exercise other necessary powers. Copyright Board Functions (Section 119) Decide on work registration status. Decide on disputes regarding copyright assignment. Decide on granting compulsory licenses for republishing withheld works. Decide on granting compulsory licenses for publishing unpublished works/translations. Grant compulsory licenses for producing/publishing translations of literary/dramatic works. Grant compulsory licenses for reproducing/republishing literary, scientific, or artistic works. Rectify the Register of Copyright. Duration of Copyright Nature of Work Term/Duration Published literary, dramatic, musical, artistic work Author's lifetime + 60 years (from Jan 1 of year following death) Anonymous/pseudonymous literary, dramatic, musical, artistic work (generally) 60 years from creation (from Jan 1 of year following publication) Author's true name disclosed before death (anonymous/pseudonymous work) Author's lifetime + 60 years (from Jan 1 of year following death) Multiple authors, identity disclosed before death (anonymous/pseudonymous work) Last author's lifetime + 60 years (from Jan 1 of year following death) Posthumously published work (literary, dramatic, musical, adaptation, engravings) 60 years from creation (from Jan 1 of year following publication) Photographs Treated as literary work; Author's lifetime + 60 years Cinematograph Films 60 years from creation (from Jan 1 of year following publication) Sound Recordings 60 years from creation (from Jan 1 of year following publication) Works owned by government/public undertakings 60 years from creation (from Jan 1 of year following publication) Works owned by International Organizations 60 years from creation (from Jan 1 of year following publication) Authorship and Ownership of Copyright Author: Creator of "Original Works of Authorship" (OWA). Owner: Not always the author; ownership can transfer due to contract or purpose. First Owner: Generally the author who creates the work. Employee Work: Employer is the first owner for work created "in the course of employment." Partner Work: Vests in the partnership. Contract of Service: Person who instituted the service is first owner (employer-employee relationship). Contract for Service: Author is the first owner (author has discretion). Public Speech: Speaker is first owner, regardless of employment or arrangement. Who is an Author? (Section 2(d)) Literary/Dramatic Work: The author of the work. Musical Work: The composer. Artistic Work (non-photograph): The artist. Photograph: The person taking the photograph. Cinematograph Film/Sound Recording: The producer. Computer-Generated Work: The person who causes the work to be created. Assignment of Copyright Definition: Contractual agreement transferring IP rights from assignor to assignee. Effect: Assignee gets rights to the assigned work. Assignor retains rights for unassigned elements. Inheritance: If assignee dies before work creation, legal representatives get benefits. Mode of Assignment (Section 19) Must be in writing and signed by assignor or authorized agent. Must identify work, duration, rights assigned, and territorial extent. Must specify royalty payable to author/heirs. Subject to revision, termination, or extension by mutual agreement. Default Duration: 5 years if not specified. Default Territorial Extent: Whole of India if not stipulated. License Agreement Definition: Contractual agreement authorizing another party (licensee) to use protected IP rights. Parties: Licensor (grants license) and Licensee (receives license). Rights of Authors and Copyright Owners Exclusive Economic Rights: Licensing or assignment. Right to Reproduce the Work in any material form. Right to Store the Work in electronic medium. Right of Issuing Copies to the Public: Only copyright owner has this right. Applies only until the first distribution of the copyrighted work. Rule of Exhaustion of Rights/First Sale Doctrine: After first sale, purchaser doesn't need permission for subsequent sales. Right to Perform the Work in public or communications to the public. Right to Make Cinematography Film or Sound Recording. Right to Make Translations of the work. Right to Make an Adaptation of the work (e.g., movie, drama, abridged version). Right to make a copy of the work: (e.g., remake movie, scene-by-scene). Resale Share Right in Original Copies: If original work is resold for a price > Rs. 10,000, author has right to a share (max 10%). Right to Prevent Importation of Copyrighted Works. Infringement, Remedies, and Penalties Infringement of Copyright (Section 51) Encroaching upon the exclusive dominion of the copyright owner. Counterfeiting vs. piracy. Copying or reproduction as infringement: Direct copying: Infringer copies original features into own work. Indirect copying: E.g., novel turned into a movie. Subconscious copying. Quantum of Copying: E.g., crucial 8 seconds of music in a 9-minute album. Causal Connection: Between copyrighted work and infringing work. Idea vs. Expression: Taking an idea is NOT infringement; copyright protects expression. Encroaching on other economic rights (reproduce, communicate, sell, offer for sale). Providing space for communication about the work (contributory infringement). Selling, letting for hire, display, or offering for sale. Types of Remedies for Infringement Civil Remedy: Sections 54-62 of the Act. Criminal Remedy: Sections 63-70 of the Act. Administrative Remedy: Part of criminal remedy. Civil Remedies Initiated in District Court where infringement occurred. Preventive Civil Remedies: Interim Injunction: Stops infringing activity during court proceedings. Permanent Injunction: Restrains future infringements. Anton Pillar Order: Court permission to enter infringer's premises for inspection. John Doe/Ashok Kumar Order: Against unknown infringers. Compensatory Civil Remedies: Compensate owner for losses. Damages: Compensatory/Actual, Exemplary/Punitive, Goodwill/Reputation. Damages for Conversion/Delivery Up. Accounts of Profit: Financial data from infringer's profits. Cost of Litigation. Criminal Remedies File a criminal case to damage infringer's reputation, seek penalty, or imprisonment. Can be filed independently of civil suit, involving police. Administrative Remedies Section 52: Registrar of Copyright can prohibit unauthorized importation of copyrighted goods. Section 64: Court can order infringing copies/plates to be handed over to copyright owner. Trademarks: Overview Definition: Any mark graphically representable, distinguishing goods/services of one person from others. What it is: Word, name, symbol, device, or combination used to identify/distinguish goods and indicate source. Nature: An intangible asset. MARK (Section 2(1)(m) of the Trade Marks Act 1999) Includes device, brand, heading, label, ticket, name, signature, word, letter, numeral, packaging, or color combination. Types of Marks Device (shape of goods), heading (movie/book title), label, name, signature, letter, numeral, packaging, color combination. Other types recognized: Smell marks: Chemical formula (not distinctive feature). Sound marks: E.g., YAHOO, Nokia ringtone, Harley-Davidson bike sound. Service Marks: Organization providing a service (e.g., SBI). Three-Dimensional Trademark. Trade Dress Includes identifying features of a product/company (packaging elements, décor). Product features usually fall under trade dress protection if consumers identify them with a brand. Service Mark Registered for a non-tangible service. Identifies/distinguishes services of one person, indicates source. Titles, character names of radio/TV programs can be registered as service marks. Difference Between Trademark Symbols Symbol Meaning Use Case $\text{TM}$ Trademark Used for goods/products; indicates claim of ownership, may not be registered yet. $\text{SM}$ Service Mark Used for services; indicates claim of ownership, may not be registered yet. $\text{\textregistered}$ Registered Trademark Only used once the mark is officially registered with the government. Grounds for Rejecting Trademark Registration (Section 9) Marks which are not distinctive (e.g., "best," "good"). Marks which are descriptive (e.g., "charm," "sugar-free"). Marks which are deceptive or cause confusion. Marks likely to hurt religious sentiments. Marks containing scandalous or obscene matter. Registering Trademark in India Basis: "First to file" system; register as soon as possible. Timeframe: 2-3 years if unopposed. Authority: Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications. Branches: Mumbai, Kolkata, Ahmedabad, Delhi, Chennai. Steps: Application $\rightarrow$ Examination $\rightarrow$ Publication $\rightarrow$ Registration. Renewal of Trademark Initial Duration: 10 years (Section 25). Can be renewed by paying fees before 6 months from expiry date. Renewal can continue as long as the mark remains distinctive. Rights Granted by TM Registration Right to Use: If not used for 5+ years, competitors can apply for removal. Negative Right: Prevent others from copying the mark. Right to License: E.g., KFC, McDonald's. Transmission of Trademark: To a deceased person. Assignment of Trademark. Purpose of Trademark Enable public to make informed decisions and differentiate products/companies. Protect providers' investment in their reputation. Infringement of TM (Section 29) Deceptive Similarity: Mark is identical/deceptively similar to a registered trademark, used on similar goods/services. Using trademark in advertising (e.g., Pepsi vs. Coca Cola). Confusing similarity (e.g., Nandos restaurant vs. Nandus chicken). Using trademark as name (e.g., Maxim's Ltd vs. Maxim Dye). Passing Off: Infringement of a trademark in dissimilar goods/services. Conditions: Marks are identical/similar, used on non-similar goods/services, registered trademark has a reputation. Reputation Factors: Goodwill, turnover, advertisement/publicity, impact on consumers. Acts Constituting Trademark Infringement Affixing registered trademark on others' goods/services. Manufacturing, selling, stocking goods/services under registered trademark. Importing/exporting goods/services under registered trademark. Using registered trademark on business papers/advertisement. Acts NOT Constituting Trademark Infringement Not taking unfair advantage of registered trademark reputation. Not causing detriment to distinctive character/repute. Using registered trademark to indicate that registered trademark user offers such products/services. Proving Infringement of Trademark Owner files suit in court where infringement occurred. Required Evidence: Certified copy of registration certificate. Bills, invoices, GST documents, income tax assessment orders. Details of advertisements published. Audited balance sheets. Packages/boxes of both owner and infringer. Photographs of infringement activities. Remedies Available for TM Infringement Reliefs granted by court: Mandatory injunction. Damages and costs. Suit for account for profits. Surrender of infringed goods. Surrender of labels, hoardings, letterheads. Destruction of infringing documents and goods.