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An Insight on Copyright, Geographical Indications and Confidential Information Laws in India

Rajkumar Dubey, Dubey & Partners


Reprint Permission from Aspatore Inc., All Rights Reserved

COPYRIGHT IN INDIA: The Legislation

The provisions pertaining to Copyrights and their protection in India are governed by the Copyright Act, 1957. Copyright exists in expression of an idea and it is not a right in the novelty of an idea. Copyright protects skill, labour and capital employed by the author. Its object is to protect the writer and author from the unlawful reproduction, plagiarism, piracy, copying and imitation. Violation of the copyright is confined to the form, manner, arrangement and expression of the idea by the author. Copyright is defined to mean the exclusive right to do or authorise other(s) to do certain acts in relation to - literary, dramatic or musical works, artistic works, cinematograph film and sound recording.

Works in which Copyright Subsists

Copyright subsists throughout India in the following classes of works:

  • original literary, dramatic, musical and artistic works;
  • cinematograph film; and
  • sound recording.

In respect of copyright, the word 'original' does not mean that the work must be the expression of the original or inventive thought. The Act does not require that the expression must be in an original or novel form, but the work must not be copied from another work and it should originate from the author. The expenditure of original skill or labour is required in executing a work and not in the originality of thought. The term 'literary work' includes computer programmes, tables and compilations including computer databases.

Computer Programmes - Patent or Copyright

Presently, computer softwares are protected under Copyrights Act, 1957, in India. This is confined only to its form and expression. The Present Copyright Act provides protection against piracy of softwares. Patent gives much better protection to an invention or new idea. Many leading companies file for patent application in addition to filing for copyright protection on the same work.

Steps Involved In Registration

Registration is prima facie evidence in favour of a person claiming copyright. Though this can be challenged, but if the stakes are high, it is always advisable to register a copyright for better protection.

Steps for registering a copyright in India:

  1. Application for registration is made in Form IV in triplicate to the Registrar of Copyright.
  2. In respect of artistic work which is used or is capable of being used in relation to any goods, the application should include a statement to that effect and should be accompanied by a certificate from the Registrar of Trademarks to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered or application for registration has been made for such a mark.
  3. There should be one application for one work only and should be accompanied with fees prescribed as per Copyright Rules, 1958. The fees vary depending on the work.
  4. Applicant shall simultaneously send copy of the application to every person interested in the copyright of the work (e.g. publisher, co-author etc.)
  5. If the Registrar of Copyrights receives no objection to such registration within 30 days of the receipt of the application by him, he shall, if satisfied about the correctness of the particulars given in the application, enter such particulars in the Register of Copyrights.
  6. After receipt of the objections and if not satisfied with the correctness of the particulars given in the application, if any, Registrar may make such enquiry as he may deem fit. After the Registrar is satisfied, entry will be made by him in the Register of Copyright and copies of the same shall be sent to all the concerned parties.

Duration of Copyright

The term of copyright in published literary, dramatic, musical or artistic work (other than a photograph) is the life time of the author plus sixty years from the beginning of the calendar year next following the year in which the author dies. In case of joint authorship, the period of sixty years shall commence after the death of the author who dies last.

Protection available to the Copyright Owners

A copyright owner has the exclusive right to do or authorize any other person to do the following:

  1. in case of literary, dramatic or musical work, not being a computer program: to reproduce the work in any material form including the storing of it in any medium by electronic means; to issue copies of the work to the public not being copies already in circulation; to perform the work in public or communicate it to the public; to make any cinematograph film or sound recording in respect of the work; to make any translation and adaptation of the work; to do, in relation to a translation or an adaptation of the work any of the aforesaid acts.
  2. In case of computer program: to do any of the acts mentioned in clause (a); to sell or give on hire, or offer for sale or hire any copy of the computer program, regardless of whether such copy has been sold or given on hire on earlier occasions.
  3. In case of artistic work: to reproduce the work in any material form to communicate the work to the public; to issue copies of the work to the public not being copies already in circulation; to include the work in any cinematograph film; to make any adaptation of the work; to do in relation to the adaptation of the work any of the aforesaid acts.
  4. In respect of cinematograph film: to make copy of the film including a photograph of any image forming part thereof; to sell or giving it on hire, or offer for sale or hire of any copy of the film, regardless of whether such copy has already been sold or given on hire on earlier occasion and to communicate the film to the public.
  5. In respect of sound recording: to make any other sound recording embodying it; to sell or give on hire, or offer for sale or hire any copy of the sound recording regardless of whether such copy has been sold or given on hire on earlier occasion and to communicate the sound recording to the public.

Assignment of Copyright

The owner of a copyright can assign the copyright to a work. Such assignment can be absolute or partial subject to limitations and either for a limited period or for the full term of the copyright.

Even the rights of future works could be assigned by a prospective owner, but the assignment in that case shall become effective only when the work comes into existence. However,

  1. there is no prescribed form for assignment of copyright;
  2. assignment must be in writing duly signed by the assignor or his authorised agent;
  3. the assignment must specify details of the work being assigned, rights assigned, duration and territorial extent of assignment;
  4. if the period of assignment is not specified, it is presumed to be 5 years. If territorial extent is not specified, it is presumed to extend to throughout India.
  5. amount of royalty payable to assignor or his heirs should also be specified.

If the assignee does not make use of the rights assigned to him within a period of one year from the date of assignment, the assignment will be deemed to have lapsed, unless otherwise specified in the agreement.

Licensing of Copyrights

Owner of a copyright can grant interest in his right by licence in writing to another person. Licence relating to future work can also be granted, but in that case the licence takes effect only when the work comes into existence. The license must be in writing and should be signed either by the owner himself or by his authorised agent.

A licence deed in relation to work should contain the following particulars-

  1. identification of work;
  2. duration of licence
  3. the right licenced;
  4. territorial extent of licence;
  5. quantum of royalty payable; and
  6. the terms regarding revision, extension and termination.

Provisions as applicable to assignment i.e. period, territorial assignment, resolution of dispute by Copyright Board are also applicable to license.

There are different kinds of licenses. A license may be exclusive or non-exclusive, it may be granted by the Copyright Board as a compulsory licence and may be limited to a specified period of time.

Copyright Rules, 1958 prescribe the procedure for making an application to the Copyright Board for obtaining licences and the manner of determining royalties under the following provisions of the Copyright Act, 1957 in India:

  1. Compulsory licence in works withheld from public (Section 31): If the owner does not grant permission for republication, performance or communication to public, Copyright Board can direct Registrar of Copyrights to grant compulsory licence to complainant on such terms and conditions as it deems fit.
  2. Compulsory licence in unpublished Indian works (Section 31A)
  3. Licence to produce and publish translations (Section 32)
  4. Licence to reproduce and publish works for certain purposes (Section 32A): This is a licence to reproduce cheap edition or out of print work.

Provision with respect to foreign work

Provisions in respect of licence to produce and publish translation of a literary work for educational purposes are available for both Indian and foreign work, as the Act does not make any distinction between Indian work and foreign work. The only differences are as follows:

  1. Permission for translation is normally available for educational purposes after a period of three years. However, if the work is in language other than language of developed countries i.e. in other than English, French, German, Japanese, Spanish etc., the permission can be granted after one year.
  2. If the licence to produce translation is in respect of foreign work, it shall be subject to condition that the copy is available for distribution in India and cannot be exported outside India.
  3. Government or any of its authority can however export such translation of foreign work, if it is in a language other than English, French or Spanish. Such export can be for use of citizen of India residing out of India or for educational or research work.

Further, central government, by notification, can extend provisions of the Act to work published out of India or to unpublished work made out of India or work of a foreign author who has died. Such extension can be made only in respect of countries, which grant similar protection to work made in India. The order of Central Government can provide extension of Act to only specified class of works or restricts terms of copyright, conditions of enjoying the right etc.

Protection available from Infringement

Following amounts to infringement of a copyright:

  1. doing anything without licence for which the owner of copyright has exclusive rights,
  2. permitting for profit without licence 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 aware that there is any infringement of the right-the burden of proof is on him),
  3. making for sale or hire, selling or offering for sale or hire, distributing, exhibiting in public or importing into India any infringing copy of the work.

In case of infringement, the Copyright Act, 1957 provides for both civil as well as criminal remedies. Civil remedies available to the owner of a copyright against infringement include injunction, damages or share of profits, delivery of infringing copies and damages for conversion. The Act also provides for punishment by criminal courts for criminal offences. Further, police officers are empowered to seize all copies of the work and all plates used for making infringing copies of work without warrant.

GEOGRAPHICAL INDICATION

Introduction

India has a rich heritage of products originating from specific regions that are nurtured by knowledge and tradition built up by communities over the years.

International Framework

A number of treaties administered by the WIPO provide for the protection of geographical indications, most notably the Paris Convention for the Protection of Industrial Property of 1883, and the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration. In addition, Articles 22 to 24 of the Agreement on Trade-Related Aspects of Intellectual Property Rights deal with the international protection of geographical indications within the framework of the World Trade Organization.

The Legislative Framework

The Geographical Indication Act 2001, in India defines a geographical indication as: "an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be."

Who Can Apply

Any association of persons, producers, organisation or authority established by or under the law could apply for an geographical indication provided that:

  1. the application should be in writing in the prescribed form along with the prescribed fee
  2. the applicant must represent the interest of the producers

Steps Involved In Registration

"An application for registration of a geographical indication is to be made in writing using a replica of the official application Form GI-1 for the registration of a Geographical Indication in Part A of the Register by an Indian applicant; Form GI-2 for a convention application; an application for goods falling in different classes by an Indian applicant in Form GI-3 and an application for registration of goods falling in different classes from a convention country in Form GI-4 along with prescribed fee and should be addressed to the "Registrar of Geographical Indications",

The application should include the various requirements and criteria for processing a geographical application as specified in Rule 32(1) which details interalia:

  1. (How the indication serves to designate the goods as a Geographical Indication?
  2. The Class of goods;
  3. The territory ;
  4. The particulars of appearance ;
  5. Particulars of producers;
  6. An affidavit of how the applicant claim to represent the interest;
  7. The standard bench mark or other characteristics of the geographical indication;
  8. The particulars of special characteristics;
  9. Textual description of the proposed boundary;
  10. The growth attributes in relation to the G.I. pertinent to the application;
  11. Certified copies of the map of the territory
  12. Special human skill involved, if any;
  13. Number of producers; and
  14. Particulars of inspection structures, if any, to regulate the use of geographical indication.

On receipt of the application, a number will be allotted by the Registrar. Thereafter, the application would be examined to check whether it meets the requirements of the Act and Rules. For this purpose the Registrar shall ordinarily constitute a Consultative Group of experts to ascertain the correctness of the particulars furnished. Thereafter an Examination Report is issued by the Registrar to the applicant. The applicant is then required to submit the reply to the Examination Report and the clarifications provided therein is considered by the Registrar. If no objections is raised it would be accepted and would be advertised in the Geographical Indications Journal. An opposition could be lodged within a maximum period of four months.

After a geographical indication is registered any person claiming to be the producer of the registered geographical indication can file an application for registration as an authorised user in Part B of the Register. The procedure for registration as an authorised user is similar to that for the registration of a geographical indication.

Protection available to registered Geographical Indication

Geographical indications are protected in accordance with national laws and under a wide range of concepts, such as laws against unfair competition, consumer protection laws, laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin. In essence, unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product. Applicable sanctions range from court injunctions preventing the unauthorized use to the payment of damages and fines or, in serious cases, imprisonment.

Further,

  • It confers legal protection to Geographical Indications in India
  • Prevents unauthorised use of a Registered Geographical Indication by others
  • It provides legal protection to Indian Geographical Indications which in turn boost exports.
  • It promotes economic prosperity of producers of goods produced in a geographical territory.

Assignment and Transmission

A geographical indication is a public property belonging to the producers of the concerned goods hence assignment, transmission, licensing, pledge or mortgage are not permissible.

Duration of A Geographical Indication

The registration of a geographical indication is valid for a period of 10 years and It can be renewed from time to time for a further period of 10 years each.

CONFIDENTIAL INFORMATION AND KNOWHOW

Confidential Information is generally information, which is the object of an obligation of confidence and is used to cover all information of a confidential character. This includes:

  1. Trade secrets,
  2. Literary and artistic secrets,
  3. Personal secrets,
  4. Public and Government Secrets.

In case of confidential information relating to trade secrets,

  1. the information must be such that the owner must believe that the release of which would be injurious to the owner or advantageous to his rivals or others,
  2. the owner, must believe that the information is confidential and secret,
  3. the owner's belief on the above points must be reasonable,
  4. the information must be judged in the light of the usage and practices of the particular industry or trade concerned.

Know-how generally indicates something essentially different from secret and confidential information. It indicates the way in which a skilled man does his job, and is an expression of his skill and experience.

Generally breach of confidence is not applicable in case of know-how, however it is applicable in case of trade secrets.

Three elements essential to a cause of action for breach of confidence are:

  1. that the information was of a confidential nature,
  2. that it was communicated in circumstances importing an obligation of confidence, and
  3. that there was an unauthorized use of the information. [1977 FSR 260]

HOW TO PROTECT CONFIDENTIAL INFORMATION

Under Article 34 of the TRIPS agreement, every member country must enact legislation for the protection of confidential information. Though India is yet to enact any such legislation, Indian courts have protected misuse of confidential information either as a violation of contract or as a violation of intellectual property rights. Confidential information can be protected under common law by entering into oral as well as written agreements by the concerned parties. An oral agreement is enough to provide an obligation of confidence however it may be difficult to prove the existence of such an agreement in a court of law. Hence it is recommended that the Companies enter into following agreements with their employees and the outside consultants:

  1. agreement assigning to the company any trademark, copyright or patentable invention which the employee develops or is involved in developing during the course of his employment
  2. non-disclosure agreement regarding confidential information/know how;
  3. a non-compete provision covering a specified period of time following the termination of employment;
  4. discourage solicitation of the clients and employees of the company by the former employees.

Disclaimer

Actual resolution of legal issues depends upon many factors, including variations of fact and laws of the land. Though the firm has taken utmost care in the preparation of this article, the information contained herein is not intended to constitute any legal advice and the firm cannot accept any responsibility towards those who rely solely on the contents of this article without taking further specialist advice. The reader should always consult with legal counsel before taking action on matters covered by this article.