Month: October 2020

Protecting Architectural Designs

An Architectural Design is the conceptualization of the elements that comprise a building or a structure. It is the creativity of an architect whose intellectual property is protected by not one, but three IPR regimes. 

In India, Architectural Design is protected by the – 

 

  • Copyright Act, 2012

  • Design Act, 2000

  • Trademark Act, 1999

 

Interestingly, all the aforementioned acts have provisions of protecting an architectural design. However, the protection granted under these regimes depends on the facts and circumstances and varies from case to case. 

 

Copyright Act 

 

Under Section 13 of the Act, copyright is granted to various works, artistic work being one of them. By definition, Artistic Works under section 2 (c) (ii) of the act mean “any building or structure having an artistic character or design, or any model for such building structure.” Therefore, an architectural design being a ‘building, structure or the design of such model’ is granted copyright protection under artistic works. It must however be kept in mind that only original works can be granted copyright protection therefore the architectural design must not be plagiarized.

The author (architect) of the architectural design is also granted moral rights under section 57 of the act. Thus, he has the right to claim authorship of the work and also prevent its distortion. To this end, the author can in most copyright infringement cases ask for an injunction to stop the infringer from using his/her work, however, under section 59 of the act, a remedy for copyright infringement may not available to such artist when construction of the building or structure has commenced.  

Further, under section 52 of the act, architectural designs are subject to the fair use doctrine, therefore, there is no infringement when photos of the protected buildings are taken or when such buildings come in the background in a cinematograph film

In India, copyright protection is granted to works that are original since their inception, therefore Architects do not need to register their architectural design per se, however, they have the option to do the same as it may make their case stronger if there is an infringement. 

Following is a list of the Registration Fes for registering an Architectural Design-

Work Registration Fee
Literary, Dramatic, Musical or Artistic Work Rs.500/- per work

 

Designs Act

As mentioned earlier, an Architectural Design can also be registered with the Designs Act under section 2 (d). The protection granted under the Designs act is quite similar to the Copyright Act as it requires the architectural design to be original. Though unlike the Copyright Act makes it mandatory for the author to register his work.

An Architectural Design can be registered with the Designs Act under the following circumstances-

  1. If it has been registered under classes 25-03 and 25-99 of the Designs Act ;
  2. if it has been produced more than fifty times, and the Copyright Act is no longer applicable. 

Therefore, an architectural design that is either registered under the Designs Act or that has been produced for more than fifty times can only seek infringement protection under the Design Act.  

Fee for registration under the Design Act-

On what payable  Fees for Natural Person For other than Natural Persons either alone or jointly with a natural person
Application for registration under section 5 & 44 Rs.1000 Small entity- Rs. 2000

Other than a small entity- 

Rs.4000

 

Trademark Act 

 

The Trademark act permits for registration of Architectural Designs under section 2 (1) zb wherein a Trademark is defined as –

a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others..

The intention behind registering an architectural design as a trademark is to ensure that there are no replications of the structure. A building will be eligible for trademark protection as long as it can fulfill the test of graphical representation and an indication of the source.  ‘Graphical representation’ means that the mark must have a physical form whereas, ‘indication of the source’ means that the building should be associated with the trademark owner and the goods and services offered. Therefore, the architectural design seeking a trademark should be able to distinguish itself from others who offer similar goods and services.

In India, the first building to be granted trademark protection is the Taj Mahal Hotel, Mumbai. It was registered under class 43 as “services providing food and drink; temporary accommodation. 

The benefit of registering under the Trademarks Act is that it increases the commercial revenue while also protecting the distinctiveness of the work. 

Fee Structure for Registration- 

Application for registration of a mark  Physical Filing  E-Filing 
Where the Applicant is an individual/Startup/Small Enterprise  Rs. 5,000 Rs. 4,500
In all other Cases (Note: Fee is for each class and for each mark) Rs. 10,000 Rs. 9,000

 

Conclusion 

The Copyright Act gives a universal umbrella protection to the architectural design regardless of whether or not it is registered. However, an author can step out this all-embracing protection by registering with the Design Act or the Trademarks Act. 

It is the author’s personal opinion that an architectural design should be registered with the Design Act, in situations where the production of more than 50 copies is anticipated. Registration with the Trademark Act is relatively difficult, as the architectural design will have to fulfil the test of graphical representation and an indication of a source, which is why trademark registration works best for heritage buildings or tourist spots like the Oprah House Sydney. 

The jurisprudence and precedents on this subject are limited therefore the interpretation of the courts may vary. This is the personal opinion of the author.

Coronavirus outbreak

COVID-19 & FORCE MAJEURE

The coronavirus causing COVID-19 has spread like wildfire, playing havoc with the global supply chains, bringing the world economy to an unprecedented standstill. These extraordinary times we find ourselves living in is certainly throwing light on some interesting issues in the realm of contract management.

How does COVID-19 affect contractual obligations?

While it has made it difficult for some parties to execute their contractual obligations, it has left others absolutely incapable of execution. 

In the thick of this scenario, parties are reviewing their contracts and hoping to rely on ‘force majeure’ clauses to temporarily suspend their performance obligations under the contract to protect themselves from failure to provide goods or services and in some cases to completely end their contractual arrangement. Luckily, the Department of Expenditure (Procurement Policy Division) of the Ministry of Finance vide an office memorandum dated 19.02.2020 has called the outbreak of COVID-19 a natural calamity and has clarified that ‘force majeure’ may be invoked whenever appropriate following ‘due process’. Though this interpretation by the government may not be binding it may still have persuasive strength in interpreting contracts with the Government of India.

What is Force Majeure?

‘Force Majeure’ is a contractual provision. According to Black Law’s Dictionary “it is an event or effect that can neither be anticipated nor controlled… that prevents someone from completing or doing something that he or she had agreed or officially planned to do”. This concept has neither been defined nor specifically mentioned in statues, so whether or not it can be invoked will depend on the general terms of the contract, the events that precede or succeed it and the facts of the case.

What legal provision govern the claim for Force Majeure in India?

Indian Contract Act does not specifically provide for Force Majeure. Some reference however has been made under Section 32 of the Indian Contract Act, 1970 to contracts that are contingent on the happening of a certain event, where if the event becomes impossible it renders the contract void. This means that there may be certain unanticipated events outside the control of parties that may render a contract unworkable for a limited time while the event lasts, leaving a window for normalcy once the event ceases to exist. It is during such circumstances that ‘force majeure’ comes into play.

What type of events qualify as Force Majeure? Is the outbreak of COVID-19 a force majeure situation?

Force Majeure provisions in contracts tend to be formulated in one of the two ways. 

  • The parties to the contract may mutually decide over the list of events to be categorized under this clause, which typically includes acts of war, riots, fire, flood, hurricane, earthquake, explosion, strikes, lockouts, slowdowns, prolonged shortage of supplies, governmental action etc.
  •  It is either a closed list of categories, such as “a finite list of force majeure is the following events ……” or it is an open list of categories, such as “force majeure is the following types of events; including …….” 

In India the closed list tends to be more favoured. The current outbreak of COVID-19 has been declared a pandemic by the World Health Organization and interestingly you will rarely see the word pandemic listed in force majeure clauses. If you do see it listed in the clause, then you know that you are within the force majeure territory and you can go on to test other elements of force majeure that might be available, and if not, then that makes navigating through the force majeure regime a lot more difficult. 

Alternatively, you may notice many contracts referring to the Act of God. This is an interesting one, because the Act of God traditionally tends to be ‘weather dependent’ and without human interference and in that sense a pandemic or epidemic, tends to not be considered as an Act of God. While some parties to a contract may term the disruption in the supply chain due to the pandemic – a natural calamity, or an Act of God, others may argue that forced quarantine or travel bans are the roots of such disruptions and are ‘acts of government’. Therefore, the sole inclusion of an ‘Act of God clause’ does not ensure the recovery of losses caused by COVID-19. 

To that end, the key factors to check for force majeure are-

– Do you have a closed or open list? 

– Do you see the word ‘pandemic’ mentioned under the provision?

– If not, you may want to look at other categories such as ‘disease,’ ‘epidemic,’ ‘quarantine,’ or ‘acts of government,’. 

It is important to note that in cases where “epidemics” or “acts of Government” are mentioned apart from the force majeure clause, the courts would additionally subject you to show proof of cause, a harmonious construction with other provisions and compliance with the conditions contained in the force majeure clause.

What would an affected party do to claim relief in case the contract does not include an express force majeure clause? 

In case the contract does not include a force majeure clause, or the existing clause does not include a particular event, in such a situation the affected party may be able to discharge the contract using the ‘Doctrine of Frustration’. It is a common law doctrine enshrined under Section 56 of the Indian Contract Act, 1970, and it protects parties against circumstances where their contracts have become impossible to perform and such impossibility in performance may be due to the occurrence of an event which affected their ability to perform. It is however extremely important for the application of doctrine of frustration that such person could not have done anything in their power to prevent such an event from happening and that the impossibility is neither self-induced nor a result of negligence. Further, it is really important to bear in mind that the performance has to be impossible, not just difficult or more time consuming or expensive, IMPOSSIBILITY IS WHAT IS REQUIRED. 

How have the courts interpreted the word ‘impossible’ provided under section 56 of the Indian Contract Act, 1872?

In regard to the word ‘impossible’ the Supreme Court in Satyabrata Ghose v. Mugneeram Bangur and Co. & Anr. held that the word impossible under Section 56 of the Act to “not be used in the sense of physical or literal impossibility. The performance of an act may not be literally impossible but it may be impracticable and useless from the point of view of the object and purpose which the parties had in view; and if an untoward event or change of circumstances totally upsets the very foundation upon which the parties rested their bargain, it can very well be said that the promisor found it impossible to do the act which he promised to do.” 

There is a vast variety of Indian case laws on the doctrine of frustration and one must keep in mind that it is a very high bar to achieve. This can be evidenced by a recent landmark judgement titled Energy Watchdog Vs. Central Electricity Regulatory Commission where the Supreme Court held that force majeure clauses are to be narrowly construed. The court opined that in the force majeure clause contained in the contract in question, “hindrance” could mean an event wholly or partly preventing performance. However, a mere increase in prices would not amount to a hindrance. It was held that since the force majeure clause specifically excluded rise in fuel cost, the fundamental basis of the contract was never dislodged. In view of the fact that alternative modes of performance were available even though the same were at a higher price, a force majeure situation did not arise. The Court further held that since there was a specific clause addressing force majeure in the contract in question, Section 56 of the Contract Act would not have any application. 

The two things to note here are that 

  • the force majeure event must lead to an impossibility; mere hardship, inconvenience or material loss cannot be considered as a force majeure event AND
  •  in case there is a specific force majeure clause in the contract, then Section 56 would have no applicability because essentially the doctrine of frustration results in killing the contract and hence should not be lightly invoked.

How to protect yourself from the legal implications of COVID-19?

At present it is impossible to ascertain the exact damage caused by COVID-19, nonetheless it is advisable for businesses to equip themselves in case of any prospective dispute. Parties to the contract must abide by the terms of the agreement and requirements of force majeure clauses. The affected party must promptly notify the counterparty regarding the occurrence of a force majeure event and must collect all documents to produce as evidence in case of a dispute at a later stage. Most importantly, parties must get their contracts evaluated in detail by legal professionals. 

The jurisprudence and precedents on this subject are limited therefore the interpretation of the courts may vary. This is the personal opinion of the author.

Royalty Payment for Singers- An Adaptation of Necessity

The scope of copyright protection over the years has increased and it now includes a multitude of materials including songs. Producing a song is a long creative process which requires producers, composers, lyricist, singers among others. 

In the making of a song where there are so many people of different positions involved, there is always the question that who must receive the royalty for its commercial use? 

In case of songs, until recently singers did not receive any royalty, their contribution to the song was blatantly ignored. Fortunately, this changed in 2012 when the Copyright Act,1957 (Act) was amended to include “Performers Rights”. The act defines performers under section 2(qq) to include singers, musicians and actors inter alia, the basic intention was to include any person who makes a performance. The amendment granted the performers both economic and moral rights to their works. 

Section 38A of the Act focuses on the economic rights of the performers

    •  A performer can make sound and visual recordings of the performance;
    • A performer can reproduce the performance in any material form including the storing of it in any medium by electronic or any other means;
    • A performer can issue copies of the performance to the public not being copies already in circulation;
    • A performer can communicate the performance to the public;
    • A performer can sell or give the performance on commercial rental or offer for sale or commercial rental any copy of the recording and;
    • A performer can broadcast or communicate the performance to the public except where the performance is already a broadcast, and lastly,
    • A performer can receive a royalty for the commercial use of the performance. 

The economic rights subsist for 50 years from the date it was first performed. 

Similarly, moral rights have been granted under section 38 B of the Act. It explicitly mentions that the performer has the right to be identified for their work unless the contract states otherwise. The section also grants the performers the power to prevent the mutilation and distortion of their work. 

The new economic and moral rights policy for performers does not affect the royalty received by the others who were involved in making the song, so the performer’s right to receive his/her share of the royalties runs parallel. Further, to make it easier for the performers to collect these royalties, the Act provides for the establishment of the Copyright Societies under Section 33. The function of the societies is to collect royalties and assign licenses for the commercial use of different works. 

To this end, the Indian Singers Rights Association (ISRA) which is registered as a copyright society acts as the middleman who collects royalties on behalf of the singers. As a collecting society, it provides licenses for the commercial use of copyright-protected work of the performers and keeps an eye out for their work being used illegally. 

How much royalty will a Singer get paid? 

The royalty received by the ‘singer’ is dependent on the tariff scheme mentioned by the ISRA. This tariff scheme depends directly on the party that requests such license, for instance, if it is a restaurant/bar asking for a license, the tariff charged is dependent on the price of the least priced drink.

Therefore, the royalty received by the singers for the performance of their work varies from case to case. 

Does a singer receive a royalty from online streaming websites? 

Singers do receive a royalty from online streaming websites as it is their right under section 38A, it may, however, be different from radio and television broadcasting. 

Under section 31 D, the act provides for statutory license for broadcasting through radios and television. However, in the case of Tips v. Wynk, the Bombay High Court held that the provisions of statutory licensing do not apply to internet broadcasting, so different schemes apply to internet streaming. 

The royalty paid is dependent on whether the interactive or non-interactive streaming app charges the consumer for the services provided. If the website does not charge the user then the royalty per song is Rs.0.50 per song, and in instances where the user has to pay to avail for the services the royalty is Rs.1 per song.

Is it necessary to pay royalty and have a license? 

According to the Copyright Act, it is absolutely necessary to pay a royalty to the singers for commercial use of their songs. The same has been held time and again by the courts in multiple cases. In cases such as Indian Singers Right Association v. Night Fever Club & Lounge and Indian Singers’ Right Association v. Chapter 25 Bar and Restaurant, the court granted a permanent injunction restraining the defendant from playing the copyright-protected songs without a license from the ISRA. It further held that the defendant was violating the performers Right to Receive Royalty (R3).

The amendment regarding Performer’s Right was definitely a relief for many singers, but most importantly, it was a necessity. It brought the copyright regime of India in harmony with Article 14 of the TRIPS Agreement and also Articles 5 to 10 of the WPPT

The jurisprudence and precedents on this subject are limited therefore the interpretation of the courts may vary. This is the personal opinion of the author.

Author:

Mehr Sidhu

Intern, Talwar Advocates