Category: intellectual Property

Who owns a song?

Who owns a song?

Music has always remained an integral part of Bollywood and the music industry has seen an incremental rise in the last ten-fifteen years of relative digital-democratization of filmmaking as a result of the proliferation of YouTube, rise in the number of OTT platforms and various other factors.

This rise in the music streaming applications such as Spotify, Wynk music and etc. has given the artists additional platforms to earn revenue from their intellectual property i.e., their music. Making songs is not really a ‘one-person job’ as it is essentially intertwining of melody and lyrics which means more people are involved behind the making of one soundtrack like lyricist, composers, music director, producer etc. This confluence of people, playing various roles to bring together a soundtrack also raises the question of who actually owns the song as his own intellectual property. The answer is rather complex and can be answered through the prism of the Copyright (Amendment) Act, 2012 and various judgments pronounced by the Supreme Court.

Meaning of copyright-

Copyright means an exclusive right over one’s own creation of the mind, that is, their intellectual property. Having attained copyright over a song or movie prevents the ‘work’ from being-

  • Reproduced by someone else,
  • Performed in public i.e., performance rights,
  • Communicated to the public in the form of uploading it on streaming platforms like YouTube,
  • Distributing copies of ‘original work’ to the public,
  • Renting or licensing the ‘work’ to others.

It is important to note that the term ‘song’ is not defined anywhere in the act, so to answer the question of who actually owns a particular musical work, the song would be divided into two categories i.e., one being a part of a cinematograph film and the other being not part of a cinematograph film.

For the songs which do not form part of any cinematograph film, the Copyright (Amendment) Act, 2012 defines the various ownership that a person can claim within the song.

  • The composer of a musical work is an author by virtue of section 2(d)(ii),
  • The lyricist is an author in relation to the literary work, that is, lyrics by virtue of section 2(d)(i) and
  • The producer in relation to a sound recording is an author by virtue of section 2 (d)(v) of the Copyright (Amendment) Act, 2012.

For the songs that are a part of a cinematograph film, the ownership of that particular song boils down to the type of arrangement made in the contract. In most cases, the producer of the movie ends up being the owner of the song because the artists who play different types of role in making of the song assign their right of ownership in exchange of monetary consideration.

However, in cases where the contract is loosely drafted or the producer uses the particular song anywhere apart from the movie to attract audiences or to earn money with help of that song, Supreme Court judgments like that of Indian Performing Rights Society LTD V/s Eastern India Motion Pictures Association,[1] help getting the various artists their well-deserved royalties. Nonetheless there are a few rulings in which the courts have not awarded the right to royalties to everyone.

The term of copyright as prescribed in the Copyright (Amendment) Act, 2012 is sixty years, whereas the term of copyright for literary works and musical works lasts lifelong in addition to sixty years from the time of his death. This ruling essentially means that even the next generation of these people would be deprived of the well-deserved royalties due to a loosely drafted contract, which signifies the importance of proper legal guidance at the time of drafting a contract for any matter related to intellectual property.

 

Written by-

Bhuvan Malhotra

Copyright Directive – Radical Copyright Protection Regime to takeover in European Union

After adopting Digital Single Market (Proposal) on 6th May 2015, the European Union Commission is out with its Proposal for a Directive of the European Parliament and of the Council on Copyright in Digital Single Market, Article 13 of which is a breakthrough of copyright norms worldwide. It has been reiterated as follows:

“Article 13.”

Use of protected content by information society service providers storing and giving access to large amounts of works and other subject-matter uploaded by their users

1) Information society service providers that store and provide to the public access to large amounts of works or other subject-matter uploaded by their users shall, in cooperation with rightholders, take measures to ensure the functioning of agreements concluded with rightholders for the use of their works or other subject-matter or to

prevent the availability on their services of works or other subject-matter identified by rightholders through the cooperation with the service providers. Those measures,

such as the use of effective content recognition technologies, shall be appropriate and proportionate.”

This means that all the Internet Platforms that hold a large amount of user-uploaded material like Facebook and Youtube are now in charge of policing the content before its publication into their platforms to avoid copyright infringement, and will have no more ‘Neutral Intermediary’ protection they usually availed by E-commerce Directive in EU.

The proposal above which mandates a content recognition technology is contradictory to EU’s E-commerce Directive. Recital 47 of the e-Commerce Directive mandates that “The Member States are prevented from imposing a monitoring obligation on service providers only with respect to obligations of a general nature; this does not concern monitoring obligations in a specific cases.” But this recital can be easily circumvented because of its vague language aided with the language of Recital 48 providing that nothing can stop the member states to apply reasonable “Duty of care” to the service providers.

Recent Youtube Copyright Infringement

An uploader published copyright protected (allegedly stolen) videos of Plus 4, An Austrian Television Station and sued YouTube for allowing it to be published. If a similar judgment were to happen in the United States, the implications could be huge.

YouTube has been sitting safely under the umbrella of the Digital Millennium Copyright Act‘s “Safe Harbor” clause for years. After Viacom sued YouTube in 2007 for hosting around 79,000 videos that featured some Viacom-owned content, the court ruled in favor of the video platform because it could answer “no” to three questions: Did YouTube have “knowledge or awareness of any specific infringements”? Did YouTube purposefully shield itself from knowledge of the infringements? And did YouTube have the “right and ability to control” activity on its site that led to those infringements? In essence, answering no to all of these questions makes YouTube a “neutral intermediary,” exactly what the Vienna court believes it is not.

(https://www.tubefilter.com/2018/06/11/austrian-court-youtube-copyright-infringement-case/)

Therefore, the contentious Article 13 of the Copyright Directive goes for a vote on 20th June 2018. This Article if enforced is likely to cause uproar amongst digital activists and also make the copyright provisions highly strict and complicate publications and broadcasts, and will also lead to erasing away of existing content like memes, music covers, etc, as a non-transparent filtering device will be mandated to be installed by such hosts.

Bitcoin Trademarked in the UK – Should the Bitcoin Community really worry?

A company in the U.K. has trademarked the term “Bitcoin” pressing to enforce the trademark’s use which is reported to scare crypto-currency enthusiasts. Is there really a need to be dreaded? Let’s analyse.

The story began with an Etsy (An E-commerce website headed in Brooklyn) seller getting the letter from the lawyer representing the Bitcoin trademark holder in relation to Bitcoin-branded clothing items. It stated the following:

It has come to our client’s attention that you are offering for sale a variety of clothing bearing the Bitcoin trademark on Etsy.co.uk. [Our Client] has not authorised your use of the Bitcoin trademark on and in relation to clothing. Such use, therefore, amounts to trademark infringement pursuant to s10(1) of the Trade Marks Act 1994,” the letter read.”

But in an act of goodwill, the letter goes on to note that though the trademark holder could take action against the seller but it gave the seller 14 days to remove the infringing goods instead.

Cryptocurrency sites went through a shock over the fact that a company has not only trademarked bitcoin but were also enforcing the trademark, with one site even going as far as saying the trademark holder will “have authority over everything Bitcoin, at least in the U.K.”

The Legal Truth

The truth is not even near to the speculations, as the Trademark law is clear on the point that Trademarks relate to specific goods and services. It is considered as a pre-requisite in Trademark law. Trademark used in the present case, i.e. UK00003279106, registered by a company called A.B.C. IP Holdings South West only covers three classes of goods: U.K. classes 25, 32 and 33, covering clothing, beverages, and alcoholic beverages, respectively.

The Particular trademark only pertains to the above-mentioned classes and the trademark holder has absolutely no authority and effect over anything to do with Trademark of the “Bitcoin” outside the aforementioned classes.

And since it is not something unprecedented, therefore, the owner cannot enforce his right over other classes before obtaining a registration to the same effect. Further, a search of the U.K. Intellectual Property Office trademark registry finds multiple trademark registrations for bitcoin, such as UK00003029238 from 2013 which pertains to “chocolate and confectionary.”

Still a fact for the ‘Cryptocurrency Community’ to worry

A trademark registered with status: WE00001288610, covers a lot of Bitcoin-related services

The protected trademark is registered to Japanese Bitcoin exchange “bitFlyer” and covers the use of bitcoin in six different classes. It covers over a thousand items, however, the most important and disturbing things is that it includes the use of bitcoin in computer programs, advertising, financial services, electronic commerce and much more, all of which are vital parts of bitcoin itself.

There appears to be no record of “bitFlyer” having actually attempted to enforce its trademark in the past, and it’s not clear it ever would. But if the cryptocurrency community wants to get its knickers in a twist over trademarks, this is where people should be looking and not at a two-bit seller, i.e. Etsy, who is engaged in selling T-shirts.

 

LANDMARK JUDGEMENTS IN PATENT LAW

1. Bajaj Auto Limited Vs. TVS Motor Company Limited JT 2009 (12) SC 103:-

Speedy disposal of Intellectual property rights cases

This case involved the controversy regarding the unauthorized application of the patent of the DTSi technology. The case became very vital regarding not only the financial stakes of the parties but also regarding the application of the doctrine of pith and marrow also termed as Doctrine of Equivalents.

This case was filed before the Madras High Court in 2007. The plaintiffs (Bajaj Auto Ltd), along with the state of Maharashtra alleged the defendants (T.V.S. Motor Company Ltd.) of infringement of the patents of the plaintiffs, which apprehended the invention of the technology of advanced internal combustion engine. The case engaged the questions of patent infringement by the defendant and the damages for the same. Furthermore, the case threw light upon the argument regarding justification of the risks issued by the defendant of the same case.

The plaintiffs sought remedy of permanent injunction for obstructing the defendants from using the technology or invention prescribed in the patents of the plaintiffs; and for obstructing them from marketing, selling offering for sale or exporting 2/3 wheelers (including the proposed 125cc TVS FLAME motorcycle) that consisted of the disputed internal combustion engine or product that infringed the patent. Damages for infringement of the patent were also claimed by the Plaintiffs.

The Supreme Court of India by this landmark judgement directed all the courts in India for speedy trial and disposal of intellectual property related cases. In this two-year-old dispute involving two companies, which had been locked in a patent dispute over the use of a twin-spark plug engine technology, the Supreme Court observed that suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction. The Supreme Court directed that hearing in the intellectual property matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit. The Supreme Court further directed to all the courts and tribunals in the country to punctually and faithfully carry out the aforesaid orders.

 

2. Novartis v. Union of India (2013) 6 SCC 1 :-

Rejection of a patent for a Drug which was not ‘inventive’ or had an superior ‘efficacy’-

Novartis filled an application to patent one of its drugs called ‘Gleevec’ by covering it under the word invention mentioned in Section 3 of the Patents Act,1970. The Supreme Court rejected their application after a 7 year long battle by giving the following reasons: Firstly there was no invention of a new drug, as a mere discovery of an existing drug would not amount to invention. Secondly Supreme Court upheld the view that under Indian Patent Act for grant of pharmaceutical patents apart from proving the traditional tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing drugs which also Novartis’s drug did not qualify. This became a landmark judgment because the court looked beyond the technicalities and into the fact that the attempt of such companies to ‘evergreen’ their patents and making them inaccessible at nominal rates.

 

3. F. Hoffmann-La Roche Ltd vs Cipla Ltd., Mumbai Central,:-

First Patent Litigation in India post India’s 2005 Product Patent Regime which included public interest and pricing issues.

Over the years India has seen many patent disputes between Foreign Multinational Pharmaceutical companies and Indian generic drug companies. But the suit between Roche and Cipla has surely set the standards when it comes to a patent infringement suit.

In this case, two plaintiffs, namely, F. Hoffmann-La Roche Ltd. and OSI Pharmaceuticals Inc., filed the suit for permanent injunction restraining infringement of patent, rendition of accounts, damages and delivery against Cipla Ltd. Mumbai. Indian Generic manufacturer Cipla won this landmark case in the Delhi High Court. The case is the first Patent Litigation in India post India’s 2005 Product Patent Regime which included public interest and pricing issues in addition to India’s Section 3d that prevents evergreening. The case was followed by Pharma Giants worldwide.

Roche sued Cipla in 2008 before Delhi High Court claiming that Cipla’s generic product Erlocip violates former’s Indian ‘774 patent claiming “Erlotinib Hydrocloride”. The trial Judge rejected Roche’s appeal to grant interim injunction restraining Cipla from selling generic version of Tarceva on the grounds of public interest and the fact that there was an ongoing patent revocation proceedings against ‘774 patent. Cipla’s generic version costs about 1/3rd of Roche’s patented drug. Roche’s subsequent appeal to Division Bench also failed when not only did the bench uphold the findings of Trial Judge but also imposed costs on Roche for suppression of material patent information about Roche’s later filed application in India (IN/PCT/2002/00507/DEL). This was the Patent Application which was actually on Polymorph Form B of Erlotinib Hydrocloride but was rejected in 2008 following the opposition filed by Cipla primarily on Section 3d. Cipla argued that Tarceva corresponds to Polymorphic Form B (which is not a product of ‘774 patent but a ‘507 rejected application) and that it is Form B which is more stable and suitable for solid oral dosage form than the compound disclosed in ‘774 patent comprising a mixture of Forms A and B. Roche’s subsequent appeal before the Supreme Court (SC) challenging the order passed by the division bench got dismissed due to the ongoing trial at the Delhi High Court.

 

4. Dr Snehlata C. Gupte v. Union of India & Ors (W.P. (C) No 3516 and 3517 of 2007) Delhi HC) :-

What Shall Be The Actual Date Of Grant Of A Patent?

This case was instrumental in determining when a patent can said to be granted under the Patent Act 1970 (the Act). This lack of clarity led to a scrutiny of the relevant provisions the Act and also the existing process with a time gap between the grant and the issuance of the patent certificate. The Delhi High Court, while holding that the date of grant of a patent is the date on which the Controller passes an order to that effect on the file, noted that the language, “a patent shall be granted as expeditiously as possible” (u/s 43) does point out that a patent has to be granted once it is found that either the application is not refused in a pre-grant opposition or otherwise is not found in contravention of any provision of the Act.

At the core of the legal challenge was the existing process, which resulted in a time gap between the grant of a patent and the issue of the patent certificate. The court held that the date of the grant of a patent is the date on which the controller passes an order to that effect on the file i.e. on the day in which the Controller makes a decision to grant a patent. The issue of a certificate at a later date is then nothing more than a mere formality.

The court also came down strongly against the practice of filing serial pre-grant oppositions. through aliases, a practice now fairly common in most pharmaceutical patent cases.

Therefore, the decision taken by the Controller on the file is the determining event for ascertaining the date of grant of patent and the acts of sealing of the patent and entering the same in the Register are ministerial acts evidencing the grant of patent.

5. Bayer Corporation vs Union Of India :-

India’s First Compulsory License

 

On March 9, 2012, the Indian Patent Office granted its first Compulsory License to Natco Pharma Ltd. for producing generic version of Bayer Corporations’s patented medicine Nexavar (Sorafenib Tosylate), which is used in the treatment of Liver and Kidney cancer. While the multinational giant was selling the drug at INR 2.80 lakh for a month’s course, Natco promised to make available the same at a price of about 3 % (INR 8800) of what was charged by Bayer. Natco was directed to pay 6 percent of the net sales of the drug as royalty to Bayer. Among other important terms and condition of the non assignable, non exclusive license were directions to Natco to manufacture the patented drug only at their own manufacturing facility, selling the drug only within the Indian Territory and supplying the patented drug to at least 600 needy and deserving patients per year free of cost.

Aggrieved by the Controller’s decision, Bayer immediately moved to the Intellectual Property Appellate Board (IPAB) for stay on the orderalleging that the grant of compulsory license was illegal and unsustainable. The Board rejected Bayer’s appeal holding that if stay was granted, it would definitely jeopardize the interest of the public who need the drug at the later stage of the disease. It further held that the right of access to affordable medicine was as much a matter of right to dignity of the patients and to grant stay at this juncture would really affect them.

Bayer then filed an appeal challenging the compulsory licence granted to Natco by the Controller-General. The Board stated that the invention must be available to the public at a reasonably affordable price and if not, compulsory licence can be issued and observed that the Sub-sections (a), (b) and (c) of Section 84(1) are separated by the disjunctive ‘or’ and therefore, even if one conditionis satisfied, the Controller will be well within his rights to order compulsory licence.

The Board further noted that The R&D costs and the prices of other drugs do not assist in deciding what the public can afford reasonably. It stated that the reasonably affordable price necessarilyhas to be fixed from the view point of the public and the word ‘afford’ itself indicates whether the public can afford to buy the drug.

It also stated that even if it takes the appellant’s own number (i.e. the number of affected patients) it finds that the supply made by it cannot be said to be adequate and the price definitely is the factor that will determine whether the public will reach out for a particularinvention.

The Board held that the Controller was right in holding that the sales of the drug by the appellant at the price of about 280,000/- wasalone relevant for the determination of public requirement and he was also right in considering the purchasing capacity of the public and the evidence available to conclude that the invention was not reasonably affordable to the public.

On the percentage of royalty that was to be paid by the Respondent to the Appellant (6% that was fixed by the Controller), IPAB increased it by 1 percent but did not change any other terms and conditions of the licence.

The IPAB dismissed the appeal and confirmed the grant of Compulsory license stating that it has dealt with each of the issue indetail in view of the significance of the order of compulsory licence made in India for the first time.