Introduction

Section 2 of the Practice and Procedure Manual on Artistic Works, 2018 , (“Copyright Manual”) issued by the Copyright Office states that, “Any work which is an original creation of an author or an owner fixed in a tangible form, is capable of being entered into the Register of Copyrights, irrespective of the fact that whether such work possess any artistic quality or not.” It relates to Section 2(c) of the Copyrights Act, 1957 (“Copyright Act”) which defines ‘artistic work’ as, “(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) a work of architecture; and (iii) any other work of artistic craftsmanship;” Whether to be ‘fixed in a tangible form’ requires permanent fixation thereby inherently excluding ephemeral works or whether fixation can be tangle even when ephemeral? Does ‘fixed in a tangible form’ require physical permanence of the creation itself or is it enough if the fixation is in a tangible medium? If an element of permanence is required, what kind of fixation can be considered as permanent if the temporal duration of the subsistence of the art-work is itself temporary? This article aims to explore this statutory interpretational issue in respect of ephemeral artistic works.

Form vs. Medium vs. Manner vs. Method 

The Article 2, sub clause 2 of the Berne Convention for the Protection of Literary and Artistic Works, 1979 (“Berne Convention”), grants the government of each member Union to determine whether the ‘fixation in a material form’ is a requirement to grant copyright protection or not. The Copyright Act does not contain any mandatory provision of ‘fixation in a tangible form’, but the requirement of material form is still recognized for copyright protection. Section 14(c) of the Copyright Act states that meaning of copyright is to have an ‘exclusive right’ to reproduce the artistic work in any ‘material form’.

Ephemeral artwork may consist of short term art-installations in galleries/public places; use of naturally transient material like leaves, ice, sand etc,; landscape/integrated architectural works; wall murals/graffiti. Keeping in mind Section 14(c), all the listed artwork fulfils the requirement of ‘material form’ within the Copyrights Act and ‘tangibility’ within the Copyright Manual. However, there is a lacunae in the statute regarding the ‘temporary nature’ of any artwork.

The courts are yet to doctrinally solidify the legislative stance as to what qualifies as ‘fixed in a material form’ in respect of any artistic works, llet alone contemporary ephemeral works. The courts have on occasion delved into what constitutes ‘fixation’ in sound recordings and cinematographic works. In the case of Indian Performing Right Society Ltd. and Ors. Vs. Aditya Pandey and Ors. [CS(OS) No.1185/2006 & IA No.11203/2016] [1], the Delhi High Court stated that the sound recording is only the manner of fixation and does not extinguish separate individual rights. Notably, it is the manner of fixation, not just fixation itself nor even its medium or form, that is highlighted here as a relevant factor. 

In the case of films, although the statute does not explicitly provide for fixation, the Berne Convention states that a cinematographic work is a method of ‘fixation’ along with an original work. This was reiterated in the MRF Limited Vs. Metro Tyres Limited, [CS (COMM) 753/2017] [2] where the single judge bench of the Delhi High Court stated that the Indian Copyright Act is required to be interpreted in consonance with the Berne Convention. This brings in the method of fixation into the jurisprudential matrix of the statutory interpretational issue at hand. 

Together, these judgements show that the courts do recognize the requirement of ‘fixation in a tangible form’ under the Copyrights Act but do not do so rigidly or de hors theoretical considerations. Instead, they follow through with importing the jurisprudence regarding the Berne Convention. Still, they do not provide an entirely consistent or adequate explanation of what constitutes permanence in the nature of fixation of a copyrightable work.

Permanence in Ephemeral Artwork

The Copyrights Act denies copyright infringement if the artwork is ‘permanently situated’ in a ‘public place’ under Section 52(t) of the Copyright Act. As temporary artwork has not been categorized anywhere, it could be assumed that Section 52(t) would also allow inclusion of ‘work of architecture’ stated in Section 2(c) of the Copyright Act as well. Any temporary art installations would also have the similar traits as that of a work of architecture like ‘structure’ having an ‘artistic character’. 

Temporary art-work due its obvious nature of being ephemeral, cannot be said to be ‘permanently situated’. The only protection that can be granted to such artisans is to expand/clarify the scope of ‘permanence’. It is still unclear due to a dearth in the statutory provision as to what ‘degree of permanence’ is required under ‘fixation in a tangible form’. There is a need for further clarity as to what could be the prescribed time period under fixation of any artwork to be considered as sufficiently permanent. This definition would be applicable to furthermore ambiguous copyrightable artistic work like sand-art, tattoo art, face/body makeup, food plating etc. 

Conclusion

Although the requirement of ‘fixation in a tangible medium’ is recognized, I would venture to say that the courts have largely focused on the latter part of ‘tangibility’ and somewhat disregarded the equally germane demand of ‘fixation’. Conservative interpretation of the requirement, for which there is enough precedent and warrant, means many new-media artists will lose out. Jurisprudentially though in my opinion, it is possible for a court to proceed on a more expansive interpretation. 

End Notes:

[1] Indian Performing Right Society Ltd. and Ors. Vs. Aditya Pandey and Ors. [CS(OS) No.1185/2006 & IA No.11203/2016]

[2] MRF Limited Vs. Metro Tyres Limited, [CS (COMM) 753/2017] 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP

Introduction

Section 38 of the Trade Marks Act, 1999, starting with a non-obstante clause, states that “…a registered trademark shall, subject to the provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the business concerned…” Section 2(c) states that “assignment” means an assignment in writing by act of the parties concerned.” Does ‘assignment’ subsume an assignment with retroactive effect?  Can a registered trademark be assigned with retroactive effect? Does the ‘assignment’ have to be only prospective? This is the statutory interpretational issue explored in this article. 

Retroactivity versus Recordation of Retrospectivity

Assignment of trademarks is a mechanism whereby the owner of a trademark transfers his ownership to another person or entity, either with or without the associated goodwill. When such an assignment becomes operative at a date earlier than the date of entering into the assignment agreement, it is called a retroactive assignment of trademark. It creates a new assignment effective from a past date. It should not be confused with merely recording the retrospective effect of a previous oral agreement for trademark assignment, called a nunc pro tunc (Latin) assignment.

While the Act makes provisions for the assignment of trademarks, it is silent on the legality of retroactive assignments. Judicial precedents in this regard are also limited, and lack unambiguity. This article examines the scheme and framework of the Act as elucidated by the few relevant judicial pronouncements, to determine if retroactive assignment of trademarks is permissible. Does the Act countenance retroactive trademark assignment? Are they legal or void and non-est?

Validity of Trademark Assignment

Providing for assignment and transmission of trademarks, the Act under Section 37 gives the registered proprietor of a trademark the “…power to assign the trade mark, and to give effectual receipts for any consideration for such assignment”. This right is only “…subject to the provisions of this Act and to any rights appearing from the register to be vested in any other person…”. Section 45(1) of the Act states that “Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application, register him as the proprietor of the trademark…”. As per Section 45(3), “Where the validity of an assignment or transmission is in dispute between the parties…” the Registrar has been given the discretion to refuse registration of the assignment “…until the rights of the parties have been determined by a competent court…”. Assignment, thus, must not only be in writing, it must also be registered.

Prejudice Against Anti-Dating 

Clearly, there is no statutory bar upon retroactive assignment of trademarks. The Act explicitly neither recognises nor bars retroactive assignments. The intention of the legislature, too, is not discernible from any other provision of the Act.

Keeping in mind the statutory requirement of assignment agreement being written, what about a written agreement recording a prior oral prospective trademark assignment? The IPAB, in the case of Ramesh L. Vadodaria vs Assistant Registrar of Trade Marks [2005 (30) PTC 297 IPAB], observed that “…there cannot be any assignment with retrospective effect unless there is some oral agreement between the parties earlier in point of time and under written agreement, the parties had confirmed such terms of oral agreement were acted upon. The later written document is only to confirm the rights of the parties arising and accrued in accordance with the earlier oral agreement.” Thus, no scope is left for anything other than a nunc pro tunc assignment.

Anteriorization of the effective date of a trademark assignment through a subsequent written agreement has, however, also been ruled out in the case ofM/s. Eveready Industries India Limited vs Mrs. Kamlesh Chadha [ORA/97/2009/TM/DEL, ORA/98/2009/TM/DEL], wherein the impugned agreement was held defective and contrary to law, as “There is no procedure in the Act to anti-date the document”. This blanket observation, going beyond the facts of the case, seemingly bar both retroactive and nunc pro tunc assignments.

The aforementioned observation made by the IPAB leads to confusion as it does not specify whether only the retroactive trademark assignment agreements which themselves assign the trademark are invalid, or even nunc pro tunc assignments are impermissible under the Act. Whereas allowing the former under the Act inherently poses various legal issues, disallowing the latter threatens to reverse precedents to the contrary. Given inherent evidentiary challenges in proving genuine nunc pro tunc assignments on strength of subsequent written agreements and distinguishing them from sham agreements, making the latter permissible would raise its own different set of legal issues. 

Conclusion

With regards to the validity of nunc pro tunc trademark assignments, the position is now doubtful. Until the question is answered by the courts in a more definitive judgment, or a legislative amendment is brought in this regard, high evidentiary standards are expected for proving nunc pro tunc assignments. Regarding the validity of true retrospective assignment of trademarks, neither the statute nor the judgements consider it permissible and legal.

Endnotes

1.      Ramesh L. Vadodaria vs Assistant Registrar of Trade Marks [2005 (30) PTC 297 IPAB]. https://indiankanoon.org/doc/1481762/

2.      M/s. Eveready Industries India Limited vs Mrs. Kamlesh Chadha [ORA/97/2009/TM/DEL ORA/98/2009/TM/DEL]. https://www.ipab.gov.in/ipab_orders/delhi/ORA-97-&-98-2009-TM-DEL.pdf

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Introduction

The Ministry of Information and Broadcasting has proposed amendments to the Cinematograph Act, 1952 (“the Act”) through the Cinematograph (Amendment) Bill 2021 (“the Bill”), published on June 18, 2021.    

The Bill proposes to inter alia bestow revisional powers with the Central Government by empowering it to order re-examination of a film already certified for public exhibition on account of violation of Section 5B(1) of the Act and penalise film piracy.

Some of the changes as proposed are seen by this reviewer as being in dissonance with other existing rights and statutes. This review seeks to examine the possible implications and grey areas of the proposed changes.

Revisional Powers of Central Government

The Bill proposes to grant power to the Central Government to send back a film already certified for public exhibition for re-examination which power goes against an earlier ruling of the Supreme Court rightly striking down revisional powers of the Central Government in respect of certified films.

The revisional power is unnecessary as the scope for which such power may be exercised is already sufficiently covered by existing provisions guiding film certification in the Act, guidelines issued by the Central Government for film certification and the Constitution.

The Bill as it stands does not impose any limitation on the number of times a film may be sent back for re-examination. It also not only leaves scope for ordering re-examination of a film that is already being exhibited, but does not provide for procedure to be followed by exhibitors in such a situation. 

From the perspective of business owners, not only does this risk misuse of the power by way of curbing creative freedom but this step will likely lead to additional costs given that once a film has been certified, the film is heavily promoted and marketed. Additionally, recourse will only lie with the High Court given the abolishment of the appellate tribunal and thus adding to further costs and delays.

The uncertainties that are brought about amidst the change as proposed, will resultantly discourage content creation given the fear that a film may never see the light of day and also lead to reduction in investment in this sector. Such films becoming controversial in nature possibly will not be picked up by other platforms so as to avoid conflict and scrutiny.

Inclusion of Piracy

The Bill only encompasses piracy by way of an audio-visual recording device and has failed to address other modes of piracy, primarily copying of data from original storage media and distribution.

The inclusion of the offence of piracy in the Bill resultantly seems to give an aggrieved person remedy under two legislations. There exist differences in the Bill and the Copyright Act, 1957 including unequal penalty for what appears to be the same offence. The Bill is also short of other important provisions relevant for piracy such as those included in Sections 64 (power of police to seize infringing copies) of the Copyright Act, 1957. From the Bill it appears that recording for purposes as set out under Section 52 of the Copyright Act, 1957 (acts not amounting to infringement of copyright) may still be permitted.

Further, the term ‘author’ as used in this section is insufficient to deal with situations where any copyrighted work is assigned from the author to another, making the latter the owner of the copyright i.e. entitled to exercise rights over the work to the exclusion of authors.

Other Changes

The introduction of a further subdivision on the basis of age of the category U/A for film certification is a positive development that will help widen the permissible viewer base of films otherwise simply certified as U/A by breaking up this category into smaller fragments on the basis of maturity.  The Bill also formally proposes to provide certification to films in perpetuity as opposed to the 10 year currently identified.

While the Bill has identified categories of certification for ‘unrestricted public exhibition’, the ambit of “public exhibition”  has not been defined leaving the term as ambiguous and open to varied interpretations.

Conclusion

The overarching power given to the Central Government is unnecessary and may be seen as a threat to the constitutionally guaranteed freedom of speech and expression. Not only does it leave scope for manipulation or stifling of free speech by the Government but would also lead to undue delay in the certification process.

It may well be better to establish an independent film council like the erstwhile Film Certificate Appellate Tribunal to deal with grievances relating to film certification.

The issue of piracy being unequally dealt with by the Bill as compared to the Copyright Act, 1957 and impact of the existence of remedy under two laws also needs to be more fully addressed.

Admittedly, while there is need to update the Act particularly in terms of recourse in respect of film certification, the Bill as it stands features loopholes and grey areas that need to be addressed so as to remove ambiguity and increase effectiveness to the advantage of all.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Citation: Saha PK, Kaushik S. How effective are India’s model guidelines on implementation of IPR policy for academic institutions? Seeking the answer from the US and the UK experience. J World Intellect Prop. 2021;24:100–121. <https://doi.org/10.1111/jwip.12181 >

Introduction

The above captioned article presents a detailed analysis of the Draft Model Guidelines on Implementation of IPR Policy for Academic Institutions[1] notified by the Department for the Promotion of Industry and Internal Trade, Government of India, in September 2019.

The article looks at the existing legal framework on IP generated by academic institutions and public-funded research in India, the US and the UK to provide context for the arguments presented in the text. It delves into the nature of the Guidelines, discusses its drawbacks, and comparatively analyses the Guidelines with the framework in the US and the UK, in an attempt to anticipate the consequences of enforcing the Guidelines in India. Based on the various arguments set out in it, the article concludes that although the Guidelines were brought with pious intentions, yet they are “misplaced, inapt and ill-judged”.

Scrutiny

The article points out that hitherto, academic institutions had the complete discretion to protect and commercialise IP created through public funds, leading to inconsistent institutional policies. Hence, the Guidelines are introduced as a way to bring congruence, as well as to overhaul the relationship between academic institutions and industry, so as to facilitate commercialisation of IP and provide higher incentives to researchers.

Talking about the non-binding nature of the Guidelines, the article notes that the Government seems to have taken cue from its experience with the Protection and Utilization of Public Funded Intellectual Property Bill, 2008, [2] which was criticised for being unnecessarily restrictive and punitive in nature. However, despite the Guidelines not having the force of law, it is argued that their importance would not be undermined as they might bring about behavioural changes. The article cites examples wherein societal attitude has undergone a positive change owing to non-binding regulations, and it is presumed that the Guidelines would have the same effect. But the article fails to consider the relative unawareness of the Indian population about IP and its importance. IP, as a field of law, has only started to gain its grip in India even amongst the legal fraternity, and betting on behavioural changes in such a scenario seems utopian. Further, the studies relied on in the article are from the domain of rape laws and anti-discrimination law, and no evidence is presented to suggest that the same effect could take place in the realm of IP laws as well, especially considering its commercial aspect.

Deficiencies

The article discusses various drawbacks of the Guidelines. Firstly, concern is expressed over the omission of defining the term “academic institution” for the purposes of the Guidelines. It is argued that lack of the said definition creates ambiguity regarding applicability of the Guidelines to research institutions and laboratories. Secondly, the Guidelines do not differentiate between “innovation” and “invention”, which are inherently different concepts. The article also points towards disregard of Section 47(3) of the Patent Act, 1970, as the Guidelines allow for an agreement to be made between the researcher and the academic institution whereby the institution may agree to not retain the license to use the IP for research and educational purposes. It is correctly noted that the Guidelines cannot override the provisions of the Patent Act, 1970, but this error shows inattention on the part of the drafters. Thirdly, it is argued that the Guidelines are also incompatible with the National Innovation and Startup Policy, 2019 [3], (NISP) as there appears to be a contradiction between their patent ownership schemes. While the NISP provides for joint ownership of IP by the inventor and the institute, the Guidelines vest ownership with the institution. Fourthly, the Guidelines do not give any freedom to the IP creator to decide whether to seek IP protection or not. The decision is made by the academic institution. The article rightly contends that this might stifle open access to research.

Comparisons

The article mentions the rationale behind choosing the US and the UK for comparative analysis is that India’s academic IP policy is moving from a UK-style framework to a US-style framework. The UK-approach gives each academic institution freedom to come up with its own IP policies, while the US-approach establishes a statutory mandate to be followed. Hence, the experiences of these countries, it is assumed, provide a valuable insight into the consequences of enforcing the Guidelines. However, this assumption is unfair because, despite the legislative framework being similar, India vastly differs from the UK and the US in terms of industrial structure and quality and quantity of research done in academic institutions.

Conclusion

The article analyses various aspects of the Guidelines quite thoroughly, and relies on credible studies and data for each of its arguments. However, it does not consider the socio-economic realities of India at certain places, weakening the basis of a few assumptions. Having said that, issues in the Guidelines highlighted by this article make the Guidelines seem like a rushed effort to emulate the US-framework, without keeping in mind India’s current legal framework.

Endnotes

[1] Model Guidelines on Implementation of IPR Policy for Academic Institutions, 2019, Cell for IPR Promotion & Management- Department for the Promotion of Industry and Internal Trade (CIPAM-DPIIT), Government of India. https://dipp.gov.in/sites/default/files/Draft_Model_Guidelines_on_Implementation_of_IPR_Policy_for_Academic_Institutions_09092019.pdf 

[2] The Protection And Utilisation Of Public Funded Intellectual Property Bill, 2008. https://prsindia.org/files/bills_acts/bills_parliament/1229425658_The_Protection_and_Utilisation_of_Public_Funded_Intellectual_Property_Bill__2008.pdf 

[3] National Innovation and Startup Policy 2019 for Students and Faculty, 2019, Ministry of Human Resource Development, Government of India. https://mic.gov.in/assets/doc/startup_policy_2019.pdf 

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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Citation: Javed, Ghazala, Ritu Priya, and Deepa V. K. ‘Protection of Traditional Health Knowledge: International Negotiations, National Priorities and Knowledge Commons.’ Society and Culture in South Asia 6, no. 1 (January 2020): 98–120. https://doi.org/10.1177/2393861719883069 

Introduction

The research article discusses how Traditional health knowledge (“THK”) being a promising domain of Traditional knowledge (“TK”) is currently highly prone to misappropriation due to its immense economic and commercial value. It highlights and brings out the issues being negotiated at the WIPO’s Intergovernmental Committee on Genetic Resources, Traditional Knowledge and Folklore (“WIPO-IGC-GRTKF”) with respect to a proposed treaty. The research article also provides that a comprehensive national policy instrument and sui generis law for the protection of THK is the need of the hour. The article proposes that national governments should be given status of knowledge holders for THK in the public domain as put forward by India. The research article boldly suggests that the framework of a ‘Knowledge Commons’ for just sharing of TK and its innovations may be a better option as compared to bringing TK under the domain of Intellectual Property (IP).

Traditional Health Knowledge and Intellectual Property

The research article discusses the vast richness of India’s TK which is present in both codified and uncodified forms. It is correctly highlighted that since THK has promising economic value, it is under threat of external commercial forces, for example, misappropriation of Genetic Resources (“GR”). It is asserted that although IPR has been posited as an instrument to sufficiently protect biodiversity and ensure that benefits arising from use of TK such as its GRs are shared in a fair and equitable manner among the original custodians, it fails to do so.

It is maintained that since proponents of IPR are unwilling to share the ‘innovation’ with the original holders of the TK, or to commit to sufficient benefit sharing for this widely diffused public knowledge based on TK, the IPR regime is in direct conflict with the principles underlying THK. However, this appears to be a narrow view of the regime. It can be argued that the IP has vast scope to generate incentives for local communities to conserve their bio-diversity as it would directly make big industrialised countries responsible for equitable benefit sharing with indigenous communities. Furthermore, IPR has proved itself as an evidence-based mechanism that sufficiently promotes technological innovation and knowledge dissemination.

International Protection Mechanisms for Traditional Health Knowledge

Both defensive and positive protection mechanisms are elaborated upon in the article. Defensive protection means to prevent piracy and application for IP as new inventions, for example, India’s Traditional Knowledge Digital Library (“TKDL”). Positive protection is geared towards granting rights to holders of THK and accrue benefits through commercialization on Mutually Agreed Terms. Although certain legal instruments are mentioned in the article like, Article 31 of the UN Declaration on the Rights of Indigenous Peoples and Cancun Declaration, the same are declared to be grossly insufficient to deal with THK. To resolve this, IGC-GRTKF is negotiating three separate texts for developing international legal instruments for providing effective protection to TK, TCE and GRs.

At the 27th IGC-GRTKF in 2014, the countries with vast TK framed the idea of tiered/differentiated approach to TK/TCEs. It provided a framework for categorising various kinds of TK/TCEs in terms of their diffusion or lack of it with regard to the public and then developing a strategic approach which could ensure whether exclusive or non-exclusive rights should be given to the beneficiaries of TK/TCEs. India also proposed the role of nation states as custodians of commonly held TK and their fiduciary role vis-à-vis indigenous communities. The proposal to include national authorities within the definition of beneficiaries appears to be highly useful where TK cannot not be directly attributable to a local community and will thus provide an extra layer of protection to TK.

Although a sui generis mechanism of protection is being negotiated, still the main divide in the approach, which is evident is that developed countries are trying to fit provisions of the proposed texts in prevailing IP laws. Hence, it can be observed here that countries having vast resources of TK, like India, could want to ensure that publicly available TK is also protected and exclusive rights be granted to TK holders. On the other hand, developed countries like the United States, could prefer free access to use of publicly diffused TK, allowing only miniscule benefit-sharing rights to specific TK holders.

Conclusion

Through a comprehensive discussion on current attempts by the international community to safeguard the THK, the research article attempts to highlight the pressing need of introducing a sui generis legislation. The research article concludes by proposing the framework of a ’knowledge commons’ that acknowledges the sources of all knowledge elements and allows for their free use rather than IP for just sharing of TK and its innovations. Although idealistic, this proposition appears to fall short on the practical aspect and may be insufficient to provide the required protection.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP