Category: Law School Notes

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Citation – 133 S. Ct. 2107 (June 13, 2013)

Facts:  Myriad Laboratories discovered the existence of genes BRCA 1 and BRCA 2 on the Human Chromosomes, the mutations of which can cause breast cancer, amongst approximately 15 million genes in the human genome. In addition, it synthesized a gene called the BRCA cDNA, which is a synthetic product that mirrors the coding sections of the BRCA genes, and “primers” used in diagnostics gene and applied for a composition patent on it. Myriad’s patents would, if valid, give it the exclusive right to isolate an individual’s BRCA1 and BRCA2 genes (or any strand of 15 or more nucleotides within the genes) by breaking the covalent bonds that connect the DNA to the rest of the individual’s genome. The patents would also give Myriad the exclusive right to synthetically create BRCA cDNA. In Myriad’s view, manipulating BRCA DNA in either of these fashions triggers its “right to exclude others from making” its patented composition of matter under the Patent Act.

Issues:
1) Whether Myriad’s claimed invention BRCA 1 and BRCA 2 and BRCA cDNA, the sequence of certain human genes in both isolated and purified forms, falls within the scope of inventions for which a patent may be granted.
2) Whether the product patents obtained by Myriad Laboratories on the discovery of genes, BRCA 1 and BRCA 2 and BRCA cDNA, on the human genome valid under the provisions of 35 U. S. C. §101 and in consonance with the relevant jurisprudence on the matter.

Rule:35 U. S. C. §101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Analysis:  The Supreme Court considered the argument made by both the sides and held that, “A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring”. So, the discovery by Myriad Laboratories, of the position of BRCA 1 and BRCA 2 genes was not patent eligible under the provisions of 35 U. S. C. §101. Although the section makes patents eligible for a new composition of matter, but “laws of nature, natural phenomena, and abstract ideas” ‘are basic tools of scientific and technological work’ ” that lie beyond the domain of patent protection, and hence these naturally occurring genes were not patent eligible under the provision of the law.
Myriads discoveries falls within the law of nature exception. The primary work of the plaintiff was to discover the already existing location of the genes BRCA 1 and BRCA 2. Mere discoveries cannot be made patent eligible even though there are ground breaking discoveries.  Finding the location of the BRCA1 and BRCA2 genes does not render the genes patent eligible “new . . . composition[s] of matter,” §101. Myriad’s patent descriptions highlight the problem with its claims: They detail the extensive process of discovery, but extensive effort alone is insufficient to satisfy §101’s demands.
However, the court agreed to grant patent to the composition of cDNA because, it was clear that this was not a “product of nature”, in the sense that it did not exist in nature, Its creation results in an exons-only molecule, which is not naturally occurring. Its order of the exons may be dictated by nature, Human intellect and skill had to involved to produce this matter in the laboratory. Its order of the exons may be dictated by nature, but the lab technician unquestionably creates something new when introns are removed from a DNA sequence to make cDNA.
The court differentiated this case from the Diamond. The case in diamond was that the plaintiff had created a living organism by changing the strains in it through a laboratory process and hence, it was not naturally occurring and patent eligible. Whereas in the present, with the exception of cDNA, the others were naturally occurring and the plaintiff did not have to put in any work, intellectual and skill, in the production of the DNA.

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Citation – SC Civil Appeal No. 2706-2761 of 2013

Facts: In this case, sequence of events with prior art are as follows:
§ The Zimmerman patent in ’93, which disclosed the imatinib free base – this patent was not granted in India because India did not provide for pharmaceutical patents prior to 1995;
§ A publication in 1996, which referenced imatinib mesylate;
§ The 1998 patent application before the Indian Patent Office, which claimed the betacrystalline form of imatinib mesylate.
Novartis filed for patent of its “Beta Crystalline” form of “Imatinib Mesylate” in 1998 as per the TRIPS agreement of WTO. The application was processed in 2005 and was rejected in 2006 on the grounds that it failed to satisfy the requirement of novelty and non-obviousness as per the amended Indian Patent Act. Novartis appealed against the decision in Madras High Court that was then transferred to the IP Appellate Board. The IP Appellate board rejected the application on the grounds that the invention was not a new substance but an amended form of a known substance and that Novartis was unable to show the increase in efficacy as laid down in section 3(d) of the Indian Patent Act.
Novartis appealed before the Madras High Court that Section 3(d) violated Article 14 of the Constitution as the requirement of ‘enhanced efficacy’ under section 3(d) was vague and gave unrestricted power to the patent examiner. The High Court rejected the application and held that the object of section 3(d) was to prevent intellectual monopoly privileges and evergreening of patents.
Appealed to the Supreme Court

Issues:
1)What is the ‘Known Substance’ for the purpose of section 3(d)?
2) What is the meaning of ‘efficacy’ in section 3(d)?
3) Does an increase in bioavailability qualify as increase in therapeutic efficacy under Section 3(d)?
4) Was the claimed invention by Novartis more efficacious than the substance that it was derived from?

Analysis:
1)After the 2005 amendment, Section 3(d) required the claimed invention to be more efficacious than the ‘known substance’ from which the claimed invention was derived. In this case, Novartis was keen to have ‘Imatinib Free Base’ to be identified as he ‘known substance’ instead of ‘Imatinib Mesylate’ since it would be easier to prove greater efficacy in comparison to Imatinib Free Base. Supreme Court shot down this argument on the grounds that “Imatinib Mesylate” was anticipated by prior art (publication in 1996) and existed before the claimed invention hence it was a known substance.
Therefore, Imatinib Mesylate was presumed to be the known substance in this case.
2) While Novartis was arguing for a broader interpretation of ‘efficacy’ in Section 3(d) which would include other beneficial properties such as increased stability, etc., Supreme Court made it crystal clear that ‘efficacy’ in Section 3(d) only means therapeutic efficacy. The court held that “not all advantageous or beneficial properties are relevant, but only such properties that directly relate to efficacy, which in case of medicine, is its therapeutic efficacy.
3) Bioavailability is the increased ability of the drug to dissolve into the bloodstream of the patient. The Supreme Court on this issue ruled that such an increase of 30% in bioavailability can qualify for protection under 3(d) if evidence is provided to establish that such an increase leads to greater therapeutic efficacy.
4) The Court compared the efficacy of the claimed invention with the known substance (Imatinib Mesylate) with reference to its flow properties, better thermodynamic stability and lower hygroscopicity and concluded that none of the three properties identified will qualify under section 3(d) as it doesn’t contribute to an increased therapeutic efficacy. Conclusion: The Supreme Court rejected the appeal filed by Novartis and concluded that since there was no substantive & conclusive material and evidence to prove that beta crystalline form of Imatinib Mesylate will produce an enhanced or superior therapeutic efficacy, therefore failed to meet the requirements under section 3(d).

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Citation – (2002) I.P.L.R. 255 (Cal)

Facts and Procedural History:
§ The Appellant, Dimminaco A.G, filed for a patent application for an invention relating to a process for preparation of the bursitis vaccine. The vaccine was useful for protecting the poultry against the contagious bursitis infection. However, the process to prepare the vaccine contained a living virus in the end product.
§ The patent application filed by Dimminaco A.G. was examined by the Patent Officer Examiner under Section 12 of the Patent Act, 1970. On such examination, the Examiner gave a finding that the said Patent Application did not constitute an invention under Section 2 (j) (i) of the Patent Act, 1970.
§ Dimminaco A.G. further appealed against this rejection to the Controller of Patents & Designs.
§ Acting under delegated authority by the Controller, the Assistant Controller of Patents and Designs too refused to accept the Patent Application and upheld the objection.
§ Hence, the appellants approached the Calcutta High Court with this appeal.

Issues:
1) Is there a statutory bar to accept a manner of manufacture as patentable if the end product contains a living organism?
2) Will a process of preparing a vaccine that contains a live virus be considered to be ‘methods or process of manufacture’ under the Patent Act, 1970? If yes, will it be construed to be an invention as under Section 2 (j)(i) of the Patent Act, 1970?

Rule and Law Applicable:Section 2 (j)(i) of the Patent Act, 1970 stated –
“(j) ‘Invention’ would mean any new and useful –
i. Art, process, method or manner of manufacture;
ii. Machine, apparatus or other articles;
iii. Substance produced by manufacture and includes any new and useful improvement of any of them and an alleged invention;”
Section 5 of the Patent Act, 1970 stated – “Inventions where only methods or process of manufacture patentable –

1) In the case of inventions –
a) Claiming substances intended for use, or capable of being used, as food or as medicine or drug, or
b) relating to substances prepared or produced by chemical process (including alloys, optical glass, semi-conductors and intermetallic compounds),
No patent shall be granted in respect of claims for substances themselves, but claims for the methods or processes of manufacture shall be patentable.
2) Notwithstanding anything contained in sub-section (1), a claim for patent of an invention for a substance itself intended for use, or capable of being used, as a medicine or drug may be made and shall be dealt, without prejudice to the other provisions of this Act, in the manner provided in Chapter IV-A.”

Analysis:
§ The Court held that there is no statutory bar to accept a manner of manufacture to be patentable if the end product contains a living organism. In this case, the process claimed in the patent application was a new and novel process for the preparation of vaccine that involved chemical steps under specific scientific conditions. Therefore, the Court held that it was a new process and was patentable under Section 5 of the Patent Act. In other words, since the end product was a new article, the process leading to its manufacture was held to an invention, and thus patentable.
§ To decide whether in a particular case, the process of manufacture that is involved in the invention ought to be patented or not, the vendibility test can be used.
§ A vendible product is one that can be passed on from one man to another upon the transactions of purchase and sale. Therefore, the vendibility test is satisfied if:
* the invention results in the production of some vendible product; or
* if it improves/restores former conditions of a vendible product; or
* if its effect is the preservation and prevention from deterioration of some vendible product.
§ Since ‘manner of manufacture’ is not defined in the statute, the dictionary meaning of the word has to be used. The Court held that the dictionary meaning of the word ‘manufacture’ includes the process of preparing a vendible commodity which contains a living organism.
§ The Court also rejected the Patent Office’s understanding of the lyophilizing. It held that the as a result of the process of lyophilizing, nothing is killed or destroyed – the biological activity of the material is retained and not wasted. Therefore, as a matter of practice, patents had been granted by various Patent Offices, to processes that involved living organisms.

Conclusion and Ratio Decidendi:
§ There is no statutory bar to accept a manner of manufacture as patentable if the end product contains a living organism.
§ Since the claim process for patent, that is, the bursitis vaccine, led to a vendible product, it was certainly a substance after going through the process of manufacture. Therefore, the process was an invention, and thus patentable.

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Citation – 561 U.S. 593

Facts: The petitioner’s patent application sought protection for an invention that claimed a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy. It explained how commodities buyers and sellers in the energy market can protect, or hedge, against the risks of price changes which happen every now and then. The key claims were claimed 1, which described a series of steps instructing how to hedge risk and claim 4, which placed the claim 1 concept into a simple mathematical formula. The remaining claims explained how claims 1 and 4 can be applied to allow energy suppliers and consumers to minimize the risks resulting from fluctuations in market demand.

Procedural History: The Patent and Trademark Examiner rejected the application on the grounds that the invention is not implemented on a specific apparatus, merely manipulates an abstract idea, and solves a purely mathematical problem. The Board of Patent Appeals and Interferences agreed and affirmed. The United States Court of Appeals of the Federal Circuit, in turn, affirmed. It produced five different opinions.

Laws Involved: 35 U.S.C. § 101: Whoever invents or discovers any new and useful process, the machine, manufacture or composition of matter, or any new and useful improvement, thereof, may obtain a patent, therefore, subject to conditions and requirements of titles.

Issue: Whether the petitioner’s invention patentable under the above-mentioned law?

Analysis: The Patent and Trademark Examiner rejected petitioners’ application, explaining that
“it is not implemented on a specific apparatus and merely manipulates an abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts.”
The Board of Patent Appeals and Inferences affirmed, concluding that the application involved only mental steps that do not transform physical matter and was directed to an abstract idea. The United States Court of Appeals for the Federal Circuit heard the case en banc and affirmed. They reject the prior test for determining whether the invention produced a ‘useful’, ‘concrete and tangible result.’ They referred to the case of State Street Bank & Trust Co. Ltd. v. Signature Financial Group Inc., 149 F.3d 1368 and held that a claimed process is patentable if:
§ It is tied to a particular machine or apparatus, or
§ It transforms a particular article into a different state or thing

The Court also held that business methods are not patent-ineligible per se, they are patent ineligible because they describe a method of doing business that is not a process under §101 and, therefore, rejected the idea that business method patents should be outside the scope of patent eligibility per se, saying at least some business patent method should be patent eligible. SC said that the “machine and transformation test” isn’t the sole standard. Thus, so long as the business method claims otherwise meet the requirements of §§ 102 (invention be novel), 103 (non- obvious), and 112 (fully and particularly described), those claims are patentable. Instead of applying the “machine-or-transformation” test, the Court simply looked to its precedent in Benson, Flook, and Diehr case and concluded that Applicants’ claims were drawn to “abstract ideas” and thus not patentable.

Conclusion: Therefore, concluding that this machine or transformation test is the sole test for determining patent eligibility of a process under §101, the Court applied the test and held the application wasn’t patent eligible.

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Citation – 2002 4 S.C.R 45

Facts: The respondent applied for a patent on an invention titled “transgenic animals” which they claimed to be suitable for animal carcinogenic studies. They injected oncogene which is a cancer-promoting gene into fertilized mouse eggs as close as possible to one cell stage which were further implanted into a female host mouse. They tested for the presence of oncogene upon the development and delivery of the offspring which are further mated with the ones who are not genetically altered. This whole process led to a mice (founder mice) genetically altered and named as oncomouse. This has susceptibility to cancer and hence was a useful means to bring out a cure for cancer. Respondents claimed patent protection for both the process by which oncomice are produced and the end product of the process. Patent examiner granted patent only for the process and not for the product which was further confirmed by the appellant commissioner.

Issue:Whether higher forms of life are inventions as ‘manufacture’ or ‘composition of matter’ within the meaning of inventions under The Patent Act?

Rule:  Section 2 of the present Patent Act (Canadian Law) now provides as follows: “Invention” means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.”

Holding:  The Court noted that biological inventions were living and self-replicating, incredibly complex, incapable of full description and contained important characteristics that had nothing to do with the invention. These issues clearly show that patenting higher life forms raise serious concerns which are not covered by the scheme of the Patent Act. The Court acknowledged that the two central objects of the Patent Act were to advance research and development and to encourage broader economic activity. However, these objects do not imply that “anything under the sun that is made by man” is patentable. Instead, he found that the language and scheme of the Act is not well suited to higher life forms and as such he surmised that Parliament did not intend for patent rights to extend to higher life forms.

Dissent: The decision of the majority was opposed by a strong dissent. Justice Binnie argued that it is an extraordinary scientific achievement to permanently genetically alter the genes of an animal where that alteration did not arise in nature. He rationalized that just as other forms of invention such as moon rockets, antibiotics, telephones, e-mail or hand-held computers, which would not have been anticipated at the time the Patent Act was drafted, would be considered inventions, so too should genetic engineering of higher life forms.

Analysis:  ‘Manufacture’ (considered in context of the act) is a non-living mechanistic product or process, and not a higher life form and neither is the composition of matter. While fertilized eggs are injected and may constitute to be a mixture of ingredients, the oncomouse itself doesn’t consist of ingredients that have been combined or mixed together by a person, as it is biologically grown and doesn’t require any human intervention. Further denying the contention that inventions which precede patent laws are unanticipated and hence should be considered a patentable subject matter the court said that not all of them to be necessarily patentable as may be parliament didn’t intend them to be covered under patentable subject matter or they regarded these to be mere discoveries. Further referring to the Plant Breeder’s Rights Act, the court said that these higher life forms (plants) have been covered under a special legislation specifically for the rights of plant breeders which demonstrates that higher life forms were never intended by the parliament to be covered under the Patents act and hence suggested that until Parliament creates an applicable legislation it is appropriate to let the patent commissioner forbid this kind of patent of higher life forms.

Conclusion: Higher life forms are not inventions under the meaning of S.2 of the Patent act as it does not qualify as a “composition of matter” or a “manufacture” and hence does not meet the subject matter criteria of the patent act. Hence patent cannot be given to the product oncomouse.

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Citation – 447 U.S. 303 (1980)

Facts: In 1972, respondent Chakrabarty, a microbiologist, filed a patent application for a genetically engineered bacterium developed by him capable of breaking down multiple components of crude oil. Due to the properties of the invention it is believed to have a significant value in the treatment of oil spills. Chakrabarty’s patent claims were of three types:
1) Process claims for the method of producing the bacteria.
2) Composition of the slurry of bacteria, its carrier liquids and its application.
3) Claims over the bacteria itself.
The patent examiner (Sydney A. Diamond) allowed the claims falling into the first two categories but rejected the third claim for patent over the bacteria. His decision rested on two grounds:
(1) that micro-organisms are “products of nature,” and
(2) that as living things they are not patentable subject matter under 35 U.S.C. 101.

Issues:
1) Whether genetically engineered bacterium being living things are patentable subject matter under the statute?
2) Whether respondent’s micro-organism constitutes a “manufacture” or “composition of matter” within the meaning of the statute (Under Title 35 U.S.C , Section101).

Procedural History:
The patent examiner allowed the claims falling into the first two categories, but rejected the third claim for patent over the bacteria. Chakrabarty appealed the rejection of these claims to the Patent Office Board of Appeals and the Board affirmed the examiner on the second ground. The United States Court of Customs and Patent Appeals overturned the case in Chakrabarty’s favour, writing that “the fact that micro-organisms are alive is without legal significance for purposes of the patent law.” Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court.

Law Applicable:  Title 35 U.S.C., Section 101, which provides: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Judgment /Ratio Decidendi:

• The Supreme Court (affirmed the decision of The United States Court of Customs and Patent Appeals) held that a live, human-made micro-organism is patentable subject matter under Section 101.
  § Respondent’s micro-organism constitutes a “manufacture” or “composition of matter” within that statute.
  § Court has read the term “manufacture” in Section 101 in accordance with its dictionary definition to mean “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.”
  § Similarly, “composition of matter” has been construed consistent with its common usage to include “all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.”
  § The patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His invention is not a discovery but a result of human intervention and research.
  § Also, it is a non-naturally occurring manufacture or composition of matter thus making it a patentable subject matter.
  
  Conclusion:The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” This is not to suggest that Section 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable under the U.S.C. Respondent’s micro-organism qualifies as patentable subject matter as it is not an unknown natural phenomenon. It is a non-naturally occurring manufacture or composition of matter marked with different characteristics from any found in nature and one having the potential for significant utility. His invention is not a discovery or nature’s handiwork, but a result of human ingenuity and research.

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Citation – AIR 1982 SC 1444

Facts:
§ Hindustan Metal Industries (Plaintiff) is a registered partnership firm carrying on the business of manufacturing brass and German silver utensils at Mirzapur.
§ Biswanath Prasad Radhey Shyam (Defendant) is a concern carrying on the business of manufacturing dishes and utensils in Mirzapur.
§ The old method of manufacturing utensils, particularly shallow dishes, was to turn scrap and polish them on some sort of headstock without a tailstock, the utensils either being fixed to the headstock by thermoplastic cement or held in the jaws of a chuck fixed to the head-stock. This system was, however, fraught with risk to the workers inasmuch as the utensils used to fly off from the headstock.
§ To introduce improvement, convenience speed, safety and better finish plaintiff invented a device and method for the manufacture of utensils and got the alleged invention patented under the Indian Patent and Designs Act, 1911.
§ The defendant started using plaintiff’s patented method for manufacturing of dishes, against which the plaintiff filed the case of infringement.
§ The defendant filed a counter-claim, praying for revocation of the patent on the grounds that the alleged invention did not involve any inventive step and has no utility.

Procedural History:  High court dismissed the plaintiff’s suit. Plaintiff appeal before the division bench of the High court. Appellate bench concluded that the method patented did involve an inventive step, thus, allowed the appeal. Dissatisfied with the holding defendant appealed to the Supreme Court.

Issue:  Whether Plaintiff’s invention does involve an inventive step, regards to what was known or used prior to the date of the patent and has utility?

Analysis:
§ The fundamental principle of Patent Law is that a patent is granted only for an invention which must be new and useful. It is essential for the validity of a patent that it must be the inventor’s own discovery as opposed to mere verification of what was, already known before the date of the patent.
§ It is important that in order to be patentable an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an ‘inventive step’. The improvement or the combination must produce a new result, or a new article or a better or cheaper article than before.
§ The subject of the invention was known for decades for the traditional purpose of scraping and turning utensils, with a slight change in the mode of application. The patented invention was not a manner of new manufacture or improvement, nor did it involve any inventive step having regard to what was known or used prior to the date of patent. The slight modification in the patented invention would have been obvious to any skilled worker in the field based on knowledge existing at the date of patent.

Conclusion:   The patented machine was neither a manner of new manufacture or novel improvement, nor did it involve any inventive step, having regard to what was publicly known or used at the date of the patent.

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Citation –  508 F.3d 1146

Facts:  The plaintiff in this case markets and sells copyrighted images of models (nude images). The website works on a subscription basis whereby the subscribers pay monthly fee to view these images. To view these images perfect 10 set up a members only area, the members need to use a password to log into this domain to view them. Further it licenses reduced-size copyrighted images for download and use on cell phones.
The Defendant Google operates a search engine that automatically accesses thousands of websites on the Internet and indexes them within a database stored on Google’s computers. When a Google user accesses the Google website and performs a search query, Google’s software searches its database for websites responsive to that search query. Google then sends relevant information from its index of web sites to the user’s computer. Google’s search engine provides results in the form of text, images, or videos. Google Image Search provides search results as a web page of small images called “thumbnails,” which are stored in Google’s servers. These thumbnail images are reduced, lowerresolution versions of full-sized images stored on third-party computers. When a user clicks on a thumbnail image, Google’s software directs the user’s browser to create on the user’s computer screen a small rectangular box that contains the Google thumbnail and a larger box that contains the full-size image, which the user’s computer has been instructed to access from the third-party site that houses that image (Amazon is one of these third party websites in this case).Though both the boxes appear to be coming from the same source they are actually coming from google and a third-party website. This process is called “in-line-linking”. though Google does not store these images on its server, it stores the content of the webpage in its cache, Google’s cache copy can provide a browser with valid directions to the infringing images even if the website does not have those image anymore.
Google also has a business programme called “AdSense” which generates revenue by letting website owners to register with Google and by placing HTML instructions on its web pages that signal Google’s server to place advertising on the web pages that is relevant to the web pages’ content. the participants of “AdSense” share the revenues which flow from such advertisings.
Some of the website publishers pirated perfects 10’s copyrighted images and when someone performs a search query Google automatically directs them to the webpages containing these infringing images and also provides thumbnail versions of these images to the users. Perfect 10 filed a copyright infringement action against Google, and sought a preliminary injunction to prevent Google from infringing Perfect 10’s copyright in its images and linking to websites that provide full-size infringing versions of Perfect 10’s photographs.

Procedural History:  The District Court and the Court of Appeals concluded that Google had infringed Perfect 10’s right of Display. They also held that Google’s in-line linking and framing of Perfect 10’s full-size images infringed neither Perfect 10’s display rights nor its distribution rights.

Issues:Whether Google’s use of the Thumbnail images and their process of “in-line-linking” is infringing Perfect 10’s copyrights on the images and if Google can use the ‘Fair Use’ defence against this claim?

Analysis: The judges were guided by Kelly v. Arriba Soft Corp. In this case, the plaintiff, a photographer brought a copyright infringement case against Arriba, the operator of an internet search engine as the search engine provided thumbnail versions of the photographer’s images in response to search queries. It was held that there was no copyright infringement. Fair Use Analysis:
a) Purpose and Character of the use: the court has to consider the purpose and character of the use and whether such use is of commercial or non-profit educational purposes in order to determine the extent to of the ‘transformative’ nature of the new work. To constitute transformative work, the original copyrighted work should be changed and used in a different context by the defendant. In this case Google’s use of thumbnails is highly transformative as they compile the Thumbnail images with information in a distinctive manner. Further the court found that Google’s search engine provides social benefit by transforming the original work perfect 10 into something new and informative which serves as an electronic reference tool, thereby providing an entirely new use for the original work. In this case though the entire original work is taken, it serves an entirely different function than the original, and therefore the use is transformative. The significantly transformative nature of Google’s search engine, particularly in light of its public benefit, heavily outweighs Google’s superseding and commercial uses of the thumbnails with regards to Google’s AdSense.
b) Nature of the copyrighted work: Perfect 10 had already exploited the right to first publication and had gained commercially; therefore it was not entitled to get protections that are available for unpublished works.
c) The amount and substantiality of the portion used: The Third factor examines the relation between the amount and substantiality of the portion used in relation to the copyrighted work as a whole. The court says Google’s use of the entire photographic image was reasonable in light of the purpose of a search engine and since using less than the entire image would defeat the purpose of the search engine to a computer user.
d) Effects of use on the market: this factor assesses the effects of the use upon the potential market for that things/product or the value of the copyrighted work. Google’s use of thumbnails did not hurt Perfect 10’s market for full-size images. Since Google’s thumbnail images were highly transformative, and there was no evidence of market harm to Perfect 10’s full-size images any potential harm to Perfect 10’s market remains hypothetical.

Conclusion:Google’s use of Perfect 10’s thumbnails constituted fair use. This is because Google had put Perfect 10’s thumbnail images to a use fundamentally different than the use intended by Perfect 10 and therefore provided significant benefit to the public.

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Citation – 2003 (5) BomCR 404

Facts:
The plaintiff No. 1 is a Company engaged in the business of television programming, video programming, multimedia programming and feature films, television serial production etc.
The concepts generated by the Plaintiffs are registered with Film Writers’ Association and the titles for such programs are registered with Indian Motion Pictures Producers’ Association. The concepts generated are expressed through concept notes, character sketches, detailed plots and episodes, main story lines that are put down in writing.
They worked on various concepts and came up with a concept titled ‘Kanhaiyya’ which was registered with the Film Producers’ Association.
The employees of the plaintiff No. 1 presented the concept under the title ‘Kanhaiyya’ to Director – Ideation of defendant No. 1 and other employees of the defendant No. 1.
The pilot of ‘Krish Kanhaiyya alongwith the developed concept was sent to the defendant No. 1 around 10th October 2002 and was also sent to Star TV, Sony TV and Sahara TV since the defendant No. 1 had not yet made up their mind as to whether to air and broadcast the serial ‘Krish Kanhaiyya’.
However, the plaintiffs did not hear from the defendants and they therefore pursued the production of the show with Sony Entertainment Television.
Soon after Sony Entertainment Television expressed its willingness to produce this concept of Kanhaiyya, the plaintiffs learnt that the defendants were doing the show based on the concept of ‘Kanhaiyya’.
As a result, M/s. Sony Entertainment Television has declined to sign the contract after coming to know that M/s. Zee Television of the defendants is going to produce and broadcast serial ‘Kanhaiyya’.

Issues:
1) Was there copying of substantial elements of the Plaintiff’s work by the Defendants?
2) Was there a copyright infringement by the defendants?

Holding:Yes, the Defendant’s work was similar to the Plaintiffs’ in material and substantial aspects. There was a breach of confidentiality as the act of the Defendants affected the goodwill of the Plaintiffs.

Analysis:The court considered the two works involved in this case with the observations and impressions of the average viewer. They found striking similarities in the two works which were not mere chances. Thus, the only inference that can be drawn from the material available on record is unlawful copying of the plaintiffs’ original work. If the concept of Lord Krishna in child form is removed from the serial of the defendants, the programmes would become meaningless. In order to find out similarity in the two concepts, what is to be seen is the substance, the foundation, the kernel and the test as to whether the reproduction is substantial is to see if the rest can stand without it. If it cannot, then even if many dissimilarities exist in the rest, it would nonetheless be a substantial reproduction liable to be restrained.

Plaintiff’s ‘Krish Kanhaiyya’	Defendant’s Kanhaiyya
Family is rich and dysfunctional	Family is rich and dysfunctional
Main woman protagonist-Step mother, most affected by the environment in the house, prays for help to God	Main woman protagonist-Dadi maa, most affected by the environment in the house, prays for help to God (Lord Krishna)
The prayer is answered soon by the arrival of Kanhaiyya	The prayer is answered soon by the arrival of Kanhaiyya
God is in Bal Krishna form	God is in child form
The interaction with Kanhaiyya is heart warming and consoling and gives some support to the main woman protagonist	The interaction with Kanhaiyya is heart warming and consoling and gives some support to the main woman protagonist
Kanhaiyya attaches himself to the seeker of help	Kanhaiyya attaches himself to the seeker of help
Opening background is a flute sound – An instrument normally thought to be played by Lord Krishna	Starts with rendition to Lord Krishna
Opening title has a prominent peacock feather and the character of Lord Krishna on it with the title Krish Kanhaiyya written across it.	The opening title has the peacock feather with the main character’s face and Kanhaiyya written all across it
Their music is flute and other instruments	Background is from Gita; Implying that it is Lord Krishna’s words.

Reasoning:
a) The concept developed by the plaintiffs is indeed novel, in the sense that Bal Krishna starts residing in the family whose life is disturbed and solves their troubles. The idea is developed into an expression, in the sense that concepts are prepared and a pilot was also prepared which was admittedly submitted to the defendant No. 1.
b) Keeping in view numerous striking similarities in two works and in the light of the material produced on record, it is impossible to accept that the similarities in two works were mere coincidence.
c) It is undoubtedly true that the law does not recognize property rights in abstract ideas, nor is an idea protected by a copyright and it becomes copyright work only when the idea is given embodiment in tangible form. When an idea is given embodiment in a tangible form it becomes subject of common law property rights which are protected by the courts at least when it can be said to be novel and new. The present case is not a case of a mere idea.
d) The work of the defendants is similar in material and substantial aspects with hat of the plaintiffs. The common feature is a dysfunctional family and the fact that the Lord Krishna enters the life of the family, which has many problems and troubles, solves them and becomes succor to the family. In the defendants’ programmed, the child is called Kanhaiyya which in India unmistakably points to Lord Krishna. The visual that goes on prior to the commercial break shows the child with peacock feather, which is again something unmistakably, associated with Lord Krishna. Moreover, through the episode, the verses of the Bhagvat Gita are chanted in the background. It is therefore difficult to accept the dissimilarity relied upon by the defendants such as the fact that the child in their episode is not ‘divine and does not perform miracles’ and therefore there is a complete dissimilarity between the main role in the two concepts.
e) Even the character sketches in both works are similar. In both the father is a businessman having three children. In ‘Krish Kanhaiyya’ elder son is a cricketer, the second child is a budding scientist and does not sleep all night whereas in defendants’ serial the second child who is a computer geed but does not sleep all night and spends too much time on computer. In ‘Krish Kanhaiyya’ youngest child is a daughter and talks to people through her doll whereas in defendants’ serial youngest child is also a daughter and talks in third person.
f) Having considered two works involved in this case not hypercritically and with meticulous scrutiny but by the observations and impressions of the average viewer, we find that striking similarities in two works cannot in the light of the material placed on record be said to constitute mere chance. We feel that the only inference that can be drawn from the material available on record is unlawful copying of the plaintiffs’ original work.

Rule:In order to find out similarity in the two concepts, what is to be seen is the substance, the foundation, the kernel and the test as to whether the reproduction is substantial is to see if the rest can stand without it. If it cannot, then even if many dissimilarities exist in the rest, it would nonetheless be a substantial reproduction liable to be restrained.

Conclusion :This case was a follow up to the RG Anand case where both the Substantiality test and the Concept and Feel Test were applied. The only difference between the two cases is that unlike in RG Anand, in the present case, the dissimilarities do not outweigh the similarities between both the works. Therefore, there was an infringement of the Plaintiffs copyright.

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Citation –(AIR 1987 Del 13)

Facts: P (Mannu Bhandari) was the author of novel ‘Aap ka Bunty’. She assigned the filming rights of her movie to the D (Kala Vikas Pictures Pvt. Ltd.). P has filed a case so as to restrain the screening of the film made by D. In P’s opinion while her novel was a literary work, the film has been heavily mutilated and commercialised and if released will lower her reputation of a research scholar in the eyes of public public and her admirers as they are likely to conclude that she has fallen prey to big money in the film world and has consented to such mutilation and distortions.

Procedural History:  The case was first filed in the District court where the learned Additional District Judge, denied P permanent injunction against the screening of the film as in his opinion P suffered no loss of reputation. The case was settled by an out of court settlement between the two parties and the court merely ruled on question of law due to lack of precedent on power of court and rights of author under Section 57 of the copyright act.

Issues:
1) What is the extent of the powers of the court under Section 57?
2) Whether assignee of a copyright can claim any rights or immunities based on the contract which is inconsistent with the provisions of Section 57?
3) Whether the movie can be filmed as it is with the changes?

Holding:  For the purpose of Section 57, the modification allowed should not be so serious that the modified form of the work looks quite different work from the original.
§ The assignee of a copyright cannot claim any rights or immunities based on a contract which is inconsistent with the provisions of Section 57.
§ Section 57 protests social interest in art and culture and not merely the interest of the author.
§ The court directed to remove the scenes which were too crude, brash and nauseating and not part of the original movie.

Rationale:
§ The Court held that when it passes a judgment under Section 57 it does not sit as a sentinel of public morals. Accordingly, the court cannot impose its views on the works of art. The concern of the Court is to merely examine how for the new ‘avatar’ is true and authentic and what changes are necessary due to constraints of a medium.
§ Section 57 confers additional special rights on the author which can be seen by the fact that the right exists even after the assignment of the copyright and accordingly a contract cannot negate the special rights and remedies guaranteed by Section 57.

Rule:In an enquiry under Section 57, the Court does not sit as a super-censor. It’s only function is to see whether there are “mutilations” or “distortions”. A contract cannot negate the special rights conferred upon an author under Section 57 of the Copyright Act.

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