Baker v. Selden (101 U.S. 99)

This is the first US Supreme Court case which dealt with the idea-

expression dichotomy.

The facts of the case are that Selden devised a new method of

financial accounting for his business. His new scheme made it

possible to record the entire operations of the business for a given

period of time on either a single page on two facing pages. He

published a short book explaining his new system, along with

accompanying forms that would be used in putting the system into

operation. Baker subsequently prepared forms that were not identical

to Selden’s but were similar to them and were tailored using Selden’s

system. Selden sued Baker for infringement.

The Supreme Court rejected the infringement argument. The court

held that the Plaintiff’s copyright in a book describing a new system of

bookkeeping extended only to his verbal description of the system,

and not the system itself. Therefore, Selden’s copyright did not give

him exclusive right in the system of accounting he had developed.

Thus, according to the court, since the defendant had used the idea

and the bookkeeping method of the plaintiff with slight variations, he

had expressed the idea by way of a different expression and therefore

his work did not amount to copyright infringement.

Responding to the fact that the Defendant had used diagrams used by

the Plaintiff in his work, the court stated that, “the very object of

publishing a book on science or the useful arts is to communicate to

the world the useful knowledge which it contains. But this object

would be frustrated if the knowledge could not be used without

incurring the guilt of piracy of the book. And where the art it teaches

cannot be used without employing the methods and diagrams used to

illustrate the book, or such as are similar to them, such methods and

diagrams are to be considered as necessary incidents to the art, and

given therewith to the public; not given for the purpose of publication

in other works explanatory of the art, but for the purpose of practical

application.” Thus, if a diagram is the practical use of the idea, it

cannot be protected.

Najma Heptulla v. Orient Longman Ltd. & Ors. AIR 1989 Delhi

63.

Judge: B.N. Kirpal J.

The facts of the case:

This case concerned publication of 30 pages (erstwhile undisclosed) of

the book, India wins Freedom, written by Maulana Azad. While

writing the book, Maulana Azad was aided by Prof. Humayun Kabir.

The process by which the book was written by the two was that

Maulana Azad had, during his life time, dictated and given certain

notes to Prof. Humayun and out of that material Prof. Humayun had

composed the book which had been approved by the late Maulana

Azad.

The manuscript of this book was ready for publication sometimes in

November, 1957. Given the personal nature of certain incidents, the

Maulana did not want a part of the book (30 pages) to be published in

the present (1958), but wished that it should be published 30 years

after his death. Maulana Azad died on 22nd February, 1958. Given

this arrangement, the National Archives and National Linrary,

Calcutta acted as trustees for copies of the complete manuscript,

including 30 pages which have not been published till today but were

required to be published after 30 years of Maulana Azad’s death i.e.

after 22nd February, 1988.

Close to 22nd February, 1988, the publishers, Orient Longman Ltd.,

dispatched letters to the legal heirs of Maulana Azad informing them

that they would be publishing the 30 pages as soon as possible after

the stipulated date and as per the earlier arrangement, the legal heirs

would continue to get royalty from the sale of the book.

Najma Heptulla, the legal heir of Maulana Azad, stated that Orient

Longman had no right/ authority to publish the concerned pages and

that Maulana Azad being the sole author of the book, any agreement

entered into by Prof. Humayun relating to publication of the book and

the undisclosed material with Orient Longman was invalid and

unenforceable, as Prof. Humayun had no right to enter into such an

agreement. Also, given this situation the copyright in the said work

rests in the legal heirs, who ought to decide when to publish the

concerned material. Consequently, the Plaintiff prayed for an

injunction under Order 39 Rules I and 2 restraining the defendants

from breaking the seals of the covers in which the complete book

India Wins Freedom.

The defendants argued, using the Donoghue case that Prof Humayun

was the author of the book, or in the alternative, Azad and Prof.

Humayun were joint authors of the book. Consequently, the

agreements and arrangements entered into by Prof. Humayun in

relation to the book were valid and enforceable. Thus, given the

agreement entered into by Prof. Humayun and Orient Longman, the

latter has the right to publish the book and the undisclosed material.

While deciding, the Court considered the definition of an “author” and

came to the conclusion, that Azad and Prof. Humayun were joint

authors of the work as between the two of them there was “joint

labouring in furtherance of a common design…” Borrowing from the

dicta of a leading English case on the point, the Court further

explained the concept of “joint authorship” by stating that, “If two

persons undertake jointly to write a play, agreeing in the general

outline and design, and sharing the labour of working it out, each

would be contributing to the whole production, and they might be said

to be joint authors of it. But, to constitute joint authorship, there must

be a common design. However, it is not necessary that each of the two

should put in the same amount of work or labour.” Thus, applying the

dicta to the facts of the case, the Court concluded that, it is clear that

there was active and close intellectual collaboration and cooperation,

between Maulana Azad and Prof. Humayun which resulted in the book

India Wins Freedom. There was a reconverted joint design between

the two in the writing of the book. The material for the book was

supplied by Maulana Azad with a clear understanding that Prof. Kabir

will describe those thoughts and conversation and write the same in

English language. It is not as if Maulana Azad did not know English.

The preface itself shows that Maulana Azad, along with Prof. Kabir,

read every word of the manuscript and made alterations, additions,

omissions and corrections.

Thus, the court held that Prof. Kabir should have consulted the legal

heirs/representatives of Azad before entering into an agreement with

Orient Longman. A letter/document to this effect was examined by the

court, whereby the Grandmother of the Plaintiff had agreed to the

arrangement between Prof. Kabir and Orient Longman, being entitled

to receive a share of royalty from the sale of the book. The court used

this document as the basis of stating that the consent of the legal

heirs/representatives of Azad had been validly obtained.

Consequently, the agreement entered between Prof. Kabir and Orient

Longman was valid and the Plaintiff’s application for injunction was

dismissed.

R.G. Anand v. Delux Films & Ors. AIR 1978 SC 1613

Judges:Jaswant Singh, R.S. Pathak and S. Murtaza Fazal Ali, JJ.

Judgment delivered by Fazal Ali J.

The facts of the case are as follows:

The Plaintiff was a playwriter and had written, directed and produced

the play “Hum Hindustani” in Delhi in 1954. The story of the play

revolved around the love story of a Madrasi boy and a Punjabi girl and

the opposition to any union between them by their parents due to

provincialism and parochialism. At the end of the play, on finding the

suicide notes left by the children, the parents realise their mistake

and that the happiness of their children is more important than the

petty beliefs of provincialism. This play was well received in the

theatre and literary circles. Subsequently, the one of the Defendants

(Mr. Mohan Sehgal) got in touch with the Plaintiff asking him for the

copy of the play for the purposes of seeing the viability of converting

the play into a movie. However, the project never went beyond

preliminary negotiations. Subsequently, the Defendants produced a

movie titled “New Delhi”. The Plaintiff was informed that the movie

was similar to the play “Hum Hindustani.” When the Plaintiff saw the

movie himself he found that the movie was based on similar themes as

that of the play and was in fact an imitation of the play. The movie had

the Punjabi boy and a madrasi girl falling in love. It is pertinent to

note that the detailed facts of the movie were different from that of

the play apart from the problem of provincialism in regard to

marriage and in regard to renting out accommodation, other evils of a

caste ridden society, and the evils of dowry were also explored.

However, on the alleged similarity between the film and the play the

Plaintiff sued the Defendants for copyright infringement. The

Defendants argued that though the movie and the play made use of

the common idea of provincialism, and the Plaintiff cannot be said to

enjoy copyright over the concept of provincialism in general.

Moreover, the development of themes, characters, sequences etc was

different in the movie as compared to the play. On these grounds the

Defendant stated that they were not liable for copyright infringement.

The idea – expression dichotomy becomes important in such

infringement cases because there cannot be any infringement of

ideas, however, there can be infringement (literal or substantial) of

the tangible expression of the idea. Thus, if the similarities in two

works stem due to the existence of similar ideas behind the works,

then there is no copyright infringement. However, as opposed to such

unintentional similarities, if there is literal or substantial copying by

the alleged infringer, proven by similarity in details, then a case of

infringement would possibly hold good. For instance in the instant

case, while determining the question of copyright violation, the Apex

Court held that, “the fundamental fact which has to be

determined where a charge of violation of the copyright is

made by the plaintiff against the defendant is to determine

whether or not the defendant not only adopted the idea of the

copyrighted work but has also adopted the manner,

arrangement, situation to situation, scene to scene with minor

changes or super additions or embellishment here and there.”

While attempting to answer the abovementioned question, the Apex

Court reiterated and summarized the law on the idea-expression

dichotomy and copyright infringement by stating the following points:

1. There can be no copyright in an idea, subject matter, themes, plots

or historical or legendary facts and violation of the copyright in such

cases is confined to the form, manner and arrangement and

expression of the idea by the author of the copyrighted work.

2. Where the same idea is being developed in a different manner, it is

manifest that the source being common, similarities are bound to

occur. In such a case the courts should determine whether or not the

similarities are on fundamental or substantial aspects of the mode of

expression adopted in the copyrighted work. If the defendant's work is

nothing but a literal limitation of the copy-righted work with some

variations here and there it would amount to violation of the

copyright. In other words, in order to be actionable the copy must be

a substantial and material one which at once leads to the conclusion

that the defendants is guilty of an act of piracy.

3. One of the surest and the safest test of determine whether or not

there has been a violation of copyright is to see if the reader,

spectator or the viewer after having read or seen both the works is

clearly of the opinion and gets an unmistakable impression that the

subsequent work appears to be a copy of the original.

4. Where the theme is the same but is presented and treated

differently so that the subsequent work becomes a completely new

work, no question of violation of copyright arises.

5. Where however apart from the similarities appearing the two works

there are also material and broad dissimilarities which negative the

intention to copy the original and the coincidences appearing in the

two works are clearly incidental no infringement of the copyright

comes into existence.

6. As a violation of copyright amounts to an act of piracy it must be

proved by clear and cogent evidence after applying the various tests

laid down by the case-law discussed above.

7. Where however the question is of the violation of the copyright of

stage play by a film producer or a director the task of the plaintiff

becomes more difficult to prove piracy. It is manifest that unlike a

stage play a film has a much broader prospective, wider field and a

bigger background where the defendants can be introducing a variety

of incidents give a colour and complexion different from the manner in

which the copyrighted work has expressed the idea. Even so, if the

viewer after seeing the film gets a totality of impression that the film

is by and large a copy of the original play, violation of the copyright

may be said to be proved.

Applying these points to the facts at hand the Apex Court concluded

that the movie and the play explored the similar idea and problem of

provincialism. However, the movie also explored other themes.

Moreover, the details of the movie relating to the manner,

arrangement, situation to situation, scene to scene with minor

changes or super additions or embellishment here and there, made

the movie a different expression of the similar idea in comparison to

the play. Consequently, any overlap stemmed from the fact of similar

ideas and thus the movie could not amount to literal or substantial

copying of the play. Based on this decision, the Apex Court confirmed

the dicta of the lower courts and dismissed the appeal.

Herbert Rosenthal Jewelry Corp. v. Kalpakian, 379 F.2d 675 (1 st

Cir. 1967)

In this case the Plaintiff alleged that the Defendant’s product

infringed his copyright registration of a pin in the shape of a bee

formed of gold, encrusted with jewels. The Defendant alleged that

they manufactured and sold a line of jeweled bee pins which they had

designed themselves after a study of bees in nature and in published

works and did not copy plaintiff's copyrighted bee. It is pertinent to

note that the Plaintiff’s bee had nineteen small white jewels on its

back, while defendants' entire line of a score or more jeweled bees

was in three sizes decorated with from nine to thirty jewels of various

sizes, kinds, and colors. Thus, the Plaintiff argued that in spite of the

differences, the Defendant’s work was substantially similar to that of

the Plaintiff, and therefore infringed the Plaintiff’s copyright.

While addressing these arguments, the court referred to the doctrine

of merger. The court held that with regard to details, the Defendant’s

pin was substantially different from the Plaintiff’s design. Moreover,

the court also opined that in its arguments the Plaintiff had attempted

to give a very broad interpretation to his copyright so as to cover

largely every kind of jeweled pin. In spite of these observations, the

court felt that the problem of subconscious copying, which would also

amount to infringement was not addressed. Thus, the court reasoned

that there are only a limited number of ways to make a jeweled pin

that looks like a bee, and that any subsequent design of such a pin

would bear a close resemblance to the Plaintiff’s pin. If everyone

else’s pins were found to infringe the Plaintiff’s, the Plaintiff would be

the only person allowed to make pins in the shape of a bee. Thus, the

court held that, “When the ‘idea’ and its ‘expression’ are thus

inseparable, copying the ‘expression’ will not be barred, since

protecting the ‘expression’ in such circumstances would confer

a monopoly of the ‘idea’ upon the copyright owner free of the

conditions and limitations imposed by the patent law.”

As regards Burden of Proof the Court held that “when there is

only a limited number of ways to express an idea the burden of proof

is heavy on the plaintiff who may have to show 'near identity' between

the works at issue.”

University of London Press, Limited v. University Tutorial

Press, Limited, [1916] 2 Ch. 601 .

This is an English case decided by the Chancery Division in United

Kingdom. The case involved the question whether papers set by

examiners are “original literary work” within the meaning of the

Copyright Act, 1911. The case was an infringement suit filed by

the University of London Press against the Defendants for

publishing a series of question papers, for which the copyright

had been assigned from the University of London to the

Plaintiff.

The facts of the case are as follows: Certain persons were appointed

as examiners for matriculation examination of the University of

London on a condition that any copyright in the examination papers

should belong to the University. The University assigned the copyright

to the plaintiff company. After the examination, the defendant

company brought out a publication containing a number of the

examination papers, including three which had been set by two

examiners appointed by the University. The plaintiff company brought

a case of copyright infringement against the defendant company. It

was argued that since the setting of the papers entailed the exercise

of brainwork, memory, and trained judgment, and even the selection

of passages from other author's work involved careful consideration,

discretion and choice they constituted original literary work. On the

other and, the defendants claimed that what they had done was fair

dealing for the purposes of private study which was permissible under

the law.

The court agreed that the material under consideration was a literary

work. According to the court, “The words 'literary work' cover work

which is expressed in print or writing, irrespective of the question

whether the quality or style is high. The word 'literary' seems to be

used in a sense somewhat similar to the use of the word 'literature' in

political or electioneering literature and refers to written or printed

matter.” The court noted that the definition of literary work is

not restricted to novels or other great works of literature but

also extends to maps, charts, tables and compilations. Thus,

there isn’t any need for any literary style for the purposes of

attaining copyright protection. Consequently, the court

concluded that “literary work” covers work which is expressed

in print or writing, irrespective of the question whether the

quality or style is high and papers set by examiners are, in the

court’s opinion, "literary work" within the meaning of the

Copyright Act.

With respect to the originality issue, the Court held that the term

'original' under the Act does not imply original or novel form of ideas

or inventive thought, but the work must not be copied from

another work - that it should originate from the author.

The next question which followed was whether question papers

satisfied the requirement of originality. In this regard the court held

that, “The word “original” does not in this connection mean that the

work must be the expression of original or inventive thought.

Copyright Acts are not concerned with the originality of ideas, but

with the expression of thought, and, in the case of “literary work,”

with the expression of thought in print or writing. The originality

which is required relates to the expression of the thought. But

the Act does not require that the expression must be in an

original or novel form, but that the work must not be copied

from another work - that it should originate from the author. In

the present case it was not suggested that any of the papers were

copied. The professors who set the papers proved that they had

thought out the questions which they set, and that they made notes or

memoranda for future questions and drew on those notes for the

purposes of the questions which they set. Thus, the papers which they

prepared originated from themselves, and were, within the meaning

of the act, original and could be subject matter of copyright. – Thus

the work originated from the author.

Feist Publications, Inc., v. Rural Telephone Service Company,

Inc ., 499 U.S. 340.

The facts of this case are as follows: Rural TS provided telephone

services in the District and as per the State law brought out a

telephone directory of the area, which it distributed free of charge.

The Directory consisted of white pages and yellow pages. The white

pages listed in alphabetical order the names of Rural's subscribers,

together with their towns and telephone numbers. The yellow pages

list Rural's business subscribers alphabetically by category and

feature classified advertisements of various sizes. Rural

distributes its directory free of charge to its subscribers, but earns

revenue by selling yellow pages advertisements. Similar to this

Directory the Appellants (defendants originally), a publishing house

released a directory. This directory also has white and yellow pages

and the division of details was also similar. Prior to publishing its

directory Feist approached each of the 11 telephone companies

operating in northwest Kansas and offered to pay for the right to use

its white pages listings. However, Rural refused to license its listings

to Feist. Rural's refusal created a problem for Feist, as omitting these

listings would have left a gaping hole in its area-wide directory,

rendering it less attractive to potential yellow pages advertisers.

Given this situation, Feist used the listings without Rural's consent.

The court also noted that though Feist had added details to these

entries, the basics about the contacts were identical to the entries in

Rural’s directory. The Defendants argued that they are not liable for

copyright infringement as a directory cannot enjoy copyright

protection as it does not qualify as an original work.

The court addressed this contention of the by dividing it into two

factions, one that facts themselves are not copyrightable. However,

compilations of data or facts generally are. Working these two ideas in

a consistent manner is quite difficult. Given this problem, the court

interpreted originality as “the term is used in copyright, means only

that the work was independently created by the author (as opposed to

copied from other works), and that it possesses at least some minimal

degree of creativity.” It is pertinent to note that the level of creativity

required is extremely low. Thus the court went on to say that,

“Originality does not signify novelty; a work may be original even

though it closely resembles other works so long as the similarity is

fortuitous, not the result of copying.”

Thus, facts in the directory cannot be subject of copyright. However, the Directory as a compilation of facts can be the subject matter of copyright because, “The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws.” Thus, minimal degree of creativity evidenced by selection and arrangement of facts is required for such compilations to be protected by copyright

Eastern Book Company and Others v. D.B. Modak and Anr.,

2008 (1) SCC 1

Bench: B. N. Agarwal & P. P. Naolekar, (2007 INDLAW SC 1341)

(INDEPENDENT CREATIVE EFFORT + MINIMAL CREATIVITY)

In the case before the High Court, the Plaintiff had sued the

Defendant for copyright infringement. Plaintiffs (Appellants) were

involved in publishing businewess of printing and publishing of

various books relating to the field of law. The plaintiffs publish the

SCC, journals and also are proprietors of the SCC online database. In

these works the Plaintiffs claimed copyright in the headnotes,

in the selection, manner of arrangement and in the manner of

presentation of the judgments in both printing and electronic

form in the introductory line appended by them before each

judgment which reads "The judgment of the Court was

delivered by", in the paragraph numbering introduced by the

editorial staff, in the copy-edited portions judgment of the

Supreme Court and in the style and form of printing adopted by

them for publication of the judgments of Supreme Court of

India in the law reports.

The Defendants have developed a software package called "THE

LAWS", published in two CD ROMs and also a software package

called "GRAND JURIX" published in three CD-ROMs. It is alleged by

the plaintiff that the short notes and head notes of the

defendants' software in both the cases were identical to the

short notes and headnotes published in the plaintiffs S.C.C. and

the defendants had not only slavishly copied the head notes,

but had also copied the entire text of the copy-edited

judgments verbatim as published in the plaintiffs' law report

SCC alongwith and including the style and formatting, the copy

editing, the paragraph numbers, footnote numbers, the cross

references etc.

The defendants argued that the judgments of courts are in public

domain and were not capable of exclusive appropriation by any one

party. Moreover, the format and style of presentation of the

defendants is also stated to be completely different from that of the

plaintiffs. It is also stated that there could not be any copyright in

mere typographical arrangement and standard formats.

The court stated that, “there cannot be any monopoly in the subject

matter which the author has borrowed from public domain. Others are

at liberty to use the same material. Material in which no one has a

copyright is available to all. Every man can take what is useful from

them, improve, add and give to the public the whole comprising the

original work with his additions and improvements. Under the guise

of the copyright, the plaintiffs cannot ask the Court to restrain

the defendants from making this material available to public.

Therefore, of the judgments/orders published by the plaintiffs

in their law reports "Supreme Court Cases" is not their original

literary work but has been composed of, compiled and prepared

from and reproduction of the judgments of the Supreme Court

of India, open to all. Thus, merely by correcting certain

typographical or grammatical mistakes in the raw source and

by adding commas, full stops and by giving paragraph numbers

to the judgment will not their work as the original literary work

entitled to protection under the Copyright Act. Plaintiffs,

therefore, have no copyright in the judgments published in

their law reports.”

More specifically with regard to head notes - S.K. Mahajan, J. held

that, “A genuine abridgment of judgments of the Court is an original

work and can be the subject-matter of infringement of a copyright

even if the amount of originality is very small. However, in case the

head-notes are verbatim extracts from the judgments of the

Courts, there is no amount of skill or labour involved in

preparing the head-notes and no person can claim a copyright

therein. I have not gone through the head-notes of each and

every judgment published in the journal of the plaintiffs nor I

have gone through each and every head note of the judgments

in the data base of the defendants and I am, therefore, not in a

position at this stage to comment as to whether or not these

head-notes are verbatim extracts from the judgments of the

Court or whether any labour or skill of the plaintiffs is involved

in preparing the head-notes. But, in case, the head-notes have

been prepared by the plaintiffs with their own labour and skill

and there is originality and creativity in the preparation of

head-notes, there cannot be any dispute that the party which

has produced the head-notes will have a copyright therein. Re-

production of either a few sentences from the judgments of the Court

or the entire paragraph or the joining together of some of the

sentences of the judgment in the head-note, in my opinion, cannot be

said to be either the creative or the original work or the abridgment of

the judgment of the Court.”

In the appeal before the Apex Court, the Court held that the

questions which require determination by the Court are: (1) What

shall be the standard of originality in the copy-edited

judgments of the Supreme Court which is a derivative work and

what would be required in a derivative work to treat it the

original work of an author and thereby giving a protected right

under the Copyright Act, 1957 to the author of the derivative

work? and (2) Whether the entire version of the copy-edited

text of the judgments published in the appellants law report

SCC would be entitled for a copyright as an original literary

work, the copy-edited judgments having been claimed as a

result of inextricable and inseparable admixture of the copy-

editing inputs and the raw text, taken together, as a result of

insertion of all SCC copy-editing inputs into the raw text, or

whether the appellants would be entitled to the copyright in

some of the inputs which have been put in the raw text ?

The Apex Court went on to define ‘derivative works’ as works that are

based on existing subject-matter. With regard to copyright in

judgments in general, the court held that in light of Section 2(k) of the

Copyright Act, the judgments delivered by the Supreme Court would

be a government work and the government is the first owner of the

copyrighted material. The court went on to state that, “Section 52(1)

expressly provides that certain acts enumerated therein shall not

constitute an infringement of copyright and sub-clause (iv) of clause

(q) excludes the reproduction or publication of any judgment or order

of a Court, Tribunal or other judicial authority, unless the

reproduction or publication of such judgment or order is prohibited by

the Court, the Tribunal or other judicial authority from copyright.

Thus, the judicial pronouncements of the Apex Court would be

in the public domain and its reproduction or publication would

not infringe the copyright.”

Given this legal set up, it is clear that no one else can claim copyright

over the judgment itself in the course of publishing the judgment. The

question then is whether the publishing companies enjoy any degree

of copyright over the material. It is pertinent to note that the

Court treated the judgments published by the Plaintiffs as

derivative works and went on to state that such works in order

to be copyrightable should exhibit originality and there should

the required exercise of independent skill, labour and capital in

its creation by the author to qualify the work for the copyright

protection. Moreover, the court also held that such skill, labour

and capital so spent on creating the derivative work should not

be negligible. – not merely mechanical

Based on this legal position, the respondents argued that in

introducing corrections, punctuations, paragraph numbers, cross

citations and head notes, etc. the Plaintiffs have exercised sufficient

independent skill, labour and capital to bring forth a derivative work

which is original in comparison to the primary work.

On the other hand the Defendants argued that, “the judgments

published in the Supreme Court Cases is nothing but merely a

derivative work based upon the judgments of the court, which lacks

originality as it does not depict independent creation even a modicum

of creativity.” It is pertinent to note that the Defendants refuted the

application of the “sweat of the brow” theory propounded by the

Plaintiff, according to which if the work was had minimal creativity

and was not a mere copy of the primary work, and in making such

work the author had put in skill and effort, the author was entitled to

copyright protection. The Defendants argued there was lack of

originality in the said derivative works. Moreover, they also stated

that, “the inputs put by the appellants were nothing but

expressing an idea which can be expressed in a limited way and

as such there cannot be a copyright. Filling the blanks or gaps

by providing names of the parties or citations of the judgments,

both of which are well known and unchangeable parts of that

idea, are not original work. These are not creative at all to

warrant copyright protection, either singly or in combination.

The additions made in the reported judgment by the editors of

the Supreme Court Cases are only the well known extensions of

the reported decision. These extensions lack even the minimal

degree of author's creativity or originality or intellectual

labour. These additions do not create additional knowledge, the

protection of which is the very basis of the copyright

protection.” Thus, we see that the Defendants have brought forth

shades of the idea–expression dichotomy and merger doctrine.

Moreover, they claim the requirement of minimal degree of creativity

in a derivative work, in the absence of which the same is not original

and is a mere copy of the primary work. Given these arguments, the

Defendants stated that, “the copy-editing inputs of the

appellants are only discoveries/facts and there are limited

ways/unique of expressing the various copy-editing inputs and

thus no copyright can subsist in such limited/unique

expressions. The facts which are discovered could be expressed

in limited ways and as such ways adopted cannot give copyright

protection to the inputs or the judgments as a whole.” Also

that, while creating derivative works, “he exercise of skill and

judgment required to produce the work must not be so trivial

that it could be characterized a purely mechanical exercise.

The work should be independently created by the author as

opposed to copied from the other works and that it possesses at

least some minimal degree of creativity.”

In the light of these arguments the Apex Court held that, “the judicial

pronouncements of the Apex Court would be in the public domain and

its reproduction or publication would not infringe the copyright. That

being the position, the copy-edited judgments would not satisfy the

copyright merely by establishing amount of skill, labour and capital

put in the inputs of the copy-edited judgments and the original or

innovative thoughts for the creativity are completely excluded.

Accordingly, original or innovative thoughts are necessary to establish

copyright in the author's work. The principle where there is common

source the person relying on it must prove that he actually went to the

common source from where he borrowed the material, employing his

own skill, labour and brain and he did not copy, would not apply to the

judgments of the courts because there is no copyright in the

judgments of the court, unless so made by the court itself. To secure a

copyright for the judgments delivered by the court, it is necessary

that the labour, skill and capital invested should be sufficient to

communicate or impart to the judgment printed in SCC some quality

or character which the original judgment does not possess and which

differentiates the original judgment from the printed one. The

Copyright Act is not concerned with the original idea but with the

expression of thought. Copyright has nothing to do with originality or

literary merit. Copyrighted material is that what is created by

the author by his own skill, labour and investment of capital,

maybe it is a derivative work which gives a flavour of creativity.

The copyright work which comes into being should be original

in the sense that by virtue of selection, co-ordination or

arrangement of pre-existing data contained in the work, a work

somewhat different in character is produced by the author.

To claim copyright in a compilation, the author must produce

the material with exercise of his skill and judgment which may

not be creativity in the sense that it is novel or non- obvious,

but at the same time it is not a product of merely labour and

capital. The derivative work produced by the author must have

some distinguishable features and flavour to raw text of the

judgments delivered by the court. The trivial variation or inputs

put in the judgment would not satisfy the test of copyright of

an author.”

Applying this law to the facts the Apex Court concluded that,

“Arrangement of the facts or data or the case law is already included

in the judgment of the court. Therefore, creativity of SCC would only

be addition of certain facts or material already published, case law

published in another law report and its own arrangement and

presentation of the judgment of the court in its own style to make it

more user- friendly. The selection and arrangement can be viewed as

typical and at best result of the labour, skill and investment of capital

lacking even minimal creativity. It does not as a whole display

sufficient originality so as to amount to an original work of the

author.” However, as regards paragraph numbering and other such

details, the court held that, “However, the inputs put in the original

text by the appellants in (i) segregating the existing paragraphs in the

original text by breaking them into separate paragraphs; (ii) adding

internal paragraph numbering within a judgment after providing

uniform paragraph numbering to the multiple judgments; and (iii)

indicating in the judgment the Judges who have dissented or

concurred by introducing the phrases like 'concurring', 'partly

concurring', 'partly dissenting', 'dissenting', 'supplementing', 'majority

expressing no opinion', etc., have to be viewed in a different light. The

task of paragraph numbering and internal referencing requires skill

and judgment in great measure. In these inputs put in by the

appellants in the judgments reported in SCC, the appellants have a

copyright and nobody is permitted to utilize the same.

Consequently, the Apex Court concluded that, “For the reasons stated

in the aforesaid discussion, the appeals are partly allowed. The High

Court has already granted interim relief to the plaintiff- appellants by

directing that though the respondent- defendants shall be entitled to

sell their CD-ROMS with the text of the judgments of the Supreme

Court along with their own head notes, editorial notes, if any, they

should not in any way copy the head notes of the plaintiff-appellants;

and that the defendant-respondents shall also not copy the footnotes

and editorial notes appearing in the journal of the plaintiff-appellants.

It is further directed by us that the defendant-respondents shall not

use the paragraphs made by the appellants in their copy-edited

version for internal references and their editor's judgment regarding

the opinions expressed by the Judges by using phrases like

'concurring', 'partly dissenting', etc. on the basis of reported

judgments in SCC. The judgment of the High Court is modified to the

extent that in addition to the interim relief already granted by the

High Court, we have granted the above-mentioned additional relief to

the appellants.”

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569.

The Plaintiff in that case owned the copyright to the popular tune Oh

Pretty Woman. Defendants, the rap Group 2 Live Crew, without

securing the permission of the Plaintiff, prepared an alleged parody

version of the song, entitled Pretty Woman. Defendant’s version,

unlike the original, was a rap song, and had substantially different

words from the plaintiff’s “sweet, not to say syrupy” original, but

plainly used much of the Plaintiff’s original melody and some of the

original words.

While deciding the case the US Supreme Court referred to the Fair

use doctrine enunciated in Section 107 of the US Copyright Act, and

listed the four factors which help in determining a ‘fair use’. These

four factors are as follows: (1) the purpose and character of the use,

including whether such use is of a commercial nature or is for

nonprofit educational purposes; (2) the nature of the copyrighted

work; (3) the amount and substantiality of the portion used in relation

to the copyrighted work as a whole; and (4) the effect of the use upon

the potential market for or value of the copyrighted work. While

explaining the methodology of applying these factors to any given fact

situation, the Supreme Court stated that, “the four statutory factors

may not be treated in isolation, one from another. All are to be

explored, and the results weighed together, in light of the purposes of

copyright.”

Thus, the court interpreted the Purpose and character of the use

parameter under the fair use doctrine, and stated that, “the central

purpose of this investigation is to see ... whether the new work merely

supersedes the objects of the original creation, or instead adds

something new, with a further purpose or different character, altering

the first with new expression, meaning, or message; it asks, in other

words, whether and to what extent the new work is transformative.” If

the work is found to be transformative, it would go on to satisfy the

doctrine of fair use. On this basis the court concluded that the work of

the Defendant’s was clearly transformative, as Live Crew added

substantially new words to the original tune and changed the format

from ballet to rap. Given the transformative nature of the Defendant’s

work, the same was not a copyright infringement of the Plaintiff’s

work. Also, addressing another factor in the application of the fair use

defence, the court stated that the commercial nature of the parody did

not make it unfair or an infringement of the Plaintiff’s work.

41. MGM Studios, Inc. v. Grokster, Ltd., 125 S. Ct. 2764

(2005).

The facts which led to the case were similar to the other two, apart

from one crucial difference i.e. the technology in question. Grokster

and StreamCast, the defendant companies, in contrast to Napster and

Aimster, operated through a decentralized P2P network.

In this case the Ninth Circuit Court again reiterated the parameters of

contributory and vicarious infringement by stating that, “one infringes

a copyright contributorily by intentionally inducing or encouraging

direct infringement and infringes vicariously by profiting from direct

infringement while declining to exercise a right to stop or limit it.”

The Court recognized that since the software was capable of being

used for infringing and non-infringing uses, the Sony doctrine, would

apply even if a majority of the use were infringing, as under the

doctrine, the product had to merely be capable of non-infringing use.

(This is a clear change from the position in Aimster). The Sony

doctrine, as interpreted in Napster, required actual knowledge of

infringement, if the product was capable of both uses. Relying on that,

the Court held that since the defendants operated through a

decentralised network and that the defendants lacked any means to

stop the infringement once the programme was installed; the

knowledge requirement was not met and hence the defendants were

not liable. Moreover, there was no material contribution either, as

there was no provision of any sites or facilities for infringement.

This decision of the Ninth Circuit was appealed to the Supreme Court

and the court gave a unanimous verdict against the defendants.

SOUTER, J., delivering the opinion of the Court, held the defendants

liable on the basis of the “inducement theory” of contributory

copyright liability. Accordingly, as per the theory, one who distributes

a device with the object of promoting its use to infringe copyright, as

shown by clear expression or other affirmative steps taken to foster

infringement, is liable for the resulting acts of infringement by third

parties.

The Court clarified that mere knowledge of infringing potential or of

actual infringing uses or ordinary acts incidental to product

distribution like offering technical support, updates, etc., would not be

enough to bring about liability. As regards liability under the

inducement theory, the court stated that, “Where evidence goes

beyond characteristics of product that may be used to infringe

copyrights or knowledge that such product may be put to infringing

uses, and shows statements or actions directed to promoting

infringement, the staple-article rule set forth in Sony Corp. of America

v. Universal City Studios, Inc., limiting the imputing of culpable intent

as a matter of law from the characteristics or uses of a distributed

product, will not preclude liability for inducing copyright

infringement.” Thus, based on this doctrine, the Court cited three

reasons to hold the companies liable. First, there was evidence to

prove that the defendants positioned themselves as the “next

Napster” and thereby aimed to satisfy a known source of demand for

copyright infringement. Second, neither company attempted to

develop filtering tools or other mechanisms to diminish the infringing

activity of the software. Third, the business model of the two

companies was such that the companies, by selling advertising space,

would gain more revenue the more the software was used, and high

volume use of the software would tend to be infringing use.

The Court clarified that the last two reasons added weight to the inference of unlawful intent, but would not be enough if considered in isolation. With respect to the Sony doctrine, the Court held that the doctrine was still good law, however, it would not apply in cases where the object of promoting infringement was manifest. Ginsburg, J., wrote a concurring judgment with respect to the extent of the Sony doctrine. She considered a survey commissioned by the plaintiffs according to which the overwhelming use of the software was for infringing copyright, and held that the Court of Appeals erred in not taking it into account while deciding whether the software was capable of substantial non-infringing uses. Breyer, J., wrote a concurring opinion, agreeing with Souter, J., while disagreeing with Ginsburg, J. He emphasised on the potential of non-infringing uses of a product, and according to him, Sony didn’t mandate a high number of non-infringing uses to be shown. Thus, we see that the Court was divided with respect to the interpretation of Sony as Breyer, J., favoured the stand taken in Napster and Grokster-1, while Ginsburg, J., favoured the stand taken in Aimster

1. Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC

449.

The Appellant was the proprietor of the medicinal preparation called

“Amritdhara”. As per the Appellant the medicinal preparation was

prepared and marketed by them in as early as 1901. The Respondent

claimed to be the manufacturer of “Lakshmandhara” (a similar

medicinal preparation) and applied for registration of the trade mark

for the same. The plaintiff opposed the registration of trade name

“Lakshmandhara” on the ground that “Lakshmandhara” was used to

denote the same medicine as “Amritdhara” and the word ‘dhara’ was

first used in conjunction with “Amritdhara” and hence, in view of the

similarity in names, and the likelihood of confusion to the public, their

plea of refusal of registration should be upheld. They contended that

the similarity goes on to deceive the public, as the ultimate purchaser

would be confused between the two goods due to the similarity.

Therefore, registering of the trade name “Lakshmandhara” would

amount to sanctioning passing off.

The respondent denied that such confusion could take place. He

argued that the composite “Lakshmandhara” taken as a whole cannot

cause any possible confusion with “Amritdhara”. The respondent also

claimed that he had been marketing the said drug under the name

“Lakshmandhara” since 1923 and the Appellant had not raised any

claim of passing off or deception earlier.

In the case it was held that the question whether a trademark is likely

to deceive or cause confusion by its resemblance to another already

registered is a matter of first impression and one for decision in each

case and has to be decided by taking an over all view of all the

circumstances. Second, the standard of comparison to be adopted in

judging the resemblance is from the point of view of an unwary

purchaser of average intelligence and imperfect recollection. Third,

while deciding whether such confusion or deception exists one should

consider the two names as a whole and not merely the component

words thereof separately, i.e., one should consider overall structural

and phonetic similarity.

2. Shield Mark v. Joot Kist, 2004 IPLR 141.

Shield mark havng 14 sound marks or products and services appealed

against the decision of the Trial Court reusing to grant relie on

Trademark infringement. The Appellate court referred the matter to

the ECJ for its opinion on the question of distinctive nature adn

graphical representations of sound marks.

The ECJ held that: A Trademark may consist of a sign which is not in

itself capable of being perceived visually, provided that it can be

represented graphically, particularly by means of images, lines or

characteristics, and that its representation is clear, precise, self-

contained, easily accessible, intelligible, durable and objective.

In the case of a sound sign, those requirements are not satisfied when

the sign is represented graphically by means of a description using

the written language, such as an indication that the sign consists of

notes going to make up a musical work, or an indication that it is the

cry of an animal, or by means of a simple onomatopoeia, without

more, or by means of a sequence of musical notes, without more. On

the other hand, those requirements are satisfied where the sign is

represented by a stave divided into measures and showing, in

particular, clef musical notes and rests whose form indicates the

relative value and , where necessary, accidents.

3. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159.

In this case in the United States Supreme Court held that a color

could meet the legal requirements for trademark registration under

the Lanham Act, provided that it has acquired secondary meaning in

the market.

Plaintiff Qualitex Co. had used a green-gold color for the pads which it

sold to dry cleaning firms to use in their dry cleaning presses. The

Defendant Jacobson Products Co. was a rival of Qualitex. In 1989,

Jacobson began selling their own pads to dry cleaners which were a

similar color to those of Qualitex. In response, Qualitex filed a lawsuit

against Jacobson in the United States District Court for the Central

District of California for unfair competition. In 1991, Qualitex

registered the green-gold color of its pads with the United States

Patent and Trademark Office as a trademark, and subsequently added

a trademark infringement count to its lawsuit. The District Court

found for Qualitex, but the United States Court of Appeals for the

Ninth Circuit set aside the judgment, on the grounds that color alone

could not be registered as a trademark.

Justice Breyer, writing for a unanimous court, overturned the Ninth

Circuit’s decision, holding that the Lanham Act was very broad in its

definition of what a trademark could be. The definition section of the

Lanham Act, 15 U.S.C. § 1127, defines trademarks as including “any

word, name, symbol, or device, or any combination thereof”. Breyer

reasoned that colors could constitute descriptive trademarks, because

while colors do not automatically evoke a connection to any product

by themselves, they could take on secondary meaning over time, in

the course of use in the marketplace. In this way, a color could serve

the chief purpose of trademarks, that of identifying the source of a

particular product.

Breyer also determined that that the functionality doctrine was no bar to the registration of the plaintiff’s color as a trademark. He determined that a product feature is only functional “if it is essential to the purpose of the article or if it affects the cost or quality of the article”. In relation to such functionality, he held that refusal on this ground is acceptable if exclusive use of the feature would put the competitors at a significant non-reputation related disadvantage. In this case, the colour acted purely as a symbol, and served no other purpose. Jacobson argued that there are only a limited number of colors that could be used for the products at issue here, and that

many colors are very similar looking, thus a trademark over colour would lead to shade confusion and colour depletion from the public domain. However, Breyer dismissed this concern, saying that if the defendant’s concerns were proven to be valid, the functionality doctrine would then come into play. Breyer further held that a color could be trademarked separately from any trade dress protection. Thus, the green-gold colour is a symbol, has acquired secondary meaning, serves no other functions and is therefore a valid trad

4. Satyam Infoway v. Sify Net Solutions, AIR 2004 SC 3540.

The principal question raised in this appeal is whether internet

domain names can be subject of trademark protection and whether an

action of passing off could be maintained in the case of a domain

name. The Appellant had registered several domain names as

www.sifynet, www.sifymail.com, www.sifyrealestate.com with

internationally recognized registrars, viz, Internet corporation for

assigned names and numbers (ICANN) and world intellectual property

organization (WIPO) in June 1999. The Appellant claimed the

invention of word ‘Sify’ by using elements of its corporate name,

Satyam Infoway. On the other hand, the Respondent claimed

registration of its two domain names www.siffynet.com and

www.siffynet.com from 5.6.2001. On getting to know that the

Respondents were using ‘sify’ in their domain name the Appellants

issued a cease and desist notice to the Respondents asking them to

restrain from either carrying on business in names of siffynet

solutions (P) ltd. or siffynet corporation and to transfer domain names

to appellant. The Respondent’s refused to do so and consequently a

suit was filed by appellant on ground of passing off its business and

services by using appellant’s name and domain name. The Trial Court

granted a temporary injunction in favour of the Appellant on ground

that appellant was prior user of trade name ‘Sify’ and that confusion

would be caused in mind of general public by deceptive similarity

between two domain names. The Respondents appealed to the High

Court which allowed the appeal on the ground that the business of the

Respondent was different from that of the Appellant, and there being

no similarity between two businesses, there was no question of

customers being misled.

An appeal to Supreme Court followed. The Apex Court stated that

domain names reflected the business reputation and business

interests of the proprietors of the domain name. Thus, the court

reasoned that the use of same or similar domain names may lead to

diversion of users which could result from such users mistakenly

accessing one domain name instead of another. Thus, a domain name

may have all characteristic of a trade mark, could found an action for

passing off. In terms of satisfying the criteria of passing off, the court

held that there was no dispute as to appellant’s claim of being leading

information technology services company and one of largest internet

services providers in country. Further, the evidence on record showed

the existence of goodwill and reputation claimed by Appellant in

connection with trade name “Sify”. Apart from the existence of

goodwill, in terms of the names themselves the court found that apart

from there being close visual similarity there was also phonetic

similarity between “Sify” and “Siffy”. (Refer to the decision of the

Hoffman case, where the Apex Court in 1970 had used the visual

and phonetic tests)

Thus, in the absence of any evidence to prove that respondent

company unaware or ignorant of use of trade name “Sify” by

Appellant or the fact that the Appellant prior user of trade name

“Sify” and in light of the evidence which showed that the public

associated trade name “Sify” with Appellant, the action of passing off

was maintainable. Thus, the Appellant was entitled to relief claimed

and the impugned judgment of High Court was liable to be set aside.

Also, given the fact that the internet allows for access without any

geographical limitation, a domain name is potentially accessible

irrespective of the geographical location of the consumers. The court

opined that the outcome of this potential for universal connectivity is

not only that a domain name requires world wide exclusivity but also

that national laws (relating to Trademark) might be inadequate to

effectively protect a domain name.

1. GRAHAM V. JOHN DEERE, 383 U.S. 1.

Graham was concerned with the construction of a plow that would not

break upon striking the soil obstructions such as rocks. In 1950, he

obtained the ‘811 patent, directed towards a plow with a spring

clamp. The device featured an upper plate secured to the lower flange

of the H-beam of a plow frame. A hinge plate was pivoted to the upper

plate, with one end of the plow shank resiliently and frictionally held

between the upper and hinge plates. An opening in the shank allowed

a rod to extend through it. A coil spring was around the rod and

seated on the upper plate. When the plow hit an obstruction, the

shank moved downward against the tension of the coil spring and

pivoted the hinge plate. This pivoting action allowed the plow to pass

over obstructions and increased the resiliency of the shank. In 1950,

Graham modified the ‘811 structure and filed for a patent. That

patent, granted in 1953, was the one litigated upon in the present

suit. The invention differed from the earlier invention in two ways:

(1) the ‘798 invention featured a stirrup and bolted connection of the

shank to the hinge plate, and (2) the ‘798 invention placed the shank

below the hinge plate. These changes permitted the plow shanks to be

pushed upward when they struck obstructions in soil and to spring

back into normal position when obstruction was passed over.

Subsequently, in an infringement suit, the Defendants challenged the

validity of the ‘798 Graham patent on the ground of obviousness.

Thus, in this case the US Supreme Court dealt with the parameter of

obviousness and reiterated the parameters laid down in the doorknob

case. Clark J. delivering the opinion of the court stated that,

“innovation, advancement, and things which add to the sum of useful

knowledge are inherent requisites in patent system which by

constitutional command must promote progress of useful arts; such is

the standard expressed in the Constitution and it may not be ignored.”

In light of this background the court enunciated the Graham test,

wherein to determine obviousness one had to follow the four step test.

As per this four step test, first, the court was to examine the scope

and content of prior art. Second, differences between prior art and

claims at issue were to be ascertained. Third, the level of ordinary

skill in pertinent art is to be resolved and lastly, against this

background obviousness or non-obviousness of subject matter is

determined. Along with the four step test the Apex Court also laid out

a set of exemplary secondary considerations that could be used to

negate a prima facie case of obviousness, some of these secondary

considerations being commercial success, long felt but unsolved

needs, failure of others, etc.

Applying these factors to the invention at hand the court concluded that the patent is invalid under s.103 and, therefore, and affirmed the judgment of the Eighth Circuit

2. KSR V. TELEFLEX, 127 S.CT. 1727.

The KSR International case provided the Supreme Court with its first

opportunity to review the TSM test created and promulgated by the

Federal Circuit and the CCPA.

Teleflex, Inc. (“Teleflex”) sued KSR International Co. (“KSR”) in the

U.S. District Court for the Eastern District of Michigan for

infringement of a patent over which Teleflex held an exclusive license.

The patent (“565”) disclosed a position-adjustable vehicle pedal

assembly that Teleflex accused KSR of making. KSR then filed a

Motion for Summary Judgment on the invalidity of the '565 patent.

The District Court disposed of the case by granting KSR's Motion for

Summary Judgment on the invalidity of the '565 patent on the ground

that the '565 patent was obvious based on these findings under the

TSM test. Teleflex appealed the District Court's decision to the

Federal Circuit complaining that the district court used an “incorrect

teaching-suggestion-motivation test” in its decision. The Federal

Circuit reviewed the facts of the case de novo, reapplying the TSM

test. In its application, the court agreed with Teleflex that the district

court “did not apply the correct teaching-suggestion-motivation test.”

It is pertinent to note that the District Court held that the motivation

to combine was deemed necessary under the test for combining the

“pedal assembly in which the pivot does not move with pedal

adjustment” with the “modular pedal position sensors” and the same

was evident from the knowledge that a person with ordinary skill in

the art would have of the applicable prior art. Moreover, the court

also found “express teachings with respect to the desirability” of

combining a pedal assembly with a sensor in prior art. Hence,

revoking the patent granted on the ground of obviousness.

The Federal Circuit did not agree with the District Court's application

of the test because, according to the Federal Circuit, the TSM

test requires the court to “make specific findings as to whether

there was a suggestion or motivation” to combine the prior art

and there is no space for common knowledge. The court found

that the two pieces of prior art the District Court combined were not

addressing the same problem. Therefore, according to the Federal

Court, the District Court could not have used the nature of the

problem to be solved as the motivation to combine. The Federal

Circuit also took issue with the express teachings the District Court

found in another piece of prior art because that piece of prior art did

not relate to adjustable pedal assemblies but to wire chafing in pedal

assemblies. Hence, the court concluded that there was nothing that

would result in a PHOSITA cross referencing form one claim to

another. Thus, the Federal Circuit vacated the grant of summary

judgment in favor of KSR and remanded to the district court for a new

determination under the teaching-suggestion-motivation test on

January 6, 2005.

KSR then petitioned the Supreme Court for a writ of certiorari on

April 6, 2005. The Supreme Court granted certiorari to hear KSR

International Co. v. Teleflex, Inc. on June 26, 2006. Before the

Supreme Court, after hearing the arguments, Kennedy J.,

delivering the decision on behalf of the Apex Court agreed with

the decision of the District Court and held that the patent was

invalid as it was obvious. More importantly, the Apex Court

critiqued the rigid application of the TSM test by the Federal Circuit

and stated that, “in determining whether subject matter of patent

claim is obvious, neither the particular motivation nor the avowed

purpose of patentee controls; what matters is the objective reach of

the claim.” It also stated that while the TSM test can only be used as

useful indicia to help in determining such objective reach, the Graham

test remains the primary test of obviousness of a claimed invention.

On reviewing the TSM test, the Supreme Court analysed the manner

in which the Federal Court applied the TSM test and decided the KSR

International decision as given by the Federal Court was a textbook

example of rigid application of the TSM test and the problems that the

same can create.

The Apex Court severally critiqued the decision of the Federal Court,

and stated that Graham’s case had laid down an ‘expansive’ and

‘flexible’ approach to the obviousness question, and the rigid

application of the TSM test is inconsistent with the same. Addressing

the Federal Circuit’s assertion that on correct application of the TSM

test, prior art references from other areas (those other than the area

of claimed invention) cannot be adopted in order to prove obviousness

of a claimed invention in a given field, as no teaching, suggestion or

motivation teaches, motivates or suggests combination of such

references from varying fields when an individual is addressing a

specific problem in a specific field, the Apex Court stated that such

rigid application of the TSM test is wrong because when a work is

available in one field, design incentives and other market forces can

prompt variations of it, either in the same field or in another and a

PHOSITA has sufficient creativity to recognize such variations and

utility of the same.

Moreover, the Apex Court also held that with the creative background

of the PHOSITA and allowance of mosaicing prior art references and

by drawing inferences from the same, one need not seek out precise

teachings directed to the challenged claim’s specific subject matter in

order to prove obviousness. Further, clearly rejecting the Federal

Circuit’s approach, the Apex Court also cautioned against placing

overemphasized importance on published articles and the explicit

content of issued patents.

However, it is pertinent to note that though the Apex Court critiqued

the rigid application of the TSM test by the Federal court, in principle

it accepted the TSM test within the jurisprudence of the obviousness

parameter. The court stated that the TSM test captures a helpful

insight, especially with regard to combination patents. This helpful

insight made by application of the test was to an extent evident from

Adams case, where the fact that prior art taught away from the

claimed invention clearly proved that the invention was non obvious.

Also, another parameter of the TSM test, i.e., the need or problem

known in any field being a motivation to combine prior art references

in the manner claimed is helpful, as it helps prove obviousness in the

face of a finite number of known solutions to the given problem.

Having accepted the test, the court attempted to give guidelines

regarding its application such that it would be in consonance with the

test laid down in Graham’s case. The Court stated that the TSM test

was to be restricted to be treated as a helpful insight in application of

the Graham’s test and cannot be made the primary test to decide on

the obviousness of a claimed invention. This statement was based on

the reasoning that, “the diversity of inventive pursuits and of modern

technology counsels against limiting the analysis only to the TSM test.

In many fields there may be little discussion of obvious techniques or

combinations, and it often may be the case that market demand,

rather than scientific literature, will drive design trends. Sole

application of the TSM test, in a rigid manner, would result in grant of

patent protection to such advances which are without real innovation

resulting in retardation of progress and in case of patents combining

previously known elements, deprivation of value or utility of prior

inventions.” Thus, the Court's decision confirmed that the TSM test

remains good law, but the ruling clarified that “an expansive and

flexible” type of approach is to be used when applying the test.

1. FESTO CORP. V. SHOKETSU KINZOKU KOGYO KABUSHIKI CO.,

LTD. , 535 U.S. 722

Kennedy J. begins the opinion by stating that, “This case requires us

to address once again the relation between two patent law concepts,

the doctrine of equivalents and the rule of prosecution history

estoppel. The Court considered the same concepts in Warner-

Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 117

S.Ct. 1040, 137 L.Ed.2d 146 (1997), and reaffirmed that a patent

protects its holder against efforts of copyists to evade liability for

infringement by making only insubstantial changes to a patented

invention. At the same time, we appreciated that by extending

protection beyond the literal terms in a patent the doctrine of

equivalents can create substantial uncertainty about where the patent

monopoly ends. If the range of equivalents is unclear, competitors

may be unable to determine what is a permitted alternative to a

patented invention and what is an infringing equivalent.

To reduce the uncertainty, Warner-Jenkinson acknowledged that

competitors may rely on the prosecution history, the public record of

the patent proceedings. In some cases the Patent and Trademark

Office (PTO) may have rejected an earlier version of the patent

application on the ground that a claim does not meet a statutory

requirement for patentability. 35 U.S.C. § 132 (1994 ed., Supp. V).

When the patentee responds to the rejection by narrowing his claims,

this prosecution history estops him from later arguing that the subject

matter covered by the original, broader claim was nothing more than

an equivalent. Competitors may rely on the estoppel to ensure that

their own devices will not be found to infringe by equivalence.”

In the present case: the Federal Circuit held that by narrowing a

claim to obtain a patent, the patentee surrenders all equivalents to

the amended claim element. The petitioner argued that such an

interpretation was a deviation from the earlier cases, where PHE

created a flexible bar, which applied only when amendments were

made to avoid prior art or earlier inventions. Thus, the petitioner

challenged the dicta of the Federal Circuit on the ground that by

replacing the flexible bar with a complete bar the Court of Appeals

cast doubt on many existing patents that were amended during the

application process when the law, as it then stood, did not apply so

rigorous a standard.

The matter came before the Supreme Court which considered two

important questions in the decision:

• What kinds of claim amendment will cause prosecution history

estoppel?

• When there is estoppel, what range of equivalents will be available?

As regards the relationship between the two doctrines the court

stated that, “Prosecution history estoppel ensures that the doctrine of

equivalents remains tied to its underlying purpose. Where the original

application once embraced the purported equivalent but the patentee

narrowed his claims to obtain the patent or to protect its validity, the

patentee cannot assert that he lacked the words to describe the

subject matter in question.”

Going on to address the questions, the court ruled that any claim

narrowing amendments made to comply with the patent statute, not

just amendments made to prior art, will give rise to prosecution

history estoppel. This means that amendments to satisfy § 112 of 35

U.S.C. (rules relating to enablement, best mode, adequate

description) also could provoke prosecution history estoppel. The

court stated that, “Estoppel arises when an amendment is made to

secure the patent and the amendment narrows the patent's scope. If

a § 112 amendment is truly cosmetic, then it would not narrow the

patent's scope or raise an estoppel. On the other hand, if a § 112

amendment is necessary and narrows the patent's scope-even if only

for the purpose of better description-estoppel may apply. A patentee

who narrows a claim as a condition for obtaining a patent disavows

his claim to the broader subject matter, whether the amendment was

made to avoid the prior art or to comply with § 112.”

However, the court rejected the "complete bar" rule that had been

adopted by a majority of the Federal Circuit, and instead supported

the "flexible bar" by holding that the scope of an estoppel "requires an

examination of the subject matter surrendered by the narrowing

amendment".

The Supreme Court also made it clear that since a patentee's decision

to narrow his claims through amendment may be presumed to issue a

general disclaimer of the territory between the original claim and the

amended claim. The patentee then has the burden of showing that the

amendment that gave rise to the estoppel "does not surrender the

particular equivalent in question.

In order to rebut the presumption that the estoppel bars all

equivalents, the court reasoned that "the patentee must show that at

the time of the amendment one skilled in the art could not reasonably

be expected to have drafted a claim that would have literally

encompassed the alleged equivalent".

The court identified three situations where an estoppel might not

eliminate all equivalents: the patentee can avoid the bar by providing

that, at the time of the amendment was made, the alleged equivalent

was not foreseeable, or that claiming or describing the equivalent

would not have been possible or reasonable.

In addition, the court stressed the notice function of claims, holding

that claims are supposed to give notice to others of what activities

they can permissibly engage in. It also explained that it would be

unfair to change routinely the boundaries of those claims through the

liberal application of the doctrine of equivalents.

BOLAR ESCEPTION –ROCHE PRODUCTS CASE

1. ROCHE PRODUCTS, INC., V. BOLAR PHARMACEUTICALS CO. (FED.

CIR. 1984)

In this case the Plaintiff-appellant Roche Products, Inc. (Roche), a

large research-oriented pharmaceutical company, wanted the United

States district court to enjoin Bolar Pharmaceutical Co., Inc. (Bolar), a

manufacturer of generic drugs, from taking, during the life of a

patent, the statutory and regulatory steps necessary to market, after

the patent expired, a drug equivalent to a patented brand name drug.

Roche argued that the use of a patented drug for federally mandated

premarketing tests is a use in violation of the patent laws.

Basically Roche held patent rights over flurazepam hydrochloride

(flurazepam hcl), the active ingredient in Roche's successful brand

name prescription sleeping pill “Dalmane.” The patent over the same

was to expire on January 17, 1984. In early 1983, Bolar became

interested in marketing, after the '053 patent expired, a generic drug

equivalent to Dalmane. Because a generic drug's commercial success

is related to how quickly it is brought on the market after a patent

expires, and because approval for an equivalent of an established

drug can take more than 2 years, Bolar, not waiting for the '053

patent to expire, immediately began its effort to obtain federal

approval to market its generic version of Dalmane. In mid-1983,

Bolar obtained from a foreign manufacturer 5 kilograms of flurazepam

hcl to form into “dosage form capsules, to obtain stability data,

dissolution rates, bioequivalency studies, and blood serum studies”

necessary for a New Drug Application to the United States Food and

Drug Administration (FDA). As stated above, Roche argued that the

use of a patented drug for federally mandated premarketing tests is a

use in violation of the patent laws.

The District Court held that, “Bolar's use of the patented compound

for federally mandated testing was not infringement of the patent in

suit because Bolar's use was de minimis and experimental.”

On appeal before the CAFC, Bolar argued that its intended use of

flurazepam hcl is excepted from the use prohibition. It claims two

grounds for exception: the first ground is based on a liberal

interpretation of the traditional experimental use exception; the

second ground is that public policy favors generic drugs and thus

mandates the creation of a new exception in order to allow FDA

required drug testing.

Tracing the history of the experimental use doctrine, the Court of

Appeals stated that, “The aim to impose liability for infringement is to

prevent promotion of interest by the wrongful employment of the

invention which is hostile to the interest of the patentee. The interest

of the patentee is represented by the emoluments which he does or

might receive from the practice of the invention by himself or others.

These, though not always taking the shape of money, are of a

pecuniary character, and their value is capable of estimation like

other property. Hence, acts of infringement must attack the right of

the patentee to these emoluments, and either turn them aside into

other channels or prevent them from accruing in favor of any one. An

unauthorized sale of the invention is always such an act. But the

manufacture or the use of the invention may be intended only for

other purposes, and produce no pecuniary result.

Thus, where an invention is made or used as an experiment,

whether for the gratification of scientific tastes, or for

curiosity, or for amusement, the interests of the patentee are

not antagonized, the sole effect being of an intellectual

character in the promotion of the employer's knowledge or the

relaxation afforded to his mind. But if the products of the

experiment are sold, or used for the convenience of the

experimentor, or if the experiments are conducted with a view

to the adaptation of the invention to the experimentor's

business, the acts of making or of use are violations of the

rights of the inventor and infringements of his patent.”

Thus, applying this reasoning the CAFC refused to interpret experimental use in a broad manner and held that experiments [which] are in keeping with the legitimate business of the [alleged infringer] are infringements for which “[e]xperimental use is not a defense. The CAFC also held that “we cannot construe the experimental use rule so broadly as to allow a violation of the patent laws in the guise of ‘scientific inquiry,’ when that inquiry has definite, cognizable, and not insubstantial commercial purposes.” Thus, the court concluded that, “Bolar may intend to perform “experiments,” but unlicensed experiments conducted with a view to the adaption of the patented invention to the experimentor's business is a violation of the rights of the patentee to exclude others from using his patented invention. It is obvious here that it is a misnomer to call the intended use de minimis. It is no trifle in its economic effect on the parties even if the quantity used is small.”