IPR Hons. Project

COPYRIGHT (HONS)
EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

SUBMITTED TO
MR. V.K SINGH
FACULTY: IPR (COPYRIGHT HONS.)
SUBMITTED BY: DEEPAK SINDHU

IX SEMESTER
BATCH IX
ROLL NO. 21
SUBMITTED ON: 17TH OCTOBER, 2013
HIDAYATULLAH NATIONAL LAW UNIVERSITY
RAIPUR, CHHATTISGARH
CERTIFICATE OF DECLARATION
I hereby declare that the project work entitled EXHAUSTION AND PARALLEL IMPORT IN
INIDIAN COPYRIGHT LAW submitted to HNLU, Raipur, is record of an original work
done by me under the able guidance of Mr. V K singh , Faculty Member, HNLU, Raipur.
Deepak Sindhu
Semester IX
Date: - 17/10/13
C K N O W L E D G E M E N T
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Thanks to the Almighty who gave me the strength to accomplish the project with sheer hard
work and honesty.
This research venture has been made possible due to the generous co-operation of various
persons. To list them all is not practicable, even to repay them in words is beyond the domain
of my lexicon.
May I observe the protocol to show my deep gratitude to the venerated Faculty-in-charge Mr.
V K Singh, for his kind gesture in allotting me such a wonderful and elucidating research
topic.
It would be very unjust to forget my friends while expressing thanks to one and all.
Last, but by no means the least, I would like to thank all the members of HNLU family in
general and my blooming and charismatic friends in particular for their wholehearted cooperation throughout the odyssey.
DEEPAK SINDHU
E S E A R C H
E T H O D O L O G Y
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This project is based upon doctrinal method of research. This project has been done after a
thorough research based upon intrinsic and extrinsic aspects of the project.
Sources of Data:
The following secondary sources of data have been used in the project1. Articles.
2. Books
3. Journals
4. Websites
Method of Writing:
The method of writing followed in the course of this research project is primarily
analytical.
Mode of Citation:
The researchers have followed the Blue Book mode of citation throughout the course
of this project.
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Table Of Contents
I.INTRODUCTION.................................................................................................... 6
II.EXHAUSTION PRINCIPLE...................................................................................... 8
1. History............................................................................................................ 8
Types of Exhaustion............................................................................................... 9
I. International Exhaustion.................................................................................. 9
II. National Exhaustion...................................................................................... 10
III. INTERNATIONAL LEGAL FRAMEWORK FOR EXHAUSTION.................................10
IV. NATIONAL LEGAL FRAMEWORK FOR EXHAUSTION IN INDIA............................12
A. Literary, Dramatic, Musical and Artistic Works.............................................14
B. Computer Programmes and the Rental Right...............................................15
C.Cinematographic Films and Sound Recordings..............................................17
V. PARALLEL IMPORTS.......................................................................................... 19
VI. LEGAL FRAMEWORK FOR PARALLEL IMPORTS IN INDIA...................................20
Distribution rights of the copyright owner........................................................20
Infringing Copies............................................................................................... 21
Hypothetical Manufacture Test.........................................................................23
Divisibility of copyright..................................................................................... 24
VII. JUDICIAL HISTORY OF IMPORTATION AND EXHAUSTION IN
1.
INDIA.........25
The Penguin Case....................................................................................... 25
1994 Amendment to the Act............................................................................ 27

2.
Eurokids Case............................................................................................. 27
3.
Warner Brothers case................................................................................ 29
4.
John Wiley case.......................................................................................... 29
5.
Analysis...................................................................................................... 32
VIII. COPYRIGHT AMENDMENT ACT, 2012............................................................34

IX. CONCLUSION.................................................................................................. 36
X. BIBLIOGRAPHY................................................................................................. 37
Articles Referred:.............................................................................................. 37
Books Referred:................................................................................................ 38
Reports & Research Papers Referred:...............................................................39
Websites Referred:............................................................................................ 39
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I.INTRODUCTION
Copyright usually subsists in certain classes of works such as original literary, dramatic,
musical and artistic works, cinematographic films, sound recordings, computer software and
databases, as soon as the original work comes into existence. Copyright protection is
governed by the Indian Copyright Act, 1957 as amended in 1983, 1984, 1992 and
1999.During the last four decades, the Copyright Act has been significantly amended to keep
pace with commercial and technological developments and to bring Indias copyright law into
compliance with its international copyright obligations under the TRIPs Agreement and at par
with the international standard of copyright protection1.
Copyright in respect of each work generally subsists for a period of sixty years after the death
of its author2.However, as copyright is intangible by nature, the works protected by copyright
cannot and do not exist in isolation. Each of these works is given a tangible form through one
medium or the other. For example, cinematograph films could be in the form of CDs or
DVDs, while literary works may be in the form of hard copies as books or in electronic form
as possible.
So during the term of copyright, the owner of the work has the exclusive right to perform
certain actions and prevent others from performing those actions. These are the actions which
are often referred to as the bundle of rights which are together considered to be copyright.
In the Indian Copyright Act, 1957, (the Act), this bundle of rights is defined in Section 14.
The specific rights which the owner enjoys in respect of a work would vary depending on the
nature of the work3. Section 14 of the Act sets forth the bundle of exclusive right granted to
the copyright holder in the same work to exclude others from reproducing, preparing
derivative works, public displaying or performing or distributing copies of the copyrighted
work4. However, regardless of the kind of work, in broad terms, it is accurate to state that (a)
1Sonia Baldia, Exhaustion and Parallel Imports in India <exhaustion-sonia baldia.pdf > accessed 21
October 2011
2See <http://www.mirandah.com/en/categories/item/280-exhaustion-in-copyrights.html> accessed 20
October 2011
3 N.S. Gopalakrishnan and T.G. Agitha, Principles of Intellectual Property 256 (2009)
4 R.V. Vaidyanatha Ayyar, The Process and Politics of a Diplomatic Conference on Copyright (1998)
1 JWIP 3 at 17, cited in N.S. Gopalakrishnan and T.G. Agitha , Principle of Intellectual Property 256
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the owner would be the only person entitled to exercise (or authorize the exercise of) the
rights listed in Section 14 of the Act, and (b) one of the rights in Section 14 is the right to
issue copies of the work to the public and/or communicate the work to the public.
In India the issue of exhaustion and parallel imports is more complex when applied to
copyright. This complexity is because of the very nature of copyright, which consists of
bundle of rights in the same work that can be exploited independently5.
Although copyright subsists for life plus sixty years, when a copy of a work is made
available to the public, the copy may comprise both a tangible and an intangible element 6. For
example, when a film is sold in a shop, the film comprises both a tangible disc and the film
itself which is intangible. After the sale of the disc, copyright would continue to subsist in the
intangible element (i.e. the film) for the entire term of copyright, and the doing of any act
which is the exclusive right of the copyright owner under Section 14 would amount to
copyright infringement in terms of Section 51 which states, in clause (b)(iv), that the
copyright in a work is infringed when any person imports any infringing copies of the work
into India. The only exception to this is if the importation is of one copy of the work for the
private and domestic use of the importer. However, as mentioned earlier, a work, in such
circumstances would not exist in isolation but in conjunction with a medium such as a disc or
book. Although there is absolutely no debate that the copyright of the owner would continue
to subsist in the work after the sale of a copy of that work, there has been a reasonable
amount of controversy regarding the legal status of the copy of the work which had been
sold, and whether or not the owner of the copyright in the work could control subsequent
sales7.
(2009).
5 Nandita Saikia, Consequences of the Possible Loss of Respect for Territoriality
<http://copyright.lawmatters.in/2011/02/potential-applicability-of-section-2m.html > last 23 October,
2011
6 Ibid.
7 Ibid.
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II.EXHAUSTION PRINCIPLE
The principle of exhaustion of intellectual property rights, in the English language better known
as the first sale doctrine, stems from decisions of the German Reichsgericht (Imperial Supreme
Court) in the first decade of this century8.The doctrine of exhaustion or the first sale rule
establishes the exhaustion of an assets intellectual property rights vested with its owner after
its first use or sale. As a result, no further control can be exercised by the owner vis--vis
distribution or resale of the product. Applying the principle more specifically to copyrights, it
allows the purchaser to sell or give away a legally made copy of a copyrighted work without
permission once it has been obtained9. The copyright holder's right to control any further
change in ownership of a particular copy ends once that copy is sold, as long as no additional
copies are made. The practical significance of this exhaustion is that the original manufacturer
cannot use his intellectual property rights to tie the successive buyers of his product to his own
conditions, for instance fixed prices, for retail sales10. Thus, the rule of exhaustion has the
power to interfere with the copyright owners exclusive market position, reducing any leeway
for price differentiation and exposing the product to intensified price competition11.
1. History12
Josef Kohler, a German, was the first to lay the doctrinal foundations of the exhaustion
concept. Hi in his book on Patent law published in 1900, for the first time gave the concept of
exhaustion. According to him seller of protected goods should not limit their subsequent
commercial distribution at all. He came with two thesis and one conclusion. In his first thesis
he explained the rationale of Patent law i.e. Patent law was meant to grant the patentee a
reward for his inventive efforts by the allocation of a monopolistic right that allowed the
exclusion of all others from the commercial exploitation of the patented invention. In his
8 Kohler, Urheberrecht an Schriftwerken, 1907, and idem, Lehrbuch des Patentrechts, 1908.
9 Ibid.
10 J. Revesz, Trade Related Aspects of Intellectual Property Rights, Staff Research Paper, Productivity
Commission, Australia, 1999.
11 C. Koboldt, Intellectual Property and Copyright Protection, Journal of Cultural Economics 19/2 (1995),
13155.
12 Ibid.
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second thesis he explained the connection between the forms of commercial use. He said that
different forms of Patent use (production, advertisement, sale, rental, lending, export, import)
could not be viewed in isolation but are intrinsically linked with each other. In fact they could
be viewed as different expressions of one common right. Based on these two thesis Kohler
concluded that Patentee should be given reward for patent once. If the Patentee had sold a
Patented product he could no longer exclude third parties from making any sort of
commercial use of this product e.g. by its sale, rental or export. Important aspect of Kohlers
thesis is that he regards exhaustion as an inherent and often unwritten limit of patent right and
thus cannot be regarded as an exception to the Patentees overall rights.
Types of Exhaustion
Once the exhaustion principle is established in intellectual property law, the next question is,
whether this operates only on a territorial, national or regional scale or whether on the contrary it
has worldwide effect. Thus, the exhaustion of rights may be classified as international,
regional or national.
I. International Exhaustion
The general understanding of both academics and organizations who deal with international
exhaustion is that the term "international exhaustion" means that the first sale of a copy of a
copyrighted work anywhere in the world results in the exhaustion of rights in that copy
everywhere in the world. Rights being exhausted everywhere in the world means that rights
are exhausted everywhere including in the domestic territory, and as such, it is pertinent to
note that references to the loss of rights in the domestic territory do not de facto preclude the
loss of rights in other territories13. The underlying principle behind this is that the copyright
owner, having sold the product, has obtained the benefit of exclusive commercial exploitation
rights bestowed by IPR law and should no longer control its distribution beyond the first sale.
Article 6, TRIPs simply lays down a hands-off policy as far as international exhaustion is
concerned14. As far as Article 6, TRIPS is concerned, the fact is that the provision says
nothing other than leaving decisions regarding exhaustion to states themselves. Reading
between the lines of TRIPS as a whole, it may be possible to attempt to infer that TRIPS is
13 See <http://www.bailii.org/ew/cases/EWHC/Ch/2010/2560.html > accessed 22 October 2011
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inclined towards a having countries follow a particular form of exhaustion, however, TRIPS
itself makes no explicit assertions either about what that position may be, and it definitely
provides no guidance about where rights would be considered to have been exhausted if a
country were to adopt International Exhaustion.
II. National Exhaustion
Under the principle of National Exhaustion (or territoriality), however, the exclusive right to
distribute survives until the first sale of a particular copy within a specific nation. The sale of
a copyright product in one country does not extinguish the right of first sale for that same
copy in a second country.
The adoption of national exhaustion amounts to granting an importation right in which only
the copyright owner or their licensed agent can legally import copies of a copyright product
for distribution to the public. In effect, this amounts to a ban on parallel imports. Parallel
imports refers to copyright product manufactured within a specific territorial jurisdiction by
the owner of the copyright or their authorized licensee, which is then imported for re-sale into
another territorial jurisdiction by someone other than that territorys copyright licence
holder15. The importation right enables copyright owners to partition the global market into
national segments, setting price according to the price elasticity of demand in each segment,
and thereby extracting monopoly profits16.
When the exhaustion is not international or national, then it is regional exhaustion. Regional
exhaustion occurs when the exclusive right to distribute survives until the first sale of a
particular copy within a specific region. The sale of a copyright product in one region does
not extinguish the right of first sale for that same copy in other regions. For e.g. If the Book if
first sold in the Indian Sub Continent, first sale doctrine will be applicable if sold in other
regions of the world, if regional exhaustion applies.
14 Article 6, TRIPS states: For the purposes of dispute settlement under this Agreement, subject to the
provisions of Articles 3 and 4 nothing in this Agreement shall be used to address the issue of the exhaustion of
intellectual property rights. Articles 3 and 4 deals with National Treatment and Most-Favoured-Nation
Treatment, respectively.
15 N.N. Weinstock, Asserting Copyrights Democratic Principle in a Global Arena, Vanderbilt Law Review
51/2 (1998), 217329.
16 T. Papadopoulos, Copyright, Parallel Imports and National Welfare: The Australian Market for Sound
Recordings, Australian Economic Review 33/4 (2000), 33748.
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The Indian Copyright Act, 1957, (the Act), does not explicitly state whether India follows
the principle of national or international exhaustion.
III. INTERNATIONAL LEGAL FRAMEWORK FOR

EXHAUSTION
There are essentially two sets of international laws with respect to IPR, those managed by the
World Intellectual Property Association (WIPO) and more recently, those embodied in the
TRIPS Agreement of the WTO. An IPR owners exclusive right to make the product available
for sale is incorporated in the Berne Convention, Rome Convention, and Geneva Convention.
The Berne, Rome and Geneva conventions are all implemented by an agency of the United
Nations (UN), namely the World Intellectual Property Organization (WIPO)17.
The Berne Convention, 1886 rests on three basic principles18:
National Treatment: copyright owners must be given protection in member countries equal
to that granted to their own nationals.
Automatic Protection: protection is not conditional on any formality, such as registration (as
is the case with a trademark, for example).
Independence of Protection: that protection granted is independent of the existence of
protection in the country of origin.
The Berne Convention provides protection for literary, dramatic, musical and artistic works.
Sound recordings and broadcasts were covered by the inclusion of a category subject matter
other than works. The Berne Convention sets minimum standards of protection relating to
the economic rights of creators. These exclusive rights include the right of:
Translation (Article 8)
Reproduction (Article 9)
Public Performance and Communication (Article 11)
Broadcasting (Article 11)
Adapting, Altering and other Alternations (Article 12)
The general rule in relation to minimum duration of protection is the expiration of the 50th
year after the authors death. In recognition of the welfare-reducing effects of excessive
17 D. Nimmer, The End of Copyright, Vanderbilt Law Review 48 (1995), 13851420.
18 Ibid.
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market power, a number of exemptions to the bundle of exclusive rights are specified. Known
as fair dealing, this includes the recording or reproduction of works for private use, research
or study, criticism or review and reporting of news19.
Under international Law individual Countries are free to determine the issue of Exhaustion
and Parallel imports. Under Article 4bis and 6(3) of Paris Convention principle of
territoriality is applied for Patents and Trade Marks. Thus marketing of products abroad will
not entail exhaustion20. This however applies to the existence and not the exercise of an
intellectual Property Rights. Further the question of exhaustion and Parallel Imports was also
left open by TRIPs agreement Article 6 particularly mentions that 21 for the purposes of
dispute settlement under this agreement, subject to the provisions of Article 3 and 4 above
nothing in this agreement shall be used to address the issue of the exhaustion of Intellectual
Property Rights a footnote to Article 28 of TRIPs agreement requires member state to
introduce a right of importation., yet makes clear that this does not affect the issue of
Exhaustion. Member states to the TRIPs agreement agreed to disagree on the exhaustion
issue as it is clear from the Doha Declaration on the TRIPs agreement and Public Health. It
reads on this point the effect of the provisions in the TRIPs agreement that are relevant to
the exhaustion of Intellectual Property Rights is to leave each member free to establish its
own regime for such exhaustion without challenge, subject to the MFN and National
Treatment provisions of Article 3 & 4.
International law thus leaves the question of exhaustion and Parallel imports up to each
country. While the practice of Parallel Imports is legally allowed within the European Union,
the United States feels that Article 6 of TRIPs is restricted to the dispute resolution process
only22. There are also criticisms that developed countries practice double standards on this
19 D.E. Donnelly, Parallel Trade and International Harmonization of the Exhaustion of Rights Doctrine,
Computer and High Technology Law Journal 13 (1997), 445515.
20 Ibid.
21See<http://www.ebcindia.com/practicallawyer/index2.php?
option=com_content&itemid=5&do_pdf=1&id=18861> Accessed 23 October 2011
22 P. Samuelson, Implications of the Agreement on Trade Related Aspects of Intellectual Property for Cultural
Dimensions of National Copyright Laws, Journal of Cultural Economics 23 (1999), 95107.
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issue. For example the European Union allows Parallel Imports and exports among members,
but not with non members of the Union. In a ruling by the European Court of Justice, under
Article 30 of the Treaty of Rome free circulation of goods takes Precedence over Intellectual
Property Rights. Also in United States of America rights of the owner get exhausted under
first sale Doctrine and he cannot, prevent re sale of goods anywhere within country.
IV. NATIONAL LEGAL FRAMEWORK FOR EXHAUSTION IN

INDIA
Copyright in India is governed by the Indian Copyright Act, 1957. Section 14 contains a
number of provisions which deal with different kinds of works, and it is under the provisions
of this Section that copyright owners have the right:
to issue copies of a literary, dramatic or musical work to the public not being copies
already in circulation23;
(a) to issue copies of a computer programme to the public not being copies already in
circulation and (b) to sell or give on commercial rental or offer for sale or for
commercial rental any copy of the computer programme where the programme itself
is the essential object of the rental;24

to issue copies of an artistic work to the public not being copies already in
circulation;25
to sell or give on hire, or offer for sale or hire, any copy of a film, regardless of
whether such copy has been sold or given on hire on earlier occasions;26 and
to sell or give on hire, or offer for sale or hire, any copy of the sound recording
regardless of whether such copy has been sold or given on hire on earlier occasions;27
23 Section 14(a)(ii), Copyright Act, 1957

24 Section 14(b)(i) and (ii), Copyright Act, 1957
25 Section 14(c)(iii), Copyright Act, 1957
26 Section 14(d)(ii), Copyright Act, 1957
27 Section 14(e)(ii), Copyright Act, 1957
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Thus, the owners of literary, dramatic, musical, or artistic works as well as of computer
programmes have the same right: to issue copies of the works they own to the public
provided those copies are not already in circulation. An explanation appended to Section 14
states that for the purposes of this section, a copy which has been sold once shall be deemed
to be a copy already in circulation. The owners of computer programmes also have an
additional right: selling and rental rights i.e. the right to sell or give on commercial rental or
offer for sale or for commercial rental any copy of the programme unless the programme
itself is not the essential object of the rental28.
And, finally, the owners of films and sound recordings enjoy the right to sell or give on hire,
or offer for sale or hire, any copy of their works whether or not that copy has already been
sold or given on hire in earlier occasions.
So as observed, there is a significant difference in the manner in which various kinds of
works are treated in Section 14 of the Act. Owners of copyright have the exclusive right to
issue copies of their work to the public only in accordance with the provisions of this Section
read in conjunction with Section 51 which deals with infringement. So under copyright law,
there comes a point of time beyond which owners may not be able to control the resale of
copies of works in which they own copyright in certain territories. This is the point at which
the Doctrine of First Sale becomes applicable.
The exhaustion of the rights of the copyright owner is closely related to the Doctrine of First
Sale. Under this doctrine, once a copy of a copyrighted work is sold, the owner of the
copyright loses the right to control any subsequent sales of that particular copy of the work.
In other words, the rights of the copyright owner are exhausted as far as the right to sell or
rent that copy of the work is concerned. So as a general rule, the copyright owner is allowed
to sell a copy of a copyrighted work only once. After that, any person may sell that copy of
the work without the consent or the authorization of the copyright owner, and in doing so; he
would not be infringing the copyright subsisting in the work itself. However, Section 14 of
the Act is far more nuanced than this. As a result, the Doctrine of First Sale in its theoretical
form is not automatically applicable to all kinds of copyrighted works across the board.
A. Literary, Dramatic, Musical and Artistic Works
28 Nandita Saikia, The Exhaustion of Rights and Indian Copyright Law < SSRN-id1630269.pdf> Accessed
22 October 2011
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Under Section 14 of the Act, it is the right of the owner of the copyright in literary, dramatic,
musical and artistic works, as well as computer programmes to issue copies of the work to
the public not being copies already in circulation. Copies which have once been sold are
deemed to be copies already in circulation29.
A question which has repeatedly arisen with respect to the exhaustion of rights in literary
works is30: Where are the rights of the copyright owner under Section 14(a)(ii) exhausted?
Are they exhausted, by the first legal sale, only in India, in a specific territory in which the
copyright owner intends that particular copy of the work to be sold, or are the rights of the
copyright owner exhausted throughout the world?
Once a copy of has been sold in public, the Copyright Act states that it is deemed to be in
circulation. However, the Act does not clarify where it is deemed to be in circulation. If it is
deemed to be in circulation in India, it would be concluded that it is the right of the copyright
owner to issue copies of the work to the public not being copies which have already been sold
in India. As such, the copyright owner would lose or exhaust its right to re-issue that copy
only in India. Its rights beyond the territory of India would remain intact.
However, to reach such a conclusion it would perhaps be necessary to rely on the territorial
nature of copyright, and the fact that the Act applies only to India. The second possibility is
that the rights are exhausted in those territories where the copyright owner intends that the
work is to be sold. The final possibility is that once a lawful copy of a work is lawfully sold,
the copyright owner loses all rights in respect of the resale of that copy of the work
throughout the world. This would be supported by the fact that the explanation to Section 14
does not state the first lawful sale would result in the sold copy being deemed to be in
circulation only within India.
Further, if one were to consider Section 51 of the Act which defines infringement, copyright
infringement would occur only when a person imports into India any infringing copies of a
work31.There is nothing in Section 51 which speaks about the export of works. Therefore, it
should be possible to conclude that Indian law would allow such export, and if that were the
29 Nandita Saikia, The Exhaustion of Rights and Indian Copyright Law < SSRN-id1630269.pdf>
Accessed 22 October 2011
30 Ibid.
31 Section 51(b)(iv), Copyright Act, 1957
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case, most probably, India could be considered to follow a principle of international

exhaustion with respect to copyright. This final interpretation is not one which the courts
have wholeheartedly endorsed though (to put it mildly)32.
The Indian Courts have turned towards respecting the divisions of rights along territorial lines
by publishers a form of division which is supported by Sections 19(2), 19(6) and 30A of the
Act33 and have tended to hold that as far as literary works are concerned, the exhaustion of
rights occurs on the first legal sale of a copy of a work only within the territory in which the
copyright owner intended the work to be sold. Thus, the copyright owner would continue to
enjoy the right of resale in respect of all other territories.
B. Computer Programmes and the Rental Right
In addition to the right to issue copies of computer software to the public which are copies
not already in circulation, the owners of computer programmes have the right, under Section
14(b) (ii), to sell or give on commercial rental or offer for sale or for commercial rental any
copy of the relevant computer programme as long as the programme itself is the essential
object of the rental.
The Rental Right is not a right which has been traditionally included under the scope of
copyright, and is an exception to the Doctrine of First Sale. India is, however, not the only
country to incorporate into its law the Rental Right. In fact, the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS) has specifically mandated the recognition of
the Rental Right 34with respect to computer programmes and films.
However, the Rental Right can trace its origins further back than the TRIPS Agreement which
was negotiated in 1994. In the US, for example, it was recognized by the Supreme Court of
32 (a) Penguin Books Ltd. v. India Book Distributors and Ors.. The High Court of Delhi. AIR1985Delhi29; (b)
Eurokids International Pvt. Ltd. v. India Book Distributors Egmont Books Ltd.. The High Court of Bombay.
2005(6)BomCR198;
(c) John Wiley & Sons Inc. & Ors. v. Prabhat Chander Kumar Jain & Ors.. The High Court of Delhi. IA No.
11331/2008 in CS (OS) No. 1960/2008 dated May 17, 2010;
(d) John Wiley & Sons Inc. & Ors. v. International Book Store & Anr.. The High Court of Delhi. CS (OS) No.
2488/2008 & IA No. 2856/2009 dated May 20, 2010.
33 Section 19(2): The assignment of copyright in any work shall identify such work, and shall specify the rights
assigned and the duration and territorial extent of such assignment. Section 19(6): If the territorial extent of
assignment of the rights is not specified, it shall be presumed to extend within India.
Section 30A: The provisions of sections 19 and 19A shall, with any necessary adaptations and modifications,
apply in relation to a licence under section 30 as they apply in relation to assignment of copyright in a work.
Page | 16
the United States as far back as 1908 in the case of Bobbs-Merrill Co. v. Straus,35 and was
codified into the US Copyright Statute vide the 1976 amendment36.
In India, Rental Rights first made an appearance in the Act through the 1994 amendments in
which the phrase used in respect of computer programmes, films, and sound recordings was
identical with only the title of the class of work being different in each provision: the 1994
amendment said that the copyright owner would have the exclusive right to sell or give on
hire, or offer for sale or hire, any copy of the film, regardless of whether such copy has been
sold or given on hire on earlier occasions". The Statement of Objects and Reasons behind the
amendment was to facilitate the flow of remuneration to copyright owners which (notably in
the case of cinematograph film) may be assisted by appropriate collective administration
through copyright societies, these rights will also provide an added safeguard against
distribution of infringing copies37.
The provision in respect of computer programmes was further amended in 1999. However,
the Statement of Objects and Reasons appended to the 1999 Amendment Bill does not
explain the impetus to include Section 14(b)(ii) in its current form, and there appears to be
only one rather confusing reference to it in the Parliamentary Debates which appears to
attempt to explain the proviso to Section 14(b)(ii)38.
However, as far as the exhaustion of rights is concerned, what the inclusion of the Section in
the Act has meant is that, under Section 14(b) (ii), the owners of the copyright in software
continue to have the right to restrain the commercial rental or resale of copies of software
34 Article 11, TRIPS: Rental Rights: In respect of at least computer programs and cinematographic
works, a Member shall provide authors and their successors in title the right to authorize or to prohibit
the commercial rental to the public of originals or copies of their copyright works. A Member shall be
accepted from this obligation in respect of cinematographic works unless such rental has led to
widespread copying of such works which is materially impairing the exclusive right of reproduction
conferred in that Member on authors and their successors in title. In respect of computer programs,
this obligation does not apply to rentals where the program itself is not the essential object of the
rental.
35 210 U.S. 339 (1908)
36 Section 109, Title 17, USC: prohibits the rental, lease, or lending of a computer program for
direct or indirect commercial gain unless authorized by the owner of copyright in the program.
37 Report on Computer Software Rental Act <http://www.copyright.gov/reports/software_ren.html>
accessed on 24 October, 2011.
Page | 17
which have been lawfully sold. Thus, this Section is a clear cut exception to the Doctrine of
First Sale.
Still, the right of resale in Section 14(b) (ii) overlaps with the right of resale in Section
14(a) (ii) which is included in Section 14(b) by incorporation vides Section 14(b) (i).
Given that the two Sections contain contradictory positions, there may be different ways in
which to infer their collective effect. Firstly, Section 14(a) (ii) may dilute or, possibly, even
negate 14(b) (ii). If this were the case, as far as subsequent resale is concerned, the principle
of exhaustion would apply to computer programmes in the same manner that it applies to
literary works under Section 14(a) (ii). The second possibility is that Section 14(b) (ii) is to
take priority over Section 14(a) (ii), which would be convincing since Section 14(b)(ii) has
been drafted specifically in respect of computer programmes 39. If this second interpretation
were accurate, there would be a clear cut exception to the Doctrine of First Sale under Indian
law in respect of computer programmes.
C.Cinematographic Films and Sound Recordings
Cinematographic films and sound recordings enjoy a special position under the Act with
respect to the exhaustion of rights. In the case of these works, even if a particular lawful copy
of the relevant work has been legally sold, the copyright owner would be able to control the
resale and/or hire of that copy of the work. This is because, under Sections 14(d) (ii) and
14(e) (ii), all the rights of the copyright owner in a copy of a film or sound recording
(respectively) are not lost by the first legal sale of that copy of the film or sound recording 40.
Section 14(d) (ii) of the Copyright Act, 1957, states that it is one of the rights of the owner of
the copyright in a films to sell or give on hire, or offer for sale or hire, any copy of the film,
regardless of whether such copy has been sold or given on hire on earlier occasions while
38 The Lok Sabha Debates (English Version). Second Session. Thirteenth Lok Sabha. Vol. III. 15:03
hrs. (Dr. Raghuvansh Prasad Singh in the Chair) . After that, Amendment is being made in Article
14-B of it. According to it, computer programmes will not be included in it. The computer
programmes are not the essential part of the original programme in which they are installed. For
example, if you hired a car. It is an equipment in itself. But you have hired the car, not computer
programmes. In this situation, we can remove computer programmes from it.
39 Supranote 37.
40 Warner Bros. Entertainment Inc. and Ors. v. Respondent: Mr. Santosh V. G.. The High Court of
Delhi. MIPR 2009 (2) 175.
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Section 14(e) (ii) contains an identical provision in respect of sound recordings. These
provisions have has prevented the development of a legitimate second-hand market in films
without the consent of the owners of the copyright of films and "to facilitate the flow of
remuneration to copyright owners.
Both of these Sections states that it is the right of the copyright owner to sell or give on
hire, or offer for sale or hire, any copy of the work. As such, the use of the word any
denotes that it does not matter whether or not the copy has already been sold, and that the
words regardless of whether such copy has been sold or given on hire on earlier occasions
are merely in the nature of a clarification and have no substantive value 41. Under the Act,
there is no requirement for the copyright owner of a film to have the exclusive right to issue it
to the public. Thus, copyright owners of films and sound recordings may completely sidestep
the requirements of Sections 14(a) (ii), 14(b) (i) and 14(c) (iii) regarding copies not being
already in circulation.
Similar provisions were enacted into US law vide the Record Rental Amendment Act of
1984, and may have provided the inspiration for the Indian provision. This provision,
which was incorporated into Title 17 of the USC as an amendment to Section 109(b) (1)
(A)42.
Further, Article 11 of TRIPS43 also requires that the Rental Right be recognized in respect of
computer programmes and films. However, given how closely linked the Indian film and
music industries are, it may not have been practical to limit the application of provisions
relating to the Rental Right to films, and to exclude sound recordings.
The result has been that Indian copyright law does not recognize the Doctrine of First Sale
with respect to either films or sound recordings. By allowing copyright owners from being
able to control sales subsequent to the first sale of a copy of a film or sound recording, and to
prohibit the hire of copies which have been legally purchased, the period of exploitation of
such copies could be considered to have been increased.
41 Supranote39.
42 I. Clarke and M. Owens, Trademark Rights in Grey Markets, International Marketing Review 17/3 (2000),
27286.
43 Supra note 18
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Popular belief is that this helps to increase revenues for the copyright owners, usually for film
production houses or music companies, and that such increased revenues assure the owners of
the copyright in films and sound recordings returns on their investment and, further, that such
increased revenues ultimately result in a trickle-down effect which increase the monies
payable to the authors of the underlying works contained in films and sound recordings 44.
While Sections 14(d)(ii) and 14(e)(ii) would almost certainly increase the revenues of
production houses and music companies, it is unclear to what extent they do so.
V. PARALLEL IMPORTS
Parallel Imports occurs when authentic not counterfeited products are imported cheaply,
without the consent of the producer who has a Trade mark, Copyright, Patent or other
intellectual property right in these products, with the aim to compete with the producers own
products, which he himself had originally marketed abroad at a lower price. Thus while
parallel importers (local resellers) are sourcing legitimate genuine product from overseas,
they are bypassing the authorized supply channels in the importing country. The practice of
parallel importing occurs because companies, either the manufacturer or the distributor, set
differential prices for their products in different markets. Parallel importers ordinarily
purchase products in one country at a price (P1) which is cheaper than the price at which they
are sold in a second country (P2) import the products into the second country, and sell the
products in that country at a price which is usually between P1 and P2. Examples of parallel
imports are:
Importation of computer games and hardware from Asia to sell in Australian markets
Importation of Colgate tooth paste from Thailand into Hong Kong
Importation of Mercedes Benz vehicles in Malaysia to sell in New Zealand is a

common practice.
Some believe that Parallel Imports benefits consumers by lowering prices and widening the
selection and consumption of products available in the market and especially it reduces drug
prices to an affordable level45.The issue of public health is highly interrelated with that of
44 W.M. Landes and P.A. Posner, An Economic Analysis of Copyright Law, Journal of Legal Studies XVIII
(1989), pp.32563.
45 See <http://www.cis-india.org/a2k/blog/indian-law-and-parallel-exports> Accessed 24 October 2011

Page | 20
parallel imports. Banning parallel imports is as good as playing with the lives of millions of
poor people hence it is becoming an ethical issue. While the other side argues that it
discourages intellectual property owners from investing in new & innovative products 46. The
practice of parallel imports stems from the doctrine exhaustion.
VI. LEGAL FRAMEWORK FOR PARALLEL IMPORTS IN INDIA

In India the issue of exhaustion and parallel imports is more complex when applied to
copyright. This complexity is because of the very nature of copyright, which consists of
bundle of rights in the same work that can be exploited independently.
A copyright holder47 has the exclusive rights in relation to a copyright work such as right to
reproduce, adapt, publicly display or perform or distribute copies of the work. Therefore a
stricter set of circumstances may be required before exhaustion is imposed in a copyright
holder because its not necessary that the right of copyright holder may get exhausted upon
the act of first sale of work as there are additional rights to the work such as rights of rental,
making adaptations of the work etc. The general rule in India is that an importer must obtain
a license from the copyright holder in India to import the work, which must be in the form of
an express consent. Generally speaking, no license to import may be implied from the
circumstances unless the copyright holders consent can be inferred from such circumstances.
The import license requirement applies to any copyrighted work made outside India even if
made by foreign affiliates or licensees, but it is unlikely to apply if the work is made by the
copyright holder in India, exported and then re-imported into India.
In so far as the Copyright Act, 1957 is concerned, the issue of parallel importation depends on
the interplay of the following provisions and rights:
(a) Distribution rights of the copyright owner. (Section 14)
(b) When copyright is infringed. (Section 51)
(c) Hypothetical manufacture test (Section 53) and
(d) Doctrine of divisibility of Copyright (Section 18).
Distribution rights of the copyright owner
46 Ibid.
47 The term copyright holder includes a copyright owner or its exclusive licensee in India, as the
case may be.
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The copyright Act provides the owner of the copyright the right to issue copies of the work to
the public not being copies already in circulation under section 14 as discussed earlier. In all
the above sections the provision controlling the parallel imports is the presence of the term
not being copies already in circulation. This is similar to the term putting into circulation
copies not previously put into circulation occurring in Section 18 of the Copyright, Designs,
and Patents Act-1988 of U.K. 48
The Copyright law of UK provides that the act of putting into circulation copies not
previously put into circulation does not include subsequent distribution or sale of those
copies. Thus, both legislatures clearly intend that the copyright owners cannot control resale
and that the distribution right can no longer be exercised after a consensual first commercial
circulation49.
According to Copinger50 the expression in the United Kingdom or elsewhere in Section
18(2) apparently refers back to the expression copies not previously put into circulation;
thus if those copies have previously been put into circulation in, for example, the United
States of America, it will not be an infringement under this section to put those copies into
circulation in the United Kingdom.
Copinger further holds that it is less clear what the expression 51 the Act of putting into
circulation copies itself means. In common type of case the chain of distribution will start
with the producer of the goods, which are then sent to the wholesaler, who in turn distributes
them to retailers, who then make them available to the public. The producer at the head of the
chain no doubt is the principal cause of the goods being put into the eventual circulation and
48 Section 18 of the Copyright, Designs, and Patents Act-1988 of U.K. which reads as follows:
Infringement by issue of copies to the public: (1) The issue to the public of copies of the work is an act
restricted by the copyright in every description of copyright work.
(2) References in this Part to the issue to the public of copies of a work are to the act of putting into circulation
copies not previously put into circulation, in the United Kingdom or elsewhere, and not to
(a) any subsequent distribution, sale, hiring or loan of those copies, or
(b) any subsequent importation of those copies into the United Kingdom; except that in relation to sound
recordings, films and computer programs the restricted act of issuing copies to the public includes any rental of
copies to the public.
49 Macmillan Fiona (Ed), New Directions in Copyright law, Vol 6, Edward Elgar Publishing Inc, Northampton,
Massachusetts, 2007, Pp 135-140
50 Copinger and Skone James on Copyrigt (13th editon), Sweet and Maxwell, London 1997, P. 202
51 Ibid.
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perhaps it is the intention of the Act to make this person liable for the primary infringement
of issuing copies of the work to the public. This is given support by the express provision that
any subsequent distribution, sale, hiring or loan of those copies does not amount to an
infringement, indicating perhaps that it is only the person at the head of the distribution chain
who is liable under this section.
Infringing Copies
Under Section 5152 of the Copyright Act, the copyright in a work is infringed when any
person, who: (1) Without the license of the copyright holder does anything the right to do
which by virtue of the Act is conferred upon the copyright holder, or (2) Imports into India
any infringing copies of the work, except two copies for personal use.
Section 2(m) defines the term infringing copy53 to include any copy imported into India in
contravention of the Copyright Act.
52 Section 51 of Indian Copyright Act, 1957 reads as follows: When copyright infringed- Copyright in a work
shall be deemed to be infringed(a) when any person, without a licence granted by the owner of the copyright
or the Registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or of
any condition imposed by a competent authority under this Act
(i) does anything, the exclusive right to do which is by this Act conferred upon the owner of the copyright , or
(ii) permits for profit any place to be used for the communication of the work to the public where such
communication constitutes an infringement of the copyright in the work , unless he was not aware and had no
reasonable ground for believing that such communication to the public would be an infringement of copyright;
or
(b) when any person
(i) makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire , or
(ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the
copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work:
[Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work, for the private and
domestic use of the importer.]
Explanation For the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work
in the form of a cinematograph film shall be deemed to be an infringing copy.
53 Section 2(m), Copyright Act, 1957 :infringing copy means,-(i) in relation to a literary, dramatic, musical
or artistic work, a reproduction thereof otherwise than in the form of a cinematographic film;
(ii) in relation to a cinematographic film, a copy of the film made on any medium by any means;
(iii) in relation to a sound recording, any other recording embodying the same sound recording, made by any
means;
(iv) in relation to a programme or performance in which such a broadcast reproduction right or a performers
right subsists under the provisions of this Act, the sound recording or a cinematographic film of such
programme or performance,
If such reproduction, copy or sound recording is made or imported in contravention of the provisions of this Act.
Page | 23
The provisions relating to distribution rights and parallel imports are also explained by
another authoritative book on Copyright Law54as follows "32.27: We now arrive at one of the
most difficult topics in copyright law. It is our ambition to expound this subject as clearly as
possible but inevitably this involves exposing some troublesome problems which lurk not far
beneath the surface. The basic idea is simple. It has long been the policy of copyright law in
the UK and other countries which follow our system that as a rule, mere selling or other
secondary dealings with articles manufactured in the home market shall not be treated as
copyright infringement unless their marking was piratical in the first place. Further, it is
policy that traders should be free to buy and sell goods without getting involved in copyright
proceedings, so long as they do so in good faith. Dont deal in pirate copies where you can
tell they are probably such is a law anyone can understand. Dealing in pirate copies where
you know or have reason to believe that they are such is called secondary infringement in
contrast to primary infringement (e.g. manufacturing) where liability is strict. This idea works
fine as long as one does not need to examine too closely what one means by pirate copies; it
is usually pretty obvious. However, when it comes to parallel imports it is not so obvious, and
one has to know precisely what is meant. It is plain that the test cannot be whether the copy
was made piratical in its country of origin because the copyright laws of foreign states are
irrelevant so far as rights in the UK are concerned, and in some cases these laws may not
even exist. Since foreign copyrights are separate and distinct rights, and since it is
commonplace for these to be assigned so as to be exploited by different hands, it cannot
matter whether a copy imported from Britannia was lawfully made in its country of origin;
this principle has been recognized from an early date.
Hypothetical Manufacture Test
54 Laddie, Prescott & Vitorias "Modern Law of Copyright & Designs" 2000 (3rd edn)
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Section 5355 of the Indian Copyright Act, 1957 deals with importation of infringing copies.
Section 53 precludes importation of infringing copies made outside India that if made in India
by the same person who made them outside India, would infringe copyright. By implication if
the imported copies are made by the copyright holder in India exported and then re imported,
the copyright holders right to block such copies from entering the country may be deemed to
be exhausted and such copies may not be deemed infringing within the purview of copyright
Act.
In Gramophone Co. of India Ltd. v. Birendra Bahadur Pandey 56 the Supreme Court has
held that the word import in section 51 and 53 of the Act means bringing into India from
outside India; and it is not limited to importation for commerce only, but includes importation
for transit across the country.
So by restricting the import of copies made out of India of work which if made in India
would infringe copyright; the Indian legislature has introduced the concept of hypothetical
manufacture test in dealing with issues of import of copyright goods.
The Hypothetical Manufacture Test was first introduced in U. K, in the Copyright Act 1911 in
Section 2(2)57. This section provided a new test by which to determine the lawfulness of any
work sought to be imported. It was an infringement of copyright if a person imported an
55 Section 53 of the Indian Copyright Act, 1957 reads as follows: Importation of infringing copies (1) The
Registrar of Copyrights, on application by the owner of the copyright in any work or by his daily authorized
agent and payment of the prescribed fee, may, after making such inquiry as deems fit, order that copies made out
of India of the work which if made in India would infringe copyright shall not be imported.(2) Subject to any
rules made under this Act, the Registrar of Copyrights or any person authorized by him in this behalf may enter
any ship, dock or premises where any such copies as are referred to in sub-section (1) may be found and may
examine such copies.
(3) All copies to which any order made under sub-section (1) applies shall be deemed to be goods of which the
import had been prohibited or restricted under section 11 of the Customs Act, 1962, and all the provisions of the
Act shall have effect accordingly.
Provided that all such copies confiscated under the provisions of the said Act shall not vest in the Government
but shall be delivered to the owner of copyright in any work.
56 AIR 1984 SC 667

57 Section 2(2) of U.K. Copyright Act, 1911 provides as follows: Copyright in a work shall also be
deemed to be infringed by any person who (a) sells or lets for hire . . .
(d) imports for sale or hire into any part of His Majestys dominions to which this Act extends,
any work which to his knowledge infringes copyright or would infringe copyright if it had been made within the
part of His Majestys dominions in or into which the sale or hiring, exposure, offering for sale or hire,
distribution, exhibition, or importation took place.
Page | 25
article which would infringe copyright if it had been made in that part of the dominions into
which it was imported.
The provision was interpreted, for the first time, in 1960 in Clarke, Irwin & Co. Ltd. v. C.
Cole & Co. Ltd58. In the 1967 edition of The Canadian Law of Copyright and Industrial
Designs by Harold G. Fox, the author discusses this judgment of Spence J. and says: Thus,
the words if made in Canada are to be construed as meaning if made in Canada by the
person who made them.
Divisibility of copyright
Section 1859 of the Copyrights Act 1957 incorporates provisions regarding the divisibility of
the copyright. In the early 19th Century the prevailing view in the Common Law was that the
copyright was indivisible. According to Nimmer1 the Doctrine of Indivisibility of
Copyright found its historical roots in the early English copyright case of Jefferys v. Boosey
and an American patent case, Waterman v. Mackenzie60.
Thus divisibility of the Copyright was first statutorily recognized in the United Kingdom by
the Copyright Act 1911. Under s. 1(2) it was recognized that copyright in a work consisted of
a number of rights not merely the right to reproduce. Section 5(2) stated that copyright
might be transferred either by assignment or licence, wholly or partially, either generally or
subject to limitations, to any part of the territory to which the Act extended and for any part
of the term thereof.
According to Nimmer the doctrine of indivisibility impeded the commercial exploitation of
copyright, especially with the development of new forms of communication. Consequently
this doctrine was much modified by judicial decision The United States introduced the
58 (1960) 22 D.L.R. (2d) 183

59 Section 18 of the Copyright Act, 1957 reads as follows: Assignment of copyright. -(1) The owner of the
copyright in an existing work or the prospective owner of the copyright in a future work may assign to any
person the copyright either wholly or partially and either generally or subject to limitations and either for the
whole term of the copyright or any part thereof:Provided that in the case of the assignment of copyright in any
future work, the assignment shall take effect only when the work comes into existence.
(2) Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the assignee as
respects the rights so assigned, and the assignor as respects the rights not assigned, shall be treated for the
purposes of this Act as the owner of copyright and the provisions of this Act shall have effect accordingly.
(3) In this section, the expression "assignee" as respects the assignment of the copyright in any future work
60 13,8 US 252 (1891).

Page | 26
concept of divisibility of copyright when the doctrine of indivisibility was largely abolished
by the Copy right Act of 1976, section 201(d)(2) of which provides:
Any of the exclusive rights comprised in a copyright, including any subdivision of any of the
rights specified by section 106, may be transferred . . . and owned separately. The owner of
any particular exclusive right is entitled, to the extent of that right, to all of the protection and
remedies accorded to the copyright owner by this title.
VII. JUDICIAL HISTORY OF IMPORTATION AND

EXHAUSTION IN
INDIA
1. The Penguin Case61
The issue of parallel importation first reached the higher judiciary in 1984 when the Delhi
High Court was called upon to pronounce judgment on whether import by a third party
without the express authorization of the copyright owner constitute infringement. The
Division Bench of the Delhi High Court held that importation of copyright books (goods)
without the consent of the owner of the copyright though they may have been made with the
consent of the owner of copyright in the place where they were made (i.e. parallel imports) is
an infringement of copyright. The court has examined the issue in detail as under:
Para (22) Importation of books which are "infringing copies of the work" is an infringement.
So is the sale thereof. If any person, without the license of the copyright owner, imports into
India for the purpose of selling or distributing for purposes of trade the literary work the
copyright is infringed.
Any importation of infringing copies is therefore an infringement unless it is for the
importer's own use. American books may be lawfully published in America. But when the
copies of those publications are imported into this country, an action for infringement would
lie in this country against the importer in respect of those copies. An action would also lie
against any person who for instance sold or distributed such copies here. Because the books
have been imported and sold without the license of the owner of the copyright or his
exclusive licensee.
Para (23) "infringing copy" is defined in section 2(m). An infringing copy means a copy
"imported in contravention of the provisions of the Act." The central provision in section 51
which says that copyright shall be deemed to be infringed where any person without a license
61 Penguin Books Limited vs. India Book Distributors, AIR 1985 Delhi 29, 26 (1984) DLT 316
Page | 27
granted by owner of the copyright "does anything, the exclusive right to do which is by this
Act conferred upon the owner of the copyright." The owner of the copyright or his licensee
has the "exclusive right" of printing, or otherwise multiplying, publishing and vending copies
of the copyrighted literary production in India62.
India Distributors are infringing this right. Therefore, India Distributors are dealers in
"infringing copies". They are handling unlicensed copies.
Para (26) It is true that India Distributors are not printing these books and are not guilty of
what is called primary infringement. But when they issue copies of these titles for public
distribution they are guilty of secondary infringement.
Para (36) Issue of copies for public distribution is publication. Of publication in India the
right is given to Penguins under an exclusive license. What matters is the issue of copies in
India for purposes of infringement. Whether they have already been published lawfully in
America is of little consequence. The importation, sale and public distribution of American
editions constitute infringement of copyright of the exclusive licensee.
Para (37) While publication generally refers to issue to public importation for the specified
purpose may be a necessary step in the process of issuing to the public, and therefore of
publishing. It appears to me that the exclusive right of Penguins to print, publish and sell
these titles in India would extend to the exclusive right to import copies into India for the
purpose of selling or by way of trade offering or exposing for sale the hooks in question. This
is the true meaning of the word 'publish' as used in section 14(1)(a)(4).
So the High Court held that in importation it is the locals that matters. Territorial division and
geographical area are of importance. Outside a defined territory the sale of a copyrighted
work constitutes a sale of an "infringing copy" because there is infringement of territorial
restrictions. Penguins' case is that they hold a territorially exclusive license coupled with an
interest so far as India is concerned. Generally speaking, whenever there is misappropriation
of intellectual property of which the primary beneficiary is the copyright owner there is
infringement of copyright.
1994 Amendment to the Act
62The Court did not examine whether the said exclusive rights of the owner extend to copies already in
circulation as stipulated in Section 14(a)(ii) of the Copyright Act. If it is found that the copyright owner does not
have rights over copies already in circulation, then the imported copies cannot held to be infringing goods.
Page | 28
The amendment removed the right to publish, and instead made it a right to to issue copies
of the work to the public not being copies already in circulation. It stands to reason that this
not only ensures the centrality of the doctrine of first sale in India, but also allows for
international exhaustion, thus allowing for parallel import. This is clear from the fact that we,
in Indian law (as per section 40), makes it clear that all or any provisions of this Act shall
apply to work first published in any class territory outside India to which the order (under
section 40) relates in like manner as if they were first published within India.
Thus, even books published internationally are, under the legal fiction under section 40, akin
to books published in India. Since we are granting foreign works all the protection under the
Act as though they had been published in India by Indian authors, it is but natural that they
should be subject to all the same limitations as well (such as the doctrine of first sale).
As one commentator puts it, with amendments, the decision of the Penguin case is no more
the law. Like most other nations, we have also accepted the principle of international
exhaustion. This seems to be after taking into view the public interest angle63.
2. Eurokids Case64
In 2005, the same issue of parallel importation with reference to the infringement of
exclusive licensing rights in literary works arose before the Bombay High Court.
In this case the suit was filed by the plaintiff- Eurokids International Pvt Ltd- in its capacity
as an exclusive licensee of one Egmont Books limited, United Kingdom. The exclusive
license agreement dated 27th September, 2004 was for importing and distributing various
titles including "TINTIN" in the territories of India, Srilanka, Nepal, Bangladesh, Bhutan and
Maldives.
One Casterman Editions had the exclusive publishing rights relating to Herges Tin Tin and
had the sole and exclusive right to exploit the publishing rights. Egmont Books Ltd- the
Second Defendant- entered into an agreement dated July 23, 2001 with the said Casterman
Editions whereby Casterman Editions granted to Egmont Books Ltd the exclusive right to
publish and distribute Tin Tin books in various territories including India. Vide Article 2 of
the said agreement Egmont Books Ltd owns the worldwide, excluding the territory of USA,
copyright in the English Translations by Leslie Lonsdale Cooper and Michael Turner in the
63 Arathi Ashok, Economic Rights of Authors under Copyright Law, 15 J. Intell. Prop. Rights 46
(2010) at 50.
64 Eurokids International Pvt. Ltd. vs. India Book Distributors & Egmont Books Ltd.; 2005(6)BomCR198
Page | 29
Adventure of TinTin series together with a number of trademark registration in Snowy,

Professor Calculus and Thomas & Thomson. Thus, on the basis of the said agreement and
ownership of Egmont Books Ltd, the plaintiff has acquired exclusive importation1,
distribution and other rights under a licensing agreement dated 27th September, 2004.
In or about January, 2005 plaintiff attention was invited to the fact that titles which are
covered by exclusive licensing agreement but which are not distributed or imported by the
plaintiff, were available in the Indian market. The plaintiff purchased some of the titles. These
titles were imported by the First Defendant- India Book Distributors who acquired them
through Little Brown & Co. of the United State of America (USA) - the America Publisher of
TinTin titles. Whereas, M/s. Little Brown & Co. had been granted rights by Casterman in
respect of the said titles only for the territory of USA.
Thus the court held that, the books imported and distributed by M/s. Little Brown & Co. in
USA cannot be imported and disturbed in India by first defendant-India Book Distributors.
Such an action on their part contravenes plaintiffs exclusive licensing agreement and defeats
plaintiffs rights there under. Since M/s. Little Brown & Co. itself has no authority to import
or distribute the titles in question in India, then they could not have created any rights in
favour of first defendant.
The court further held that, for making out a prima facie case insofar as first defendant is
concerned, it is not necessary for the plaintiffs to prove the aforesaid aspect.
All that they have to show is that they derive the rights from second defendant which is not
disputed. If the rights as derived under the agreements with the second defendant are of
importation and distribution of titles in question exclusively, then save and except through the
plaintiffs, the said titles cannot be imported or distributed in India. If the exclusive rights of
the plaintiffs are being violated or breached by the first defendants acts of importation or
distribution of titles in question in India, then the plaintiffs have made out a case of
infringement of their copyright. After having concluded that the nature of arrangement
amounts to grant of exclusive licence and that such licence would cover the acts
contemplated by the Act, then the plaintiffs have prima facie established a case of
infringement of their copyright by first defendant.
Thus the court in this case relied on private contractual rights and the rights arising there
under for protection of IPRs (exclusive licensing rights).
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3. Warner Brothers case65

In 2009, the Delhi High Court pronounced yet another verdict on parallel importation in the
case of Warner Bros. v. Santosh V.G. However, this was a case on DVDs, and not on books.
The Delhi High Court in this case has held that:
Para (65). There is yet another reason why the defendants argument about exhaustion cannot
be accepted in India. Now, a copyright owner has the right and defendants contentions were
to be accepted, the moment such licensees gain copies, the copyright owners would exhaust
their rights, enabling the licensees to exploit the copies uninhibitedly. Thus, for instance, if a
distributor is given a copy to exhibit a film in territory A, or hire them in that territory; he
could, by extension of the defendants logic, travel beyond that territory, or use a rental copy
to exhibit the film, in another territory, where it has not been released, or even rent it in such
territory, and so on. To give another instance the purchase of a rental copy meant to be used
in the southern region, in India, designated by the copyright owner, analogically, can
according to the defendant, be rented out in other regions too, whether or not such films are
released in those regions. Such renting out may have catastrophic commercial consequences:
one of the hirers might well be a cinema theatre, which may exhibit it, in public. This would
completely defeat the copyrights owners right to commercially exploit its rights, and for that
purpose, partition the market at its convenience. The safeguard provided by Section 51 (b)
(iv) proviso, in the case of importation of one infringing copy, amply testifies that if
importation is for private use of the importer, which specifically alludes to the non
commercial use by such a person or individual, it is not deemed an infringement.
4. John Wiley case66
The facts of the judgment are rather simple. John Wiley & Sons Inc., based in New York,
exclusively licensed the rights over certain books to Wiley India Pvt. Ltd. (all the other
plaintiffs follow the same model, so we shall restrict ourselves to the case of the Wiley
65 Warner Brothers Entertainment Inc and Others Vs Santosh V.G MIPR 2009 (2) 175.
66 John Wiley & Sons Inc. & Ors. v. Prabhat Chander Kumar Jain & Ors.. The High Court of Delhi. IA No.
11331/2008 in CS (OS) No. 1960/2008 dated May 17, 2010; MIPR 2010 (2) 0247John Wiley & Sons Inc. &
Ors. v. International Book Store & Anr.. The High Court of Delhi. CS (OS) No. 2488/2008 & IA No. 2856/2009
dated May 20, 2010.
Page | 31
corporation). These books were sold at a reduced cost in the Indian market and were clearly
labelled as being Wiley Student Edition restricted for sale only in Bangladesh, Myanmar,
India, Indonesia, Nepal, Pakistan, Philippines, Sri Lanka and Vietnam. Another label on the
same book read: The book for sale only in the country to which first consigned by Wiley
India Pvt. Ltd and may not be re-exported. For sale only in: Bangladesh, Myanmar, India,
Indonesia, Nepal, Pakistan, Philippines, Sri Lanka and Vietnam.67Quite clearly, John Wiley
& Sons, being the owner of the rights, had given exclusive license to Wiley India Pvt. Ltd. to
publish and print an English Language reprint edition only in the territories entailed in the
agreement and not beyond that. Further, they wished to impose this restriction on all buyers
of the book by way of that notice and attached conditionality, and thus prevent exports to the
United States.
At this stage, it would do us well to dwell into the facts of the 1908 US Supreme Court case
of Bobbs-Merrill Co. v. Straus68. In this case, the plaintiff-appellant sold a copyrighted novel
with a clear notice under the copyright notice stating that, The price of this book at retail is
$1 net. No dealer is licensed to sell it at a lower price, and a sale at a lower price will be
treated as an infringement of the copyright. Macy & Co., a famous retailer, purchased large
lots of books both at wholesale prices and at retail prices, and re-sold the books to its
customers at 89 cents a copy. This was quite clearly in violation of the condition imposed by
the notice.
It may be seen that the facts in this case quite clearly mirror the fact situation in John Wiley
& Sons v. Prabhat Chander Kumar Jain. It is only the nature of the conditionality that
differentiates the two cases: in the one it was a restriction on price at which the book could be
further sold, in the other it was a restriction on where the book could be further sold. How did
the judge rule in Bobbs-Merrill Co. v. Strauss? The court ruled that it was on the record that
Macy & Co. had knowledge of the notice. However, despite that, the notice was held not to
be binding on Macy & Co.
The precise question, therefore, in this case is, Does the sole right to vend secure to the
owner of the copyright the right, after a sale of the book to a purchaser, to restrict future sales
of the book at retail, to the right to sell it at a certain price per copy, because of a notice in the
book that a sale at a different price will be treated as an infringement, which notice has been
67 While the exact countries were different in the case of each of the plaintiffs, there were all restricted to sale
in India and a few of its neighbouring countries.
68 210 U.S. 339 (1908)

Page | 32
brought home to one undertaking to sell for less than the named sum? We do not think the
statute can be given such a construction copyright statutes, while protecting the owner of the
copyright in his right to multiply and sell his production, do not create the right to impose, by
notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail
by future purchasers, with whom there is no privity of contract To add to the right of
exclusive sale, the authority to control all future retail sales, by a notice that such sales must
be made at a fixed sum, would give a right not included in the terms of the statute, and, in our
view, extend its operation, by construction, beyond its meaning, when interpreted with a view
to ascertaining the legislative intent in its enactment.
This judgment proceeded on privity of contract, the factum of a sale having occurred, and
created what is now known as the doctrine of first salean established principle that the
exclusive right to sell, distribute or circulate a copy of the copyrighted work exhausts the
moment the item is placed into a stream of commerce through a sale. This can, of course, be
contradicted if explicitly stated so in a statute. However, as we noted earlier, the Indian
statute explicitly notes that the right to issue copies of a work to the public, guaranteed to the
owner of the copyright over a literary, dramatic, or artistic work is restricted to copies not
already in circulation.
In fact, Justice Manmohan Singh, in a very detailed and circuitous judgment, rules that the
activity done by the defendant is a violation not of some implied contract between Wiley
India Pvt. Ltd. and him, but that it constituted a violation of the Indian Copyright Act, and
notably section 51 of the Copyright Act. His reasoning rests on 3 dubious pillars:
that the rights of the licensee are distinct from that of the owner, and that the former
may get exhausted without affecting the latter;
that the licensee cannot pass on better title to those that buy from him than he himself
has;
that sale or even offer for sale or taking of orders for sale are all forms of putting into
circulation or issuance of copies.
First, through a close reading of the various provisions of the Copyright Act he notes that the
Act creates a clear difference between the rights of the owner and the rights of the licensee
(para 47-50). The second ground on which Justice Singh rules is on the general property law
principle that a person cannot pass on a better title than she herself has. He then finally comes
to noting that,
Page | 33
A logical corollary drawn from above analysis which needs reiteration at this stage is that
for the purposes of section 51 which is in the preceding chapter, the term owner of the
copyright does not include exclusive licensee. Thus, the rights of the owner although may
include rights of the exclusive licensee but the court cannot read the term owner of the
copyright as that of the exclusive licensee and their rights are different as per the allocation
by the owner. (para 62).
Thus, he establishes that some rights of the licensee may be extinguished (as per the doctrine
of exhaustion) without extinguishing that same right of the owner. In other words, while the
right of circulation of the licensee gets exhausted, the right of circulation of the owner
remains unaffected.
5. Analysis69
An analysis of the High Court judgments in terms of the above discussed doctrines shows
that the Delhi High Court in the case of Penguin Books analyzed the issue of importation of
infringing copies in terms of Section 53 of the Copyright Act and the rights of the exclusive
licensee. However, in doing so the Honble High Court did not go into the question
exhaustion of the distribution rights in case of literary, musical and artistic works as provided
in Section 14 of the Copyright Act, 1957. Also the Honble High Court missed the
significance of the hypothetical manufacture test as the deciding factor in whether the
imported copyright goods are infringing goods. Although the High Court has quoted with
approval the case law from Australia and Canada, the position adopted by the High Court, in
general, corresponds to the position in New Zealand recognizing the rights of the exclusive
licensee in the importing country.
In the case of Warner Brothers, the Honble Justice Ravindra Bhatt of the Delhi High Court
after analyzing the distribution rights under Section 14 concluded that the doctrine of
exhaustion is applicable only in the case of literary, artistic and musical work as well as in the
case of trademarks; thereby implying that parallel imports of literary, artistic and musical
works are not infringing goods. This is contrary to the judgment in the case of Penguin Books
wherein parallel imports in the case of literary works were held to be infringing goods.
However, here too the Honble High Court missed the significance of the hypothetical
manufacture test and the issue of parallel imports from this angle was not analyzed at all. An
69 Mubasher Hussain Ansari, Indian Copyright Law and Parallel Imports, <
http://ssrn.com/abstract=1832682> Accessed 25 October 2011
Page | 34
important feature of this judgment was the detailed discussion on the issue of exhaustion of
rights, parallel imports and the doctrine of divisibility of the copyrights for the first time.
In the case of Eurokids International the High Court decided the issue mainly on the basis of
private contractual arrangement for the protection of the rights of the exclusive licensees.
Therefore, as of now we have a situation where the judgments in the case of Penguin Books
and Eurokids International have held the parallel imports of literary works(books) to be
infringing copies whereas in the case of Warner Brothers no such restrictions are implied in
the case of parallel imports of literary, artistic and musical works. In case of other class of
copyright goods it can be inferred that parallel imports would be infringing goods. However,
in all the above cases the discussion has not been as comprehensive and detailed as one
would have like and none of the judgments has analyzed the interplay of all the three
doctrines on the issue of parallel imports.
In John Wiley case Justice Singh doesnt go into the implications of his judgement that rights
of the licensee are distinct from that of the owner, and that the former may get exhausted
without affecting the latter, but there can be two ways of interpreting what it means. It could
mean that by virtue of the circulation rights of the licensee getting exhausted, the circulation
right of the owner gets exhausted in those nine countries for which the licensee had been
granted rights of circulation. Else, it could mean that the exhaustion of the licensees
circulation rights does not at all affect the owners circulation rights. This latter one is
obviously an absurd idea, since that would, in all cases; leave the owner with a cause of
action in case of all sales even when the owner is in India. Thus, one is left considering the
former the only logical meaning.
However, that this cannot possibly be right is demonstrated by the fact that this can easily be
applied to an all-in-India transaction as well. Thus, for instance, the owner of rights can
decide never to directly sell any book, but only allow its licensees to sell. Thus, it can
contractually bind a licensee to sell only in Andhra Pradesh and hold that because of that
license contract any buyer who buys from the Andhra Pradesh licensee and decides to re-sell
to a second-hand bookstore in Karnataka is actually violating the terms of the license
(because the circulation right gets extinguished only insofar as the licensee is concerned, and
that licence only allows sales in Andhra Pradesh).
Page | 35
That is obviously cannot be held to be the purpose of the law. Thus, the privity of the contract
between the owner of the right and the licensee must be upheld and may not be held to bind a
third party purchaser.
The second ground on which Justice Singh rules is on the general property law principle that
a person cannot pass on a better title than she herself has. Thus, Justice Singh holds that when
the licensee sells a book to a person, that person only receives as much of the title to that
book that the licensee has. Thus, since the licensee only has title in the book insofar as those
nine countries go, the person who buys that book cannot get better title.
The plain fault in this reasoning is the very founding basis of the doctrine of first sale: the
differentiation between property rights in a copy of a book and the copyright in the book. No
one has contended in this case that the transaction between the licensee and the book
purchaser is not a sale. Once a sale happens, all property rights in that copy of the book are
alienated to the book purchaser. It must be remembered that this transaction is not the case of
the licensee sub-licensing the right to circulate the book. The licensee cannot sub-license to
another party the right to sell the book in, say, Australia, because she does not have that right
in the first place. However, in this case, the licensee is invoking the right to sell the book in
India, and is not passing on that right. The right of a book buyer to re-sell comes from the
statute from the doctrine of first sale and not from a passing on of that right from the
licensee.
The last pillar of the judges reasoning is that the saleor even offer for sale, or taking of
orders for saleof a book online are all forms of putting into circulation or issuance of
copies. Section 40 does not work two ways. It only deems a foreign work Indian, and does
not deem a sale in a foreign land the same as sale in India. Thus, even if we are to accept the
other two pillars of Justice Singhs reasoning, it is unclear how an offer made online to sell a
book is equated to actually placing a book in circulation in India. How can an India law
prohibit circulation on the streets of Bogot? This is only possible if a separate right of export
is recognized. But Justice Singh is extremely clear that he is not creating such a distinct
right.
Therefore, a much more authoritative judicial pronouncement on the issue of exhaustion and
parallel import is very much needed.
VIII. COPYRIGHT
AMENDMENT ACT, 2012

Page | 36
The Copyright (Amendment) Bill, 2010, proposes to amend Section 2(m) of the Indian
Copyright Act, 1957 by inserting into the section a proviso which would state:
Provided that a copy of a work published in any country outside India with the permission of
the author of the work and imported from that country into India shall not be deemed to be an
infringing copy.
The proposed amendment, if it were to become law, would (along with amendments proposed
to Section 14) leave no doubt that India follows the principle of international exhaustion with
respect to all works protected by copyright including books.
The Report of the Parliamentary Standing Committee (to which the Copyright (Amendment)
Bill, 2010, was referred for its recommendations) narrated the concerns of the Federation of
Indian Publishers and the Association of Publishers in India two representative bodies of
Indian and international publishers. It stated that during the course of the oral evidence before
the Committee, publishers had pointed out that "with this amendment, the low priced editions
meant for Indian sub-continent could be exported back to the country of their origin where
they were priced at much higher rates. Consequently, the publishers would lose the incentive
to sell books in India or in the Indian sub-continent at subsidized prices. Reason being that
foreign publishers would not like to grant the reprint rights to Indian publishers fearing low
priced Indian editions flooding and diluting their own markets"70. This would be because the
export or leakage of LPEs from India into developed, primary markets would adversely
affect the sales of publishers in those markets as, by definition, LPEs cost less than foreign
editions intended for sale in developed countries.
However, considering that the proposed amendment refers to imports and not to exports,
there has been a debate about whether exports would be affected at all, and consequently,
whether the leakage of Indian LPEs would be legalized. It is submitted that the proposed
amendment could apply in respect of both exports and imports despite the fact that exports
are not explicitly mentioned. This is because it is unlikely that the copyright framework
would be interpreted in a manner where the one form of exhaustion would apply to imports
and another to exports.
Further, considering that the law would be silent with regard to exports, and would explicitly
state that international exhaustion was applicable with respect to imports, it is extremely
likely that India would follow the principle of international exhaustion with respect to both
imports and exports. The alternative would be to follow one form of exhaustion with respect
70 See < http://www.ebc-india.com/practicallawyer Eastern Book Company >18 October , 2011
Page | 37
to imports and another with respect to exports. Among other factors, it is worth noting that
while having different forms of exhaustion apply to imports and exports may make for
interesting academic discussion, the application of such an interpretation to the realities on
the ground could be complicated.
In addition to this, it is also pertinent to note that one of the bases of the Wiley judgment is
that Indian law does not explicitly follow the principle of international exhaustion, and that it
follows the principle of regional exhaustion. The Wiley judgment does not create a new
export right; it merely interprets Section 14 and the Explanation to it so as to mean that the
right of issuing copies to the public is the right of issuing copies of a protected work in those
territories in which copies have not already been legitimately issued. Of course, "issuing
copies of a protected work in those territories in which copies have not already been
legitimately issued" could involve having to export them. As such, export would be covered
within the meaning of the Section.
If the proposed amendment were to come through, however, this situation would change, and
there would be an explicit recognition in the Copyright Act that India followed the principle
of international exhaustion; and this indication could be used to render nugatory the decision
of Justice Manmohan Singh in the Wiley case.
As such, the proposed amendment would, in all probability, have the result of causing
international exhaustion to apply to both imports and exports. This means that once a copy of
a book were sold in India, it could be resold anywhere in the world without the consent of the
publisher/copyright owner.
IX. CONCLUSION
On analyzing the whole concept of parallel imports and exhaustion, it is important to
understand that the main thrust is on balancing the counter interests. Thus, the recognition
accorded to the Doctrine of First Sale under the Indian Copyright Act is limited, and there are
a number of exceptions to it. The Copyright (Amendment) Bill, 2010 has proposed to
recognize the principle of international exhaustion in respect of all classes of works through
amendments to Section 2(m) which defines infringing copies 71, and to Sections 14(d)(ii)72 and
71 Section 2(v), Copyright Amendment Bill, 2010: In clause (m), the following proviso shall be
inserted, namely: Provided that a copy of a work published in any country outside India with the
permission of the author of the work and imported from that country into India shall not be deemed to
be an infringing copy;
Page | 38
14(e)(ii)73 which affect films and sound recordings. However, these proposed amendments,
even if they were to become law would not affect the Rental Right, and would only affect the
right of resale of copies which had already been legally sold. As such, the limited recognition
accorded to the Doctrine of First Sale appears to be set to remain in place.
Thus given the multiplicity of causes and ambiguous results, the question of whether
regulating parallel imports is beneficial or harmful is ultimately a pragmatic question that
depends on circumstances.
X. BIBLIOGRAPHY
Articles Referred:
Arathi Ashok, Economic Rights of Authors under Copyright Law, 15 J. Intell. Prop.
Rights 46 (2010) at 50
C. Koboldt, Intellectual Property and Copyright Protection, Journal of Cultural
Economics 19/2 (1995), 13155.
D. Nimmer, The End of Copyright, Vanderbilt Law Review 48 (1995), 13851420.
D.E. Donnelly, Parallel Trade and International Harmonization of the Exhaustion of
Rights Doctrine, Computer and High Technology Law Journal 13 (1997), 445515.
I. Clarke and M. Owens, Trademark Rights in Grey Markets, International
Marketing Review 17/3 (2000), 27286
Kohler, Urheberrecht an Schriftwerken, 1907, and idem, Lehrbuch des Patentrechts,
1908.
Laddie, Prescott & Vitorias "Modern Law of Copyright & Designs" 2000 (3rd edn)
p122-124.
72 Section 3(ii)(b), Copyright Amendment Bill, 2010: for sub-clause (ii), the following sub-clause
shall be substituted, namely: (ii) to sell or give on commercial rental or offer for sale or for such
rental, any copy of the film;;
73 Section 3(iii)(b), Copyright Amendment Bill, 2010: for sub-clause (ii), the following sub-clause
shall be substituted, namely: (ii) to sell or give on commercial rental or offer for sale or for such
rental, any copy of the sound recording;.
Page | 39
Mubasher Hussain Ansari, Indian Copyright Law and Parallel Imports, <
http://ssrn.com/abstract=1832682> Accessed 25 October 2011
N.N. Weinstock, Asserting Copyrights Democratic Principle in a Global Arena,
Vanderbilt Law Review 51/2 (1998), 217329.
Nandita Saikia, The Exhaustion of Rights and Indian Copyright Law < SSRNid1630269.pdf> Accessed 22 October 2011
Nandita Saikia, The Exhaustion of Rights and Indian Copyright Law < SSRNid1630269.pdf> Accessed 22 October 2011
Nandita Saikia, Consequences of the Possible Loss of Respect for Territoriality
<http://copyright.lawmatters.in/2011/02/potential-applicability-of-section-2m.html >
last 23 October, 2011
P. Samuelson, Implications of the Agreement on Trade Related Aspects of
Intellectual Property for Cultural Dimensions of National Copyright Laws, Journal
of Cultural Economics 23 (1999), 95107
R.V. Vaidyanatha Ayyar, The Process and Politics of a Diplomatic Conference on
Copyright (1998) 1 JWIP 3 at 17
Sonia Baldia, Exhaustion and Parallel Imports in India <exhaustion-sonia baldia.pdf
> accessed 21 October 2011
T. Papadopoulos, Copyright, Parallel Imports and National Welfare: The Australian
Market for Sound Recordings, Australian Economic Review 33/4 (2000), 33748.
W.M. Landes and P.A. Posner, An Economic Analysis of Copyright Law, Journal of
Legal Studies XVIII (1989), pp.32563.
Books Referred:
Copinger and Skone James on Copyright 13th editon Sweet and Maxwell london
1997 Pp. 234-235
Copinger and Skone James on Copyrigt (13th editon), Sweet and Maxwell, London
1997, P. 202
Macmillan Fiona (Ed), New Directions in Copyright law, Vol 6, Edward Elgar
Publishing Inc, Northampton, Massachusetts, 2007, Pp 135-140
N.S. Gopalakrishnan and T.G. Agitha, Principles of Intellectual Property 256 (2009)
Page | 40
Sonia Baldia, Exhaustion and Parallel Imports in India in Parallel Imports in Asia
164-165 (Christopher Heath ed., Kluwer Law International 2004)
Reports & Research Papers Referred:
J. Revesz, Trade Related Aspects of Intellectual Property Rights, Staff Research

Paper, Productivity Commission, Australia, 1999.
Office of Regulation Review, An Economic Analysis of Copyright Reform
(AustralianIndustry Commission, 1995).
Report on Computer Software Rental Act
<http://www.copyright.gov/reports/software_ren.html> accessed on 24 October, 2011.
The Lok Sabha Debates (English Version). Second Session. Thirteenth Lok Sabha.
Vol. III. 15:03 hrs. (Dr. Raghuvansh Prasad Singh in the Chair)
Websites Referred:
< http://www.ebc-india.com/practicallawyer Eastern Book Company >18 October ,

2011
<http://www.bailii.org/ew/cases/EWHC/Ch/2010/2560.html > accessed 22 October

2011
<http://www.cis-india.org/a2k/blog/indian-law-and-parallel-exports> Accessed
October 2011
<http://www.ebcindia.com/practicallawyer/index2.php?
24
option=com_content&itemid=5&do_pdf=1&id=18861> Accessed 23 October 2011
<http://www.mirandah.com/en/categories/item/280-exhaustion-in-copyrights.html>
accessed 20 October 2011
Page | 41
Page | 42

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COPYRIGHT (HONS)

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

SUBMITTED BY: DEEPAK SINDHU

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

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The Penguin Case....................................................................................... 25

1994 Amendment to the Act............................................................................ 27

Warner Brothers case................................................................................ 29

John Wiley case.......................................................................................... 29

VIII. COPYRIGHT AMENDMENT ACT, 2012............................................................34

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

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EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

III. INTERNATIONAL LEGAL FRAMEWORK FOR

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

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IV. NATIONAL LEGAL FRAMEWORK FOR EXHAUSTION IN

is the essential object of the rental;24

23 Section 14(a)(ii), Copyright Act, 1957

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case, most probably, India could be considered to follow a principle of international

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EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

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Importation of Colgate tooth paste from Thailand into Hong Kong

Importation of Mercedes Benz vehicles in Malaysia to sell in New Zealand is a

45 See <http://www.cis-india.org/a2k/blog/indian-law-and-parallel-exports> Accessed 24 October 2011

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

VI. LEGAL FRAMEWORK FOR PARALLEL IMPORTS IN INDIA

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

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56 AIR 1984 SC 667

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

58 (1960) 22 D.L.R. (2d) 183

60 13,8 US 252 (1891).

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VII. JUDICIAL HISTORY OF IMPORTATION AND

EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW

1994 Amendment to the Act

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Adventure of TinTin series together with a number of trademark registration in Snowy,

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3. Warner Brothers case65

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68 210 U.S. 339 (1908)

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AMENDMENT ACT, 2012

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EXHAUSTION AND PARALLEL IMPORT IN INDIAN COPYRIGHT LAW