A PROJECT ON

DOCTRINE OF FAIR USE

SUBMITTED TO

Mr. Atul Satwa Jaybhaye

FACULTY – Intellectual Property Rights

SUBMITTED BY

Sirshendu Mazumdar
SEMESTER-VI
Batch ID- 013/2013/951

HIDAYATULLAH NATIONAL LAW UNIVERSITY

RAIPUR (C.G.)
 ACKNOWLEDGEMENTS

I would like to express my heartfelt gratitude to the faculty advisor for the project Mr.
Atul Satwa Jaybhaye for allowing me to work on this topic and for his support and
encouragement throughout the project.

I would also like to thank the internet sources and the various authors whose books
helped me in researching for the project. I would also like to thank my seniors for their
support.

At last I would like thank my batch mates and my parents for their valuable criticisms
and support, which has helped in modifying the project to its best.

Sirshendu Mazumdar
SEMESTER VI

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 LIST OF ABBREVIATIONS

AIR All India Reporter

All Allahabad
CA Court of Appeals
Corp. Corporation
Ct. Circuit
ER England Reports
F. Federal
Inc. Incorporated
QB Queen’s Bench
TRIPS Trade-Related Aspects of Intellectual
Property Rights
UK United Kingdom
US United States
WIPO World Intellectual Property
Organization
WTO World Trade Organization

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 TABLE OF CONTENTS

 INTRODUCTION…………………….......…………............................................5
 RESEARCH METHODOLOGY……………………………………………….....6
 THE DOCTRINE OF FAIR USE- THE INTERNATIONAL PERSPECTIVE….7
 FAIR USE/DEALING AS PRONOUNCED JUDICIALLY………..……………9
 COPYRIGHT LEGISLATIONS ENABLING FAIR USE OF COMPUTER
PROGRAMS…………………………………………………………………….11
 DOCTRINE OF FAIR USE IN INDIA………………………………..………...10
 APPLICABILITY OF FAIR USE DOCTRINE ON COMPUTER PROGRAMS
…………………………………………………………………………………....16
 CONCLUSION…………………………………………………………......…....19
 BIBLIOGRAPHY……………………………………………………………......20

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 INTRODUCTION

The law relating to copyrights was basically introduced into the legal systems all over the
world to empower the authors of such copyrighted items to restrict and control the usage
of their works, so that no other person could unduly take away the credit for those works
for the original authors. Copyright is essentially a bundle of rights which are provided to
the original author of works relating to literature, art, music, and other areas as specified
by different international documents, conventions and domestic laws.
In the recent times computer programs/software’s have gained more and more
commercial importance and thus the law of copyrights has taken such works under its
ambit. This is chiefly because, with the development of technology, even common people
have enough technical knowhow to surpass the inner securities of a computer program,
and illegally use or distribute it. Such infringements are not only common, but also are
rapidly increasing.
However, the rights given to an author of creative works are not absolute. There is the
concept of Fair Use. This doctrine is a limitation and exception to the author’s exclusive
right to restrict the use of his work and this doctrine is accepted globally.
In this project, it shall be discussed as to how the Fair Use doctrine affects the copyright
of computer programs and the exclusive rights of the author of such programs, both
internationally as well as in India.

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 RESEARCH METHODOLOGY
This is a descriptive and analytical research paper in other words a doctrine approach is
followed. My research paper is largely based on secondary and electronic sources of
information. References used as guided by the faculty of Intellectual Property Rights
were of great use in completing this project.

OBJECTIVES
 To understand the concept of doctrine of fair use

 To analyze the applicability of the said doctrine in context of the Indian Law

CERTIFICATE OF DECLARATION REGARDING ORIGINALITY OF

RESEARCH WORK
I do hereby declare that the entire subject matter of the project is original by nature and
no means of plagiarism has been taken. Any help taken from sources has been properly
cited as footnotes and is added into the bibliography.

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 THE DOCTRINE OF FAIR USE- THE INTERNATIONAL
PERSPECTIVE

The doctrine of fair use was formulated by the courts with a view to balance the rights of
copyright owners with society’s interests in allowing copying in certain, limited
circumstances.1 It permits reproduction of the copyrighted work or use in a manner,
which but for the exception, would have amounted to an infringement.2
The defence of fair use doctrine in copyright law is evident all over the world. In the
United Kingdom, it is known as fair dealing. In the United States, it is fair use. The
doctrine is also evident in India. However the implications of this doctrine differ from
one State to another, as States has the right of Independence of Protection with regards to
Intellectual Property Rights. The US doctrine is flexible to a large extent and is certain,
whereas the UK doctrine is both rigid and certain. 3 In India, we see reminisces of the UK
doctrine itself. However the doctrine is not so developed in India except for the fact that
it is incorporated into the Copyright Act4.
The Berne Convention5 and the TRIPS Agreement6 also incorporates this doctrine as a
valid defence in copyright law.
The exception of fair use evolved through judicial precedents and is now a well accepted
doctrine all over the world and the members of World Trade Organization are also
obligated by the doctrine, as the TRIPS provide for exceptions to copyright protection.
The Berne Convention provides for the following exceptions:
Article 9(2)- It shall be a matter for legislation in the countries of the Union to
permit the reproduction of such works in certain special cases, provided that such
reproduction does not conflict with a normal exploitation of the work and does
not unreasonably prejudice the legitimate interests of the author.

1
http://www.bitlaw.com/copyright/fair_use.html as accessed on 15/2/2011.
2
S.K. Dutt v. Law Book Company, AIR 1954 All 570.
3
Justice Laddie, Copyright: Over-Strength, over-regulated, over-rated, European Intellectual Property
Review, 18 (5) 253 (1996).
4
The Copyright Act, 1957.
5
Berne Convention for the Protection of Artistic and Literary Works, 1886.
6
Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.

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Article 10- (1) It shall be permissible to make quotations from a work which has
already been lawfully made available to the public, provided that their making is
compatible with fair practice, and their extent does not exceed that justified by
the purpose, including quotations from newspaper articles and periodicals in the
form of press summaries.
(2) It shall be a matter for legislation in the countries of the Union, and for
special agreements existing or to be concluded between them, to permit the
utilization, to the extent justified by the purpose, of literary or artistic works by
way of illustration in publications, broadcasts or sound or visual recordings for
teaching, provided such utilization is compatible with fair practice.
(3) Where use is made of works in accordance with the preceding paragraphs of
this Article, mention shall be made of the source, and of the name of the author if
it appears thereon.
Article 10bis- (1) It shall be a matter for legislation in the countries of the Union to
permit the reproduction by the press, the broadcasting or the communication to
the public by wire of articles published in newspapers or periodicals on current
economic, political or religious topics, and of broadcast works of the same
character, in cases in which the reproduction, broadcasting or such
communication thereof is not expressly reserved. Nevertheless, the source must
always be clearly indicated; the legal consequences of a breach of this obligation
shall be determined by the legislation of the country where protection is claimed.
(2) It shall also be a matter for legislation in the countries of the Union to
determine the conditions under which, for the purpose of reporting current events
by means of photography, cinematography, broadcasting or communication to the
public by wire, literary or artistic works seen or heard in the course of the even
may, to the extent justified by the informatory purpose, be reproduced and made
available to the public.

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The TRIPS Agreement states-
Article 13- Members shall confine limitations or exceptions to exclusive rights to
certain special cases which do not conflict with a normal exploitation of the work
and do not unreasonably prejudice the legitimate interests of the right holder.

Therefore, it is clear that the Berne Convention provides a framework of exceptions to be

considered while applying the concept of fair use/dealing. The TRIPS on the other hand
provides for a 3 step test7, i.e. (a) special cases (b) does not conflict with normal
exploitation (c) do not prejudice interest of right holder unreasonably.

7
Mihály Fiscor, How much of what? The ‘Three-Step Test’ and Its Application in Two Recent WTO Dispute
Settlement Cases, 192 RIDA 111 (2002).

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 DOCTRINE OF FAIR USE IN INDIA

S. 52 of the Act deals with acts which shall not construe infringement of copyright. Fair
dealing with a literary, dramatic, musical and artistic work for the following purposes
does not constitute infringement.

1. Private use including research: S 52(1)(a)(i) – Research means a search or

investigation directed towards the discovery of some fact by the careful
consideration or study of a subject; a course of critical or scientific enquiry.

Legislature and judiciary excuse research uses on the ground that ey do not hamper the
customary markets for a copyrighted work. In Williams & Wilkins Co. v. United States, 8
the court held that it is for the fair use for the defendant to photocopy articles from the
plaintiff’s medical journal for the distributors of the medical researchers because the
copyright owner had not shown that it was for and would be substantially harmed by the
practice.

2. Criticism or review whether of the work or any other work: [S 52(a)(ii)] – For
criticizing or reviewing or any work sometimes it becomes inevitable to use the
extracts from the work reviewed or any other work. The reviewer or the critic is
not liable for the infringement if he uses the extracts without the permission of the
copyright owner. In UK the precondition of the fairness is that the source should
be sufficiently acknowledged.9 The Indian Act does not prescribe any such
condition.
3. Reporting of current events in a newspaper, magazine or similar periodical or by
broadcast or in a cinematograph film or by means of photographs. [S 52(1)(b)].

8
487F.2d1345(1973)
9
S 30(i), Copyright, Designs and Patents Act 1988 (UK)

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The expression fair dealing is however not defined anywhere in the Act except in the
Explanation to S 52(1)(b) which states the “publication of a compilation of addresses or
speeches delivered in the public is not a fair dealing of such work within the meaning of
the clause.” What is “fair” cannot categorically be laid down but would suggest
something just which otherwise wouldn’t lead anyone to believe it to be use in an unfair
way. As for India the term fair dealing has also not been defined under the Act. The
principle fair dealing or otherwise fair use which is widely followed in the US all lead us
to one end that use or dealing must be of a nature that is so fair that the rights of the
author stay unharmed.

The basic purpose of Section 52 is to protect the freedom of expression under Article
19(1) of the Constitution of India, so that research, private study, criticism or review or
reporting of current events could be protected. Section 52 is not intended by Parliament
to negatively prescribe what infringement is.10 Copyright rewards creativity but the
enunciating of S 52 shows that the exploitation of work for social purposes can be
allowed to be used even if it is a copyrighted material. Section 14 of the Act says that the
copyright means the exclusive right to do or authorize to do certain acts in relation to
literary, dramatic, musical, artistic, cinematograph, sound recording and computer
program.11 The main object of copyright is to encourage authors, composers, and artists
etc to create original work by rewarding them with exclusive right to produce the work.
Fair use on the other hand is a limitation to the exclusive rights of the owner and is a
complex exception to limited monopoly vested on author by law.

It may be noted that the above permitted uses apply only to literary, dramatic, musical or
artistic work (excluding computer programs) and that the fair dealing defence is not
applicable to any other subject of copyright.12 It is a question of degree. One must
consider the number and extent of the quotations and extracts. If they are used as a basis
for comment, criticism or review it may be fair dealing. If they are used to convey the
same information as the author for a rival purpose that may be unfair. Next the

10
Wiley Eastern Ltd. and Ors. v. Indian Institute of Management, (1996) 61 DLT 281.
11
S. 14 - Meaning of copyright, The Indian Copyright Act, 1957.
12
S. 52, The Indian Copyright Act, 1957

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proportions must be taken into account. To take long extracts and attach short comments
may be unfair. But short extracts and long comments are considered fair.

Under S. 52, certain acts are mentioned not to be infringement of copyright is the
statutory codification of the fair use doctrine. This is a judicially developed concept
which balances the public’s need to know and be informed against author’s incentives to
create. The authors generally take a restrictive view of the doctrine whereas the users take
STATUTORY DEFENCE- INFRINGEMENT
This statutory defence is limited only to infringement of work in relation to copyright and
not all other works. Hence in comparison to defence of public interest it is a very narrow
concept.13 The factors determining fair dealing is the purpose for which the substantial
part of the copyright work is reproduced and the manner pertaining to that purpose as in
order to receive protection it must be fair dealing.

As enumerated in Halsbury Laws of India states other factors for deciding, such are
reasonableness in use, nature of use, purpose and character, extent of copying and effect
of infringement.14 Two points have been urged in connection with the meaning of the
expression “fair” in “fair dealing” is:-

1. That in order to constitute unfairness there must be an intention to compete and to

derive profit from such competition, and
2. That unless the motive of the infringer were unfair in the sense of being improper
or oblique the dealing would be fair.

University of London Press Limited v. University Tutorial Press Limited 15 is perhaps the
most cited judgment regarding originality. Originality was held to be not required to be
novel from but the work should not be copied from other work, that is, it should be
original. With respect to the originality issue, the Court held that the term 'original'
under the Act does not imply original or novel form of ideas or inventive thought, but

13
Supra note 17.
14
Ibid.
15
[1916] 2 Ch. 601.

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the work must not be copied from another work - that it should originate from the
author.

In determining the provisions of the section two things must be kept in mind. The first is
with reference to the purpose for which the substantial part of the copyright work is
reproduced, the second is with regard to the manner of the use pertaining to that purpose;
in order to receive the protection it must be fair dealing. 16 Subject to certain conditions,
under Indian Copyright Law a fair deal for research, study, criticism, review and news
reporting, as well as use of works in library and schools and in the legislatures, is
permitted without specific permission of the copyright owners. In order to protect the
interests of users, some exemptions have been prescribed in respect of specific uses of
works enjoying copyright. Some of the exemptions are the uses of the work

 for the purpose of research or private study,

 for criticism or review,
 for reporting current events,
 in connection with judicial proceeding,
 performance by an amateur club or society if the performance is given to a non-
paying audience, and

 the making of sound recordings of literary, dramatic or musical works under

certain conditions.17

In particular, India follows the practice of so-called "fair dealing" or "fair use" of
software. The doctrine provides that the following activities do not qualify as acts of
infringement incase of computer programme:

1. Those acts necessary to gain information essential for the inter-operability of

programs independently-created by lawful possessors;

16
AIR1959 Mad 410, at 427
17
http://copyright.gov.in/handbook.htm, last visited on 6th February, 2009

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 2. Studying and testing designed to discern ideas and principles underlying elements
of a program, if necessary for the functional use for which the program was
supplied; and
3. Copying an adaptation of a legally-obtained program, if done for non-commercial
personal use.18
an expansive view. It is not intended to be a rigid, fixed body of law of the fair use
privilege, to suit a variety of situations and combinations of circumstances which the fair
use doctrine lacks. As there cannot be predictable and limited fields of use of knowledge
and keep changing with time.19

The question would always be whether the enough of the published edition has been
copied to amount to a substantial part was also qualitative and the quality relevant for the
purposes of substantiality is the originality of that which has been copied. Fair dealing in
purposes for criticism and review is permitted in case of all books.

18
Hitchcock, David L., Cooperative Development of Technology: Understanding the Risks and Creating
Opportunities to Excel, Computer Law Review and Technology Journal, Fall, 2004, 9 Computer L. Rev. &
Tech. J. 233, accessed from www.westlaw.com
19
Singh, Shiv Sahai, The Law of Intellectual Property Rights, 2004 Ed. , Deep & Deep Publications Private
Limited, p. 45

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 LEGISLATIVE PROVISIONS ENABLING FAIR USE OF COMPUTER
PROGRAMS

With the development of technology, the horizons of copyright protection have

broadened. Computer programs have been included under the purview of copyright
regime. However, even the computer programs are subject to the fair use doctrine.
It would be pertinent to discuss the domestic law position of 3 countries with regards to
protection of computer programs and fair use.

United States of America

Copyright law in USA is governed by the United States Copyright Act, 1976. Computer
programs are defined under Section 10120. Section 107 of the Act deals with the concept
of fair use.

United Kingdom

The Copyright, Designs and Patents Act, 1988 of the United Kingdom provides for
exhaustive provisions with respect to fair use of computer programs.
Section 28A of the Act provides that temporary copies cannot be made of computer
programs for any technological process.
Section 29(4)(a) of the Act provides that it is not fair dealing to convert a computer
program expressed in a low level language into a version expressed in a higher level
language.
Section 29(4)(b) of the Act provides that it is not fair dealing incidentally in the course of
so converting the program, to copy it.
However these restrictions would not hold if it is a matter of decompilation.21
Section 29(4A) provides that it is not fair dealing to observe, study or test the functioning
of a computer program in order to determine the ideas and principles which underlie any
element of the program (these acts being permitted if done in accordance with Section
50BA (observing, studying and testing)).
20
A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer
in order to bring about a certain result.
21
The Copyright, Designs and Patents Act, 1988, § 50B.

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Section 50A state about backup copies.

India

The Copyright Act, 1957 was amended on 1994 to include computer programmes into the
ambit of copyright protection. Section 2 defines ‘computer programme’. 22 Section 52 of
the Act deals with fair use of copyrighted works.

APPLICABILITY OF FAIR USE DOCTRINE ON COMPUTER

PROGRAMS

Computer programs are now a well accepted part of copyright protection laws. Copyright
protection is now granted to computer programs in all developed and developing systems
of laws, in accordance with the World Intellectual Property Organization.
In India, the Copyright Act is now proposed to be amended in accordance to the two
WIPO treaties namely, WIPO Copyright Treaty, 1996 and WIPO Performances and
Phonograms Treaty, 1996.23 Although India is not a signatory to any of these treaties, but
keeping in view the ever metamorphosing intellectual property regime, it has become
imperative upon India to accept the changes as proposed in the treaties.
The Copyright Act, 1957, of India, as amended on 1999 (in accordance with TRIPS)
provides for certain grounds of fair use of computer programs. However, the grounds as
laid down cannot be deemed to be sufficient. The amendment as per the Copyright Bill,
2010 is required to clarify the position that storage of legitimate computer programs
cannot be held to be an infringement.
22
"computer programme" means a set of instructions expressed in words, codes, schemes or in any other
form, including a machine readable medium, capable of causing a computer to perform a particular task or
achieve a particular result;
23
Statement of Objects and Reasons, The Copyright Amendment Bill, 2010.

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Fair use of computer programs all around the world, as of now has raised the contentious
issues of piracy of several computer applications, illegal licensing etc. Even if the
doctrine of fair use is a liberal doctrine, it does not allow such infringements, as it directly
interferes with the right of the authors.
With regards to music piracy, the US has taken steps to introduce compulsory licensing. 24
Canada, Germany and few other European Countries have started levying taxes on blank
recording media and equipment to compensate artists and songwriters injured by the
unauthorized production of their works.25 However, computer programs have taken a
back seat when legal reforms are concerned. Although it is certain that infringing acts
cannot be justified as fair use until and unless it is so allowed by the domestic laws, such
acts continue to take place regardless of existing laws under internet privacy and
technological advancements like torrent sharing and peer-to-peer networking. Legitimate
users of computer programs have time and again circumvented the defenses of such
programs and have been sharing them illegally. It must be understood that even if we buy
a computer program, we only buy a license to use the computer program, unless the
object and purpose of the program is otherwise. Therefore, we do not have the right to
distribute/share or convert such programs.
One of the most pertinent cases in this regard in the matter of Lewis Galoob Toys Inc. v.
Nintendo of America, Inc.26. In the matter, Nintendo sued the maker of Game Genie,
which allowed customers to modify the way a Nintendo game played. Nintendo
contended that Game Genie caused consumers to create unauthorized derivative works by
varying Nintendo game’s audiovisual display. The Court held that, “The alleged infringer
in this case is not a commercial licensee, but rather a consumer utilizing the Game Genie
for non-commercial, private enjoyment. Such use neither generates a fixed transferable
copy of the work, nor exhibits or performs the work for commercial gain.” 27 The Court
thus upheld the ratio of Williams & Wilkins28 case which liberally laid down that personal

24
Audio Home Recordings Act, 1992.
25
Peter K. Yu, Digital Piracy and the Copyright Response, http://www.peteryu.com/piracy.pdf as last
accessed on 20/2/2011.
26
Lewis Galoob Toys Inc. v. Nintendo of America, Inc., 964 F.2d 965 (9th Cir. 1992).
27
Id.
28
Supra note 14.

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use is always excusable under copyright law and the public must have certain liberties
with respect to the enjoyment of copyrighted materials.
In Lotus Development Corp. v. Borland International Inc. 29 Lotus sued Borland for
copying the words and arrangement of the menu command hierarchy of the Lotus 1-2-3
spreadsheet program, which Lotus insisted embodied the program’s “look and feel.” It
was held uncopyrightable as a “method of operation” 30, however there were some
reservations made upon the majority rationale.
In India, as of now, there have been no such referrals to the courts with disputes relating
to fair use of computer programs. Even in US, most of the cases deal with contributory
infringements of computer programs.31 Therefore the law regarding the actual application
of fair use doctrine would be clarified only with the help of litigation in this regard.

CONCLUSION

29
Lotus Development Corp. v. Borland International Inc., 516 U.S. 233 (1996).
30
17 U.S.C. § 102(b) (2000).
31
Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 262, 266 (5th Cir. 1988).

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 “It would plainly be unconstitutional to prohibit a person from singing a
copyrighted song in the shower or jotting down a copyrighted poem he hears on
the radio.”
- Justice John Paul Stevens

The doctrine of fair use has acquired an important place in the jurisprudence of
intellectual property rights for maintaining equilibrium between the interests of the
copyright holder and the consumers of copyrighted products.
It is indeed a topic of tremendous ponderance as to what constitutes as “personal use”,
“non-commercial use”, “private use” and most of all “fair use”. Practice of different
States provides a guiding beacon for understanding as to when the doctrine of fair use
would apply.
The fair use of computer programs and allied topics is a burning issue of both
international law and domestic law. Further judicial opinions are required to establish the
proper position of law in this regard.

BIBLIOGRAPHY

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BOOKS:
 DR. B.L. WADEHRA, LAW RELATING TO INTELLECTUAL PROPERTY (4th ed.
2007).
 V.K.AHUJA, LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS (1st ed.
2010).

ARTICLES AND OTHER DOCUMENTS:

 Electronic Frontier Foundation, EFF: The Battle for Your Digital Media Devices,
http://www.eff.org/IP/fairuse/
 Jane C. Ginsburg, “The Exclusive Right to Their Writings”: Copyright and
Control in the Digital Age, 54 ME. L. REV. 195, 201, 201–02 (2002).
 Jessica Litman, Copyright Legislation and Technological Change, 68 OR. L. REV.
275, 354, 348–54 (1989).
 INTELLECTUAL PROPERTY IN THE INFORMATION AGE 129 (2000)
 William W. Fisher III, Reconstructing the Fair Use Doctrine, 101 Harvard Law
Review, 1661-1795 (June 1988).

INTERNATIONAL AGREEMENTS:

 Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.

 Berne Convention for the Protection of Artistic and Literary Works, 1886.
 WIPO Copyright Treaty, 1996.
 WIPO Performances and Phonograms Treaty, 1996.

WEBSITES:

 http://www.wipo.int/treaties/en/ip/berne/trtdocs_wo001.html as acccessed on
15/11/2018.
 http://www.bitlaw.com/copyright/fair_use.html as accessed on 15/11/2018.
 http://www.wipo.int/copyright/en/ as accessed on 15/11/2018.

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