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SYNOPSIS
Chapter V - Judicial Creativity of Patent and Copy Right Law
5.1 Introduction
5.2 Case laws on Patent Law
5.3 Case Laws on Copy Rights Law
Legal intricacies pertaining to the Intellectual property issues have given rise to a
such myriad issues, judiciary has played a pivotal role. Being globally persistent
nature, intellectual property has broken the barriers of the municipal jurisdictions.
Thus, various issues of the Patent and Copyright with their complex nature need
to be taken care.
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Article 1, Section 8, Clause 8, The Founder’s Constitution, Document 12, Thomas Jefferson to Isaac
McPherson
13 Aug. 1813, Available at - http://press-pubs.uchicago.edu/founders/documents/a1_8_8s12.html last seen
on 6/6/2016
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"If nature has made any one thing less susceptible than all others of exclusive
property, it is the action of the thinking power called an idea, which an individual
divulged, it forces itself into the possession of everyone, and the receiver cannot
dispossess himself of it. Its peculiar character, too, is that no one possesses the
less, because every other possesses the whole of it. He, who receives an idea
from me, receives instruction himself without lessening mine; as he who lights his
taper at mine, receives light without darkening me. That ideas should freely
spread from one to another over the globe, for the moral and mutual instruction
of man, and improvement of his condition, seems to have been peculiarly and
benevolently designed by nature, when she made them, like fire, expansible over
all space, without lessening their density at any point, and like the air in which we
property." Thus, opinion of Thomas Jefferson has been guided the policy makers
since two centuries to give effect to the utmost glorious manifestation of the
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definition given by WTO, available at http://www.wto.org, last seen on 5/6/2016
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On account of the myriad complexities of patent and copyright laws in
contemporary era, the judiciary has initiated a most rationale debate and thereby
guided the law on the blending contours of patent and copyright issues across
the globe. The following are the cases which are dealt with the patent and copy
right in India through judicial activism. In the case of Hindustan Lever Limited
v. Godrej Soaps Limited, AIR 1996 Cal 367, The Court held that the plaintiff in
a patent case must show a prima facie case of infringement and further that the
infringement is not novel and the patent has not yet been exploited there is no
(I) Ltd., 2000 (20) PTC 620 (Del), Delhi High Court held that an interlocutory
Patent office journal is the date of grant for the post-grant opposition. This
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has been decided in Dr Snehlata C Gupte v Union of India and seven
10399, 10400 & 10450 of 2009 & 1020 of 2010 (18 September 2013). However,
it may be noted that the date of patent under Section 45 for calculating the date
dated as the date on which the application for patent was filed. The Supreme
Court of India has clearly laid down the following guidelines to determine
(v) Compare the said broad features with the defendant’s process or apparatus;
and
As discussed above the Gujarat high court rightly pointed out that Cadila
(Guj), the Gujarat High Court observed that Section 107 expressly empowered
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a defendant to defend any suit for infringement of a patent. Every ground on
ground of defense. Though the defendant had chosen not to give notice of
opposition under Section 25 of the Act or to apply for revocation under Section
64 of the Act, he still had the right to defend his action on any ground on which
the patent could be revoked under Section 64 of the Act. Interim Relief in
Patent cases: The Supreme Court of India in Wander Ltd. v. Antox India (P)
Ltd. (1990) Supp. S.C.C. 727 laid down the principles for the granting of an
interim injunction. For the grant of such ad interim and interim orders, the plaintiff
has to show that he has a prima facie case, that the balance of convenience is in
his favor, and the hardship suffered by the plaintiff would be greater if the order is
not granted. If the plaintiff is able to convince the Court of these points, then
plaintiff can obtain an ad interim and interim injunction within a couple of days of
filing of the suit. Some courts also grant ex parte injunctions if a strong case is
made.
“This Court has no hesitation in saying that the time has come when the Courts
dealing actions for infringement of trademarks, copy rights, patents etc. should
not only grant compensatory damages but award punitive damages also with a
view to discourage and dishearten law breakers who indulge in violations with
impunity out of lust for money so that they realize that in case they are caught,
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they would be liable not only to reimburse the aggrieved party but would be liable
to pay punitive damages also, which may spell financial disaster for them.”
J. Mitra And Co. Pvt. Ltd. vs Kesar Medicaments And Anr.148 (2008) DLT
198, MIPR 2008 (2) 1, 2008 (36) PTC 568 Del, The present matter is concerned
with a claim of infringement of the patent of the plaintiff in respect of 'a device for
various patents, designs and trademarks in respect of its products. The plaintiff's
application (I.A. No. 11883 of 2006) under Order 39, Rules 1 and 2 and Section
151 of the Civil Procedure Code is for the issuance of a temporary injunction
restraining the defendants from infringing the plaintiff's Patent No. 194638 dated
and damages. After hearing both sides the court held that :
“The material on record does not show prima facie that any fourth generation
product has been worked by the plaintiff prior to its patent application. The use of
patent being limited, irretrievable prejudice will be caused to the plaintiff if interim
orders are not granted. The balance of convenience lies in favor of the plaintiff as
the plaintiff under Order 39 Rules 1 and 2 of the said Code is allowed and the
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retrained from manufacturing, selling, offering for sale or in any other manner
dealing with the impugned product SIGNAL HCV or any other product violative of
Lee Pharma Limited vs. AstraZeneca AB, C.L.A. 1 of 2015 before the
compound on June 29, 2015 at the Patent office, Mumbai. The CL was filed
against one of the patented drug 'Saxagliptin' protected under the Patent number
Section 84(1) of Patents Act 1970 states that after the expiration of three years
from the date of grant of patent any person may make an application for grant of
have not been satisfied or the patented invention is not available to the public at
India3. According to the notice issued by the Patent office in August, 2015 the
Controller has informed that the Lee Pharma failed to make out prima facie case
for the CL application. Various reasons have been mentioned by the Controller
where the Lee Pharma has failed to be as prima facie in the said CL application.
Earlier in the year 2014 Lee pharma has requested the AstraZeneca for license
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the Lee pharma letter and provide the clarification for not giving any license along
with the details of the availability of said drug. Further for not receiving the
appropriate reply from the Astra Zeneca, despite of the fact that AstraZeneca has
send the email reply to Lee and Lee pharma was in fact that no reply has been
AstraZeneca and later approached to the Patent office for seeking the grant of
compulsory license.
As per the Controller's decision in holding the application, the first request for
license made by the Lee pharma to the AstraZeneca, was more than 13 months
prior to the filing of the application at the Patent office. As per the time frame
mentioned in section 84(4) of the Patents Act, 1970 is 06 months which has
elapsed in the subject case without any efforts being successful. This is the first
reason for holding the CL application of Lee pharma and denied the request.
In a recent patent infringement case Teva Api India Pvt. Ltd. & Anr. v. Merck
Sharp & Dohme Corp & Anr.FAO (OS) (COMM) 34/2016, the Division Bench of
the Delhi High Court vide its order dated May 30, 2016 dealt with the issue of
Procedure, 1908
rights flowing from Indian Patent No. 209816 concerning a molecule having an
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Metformin HCL is sold under the trademark JANUMET, while stand-alone
Sitagliptin was sold under the trademark JANUVIA. The respondents alleged that
That the learned Single Judge ought to have made an attempt to decide the
interim order was issued. The applications filed by the appellants simply stated
that the offending goods were exported, not by way of a commercial sale, but to
obtain regulatory approval in the countries abroad, and this aspect of the matter
only required a short and a crisp hearing not lasting beyond 15-20 minutes. It
was held that the learned Single Judge had only to see the documents presented
by the two groups. That the continuation of the injunction granted is not causing
any injuries to the appellants because the marketing authorization which they
require would at best take 2-3 years, and the respondents' patent would lapse in
the year 2022. That since the appellants have not even filed their written
documents filed by the parties, within a week the appellants shall file their written
submission along with the documents relied upon. Within three weeks thereafter,
the respondents shall file the replication along with such further documents which
NO. 678/ 2013 in the HC of Delhi, On 17 July 2015in the very recent decision,
the Delhi High Court has ordered that Glenmark shall use its process which is
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virtually identical to the Ujohn process as indicated in the expert report of Prof.
Steven W. Baldwin (filed by Glenmark). The Court noted that the expert report
indicates that the appellant (Glenmark) process and the Uphohn process are
respondent (Symed). It has been agreed by both the parties that the appellant
(Glenmark) shall manufacture Lineolid through its process indicated in the expert
report which does not infringe upon the patented process of Symed as indicated
litigation involves a case against Lava International Limited, where Ericsson once
again claimed its SEPs relating to AMR, GSM and EDGE technologies. At the
reveal information about its agreements with other parties. While the suit is still at
its initial stage, the parties have been directed to make efforts towards resolving
their dispute but have failed to do so and thus the matter is now scheduled to be
taken up on merits.
equipment Co. Ltd. And Anr.Cs (Os) No. 2010 Of 2013, In The Hc Of Delhi,
The third “Standard Essential Patents” litigation yet again involves the suit filed
by Ericsson against Gionee and claiming infringement of the same SEPs over
which Micromax was sued earlier. In October 2013, the Delhi High Court ordered
Gionee to make interim royalty payments for its sales in India. The royalty rates
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were set on the basis of the interim royalty rates awarded to Ericsson in March
The next judicial opinion for the judicial activism is that the cases relating to
COPYRIGHTS-
In Kartar Singh Giani v. Ladha Singh & Others AIR 1934 Lah 777, Copyright
is a right given by the law to creators of literary, dramatic, musical and artistic
public, adaptation and translation of the work. It means the sole right to produce
or reproduce the work or any substantial part thereof in any material form
whatsoever.
Co., 00(2002) DLT698 the judicial activism can be seen as , the main objective
of the Act involved in this case was to give protection to the owner of the
copyright from the dishonest manufacturers, who try to confuse public and
make them believe that the infringed products are the products of the owner.
goodwill of the owner of the copyright, who has established itself in the market
Koshal AIR 1970 MP 261, it has been held that the laws of copyright do not
protect ideas, but they deal with the particular expression of ideas. It is always
possible to arrive at the same result from independent sources. The rule
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appears to be settled that the compiler of a work in which absolute
where he bestows such mental labour upon what he has taken, and
In relation with this, the issues as to whether one book is a copy of the other or
not, it was held in S K Dutt. V. Law Book Co. & Others AIR 1954 All 57, in
deciding the question whether one book is a copy of the other or not the Court
has, in one view, to keep in mind the two features of the two books, namely, the
external and the internal features. By external features means the get-up and the
‘overall’ scope of the publication. By internal features means the general lay out
of the subject-matter, the manner of the treatment of the subject matter and the
AIR 1924 PC 75, it was held that the word ‘original’ does not mean that the work
must be the expression of original or inventive thought. Copyright Acts are not
concerned with the origin of ideas, but with the expression of thought; and in the
case of ‘literary work, with the expression of thought in print or writing. The
originality which is required relates to the expression of the thought; but the Act
does not require that the expression must be in an original or novel form,
but that the work must not be copied from another work—that it should
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The judicial activism has taken its stance in Camlin Private Limited v.
wherein it was held that copyright subsists only in an original literary work. But
it is not necessary that the work should be the expression of the original or
inventive thought, for Copyright Act are not concerned with the originality
of ideas, but with the expression of thought, and in the case of a literary
work, with the expression of Thought in print or writing. Originality for the
the work must not be copied from another work but must originate from the
author.
Bashyam alias ‘Arya’ & Another AIR 1961 Mad. 114 (1962) 1 Mad LJ 258,
the word “artistic” is merely used as a generic term to include the different
processes of creating works set out in the definition section and that provides
that a work produced by one such processes, and that its creation
Hosery Factory 2002 PTC (24) 756 Del. (Reg.) the judiciary has laid down that,
is not originality of idea or the theme behind the work but the expression of the
work which requires being original. The originality required as per the Act is a
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making of copies without permission of the author. A copy is one which is either a
The expression “cinematograph film” in Section 2(f) of the Copyright Act, 1957
includes video film also which has been recorded in VCR. Entertaining
Enterprises& Others v. State of Tamil Nadu & Another AIR 1984 Mad.
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Dev Anand & Another AIR 1979 Bom.17, has held that in view of the definitions
of “artistic work”, “dramatic work” and cinematograph film”, it would appear that
the Copyright Act, 1957 does not recognize the performance of an actor as ‘work’
Similarly, the scope of the powers of the Copyright Board has been explained in
the case of Shri Urmila Charan Gupta v. Shri Charushila Sharan Gupta
and Sumitra Nandand Gupta 1983 PTC 84. In this case it has been
held that if the Board, in its powers, thinks fit or agrees to dispose of the
matter of all the 38 books on a single application, no one else is given the
Shrikrishnadass v. M/s Garg & Co. and Another AIR 1975 Del 130, focused
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publisher subject to any contract to the contrary, as is provided by Section 17 of
the said Act. It can be legitimately said that this Section has been inserted in the
Act of 1957, but the rule of law has been same even prior to this statutory
Dr. Suryakantha U. Kamath AIR 1992 Kar 1 the Section 19 of the Act provides
impermissible in law.
Similarly in, Srimagal and Co. v. Books (India) Pvt. Ltd. & Others AIR
1973 Mad 49: (1972) 2 Mad LJ 610 the Section 19 requires that the assignment
should be in writing signed by the assignor or by his duly authorized agent if the
In consonance with this, Chapter X of the Act containing Sections 44 to 50A deal
from the provisions of the aforesaid section that registration of the work under the
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Registration is not a prerequisite for acquisition of a copyright (Nav Sahitya
Prakash & Others v. Anan Kumar & Others AIR 1981 All 200).
39, the Sections 44 and 45 of the Act is only an enabling provision and the
provisions contained therein do not affect common law right to sue for
infringement of the copyright, therefore, registration of the work under the Act is
AIR 1972 Cal 533 wherein, there is no section in the Copyright Act, 1957, to
the effect that the author can have no right or remedy unless the work is
registered.
797(Mad) where a petition was filed for infringement of copyright and the same
was challenged by the respondents on the ground that that there was no
not a pre-condition for filing a suit or for launching prosecution for violation of
copyright.
Whereas, In Penguin Books Ltd., England v. M/s India Book Distributors &
Others AIR 1985 Del. 29, it was observed that whenever there is
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property right. Throughout the world it is regarded as a form of property
worthy of special protection in the ultimate public interest. The law starts from the
should provide only those exceptions and limitations which are essential in the
public interest.
In furtherance with this, the concept of honest and concurrent user found in
Section 12(3) of the 1958 Act for securing concurrent registration is totally
a different Act, namely, 1957 Act, as held in M/s Power Control Appliances &
division bench of the Andhra Pradesh High Court held that even though the
defendant has registered the carton under the Trademark Act, that may not come
to the aid of the defendant as the case of the plaintiff is that it owns a copyright of
the artistic work under the Copyright Act and no registration is required for the
same. Thus the court held that the plaintiff was justified in alleging infringement
As rightly pointed out by the Copyright Board that there can be no copyright
in the word or words, but the right can only be in the artistic manner in which the
same is written, and in this case the works were totally dissimilar.
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As rightly pointed out in, M/s. Video Master& another v. M/s. Nishi
Productions& others, 1998(3) Bom. CR 782 the given case examined the
copy rights. The plaintiff was assigned video playback and cable T.V rights and
he objected to the defendants being given the satellite broadcasting rights. The
Court observed that there were various modes of communication to public and
each one was separate and divisible. It was held that each of the modes of
communication could exist in different persons at the same time without infringing
Similarly, the Bombay High Court in Hindustan Lever Ltd., v. Nirma Private
Limited, Ahmedabad, AIR 1991 held that the dissimilarities were totally
there was prima facie infringement of copyright. The case dealt with the
infringement of the copyright in the label when there were only few changes
Desai & Another 2001 PTC (21) 57 Del., Delhi High Court has held: Copyright
monopoly in the subject matter which the author has borrowed from public
domain. Others are at liberty to use the same material. Material in which
no one has a copyright is available to all. Every man can take what is
useful from the, improve, add and give to the public the whole comprising
the original work with his additions and improvements. Under the guise of the
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copyright, the plaintiffs cannot ask the Court to restrain the defendants from
the plaintiffs in their law reports ‘Supreme Court Cases’ is not their original
literary work but has been composed of, complied and prepared from and
source and by adding commas, full stops and by giving paragraph numbers to
the judgement will not their work as the original literary work entitled to protection
copyright. Plaintiffs have failed to make out any prima facie case in their
favour and are, therefore, not entitled to any relief in the application.
Wherein, under Godrej Soaps (P) Ltd. v. Dora Cosmetics Co.2001 PTC (21)
407 Del it was held that the Delhi High Court held that where the carton was
employment for and on behalf of the plaintiff and the defendant had led no
evidence in his favour, the plaintiff is the assignee and the legal owner of
serial ‘India’s Most Wanted’. It was held that in the absence of any specific rights
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and/or format of programme, the plaintiffs cannot seek injunction against the
defendant. The assignment agreement executed between the plaintiff and the
defendants as regards structure, format, concept, synopsis and script vague and
using a label for pressure cookers, which was deceptively similar to the
plaintiff, an ex-parte order was passed and it was ruled that, the unjust
enrichment by the infringing party, was a mischief and the plaintiff was to
Kashyap v. Jiwan Publishing House 1996 PTC (16) 439 Del., it was held
made under the direction and control of CBSE and applicability of Section
17(dd) of Copyright Act is squarely attracted to the facts of the case. CBSE is
the first owner of the copyright in the examination papers on which examinations
In another case Allahabad high Court has held that the copyright in the
question papers set for the High School and Intermediate examinations
belongs to the paper-setters and since this copyright neither belonged to nor has
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been assigned to the Board, the notification which declares that ‘copyright of the
Intermediate Education Act, the State Government could not arrogate to itself or
to the Board a right which neither of them possessed under the law relating to
v. Board of High School and Intermediate Education & Another AIR 91:
Anton Piller Order, interlocutory injunction, etc, have assumed more popularity
nowadays. The first use of such order was made by Templeman J, in EMI v.
Pandit, (1975) 1All E R 418, to protect the offending evidences from being
popularity.
The orders in line of Anton Piller order are made under the head of civil
stage. There is not much case-laws debating over the aspects of Anton
Piller order. One of the earliest case that dealt with the concept of Anton Piller
PTC98.
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In Bucyrus Europe Ltd. v. Vulcan Industries Engineering Co. Pvt. Ltd.,
2005(30) PTC 279, the court observed that an Anton Piller order can be passed
• Where it was clear that the defendant possessed vital evidence; and
• There was a real possibility that the defendant might destroy or dispose of such
Thus, the position appears to be that an idea, principle, theme, or subject matter
choose an idea as a subject matter and develop it in his own manner and give
expression to the idea by treating it differently from others. Where two writers
write on the same subject similarities are bound to occur because the central
idea of both are the single but the similarities or coincidences by themselves
the great poet and dramatist Shakespeare most of whose plays are based on
Venice, Hamlet, Romeo Juliet, Julius Caesar etc. But the treatment of the
of which the end product becomes an original in itself. In fact, the power and
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passion of his expression, the uniqueness, eloquence and excellence of his style
and pathos and bathos of the dramas become peculiar to Shakespeare and
leaves precious little of the original theme adopted by him. It will thus be
throughout his original thinking, ability and incessant labor Shakespeare has
converted an old idea into a new one, so that each of the dramas constitutes a
master-piece of English literature. It has been rightly said that “every drama of
In furtherance with this under the case of AMAR NATH SEHGAL v UNION OF
INDIA 2005 (30) PTC 253 [India] it was held that, in the material world, laws are
geared to protect the right to equitable remuneration. But life is beyond the
the author are the soul of his works. The author has a right to preserve, protect
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