Feb 23

RKD NewsNet February 2023

From the desk of Dr. Mohan Dewan | Assisted by: Adv. Arjun Pradhan Adv. Shubham Borkar

International News

  • Fair Dealing of Works protected under Copyrights: De Fontbrune v. Wofsy
  • Miscellaneous

    Fair Dealing of Works protected under Copyrights: De Fontbrune v. Wofsy

    The fundamental purpose of Copyright Laws, is to make artists and creators capable of reaping the rewards of their intellect. However, the doctrine of fair use has entered the copyright laws with a rather opposite intention. The inception of the doctrine has taken place over the years and therefore, did not have any defining status. The doctrine is an exception to the very purpose of copyright law. According to the doctrine of fair use, any person can use a work without taking permission from the creator/owner of the work.

    However, the law provides only limited number of circumstances under which a work can be used without the owner’s permission.

    The relaxation provided by several judicial precedents can be summarized by the following pre-requisites:

    1. The quantum and value of the matter taken from the original work;

    2. The purpose for which it is taken;

    3. And the likelihood of competition between two works

    The relaxations have also been laid down in the case of Civic Chandran vs Ammini Amma where, the Court laid down that a parody does not constitute an infringement of copyright as long as it has not been misused or misappropriated.

    Development of the doctrine of fair use has picked up pace worldwide. However, in the United States of America, the growth has been sporadic. Fair use is allowed only to the extent it protects the public interest while preserving the rights of the owner. The doctrine was born in the US through a landmark case of Folsom v. Marsh wherein, Folsom, the publisher had filed a suit against Marsh who had reproduced 353 pages from the complainant’s biography of George Washington. In this case, Marsh took defense by stating that the book was well within the public domain as it was matter relating to a President of the Union and that it ultimately resulted in the formation of a new work. However, the Court was of the opinion that, the quantum and value extracted from the original work has to be weighed while comparing the original work with the newly created work. Finally, the Circuit Court held that, Marsh had indeed infringed the rights of Folsom. The act of Marsh was not fair thus, did not constitute as true labor of the intellect. Section 107 of the US Copyright Act, 1976 lays down three aforementioned factors which constitute fair use of any work.

    Recently, one such case by the name De Fontbrune v. Wofsy rekindled the question of fair use/dealing and its implications. Which led the Ninth Circuit of the US Court to closely re-examine the factors leading to fair use.

    Pablo Picasso was a renowned painter. In 1932, a photographer named Christian Zervos made a catalogue of 16,000 images of Picasso’s paintings. This carefully curated catalogue is famously known as the “Zervos Catalogue” which was published by Cashiers d’Art, a publishing house started by Christian Zervos himself. Eventually, in the year 1979, Yves Sicre de Fontbrune (‘Fontbrune’), a French citizen bought the rights to all the intellectual property of Cahiers d’Art. This turn of event made Fontbrune owner of all the rights of the “Zervos Catalogue”.

    Alan Wofsy, in 1991, acquired permission from the estate of Pablo Picasso to publish a series of reproductions of Picasso’s works. He then, published a series of books called “The Picasso Project”. In these series of books, Wofsy aimed at reproducing and creating an illustrated catalog of Picasso’s work in a chronological order. These illustrations were nothing but mere reproductions of the photographs from the “Zervos Catalog”.

    Fontbrune came across The Picasso Project and seized copies of the book from a fair in Paris. The French Court decided in favor of Fontbrune stating that Wofsy’s work was a mere reproduction of the Zervos Catalog which was duly protected under the Copyright Act in France. Thereafter, Fontbrune brought a suit in the Superior Court of California, Alameda County where he could enforce the French judgment.

    Alongside other factors that were to be weighed in this suit in tandem with its maintainability which was later well established and accepted on appeal to the Ninth Circuit, the most significant factor established by the Ninth Circuit was that The Picasso Project was a full-fledged act of infringement and raised a copyright issue. “The Picasso Project” wasn’t protected under the principle of fair use.

    The principle of fair use and the factors which constitute fair use are similar in US and Indian law. Section 107 of the U.S. Copyright Act establishes four factors for any reproduction of a copyrighted work to be considered under fair use/dealing.

    The factors are as follows:

    1. The purpose and character of the use: The Picasso Project had not only become commercially prevalent but also, was reproduced from exact replicas of the Zervos Catalog. In other words, Wofsy’s work was not transformative. A substantial part of his work consisted of photographs from the Zervos Catalog. This implies that the Zervos Catalog and the Picasso Project served the same purpose which was reproducing the works of art of Pablo Picasso. Since years together, our precedents have inferred that the use of copyrighted work is allowed only after a substantial amount of value addition to it. The Court found that Wofsy’s creative contribution to the Picasso Project was only minimal.

    2. The nature of the copyrighted work: the act of reproducing is not considered an act of infringement if it is for the purposes of criticism, comment, news reporting, teaching (including making multiple copies for classroom use), scholarship, or research. However, commercial use of any reproduction or depiction does amount to infringement. In his defense, Wofsy contended that the Zervos Catalog was meant more for documentary purposes than considered to be of artistic nature. Nevertheless, the French Court had rightfully decided that the photographs included an artistic touch to them and were therefore, entitled to copyright protection.

    3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole: although, only 1,492 of the 16,000 photographs were reproduced from the Zervos Catalogue, the work on those photographs by Wofsy was not transformative and ultimately looked like an exact depiction of the work of both Christian Zervos and Pablo Picasso combined.

    4. The effect of the use upon the potential market for or value of the copyrighted work: Wofsy introduced evidence in Court stating that the auction prices of The Zervos Catalogue had seen a drastic increase thus, impacting the market positively. However, the Court opined that the infringing act of Wofsy had affected the market value for licensing the photographs in Zervos Catalogue.

    After considering and weighing all the factors constituting fair use/fair dealing, it was clear to the Court that Wofsy had committed an act of infringement. Therefore, the decision was in favor of Fontbrune.

    Fair Dealing as the term suggests, is a provision in the Copyright law which allows use of any Copyrighted work without taking permission form the owner of the work. This concept serves as an exception to the exclusive rights granted to any artist under the Copyright law.

    In India, the defense of fair dealing and the factors amounting to fair dealing have been stated under section 52 of the Copyright Act, 1957. Any act of fair dealing does not require the permission of the copyright owner. From any copyrighted work, if a substantial part of it is cut out and rearranged in a way which has only a minimum amount of extra matter is added and rearranged then the new work will be considered as a reproduction of the original copyrighted work and will come under the ambit of infringement. In India, Article 19 of the Indian Constitution, which is the Freedom of Speech and Expression has played a major part in expounding the exception of ‘fair use’ in the Copyright law. The Indian law does not explicitly state the percentage or ratio demarcating ‘substantial’ part of any copyrighted work that can be used fairly and no line is drawn between an infringing act and a non-infringing act. However, there have been various precedents which have laid down under the Indian Copyright Law which have enunciated the difference between what is lawful and what is not.

    Through precedents like RG Anand v. Delux Film and Ors the Courts have opined that the defense of fair use could not be taken where there was blatant copying of an idea. This means that the new work can only be inspired from the copyright owner’s work and not a complete replica. In Academy of General Education, Manipal and Anr v. B. Manini Mallya, it was laid down that fair dealing could only be upheld as a valid defense if it is done in any literary or dramatic work for the purposes mentioned under section 52 of the Copyright act. Moreover, it was stated that if the performance was before a non-paying audience which is an amateur club or society then the same would also not be considered as copyright infringement.

    In yet another case of The Chancellor, Masters and Scholars of the University of Oxford v Rameshwari Photocopy Services, Oxford University Press, Cambridge University Press and its Indian affiliate, Taylor & Francis and its Indian affiliate filed for an injunction action with an intention of restraining Rameshwari Photocopy Services and the Delhi School of Economics, Delhi University from infringing copyright owned by them in various publications which were being photocopied and distributed to students in course packages. Here, the Court held that making and collating course packs for readings for students by photocopying portions of various prescribed reference books did not violate the copyright of the publishers and amounted to fair dealing.

    A different scenario arose in the case of India TV Independent News Services Pvt. Ltd v Yashraj Films Private Limited in which a TV show was broadcasted wherein documentaries were shown on the life of singers. In the show the singers sang their own songs. Meanwhile, in the background, clips from the movie in which the songs were originally picturized, were displayed. Yashraj Films Pvt. Ltd. contended that this act violated their copyright. However, India TV took the defense of fair dealing and contested the allegation. Ultimately, the Delhi High Court restrained India TV from distributing, broadcasting, publishing or in any way exploiting any cinematograph film, sound recordings or a part thereof which belonged to Yashraj Films. Eventually, after many years of introspection on this judgement, the Delhi High Court deviated from the aforementioned decision and observed that, India TV should have ideally taken prior permission from Yashraj Films to broadcast the clips of the movies.

    The principle of fair dealing fundamentally demands that, the person reproducing any material must give due credit to the owner of the copyright of the work being reproduced. In order to uphold fairness in the law, the Copyright Laws in all jurisdictions have laid down certain works which would not be considered as an infringement of copyright, namely fair dealing with a literary, dramatic, musical or artistic work for the purposes of –

    1. Any kind of research

    2. Criticism or Review – the owner of the copyright should receive a proper acknowledgment. This act giving due acknowledgment is mandated by the UK Copyright Act. India is gradually getting into the practice of doing the same for the sake of copyright protection.

    3. Reporting of current events in the print media because the current events concern the public at large.

    4. Permitted Reproductions of Legislative material – It was held in Eastern Book Company v D.B. Modak by the Supreme Court that judgements delivered by the Courts are in the public domain and there exists no right of copyright over them.

    5. Various kinds of examples are given by teachers in school to children in order to make them understand multiple concepts. Therefore, under such circumstances, reproduction of a work by a teacher or a pupil in the course of teaching or study or through answers to questions are excused and may be considered as fair dealing.

    6. Permitted reproduction of articles in the print media – The question of ownership of copyright in articles where the author does not reserve the right of reproduction arose in the case of The Periyar Self Respect v Periyar Dravidar Kazhagam. The Court held that, if the author has not reserved the right of reproduction, no copyright will vest with anyone and reproduction of such articles would not amount to infringement.

    7. Making or publishing a drawing, painting, or photograph by an architect or the works of architecture.

    8. Making or publishing an artistic work to which the public has access.

    9. Inclusion of any artistic work situated in a public place in a cinematograph film.

    10. Making of not more than three copies of a book (including a pamphlet, sheet of music, map, chart or plan) by or under the direction of the person in charge for the use of the library if such book is not available for sale in India.

    11. Permitted use of a computer and a computer program - Transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public.

    Section 52 of the Indian Act essentially enumerates particular acts which are not considered to be an infringement of a copyrighted work. According to the provisions in this section, the replication of any work for the purposes of personal use, criticism or review or coverage of current affairs which includes reproduction of a public lecture will not amount to infringement¬. The list under the section is fairly exhaustive in nature and lists several acts which constitute fair dealing. Although, the Indian Copyright Act, 1957 has not expressly defined ‘fair dealing’, however, legal precedents have over a period of time dealt with several situations which amounted to fair dealing.

    Being fair towards the artists and ethically using their valuable work for a greater cause is indirectly honoring the author and giving them the respect that they rightfully deserve. The decision made by the Ninth Circuit in the case of De Fontbrune v. Wofsy has proved the essence of fair dealing in Copyright Laws.

    The principles of fair dealing have always been present in Copyright Laws, irrespective of the jurisdiction. However, the fact that these principles cannot be laid down in black and white terms has been faced by Courts’ time and again in several cases in the past. In the case of SK Dutt v. Law Book Co. and Ors., the Court observed that, in order for an infringement to exist, a substantial portion of the copyright owner’s work should have been copied.

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    Children are quick!

    - Provided by my good friend, Phil Furgang.


    Teacher: Glenn, how do you spell 'crocodile?'

    Glenn: ‘K-R-O-K-O-D-I-A-L.'

    Teacher: No, that's wrong.

    Glenn: Maybe it is wrong, but you asked me how I spell it.

    Teacher: Donald, what is the chemical formula for water?

    Donald: H I J K L M N O.

    Teacher: What are you talking about?

    Donald: Yesterday you said it's H to O.

    TEACHER: George Washington not only chopped down his father's

    cherry tree, but also admitted it. Now, Louie, do you know why his father didn't punish him?

    LOUIS: Because George still had the axe in his hand.

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    For those who don't know everything…

    - Provided by my good friend, Phil Furgang.


    A dime has 118 ridges around the edge.

    A cat has 32 muscles in each ear.

    A crocodile cannot stick out its tongue.

    A dragonfly has a life span of 24 hours.

    A goldfish has a memory span of 3 seconds.

    A "jiffy" is an actual unit of time for 1/100th of a second.

    A shark is the only fish that can blink with both eyes.

    A snail can sleep for 3 years.

    Al Capone's business card said he was a used furniture dealer.


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    The ‘Andamen’ Case

    A short judgement (5 pages long) passed by Justice Sanjeev Narula of the Delhi High Court on the 10th of January ’23 came to my notice.

    The case goes by the name Siddharth Suri v. Registrar of Trademarks and deals with an application named for the trademark “ANDAMEN” for leather goods in class 18. This case is significant for at least three reasons:

    i) The application was refused on the 24th of Jan 2019 and has been reinstated on the 10th of Jan 2023. It took almost 4 years for this application to be heard and decided. I can understand the struggle of an applicant and his perseverance to get his application reinstated. This itself is commendable. When I saw the application, I had greater respect for the applicant. The application under no. 2849573 was actually filed in November 2014. That means it took almost 9 years and the applicant still did not have any relief in getting his mark registered. It is true that the Honorable Judge has ordered that the mark be “advertised without acceptance” within a period of 3 months of the order, which means that the mark will now be advertised and will be now open for opposition, and only thereafter will the applicant have the satisfaction of his mark being registered.

    ii) The Order passed by the Hon'ble Judge Narula will be a precedent for “phonetic equivalents of geographical names”, in this case “The Andaman Islands” or “The Andaman Sea”. The Order itself acknowledges that the mark “ANDAMEN” is a tweaking of the geographical name. The Order is a precedent for the fact that if the business activity, in this case “manufacture and sale of leather goods” does not take place at the geographical location. That is to say that the islands archipelago does not have a reputation for the manufacture or sale of leather goods, then such a trademark will be accepted for registration and the examiner cannot raise an objection under section 9 on the grounds that such a mark serves as an indication of geographical location which is an absolute for refusal of registration.

    iii) The examiner of trademark had also refused this application on the ground that the mark “ANDAMEN” applied for deceptively similar to the device mark “". The Hon'ble Judge held that, the registered mark could not be considered visually or phonetically similar to the subject mark “ANDAMEN” because the cited mark was a device mark, whereas the subject mark was a word mark.

    Therefore, this case will also become a precedent for the fact that, if a word mark has similar alphabets to a word or words represented in a device mark, when the two marks are compared the marks will be considered “prima facie dissimilar”.

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    Hidden Meanings in Trade Marks

    *We do not claim any copyright in the above images. The same has been reproduced for academic and representational purposes only.

    Founded in 1889, Nintendo Co., Ltd. (Nintendo) is a Japanese multinational video game company, headquartered in Kyoto which develops and releases both video games and consoles. Originally established as “Nintendo Karuta” by Fusajiro Yamauchi, the company originally produced handmade hanafuda (a style of Japanese cards) playing cards.

    In 2001, Nintendo’s Gamecube was one of the most significant creations in the gaming landscape. Not only did its logo represented the three-dimensional aspects of modern gaming but, was also intended to look similar to the console itself.

    Interestingly, the outer cube of the logo forms the letter “G” around the inner cube, leaving the letter “C” in the negative spacing.

    Did you see it?

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    Hidden gems of India

    Source - Google

    *We do not claim any copyright in the photograph. It has been used for academic and representational purposes only

    Moksha Patam also known as Parama Padam or Mokshapat was a board game, which originated in India and used for teaching Hindu Dharma and values to the children.

    Created by the 13th century poet saint Gyandev, the ladders in the game represented virtues and the snakes indicated vices. The game was originally played with cowrie shells and dices. Later the game underwent several modifications but the meaning is the same i.e. good deeds take us to heaven and evil to a cycle of re-births.

    The squares had virtues such as faith, Reliability, Generosity, Knowledge etc. whereas the snakes represented vices such as Disobedience, Arrogance, Vulgarity, Theft, Lying, Debt, Anger, Greed, Pride etc. The final square represented Nirvana or Moksha.

    The game served a dual purpose: entertainment, as well as the dos and don’ts.

    In 1892, the British took the game to England and re-named it as ‘Snakes and Ladders’ and changing the rules as per the Victorian values.

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