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The economic downturn must not deter rights owners from deploying smart strategies to protect and build their intellectual property portfolios. Vandana Chatlani reports

John Squires, a partner and co-chair of the IP practice at Chadbourne & Parke in New York, tells a story about Judge Rich, a former chief judge of the Federal Circuit Court of Appeals (the highest patent court of exclusive jurisdiction in the US) and the primary author of the US Patent Act, 1952, which is still in effect today.

“Judge Rich was a young lawyer in the US during the great depression,” recounts Squires. “My colleague asked him what it was like being a patent lawyer during the great depression. Judge Rich smiled and cheerily replied, ‘There was no great depression for patent lawyers’.”

Judge Rich’s remarks hold true today, says Squires, even though the current downturn can hardly be compared to the economic disaster of 80 years ago. “Smart companies are using and should use the downturn to expand their reach and IP protections in order to better position themselves competitively as markets come back – and come back they will,” Squires predicts confidently.

Such advice may seem easier said than done for cash-strapped in-house legal departments, but many strategies for protecting and enhancing the value of intellectual property make good commercial sense, even in times of adversity (see Crisis management). Moreover, as India Business Law Journal reported last month, the risks and repercussions of hasty cost-cutting when it comes to IP rights protection can easily outweigh any short-term financial gains.

“Companies do have specific expense control measures they can deploy smartly, such as provisional patent application filings where commercial markets are less mature and developing,” explains Squires. “Companies can also rationalize certain patents in geographic markets where patent coverage for products or services may no longer make sense.

“In addition, in the US there are companies and even funds that will buy patents or pending applications on the market, so companies can sell those patents that they determine are no longer core to them. That is a market dynamic that was not available even a few years ago,” Squires adds.

Nicholas Studler is the trademark counsel for Eurasia and Africa at Coca-Cola. He believes there are various ways to achieve and protect innovations while keeping a tight control on expenditure. Studler suggests leveraging the advantages of modern software; allocating work for multiple countries to one law firm to reduce the administrative burden and obtain lower legal rates; reviewing and adapting internal processes and procedures; and optimizing existing portfolios.

“Our budgets changed a lot. We had consecutive budget reductions in a two-digit range for the last three years,” reveals Studler, “but not since the beginning of the crisis. Our management is very cost conscious and we have been taking action in the last couple of years to reduce unnecessary expenses and to become more efficient.”

Saving by spending

It is futile to invest in the development of intellectual property if one is going to adopt a penny-pinching attitude towards its protection and enforcement (see Doing away with false economies). The repercussions of inadequate protection are severe; one act of breach can destroy value that has taken many years and considerable investment to build.

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Inspiration or infringement?

Ameet Datta, a partner at Luthra & Luthra, uses a case study of India’s film industry to highlight the IP challenges facing foreign rights owners

There is a general consensus that Bollywood is in bad shape; yet films such as Chak De India, Welcome, Partner, Taare Zameen Par, Singh is Kingg and Ghajini have had cash registers ringing at box offices across the country. So is creativity and originality booming in Bollywood or not?

Will Smith’s Overbrook Entertainment and Sony Pictures have their own views on this question, as their film Hitch may have provided more than just inspiration for the Indian hit Partner starring Bollywood actors Salman Khan and Govinda. A similar close link exists between the Denzel Washington film Man on Fire and Ek Ajnabee with Amitabh Bachhan, and between the film Momento and the 2008 hit Ghajini, which made Rs2 billion (US$40 million). More recently, planned Indian remakes of My Cousin Vinnie and The Curious Case of Benjamin Button have goaded their Hollywood owners into action to protect their IP.

A film as a whole is protected as a work, while underlying elements such as screenplays, lyrics, musical compositions, sound recordings, photo stills and set design also qualify for IP protection. A script or a set of lyrics is a literary work and the Copyright Act, 1957, prescribes certain exclusive rights, including the right to reproduce the work in any material form, or to adapt the work in order to make a film.

Film copyright is infringed if the recorded moving images constituting the film are copied, as in video piracy. The copyright in a film is not infringed if the subject matter of a film is remade as a new film; what may be infringed in such a case are the script, screenplay and other underlying elements.

This is the tricky part; copyright law does not protect ideas in themselves, but the expression of ideas. While the central idea or theme of a story does not attract copyright protection, the protectable elements of a film include the textual aspect (the script), and non-textual aspects including the combination of situations, events and scenes which constitute the form, manner and working out or expression of the idea or theme.

As in the case of a film which copies a theatrical play, the substantial copying of a film’s script or unique sequenced plot elements may allow a court to find in favour of a plaintiff. The litmus test is the “lay observer test”, which ascertains if there is an objective similarity between two films. The test holds that there is copyright infringement if the viewer, after having seen both films, receives an unmistakable impression that the subsequent film is a copy of the first film.

For example, the verbatim reproduction of dialogues (even if translated), “frame to frame” copying or comparable sequencing of scenes and fleshing out of characters will lead to a finding of copyright infringement. Less-obvious copying will still face close examination by a court, but assessment is more difficult when there is only a non-textual copying allegation.

The remaking of foreign films in India has sometimes been ingeniously explained as “cultural copying”; as a prominent director allegedly said: “When you take an idea and route it through the Indian heart, it changes entirely.” Such an opinion would probably fail to impress American director Quentin Tarantino, given that reports out of Los Angeles referred to Bollywood film Kaante as a “singing, dancing Reservoir Dogs”.

Ameet Datta
Ameet Datta

In the case of RG Anand v Delux Films, the Supreme Court held that if two authors independently develop the same idea, there is no copyright infringement even if there are similarities, saying: “The fundamental fact which has to be determined [is]… whether or not the defendant not only adopted the idea of the copyrighted work but has also adopted the manner, arrangement, situation to situation, scene to scene with minor changes or superficial additions or embellishment here and there.”

In Barbara Taylor Bradford v Sahara Entertainment Ltd, Calcutta High Court held that basic plots and characters were not protectable under copyright law. In this case Bradford sued Sahara for copyright infringement by their use of the plot, theme and characters from her novel A Woman of Substance in their proposed serial KarishmaThe Miracle of Destiny. It was held that the mere similarities in plot lines and thematic resemblance did not lead to a conclusion of copying, and the court cautioned against over-protection, which could curb future original works.

In Zeccolla v Universal Pictures, Universal Pictures sought to restrain the exhibition and distribution of an Italian film, Great White, based upon similarities to the cult film Jaws. In hearing a challenge by the defendant to the granting of an interim injunction wherein he claimed that Universal could not assert a right on a genre film, the Federal Court of Australia held that, “In general, there is no copyright in the central idea or theme of a story or play however original it may be; copyright subsists in the combination of situations, events and scenes which constitute the particular working out or expression of the idea or theme. If these are totally different the taking of the idea or theme does not constitute an infringement of copyright.”

The court also observed that two questions were involved: the degree of objective similarity between the novel and the screenplay, and whether copying was established. The appeal court upheld the single judge’s finding: there was such a marked degree of similarity between the two films that there was an inescapable inference of copying and that the respondent had an excellent chance of success at the trial.

Practically speaking, a suit for copyright infringement by a foreign copyright owner in India will likely be subject to the same standards. Were the tests outlined above to be applied to many Bollywood films that are defended by their creators as remakes, several would be likely to find themselves on the wrong side of the law.

The 2006 case of Sholay Media & Entertainment Pvt Ltd & Anr v Mr Parag M Sanghavi & Ors before the Delhi High Court – in which the Ram Gopal Verma film Ram Gopal Verma Ke Sholay was restrained from release due to copyright and trademark infringements in relation to the cult film Sholay – is a pointer that rights owners may no longer be willing to let things slide.

Regardless of whether some Bollywood films are classified as remakes or as cultural copies, the central issue of infringement remains.


Ameet Datta is a partner with Luthra & Luthra Law Offices’ intellectual property law practice as well as its media practice and entertainment practice. He specializes in trademark, copyright and design prosecution, transactions and litigation, including film and music law, content aggregation and licensing issues. Datta has represented the Indian music industry’s two copyright societies for the past eight years. His practice also includes tort-based litigation involving defamation, privacy and the right of publicity as well as disparaging advertising.

He can be contacted at:
Luthra & Luthra
103 Ashoka Estate
Barakhamba Road
New Delhi – 110 001, India
Tel: + 91 11 4121 5100
Fax: + 91 11 2372 3909
E-mail: adatta@luthra.com

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