What is derivative work
In order to claim right in the derivative work containing the original material, the plaintiff is to show adaptation, abridgement, arrangement, dramatization or translation in his work entitling him to have certain rights. In order to qualify for independent right in derivative of collective work, the additional matter injected in a prior work on the matter of rearranging or otherwise transforming a prior work must constitute more than the minimal contribution which can be ascertained only if the prior work and the work done by the plaintiff is produced. In Eastern Book Company and Others Vs. D.B. Modak and Others and Mr. Navin J. Desai and Another, it was held that the copyright can be claimed in derivative work only in the following manner:
Copyright can be claimed only in derivative work. A derivative work consists of a contribution of original material to a pre-existing work so as to recast, transform or adapt the pre-existing work. This would include a new version of a work in the public domain and abridgement adaptation, arrangement, dramatization or translation. A collective work will qualify for copyright by reason of the original effort expended in the process of compilation, even if no new matter is added. In determining whether a work based upon a prior work is separately copyrightable as a derivative or collective work, the Courts may not properly consider whether the new work is a qualitative improvement over the prior work. However, in order to qualify for a separate copyright as a derivative or collective work, the additional matter injected in a prior work or the matter of rearranging or otherwise transforming a prior work, must constitute more than a minimal contribution.
The Concept of Copy Right
Copyright Act, 1957 as it originally stood enacted recognized three classes of work viz. (a) literary, dramatic, musical or artistic work; (b) cinematographic film and (c) record. Whereas musical and literary works are original works, record is a derivative work. “Recording” was defined in Section 2(x) of the Copyright Act, 1957 to mean the aggregate of the sounds embodied in and capable of being reproduced by means of a record. Section 13(4) of the Copyright Act, 1957 prescribed that copyright in a cinematographic film or a record shall not affect the separate copyright in any work in respect of which or a substantial part of which, the film or record is made. To put it simply, Section 13(4) prescribed that the copyright subsisting in a derivative work (record) shall not prejudice the copyright subsisting in original works (literary and musical).
In the year 1994 the Copyright Act, 1957 was amended to strengthen the copyright law in India. One of the significant changes made in the old Act was to extend protection to the performers by means of a special right, to be known as the ‘performer’s right’, in respect of the making of sound recordings or visual recordings of their live performances, and of certain related acts. Another change made was to replace the term ‘record’ with ‘sound recording’ as the former term had become outdated through association with an obsolescent technology of sound reproduction. Vide Section 2(xx), ‘sound recording’ was defined, to mean a recording of sounds from which such sounds may be produced regardless of the medium on which such recording is the method by which the sounds are produced; obviously to include piano rolls and mechanical instruments from which jingles are produced. The amended Act recognizes three classes of work viz. (a) literary, dramatic, musical or artistic work; (b) cinematographic film and (c) sound recording. Whereas musical and literary works are original works, sound recording is a derivative work. It is significant to note that Section 13(4) of the unamended Act was retained in the post amendment, with the only difference being that Section 13(4) of the amended Act provided that the copyright subsisting in a sound recording shall not prejudice the copyright subsisting in literary and musical work i.e. the only amendment incorporated in Section 13(4), on the subject was to replace the word ‘record’ with the words ‘sound recording’.
Chapter IV of the Copyright Act deals with ownership of copyright and the rights of the owner. Section 14 stipulates the exclusive right to do or authorize doing of the acts mentioned therein in respect of a work or any substantial part thereof. Rights which may be exercised in respect of each class of work are stipulated in Section 14. It is noteworthy that Section 14 does not indicate any order of priority between the different classes of works. Nor does it place any particular work above the others. It merely prescribes the rights that can be exercised in respect of each class of work.
In the decision reported as Entertainment Network (India) Ltd. Vs. Super Cassette Industries Ltd., following pertinent observations were made by the Supreme Court:
A statute as is well known must be read in its entirety. It is required to be read chapter by chapter, section by section and clause by clause. The definition of the term “broadcast” as also “sound recording” must be given a wide meaning. Clause (a) of Section 13 protects original work whereas clauses (b) and (c) protect derivative works. It provides for commercial manifestation of original works and the fields specified therein. Clause (a) of sub-section (1) of Section deals with original work. It is extremely broad. In contrast thereto, the copyright on films or sound recording work operates in restrictive field; they provide for a restrictive rights as would appear from the provisions contained in Section 14(1)(e) of the Act.
For a proper construction of the provisions, will it be necessary to keep in mind the difference between the right of the original work and right of sound recording? Should we also bear in mind that there are various forms of intellectual property rights. Section 16 provides that a right, inter alia, in respect of any work must be claimed only under and in accordance with the provisions of the Act unlike trade mark and passing off rights can be enforced even though they are not registered. It must also be noticed that whereas the term of a copyright in original literary, dramatic and musical and artistic works not only remains protected in the entire lifetime of the author but also until 60 years from the beginning of the calendar year next following the year in which the author dies, the term of copyright in sound recording subsists only for 60 years, but as indicated hereinbefore, the same would not mean that the right of an owner of sound recording is in any way inferior to that of right of an owner of copyright on original literary work, etc”
(Emphasis Supplied)
From the above observations of the Supreme Court and the wordings of Sections 13 and 14 of the Copyright Act, 1957 it emerges that the rights of an owner of a sound recording are, in no way, inferior to those of an owner of copyright in the original literary or musical works. This was a proposition which was not challenged by either learned counsel.
The development of the Law
The copyright, protection finds its justification in fair play. When a person produces something with his skill and labour, it normally belongs to him and the other person would not be permitted to make a profit but of the skill and labour of the original author and it is for this reason the Copyright Act, 1957 gives to the authors certain exclusive rights in relation to the certain work referred in the Act. The object of the Act is to protect the author of the copyright work from an unlawful reproduction or exploitation of his work by others. Copyright is a right to stop others from exploiting the work without the consent or assent of the owner of the copyright. A copyright law presents a balance between the interests and rights of the author and that of the public in protecting the public domain, or to claim the copyright and protect it under the copyright statute. One of the key requirements is that of originality which contributes, and has a direct nexus, in maintaining the interests of the author as well as that of public in protecting the matters in’ public domain. It is a well-accepted principle of copyright law that there is no copyright in the facts per se, as the facts are not created nor have they originated with the author of any work which embodies these facts. The issue of copyright is closely connected to that of commercial viability, and commercial consequences and implications.
The development of copyright law in India is closely associated with the British copyright law Statute of Anne, the first Copyright Act in England, was passed in 17th century which provided that the author of any book already printed will have the sole right of printing such book for a term mentioned, therein. Thereafter, came the Act, of 1814, and then the Act of 1842 which repealed the two earlier Acts of 1709 and 1814. The Copyright Act of 1911 in England had codified and consolidated the various earlier Copyright Acts on different works. Then came the Copyright Act of 1956. In India, the first Copyright Act was passed in 1914. This was nothing but a copy of the Copyright Act of 1911 of United Kingdom with suitable modifications to make it applicable to the then British India. The Copyright Act of 1957, which is the current statute, has followed and adopted the principles and provisions contained in the U.K. Act of 1956 along with introduction of many new provisions. Then came the Copyright (Amendment) Act, 1983 which made a number of amendments to the Act of 1957 and the Copyright (Amendment) Act, 1984 which was mainly introduced with the object to discourage and prevent the widespread piracy prevailing in video film and records. Thereafter, the Copyright (Amendment) Act, 1994 has effected many major amendments in the Copyright Act of 1957.
In the Present article, we shall discuss the value of derivative work within the Copyright Law
The following decisions are the authority on the proposition that the work that has been originated from an author and is more than a mere copy of the original work, would be sufficient to generate copyright. This approach is consistent with the “sweat of the brow” standards of originality. The creation of the work which has resulted from little bit of skill, labour and capital are sufficient for a copyright in derivative work of an author. Decisions propounded a theory that an author deserves to have his or her efforts in producing a work, rewarded. The work of an author need not be in an original form or novel form, but it should not be copied from another’s work, that is, it should originate from the author. The originality requirement in derivative work is that it should originate from the author by application of substantial degree of skill,- industry or experience. Precondition to copyright is that work must be produced independently and not copied from another person. Where a compilation is produced from the original work, the compilation is more than simply a re-arranged copyright of original, which is often referred to as skill, judgment and or labour or Capital. The copyright has nothing to do with originality or literary merit. Copyrighted material is that what is created by the author by his skill, labour and investment of capital, maybe it is derivative work. The courts have only to evaluate whether derivative work is not the end-product of skill, labour and capital which is trivial or negligible but substantial. The courts need not go into evaluation of literary merit of derivative work or creativity aspect of the same.
Copyright is purely a creation of the statute under the 1957 Act. What rights the author has in his work by virtue of his creation, are defined in Sections 14 and 17 of the Act. These are exclusive rights, but subject to the other provisions of the Act. In the first place, the work should qualify under the provisions of Section 13, for the subsistence of copyright. Although the rights have been referred to as exclusive rights, there are various exceptions to them which are listed in Section 52.
We are mainly concerned for the purpose of these appeals with Sections 2 [Clauses (k), (o), (y)], 13(1), 14(1)(a), 1”, proviso (d) and 52(1)(q)(iv) of the Copyright Act, 1957. The relevant provisions of these Sections are as under:
2. Interpretation.- In this Act, unless the context otherwise requires, –
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(k) “Government work” means a work which is made or published by or under the direction or control of –
(i) the Government or any department of the Government;
(ii) any Legislature in India;
(iii) any Court, Tribunal or other judicial authority in India;
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(o) “literary work” includes computer programmes, tables and compilations including computer databases;
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(y) “work” means any of the following works, namely:
(i) a literary, dramatic, musical or artistic work;
(ii) a cinematograph film;
(iii) a sound recording;”
13. Works in which copyright subsists.- (1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say, –
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) sound recording,
(2) Copyright shall not subsist in any work specified in Sub-section (1), other than a work to which the provisions of Section 40 or Section 41, apply, unless –
(i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the tine of his death, a citizen of India;
(ii) in the case of an unpublished work other than a work of architecture, the author is at the date of the making of the work a citizen of India or domiciled in India; and
(iii) in the case of a work of architecture, the work is located in India.
Explanation.- In the case of a work of joint authorship, the conditions conferring copyright specified in this sub-section shall be satisfied by all the authors of the work.
(3) Copyright shall not subsist –
(a) in any cinematography film if a substantial part of the film is an infringement of the copyright in any other work;
(b) in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has been infringed.
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Meaning of copyright.- (1) For the purposes of this Act, “copyright” means the exclusive right, subject to the provisions of this Act, to do or authorize the doing of any of the following acts in respect of a work or any substantial part thereof, namely:
(a) in the case of a literary, dramatic or musical work, not being a computer programme, –
(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work an Sub-clauses (i) to (vi);
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First owner of copyright.– Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein:
Provided that –
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(d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;
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52. Certain acts not to be infringement of copyright.- (1) The following acts shall not constitute an infringement of copyright, namely:
a) …
xx xxx xxx
(q) the reproduction or publication of –
(i) …
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(iv) any judgment or order of a Court, Tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the Court, the Tribunal or other judicial authority, as the case may be;
xxx xxx xxx
Subject to the provisions of Section 13 and the other provisions of the Act, there shall be a copyright throughout India in original literary work, dramatic, musical and artistic works, cinematograph films and sound recording, subject to the exceptions provided in Sub-sections (2) and (3) of Section 13. For copyright protection, all literary works have to be original as per Section 13 of the Act. Broadly speaking, there would be two classes of literary works: (a) primary or prior works: These ere the literary works not based on existing subject-matter and, therefore, would be called primary or prior works; and (b) secondary or derivative works: These are literary works based on existing subject-matter. Since such works are based on existing subject-matter, they are called derivative work or secondary work. Work is defined in Section 2(y) which would be a literary, dramatic, musical or artistic work; a cinematograph film; and a sound recording. u/s 2(o), literary work would include computer programmes, tables and compilations including computer databases. For the purposes of the Act, Section 14(1) enumerates what shall be a copyright which is an exclusive right, subject to the provision’s of the Act, to do or authorize the doing of the acts provided in Clauses (i) to (vii) in respect of a work or any substantial part thereof in the case of a literary, dramatic or musical work, not being a computer programme. Section 2(k) defines the ‘government work’ which would be a work which is made or published by or under the direction or control of amongst others, any Court, Tribunal or other judicial authority in India. By virtue of this definition, the judgments delivered by the Supreme Court would be a government work. u/s 17(d), the Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright in a government work. In the absence of any agreement to the contrary, the government shall be the first owner of the copyright in the judgments of the Supreme Court, the same being a government work u/s 2(k). Section 52(1) expressly provides that certain acts enumerated therein shall not constitute an infringement of copyright and Sub-clause (iv) of Clause (q) excludes the reproduction or publication of any judgment or order of a Court, Tribunal or other judicial authority, unless the reproduction or publication of such judgment or order is prohibited by the Court, the Tribunal or other judicial authority from copyright. The judicial pronouncements of the Apex Court would be in the public domain and its reproduction or publication would not infringe the copyright. The reproduction or publication of the judgments delivered by the Supreme Court by any number of persons would not be infringement of a copyright of the first owner thereof, namely, the Government, unless it is prohibited. The question, therefore, is whether by introducing certain inputs in a judgment delivered by a court it becomes “original copy-edited judgment” and the person or authority or company who did so could claim to have embodied the originality in the said judgment and the judgment takes the colour of original judgment having a copyright therein of its publisher.
In many cases, a work is derived from an existing work. Whether in such a derivative work, a new copyright work is created, will depend on various factors, and would one of them be only skill, capital and labour expended upon it to qualify for copyright protection in a derivative literary work created from the pre-existing material in the public domain, and the required exercise of independent skill, labour and capital in its creation by the author would qualify him for the copyright protection in the derivative work. Or would it be the creativity in a derivative work in which the ferial position will depend upon the amount and value of the corrections and improvements, the independent skill & labour, and the creativity in the end-product is such as to create a new copyright work to make the creator of the derivative work the author of it, and if not, there will be no new-copyright work and then the original author will remain the author of the original work and the creator of the derivative work will have been the author of the alterations or the inputs put therein, for their nature will not have been such as to attract the protection under the law of copyright.
It is submitted by Shri Raju Ramachandran, learned senior Counsel for the appellants that Section 52(1)(q)(v) of the Act does not bar the recognization of copyright in the Copy-edited version of the text of judgments of the courts as published in law reports. The Government is the first Owner of copyright in the judgments of the courts as per Section 2(k) read with Section 17 and Section 52(1)(q)(iv) of the Act provides that any person wanting to reproduce or publish judgments would not infringe the copyright of the Government, but Section 52(1)(q)(iv) does not imply that in case a person has expended independent skill, labour and capital on the judgments of the courts to create and publish his version of the judgments, any other person is free to copy that person’s version of the judgments, substantially or in its entirely. Copyright subsists in the copy-edited version of the text of judgments of the courts as published in law reports, which have been created by the application of skill, labour and capital which is not trivial or negligible. The inputs put in the copy-edited judgments in SCC, is a derivative literary work created from preexisting material of the judgments of the court which is in public domain. The exercise of independent skill, labour and capital in its creation by the author of such work, and the derivative literary work created by the expenditure of the independent skill, labour and capital of the appellants gives them copyright in such creations. It is not necessary that work created should have a literary merit. The courts can only evaluate whether the skill, labour and capital actually employed, required in creating the work, is not trivial or negligible. It is further urged by the learned senior counsel that in deciding whether a derivative work qualifies for copyright protection, it must be considered as a whole, and it is not correct to dissect the work into fragments and consider the copyright ability of each such fragment piecemeal and individually apart from the whole. He submits that the respondents if wish to reproduce or publish a work already in public domain is obliged to go to the public domain/common source of such work rather than misappropriating the effort and investment of the appellants by copying the version of such work which was created by them by independent expenditure of skill, labour and capital. To buttress his submissions, the learned senior counsel placed reliance on various foreign judgments and judgments of the Indian High Courts which are considered hereinafter.
Ladbroke (Football) Ltd. v. Willim Hill (Football) Ltd. , is a case where the concept of originality was considered on the basis of skill, judgment and/or labour in the context of compilation. Since 1951 the respondents, who were well-known bookmakers, had sent their customers reach week fixed odds football betting coupons arranged in a certain general form. In 1959 the appellants, who were also bookmakers, started sending out coupons closely resembling the respondents’ coupons. A coupon was a sheet of paper on which were printed several lists of forthcoming matches. Beside each list were columns of squares on which the punter could indicate his forecast of the result of each match. Some of the lists included all the matches to be played; others included only a selection of them. The bets varied in character. A great variety of bets was offered and the odds offered differed widely from 5-2 to 20,000-1. The respondents’ coupon contained 16 lists, each with an appropriate name. The appellants’ coupon, which contained 15 lists, closely resembled the respondents’. The lists offered by the appellants were almost identical with those offered by the respondents in their corresponding lists. The respondents brought action claiming copyright in the coupons. The House of Lords was called upon to determine whether or to what extent copyright attached to these coupons. The respondents said that a coupon must be regarded as a single work and that as such it was protected by copyright. The appellants sought to dissect the coupon. It was contended by the respondents that there had been a breach of copyright by the appellants, since the respondents’ compilation, which must be regarded as a single work, was original and protected by copyright and the part taken by the appellants from the respondents’ work was substantial. It did not follow that because the fragments of the compilation, taken separately, would not be copyright, the whole could not be copyright. It was submitted by the appellants that the derivative work of the respondents not being original, no copyright can be claimed and the inputs put, if considered separately, are of insignificant value and thus the respondents could not claim copyright.
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 originality 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 trust be in an original or novel form, but that the work must not be copied from another work – that it should originate from the author; and as regards’ compilation, originality is a matter of degree depending on the amount of skill, judgment or labour that has been involved in making the compilation. The words ‘literary work’ cover work which is expressed in print or writing irrespective of the question whether the quality or style is high. The commonplace matter put together or arranged without the exercise of more than negligible work, labour and skill in making the selection will not be entitled to copyright. The word ‘original’ does not demand original or inventive thought, but only that the work should not be copied but should originate from the author. In deciding, therefore, whether a work in the nature of a compilation is original, it is wrong to consider individual parts of it apart from the whole. For many compilations have nothing original in their parts, yet the sum total of the compilation may be original. In such cases the courts have looked to see whether the compilation of the unoriginal material called for work or skill or expense. If it did, it is entitled to be considered original and to be protected against those who wish to steal the fruits of the work or skill or expense by copying it without taking the trouble to compile it themselves. In each case, it is a question of degree whether the labour or skill or ingenuity or expense involved in the compilation is sufficient to warrant a claim to originality in a compilation.
While considering the question whether the copyright protection is available to the work created as a whole or the fragment of the work would be considered piecemeal and individually apart from the whole, the House of Lords said as under:
… One test may be whether the part which he has taken is novel or striking, or is merely a commonplace arrangement of ordinary words or well-known data. So it may sometimes be a convenient short cut to ask whether the part taken could by itself be the subject of copyright. But, in my view, that is only a short cut, and the more correct approach is first to determine whether the plaintiffs’ work as a whole is ‘original’ and protected by copyright, and then to inquire whether the part taken by the defendant is substantial.
A wrong result can easily be reached if one begins by dissecting the plaintiffs’ work and asking, could Section A be the subject of copyright if it stood by itself, could Section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore, the whole cannot be….
In the case of Walter and Anr. v. Lane [1900] AC 539 (HL), the Earl of Rosebery on five occasions in 1896 and 1898 delivered to the public audience speeches on subjects of public interest. The Reporter of ‘The Times’ took down the speeches in shorthand, wrote out their notes, corrected, revised and punctuated them and the reports were published in ‘The Times, the speeches being given verbatim as delivered by Lord Rosebery. The reporters were employed under the terms that the copyright in all reports and articles composed by ‘The Time’ magazine should belong to the proprietors. In the year 1899, the respondent published a book called – “Appreciations and Addresses: Lord Rosebery”, which contained the reports of the above speeches of Lord Rosebery and it was admitted that these reports were taken from the reports in ‘The Times’ Lord Rosebery made no claim. The appellants brought an action against the respondent; claiming a declaration that a copyright of the articles and reports was vested in the proprietors of ‘The Times’. The issue involved in the case was whether a person who makes notes of a speech delivered in public, transcribes them and publishes in the newspaper a verbatim report of the speech, is the author of the report within the meaning of the Copyright Act, 1842, and is entitled to the copyright in the report. The House of Lords held that each reporter is entitled to report and each undoubtedly would have a copyright in his own published report. It was of course open to any other reporter to compose his own report of Lord Rosebery’s speech, and to any other newspaper and book to publish that report; but it is a sound principle that a man shall not avail himself of another’s skill, labour and expense by copying the written product thereof; and copyright has nothing to do with the originality or the literary merits of the author or composer. It may exist in the information given by a street dictionary. If a person chooses to compose and write a volume devoid of the faintest spark of literary or any other merit, there is no legal reason why he should not, if he desires, become the first publisher of it and register his copyright, worthless and insignificant as it would be.
In the case of Designers Guild Ltd. v. Russell Williams (Textiles) Ltd., the plaintiff brought proceedings claiming that the defendant had infringed the plaintiff’s copyright by copying one of its fabric designs, i.e. for the fabric design Ixia. The infringement of which the plaintiff complained was that for the purpose of creating its own design Marguerite by the defendant. The defendant had copied a substantial part of Ixia. There were mainly two main issues at the trial. First, what, if anything had the designer of Marguerite copied from Ixia. Secondly, did what had been copied amount to “the whole or a substantial part” of Ixia? It was said by the House of Lords that the law of copyright rests on a very clear principle that anyone who by his or her own skill and labour creates an original work of whatever character shall enjoy an exclusive right to copy that work. No one else may for a season reap what the copyright owner had sown.
University of London Press Limited v. University Tutorial Press Limited [1916] 2 Ch 601, 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. The judgment was based on the following facts: Certain persons were appointed as examiners for matriculation examination of the University of London on a condition that any copyright in the examination papers should belong to the University. The University assigned the copyright to the plaintiff company. After the examination, the defendant company brought out a publication containing a number of the examination papers, including three which had been set by two examiners appointed by the University. The plaintiff company brought a case of copyright infringement against the defendant company. It was argued that since the setting of the papers entailed the exercise of brainwork, memory, and trained judgment, and even the selection of passages from other author’s work involved careful consideration, discretion and choice they constituted original literary work. On the other and, the defendants claimed that what they had done was fair dealing for the purposes of private study which was permissible under the law. The court agreed that the material under consideration was a literary work. The words ‘literary work’ cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high. The word ‘literary’ seems to be used in a sense somewhat similar to the Use of the word ‘literature’ in political or electioneering literature and refers to written or printed matter. 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 the work must not be copied from another work – that it should originate from the author.
In Kelly v. Morris , School of thought propounded is that, at least in respect of compilations, only time and expenses are necessary which is “industrious collection”.
The plaintiff was the owner and publisher of the first directory. The defendant came out with another directory.
The plaintiff sought an injunction against the defendant to restrain the publication of the defendant’s directory on the allegations that the defendant was guilty of appropriating the information contained in the plaintiff’s directory and obtained the benefit of many years of incessant labour and expense. The defendant, on the other hand, contended that there had been no unfair or improper use of the plaintiff’s work. Information which was given in the plaintiff’s directory was entitled to be used and adopted as long as he did not servility copy it. The defendant had bestowed his independent time, labour and expense on the matter and thus had in no way infringed the copyright of the plaintiff. Granting injunction, the Court held that in the case of a directory when there are certain common objects of information which must, if described correctly, be described in the same words, a subsequent compiler is bound to set about doing for himself that which the first compiler has done. In case of a road-book, he must count the milestones for himself. In the case of a map of a newly discovered island he must go through the whole process of triangulation just as if he had never seen any former map, and, generally he is not entitled to take one word of the information previously published without independently working out the matter for himself, so as to arrive at the same result from the same common sources of information, and the only use that he can legitimately make of a previous publication is to verify his own calculations and results when obtained. The compiler of a directory or guidebook, containing information derived from sources common to all, which must of necessity be identical in all cases if correctly given, is not entitled to spare himself the labour and expense of original inquiry by adopting and re-publishing the information contained in previous works on the same subject.
In the case of Parry v. Moring and Gollancz, Cop Cas (1901-1904) 49, the plaintiff, after obtaining permission from the representatives of the owner of certain letters, updated, chronologically arranged and translated them into modern English for their inclusion in his book. Later, the defendant published, as one of the series, an edition of the letters prepared by the plaintiff. The plaintiff, therefore, brought an action against the defendant alleging infringement of his copyright. The plaintiff maintained his copyright in his version of the text apart from the copyright in the text. It was held that there is copyright in the work of editing the text of a non-copyright work. The editor of a non-copyright work is not entitled to take the text from the edition of a rival editor and use it as a copy for the purpose of his own work.
In Gopal Das Vs. Jagannath Prasad and Another , the plaintiffs were the printers and publishers of the books. The book titled “Sachitra Bara Kok Shastra” was printed for the first time in 1928 and had run into four editions since. The defendants printed and published another book titled “Asli Sachitra Kok Shastra” in 1930. The plaintiffs’ case was that the book published by the defendants was a colorable limitation of their book and an infringement of plaintiffs’ copyright. It was held by the Court that the plaintiffs compiled their book with considerable labour from various sources and digested and arranged the matter taken by them from other authors. The defendant instead of taking the pains of searching into all the common sources and obtaining his subject matter from there, obtained the subject matter’ from the plaintiffs’ book and availed himself of the labour of the plaintiffs and adopted their arrangement and subject matter and, thus, such a use of plaintiffs’ book could not be regarded as legitimate. It was held that a person whose work is protected by copyright, if he has collected the material with considerable labour, compiled from various sources of work in itself not original, but which he has digested and arranged, the defendant could not be permitted to compile his work of like description, instead of taking the pains of searching into all the common sources and obtaining the subject-matter from them and to adopt his arrangement with a slight degree of colourable variation thereby saving pains and labour which the plaintiff has employed. The act of the defendant would be illegitimate use. The Court held that no one is entitled to avail himself of the previous labour of another for the purpose of conveying to the public the same information, although he may append additional information to that already published.
In V. Govindan Vs. E.M. Gopalakrishna Kone and Another, , the respondents had published an English-English Tamil Dictionary in 1932. The appellants were the publishers of similar Dictionary in 1947. An action was brought regarding the publication and sale of the dictionary by the appellants, which was alleged to be constituting an infringement of the respondents’ copyright. The lower court went through both the books minutely and found, “page, after page, word after word, slavishly copied, including the errors, and found the sequence, the meanings, the arrangement and everything else practically the same, except for some ‘deliberate differences’ introduced here and there to cover up the piracy”. The High Court referred to Copinger and James on Law of Copyright wherein the law has been neatly summarized that: “In the case of compilations such as dictionaries, gazetteers, grammars, maps, arithmetic�s, almanacs, encyclopedias and guide books, new publications dealing with similar subject-matter must of necessity resemble existing publications, and the defense of ‘common source’ is frequently made where the new publication is alleged to constitute an infringement of an earlier one.” The Court held that in law books and in books as mentioned above there is very little amount of originality but the same is protected by law and “no man is entitled to steal or appropriate for himself the result of another’s brain, skill or labour even in such works.” The Court further clarified that where there is a ‘common source’, the person relying on it must prove that he actually went to the common source from where he borrowed, employing his own skill, labour and brains and that he did not merely copy.
In C. Cunniah and Co. and Others Vs. Balraj and Co. and Another, , the appellant firm was carrying on the business in pictures, picture frames, etc. One Sri T.M. Subramaniam drew a picture of Lord Balasubramanya and gave it the title of Mayurapriya and a copyright was assigned to the appellant. It came to the knowledge of the appellant firm that the respondent firm was printing and selling copies of a close and colourable limitation of the appellant’s picture under the style of Bala Murugan. The case of the defense was that their picture was an independent production and that the appellant had not acquired copyright in the picture and the subject dealt with in that picture was a common subject, in which no copyright could be acquired by anyone. The Court held that in order to obtain copyright production for literary, domestic, musical and artistic works, the subject dealt with need not to be original, nor the ideas expressed be something novel. What is required is the expenditure of original skill or labour in execution and not originality of thought.
In Agarwala Publishing House Vs. Board of High School and Intermediate Education and Another, , a writ petition was filed by a publisher form challenging an amendment of the Regulations of the Board declaring that copyright of the question papers set at all examinations conducted by the Board shall vest in the Board and forbidding the publication of such question papers without the Board’s permission. The question involved in the case was whether the question papers are ‘original literary work’ and come within the purview of Section 13 of the Copyright Act, 1957. It was urged that no copyright can exist in examination papers because they are not ‘original literary work’. It was held that the ‘original literary works’ referred to in Section 13 of the Copyright Act, 1957, are not confined to the works of literature as commonly understood. It would include all works expressed in writing, whether they have any literary merits or not. This is clear from the definition given in Section 2(o) of the Act which states that literary work includes tables and compilations. The Court further held that the word ‘original’ used in Section 13 does not imply any originality of ideas but merely means that the work in question should not be copied from some other work but should originate in the author, being the product of his labour and skill.
In the case of Gangavishnu Shrikisondas v. Moreshvar Bapuji Hegishte and Ors. ILR 13 Bom 358, the plaintiff, a book seller, in 1984 brought out a new and annotated edition of a certain well-known Sanskrit work on religious observances entitled ‘Vrtraj,’ having for that purpose obtained the assistance of the pandits, who re-cast and re-arranged the work, introduced various passages from other old Sanskrit books on the same subject and added footnotes. Later on, the defendant printed and published an edition of the same work, the text of which is identical with that of the plaintiff’s work, which moreover contained the same additional pages and the same footnotes, at the same places, with many slight differences. The foundation of both plaintiff’s and defendant’s books is an old Sanskrit work on Hindu ceremonial, which could have been published by anyone. The copyright claimed by the plaintiff was on the additions and alterations to the original text, which the parties admit to be material and valuable, and in which the copyright is claimed of its prior publication. The defendants argued that there was nothing really original in the plaintiff’s book and, therefore, he was not entitled to copyright in the bock. It was held by the Court that a new arrangement of old matters will give a right to the protection afforded by the law of copyright. If anyone by pains and labour collects and reduces it as a systematic compilation in the form of a book it is original in the sense that that entitles the plaintiff to the copyright. The plaintiff worked for such a new arrangement of old matters as to be an original work and was entitled to the protection; and that as the defendants had not gone to independent sources of the material but had pirated the plaintiff’s work, they were restrained by injunction.
In Rai Toys Industries and Ors. v. Munir Printing Press 1982 PTC 85, the plaintiff had published a Tambola ticket book containing 1500 different rickets in 1929. The plaintiffs alleged that the defendants had brought out another ticket book which the plaintiffs claimed to have written in 1929 and registered as copyright. The ticket book brought out by the defendants was alleged to contain 600 different tickets and the same had been copied identically from the books of the plaintiff. On this basis, a suit for injunction and rendition of account was filed by the plaintiff. The question before the court was whether the ticket-books in the form of tables constitute literary work; and whether copyright has been violated or not? It was held by the High Court that preparation of tickets and placing them in tables required a good deal of skill and labour and would thus satisfy the test of being original literary work. It was recognized that the arrangement of numbers is individual work of a person who prepares it; it bears his individuality and long hours of labour. It is not information which could be picked up by all and sundry. The preparation of tickets is an individualized contribution and the compilation eminently satisfies the test of being an original literary work. Hence it was held to be a clear case of copyright violation when the defendant decided to pick and choose 600 tables on the sly and publish them as his individual work.
In Macmillan and Anr. v. Suresh Chandra Deb ILR Cal 952, the plaintiffs were proprietors of the copyright of a selection of songs and poems composed by various authors, which was published in 1861. In 1889, the defendants published a book containing same selection of poems and songs as was contained in plaintiffs’ book, the arrangement, however, being different. The plaintiffs claimed copyright in the selection made by them. The defendants, on the other hand, contended that there could be no copyright in such selection. The Court held that in the case of works not original in the proper sense of the term, but composed of, or compiled or prepared from material which are open to all, the fact that one man has produced such a work does not take away from any one else the right to produce another work of the same kind, and in doing so to use all the materials open to him. But, as the law is concisely stated by Hall, V.C., in Hogg v. Scott, “the true principle in all these cases is, that the defendant is not at liberty to use or avail himself of the labour which the plaintiff has been at for the purpose of producing his work, that is, in fact, merely to take away the result of another man’s labour, or, in other words, his property.” It is enough to say that this principle has been applied to maps, to road books, to guide books, to compilations on scientific and other subjects. This principle seems to be clearly applicable to the case of a selection of a poem. It was held that for such a selection as the plaintiff had made obviously required extensive reading, careful studying and comparison and the exercise of taste and judgment to make a selection for himself. But, if one spares himself this trouble and adopts some other person’s selection, he offends against the principle. The Court was of the opinion that the selection of poems made by the plaintiff and embodied in the Golden Treasury was the subject of copyright and that the defendant’s book had infringed that right.
In Feist Publications Inc. v. Rural Telephone Service Co. Inc., Rural Telephone Service Co. publishes a typical telephone directory consisting of white pages and yellow pages. The white pages list in alphabetical order the names of rural subscribers together with their towns and telephone numbers. The yellow pages list Rural’s business subscribers alphabetically by category and feature classified advertisements of various sizes. To obtain white pages listings for its area-wide directory, Feist Publications Inc. approached different telephone companies operating in North West. Kansas and offered to pay for the right to use their white pages listings. Of them, only Rural refused. Unable to license Rural’s white pages listings, Feist used them without Rural’s consent. Rural sued for copyright infringement in the District Court taking the position that Feist, in compiling its own directory, could not use the information contained in Rural’s white pages. Rural assorted that Feist’s employees were obliged to travel door to door or conduct a telephone survey to discover the same information for themselves. Feist responded that such efforts were economically impractical and, in any event, unnecessary because the information copied was beyond the scope of copyright protection. The United States Supreme Court held that the sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. The requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be. Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying. The Court further held that no one claim originality as to the facts. This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence. Factual compilations, on the other hand, may possess the requisite originality. The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original. Thus, if the compilation author clothes facts with an original collocation of words, he or she may be able to claim a copyright in this written expression. The Court goes on to hold that the primary objective of copyright is not to reward the labour of authors, but to promote the progress of science and useful arts. To this end, copyright assures authors the right to their original expression but encourages others to build freely upon the ideas and information conveyed by a work. Only the compiler’s selection and arrangement may be protected; however, the raw facts may be copied at will. The Court rejected the doctrine of the “sweat of the brow” as this doctrine had numerous flaws, the most glaring being that it extended copyright protection in a compilation beyond selection and arrangement – the compiler’s original contributions – to the facts themselves. A subsequent compiler was not entitled to take one word of information previously published, but rather had to independently work out the matter for himself, so as to arrive at the same result from the same common sources of Information. “Sweat of the brow” courts thereby eschewed the most fundamental axiom of copyright law that no one may copyright facts or ideas. The “sweat of the brow” doctrine flouted basic copyright principles and it creates a monopoly in public domain materials without the necessary justification of protecting and encouraging the creation of writings by authors.
The judgment in Matthew Bender & Co., Inc. v. West Publishing Co. 158 F.3d 674 (2nd Cir. 1933), is of United States Court of Appeals, Second Circuit, which directly covers the reports of the judgments of the courts. The facts involved in the case are that the West Publishing Co. and West Publishing Corp. (“West”) obtain the text of judicial opinions directly from courts. It alters these texts into (i) independently composed features, such as syllabus, headnotes which summarize the specific points of law recited in each opinion and key numbers which categorize points of law into different legal topics and sub-topics and (ii) additions of certain factual information to the text of the opinions, including parallel or alternative citations to cases, attorney information, and data on subsequent procedural history. West publishes the case reports in different series of case reporters collectively known as “National Reporter System”. Two series of case reporters at issue in that case were the Supreme Court Reporter and the Federal Reporter. Hyper Law publishes and markets CD-ROMs which are compilations of the Supreme Court and the United States Court of Appeals that cover approximately the same ground. Hyper Law intends to expand its CD-ROM product taking the material from the West publications. Hyper Law intervened and sought a judgment declaring that the individual West case reports that are left after redaction of the first category of alterations do not contain copyrightable material. It was hold by the Court that for copyright protection, the material does not require novelty or invention, but minimal creativity is required. All of West’s alterations to judicial opinions involve the addition and arrangement of facts, or the rearrangement of data already included in the opinions, and, therefore, any creativity in these elements of West’s case reports lies in West’s selection and arrangement of this information. West’s choices on selection and arrangement can reasonably be viewed as obvious, typical and lacking even minimal creativity. Copyright protection is unavailable for both derivative works and compilations alike unless, when analyzed as a whole, they display sufficient originality so as to amount to an original work of authorship. Originality requires only that the author makes the selection or arrangement independently and that it displays some material with minimal level of creativity. Whole a copy of something in the public domain will not, if it be merely a copy, support a copyright, a distinguishable variation will. To support a copyright there must be at least some substantial variation, not merely a trivial variation such as, might occur in the translation to a different medium. Creativity in selection and arrangement, therefore, is a function of (i) the total number of options available, (ii) external factors that limit the viability of certain options and render others non-creative, and (iii) prior uses that render certain selections ‘garden variety’.
In the case of Key Publications, Inc. v. Chinatown Today Publishing Enterprises, Inc., Key Publication published an Annual Classified Business Directory for New York City’s Chinese-American community. In 1990, Galore Publication published the Galore Directory, a classified directory for the New York Chinese American community. Key brought a suit against Galore Directory charging that Galore Directory infringed Key’s copyright in the 1999-90 Key Directory. The United States Court of Appeal held that individual components of compilation are generally within the public domain and thus available for public. There are three requirements for a compilation to qualify for copyright protection: (1) the collection and assembly of pre-existing data; (2) selection, coordination or arrangement of the data; and (3) the resulting work that comes into being is original, by virtue of the selection, coordination or arrangement of the data contained in the work. For originality, the work is not required to contain novelty. The doctrine of “sweat of the brow”, rewarded compilers for their efforts in collecting facts with a de facto copyright to those facts and this doctrine would prevent, preclude the author absolutely from saving time and effort by referring to and relying upon prior published material. It extended copyright protection in compilation beyond selection and arrangement – the compiler’s original contribution – to the facts themselves drawn on “sweat of the brow” is a copyright protection to the facts discovered by the compiler. The court discarded “sweat of the brow” notion of copyright law.
In Lord Atkinson in Macmillan and Co. v. Cooper, AIR 1924 PC 75 action was brought by McMillan and Company to restrain the respondent-firm who was carrying on the trade and business of publishers of educational books, from printing, distributing or otherwise disposing of copies of the book published by the appellants. The ground on which the relief was claimed was that the appellants had a copyright in the book entitled “Plutarch’s Life of Alexander, Sir Thomas North’s Translation and that the respondent published subsequently a book entitled “Plutarch’s Life of Alexander the Great, North’s Translation”, as it had infringed the copyright to which the appellants were entitled in the earlier compilation. The Court noted the contents of the book of the appellants as also that of the respondent. As per the Court, the text of the appellants’ book consisted of a number of detached passages, selected from Sir Thomas North’s translation, words being in some instances introduced to knit the passages together so that the text should as far as possible, present the form of an unbroken narrative. The passages so selected were, in the original translation, by no means contiguous. Considerable printed matter in many instances separated the one from the other. The opinion of the Privy Council was that for the work done by the appellants, great knowledge, sound judgment, literacy skill or taste in the inputs brought to bear upon the translation was not required, as the passages of the translation which had been selected are reprinted in their original form, not condensed, expanded, modified or reshaped to any extent whatever. The Court observed that the North’s translation of Plutarch’s Life of Alexander does not and never did, as the law stands, never can enjoy the protection of copyright; and the questions which arise for decision must be dealt with upon that assumption. The Court said that in all cases where the reprint with the text of it consisted merely of a reprint of passages selected from the work of any author, would never have a copyright. There may be cases where selecting and reprinting the passages would require the appreciation upon what has been laid down or established in the book and labour, accurate scientific knowledge, sound judgment, touching the purpose for which the selection is made, and literary skill would all be needed to effect the object in view. In such a case, the copyright might well be acquired for the print of the selected passages. The Court said that it is the product of the labour, skill and capital of one man which must not be appropriated by another, not the elements, the raw material, upon which the labour and skill and capital of the first have been expended. To secure copyright for this product, it is necessary that the labour, skill and capital expended should be sufficient to impart to the product some quality of character which the raw material did not possess and which differentiates the product from the raw material.
The Court approved the principles enunciated in the case of University of London Press, Ltd. v. University Tutorial Press Ltd. [1916] 2 Ch. 601, dealing with the meaning of the words ‘original literary work’ that the original does not mean expression of original or inventive thought. The Copyright Act is not concerned with the original ideas, but with the expression of thought. The originality which is required relates to expression of thought and the Act does not require that the expression must be in original or novel form. The work must not be copied from another work – that it should originate from the author.
The Supreme Court of Canada in the matter of CCH Canadian Ltd. v. Law Society of Upper Canada 2004 (1) SCR 339 (Canada) has noticed the competing views on the meaning of original’ in copyright law wherein some courts have held that a work which has originated from an author and is more then a mere copy of a work, is sufficient to give copyright. This approach is held to be consistent with the sweat of the brow’ or industriousness’ standard of originality on the premise that an author deserves to have his or her efforts in producing a work rewarded. Whereas the other courts have held that a work must be creative to be original and thus protected by the copyright Act, which approach is consistent with a natural rights theory of property law; however, it is less absolute in that only those works that are the product of creativity will be rewarded with copyright protection and it was suggested in those decisions that the creativity approach to originality helps ensure that copyright protection is extended to the expression of ideas as opposed to the underlying ideas or facts. The Court has also noticed that those cases which had adopted the sweat of the brow approach to originality should not be interpreted as concluding that labour, in and of itself, would be a ground for finding of originality. The question for consideration of the copyright has arisen on the following fact foundation. The appellant, Law Society of Upper Canada, has maintained and operated the Great Library at Osgood Hall in Toranto, a reference and research library. The Great Library provides a request-based photocopy service for Law Society members, the judiciary and other authorized researchers. Under the custom photocopy service, legal materials are reproduced and delivered to the requesters. The Law Society also maintains self-service photocopiers in the Great Library for use by its patrons. The respondents, CCH Canadian Ltd., Thomson Canada Ltd. and Canada Law Book Inc. publish law reports and other legal materials. The law book publishers commenced copyright infringement action against the Law Society claiming ownership of copyright in 11 specific works on the ground that the Law Society had infringed copyright when the Great Library reproduced a copy of each of the works. The publishers further sought permanent injunction prohibiting the Law Society from reproducing these 11 works as well as any other works that they published. The Law Society denied liability and submitted that the copyright is not infringed when a single copy of a reported decision, case summary, statute, regulation or a limited selection of text from a treatise is made by the Great Library staff or one of its patrons on a self-service photocopier for the purpose of research. The Court was called upon to decide the question as to what shall be the originality in the work of compilation. On consideration of various cases, it was held that to be original under the Copyright Act the work must originate from an author, not be copied from another work, and must be the product of an author’s exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise. Creative works by definition are original and are protected by copyright, but creativity is not required in order to render a work original. The original work should be the product of an exercise of skill and judgment and it is a workable yet fair standard. The sweat of the brow approach to originality is too low a standard which shifts the balance of copyright protection coo far in favour of the owner’s right, and fails to allow copyright to protect the public’s interest in maximizing the production and dissemination of intellectual works. On the other hand, the creativity standard of originality is too high. A creative standard implies that something must be novel or non-obvious – concepts more properly associated with patent law than copyright law. By way of contrast, a standard requiring the exercise of skill and judgment in the production of a work avoids these difficulties and provides a workable and appropriate standard for copyright protection that is consistent with the policy of the objectives of the Copyright Act. Thus, the Canadian Supreme Court is of the view that to claim copyright in a compilation, the author must produce a material with exercise of his skill and judgment which may not be creativity in the sense that it is not novel or non-obvious, but at the same time it is not the product of merely labour and capital. [ SUPREME COURT OF INDIA -EASTERN BOOK COMPANY AND OTHERS Vs. D.B. MODAK AND ANOTHER (2008) AIR(SC) 809 ]
