Innovating the Law: Adapting Patent Policies for AI-Driven Futures

By Manit Sharma

Manit Sharma is a third-year law student at Gujarat National Law University, Gandhinagar.

In the ever-evolving landscape of technological advancements, the question of artificial intelligence (AI) as a potential inventor has emerged as a pivotal issue in patent law globally. It is evident that the number of patent filings in the AI domain of India has shown continuous growth year on year. The recent decision by the UK Supreme Court (UKSC) regarding Dr. Stephen Thaler’s AI creation, Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), has added a significant chapter to this discourse. The ruling, denying patent rights to autonomously generated inventions, raises pertinent questions about the recognition of AI as inventors in legal frameworks.

As AI systems continue to disrupt and revolutionize industries, their capacity to independently conceive inventions underscores the need for a nuanced understanding within patent law. The debate intensifies as AI-generated innovations, such as the fractal container and neural flame developed by DABUS, grapple with the limitations of existing legal structures. The current lacuna in Indian patent law, where AI-generated inventions remain ineligible for patent protection, begs a critical examination in the wake of technological progress.

Against this backdrop, the 161st Parliamentary Standing Committee Report under the Department of Commerce has recommended revisions to existing legislation, emphasizing the incorporation of emerging AI technologies within the ambit of The Patents Act, 1970. The report recognizes the imperative to adapt legislation to the accelerating pace of innovation, urging the Department to embark on a comprehensive review. The recent statement made by the Union Minister of State for Commerce and Industry, in which he emphasized that the current IP laws are sufficient to encompass AI, represents a positive step in this regard. However, the statement lacks the necessary clarification regarding enforcement and also fails to address the numerous objections previously raised by criticsTop of Form

This blog aims to navigate the intricacies of the AI inventorship debate, shedding light on its contemporary relevance following the UK Supreme Court decision. It explores the Indian and international legal frameworks surrounding the inclusion of AI as an inventor of a patent. Furthermore, the blog delves into the compelling arguments advocating for the inclusion of AI as an inventor in the Indian as well as global Patent Law regime.

The Recent Decision

The UK Supreme Court reached a unanimous decision affirming that the Patents Act of 1977 allows only natural persons to be identified as inventors in a patent application. This stance mirrors the opinions put forth by the lower court and the UK Intellectual Property Office, emphasizing that an invention is eligible for patenting only when attributed to a “natural person”. The court provided additional clarification, asserting that Dr. Stephen Thaler is not permitted to submit a patent application for innovations created by DABUS.
The case at hand originated when Dr. Stephen Thaler, the mind behind DABUS, submitted two patent applications seeking grant for a novel food and beverage container. In these applications, he attributed the role of inventor to DABUS. However, the Hearing Officer for the Comptroller-General of Patents dismissed the applications, contending that DABUS, being an artificial intelligence entity, does not meet the criteria for an inventor outlined in Section 7 of The Patents Act, 1977. The Court of Appeal concurred with the Hearing Officer’s decision, asserting that, according to the act, an ‘inventor’ must be a natural person, and a machine does not qualify as such. The Court of Appeal also relied on Yeda Research case wherein the scope of inventor was defined to mean a natural person. Hence the appeal was dismissed.

Following this, the case was brought before the UK Supreme Court, where three main issues were at the heart of the dispute. Firstly, there was a disagreement over the extent and interpretation of the term “inventor.” Secondly, the question arose as to whether Dr. Thaler had the right to submit and acquire a patent for the invention attributed to DABUS. Lastly, there was a debate about whether the Hearing Officer had the authority to reject the application put forth by Dr. Thaler. The scope of this article is confined to the examination of the first issue.

The first issue holds relevance in this context wherein the Court opined that DABUS does not qualify as an inventor for the purpose of Section 7 of the 1977 Act. The court relied on the views expressed by Lord Hoffmann in the Yeda Research on which the Court of Appeal previously relied. The court also referred to University of Southampton’s Applications. In conclusion, the court held that “inventor” as per section 7 and 13 of The Patent Act, 1977 only limits itself to include natural persons and not machines. Hence, DABUS was not considered as an inventor under this section.

Among this confusion, the UK Intellectual Property Office in a public consultation conducted in 2021 reported that majority of the replies were of the view that the UK Patents Act should not be amended instantly and international harmonisation should play a pivotal role for the easy inclusion of AI in the Patent Law framework. The result of the consultation was clear on the view that inventions made by AI should be patentable, however, this inclusion of AI as an inventor should take an international consensus. Understanding the international and domestic legal framework in relation to inclusion of AI as an inventor under the patent law framework holds significance in this regard.

International and Domestic Framework

The case for inclusion of DABUS as an inventor in the patent law framework is part of a project involving parallel applications by Dr Thaler to patent offices around the world. The international jurisprudence, except Saudi Arabia and South Africa, has been consistent in this regard that DABUS which is not a natural person cannot be termed as an inventor in the present law. However, as AI continues to expand its reach and innovations, many countries, such as the US, have recognized the need to revamp their patent laws to include AI within its ambit.

The United States Patent and Trademark Office (USPTO) refused to acknowledge DABUS as an inventor, asserting that a direct interpretation of statutory provisions in the United States Code (U.S.C.) unequivocally identifies inventors as individuals and not artificial entities. The USPTO specifically cited 35 U.S.C. Section 100(f)-(g) and Section 101, wherein terms such as “individual” and “whoever” are employed in relation to inventorship, emphasizing the stipulation that inventors must be natural persons. In accordance with 35 U.S.C. Section 115(b), an individual who considers “himself or herself” the inventor of the claimed invention is required to sign an oath or declaration.

Furthermore, the USPTO cited various decisions from the Federal Circuit that reinforced the notion that only natural persons meet the criteria for being recognized as inventors. One notable case, University of Utah v. Max Planck Gesellschaft zur Forderung der Wissenschaften E.V, 734 F.3d 1315, 1323 (Fed. Cir. 2013), saw the Federal Circuit refusing to attribute inventorship to  state or a company. This decision aligned with the stance of the USPTO, affirming that an artificial intelligence system cannot be acknowledged as an inventor, given the statutory restrictions that confine inventorship. The European Patent Office, Australia, New Zealand, Israel, Germany, South Korea, Taiwan Brazil, Canada reached the same conclusion while rejecting Dr. Thaler’s application.

In India, Sections 2 and 6 of the Indian Patent Act, 1970 detail the criteria for recognizing inventors and applicants within the Indian jurisdiction, specifically focusing on who is entitled to file for a patent. Section 6 delineates the qualifications necessary for an applicant, whereas Section 2(1)(s) clarifies the definition of a ‘Person’ eligible to apply for a patent, and Section 2(1)(y) addresses the exclusions from being considered the true and first inventor in a patent application. Crucially, Section 2(1)(s) of the Act explicitly states that the entity applying for a patent can be either a ‘natural person’ or a ‘Government’ Organization, broadening the conventional definition of a ‘person’. The Ayyangar Committee Report of 1959 elucidates the legislative intent behind the Patent Act, emphasizing the recognition of an inventor’s right to be mentioned in a patent. The report underscores that moral rights extend to individuals deserving acknowledgment as inventors, even if they lack complete legal rights to the invention. According to the report, engaging with inventors aims to enhance their financial entitlements, even if exclusive rights have been relinquished through contracts. However, AI cannot enjoy the envisioned benefits or claim moral rights as per existing Indian laws, and it lacks recourse for misuse enforcement. Indian Patent Office has not issued specific guidelines for examining AI-related inventions. In a manner consistent with international practices, the Controller General of Patents in India has voiced reservations regarding the recognition of DABUS as a legal entity under Sections 2 and 6.

AI as an Inventor: An Analysis

“We are both created and create. Why cannot our own inventions create?”

The statement above was made by Justice Beach, expressing his opinion that AI should be considered an inventor within the global patent law framework. Further, in the landmark case of Ferid Allani v. Union of India &Ors., Justice Pratibha M. Singh observed that in the modern-day digital era, where most innovations are based on computer programming, it is imperative to include these innovations within the patent law framework. Additionally, the 161st Parliamentary Standing Committee Report on the IPR Regime in India recommended revisions within the patent law framework to incorporate AI within its ambit. The committee report acknowledged the escalating popularity of AI and the subsequent increase in patent law-related applications related to AI in India. Thus, it is apparent that governments and courts worldwide, including in India, acknowledge the imperative to integrate AI into the patent law framework.

The primary goal of Indian patent law is to foster innovation and promote progress by providing incentives. Presently, the law does not acknowledge AI as an inventor, giving rise to several challenges. This includes the insufficient motivation for the development of AI and the potential for inaccurately attributing inventorship on a patent application to secure a patent. The absence of robust intellectual property rights to safeguard these AI-generated inventions may discourage their pursuit, thereby withholding potential benefits from the world. Moreover, the denial of patents for AI-created innovations could result in decreased investment in the foundational AI technology, impeding or halting its advancement. Without this motivating factor, investments in the underlying technologies may decline, causing delays in development that might have been avoided if AI inventorship were adequately protected through patents.

In a speculative future scenario, there exists a potential for major corporations and early AI adopters to dominate most ensuing innovations. This scenario is plausible because patent protection holds particular importance for smaller entities or individuals who may face greater obstacles when seeking safeguarding for their developments through trade secrecy. Theoretically, the significance of patent protection becomes even more pronounced for smaller companies, innovators, or individuals employing AI in their inventive pursuits.

The emergence and ongoing evolution of AI could lead to the concentration of industries based on the timely implementation of effective AI technology. Considering the relative costs associated with the development and upkeep of AI, it is not improbable that initial adopters would be established corporations. In a hypothetical scenario, early adopters with the capability to license their AI technology to others might include terms in the licensing agreements asserting ownership of any intellectual property resulting from the utilization of the AI technology. This could further contribute to the potential monopolization of inventions and the consequent consolidation of industries. In this context, the absence of patents for AI-generated inventions increases the likelihood that established corporations would enjoy the advantages of AI while limiting the prospect of individual ownership due to the substantial costs associated with developing AI technology.

Looking ahead, to address the recognition of AI as an inventor, the potential for monopolization, and the dual goals of incentivizing innovation and advancing research, a proposal is put forth to incorporate compulsory licensing into the patent law framework when acknowledging AI. The grounds for such a license should be similar to that as are prescribed under Section 84 of the Indian Patents Act, 1970. The introduction of compulsory licensing aims to facilitate the effective utilization of AI after a certain prescribed time period, while ensuring fair compensation for those who initially pursue the invention.

Various pricing models can be considered for a compulsory license, including the assignment of a flat royalty rate, the imposition of a flat fee, or the application of licensing terms based on FRAND (Fair, Reasonable, and Non-Discriminatory) principles. Mandating reasonable licensing terms would enable companies or individuals holding patents arising from AI inventorship to guarantee that the value of their invention is duly acknowledged within the licensing arrangements. This approach seeks to strike a balance between fostering AI innovation, preventing monopolistic control, and ensuring fair compensation for inventors in the evolving landscape of artificial intelligence.

Conclusion
The contemporary discourse within the realm of patent law revolves around a central and contentious issue: the acknowledgment of AI as a prospective inventor. The recent adjudication by the UK Supreme Court and its consequent denial of patent rights to autonomously generated inventions serve as a focal point, emphasizing the exigency for a nuanced comprehension of AI’s role in patent law amid its transformative impact on diverse industries.

The international dialogue surrounding AI inventorship, exemplified notably by the UKSC decision, underscores the intricate challenges associated with harmonizing legal frameworks to accommodate the dynamic capacities of AI. The adjudication, asserting that only a natural person qualifies as an inventor, resonates with analogous sentiments expressed by patent office’s globally. This quandary similarly prompts critical scrutiny within the Indian legal landscape, where extant deficiencies in patent law prompt deliberations on the eligibility of AI-generated inventions for legal protection.

In cognizance of the imperative to adapt to the swiftly accelerating pace of AI innovation, the 161st Parliamentary Standing Committee Report in India proffers recommendations for legislative amendments, emphasizing the integration of emergent AI technologies within the purview of The Patents Act, 1970. This aligns with a global paradigm wherein nations contemplate legal revisions to accommodate the burgeoning influence of AI within their patent laws.

The imperative to recognise AI as an inventor is not merely articulated by legal authorities but resonates within the spheres of justice and innovation. The statements proffered by Justice Beach and Justice Pratibha M. Singh underscore the necessity of acknowledging AI’s inventive capacity within the contours of patent law. Furthermore, the proposition to institute compulsory licensing concurrently with the acknowledgment of AI as an inventor reflects a strategic endeavour to balance incentivization for innovation, mitigate monopolization concerns, and sustain continued research and development within the AI domain.

In essence, the assimilation of AI into the fabric of patent law transcends the confines of legal norms; it constitutes a pivotal stride toward ensuring that the dividends of AI innovation are realized, while concurrently fostering a milieu that is equitable, competitive, and conducive to innovation, whether it emanates from human or artificial origins. As the global community contends with these intricate challenges, achieving a nuanced equilibrium stands imperative—one that not only catalyses innovation but also safeguards intellectual property and ensures equitable access to the advances ushered in by the era of artificial intelligence.

The opinions expressed in the Blog are personal to the author/writer. The University does not subscribe to the views expressed in the article / blog and does not take any responsibility for the same.

Comments on The Draft Patents (Amendment) Rules, 2023

1. Submission of Information Regarding Foreign Patent Applications

Context: In India patent applicants are required to submit information regarding foreign patent applications in respect of the same or substantially the same invention at the time of filling of a patent application in India and thereafter under Section 8 of the Patents Act, 1970. Section 8(1) imposes a duty on patent applicants to submit a statement^[1] setting out detailed particulars of such foreign patent applications and an undertaking^[2] to keep the Controller informed of detailed particulars of any other foreign patent application filed subsequently to the filing of the statement. As per clause 1A of Rule 12 of the Patents Rules, 2003, patent applicants must file the statement and undertaking within six months from the date of filling the application in India. Clause 2 of Rule 12 prescribes a time of six months within which the applicant needs to inform the Controller of detailed particulars of foreign patent applications filed subsequent to filing of the statement. This time limit of six months under Clause 2 of Rule 12 is reckoned from the date of filing of the foreign patent application.

Proposed Amendment: The draft Patents (Amendment) Rules, 2023 proposes to amend Clause 2 of the Rule 12 by changing point in time from where the time limit to file the detailed particulars is calculated. Under existing Clause 2 of the Rule 12 this time limit is six months from the date of filing of foreign patent application and under proposed amendment it is two months from the date of issuance of first statement of objections. Further, the draft rules also propose to substitute Clause 3 with new Clause 3, 4 and 5. Under existing Clause 3, the Controller may ask the applicant to furnish information relating to objections to the invention and other information including claims of the application. The proposed amendment to Clause 3 now requires the Controller to consider the information relating to processing of the application in a country outside India that is accessible using public databases.

Comments: The proposed amendment to Clause 2 includes two significant changes. First, it reduces the time limit to file the detailed particulars from six months to two months. This amendment appears to be a step taken towards expedited processing of patent applications which is a commendable step, although it gives patent applicants shorter time to submit required information. Second, it changes the starting point of the time limit to file the detailed particulars required under Section 8(1)(b) of the Patents Act, 1970. Under the proposed amendment an applicant is required to file the detailed particulars after issuance of first statement of objections. Some^[3] have raised concerns that the proposed amendment does not make it clear to which first statement of objections it is referring whether it is issued by a concerned foreign patent office or Indian patent office. According to us it would serve no purpose to link submission of information of foreign patent filings to issuance of statement of objections by the Indian Patent Office. In fact, information regarding foreign fillings would be useful for Indian patent examiners if the information is received by the examiner before the statement of objection/First Examination Report is issued in India. In the existing Clause 2, the applicant is required to submit the detailed particulars within six months from the date of filing of foreign patent application. Thus, it would be appropriate to refer to the term as ‘first statement of objections’ issued by the foreign patent office.

An alternative suggestion for amending the Clause 2 is to not restrict filing of detailed particulars from the date of issuance of first statement of objections. Instead, the Clause 2 could be amended as follows-

“(2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be two months from the date of publications of such other applications.”

The above suggested amendment can be supported by several reasons. The provision for submission of information regarding foreign patent applications was inserted at a time when the Indian patent office lacked resources to search and examine patent applications such as access to foreign patent specifications to assess novelty. It was suggested that patent applicants who are foreign nationals should be asked to submit information regarding any patent application made for the same or substantially the same invention as in India in any foreign country.^[4] Such information may include objections raised by foreign patent offices which would be advantageous to the Indian patent office. It must be noted that not all patent applications filed may be relevant for the Indian patent office. Generally patent applications are published after expiry of eighteen months from the date of filing of the patent application. During this eighteen-month period, patent offices are required to maintain secrecy of patent applications. It is only after a patent application is published patent offices and third parties can raise objections against the grant of patent. In some jurisdictions, such as the United Kingdom, after publication a patent application can face preliminary objections before it goes into substantive examination by a patent examiner. Also, it is possible that a patent application may face objections from third parties, on procedural or substantive grounds, even before a patent examiner examines it. Therefore, the detailed particulars of foreign patent applications with all information since the date of publication of such applications can assist Indian patent office in better examination of patent applications. Also, such implementation of Section 8 requirement is supported by the legislative intent behind the provision as discussed above. Further, the above suggested amendment will also filter those patent applications which an applicant after filing a patent application thought of not prosecuting further. Such applications may be withdrawn or abandoned applications without publication. Information related to such applications will not be relevant for IPO because such applications will not constitute prior art therefore there is no logic in asking for information regarding such applications from the date of filling of application because it will not hinge on criteria of patentability. Further, Section 13 deals with the manner in which the examiner needs to investigate whether a claimed invention has been anticipated. It emphasizes on anticipation by publication not on filing of the patent application. Further, obligations under international treaties should be taken into account. Article 4D(3) of the Paris Convention allows for seeking information regarding foreign patent filings where applicants claim priority in relation to foreign patent applications and only in such cases national patent offices can ask for information regarding foreign patent filings from the date of filing of the patent application. In other cases where no priority is claimed or where priority is not in issue, the applications would be governed by Article 29.2 of TRIPS which clearly states that national patent offices can ask for information concerning the applicant’s corresponding foreign applications and grants. The drafters of the Art. 29.2 did not use the term ‘from the date of filling’ which signifies that only those patent applications’ information which have been published including abandoned, rejected or granted can be asked by national offices.

Some^[5] have raised concerns about proposed amendments to Clause 3 of Rule 12 that the Clause as existing is interpreted by the Controller to ask the applicant to submit examination reports of foreign patent offices but under the proposed amendment, the Controller cannot seek such reports from patent applicants. In this regard it must be noted that Section 12 of the Patents Act, 1970 puts a burden on the examiner to assess whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made thereunder. Therefore, it is upon the examiner to make sure that the application fulfills the requirements. In this sense, the proposed amendment rightly imposes a duty on the Controller to consider the information relating to processing of the application in a country outside India that is accessible using public databases.

2. Filing of Divisional Applications

Context: Section 16 of the Patents Act, 1970 deals with divisional patent applications carved out of a parent patent application. There are two situations in which divisional patent applications can arise. First, a patent applicant voluntarily can file a further/divisional application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the parent patent application. Second, if the Controller objects that the claims of the complete specification relate to more than one invention then to remedy the objection a divisional application can be filed.

Proposed Amendments: The draft Patents (Amendment) Rules, 2023 proposes to insert a new sub-rule 2A in Rule 13 of the Patents Rules, 2003. This proposed sub-rule clarifies that a patent applicant if he so desires can also file a divisional application under Section 16 of the Act in respect an invention disclosed in the provisional specification.

Comments:

Section 16 (1) itself provides that a further/divisional application can be filed in respect of an invention disclosed in the provisional or complete specification already filed with respect to the first or parent patent application. The proposed amendment is merely a clarificatory note as the proposed change is already addressed by Section 16(1) and the proposed amendment has been validated by a recent decision of the Division bench of Delhi High Court.^[6]

However, there are certain concerns^[7] that filing of divisional applications voluntarily can be misused by patent applicants. It is desirable to regulate such filing of divisional applications by putting some conditions on such applications. The addition of conditions to voluntary division of patent applications is also consistent with India’s obligation under international treaties. Article 4G(2) of the Paris Convention provides that a country of the Union shall have the right to determine the conditions under which voluntary division of patent applications shall be authorized. One of such conditions can be a time framework to file voluntary divisional applications should be prescribed. In the European Union a divisional application can only be filed if the parent application is pending. Also, a divisional application must be filed by the applicant who is identical to the applicant for the parent patent application. Similarly, more such conditions can be taken from other jurisdictions such as Australia.^[8]

It is also suggested to amend sub-rule 2 of the Rule 13 to make it in consonance with Section 16(2) of the Patents Act, 1970. Section 16(2) of the Act requires that divisional or further applications under Section 16(1) shall be accompanied by a complete specification. The sub-rule 2 of the Rule 13 as in its current form reads as “(2) A Specification in respect of a divisional application under section 16 shall contain specific reference to …”. It is not clear whether a specification to accompany the divisional application should be a provisional or complete specification. As per Ayyangar Committee report^[9] and Section 16(2) of the Act only complete specification should be allowed in respect of divisional applications. Therefore, it is suggested that word ‘specification’ in sub-rule 2 of the Rule 13 be substituted by ‘complete specification’ to remove any ambiguity that may arise on interpretation of the sub-rule 2.

3. Pre-Grant Opposition: Maintainability and Other Issues

Context: Under the Patents Act, 1970 granted patents can be opposed via post-grant opposition mechanism. In addition to post-grant opposition, it also provides a pre-grant opposition mechanism which allows any person to file opposition against the grant of patent. Prior to 2005, pre-grant opposition could be filed only within four months from the date of acceptance of a complete specification. The 2005 amendment to Indian patent law extended the window to file pre-grant oppositions and now, any person can file a pre-grant opposition at any time after the patent application has been published by Indian Patent Office but before the grant of patent. There is no time limit within which the IPO needs to dispose of pre-grant oppositions. These opposition mechanisms are considered adversarial in nature requiring due compliance with principles of natural justice by IPO just like courts in India do. In practical terms and noted by several committees[10] and reports^[11], opposition mechanisms equipped with certain features of court proceedings delay the grant of patent due to time to be given to such proceedings and add on if opponents resort to dilatory tactics, then the process of patent grant can last longer. Recently, a division bench of Bombay High Court^[12] emphasized that the purpose of pre-grant opposition is to assist IPO in assessing patentability of patent applications, but it must not be abused. The court noted that there are cases of patent applications pending for eighteen years due to several reasons including Benami or frivolous pre-grant oppositions filed to prevent grant of certain patents. As a deterrence to such opponents from abusing the pre-grant opposition mechanism, the Court suggested imposing cost on them.

Proposed Amendments: The draft Patents (Amendment) Rules, 2023 proposes to amend sub-rule 3 of Rule 55 of the Patents Rules, 2003. As per existing sub-rule 3, once a request for examination of a patent application has been made the Controller is required to consider representation for opposition if any filed against the patent application. The draft amendment rules propose that before considering a representation the Controller should decide if the representation for opposition is maintainable or not. Further, it is proposed to amend sub-rule 4 of Rule 55 which currently provides for a time limit of three months to file reply to the notice issued by the Controller after considering the pre-grant opposition. This time limit now is proposed to be reduced to two months.

The draft amendment rules also propose to add three new rules (6), (7) and (8) to Rule 55. The proposed sub-rule 6 provides for a time limit within which the Controller needs to take a decision after completion of pre-grant opposition proceedings. The proposed sub-rule 7 makes procedure related to hearing of parties applicable to pre-grant opposition. The proposed sub-rule 8 provides for expedite examination of a patent application against which a representation for opposition is filed and found to be maintainable.

Comments:

1. Maintainability of Representation for Opposition

The proposed amendment of sub-rule 3 of Rule 55 is a welcome step. It may contribute to reducing the time taken in processing of patent applications particularly in respect of those patent applications which are subjected to pre-grant oppositions. The pre-grant opposition by its inherent nature and further development of its judicial nature by courts is observed to cause delay in processing of patent applications. The requirement of maintainability will enable the Indian Patent Office to filter out those representations for opposition which for example are barred by any law, are repetitive or are barred by time limit etc. The courts have emphasized on considering maintainability of suits to avoid long delays in disposal of disputes. It is a rite of passage before a matter can be decided on merits.^[13] While processing patent applications the Indian Patent Office is acting as a quasi-judicial body^[14] and maintainability issues such as principle of res sub judicata is also applicable to quasi-judicial proceedings.^[15] Thus in view of above the proposed amendment of the sub-rule 3 is in consonance with courts in India.

Some concerns^[16] have been raised regarding grounds on which the issue of maintainability will be decided by the Controller. It needs to be understood that while deciding the issue of maintainability the Controller is not touching upon the substantive grounds of pre-grant opposition mentioned under Section 25(1) of the Patents Act, 1970. Therefore, representations for oppositions which are worthy of being considered on the principle of maintainability shall be eligible for further consideration by the Controller. The maintainability of representation for opposition can be checked on several grounds such as if the representation is barred by time limit or is repetitive. There are some decisions of High Courts^[17] deciding maintainability of pre-grant oppositions in particular situations which can guide the Controller. It is suggested that the Manual of Patent Office should clearly define grounds on which the issue of maintainability can be raised by the Controller.

2. New Sub-Rules

The proposed amendment to the Rule 55 also includes insertion of new sub-rules 6,7 and 8. The proposed sub-rules 7 and 8 are welcomed steps towards attempts to reduce delay in processing of patent applications and make the pre-grant opposition procedure more transparent and fair. However, it is suggested that insertion of the proposed sub-rule 6 is substantially a repetition of sub-rule 5. Both sub-rules are similar with regard to the purpose they serve. The only difference between sub-rule 5 and the proposed sub-rule 6 is that the proposed sub-rule 6 provides for a time limit of three months within which the Controller needs to take a decision on the patent application and the representation after completion of pre-grant opposition proceedings whereas under the existing sub-rule 5 this time limit is of one month. In fact, the existing sub-rule 5 is as good as the proposed sub-rule 6. Therefore, it is suggested that instead of introducing the proposed sub-rule 6 to Rule 55, the existing sub-rule 5 of Rule 55 should be amended by changing the time limit within which the Controller needs to decide on the patent application and the representation. Currently as noted above this time limit is one month. This time limit can be changed to three months as proposed by the draft rules. The proposed amendment to extend the timeline to decide on the representation and the patent application is a welcome step. It will expand the time window to file pre-grant opposition between completion of pre-grant proceedings and release of the decision by the Controller. Thus, more pre-grant oppositions which are maintainable under Rule 55(3) could be filed.

4. Statements Regarding Working of Patented Inventions

Context: Section 146 of the Patents Act, 1970 gives powers to the Controller to call for information or statements regarding working of patented inventions from patentees. At any time during the continuance of the patent the Controller has discretionary power to ask a patentee or a licensee to furnish information or periodical statements about the extent to which the patented invention has been commercially worked in India.^[18] In addition to this a patentee has a duty to furnish statements at regular intervals as to the extent to which the patented invention has been worked on a commercial scale in a prescribed format and duration.^[19] Rule 131 of the Patents Rules, 2003 prescribes the manner in which a patentee needs to submit statements required under the section 146(2). As of now under sub-rule (2) of the Rule 131, after the grant of patent a patentee is required to annually submit statements regarding working of the patented invention in Form 27 as described in the Second Schedule. Form 27 seeks from a patentee or its licensee details such as whether the patented invention has been worked or not, how it is worked through manufacturing or importation in India, reasons for not working the patented invention and steps taken for working of the invention etc.

Proposed Amendments: The draft Patents (Amendment) Rules, 2023 proposes to amend sub-rule (2) of Rule 131 of the Patents Rules, 2003. Currently under the sub-rule (2) a patentee needs to submit statements regarding working of the patented invention every financial year. Under the proposed draft amendment Rules a patentee is required to submit the statements once in every period of three financial years, starting from the financial year commencing immediately after the financial year in which the patent was granted. Also, the proposed amendment provides for condonation of delay in filing of such statements by a patentee or its licensee.

There is also a proposal to amend Form 27 under which a patentee or its licensee only need to inform whether the patented invention has been worked or not. The particulars regarding how the patented invention is worked and reasons for not working have been removed from the Form. Further a clarificatory note has been added at the bottom of the Form which states that a patented invention shall not be considered as ‘not worked’ merely on the ground that the patented product has been imported in India.

Comments:

1. Working of Patented Inventions

Section 83 of the Patents Act, 1970 sets out general principles applicable to working of patented inventions. These principles are without prejudice to other provisions of the act therefore other provisions of the act prevails over these principles in case there is a conflict between any other provision of the Act and Section 83. However, if there is no such conflict, the principles must be given due consideration by the Controller while dealing with an application for compulsory license or revocation on the ground of non-working of the patented invention. One such principle as laid down in Section 83(b) is that patents should not be granted merely to enable patentees to enjoy a monopoly for the importation of the patented article. This principle has been interpreted by the erstwhile Intellectual Property Appellate Board and courts in India to decide whether importation of a patented product can be considered as a part of working. The Bombay High Court’s division bench in an appeal upholding the order of IPAB^[20] ruled that whether a patented invention is being worked in India has to be decided as per the legislative guidelines mentioned in Section 83 of the Act. With emphasis on Form 27 and other provisions of the Act the court was of view that a patented invention can be worked in India either through manufacturing or importation.^[21] However, Section 83(b) requires a patentee to put some effort into manufacture in India and if it is not possible to manufacture then the patent holder is required to establish reasons which makes manufacturing impossible or prohibitive in India. If the authorities are satisfied with the reasons, then in such cases importation of patented products can be considered as working in India.

The proposed amendments to Form 27 prescribes that a patented invention cannot be considered not worked merely because it is imported and removes particulars from Form 27 which requires details as to how the patented invention is worked whether through manufacturing or importation. There would be two possible implications of these amendments. First, that mere importation of patented products would suffice to the requirement of working unless otherwise established. Second, that a patentee or licensee does not have to establish reasons which makes manufacturing impossible or prohibitive in India. Such implementation of the requirement of working would be contrary to Section 83(b) of the Patents Act, 1970 and rulings of IPAB and Bombay High Court. The proposed amendments to Form 27 can be justified only if Section 83 (b) of the Act is amended through Parliament which has not been done so far. In view of above it is suggested that the proposed Note 2 in Form 27 can be inserted on this basis of IPAB and Bombay High Court ruling in following manner:

The word ‘worked’ has a flexible meaning. The ‘working’ could mean local manufacture entirely and ‘working’ in some cases could mean only importation. It would depend on the facts and evidence of each case. The patentee must show why it could not be locally manufactured.

2. Submission of Statements Regarding Working of Patented Inventions

As noted above under the proposed draft amendment Rules a patentee is required to submit the statements once in every period of three financial years instead of every financial year. It is a welcome step to lessen the administrative burden of the Indian Patent Office and patentees. Certain concerns have been raised that while dealing with compulsory licensing or revocation applications on the ground of non-working and not meeting reasonable requirements of the public, the Controller may need information regarding price, manner of working the patented inventions. The Controller whenever required can ask for such information from patentees or licensees by exercising the power under Section 146 of the Act.

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^[*] Submission made by Dr. Yogesh Pai, In-Charge DPIIT IPR Chair, National Law University, Delhi and Mr. Virender Chandel, Research Assistant, DPIIT IPR Chair, National Law University, Delhi

^[1] Section 8(1)(a) of the Patents Act, 1970

^[2] Section 8(1)(b) of the Patents Act, 1970

^[3] Swaraj Paul and Praharsh Gour, Comments on the Draft Patent (Amendment) Rules, 2023 (SpicyIP Sep 2023) Available at

<https://spicyip.com/wp-content/uploads/2023/09/220923-Draft_Comments_Patent_Amendment_Rules_2023_SPB_PG_TK_Submission_final-1.pdf>

^[4] Report- Committee on the Revision of Patent Law, 1957 (Sep, 1959) at para 350.

^[5] Prashant Reddy, A ‘Captured’ Patent Office, The India Forum (Oct. 12, 2003) Available at

< https://www.theindiaforum.in/law/captured-patent-office&gt;

^[6] Syngenta Limited v. Controller of Patents and Designs C.A.(COMM.IPD-PAT) 471/2022 Dated 25th Sep 2023

^[7] Swaraj Paul and Praharsh Gour, Draft Patent Amendments Rules- Increasing Efficiency of Granting Patent Monopolies While Forgetting the Reason for Allowing Them in the First Place (Spicyip 15 Sep 2023) Available at <https://spicyip.com/2023/09/draft-patent-amendment-rules-increasing-efficiency-of-granting-patent-monopolies-while-forgetting-the-reason-for-allowing-them-in-the-first-place.html>

^[8] Chapter 6A of Patents Act, 1990

^[9] Committee on the Revision of Patent Law, 1957 at para 388.

[10] Committee on the Revision of Patent Law, 1957 at para 213.

^[11] Report- Patent Opposition System Jan. 6, 2023 (Hidayatullah National Law University, Raipur) Available at < https://hnlu.ac.in/wp-content/uploads/2023/01/Patent-Opposition-System-Report.pdf&gt;

^[12] Dhaval Diyora v. Union of India 2020 SCC OnLine Bom 2550

^[13] S. Narahari v. S. R. Kumar Supreme Court of India (Diary No. 23775 of 2022)

^[14] Indian Network for People Living with HIV/AIDS v. Union of India Writ Petition No. 24904 of 2008 Madras HC; Synthes Gmbh v. Controller General of Patents C.A. (COMM.IPD-PAT) 88/2022 Delhi HC (May 12, 2023); Indian National Congress v. Institute of Social Welfare AIR 2002 SC 2158; Intellectual Property Appellate Board v. Union of India W.P.(C) No. 3679/2014 & CM No. 7455/2014 Delhi High Court (Oct 9, 2014)

^[15] Abdul Kuddus v. Union of India 2019 SCC OnLine SC 733; Sulochana Amma v. Narayanan Nair 1994 SCC (2) 14

^[16] Indian Drug Manufacturers Association, Objections/Suggestions on The Draft Patents (Amendments) Rules, 2023 Available at

<https://spicyip.com/wp-content/uploads/2023/10/IDMA_objections_on_Draft_Patent_Amendment_rules-1.pdf&gt;

^[17] Dhaval Diyora v. Union of India 2020 SCC OnLine Bom 2550; Pfizer Products v. Controller of Patents and Designs 2020 SCC OnLine IPAB 19; Snehlata Gupte v. Union of India (Division Bench of Delhi High Court)

^[18] Section 146(1) of the Patents Act, 1970

^[19] Section 146(2) of the Patents Act, 1970

^[20] Bayer Corporation v. Union of India (IPAB) OA/35/2012/PT/MUM March 4, 2013

^[21] Bayer Corporation v. Union of India AIR 2014 Bom 178 at para 15

AI Artworks: Copyright Infringement or Creative Innovation in India?

By L. Anisha

Anisha is a student at Hidayatullah National Law University, Raipur.  This piece is one of the winning entries from the Copyright Law Blog Writing Competition, 2023.

“One of the most inspiring aspects of AI art generation is that the software can learn from old images and breathe new life into classics.”

Electra Nandu[1]

“AI image generators are 21st-century collage tools that violate the rights of millions of artists.”

Class Action Complaint against Stability Diffusion[2]

Artificial Intelligence (“AI”) image generators are experiencing a remarkable boom with their ability to create stunning and realistic visuals. These models generate artworks after receiving training from millions of pictures gathered from the web. Sometimes, the developers do not obtain proper consent from the copyright owners.[3] Recently, a class-action lawsuit was filed by a trio of artists against popular AI Image Generators like Midjourney, DeviantArt and Stability AI for infringing their copyright.[4]

AI is constantly evolving and pushing the boundaries of Copyright Law. From the Indian copyright infringement perspective, two major questions arise with respect to AI Image Generators: (1) Whether images generated by AI infringe on existing copyrights? (2) Whether accessing, analysing, reading and mining of data to train AI constitute copyright infringement?

AI Artworks: Navigating the Copyright Minefield

Popular AI generators like DALL E, Midjourney etc., use the diffusion model for creating images. These models take an image and corrupt it by adding noise such that it is no longer  recognisable. The learning process takes place when the AI figures out how to reconstruct the original image by reversing the corruption process.[5] (Exhibit I).

Establishing infringement is complex when AI is involved as it generates art which is similar, but not identical to the copyrighted work. However, just similarity is not enough to prove infringement as it might be mere coincidence or works being derived from common sources.[6]

In order to establish copyright infringement in AI artworks, three ingredients need to be established as per Indian law:

1. The existence of similar work protected under copyright
2. The infringing act is touching upon the exclusivity granted by copyright
3. The act is “actually infringing” in nature[7]

If the defendant makes use of a substantial portion of the features in a copyrighted work, he is unlawfully exercising the sole right conferred only upon the plaintiff.[8] To satisfy the substantial similarity test, some part of the output should resemble the input. However, with billions of input data, chances are that there might not even be a trace of copyrighted work in the output. AI Image Generators do not merely ‘cut and paste’ existing images to create artwork. Exact replication of input data is rare considering the huge amounts of training datasets fed to AI.  The odds of such an occurrence are merely 1.88%, as reported by a study.[9]

AI Image Generators have also become adept at producing artwork “in the style of” a certain artist. However, as per the Supreme Court in R.G. Anand v. M/S Deluxe Films[10], copyright owner has no locus standi to sue the defendant in such instances as artistic styles are not copyrightable. Only expressions of ideas are copyrightable.

Although AI outputs can escape infringement to some extent, the same cannot be assured for data mining activities to train AI.

AI Training Data: Walking The Tightrope of Copyright Infringement

Admittedly, when large amount of data is accessed, analysed and mined for the purposes of training AI, some amount of copyright infringement is bound to occur. In India, Section 14 of the Copyright Act, 1957 grants exclusive rights to copyright owners to reproduce, issue copies, make translations, adaptations etc. of the work. Section 14 is compromised unless such use of data is covered by exceptions to escape infringement allegations.

At the same time, Section 52 of the Copyright Act, 1957 lists out certain acts that do not constitute infringement. If the work is used for “private or personal use, criticism or reporting of current events,” it comes under fair dealing and there is no infringement. The Delhi High Court, in a case, analysed both fair use as prevalent in the US and fair dealing doctrine in India. Ultimately, both the doctrines were used interchangeably in the judgement as they were conceptually similar.  So, in case of AI art, the legal validity of training data is judged using fair use parameters which constitutes:

1. “The purpose and character of Use
2. The nature of the copyrighted work
3. The substantiality of the portion used in relation to the copyrighted work as a whole
4. The effect on the potential market for or value of the copyrighted work”

The Delhi High court emphasised on the first factor. If the character of the work is transformative i.e., the work is not merely a substitute but materially different from the original work, then it is fair use and it is immaterial if the copying is substantial.[11]

The character of human generated art is fundamentally different from AI generated art. Art is a medium of communication for artists. While humans create art to express, AI uses digitized art to train its algorithm. The character is certainly transformative in nature.

Similarly, the fourth parameter i.e., the effect on potential market is minimized if the work is transformative and not merely a substitute. Most buyers will prefer the original artwork of a renowned artist instead of opting for a computer-generated version. In this scenario, market is not affected.

But, the fourth factor is likely to be against AI as it has potential to create market disruptions especially if the buyers are price sensitive. Art created by humans will be priced comparatively higher to account for the time and effort consumed by the process. In such an event, buyers will prefer AI artworks due to cheap prices. Moreover, AI has become an expert in replicating the style of artists in an inexpensive manner. While popular artists might escape the danger, small scale artists are at risk of substitution. The legal loophole that styles are not copyrightable will certainly cause disruptions in the market in the future.[12]

Final Thoughts: Harmonizing the Pros and Cons

Technological revolutions have always been met with legal strife. It pushes the law to constantly evolve. The current legal position regarding AI outputs is in technology’s favour. It is difficult to identify copyright infringement when the AI generates an entirely new image based on billions of training data. Although replication rates are low, they are not zero. Therefore, it is imperative for developers to take steps to thwart copyright infringement. They must consider using reverse image tools on outputs to determine substantial similarity to existing works. In such a scenario, alternative images must be generated.

Regarding AI inputs, developers are using various arguments to satisfy the four-factor test in the fair use doctrine. Some of these arguments seem valid only because AI Image Generators are at their infancy. While they are transformative, their nature of use might be non-commercial only in the initial stages. Platforms like Dall-E and Midjourney have already begun rolling out subscription models.[13] If these businesses choose to commercialise their platforms in the future, it will weigh against fair use. It is also too early to determine AI’s effect in the potential market. It is currently not disruptive but, in the future, it might undermine the jobs of millions of artists.

So, to answer the question whether AI Artworks are copyright infringement or creative innovation – they are both. While AI outputs fall in the realm of creative innovation, AI inputs are walking a tightrope bordering on copyright infringement.

India’s 1957 legislation is doing a remarkable job in applying traditional copyright concepts to AI developments. However, it is time for the law to evolve. AI is here to stay. The law must seek innovative solutions to legitimise Text and Data Mining (TDM) activities to train AI and balance the rights of copyright holders instead of holding TDM activities as infringing altogether.

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[1] Electra Nanou, The Ethical Pros and Cons of AI Art Generation, MakeUseOf (Jan. 18, 2023) https://www.makeuseof.com/ai-art-generation-ethical-pros-cons/. (last visited June 27, 2023).

[2] Stable Diffusion Litigation, https://stablediffusionlitigation.com/ (last visited June 20, 2023).

[3] Gil Appel and others, Generative AI Has an Intellectual Property Problem, Harvard Business Review (Apr. 7, 2023), https://hbr.org/2023/04/generative-ai-has-an-intellectual-property-problem (last visited June 23, 2023).

[4] Supra note 2,

[5] Andres Guadamuz, A Scanner Darkly: Copyright Liability and Exceptions in Artificial Intelligence Inputs and Outputs, SSRN (Feb. 26, 2023), https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4371204 (last visited July 3, 2023).

[6] R.G. Anand v. M/S Deluxe Films, 1978 AIR 1613.

[7] Adarsh Ramanujan and others, Infringement Analysis in Copyright Law, Lakshmikumaran & Sridharan Newsroom (Aug. 10, 2011), https://www.lakshmisri.com/newsroom/archives/Infringement-Analysis-in-Copyright-Law# (last visited July 1, 2023).

[8] Mohini Mohan Singh v. Sita Nath Basakm, AIR 1931 Cal 233.

[9] Supra note 7.

[10] 1978 AIR 1613.

[11] The Chancellor Masters and Scholars of the University of Oxford v. Narendra Publishing House, CS(OS) 2439/2012.

[12] Jessica Gillotte, Copyright Infringement in AI-Generated Artworks, 53(5) UC Davis Law Review (Aug. 20, 2020), https://lawreview.law.ucdavis.edu/issues/53/5/notes/files/53-5_Gillotte.pdf.

[13] Cala Coffman, Does the Use of Copyrighted Works to Train AI Qualify as Fair Use?, Copyright Alliance (Apr. 11, 2023), https://copyrightalliance.org/copyrighted-works-training-ai-fair-use/ (last visited July 2, 2023).

Dynamic Injunctions: Confronting Copyright Infringement with Evolving Legal Fortresses

By Tarang Arora

Tarang is a student at Maharashtra National Law University Nagpur.  This piece is one of the winning entries from the Copyright Law Blog Writing Competition, 2023.

Introduction

In the realm of legal battles against copyright infringement, the concept of “whack-a-mole” emerges from the depths of arcade nostalgia, where players wield a mallet to thwart toy moles that capriciously emerge from various holes. Metaphorically, it symbolizes the ceaseless and wearisome struggle against a persistent problem that resurfaces with shapeshifting resilience. This becomes especially pertinent when injunction orders are issued, attempting to quell the infringement. Yet, like elusive phantoms, targeted websites evade the court’s grasp by employing cunning strategies—redirecting, exploiting mirror sites, or adopting enigmatic alphanumeric URLs. Frustratingly, the initial injunction order applies solely to the original site, leaving the mirror reflections and transformed digital paths untouched. This creates an exasperating cycle of copyright infringement suit, wasting valuable resources.[1]

To confront this maddening conundrum, the Indian judiciary has pioneered a groundbreaking solution: dynamic injunctions.[2] Empowering rights-holders, dynamic injunctions enable them to seek swift judicial intervention, expanding the scope of the primary injunction to encompass all mirror websites facilitating access to the same infringing online domains. This measure ensures that when the initial website resurfaces promptly after being subjected to an injunction, it confronts an extended fortress of legal shield. Henceforth, the author endeavours to expound upon the evolutionary trajectory of dynamic injunctions, shedding light on their inherent limitations, while simultaneously charting a course towards progress and innovation. Finally, the narrative will converge towards a compelling denouement, crafting a conclusion that encapsulates the core essence of the subject matter at hand.

Trajectory of dynamic injunctions

In the annals of legal jurisprudence, the concept of dynamic injunctions found its genesis in the seminal pronouncement of the esteemed Court of Justice for the European Union (CJEU) in the consequential case of L ‘Ordal v. eBay.[3] With resolute determination, the CJEU elucidated the hallowed authority of Member State courts, mandating them not only to curb ongoing infringements but also to vigilantly forestall future transgressions within the realm of online marketplaces. This resounding judicial decree resonated with the venerable Delhi High Court, which, in its pursuit of justice and the safeguarding of innocent victims, took inspiration from the illustrious decision rendered by the esteemed Singapore Court in Disney Enterprise v. M1 Ltd.[4] Building upon this strong judicial foundation, the Delhi High Court unveiled a transformative remedy: the dynamic injunction.

Under the mantle of this revolutionary legal recourse, the aggrieved plaintiffs were accorded an extraordinary prerogative—a direct approach to the Joint Registrar to extend an extant injunction against the websites. This unique provision assumed utmost significance when perpetrators, resorting to artifice and subterfuge, erected mirror, alphanumeric, or redirect websites in a brazen attempt to elude the grip of justice.[5] Importantly, the High Court explicitly delineated the purview of dynamic injunctions, restricting their application solely to the sinister breed of “hydra-headed” or “rogue” websites that materialized with the sole purpose of circumventing legal restraints. To fortify the process (under Order 1 Rule 10 of the Code of Civil Procedure, 1908) the Court mandated the submission of a compelling affidavit, replete with substantive evidentiary proof, convincingly establishing the impleaded website’s nature as a mirror, redirect, or alphanumeric entity.[6] Once satisfied with the veracity of the evidence, the registrar swiftly issued directions to Internet Service Providers (ISPs), commanding the expeditious removal of access to such nefarious domains.[7]

The statutory authority empowering the courts to dispense dynamic injunctions emanates from the hallowed precincts of Section 151[8] of the Code of Civil Procedure, 1908, which confers upon them the plenary power to issue necessary orders for the just administration of justice and the prevention of the abuse of court processes.[9] Nevertheless, it is incumbent upon the discerning legal fraternity to acknowledge the lacuna in specific legislative provisions regulating the terrain of dynamic injunctions. As the age-old adage cautions, “Every coin has two sides,” and the advent of dynamic injunctions brings forth a confluence of opportunities and challenges, necessitating profound ruminations and meticulous deliberations within the labyrinthine corridors of the legal domain.

Challenges of Dynamic Injunctions

In the UTV Software case[10], defendant websites were branded “rogue” for omitting authentic contact details, impeding their legal recognition. Yet, this judgment rested solely on the copyright owner’s claim, lacking fair verification. These circumstances stir apprehension of bias against website operators and the erosion of principles of justice. Relying solely on the copyright owner’s claim can cripple a law-abiding website, even with new domains. The Joint Registrar’s authority to disable access creates this quandary. Website operators are left with no option but arduous court appeals, burdened by the high costs of legal representation.[11]

Another challenge stems from the absence of an effective mechanism to communicate blocking orders to affected parties. In the absence of proper channels for dissemination, affected parties may remain unaware of the blocking order within a reasonable timeframe, potentially compromising their rights. This concern is further amplified by the limited 15-day period allocated for appeals against such orders.[12]

Furthermore, in the recent Applause Entertainment Pvt. Ltd. v. Meta Platforms Inc.[13] case, heard by the Bombay High Court, a dynamic injunction order was issued against a social media handle. However, the Delhi High Court’s concept of a “rogue website” and its corresponding indicators, as delineated in the UTV v. 1337x. to case, did not explicitly address their applicability to social media handles. Similarly, the Bombay High Court’s concerns regarding the emergence of other “rogue handles” raise significant questions about the consistent and equitable application of indicators pertaining to rogue websites to social media platforms.[14]

Way forward

In response to the intrinsic imbalances that pervade website blocking injunctions, a compelling solution emerges: the establishment of a neutral verification agency and ombudsman (NVAO) or Check and Verification Method (CVM), enjoying esteemed backing from influential voices such as Prof. Shamnad Basheer and Kian Ganz.[15] Operating as an impartial third-party entity, the NVAO would consist of a diverse assembly of stakeholders, wholeheartedly dedicated to assisting courts in the resolution of disputes involving copyright owners, online intermediaries, and website operators.[16]

At the heart of the NVAO’s mandate lies the validation of copyright ownership and the scrupulous scrutiny of alleged instances of copyright infringement. Furthermore, the NVAO assumes a pivotal role in verifying the plaintiff’s assertions pertaining to the identity of website operators, thus ensuring that website blocking injunctions exclusively target the rogue websites. In order to engender transparency across the entire process, the NVAO could actively disclose an all-inclusive roster of blocked websites in public forums.[17]

Notably, the universal implementation of the Bombay High Court’s ruling in Eros International[18] holds great promise. This ruling mandates Internet Service Providers (ISPs) to present “special default error pages” incorporating pivotal provisions of the Copyright Act, comprehensive details of the lawsuit and blocking order, and elucidative information pertaining to avenues of recourse against the blocking order. By effectively addressing the challenges associated with disseminating precise particulars of website blocking orders to the public, this measure serves as a significant stride forward.[19]

Conclusion

In the enthralling saga of combating copyright infringement, the emergence of dynamic injunctions has injected a potent force. Yet, challenges loom, demanding ingenious solutions. Enter the captivating prospect of a neutral verification agency, an impartial arbiter wielding the sword of transparency. Coupled with the transformative power of the Eros International ruling, this harmonious symphony of fairness and efficiency orchestrates a harmonious resolution. With the scales finely balanced between the rights of creators and the operators of digital domains, this captivating narrative unveils a captivating chapter of innovation and progress. Together, we unlock the doors to a future where resurfacing infringement meets its match.

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[1] David Lindsay, Website Blocking Injunctions to Prevent Copyright Infringement: Proportionality and Effectiveness, 40 U.N.S.W. L.J. 1507 (2017).

[2] Pratik P. Dixit, Dynamic Injunctions against Internet Intermediaries: An Overview of Emerging Trends in India and Singapore, 23 J. WORLD INTELL. PROP. 65 (2020).

[3] L’Oreal SA Ltd. v. eBay International AG, Case C-324/09, EU:C:2011:474.

[4] Disney Enters. v. M1 Ltd., [2018] SGHC 206.

[5] David Tan & Susanna Hs Leong, Intellectual Property Law, in 19 SAL Ann. Rev. 586 (2018).

[6] Ibid.

[7] Supra 2.

[8] Code of Civil Procedure, § 151 (1908).

[9] Pranay Bali & Nayantara Malhotra, To Block or Not to Block? Analysing the Efficacy of Website Blocking Orders and Dynamic Injunctions in Combating Digital Piracy, 11 INDIAN J. INTELL. PROP. L. 179 (2020).

[10] UTV Software Commc’ns Ltd. v. 1337x.to, 2019 SCC OnLine Del 8002.

[11] Ibid.

[12] Supra 1.

[13] Applause Entm’t Pvt. Ltd. v. Meta Platforms Inc., 2023 SCC OnLine Bom 1034.

[14] Kaleda, S. L. The Role of the Principle of Effective Judicial Protection in Relation to Website Blocking Injunctions, 8 J. Intell. Prop., Info. Tech. & E-Comm. L. (JIPITEC) 216 (2017).

[15] Lokesh Vyas & Anuj Bajaj, John Doe Order: A Cogent Jurisprudential Account of Judicial Endeavours, 3.1 J. Indian L. Stud. 29 (2020).v

[16] Izyumenko, E. The Freedom of Expression Contours of Copyright in the Digital Era: A European Perspective, 19 J. World Intell. Prop. 115 (2016).

[17] Ibid.

[18] Eros Int’l Media Ltd. v. Bharat Sanchar Nigam Ltd., 2016 SCC OnLine Bom 8199.

[19] Supra 14.

Moral-Economic Deficiency of Criminal Copyright Remedies

By Prachi Mathur

Prachi is a student at National Law School of India University (NLSIU).  This piece is one of the winning entries from the Copyright Law Blog Writing Competition, 2023.

Introduction

In India, criminal remedies for copyright infringement are primarily governed by Chapter XIII (Offences) of the Copyright Act, 1957 (“Act”). Specifically, Section 63 penalises anyone who ‘knowingly infringes’ a copyright. It provides for 6 months to 3 years of imprisonment, and a fine of Rs. 50 thousand to 2 lakhs. Although the Copyright (Amendment) Act, 1994 (“1994 Amendment”) created an exception for non-commercial infringement (“not…for gain in the course of trade or business”), I argue that the 1994 Amendment fails to address the elephant in the room, i.e., even after this amendment, Section 63 criminalises non-competitive and non-commercial infringement without adequate moral requirement and economic efficiency. To this end, I advance a two-pronged argument on the moral appropriateness and economic efficiency of Section 63 in two kinds of copyright infringement; and, conclude with suggestions for reform.

Moral Appropriateness

Usually, a crime is a moral wrong involving moral culpability.[1] A crime (or moral wrong) has two components: mens rea and actus reus. Under Section 63, the actus reus is the act of infringement; whereas, the mens rea is ‘knowing’ infringement, or mere knowledge. It does not require any malicious intention or motive underlying this knowledge.[2] This omission implies that even ‘knowing’ infringements for personal use or charitable (non-commercial and non-competitive) public dissemination are classified as criminal acts. Indeed, malice is not the only motive for infringement.[3]

However, such acts are not sufficiently immoral to justify criminal sanctions. This is because these acts are significantly different from malicious infringement for commercial gain or attaining competitive market advantage. The harm caused, the societal values compromised, and, most importantly, the mens rea are different.[4]

Although there are criminal offences which do not have a strict mens rea requirement, such offences usually have strong countervailing reasons to justify the deviation.[5] With Section 63, however, there are no such countervailing reasons. For copyright infringement, the legislators were mainly concerned with balancing two conflicting values – the interests of copyright owners (authors-publishers) in protecting their works,[6] and the interests of the public in accessing knowledge via such works.[7] In the case of competitive or commercial copyright infringement, the knowledge is guided by the malicious intention of reaping profits from pirated content or gaining a market advantage over your competitor. These acts are usually not guided with the intention of furthering public access to knowledge. Moreover, the economic harm caused to authors is greater than when used for personal use only because of the greater scale of infringement in the former. Criminalising the former type of infringement balances the interests of both copyright owners and society.

However, by criminalising non-commercial and non-competitive infringement (e.g., for personal use), the balance is skewed in favour of the owner’s interests.[8] One of the goals of the copyright law – to promote the development of new works – is emphasized others by using criminal punishment to discourage illicit copying. The balance between the two objectives of copyright law is threatened by the emphasis on the incentive to create, which suggests that ensuring public access is less vital. Moreover, community norms regarding copyright infringement indicate that society does not consider infringement for non-commercial purposes as morally wrong.[9]

Economic efficiency

Although criminal remedies tend to be more effective than civil (and administrative) remedies in deterring crime, such effectiveness does not guarantee an economically efficient outcome. As such, the economic efficiency of Section 63 needs to be evaluated using a cost-benefit analysis.

Costs

Regarding the criminalisation of copyright law, Landes & Posner have highlighted the paradox of stifling creativity.[10] By criminalising infringement, the ‘second-generation’ innovation is stifled – future creators may no longer be able to access previous works; thus, reducing the input available for producing creative outputs.[11] In a developing country with moderate levels of copyright literacy like India,[12] there might be unintended effects of criminalisation. For instance, users who are not sufficiently aware of the copyright law would avoid using copyright works for purposes that may be otherwise legal.

Besides deterrence, imprisonment also has unintended societal costs, including the opportunity cost of sacrificing the productivity of those who are behind bars as well as the direct expenses of constructing, operating, and staffing prisons. Here, the opportunity costs involve the worth of the convict’s lost income and the economic injury to their families. 

Moreover, criminal law can be used by resourceful copyright holders to enforce their rights through state resources rather than private civil litigation or settlement, which may be too expensive, time-consuming, or result in unsatisfactory results. Even though it can be helpful in some cases of IPR infringements where certain public interests are at, this may further encourage rent-seeking behaviour among resourceful copyright owners.[13]

Benefits 

By denying copyright owners their legal right to operate as the exclusive distributor of copyrighted content and, consequently, to profit from sales and licenses, infringement jeopardizes their financial interests. If they cannot make a profit, creative individuals are less likely to invest time and resources into producing goods, undermining the copyright and constitutional protections for intellectual property. Deterring infringement increases the likelihood that writers will receive money from their work, enhancing their desire to generate original expressive works and advancing one of the objectives of intellectual property legislation, which is to encourage the development of new products.

Analysis

Before reaching a conclusion, it is pertinent to note that the counter-argument to treat copyright on par with tangible property rights fails to take into account the special nature of copyright. Indian legislators specifically differentiated between the two.[14] In the case of tangible property, the goods are rivalrous – if one uses/consumes, another person (including the owner) cannot enjoy its benefits. On the other hand, in the case of copyright, since the copyright holder still has the option to sell the information product after the infringement, the economic harm to the owner is comparatively lesser. The value of employing criminal law is less than one might initially think. The expenses of applying the criminal code, however, can be more than anticipated.

Conclusion

Although the 1994 Amendment attempted to ‘deal more effectively’[15] with copyright infringement by adding another proviso to Section 63 to ‘suitably guide and limit the discretion of the court to impose penalties below the normal minimum’[16], I have two reservations regarding its appropriateness. Firstly, meting out sub-normal penalties in exceptional cases is merely discretionary. As per the proviso, a court has to provide ‘adequate and special reasons’ to circumvent the minimum penalties provided in this section. Secondly, and importantly, the classification is rather superficial because acts that are not sufficiently immoral are also classified as criminal. This contradicts the consensus that only moral wrongs must be criminalised. Relatedly, such classification also ignores the difference in relative mens rea of the two kinds of infringement.[17] Limiting criminal liability under Section 63 would help achieve the goal of free access to knowledge better, and provide a more favourable balance between the interests of owners and society. Additionally, international best practice guided by the TRIPS agreement requires criminal remedies only for wilful infringement on a commercial scale.[18] Therefore, India should reconsider limiting the liability for non-commercial and non-competitive infringement to civil remedies considering the comparative efficiency and other conflicting interests involved.

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[1] Heidi M. Hurd, ‘What in the World Is Wrong?’ (1994) 5 J Contemp Legal Issues 157; Peter Arenella, ‘Convicting the Morally Blameless: Reassessing the Relationship between Legal and Moral Accountability’ (1992) 39 UCLA L Rev 1511.

[2] J.N. Bagga v. All India Reporter Ltd., Nagpur, 1968 SCC Online Bom 14 [not liable under section 63 if no knowledge]; Bunny Reuben v. B. J. Panchal, 1999 SCC Online Bom 603 [knowledge an essential ingredient].

[3] Ting Ting Wu, ‘The New Criminal Copyright Sanctions: A Toothless Tiger’ (1999) 39 IDEA 527, 527.

[4] Moohr, Crime (n 5); I. Trotter Hardy, ‘Criminal Copyright Infringement’ (2002) 11 Wm & Mary Bill Rts J 305, 327-332.

[5] David Ormerod, Karl Laid, John Cyril Smith and Brian Hogan, Smith, Hogan, and Ormerod’s Criminal Law (16^th edn, OUP 2021), ch 5, 150.

[6] Although in some instances the rights of authors and publishers collided, regarding infringement, their interests overlapped. The former is irrelevant for our present discussion.

[7] Rajya Sabha Debates, Copyright Bill, 1955, 14-15 May 1957.

[8] Moohr, Crime (n 5) 755.

[9] Moohr, Crime (n 5) 767-770. Bhattacharya A, ‘India Sucks at Protecting Intellectual Property, According to a New Ranking’ (Quartz, 9 February 2017) <https://qz.com/india/906776/india-sucks-at-protecting-intellectual-property-according-to-the-us-chamber-of-commerces-2017-ip-index&gt; accessed 6 July 2023; ‘A Pilot Study on the Intention to Engage in Digital Piracy of Movies in Kerala – Free Essay Example’ (Edubirdie, 26 April 2023) <https://edubirdie.com/examples/a-pilot-study-on-the-intention-to-engage-in-digital-piracy-of-movies-in-kerala/&gt; accessed 6 July 2023.

[10] William M. Landes & Richard A. Posner, ‘An Economic Analysis of Copyright Law’ (1989) 18 J Legal Stud 325, 332. See also Mobolaji Johnson Agboola, ‘Criminal Sanctions for Copyright Infringement: The Half of a Yellow Sun Copyright Piracy’ (2014) 31 JL Pol’y & Globalization 49.

[11] Moohr, Crime (n 5) 783-789.

[12] E.g., see Anjaneya Reddy NM. ‘The copyright trends in India, and the level of copyright awareness among academic Librarians’ (2021).

[13] Lanier Saperstein, ‘Copyrights, Criminal Sanctions and Economic Rents: Applying the Rent Seeking Model to the Criminal Law Formulation Process’ (1996) 87 J. Crim. L. & Criminology 1470.

[14] Lok Sabha & Rajya Sabha Debates, Copyright Bill, 1955 [prevalent themes of the debates].

[15] Statement of Objects and Reasons, Copyright (Amendment) Act, 1994.

[16] Notes on Clauses, Copyright (Amendment) Act, 1994.

[17] See [a similar argument on restricting penalties based on the three levels of blameworthiness – inadvertent, standard, and wilful infringements] Abraham Bell & Gideon Parchomovsky, ‘Restructuring Copyright Infringement’ (2020) 98 Tex L Rev 679.

[18] ‘WTO | Intellectual Property (TRIPS) — Enforcement of Intellectual Property Rights’ <https://www.wto.org/english/tratop_e/trips_e/ipenforcement_e.htm&gt; accessed 6 July 2023.

Royalty From Underlying Works in a Cinematography Film: Copyright Amendment Act, 2012 Came Out Short?

By Shubhankar Sharan

Shubhankar is a student at Gujarat National Law University.  This piece is one of the winning entries from the Copyright Law Blog Writing Competition, 2023.

Introduction

The battle for royalties in the entertainment industry goes a long way back into history. The infamous Supreme Court Order Indian Performing Right Society v. Eastern Indian Motion Pictures Association (“EIMPA”)[1] facilitated the same, vesting all the rights with the Producers of a cinematography film. Jumping several years forward, Mr. Javed Akhtar stepped forth and put the artists’ issues in the forefront, wanting legislative action to redress them. Consequently, the Copyright (Amendment) Act, 2012 (“Amendment Act”), was passed, evolving the Right to Royalty for the authors of underlying works. In light of the same, this piece attempts to delineate the current position concerning copyrights in underlying works and the Right to royalty juxtaposed with the Amendment Act. Lastly, it tries to shed some light on persisting issues and provide feasible solutions for remedying them.

Status of Copyrights in Underlying Works

Copyrights in underlying works have been vastly debated across scholarships owing to the hardships emanating from the Supreme Court order in EIMPA. Disappointingly, the Apex Court ruled unfavorably for the authors of underlying works, highlighting the loss of rights once the works become a part of the cinematograph film. Even though Section 13(4)[2] of the Indian Copyright Act, 1957 (“Copyright Act”) provides for the separate existence of copyright, the Bombay High Court[3] in 2011 specifically mentioned that once a cinematography film subsumes the underlying work, the independent existence of copyright in underlying works gets extinguished. Consequently, the producers tamed the authors for long because of overarching assignment contracts. However, the Law makers recognized the authors’ plight in the Copyright (Amendment) Bill 2010[4], later passed as the Amendment Act. The Amendment Act empowered the authors of underlying works by granting them a non-waivable “Right to Royalty” despite the assignment of copyright.

Interestingly, the Amendment Act implies retaining ownership of authors of underlying works. To further the argument, the Amendment Act acknowledged the seminal footnote of Justice V.R. Krishna Iyer[5] in the EIMPA judgement. Herein, it is pertinent to highlight that Justice Krishna Iyer underlined the possibility of harmonious coexistence of producers’ investment and the intellectual creation of underlying works’ authors. The Statement of Reasons and Objectives of the Copyright Amendment Bill, 2010, reflected the same.     

Sketching Right to Royalty with the Amendment Act

Section 2(f) of the Copyright Act[6] defines a cinematography film. Essentially, a cinematography film is a mix of artistic, dramatic, and literary works, to name a few. Of these, sound recordings sit atop the underlying works rankings. The Indian Music Industry relies heavily on the film industry for functioning. Hence, under this section, underlying works must be assumed synonymous with sound recordings unless specified otherwise. The changes in the current paradigm have significant parallels in other countries. For instance, Article 4 of the EU Rental Directive 1992[7] accords the author with the Right to “equitable remuneration” given the transfer of rental rights to the producer.

Nonetheless, by the wording of Section 19(9) of the Copyright Act[8], the usage of “share” expresses the nature of the obligation. Instead of “pay,” share contemplates the duty to be mandatory—elimination of “if any” from the Copyright Act post amendment further clarifies the nature.

Intriguingly, the ‘right’ in discussion has been provided distinctly from those granted under Section 14 of the Copyright Act[9]. To elaborate, Section 14 of the Copyright Act elucidates various rights while defining copyright. However, the “Right to Royalty” has been expressly excluded from the previous section. Besides, royalty is an incidental outcome of commercial exploitation of copyright, which Section 14 “authorizes.” Such conspicuous exclusion is sufficient to conclude that the ‘right’ is contractual in lieu of statutory Right.

Royalty Distribution: An Enigma

Various issues and uncertainty about royalty distribution have surfaced throughout the Acts implementation. Varied views in reference to the scope of applicability of the amendment provisions have arisen. For starters, it is unclear if the provisions would operate retrospectively or not. The Supreme Court[10] clarified by stating that the effect of the provisions would not be extended to agreements entered into before the incorporation of amendments. Thus, ruling out all the underlying works created prior to 21^st June 2012 from the scope of the provisions. In furtherance of the same, the usage of “shall” in Sections 17, 18, and 19 of the Copyright Act determines the prospective application of the amendments.

On the contrary, the Parliamentary Debates[11] pose differing views. The discussions framed an illustration to posit that the underlying works would not accrue royalty until passing the Amendment Act 2012. But the same work will bear royalty for the authors with the incorporation of the Amendment Act, thus indicating its retroactive application.

Another grey area can be attributed to the constrained purview of the underlying works. A cinematography film is a complex mix of varied elements, of which the Amendment Act recognizes only a few. One of the significant snubs is the scriptwriters[12]. Sections 18[13] and 19(9)[14] and (10)[15] missed the mark in including dramatic works. Thereby, the Amendment Act barred a vital slice of contributors to the film.

Adding to these problems, the Courts have adopted vastly different views on the issue of royalty. The Delhi High Court, in a clubbed Order[16], categorically denied royalty for underlying works, characterizing the amendments as clarificatory rather than substantive. The judgement has been appealed before the Division Bench of the High Court. Contrastingly, the Bombay High Court[17], in its interim injunction order, identified the Right of sharing of royalty with the authors of the underlying work concerning the communication of sound recordings to the public through radio stations. Along the same lines, it mentioned that most sound recordings are a part of the cinematography film. Hence, it imputed the Right to share royalty for the underlying work of the cinematography film.

On top of all, another challenge pertains to the ascertainment of royalty rates. There is ostensibly no statutory guidance vis-à-vis fixation of rates, apart from the recent Intellectual Property Appellate Board’s (“IPAB”) order[18] acknowledging the ‘needle per hour’ method. Unsurprisingly, the same has been challenged. While at the same time, considerable ambiguity[19] exists surrounding the interpretation of “equal share” as stated in the provision. Further, the Amendment Act stands silent on whose responsibility it would be to share the royalty with the author; it becomes all the more convoluted owing to the presence of multiple parties like the Copyright Societies, Assignee, and the Broadcaster. Bear in mind that Section 19 of the Copyright Act does not elucidate the aspect of continuing royalty, whose non-payment has been characterized as grave as a criminal offence under Section 63 of the Copyright Act[20]. Lastly, it must be mentioned that the Amendment Act overlooked redressing unfair bargaining arrangements.

Plausible Solutions

Articles 18-22 of the Digital Single Market Direction of the European Union[21] presuppose adequate protections for the authors. For instance, Article 20 establishes a contract adjusting mechanism while Article 18(1) ensures ‘appropriate and proportionate’ remuneration for authors. Moreover, Article 46 of the Italian Law for Protection of Copyright and Neighbouring Rights[22] gives the authors of musical work utilized in the film, separate remuneration collectable from the entities making the communication. In the same Act, Article L.132-28[23] mandates the producer to annually furnish revenue records to the author vis-à-vis exploitation of the sound recording. Overlooking the validity of the IPAB Order for a moment, the Legislature must take the initiative to build up on the groundwork established by the Order and foreground royalty rates in statutory regulations. If not, the minimum expected is to clarify the context of “equal share” used in the Sections.

Conclusion

The efforts of the Legislature are nothing short of commendable in ensuring the Authors acquire royalty. Against the backdrop of the historical exploitation and instances highlighted of long-drawn battles for ownership and royalty, the Amendment Act was undoubtedly a step in the right direction. However, unintendedly so, the Amendment Act cuts both ways. To address the negative consequences, the Legislature must quickly step down the same pathway and plug the legal and ancillary shortcomings.

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[1] Indian Performing Right Society v. Eastern Indian Motion Pictures Association 1977 SCR (3) 206

[2] Indian Copyright Act 1957, s. 13(4)

[3] Music Broadcast Private Limited v. Indian Performing Right Society Limited Suit no. 2401 of 2006

[4] Copyright (Amendment) Bill 2010, para 3(viii)

[5] Indian Performing Right Society v. Eastern Indian Motion Pictures Association 1977 SCR (3) 206, para 21

[6] Indian Copyright Act 1957, s. 2(f)

[7] Council Directive 92/100/EEC of 19 November 1992 Rental Right and Lending Right and on Certain Rights related to Copyright in the Field of Intellectual Property O. J. L 346/61

[8] Indian Copyright Act 1957, s. 19(9)

[9] Indian Copyright Act 1957, s. 14

[10]International Confederation of Societies of Authors and Composers (ICSAC) v. Aditya Pandey and Ors (2017) 11 SCC 437

[11] Speech of Sri Javed Akhtar Parliamentary Debates Rajya Sabha (May 17, 2012)

[12] Rukma George, ‘Scriptwriters Copyright Conundrum: An Analysis’ (2021) Summer Issue ILI Law Review <https://ili.ac.in/pdf/6.pdf> accessed 6 July 2023

[13] Indian Copyright Act 1957, s. 18

[14] Indian Copyright Act 1957, s. 19(9)

[15] Indian Copyright Act 1957, s. 19(10)

[16] Adyasha Samal, ‘Delhi HC Order Cripples Authors’ Royalty Rights in Underlying Works’ (SpicyIP, 19 January, 2021) <https://spicyip.com/2021/01/delhi-hc-delivers-order-crippling-authors-royalty-rights-in-underlying-works.html&gt; accessed 6 July 2023

[17] Indian Performing Rights Society Limited v. Rajasthan Patrika Pvt Ltd. Commercial IP Suit No. 193 of 2022

[18] Music Broadcast Limited and Ors. V. Tips Industries Ltd. and Ors. The Intellectual Property Appellate Board (IPAB) OP (SEC 31-D)/3/2020/CR/NZ

[19] Renuka Meduri, ‘Continued Economic Benefit to the Author: Royalties in the Indian Film Industry – Historical Development, Current Status, and Practical Application’ in Kung-Chun Liu, Innovation, Economic Development, and Intellectual Property in India and China (Springer Singapore 2019)

[20] Indian Copyright Act 1957, s. 63

[21] Martina Lattacher, ‘Authorship Matters! Authorship in the EU with a Focus on Film’ (2021) 4(2) SIPLR < https://stockholmiplawreview.com/wp-content/uploads/2022/01/Authorship-matters_Tryck_IP_nr-2_2021_A4.pdf&gt; accessed 6 July 2023

[22] Legge 22 aprile 1941, n. 633 sulla protezione del diritto d’autore e di altri diritti connessi al suo esercizio (aggiornata con le modifiche introdotte dal decreto-legge 30 aprile 2010, n. 64) (It.) Article 46

[23] ibid

Exploring The Copyright Infringement Implications of AI-Generated Music

By Piyush Senapati

Piyush is a student at National Law University, Jodhpur. This piece is one of the winning entries from the Copyright Law Blog Writing Competition, 2023.

Introduction

Artificial Intelligence (AI) generated works are creating shockwaves all over the art and entertainment world due to their copyright implications- and the music industry is no stranger to this, as is evident by the concerns raised in this regard by musicians, both abroad and in India.[1] Through the lens of Indian jurisprudence, this article seeks to analyse in what circumstances can AI generated music infringe the copyright of musicians, and whether such music can qualify for the fair dealing defence against copyright infringement.

How AI creates Music

The prospect of computers generating music is nothing new, with Lady Ada Lovelace herself predicting that they “might compose elaborate and scientific pieces of music of any degree of complexity or extent.”[2] Understanding the exact mechanism by which AI creates music is necessary as the process itself raises copyright concerns- AI generated music is based on nothing but using already copyright music as ‘training material’ for the system.[3] AI applications use databases of pre-existing songs, and use inferences from them to generate new content. Once a user feeds a musician’s existing music into the AI system, the machine learns to detect their stylistic patterns and then produces new music in that artist’s voice and style;[4] but with lyrics, compositions, and other specifications of our choice. Thus, at the effort of only a few clicks, one can create an endless array of new music.

Testing AI-Generated Music on the Touchstone of the Average Listener’s Test

The case of R.G Anand v. Delux Films[5] (hereinafter, R.G Anand) and subsequent judgements[6] established that the test to determine copyright infringement is to see whether the viewer, having seen both the works gets an unmistakable impression that the subsequent work is a copy of the original. Therefore, the question of copyright infringement in cases of music generated through AI applications would ultimately boil down to whether an average listener would be under the impression that it is a copy of the music that’s used to generate it.

Before we test AI generated music based on the average listener’s test, it is important to note that music involves two copyrights[7]– copyright over the musical works (rhythm, composition, and lyrics) and secondly copyright over the sound recording itself, also called the master recording. Thus, our analysis of this question will have to be undertaken for both.

Where copyright infringement of the musical works is concerned, it is unlikely that an average listener would recognise a meaningful percentage of the original works in the AI song.[8] The reason for this boils down to the mechanism by which AI applications create music. Substantial portions of the musical works, do not manifest expressly in the final output as AI creates music by using the sound recording and mining the performative nuances therein, rather than using the musical works themselves.[9] However, AI generated songs will nonetheless have to be analysed on a case-to-case basis, as certain musical works portions could appear in the final output, leading to copyright infringement if recognisable to the average listener.[10]

Coming to copyright violations of the sound recording, there are two broad ways by which AI uses sound recordings to create music. The first is through independent fixation, i.e., recording an independent version of the song. The second is by manipulation of the actual copyrighted sound recording through encoding and decoding, wherein a portion of the same manifests in the final output.[11] The American case of Bridgeport Music, Inc. v. Dimension Films[12] held that independent fixation would not amount to copyright infringement, no matter how similar the new version is to the original recording, as one cannot violate sound recording copyright by creating an independent version of the recording. Similarly, the Court in Gramophone Company of India v. Super Cassette Industries[13] (hereinafter, Gramophone Company) held that creation of a different version of the sound recording does not amount to copyright infringement. However, in the second instance where the AI generated music involves a reproduction of the original copyrighted sound recording, there can be a case of infringement if a substantial portion of the same manifests in the output and is recognisable to the audience.[14]

Therefore, whether or not an AI generated song would violate copyright would depend on a number of factors ranging from the type of musical copyright involved, the method used by the AI to generate the song and recognisability of the original music manifesting in it.

AI Generated Music and The Defence of Fair Dealing

 The ‘Fair dealing’ exception to copyright infringement covers bona fide use of copyrighted works without any prior permission or remuneration to the copyright owner, as opposed to blatant copying with ulterior motives.[15] Some examples include using copyrighted works for research or review purposes. Supposing that an AI generated song fails the average listener’s test, it is pertinent to analyse whether it could fall under this exception. The Court in Civic Chandran v. Ammini Amma[16] (hereinafter, Civic Chandran) laid down the factors for determining whether a case falls under the fair dealing exception as- the quantum of the matter taken from another work, the purpose for which it is taken, and the likelihood of competition between the two works. More importantly, the allegedly infringing work must be transformative, i.e., different from the original work in character, expression, and meaning to fall under this exception.[17] Where AI generated music is concerned, depending on the facts and circumstances of the case, the factors mentioned in Civic Chandran could have either allowed or disallowed the same to qualify for the fair dealing exception. However, what is concerning is that the judiciary has allowed the transformative factor to override the other factors outlined in Civic Chandran– it has been held that if the work is transformative, it would be considered as fair dealing and the quantum of copying and potential competition between the works would be immaterial.[18] Given that AI generated music can fall under the abovementioned definition of transformative, this heightened emphasis on the transformative factor could provide leeway for AI based musicians to evade infringement claims even if they heavily copy and compete with original music they trained their systems with.

Conclusion

While there is ample scope for AI music producers to evade copyright infringement, artists viewing AI generated music with suspicion and hostility is natural, particularly in a country like India having a poor track record of musical copyright protection.[19] While one side of the camp would hail AI for opening the floodgates for musical creativity, the other side would understandably fear its impact on musicians’ rights and livelihoods. To arrive at a balance between these two competing aspects, numerous solutions have been suggested, such as new licensing and royalty splitting arrangements.[20] While the feasibility of these solutions is to be tested, it can be expected that the Indian judiciary will soon be grappled with infringement claims against AI generated music. In adjudicating the same, Courts must similarly endeavour to arrive at a balance between fostering creativity and protecting musicians.

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[1] Samarth Goyal, ‘Can AI Replace Musicians on Stage?’ Hindustan Times (1 April 2023) https://www.hindustantimes.com/entertainment/music/can-ai-replace-musicians-on-stage-101680330849579.html accessed 17 June 2023.

[2] Emily Howard, ‘OK Computer: How Ada Lovelace is Being Bought to Musical Life’ The Gaurdian (2 November 2019) https://www.theguardian.com/music/2019/nov/02/ada-lovelace-emily-howard composer#:~:text=Lovelace%20valued%20music%20and%20mathematics,they%20might%20even%20compose%20music accessed 25 June 2023.

[3] Kaishik Pal, ‘How Can an AI Model Create Music?’ (Techopedia, 28 April 2023) How Can an AI Model Create Music? – Techopedia (accessed 20 June 2023).

[4] Khasim Lockhart, ‘AI-Generated Music: The Biggest Impact on the Music Industry Since Napster?’ (Lexology, 24 April 2023) AI-Generated Music: The Biggest Impact on the Music Industry Since Napster? – Lexology (accessed 19 June 2023).

[5] [1979] 1 SCR  218 (SC).

[6] MRF Limited v. Metro Tyres Limited [2019] 262 DLT 734 (Del), XYZ Films v. UTV Motion Pictures [2016] 67 PTC 81 (Bom).

[7] Kanika Raheja, ‘India: Copyright Protection in Musical Work’ (Mondaq, 2 August 2021) https://www.mondaq.com/india/trademark/1097778/copyright-protection-in-musical-work#:~:text=This%20property%20includes%20the%20exclusive,music%20copyright%3A%20master%20and%20composition (accessed 20 June 2023).

[8] Eric Sunray, ‘Sounds of Science: Copyright Infringement in AI Music Generator Outputs’, (2021) 29(2) Cath. U. J. L. & Tech 185.

[9] Ibid 208.

[10] Ibid 208.

[11] Ibid 209.

[12][2005] 410 F.3d 792 (6^th Circ.).

[13] [2010] 44 PTC 541 (Del).

[14] Sunray, ‘Sounds of Science’ (n 7) 209.

[15] Jai Vignesh K, ‘Doctrine of Fair Dealing in Indian Copyright Law’ (Surana & Surana, 2 September 2022) Doctrine of Fair Dealing in Indian Copyright Law – SURANA & SURANA (suranaandsurana.com) (accessed 21 June 2023).

[16] [1996] 16 PTC 329 (Ker).

[17] The Chancellor Masters and Scholars of the University of Oxford vs Narendra Publishing House &Ors [2008] 38 PTC 385 (Del).

[18] Syndicate of the Press of the University of Cambridge v B. D. Bhandari [2009] 39 PTC 642 (Del).

[19] Shrija Verma, ‘Indian Music Industry and the Copyright Controversy’ (The IP Press, 29 January 2021) Indian Music Industry and the Copyright Controversy – The IP Press (accessed 27 June 2023).

[20] Eammon Ford, ‘Intelligence Test: Techno-Plagiarism and The Battle for Music In a New Age of AI’ (Synchtank, 23 February 2023) AI Music and Copyright – Where Do We Go From Here? (synchtank.com) (accessed 25 June 2023).

WTO IP waiver too simplistic: Global vaccine tech-transfer needs other strategies

By YOGESH PAI

Since October 2020, India and South Africa, joined by two-thirds of the WTO Members (African Group, LDCs and most of the developing world) have been actively pursuing other developed country Members to agree to their request to waive global intellectual property (IP) rules. The waiver asserts that by suspending IP protection for COVID-19 technologies, countries will be able to quickly augment production and foster equitable access for COVID-19 related products. 

The push for the IP waiver proposal rests on an often simplistic textbook assumption that IP controls exercised through legal rights allow IP owning firms exclusive control on production by reducing output (by restricting competitive copycat entry) and thus increasing prices. Of course, this is something no country wants during a pandemic where equitable access is paramount. 

However, truth be told, the IP waiver proposal, even if passed by approval of three-fourths of current WTO Members (a minimum requirement under WTO Rules) or with a consensus, will not enable India or any other country (even with decent production capabilities) to quickly access complex technologies and augment production, particularly in the context of COVID-19 vaccines.

The critical issue surrounding access to COVID-19 vaccine technologies involves an active technology licensing component, which the waiver/suspension of IP laws cannot achieve (e.g. by suspending patents or trade secret protection). 

Most complex technologies such as vaccines and other biological products contain two major knowledge components. One component is the knowledge that can be copied by competitors and hence patented to legally prevent copying for at least 20 years in India. Another component involves any undisclosed information such as a trade secret or know-how, including hard tacit knowledge of manufacturing/quality control measures for production and clinical data required for regulatory clearances.

IP waiver simply can’t achieve access to tacit knowledge components which are in the exclusive possession of a firm in the form of trade secrets or any other undisclosed information. Any IP lawyer with an understanding of IP intensive industries would confirm that trade secrets do not require any ‘exclusivity’ type of legal protection (e.g. like patents). Trade secret laws provide defensive protection to a firm that already has exclusive possession of some undisclosed information against industrial espionage, breach of confidence/contracts by its employees or by connected parties who benefit from such misappropriation. Of course, unconnected parties (i.e. competitors) are always free to come out with their own products/processes through capital intensive and time-consuming (months/years) reverse-engineering or independent innovation, which the law on trade secrets does not prohibit. 

So even if the WTO IP waiver will allow countries like India to suspend legal protection for trade secrets/undisclosed information, it means nothing in the real world unless the law (and often a draconian criminal measure) is used against a firm and its employees physically located in its territory to engage in forced technology transfer (FTT). Such FTT requirements have never worked in practice without other social and economic costs. India has already had a taste of it in its unsuccessful bid to get Coca-Cola to reveal its know-how under foreign exchange laws in the late 1970s. It led to Coke’s exit from India and return in the post-liberalisation era in the early 1990s.

Realising such complexities and the potential futility of blunt legal instruments early on, the Serum Institute of India (SII) actively collaborated with AstraZeneca/Oxford for obtaining a technology licence involving a reported fee of Rs. 75/- per jab. This allowed SII access to AstraZeneca’s tacit knowledge (trade secrets/other undisclosed information) and clinical trial data to engage in quality-controlled production. Scaling-up is a different challenge altogether as it requires both time and investment in heavily quality-controlled production facilities.

Similarly, India’s Council of Scientific & Industrial Research (CSIR) – Centre for Cellular and Molecular Biology (CCMB), which already has certain expertise in mRNA technologies, is pursuing Moderna to engage in vaccine technology licensing. Although Moderna has allowed free access to its mRNA patents for COVID-19 vaccine production, the crux lies in active technology licensing.

In fact, even in the case of an indigenously developed vaccine technology by Bharat Biotech with early-stage lab support from the publicly-funded Indian Council of Medical Research (ICMR) – National Institute of Virology (NIV), the Department of Biotechnology had to recently nudge Bharat Biotech to engage in talks with Panacea Biotech(the only other company in India which is currently equipped to produce Covaxin) to scale-up production. 

So, a WTO IP Waiver to suspend IP obligations domestically will not help unless India engages in FTT – a recipe for complete disaster, particularly when we have finally decided to open up to more foreign players. The Government of India must not waste its valuable energy in pursuing the waiver proposal in trying to look for solutions that are far removed from the real-world complexities and constraints posed by the economics of vaccine technologies and production, and an equally complex IP ecosystem in the context of global tech-transfers. Where blunt legal instruments don’t work, using track-1 and track-2 diplomacy to place moral coercion on western governments to nudge firms to actively engage in technology licensing may still work wonders. 

Allowing manufacturers to strike early deals with tech players to facilitate risk-sharing and exploration of synergies driven by a predictable and transparent entry-enabled regulatory environment is a prerequisite for sustainable vaccine production. Securing cheap upfront volume discounts for state-sponsored distribution and allowing private players to cross-subsidise through differential pricing in private sales will help in meeting the demand. This will facilitate the scaling-up of production and pave the way towards healthy competition by driving down vaccine prices in order to attain vaccine equity. 

Acknowledgment: This write up was first published in Express Pharma section of Indian Express on 28^th April, 2021. The write up can be accessed here.

Image Courtesy: www.wto.org

Shutting Sci-Hub is Not Anti-Science: Courts, Government and the Parliament Must Explore Alternative Remedies (Part II)

Yogesh Pai

Continues from Part 1.

Courts must institute ongoing royalties as an alternative remedy

Apart from providing exclusive control over supply of works, copyright law serves to preserve the metering function in exploitation and use of works. The argument that any infringement by Sci-Hub and Lib-Gen involves a ‘non-commercial purpose’ and hence falls within the current fair-dealing provision of educational use is farfetched. Any reading of a limited exception that exempts infringement for the purpose of research altogether, cannot include all educational content since it would conflict with the ‘normal exploitation’ of the right. This is precisely because there is no other substantial ‘commercial use’ of educational content, except for the purposes of research. Thus the previous ruling of the Delhi High Court in the DU Photocopying caseinvolving legitimacy of course-packs is not a direct precedent in the current case. The argument that the researcher accessing Sci-Hub and Libgen is not directly engaging in infringement activity is only partly correct (as a fair-dealing exemption for personal use) as it does not extend to the website that hosts pirated content. In any case, the current dispute is not against individuals downloading pirated content but against Sci-Hub/Libgen as platforms that facilitate it.

However, if the court decides to block Sci-Hub and Libgen, by way of a preliminary or even a permanent injunction, it must require the petitioners to provide access to all its databases to any public educational/research institution in India for any reasonable period of time (or at least until the Executive or the Parliament finds a permanent solution) based on certain ongoing royalties. After all, these shadow libraries have been around for many years now. In fact, it would be extremely detrimental to serve the ends of justice if the court does not mandate such an alternative. The only caveat is that any existing licence should not be disturbed until the expiry of current subscriptions and private educational institutions should not benefit from such an order unless they are engaged in non-profit activities.

Thus, an ongoing royalty model does not unreasonably prejudice the right-holders, while simultaneously opening avenues for equitable access. Although controversial, a remedy of reasonable royalty has been explored by courts in comparative jurisdictions in the context of copyright infringement. The ongoing royalties could be determined based on a proportionate reduction in subscription rates currently offered to comparable different tiers/kinds of public educational/research institutions in India. In fact, the court can institute near to zero or minimal subscription rate in favour of those institutions where library budgets simply do not exist. Such tiered model presupposes cross-subsidisation by top-tiered educational/research institutions in favour of less privileged institutions.

Can a court legally grant such a remedy to serve the ends of justice? The Copyright Act, 1957 does not prohibit the court from undertaking such an exercise since the remedy of an injunction is an equitable remedy. Courts have often instituted ongoing (interim) royalties against defendants in patent cases. There is nothing that prevents an Indian court from instituting ongoing royalties in a copyright dispute as a permanent remedy. The court must explore the full contours of its inherent powers under Section 151 of the Civil Procedure Code and the Supreme Court’s observations by requesting the Department of Science and Technology and third parties like the Indian Library Association, to undertake the task of identifying and mapping the institutions which could benefit from such a model.

One Nation, One Subscription: Will the Government’s Plan Work?

The recently released Draft Science, Technology and Innovation Policy has proposed a “one nation, one subscription” policy whereby the “Government of India will negotiate with journal publishers…. in return for one centrally negotiated payment, all individuals in India will have access to journal articles. This will replace individual institutional journal subscriptions”. For starters, while the idea is great, its feasibility is still in question because there is no legislative backing. At best, such a policy is geared towards voluntary licensing negotiations with publishers which draws from the monopsony power of the Government. However, there are no incentives for publishers to come to the table unless the Government decides to stop buying annual subscriptions, which is difficult proposition. At best, the ongoing royalties’ model instituted by the courts may push publishers towards negotiations. Nothing stops the Government from bringing a law to overrule the Copyright Act. If the TRAI can regulate pricing and copyright licensing conditions for media and entertainment purposes, which the Supreme Court has upheld in ‘public-interest’, nothing stops the Government from drawing powers under any existing law to regulate pricing of academic publishing content, provided such a legislation exists. Beyond the ambiguous and potentially unfruitful outcomes associated with the voluntary character of the one nation, one subscription model, if the Government wishes to urgently regulate the activities of academic publishers, it can explore invoking the Essential Commodities Act, 1955 as an interim measure by way of a Gazette notification.

Permanent Solution through the Parliament: Shift to Liability Regime (i.e. Statutory Licensing)

Some public-interest groups have argued that all infringing activities associated with Sci-Hub and Libgen like shadow libraries must be legalised by amending Section 52 of the Copyright Act since they are non-commercial activities conducted for the purposes for research. In other words, the effect is to render any copyright in favour of academic publishers redundant. Undoubtedly, one can envisage any model in a world free of trade-offs. However, irrespective of any potential violation of international IP norms, if the activities of publishers provide real-world value for academics, why would such a model of “no-copyright” be considered legitimate or grounded in public reason, particularly when the collective action problem associated with academic publishing still exists?

The natural escape is to shift to a system of liability rules. The current compulsory licensing provision, which has been extended to “any work” by the Copyright (Amendment) Act, 2012, is not helpful because it involves a case by case determination of whether or not the refusal by the Copyright holder to licence on favourable terms and conditions has led to the work being “withheld from the public”. It is doubtful if such a provision can be invoked by institutions and libraries with ease. Instead, a system of statutory licensing must be instituted on the lines of current statutory licensing provisions in favour of TV and Radio broadcasters. In fact, a recent decision of the IPAB, which is the first such order on statutory licencing, suggests that such a model can work although it shifts the value of economic entitlement from the voluntary negotiations to terms determined by bureaucrats/tribunals/courts.  However, this is precisely the need of the hour to resolve the conundrum of access to scientific communication in an industry which shows all signs of grim competition and increasing concentration among the top publishers.

Since the markets themselves have not pushed the academic publishing industry towards a two/multi-sided platform market in the digital era where content is given away for free and incentives are drawn from elsewhere, a statutory licensing model will help digital content aggregators (i.e. internet companies with deep complementary digital goods) to exploit content through their business models. Of course, there is always a cost of free associated with information markets that provide abundant “free stuff” and its impact on overall welfare since it shifts rent-extraction opportunity from content production to content aggregation markets. However, such an inevitable shift towards zero-pricing of scientific and academic content is needed to ensure equitable access. After all, neither the academic publishers nor digital content aggregators are actual content producers in the context of academic publishing. So the shift in rent-extraction opportunity from academic publishers to content aggregation markets should not matter.

While the nuances of such a reform to the Copyright law must be widely deliberated and discussed, a shift towards liability rules in literary works involving scientific and academic content is most desirable and a reasonable solution for preserving equitable access. Policy makers should note that half-baked solutions driven by lack of deeper insights into both the ex-ante and ex-post benefits of academic publishing neither serve public policy nor national interest.

Yogesh Pai is an Assistant Professor and Co-Director of CIIPC at National Law University Delhi. Views are personal and does not express the views of the Centre/University.

Shutting Sci-Hub is Not Anti-Science: Courts, Government and the Parliament Must Explore Alternative Remedies (Part I)

By Yogesh Pai

A recent civil suit at the Delhi High Court by publishers (Elsevier, Wiley and American Chemical Society) to permanently block popular shadow libraries (i.e. pirate websites) like Sci-Hub and Libgen has drawn an expected backlash from civil society groups, copyright scholars and popular commentators. While some scholars and commentators have called the business of academic publishing ‘greedy’, others note that shutting down such pirated websites is ‘anti-science’ and against ‘national interest’. Over two thousand academics, scientists, teachers and students have signed a petition against blocking such websites citing public-good and highlighting their stance against “commoditization of research information”.

The argument is as follows. Academic publishing relies on an outdated proprietary business model in the internet age where push-button open-access publishing is a reality. We don’t need the ‘rent-seeking’ academic publishers, except their existing curated content. Barring a few exceptions, it remains a fact that academic publishers do not pay authors for content creation or for engaging authors in the peer-review process. Thus, the costs incurred and the value addition by the academic publishing industry are arguably minimalistic (editing, enabling peer-review, curating, archiving and marketing) considering the profit margins of top scientific publishers (approximately between 30% and 40%). Copyright law serves such interests in a disproportionate way since it allows academic publishers to fully control the supply of books and journals. The risk-rewards ratio is skewed in favour of publishers. As a result, science and knowledge flow is restricted to only those institutions/individuals that can pay (and/or continue to pay annual subscriptions), which is certainly not an ideal outcome for the public-good involved in science. Ergo, all paywalls must be demolished as there is no real-world value contributed by academic publishers.

Real Value of Academic Publishing: The Publishing Paradox

Surprisingly, the real value provided by academic publishers is not limited to the low-value addition activities they undertake. In fact, the real value is deeply entrenched in the current academic and scientific culture. After all, scientific research, even in public institutions, is highly competitive. Hence over the past half a century, a system has evolved where publishing with journals having an impact-factor is associated with academic prestige. To a large extent, this has reinforced the role of academic publishers since publishing with journals having a high impact factor is used for hiring, promotions, awards, grants and overall academic prestige. For e.g. the journals listed by UGC-CARE implicitly recognise that quality in academic publishing matters irrespective of the publishing house or its proprietary status. Thus, a collective action problem in academic publishing is resolved by academic publishers in an organic way (i.e. science/academic policy reinforcing the role of academic publishers), albeit at the cost of the academic and scientific community giving away their soul (i.e. content). Where peer-review and impact factor are not easily correlated with academic prestige (particularly in law), academics are inclined towards publishing with student-edited and open-access journals. Paradoxically, the science policy folks are in no hurry for any wholesale reforms to delink the matrix of academic prestige and academic publishing.

Price, Competition and Market-Failure: The (False?) Promise of Open Access and the Internet

Funding agencies, particularly in western universities and research institutions, quickly bought into the idea that allocating specific funds (sometimes a whopping $500 and up to $5000 per paper) for open-access publishing would ultimately make access to scientific publications free for all. The emphasis on pay and publish also led to a rise of predatory journals with India at its epicentre. While reputed academic publishers co-opted the pay and publish open-access model along with their proprietary user-based subscription model, the final price of subscribed databases never dropped. The dominance of academic publishers has not eroded even with the rise of the internet and open-access publishing models. After all, if many academic institutions consider it problematic to pay for subscriptions, how would they be able to justify allocation of funds for open access publishing unless someone (a funding agency perhaps) paid for it? Any seasoned economist would confirm that in cases of monopoly (i.e. proprietary subscription-based) tied with non-monopoly bundles (i.e. free/open-access content), the pricing is always based on a single monopoly profit, and hence always monopolistic. It reveals that the idea of shifting towards an open-access model, with academic publishers as strange bedfellows, was not tested for economic robustness. This is not to underestimate the virtues of open-access, provided we find a voluntary and sustainable model to keep it open.

Another problem in pricing of academic publications is that the market for academic publishing (mostly public/private universities and research institutions) is not price sensitive. Because one book/journal does not compete with another, institutions that can afford to pay, end up subscribing to all major databases. Others either subscribe in a limited way or simply don’t subscribe. Unfortunately, due to the very narrow market for academic publishing (unlike music and films), academic publishers have failed to adopt a two/multi-sided platform market approach (like internet companies/newspapers), where content can be provided for free as revenues are generated through an advertising model. Thus, pricing still remains a potential issue even in the age of the internet and open-access.

Sci-hub and Libgen do not incur opportunity costs which are even remotely close to those of the academic publishers and thus the virtue-signalling associated with it being ‘free’ and ‘open-access’ relies on untested economic and policy grounds. Sure, pricing is an issue associated with academic publishers which needs to be managed through legal instruments, but expecting every market participant to have similar incentives is factually inaccurate. If it were feasible, the markets themselves would have made an inevitable shift towards forfeiture of IP assets. Copyright law does not prevent well-funded universities, non-profits, and internet/big-data industries from investing in new and fully open-access journals in-order to create high-impact factor journals to replace existing academic publishers. As the collective action problem associated with academic publishing still remains, so does the economic case for the existence of academic publishers.

The Case against Sci-hub and Libgen: Saving the Rule of Law and Public Interest

One significant concern with the Robin-Hood approach of such pirate websites is that access to scientific and academic research rests at their mercy and individual whim. For example, in 2017, Sci-Hub’s founder Alexandra Elbakyan, a self-proclaimed communist (“inspired by communism, but not a strict Marxist”), temporarily cut-off access to Sci-Hub for the Russian Federation due to her personal and ideological opposition to a liberal faction of the Russian scientific community. While the whereabouts of Elbakyan are known to be in Russia (physical address never revealed), the founder and chief-librarian at Libgen is unknown. Elbakyan is being investigated by the U.S. agencies for potential links to Russian intelligence. Notwithstanding their political and other persuasions, these websites are blocked in several western jurisdictions for copyright violations.

While the case against Sci-Hub and Libgen in not unique to India, the access situation certainly is, since many universities and institutes in India rely upon Sci-Hub/Libgen for access to academic publishing. While there is no specific dis-aggregated data, India ranks No. 3 in terms of Sci-Hub downloads, next only to Iran and China. Interestingly, a quarter of these downloads was from the rich OECD countries, which is attributed not only to the rising subscription costs and falling library budgets, but also due to the convenience in accessing Sci-Hub ubiquitously.

If Sci-Hub is necessary for the progress of science, what is the problem? The moral case for a violation of copyright as an exclusive ‘property’ right is relatively weak in the light of enormous public-good enabled by ‘access’ to scientific content. While the core values of scientific research (i.e. reproducibility and falsifiability) need access to scientific content, it does not make access to pirated content a core value.

By refusing to block Sci-hub/Libgen, the court will provide a legal endorsement, effectively legalising mass-scale piracy. This is squarely against the rule of law and will not withstand judicial scrutiny. Until now, at least some universities/institutes obtain a licence because of the illegal nature of activities attributed to such websites. If the court refuses to shut it down, no institution will be required to take any licence from publishers. That’s the irreparable injury which will irreversibly harm not only academic publishers in the short-run, but also the real-world benefit derived by the scientific community from academic publishing in the long-run.  In granting an injunction, courts are required to consider the question of such ‘irreparable harm’ and whether monetary damages are adequate. Monetary damages in this case are simply unenforceable since these websites operate from a foreign location and the known/unknown defendants do not own any assets in India. Particularly due to the dubious nature of their activities, courts cannot institute any ongoing royalties against the website owning defendants, either temporarily or permanently in lieu of an injunction.

Although a case for full trial has been made as these websites may hold non-infringing material (i.e. open-access articles/ public domain materials or those belonging to other publishers), it does not take away the fact that practically all articles from several paid journals are available on sci-hub’s content archives. In a website that dynamically hosts millions of papers (currently 85 million!), it is impossible to pin down the exact number of infringing articles published and hence only an indicative list is sufficient. In civil litigation, the standard of proof is to show the preponderance of probabilities that an infringement has actually taken place.

It has also been argued that the public interest factor, which is often considered in evaluating balance of convenience in granting/denying of an injunction in India, strongly weighs in favour of the defendants. That’s only partly correct. Any full view of public-interest must consider both ex-ante factors that make academic publishing a necessary cog in the system of science communication and ex-post factors involved in equitable diffusion of scientific research. The ex-ante and ex-post public-interest involved in academic publishing and its dissemination is far too complex, even if one were to fully discount the private interests of the publishers.

A case for a dynamic injunction (to block any mirror links created to circumvent court orders) exists based on the Delhi High Court’s previous rulings. Although the websites in question satisfy most factors associated with any ‘rogue’ website, the courts must explore all possibilities of tailoring such an injunction. An order for dynamic injunction must only cover the copyright claims of present petitioners. In other words, if the current websites or a mirror link hosts any content other than those of the petitioners, the present preliminary injunction should not cover it. After all, copyright is a private right and hence its enforcement must also be left to right-holders. Once a list of journals/book titles is provided by the plaintiffs over which copyright is claimed, the burden must be on the defendant to scrutinise the Rights Management Information (RMI) and ascertain that the copyright infringing materials belonging to the plaintiffs are permanently removed. If the defendant refuses to undertake such an obligation, only then a dynamic injunction must follow. Even going by the furthest reforms to copyright remedies that scholars have envisaged, it is noted that any act of wilful infringement must attract the full panoply of legal remedies under copyright law.

Furthermore, should the court decide to go ahead with a trial, it must at least ask the defendants to deposit some interim damages in an escrow account under its supervision and for the petitioners to provide a cross-undertaking by way of bank guarantee. Courts have done this previously in other IP cases involving patent infringement. However, it is doubtful if Sci-hub or Libgen will even contest the litigation by providing any physical address and consider full participation in a trial, which will require payment of monetary damages on finding of infringement. A case for full-trial on merits rests on the conduct of the all defendants to participate in the trial and not otherwise.

Click here for Part 2 of the Blog.

Yogesh Pai is an Assistant Professor and Co-Director of CIIPC at National Law University Delhi. Views are personal and does not express the views of the Centre/University.