Guest Post: Delhi High Court on ‘Originality’ and ‘Fair dealing’

(In a recent judgment in Chancellor Masters of Oxford v. Narendra Publishing House, Justice Bhat of the Delhi High Court had the opportunity to once again examine the law relating to the standard of originality in copyright law. Additionally, the judgment also contains an extensive discussion of ‘fair dealing’. The following is a guest post on the judgment contributed by Mathews George, a 3^rd year student at the National University of Juridical Sciences, Kolkata)

The recent judgment of the Delhi High Court in The Chancellor Masters and Scholars of the University of Oxford v. Narendra Publishing House and Ors is another evidence of the approach of the judiciary to evolve with the times. The facts of this case are as follows. The plaintiff, following the course structure prescribed by the Jammu and KashmirState Board of School Education, published textbooks for class XI. The plaintiff and the Board entered into an agreement and by virtue of this the copyright in the said textbooks vested with the former. The plaintiff, in their textbooks, had given answers to the questions in the exercises, but did not provide detailed step-by-step method to arrive at the answers. The defendants, Narendra Publishing House and Others came up with guide books which independently contained the steps for solving those problems. The plaintiff contended that this amounted to substantial copying of questions by the defendant and sought an order restraining the defendants from such act.

The issues in this case are the following:

· Whether the questions given in the exercises, which the defendants have reproduced, prima facie merits copyright protection?

· If it does, does the defence of “fair dealing” apply?

i) The issue of originality

A fundamental element of copyright law is that it does not grant the author of a literary work protection for ideas and facts. Protection is granted to creative expression of such ideas and facts by conferring an exclusive privilege to exploit such expression for a limited time. Law does not protect every such expression. The law affords protection to expressions that are fixed in a medium and are “original”. Under Section 13 of the Copyright Act only “original” literary, artistic, dramatic and musical works can be subject matters of copyright. The concept of “originality” has undergone a paradigm shift from the “sweat of the brow” doctrine to the “modicum of creativity” standard put forth in Feist Publication Inc. v. Rural Telephone Service by the United States Supreme Court.

In India, the Supreme Court judgment in Eastern Book Company v. D.B. Modak marked the distancing of judiciary from the common law doctrine of “sweat of the brow”. The judgment set a higher threshold level for extending copyright protection. [For discussion on judgment, see post by Shamnad Basheer] This was a paradigm shift in the jurisprudence surrounding the concept of “originality” in Indian Copyright law. [For a discussion on originality, see the post on the Scrabulous case and the post on Reckeweg v. Adven Biotech.] The Supreme Court endorsed the standard enunciated in the Canadian Supreme Court case (CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 (1) SCR 339) which is a mid-way between the two doctrines. The Court noted that the two positions i.e. the “sweat of the brow” and “modicum of creativity” were extreme positions. The Court preferred a higher threshold than the doctrine of “sweat of the brow” but not as high as “modicum of creativity”. The stand taken by the Supreme Court is a welcome shift as this will help in limiting copyright protection to intellectual labour which promotes creativity.

Interestingly, the plaintiff relied on cases prior to EBC case for claiming copyright over arrangement of questions and exercises. It must be noted that pre-EBC cases were more inclined towards “sweat of the brow” doctrine. Accordingly, the plaintiff did not show how its effort is “original” to conform to the minimum degree of creativity mandated by the Indian law post- EBC case. On the other hand, the plaintiff asserted the work put in by the author, and the effort involved in arrangement of questions. For instance, the plaintiff averred the research and hard work involved in preparation of text books. They argued that the preparation of text book involved application of substantial skill, judgment, labour and investment of time and money. Interestingly, they did not try to show the uniqueness of their work i.e how “original” their work is from others. They also did not show how it evolved a scheme/arrangement which is independent of the dictates of the Board. Since there was no attempt to show “creativity”, High Court held that the plaintiff’s claim of copyright is not maintainable. Further, the Court clarified that the involvement of the Board in the creation of syllabus did not suggest that there could not be any creativity in the schematic arrangement of chapters. In the instant case, the Court cited the lack of material in support of such creativity in the arrangement. The Court observed that the plaintiff had not made any attempt to show creativity apart from placing the text books on the record. This observation as such may appear to be a little confusing considering the fact that this case is heard at a prima facie level and the placement of text books might be enough in such circumstances. (Note that in a suit for temporary injunction, the plaintiff needs to show his case only at a prima facie level.) But it should be considered in the light of the fact that the plaintiff relied on cases prior to EBC case for contending “originality” and did not try to show the uniqueness of their work when compared to text books of other Boards or other books dealing with the subject. The outcome of the case might have been different if the plaintiff had placed text books of other boards and treatises on the subject and shown the uniqueness of their work.

The judgment of the High Court is in consonance with the standard of “originality” laid down in the EBC case. However, this elevated standard is not conducive in all circumstances. Consider the case of protection for “unoriginal” databases. Digital databases such as Manupatra and Westlaw have enabled the production of facilities which enable easy access to vast collections of information. The value of these facilities is the comprehensive nature of information that they contain and the ease of access rather than the way that information is ordered. But these databases are easily copied. Thus they are ideal candidates for IP Protection even though they do not meet the “originality” standards as laid down in EBC case. The EC Database Directive shall be viewed in this context. The Database Directive required member states to introduce a two-tier system of protection for databases. The first tier involves retaining copyright protection for databases that are original. The Directive also requires member states to provide a second tier of protection by way of sui generis rights known as the database rights. Such rights arise in relation to databases which fail to reach the “originality” threshold in the copyright law. These rights are in addition to any copyright protection that may exist in relation to a database. [See this post by Shamnad Basheer for data base protection in India]

The issue of copyright for remote sensing images is another area which warrants discussion in the light of elevated standard of originality. The data collected from remote sensing images can be classified into three – primary data, processed data and analysed data. The processed data and the analyzed data come under the realm of copyright protection as they involve “originality”. But copyright protection as such cannot be extended to primary data as it does not involve “human skill” or “originality” i.e involvement of intellectual effort is very less in such cases. Even then, primary data warrants protection as it is the product of substantial investment in terms of both money and time. Such investments will be highly unsecured if there is no legal tool for protecting them. Hence the solution is to grant sui generis rights for such images. The necessity for a sui generis regime is all the more relevant in the light of rapid growth in commercialization of space activities of ISRO.

The High Court compared the instant case with section 3 (k) of the Patents Act, 1970 which denies any form of patent protection to a mathematical method or algorithms. The Court reasoned that the Parliament could not have intended copyright protection for mathematical questions which is of wider duration when the same is not given patent protection which is of lesser duration. This approach of the Court is confusing for the following reasons: The subject of protection of copyright and patents are different. Copyright protects expressions and not ideas. Again, it does not protect expressions which are closely interlinked with ideas as extension of protection for such expressions will in fact protect the ideas. Patent law protects inventions which can be considered as the materialization/manifestation of ideas provided they satisfy the criteria for patentability. Further, copyright law does not prohibit the use of copyrighted work but the patent law does. Once a product is patented, it can be used only under a license. Hence both offer different levels of protection. For the above mentioned reasons, the comparison drawn by the Court so as to deduce the intention of the legislature is confusing.

The doctrine of “merger” was used for deciding the issue of copyright over questions. This doctrine posits that where the idea and expression are intrinsically connected, and that the expression is indistinguishable from the idea, copyright protection cannot be granted. Applying this doctrine courts have refused to protect the expression of an idea that can be expressed only in one manner, or in a very restricted manner, because doing so would confer monopoly on the idea itself. In the instant case, the Court reasoned that mathematical questions are expressions of laws of nature. Since language is a limited medium, such laws of nature can be expressed only in a few ways. Hence extension of copyright protection for questions would deny access to ideas that they encompass. This would obviate one of the primary objectives of copyright law i.e promotion of creativity. For these reasons, the Court held that copyright could not be extended to the questions. [For a discussion on doctrine of merger, see this post which comments upon the judgment in Scrabulous case.]

The language of the judgment seems to suggest that copyright cannot be granted to mathematical questions at all. There are sets of questions which can be expressed only in a few ways and those which can be expressed in a myriad ways. For instance, consider the following sets of questions:

a) Questions which plainly seek for solution of an equation

b) Fact situations that require the application of a particular equation for its solution.

Copyright cannot be granted to the first set of questions as it encompasses an idea which can be expressed only in a few ways. Such questions will have to be framed depending upon the solutions envisaged – finite or infinite or unitary solutions. But this is not the case with the second set of questions. Second set of questions lays down a fact situation. It, of course, encompasses an idea. But this idea can be expressed in a myriad ways by changing the fact situation. Hence doctrine of merger does not apply to the latter set of questions which in turn means that such questions can be copyrighted.

ii) The issue of defence of fair dealing

All modern copyright systems provide for circumstances in which copyright will not be infringed by the unauthorized reproduction or presentation of a copyright work. Such exceptions represent scenarios in which the legislature has decided to prioritise some other interest over the interests of the copyright owner. There are two general approaches to the provision of copyright exceptions that can be taken.

The first approach is to provide a small number of generally worded exceptions. The effect of this approach is such that any use which a court deems to be ‘fair’ will be treated as non-infringing. This is known as the defence of “fair use”. The United States, for example, leans towards this approach.

The second approach is to provide a large number of much more specific exceptions, encompassing carefully defined activities. This is known as the defence of “fair dealing”. This doctrine which was evolved in United Kingdom lays down limitations and exceptions to copyright. Although most former colonies and dominions have now had their own copyright legislations for a considerable number of years, they followed the imperial model so developed. Thus the copyright laws of Australia, Canada, India, New Zealand, Singapore and South Africa delineate the limits of copyright protection by way of an exhaustive list of specifically defined exceptions. Unlike the related United States doctrine of “fair use”, “fair dealing” cannot apply to any act which does not fall within one of these categories. Undoubtedly, the doctrine of “fair dealing” is not as flexible a concept as the American concept of “fair use”. In contrast, the defenders of the Commonwealth approach insist that the current approach offers certainty, whereas the “fair use” defence is dogged by pervasive unpredictability. But this argument is unacceptable as “fair use” defence in United States is supported by a complex web of understandings, agreements and policy statements. These other elements of the US copyright milieu provide institutional users of copyright material with degree of certainty around which they can structure their own copyright policies.

In the instant case, the High Court examined the applicability of defence of “fair dealing”. Interestingly, the Court used the balancing test in “fair use” doctrine in United States copyright law for resolving whether Section 52 which encapsulates “fair dealing” doctrine applies in the instant case. It is further interesting to note that the High Court used “fair dealing” doctrine and “fair use” doctrine synonymously. This approach of the Court should be seen in the light of the fact that both the doctrines are conceptually similar. The only difference is with regard to the flexibility of the latter doctrine. Hence the adoption of the latter shall help the judiciary to give a liberal interpretation to Section 52 of the Copyright Act. [For a discussion on Olympic copyright dispute which involves Section 52 (b), see this post.] [See post on ESPN Stars Sports v. Global Broadcast News Ltd. and Ors which deals with “fair dealing”]

The four-factor test for “fair use” which is adopted in this case is the following: a) purpose and character of the use b) nature of the copyrighted work c) substantiality of the portion used in relation to the copyrighted work as a whole and d) effect on the potential market regarding the value of the copyrighted work. It is well settled that all the above said factors are to be treated together and no undue preference can be given to any one of them. As far as the first factor is concerned, the Court must look into the nature of the use i.e. whether it was for educational purposes or for review or criticism. The test is whether the work merely supersedes and supplants the original work or it adds something new, with a further purpose or different character. In other words, the test is how transformative the new work is. This determination is closely knit with the other three factors, and therefore, central to the determination of “fair use”. For example, if the work is transformative, then it might not matter that the copying is whole or substantial. Again, if it is transformative, it may not act as a market substitute and consequently, will not affect the market share of the prior work.

In the instant case, the Court noted the following: (a) theory portions in the textbooks had not been copied (b) text books did not contain the steps, or methods aiding solutions to the questions/ problems (c) guide books contained “step by step” method for solving the problems given in the text books. The Court concluded that the purpose and manner of the defendants’ guide books is different from that of the text books. The defendants’ guide books which provided the step-by-step process of reasoning is for the purpose of catering to the needs of weak students. Thus, the defendants’ work was held to be “transformative” in character.

The Court then closely analyzed the work of the defendants. The Court held that the revisiting of the questions by the defendants and assisting the students to solve them by providing “step by step” reasoning amounted to “review” under Section 52 (1) (a) (ii) of the Copyright Act. The Court reasoned that a review, in the context of a mathematical work, could involve re-examination or a treatise on the subject. Thus the work of the defendants was held to fall under the “fair dealing” provision of Section 52 of the Act.

Copyright law is premised on the promotion of creativity through sufficient protection. On the other hand, various exemptions and doctrines in copyright law, whether statutorily embedded or judicially innovated, recognize the equally compelling need to promote creative activity. They ensure that the privileges granted by copyright do not stifle dissemination of information. The doctrine of “fair dealing” is one such exception. Coupled with a limited copyright term, it guarantees not only a public pool of ideas and information, but also a vibrant public domain in expression, from which an individual can draw as well as replenish. Hence “fair dealing” provisions must be interpreted so as to strike a balance between the exclusive rights granted to the copyright holder and the often competing interest of enriching the public domain. Section 52, therefore, must receive a liberal construction in harmony with the objectives of copyright law. Since Section 52 details only the broad heads, resort must be made to the principles in other jurisprudences. The adoption of principles enunciated in “fair use” doctrine is a welcome step considering the fact that it is a more flexible doctrine. But this approach, as in United States, requires supporting elements such as policy statements and guidelines for the purpose of drawing in certainty. Otherwise this approach may turn detrimental in future as uncertainty may stifle creativity which is one of the paramount objectives of copyright law.

Conclusion:

The issue of “originality” was rightly judged from the perspective of elevated standard of originality. Surprisingly, the plaintiff relied on pre-EBC case laws for proving originality. If the plaintiff had relied on post-EBC law and shown the uniqueness of their work, then the result might have been different. In the absence of any material or arguments, the High Court rightly held that copyright could not be granted. Further, in view of the arguments presented earlier, the judgment should be read as applying to one type of mathematical questions and not to all types and sets of questions.

It must also be noted that an elevated standard of originality may not be conducive in all the circumstances. Such a standard does not extend protection to databases and remote sensing images. Hence there is an urgent need for a sui generis regime for protecting such forms of data.

This post welcomes the use of principles of “fair use” doctrine for interpreting Section 52 of the Act. This shall help in extending the ambit of exceptions in that section. But this shall not be at the cost of uncertainty. Hence the onus is upon the government to come up with policy statements and guidelines which shall facilitate the liberal interpretation of Section 52. Such statements and guidelines shall lay down the minimum standards for invoking “fair dealing” provisions. For instance, in United States, Agreement on Guidelines for Classroom Copying in Not- for-Profit Educational Institutions with Respect to Books and Periodicals lays down the minimum standards for educational “fair use”. This has, to a great extent, drawn in legal certainty. The Indian government should emulate the same and come up with guidelines and policy statements which shall facilitate the liberal interpretation of fair dealing provisions with a degree of certainty.

(We would like to thank Mr. George for his interesting post)