Copyright

On ‘Prima Facie’ cases and ‘Originality’: Part II


(In Part I of this note, I made the following points:

  1. The “prima facie” standard in injunction law requires the plaintiff to show that he has some possibility of success and that his claim is not vexatious. The probability of success and the relative strengths of the parties’ arguments are not relevant factors.
  2. The “originality” standard in copyright law requires that in order to be original, a work must involve some intellectual skill and judgment according to the standard in CCH.
  3. From these two points, it follows that in matters of temporary injunctions in copyright cases, the plaintiff would have met the “prima facie” standard if his claim is not vexatious and if he shows that he has some possibility of success in demonstrating in trial that his work involves intellectual skill and judgment. Once the plaintiff shows this, he has prima facie established “originality”. The Court’s decision should then be guided by “irreparable injury” and “balance of convenience”.

The following is Part II of the note)

I now turn to the application of the principles discussed above to the Oxford judgment.



C. The application in Oxford

The essential question which must be considered is simple. There was no allegation that Oxford’s claim was vexatious. The only question which was left to be considered was “Is it possible that the plaintiff has applied the required intellectual skill, effort and judgment?” Let us now consider some of the reasons given by Justice Bhat in holding that no prima facie case was made out, and at whether those reasons are justified keeping in mind the discussion so far. I will not go into the facts specifically except where necessary. The facts are detailed in this guest post on the judgment.

  1. Regarding the questions themselves, “Besides asserting the work put in by Dr. Roy, and the effort in arranging such questions at appropriate stages, chapters or units in the textbooks, the plaintiffs do not show how such effort is original to conform to the minimum degree of creativity mandated by Indian law.” However, the plaintiff was not required to show this at all. All the plaintiff was required to show was that it is possible that the required degree of creativity was conformed to. Whether the required degree was actually conformed to was a matter for trial, and not for the determination on temporary injunction.

  1. Again, in relation to the questions themselves, “Recognition of copyright as inhering in the questions themselves (as the plaintiff suggest the court to do), without existence of the “creative” element of originality would deny access to ideas, thus robbing one of the primary objectives of copyright law (promotion of creativity) of vitality, thereby stifling intellectual growth.” Now if the plaintiff actually suggested that the Court recognize copyright without arguing that it was possible for the originality standard to be met, this holding would be correct. Because, it is impossible (as a matter of law) to show that an idea would be protected by copyright law.

  1. Another reason for denying copyright in the questions was, “Interestingly, Section 3 (k) of the Patents Act, 1970 explicitly denies any form of patent protection to a mathematical method or algorithms. Prima facie, Parliament could not have intended that innovations such as new mathematical questions, denied benefit of patent protection-which if granted is of restricted duration-could be refused, but a wider protection in time, by way of copyright, could have been granted.” For a moment, let us assume that all questions were on the form of 2 + 2 = 4. This type of question can obviously be expressed in only one form. It is denied protection because of the doctrine of merger (reason 2 discussed in the preceding paragraph). Just because something is excluded from the protection of patent law, it does not necessarily follow that the thing must be excluded from copyright protection as well. It is worth noting that in CCH, the Court expressly rejected the Feist standard of “creativity” because the creativity standard implies that the work must be novel or non-obvious, which are standards relevant to patents and not to copyrights. Justice Bhat’s reliance on the Patent Act is therefore unfortunate.

  1. On the issue of copyright in the schematic arrangement of the textbook, the Court stated “The plaintiffs had to show original effort, unique to their schematic arrangement or sequencing. In education, the dictates of the “learning content” are such that each level demands a “curve”. These “learning content” and “learning curve” elements are inherent in the syllabi evolved by examination bodies such as J & K Board or the CBSE. The plaintiff therefore, had to show how it evolved an arrangement so unique that the scheme is entitled to copyright protection, independent of the dictates of the Board. The involvement of the Board, in the creation of the syllabus, negates such originality. This is not to suggest that there can be no creativity in such schematic arrangement; the court merely infers that prima facie there is no material in support of it; the plaintiff has made no attempt to show this creativity, apart from placing the textbooks on the record.” This is a clear example of a wrong understanding of “prima facie”. Let us assume that the plaintiff made no attempt to show their creativity apart from placing the textbooks on record. They were not required to make any such attempt. In any case, the plaintiff had made specific averments in relation to their intellectual skill, effort and judgment in preparing the textbooks. The Court itself notes “this is not to suggest that there can be no creativity in such arrangement…” This means that it was possible to show such creativity. The prima facie case is established at this point itself. Further attempts to show how creative the plaintiff actually was were irrelevant.

  1. The fair dealing / fair use issue: A commentator on a previous post pointed out that this appears to be obiter dicta, and was unnecessary for resolution of the case. This is in my opinion the correct view to take, given that there is a holding that there was no copyright at all. I will add one point here, that I am unsure whether the question of fair dealing should be gone into in temporary injunction matters while dealing with a “prima facie” case. Fair dealing is a matter which should be established at trial. One way it might be relevant at the temporary injunction stage is to argue it in establishing that the balance of convenience is not in favour of the plaintiff.

In short, the Court was justified in refusing to grant a temporary injunction against the alleged infringement of copyright in the questions themselves (assuming that the questions were straightforward mathematics questions incapable of being expressed in any form but one) on the grounds of the doctrine of merger. The other reasons are not good enough to deny the existence of a prima facie case, as the plaintiff did not have to show the possibility of success in the trial. With respect to copyright in the arrangement/scheme of the textbook; again, the Court has proceeded on the basis that the plaintiff did not show that the work met the required standard of originality. This misses the point that the plaintiff was not required to show this; it was enough to show the possibility of the work meeting the required standard. Perhaps, the final decision can still be justified by saying that although the plaintiff established its case (at least with respect to the schematic arrangement) prima facie, it was still not entitled to a temporary injunction given that both parties would have suffered irreparable injury and that the balance of convenience was not in favour of the plaintiff (because of fair use). However, that approach called for an entirely different type of analysis, looking extensively at the balance of convenience between the parties. The holding that no prima facie case was made out is in my opinion very debatable.



Conclusion

In light of the final result in the Oxford case (and in light of the holding on the issue in the Scrabulous case), it is possible to argue that the actual standard of originality in copyrights is the Feist standard. Otherwise – the argument would run – why would the Court refuse to hold that even a prima facie demonstration originality was not made out? In my opinion, the answer to this is not that the Court was applying the higher standard of originality, but that it was looking at the probability of success in adjudicating on “prima facie case”. With respect, the Court was mistaken in doing so. That, however, does not mean that the standard for “originality” is higher than the CCH standard. I believe that the present position can be expressed as follows:

  1. The standard for originality is the “intellectual skill and effort” standard of CCH.
  2. In deciding whether to grant a temporary injunction or not, the question to be asked is not, “Has the plaintiff established that the CCH standard is satisfied?” Instead, the right approach would be to ask, “Is it possible that the plaintiff will be able to establish the CCH standard?” If this question is answered affirmatively, the Court must look at issues of irreparable injury and balance of convenience, and should not assess the relative strengths of the parties’ claims (except perhaps as a tipping factor in cases where the balance of convenience cannot be clearly identified).
  3. The question “Has the plaintiff established that the CCH standard is satisfied?” is the proper question at the stage of the final order at the end of the trial.
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12 comments.

  1. AvatarAnonymous

    Hello,

    Your analysis is very helpful. As someone working on a comparative survey on common law injunction positions, I found the analysis extremely compelling.

    I agree with your conclusion that an analysis of the merits should not take place at the first stage of the analysis. What did concern me initially, however, was the policy justification behind such an approach. However, I now think that looking at the merits as a tipping factor in the balance of convenience is probably correct. As I understand, your approach advocates the following:

    1. Looking at whether the claim is vexatious. If it is vexatious, the matter ends there. No interim injunction.
    2. If the plaintiff passes test 1; the Court should look at whether the claim is frivolous/whether there is some possibility of success. If the claim is frivolous/if there is no possibility of success, the matter ends there. No interim injunction.
    3. Assuming the plaintiff passes test 2; now the Courts should look at irreparable injury.
    4. Assuming both parties will suffer from irreparable injury, the Court should look at balance of convenience.
    5. Assuming the balance of convenience is indeterminable, now the Courts should look at the merits of the parties.

    Do let me know whether this is indeed the approach you suggest. If you do, then I would agree with you. However, I still have one difficulty.

    Generally balance of convenience is understood as a question of fact. But if we are to weigh legal merits in balance of convenience, will it still remain a pure question of fact? I ask this considering that several jurisdictions allow appeals on questions of law and not of fact. So generally they would decline to interfere with a holding on the balance of convenience, giving regard to the factual determination of the trial judge. But should this be the case even when the determination is made by point 5 above?

    Thanks a lot for the post.

    Reply
  2. AvatarAnonymous

    Hi,

    Two very good posts. I have one major agreement and one major disagreement. On both of those though, I appreciate your analysis very much.

    I entirely agree with you on your injunction argument. In fact, I remember some judgment saying that the grant of TI should be a matter of common sense and not of law. It is eminently reasonable as a policy matter to not look at the merits and just take a call based on irreparable injury and bal of conv. the lowest possibly threshold for prima facie case also makes sense. On law, I appreciate your analysis. I’d add that the Supreme Court seems to have applied Cyanamid without citing it in United Commercial Bank v. Bank of India, AIR 1981 SC something. Also, there is an argument to be made that the Colgate-line is still (notwithstanding the decision in Gurudas) the law on IP matters. But I do think that the better view to take is the one you take of harmoniously reading everything and framing a general law. If there are special considerations arising because of IP issues, those can be dealt with under bal. of conv. as you seem to be suggesting. For instance, it appears to me to be better as reading “public interest” (as in Roche-Cipla) into bal of conv. or as an independent 4th factor arising because of exceptional circumstances. Makes no sense to complicate prima facie case.

    What interests me is the case in Midas Hygiene, Supreme Court 2004. Sorry I do not have the exact citations with me; I’l fill them in later sometime. There the Court says that in cases of trademark or copyright infringement, normally an “injunction must follow”. This is surprising – it certainly seems to suggest a watered-down version prima facie case at the very least. Any thoughts?

    Now on to the standard of copyright. Perhaps, you dismiss the “independent” standard category a little to quickly? Agreed, nobody has been thinking about an independent Indian standard on originality. Anonymous coward suggested in another comment that perhaps the SC has followed Feist and not CCH. I doubt that interpretation will succeed – I look forward to hearing more from Anon. Cow. (or anyone else) on the issue. But I do think that we have some kind of a blend between CCH and Feist. The Courts (or should I say the SC and Justice Bhat!?) keep citing CCH, and then keep talking about a certain degree creativity. What is this “certain degree of creativity”? It reminds me of Feist more than CCH. But I would not subscribe to the view that Feist is the law, for then, why do our Courts cite and refer to CCH?

    So I do believe we have some kind of a unique blend. What do readers/authors of blog have to say? I’l try to formulate this standard a bit more clearly in a later comment.

    Assuming you are correct on originality, you’ve given an excellent analysis of the actual decision in Part 2 of the post. Probably, the points you raised there are important even if the standard is different. I do think that Justice Bhat went into the matter way more deeply than necessary

    Oh well. I just realised that it is Sunday morning. I must stop this “legalising” of my life; must get away from it for at least a day. More later in the week sometime.

    Meanwhile it will be great to know the thoughts of all the Spicy IP authors and readers. It is time we have a big debate on where our copyright law is going.

    Before parting, a general comment not just on this post but on all posts in Spicy IP (with very few exceptions which I will leave aside). I think you are doing a great job on analyzing various aspects. I may not agree with everything you say, but nonetheless, you are doing very well in terms of presenting arguments and flagging issues to be considered. Keep up the work, and congrats.

    Regards,

    Another Anonymous Coward

    Reply
  3. AvatarRoshan

    The tendency of Courts to look into the merits deeply while granting temporary injunctions goes against the rationale of temporary injunctions. It amounts to prejudging the issue without having full evidence. The point of TIs is to ensure that the effective remedy will be available at the end of the suit. More focus should be given to irreparable injunry and balance of convenience. Therefore, I agree with the analysis. It is likely that Colgate can also be interpreted as requiring an examinaion of the mmerits. But in view of the points made, I would agree that the author’s interpretation and technique of reading all the cases together should be preferred.

    Reply
  4. AvatarMihir Naniwadekar

    Hello,

    Thanks for the comments.

    @ anonymous 1:
    the steps you list are in general the approach i was suggesting. interesting question about whether it will remain an appeal. i assume that in that case, where the merits were looked at, one will have to consider balance of convenience to be a mixed question.

    @ another anonymous coward:
    thank you for pointing out united commercial bank. regarding your point on midas hygiene, while the statement “injunction must ordinarily follow” can certainly be taken to diluting the standard; i do not believe that it was actually made in the context of the standard of prima facie. The statement was in relation to an argument regarding delay in filing the application – i believe that the statement you highlighted was made just by way of emphasis; and not in order to decide on the standard of prima facie.

    regarding your comments on the tandard of originality, i will reply after some more consideration. i look forward to your further thoughts.

    @ roshan:
    thanks for pointing out the policy implications.

    Reply
  5. AvatarAnonymous Coward

    Sorry for cross-posting, but I thought this comment was important for this discussion too.

    EBC doesn’t prescribe anything. As I noted in my comment to George’s post, it is a very confused and very confusing decision. However, we have to make the best we can of this.

    Looking at the analysis of Justice Bhat in the Oxford case (without going into the rights and wrongs of it), it seems that a higher standard than CCH is being followed, contrary to the conclusion you put forth in your analysis of Oxford.

    If we follow Goodhart’s advice (and whether that is good advice is open to question), we would look at what the judge does and not what she says. In this case, given the material facts and the decision, I would say that a much higher standard was being applied than “skill and judgment” (N.B. “skill and effort”, which you allude to twice in your posts, was the test that the Federal Court of Appeal used, and not the Supreme Court of Canada, which used “skill and judgment” exclusively). It seems, in fact, to be even higher than “modicum of creativity”, IMHO. A decent threshold of creativity seems to have been set in the judgment. Wouldn’t you agree?

    How this will be interpreted by other courts (or other judges) is of course another point. They might not agree with Goodhart’s method of deriving ratio decidendi, and they might give more weight to all the citations of CCH (as an aside, I’d like to point out that Feist has also been cited by both Justice Naolekar and Justice Bhat… Misspelt as “Fiest” in the official transcript of Justice Bhat’s decision).

    Still, going purely by the decision (and not what Justice Bhat says is the reasoning behind the decision), the originality standard in India seems to be higher than CCH, and seems to embrace creativity. What is this minimum measure of creativity? We can’t be sure. But the increase in the threshold is a positive sign that I applaud.

    Cheers,
    Anonymous Cow.

    Reply
  6. AvatarAnonymous Coward

    Any responses? Any thoughts? (Addressed to the Anons before me, Roshan, Messrs. Naniwadekar, George, and even Mr. Basheer… And the lurkers, who are quite plentiful).

    I wish to think this issue (which I believe is extremely important) through, and that is sometimes difficult without a counter-position (which need not be the opposite of what one is arguing, but only needs to make one question one’s preset thought pattern).

    An interesting article y’all might want to read:
    Prof. Pina D’Agostino’s report, Fair Dealing after CCH, available in PDF and in HTML.

    Two open questions: Do you believe that this calls for legislative intervention? And do you believe the global thought on L&E, and more generally the A2K movement, is affecting Indian thought (and decisions) on fair dealing and “originality” at all, and if so: how? in what respects?

    Cheers,
    Anonymous Coward

    Reply
  7. AvatarMihir Naniwadekar

    @ genericipguy – Thank you 🙂

    @ anon. cow – sorry i will respond shortly (in a couple of days). another anonymous coward mailed me a few of his thoughts; and he will put them up sometime tomorrow.

    Reply
  8. AvatarAnonymous

    On some further reflection this is what I think:

    Anon. Cow. is right when he says that EBC actually prescribes (if it does prescribe anything) a standard higher than CCH. Naniwadekar is right insofar as he says that the Delhi HC (Bhat J) has consistently interpreted EBC as following CCH.

    Whether the CCH test is the “Indian law on the point”? Technically, no, because the SC opinion in EBC is the Indian law on the point. However, I find it extremely unlikely to that the Delhi judgments will not influence future judicial determinations.

    Legislative clarification? Well yes, ideally… but the legislature will also have problems defining originality. Can the legislature say ” Explanation – ‘Originality’ shall be understood according to CCH” or “Explanation – ‘Originality shall be understood according to Feist”..?

    Because if they refer merely to “creativity” or “skill”; the confusion is bound to persist… I do not see a clear way to avoid this.

    I look forward to everyone’s thoughts…

    Regards,

    Another Anon. Cow.

    Reply
  9. AvatarGenericIPguy

    Australia:

    After USA, while we are on issuing of temporary injunctions and the factors to be considered therein, do read the following Australian case:

    In Interpharma Pty Ltd v Commissioner of Patents [2008] FCA 1498 the Federal Court of Australia granted Lilly an interlocutory injunction to restrain Interpharma from launching its generic version of Gemcitabine HCl.

    A short note on the above case is put at this site:
    http://www.blakedawson.com/Templates/Publications/x_publication_content_page.aspx?id=53473

    Regards,
    GenericIPguy

    Reply
  10. AvatarAnonymous Coward

    A slight clarification: I don’t believe EBC prescribes a standard higher than CCH. To be frank, I don’t know what to make of EBC.

    I was employing Goodhart-ian analysis on the Oxford case. My point is that despite Justice Bhat repeatedly (and very clearly) interpreting EBC as following CCH, and proclaiming that he is also following CCH (not only because of his lack of choice given that EBC is an SC case, but also because he seems to agree with CCH), he in fact doesn’t follow the CCH test. My assertion is that had he followed the test of “skill and judgment”, he would have found the book copyrightable. Since he didn’t find it copyrightable, he must have followed a higher test (despite saying that he is following the “skill and judgment” test). Very frankly, to me it seems that even the “modicum of creativity” test is fulfilled (though that is slightly debatable). It seems to me that it is more than a mere “modicum” of creativity that is required to please Justice Bhat. And I would agree with him.

    Thus: I agree with the decision, though not with the reasoning behind the decision.

    Cheers,
    AC

    Reply
  11. AvatarMihir Naniwadekar

    Hello,

    w.r.t. EBC, I have not gone into the details of what it holds as earlier posts have done so. By saying “Indian law”; I did intend to mean the decision as interpreted by the Delhi HC.

    W.r.t. a Goodhart-type analysis of Oxford:
    First, Anon. Cow. pointed out, “Very frankly, to me it seems that even the modicum of creativity test is fulfilled (though that is slightly debatable).” So it appears that even with a Goodhart-type analysis, it is unclear that Justice Bhat was applying the modicum standard. Secondly (without going into details), I have my doubts as to whether the Goodhart approach is the correct one in interpreting the ratio of a case. Also, I do not think that any Court deciding a case in future will follow a Goodhart-style approach and ignore the reasoning actually given by Justice Bhat; especially when he has followed the same reasoning quite consistently.

    Regards,

    Mihir

    Reply

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