The debate on copyright for DNA sequences finally put to rest? : The Delhi High Court’s Verdict

The Delhi HC recently in Emergent Genetics India Pvt. Ltd. v. Shailendra Shivam and Ors. discussed the copyrightability of DNA sequences and whether they could be classified as ‘literary works’ under the Indian Copyright Act.

This case is especially interesting given that this seems to be the first time that such a question has arisen before an Indian court being earlier confined to academic discussion.

Dramatis Personae

Plaintiff 1: Emergent Genetics India Pvt. Ltd. (formed as a result of a Joint Venture between Hindustan Lever Limited (HLL) and Emergent Genetics LLC) is a company engaged in research and development, processing and sale of seeds in India

Defendant 2: Pradham Biotech Pvt. Ltd. is an Indian incorporated company

Defendants 1, 3, 4: Shailendra Shivam and Ors. are Plaintiff’s former employees

Defendant 5: CEO of Seeds India (a partnership firm which processes and packages seeds and used to process seeds for Plaintiff.

Facts

Plaintiff alleged that D1, D3 and D4 were involved in passing information of Plaintiff’s seed varieties to D2. It found that D2’s seed varieties were genotypically similar to its own seed varieties having subjected the latter’s seeds to a DNA Fingerprinting Test (a test whereby the genetic makeup of two seeds is compared). It therefore sought a permanent injunction from the court restraining the defendants from manufacturing, selling or offering to sell their seeds.

Main Issue

Though this case involves a number of issues including genotypical similarity of seeds, violation of trade secrets etc, in this post I will be specifically dealing with the issue pertaining to copyrightability of gene sequences.

Plaintiff’s Contentions

Plaintiff contended that since the products were genotypically similar, D2 had reproduced its unique sequencing formula and this amounted to copyright infringement of the plaintiff’s literary work. In order to bring DNA sequences under the ambit of a literary work, it was contended that they were similar to computer programmes carrying a set of instructions.

S.13. of the Copyright Act, 1957 (“Act”) states that copyright subsists is any (a) original literary, .. works;

Under S.14, literary work is one of the items wherein exclusive rights can be claimed so as to amount to copyright.

S.2 (o) of the Act states “literary work” includes computer programmes, tables and compilations including computer “literary data bases;

S.2(ffc) states, “computer programme” means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result;

The Plaintiff contended that a DNA sequence would amount to a literary work because

1. It was capable of being expressed in writing or by analogous means
2. It was analogous to a computer programme as it was a set of instructions not intended for direct application by the human mind.

Further it was contended that a DNA sequence could be an original work since it would not have existed but for the toil and effort of its creators who had put in their skill and labour into the process of decoding and recoding the sequence. In this case the sequence came into existence as a result of the hybridization process by the Plaintiff.

In support of this contention Plaintiffs relied on, “Modern Law of Copyrights and Designs” Laddie, Prescott and Vitoria, Chapter 21, 2nd Ed. which states, that though a sequence is copied from nature it can still satisfy the criteria of originality because further independent skill, useful labour, knowledge or judgment may have been applied to it and sometimes modifications and variations are also introduced by scientists.

Defendants Contentions

Defendants on the other hand countered the arguments of the Plaintiff stating:

1. The Copyright Act is inapplicable in this case as S.2 (o) does not extend to cover mere compilation of sequences.
2. The process of DNA sequencing does not involve any literary work. In fact no copyright exists with respect to DNA sequencing anywhere in the world.
3. There is no similarity between a computer programme and DNA sequencing.
4. Though ‘fixation’ is not a requirement under Indian copyright law, knowledge and expression of an idea are essential.
5. There is no originality in the mere copying or compiling of gene or similar hybrid sequences which could be taken down in tangible form by anyone.
6. Further, there exists no separate patent regime for plants and seeds in India. S.3(j) of the Patents Act, 1970 specifically excludes rights to patents with respect to seeds. The Indian Patents Act thus takes away the rights of any inventor in respect of seeds, varieties and species. The lack of patent protection to seeds and agricultural methods means that the lawmakers did not want to confer intellectual property monoply in that sphere as a a matter of policy.

Judgment

The court ruled after hearing both sides on the matter of copyrightability of DNA sequences ruled:

1. Originality: The standard of originality required under Indian copyright law is more than mere sweat of the brow but less than a modicum of creativity. (Eastern Book Company v. DB Modak 2008 (1) SCC 1. Our law mandates that only those efforts which create work that are somewhat different in character and involve some intellectual effort and minimum degree of creativity result in copyrightable work. Therefore sequences obtained from nature cannot be considered to be original. The scientist involved in gene sequencing ‘discovers’ facts and does not independently create them. These sequences are merely copied from nature that contains codes for proteins. The minimum creativity threshold is not satisfied. However the court does not address the contention of the Plaintiffs that the sequences can be original since they came into existence as a result of the hybridization process used by the Plaintiff. Therefore they amount to something more than mere ‘sweat of the brow’ and by that measure they may satisfy the minimum creativity threshold.
2. IP Protection: If the process by which gene sequences are created, or isolated does not receive intellectual property protection and is expressly denied patent protection by virtue of S.3(j) of the Patents Act, 1970 then it is inconceivable that the observation and compilation of the consequence of that process which is a natural consequence can receive an extremely wide protection as a “literary work”.
3. Idea- Expression Merger Doctrine: If the use of an idea or procedure requires copying of a Plaintiff’s expression, there is no copyright infringement (idea-expression merger doctrine). When there is only one or very few ways of expressing a particular idea then the expression merges with the idea. Since no copyright exists in ideas, the merged expression/idea is incapable of copyright. The idea-expression merger doctrine was first developed in the US in Baker v. Seldon 101 U.S. 99 (1879). More on this doctrine can be read here and here and also in Ang Steven, Idea- Expression Dichotomy and Merger Doctrine in the Copyright laws of the US and UK 2 Int’l J.L. & Info. Tech. 111 1994. The idea of combining various gene components can be expressed in limited ways. Granting copyright protection would mean that others are precluded from expressing such ideas, therefore there is a merger and as a result a lack of copyright protection.
4. Computer Programmes v. DNA Sequences: The only similarity that exists between the two is that they are a set of instructions for something to be done. However unlike computer programmes which are flexible and can have the same instruction expressed in numerous different ways (through different programme languages), DNA instructions for producing protiens can only be expressed in the form of nucleotide sequences i.e. the manner of stating the process or method of protein production is confined to one expression or programme.

Conclusion

With this case we finally have a ruling on the interesting debate on copyrightability of DNA sequences which had been brewing for sometime. For those interested in reading more viewpoints on this issue, IP Kat carried two posts way back in 2005 laying out the differing view points of industry experts, they can be found here and here.

There is also a more recent article by Christopher M. Holman, Copyright for Engineered DNA: An Idea Whose Time Has Come? 113 W. Va. L. Rev. 699 available here where he argues in favour of copyright protection for engineered DNA, essentially he discusses the benefits of copyright over patents, the analogy between computer programmes and engineered DNA sequences and debunks the idea-expression merger doctrine’s applicability to engineered DNA sequences. For arguments against copyrighting DNA sequences one can read James G. Silva’s article, Copyright Protection of Biotechnology Works: Into the Dustbin of History? 2000 B.C. Intell. Prop. & Tech. F. 012801 available here.