Copyright Publication

A ‘handy’ guide to those who are precluded from commercializing their theses by their Universities


downloadConsider this hypothetical fact situation: ‘A’, a student at university ‘X’, submits his thesis to the University. After the completion of the course, ‘A’ publishes his thesis as a book. University ‘X’ alleges copyright violation as the Terms and Conditions (“T&C”) of his admission assigns the copyright over the thesis with the University. T&C allows a student to reproduce the thesis for non-commercial purposes only. What is the legal tenability of this framework?

On the face of it, University ‘X’ seems to enjoy absolute rights over the thesis. It looks like a clear case of infringement. However, as one looks deeper, it may appear to be a fragile framework.

[Note that this opinion is general in nature considering my intention to give a broad legal perspective on the framework.]

Section 19 of Copyright Act, 1957

According to the fact situation, the author, ‘A’, assigned his copyright over the thesis with the University. The relevant parts of Section 19 of Copyright Act, 1957 (“1957 Act”) which deals with assignment of copyright are as follows:

“19. Mode of assignment – (1) No assignment of the copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly authorized agent.

(2)……

(3) The assignment of copyright in any work shall also specify the amount of royalty and any other consideration payable, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.

……..

(10)…..”

S.19 of 1957 Act envisages the existence of legally binding, written assignment contract as a pre-condition. When compared to the Indian Contract Act, 1872, it sets out certain mandatory requirements such as assignment in writing signed by the assignor or by his duly authorized agent, specification of rights assigned, duration and territorial extent etc.

‘Amount of royalty and any other consideration payable’ is a mandatory requirement. If T&C of the University ‘X’ is silent on this requirement, the validity of the agreement can be challenged.

Indian Contract Act, 1872

Since Indian Contract Act, 1872 (“1872 Act”) is the general law, it is imperative to comply with its requirements. Accordingly, S.10 of 1872 Act is relevant:

“10. What agreements are contracts – All agreements are contracts if they are made by the free consent of parties competent to contract, for a lawful consideration and with a lawful object, and are not hereby expressly declared to be void.

Nothing herein contained shall affect any law in force in India and not hereby expressly repealed by which any contract is required to be made in writing or in the presence of witness or any law relating to the registration of documents.”

It may be possible to challenge the T&C on the following counts:

a) T&C vitiates free consent of parties:

Free consent is vitiated by inter alia undue influence and coercion. They make the contract voidable. As per S.16 of 1872 Act, a contract is said to be induced by undue influence where the relations subsisting between the parties are such that one of the parties is in a position to dominate the will of the other and uses that position to obtain an unfair advantage over the other. Further, a person is deemed to be in a position to dominate the will of another when he holds a real or apparent authority over the other. Also, where a person who is in a position to dominate the will of another, enters into a contract with him, and the transaction appears on the face of it or on the evidence adduced, to be unconscionable, the burden of proving that such contract was not induced by undue influence shall lie upon the person in a position to dominate the will of the other.

When T&C assigns copyright over the thesis with the University in an absolute manner, it does look to be one-sided. Allowing a student to reproduce the thesis for non-commercial purposes doesn’t balance the scales. Therefore, the very tenability of the framework can be challenged on the ground of undue influence.

It is doubtful whether coercion can be used as a ground for challenge here. ‘Coercion’ under 1872 Act has a limited ambit. It may be, however, possible to challenge the T&C on the (weak) ground of equity citing academic coercion. Note that ‘economic duress’ is an accepted ground under common law and an analogy may be possible here.

b) T&C vitiates the requirement of consideration

Every agreement to be enforceable at law must necessarily be supported by consideration. This rule is in accordance with the maxim “Ex nudo pacto non oritur actio” which signify that out of nude pact, no cause of action arises. The expression ‘consideration’ is understood in the sense quid pro quo which means something in return. Can award of degree / award of marks be cited as a consideration for the assignment of copyright? It is a doubtful proposition as ‘fees’ being paid (and not assignment of copyright) is the consideration for the education imparted which culminates in award of degree. It is irrelevant whether the ‘fees’ is paid by the student or the government. Legally, ‘fees’ encapsulate quid pro quo element and in this case, for the education imparted. It can, therefore, be argued that the assignment of copyright is without consideration and therefore, void.

Conclusion

Broadly speaking, it may be possible to challenge the framework on the grounds of lack of consideration and vitiating free consent. Ss.18 – 19A of 1957 Act may offer other grounds as well depending on the given fact situations. As I stated earlier, this post doesn’t substitute a formal legal opinion given on a specific fact situation. This post carries the following message: if you are precluded from commercializing your thesis by the T&C of your university, do not take it as a ‘full stop’.

Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

6 comments.

  1. AvatarRishabh Trivedi

    Mathews P. George don’t you think by suing on the above-mentioned grounds an author might risk formal recognition granted over the theses?

    Reply
    1. Mathews P. GeorgeMathews P. George Post author

      Havent understood what formal recognition means. if the author satisfies EBC judgment, he has a valid claim over the thesis

      Reply
  2. AvatarShashank Mangal

    Regarding the royalty argument

    I think that if the course undertaken is PhD and full scholarship or funding for the course is being given by the university, then in that case, S.17 would make the university the first owner of the copyright in the thesis.

    Regarding consent and consideration,

    So far as the issue of free consent is concerned, I think undue influence will not come to easy rescue as per the Brojo Nath judgment. While talking about the constituents of consideration for the contract, I think that the intellectual environment of college, the constant exposure to professors, library and other resources would also be important players.

    Reply
    1. Mathews P. GeorgeMathews P. George Post author

      On Brojonath: This judgment helps me case. Thx for pointing it out. It may be possible to challenge T&C on S. 23 of ICA:

      “2.5 In the vast majority of cases, however, such
      contracts with unconscionable term are entered into by the
      weaker party under pressure of circumstances, generally
      economic, which results in inequality of bargaining power.
      Such contracts will not fall within the four corners of the
      definition of “undue influence” as defined by section 16(1)
      of the Indian Contract Act. The majority of such contracts
      are in a standard or prescribed form or consist of a set of
      rules. They are not contracts between individuals containing
      terms meant for those individuals alone. Contracts in
      prescribed or standard forms or which embody a set of rules
      as part of the contract are entered into by the party with
      superior bargaining power with a large number of persons who
      have far less bargaining power or no bargaining power at
      all. Such contracts which affect a large number of persons
      or a group or groups of persons, if they are unconscionable,
      unfair and unreasonable are injurious to the public
      interest. To say such a contract is only voidable would be
      to compel each person with whom the party with superior
      bargaining power had contracted to go to Court to have the
      contract adjudged voidable. This would only result in
      multiplicity of litigation which no Court should encourage
      and also would not be in public interest. Such a contract or
      such a clause in a contract ought, therefore, to be adjudged
      void under section 23 of the Indian Contract Act, as opposed
      to public policy. [371 C-H]
      2.6 The Indian Contract Act does not define the
      expression “public policy” or “opposed to public policy”.
      From the very nature of things, such expressions are
      incapable of precise definition. Public policy, however, is
      not the policy of a particular government. It connotes some
      matter which concerns the public good and the public
      interest. The concept of what is for the public good or in
      the public interest or what would be injurious or harmful to
      the public good or the public interest has varied from time
      to time. As new concepts take the place of old, transactions
      which were once considered against public policy are now
      being upheld by the courts and similarly where there has
      been a well-recognized head of public policy, the courts
      have not shirked from extending it to new transactions and
      changed circumstances and have at times not even flinched
      from inventing a new head of public policy. The principles
      governing public policy must be and are
      291
      capable on proper occasion, of expansion or modification.
      Practices which were considered perfectly normal at one time
      have today become abnoxious and oppressive to public
      conscience. If there is no head of public policy which
      covers a case, then the court must in consonance with public
      conscience and in keeping with public good and public
      interest declares such practice to be opposed to public
      policy. Above all, in deciding any case which may not be
      covered by authority Indian Courts have before them the
      beacon light of the Preamble to the Constitution. Lacking
      precedent, the Court can always be guided by that light and
      the principles underlying the Fundamental Rights and the
      Directive Principles enshrined in our Constitution. [372 A-
      D; 373 C-E]
      The normal rule of Common Law has been that a party who
      seeks to enforce an agreement which is opposed to public
      policy will be non-suited. The types of contracts to which
      the principle formulated in this case applies are not
      contracts which are tainted with illegality but are
      contracts which contain terms which are so unfair and
      unreasonable that they shock the conscience of the Court.
      They are opposed to public policy and required to be
      adjudged void. [373 F; 374 D-E]”

      Reply
  3. Mathews P. GeorgeMathews P. George Post author

    Shamnad Sir’s Comments: “I’m guessing that the situation gets a bit trickier in cases where extensive equipments and infrastructure owned by the University are used in working on the thesis and/or a research stipend paid etc. “

    Reply

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