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Manupatra Intellectual Property Reports v April 2012 111

International Framework on Regulation ofIntellectual Property in Biological Resources

and Biodiversity

Sreenivasulu N.S.*, Kariyanna K.S.** and Rangappa K.S.***

Protection of biological resources and biodiversity has been an area of concern at theinternational level for a long time. International forums through various laws have intendedto focus on conservation and sustainable use of biological resources. Serious attempts for theprotection of biological resources and biodiversity started when developed countries switchedon to exploitation of biological resources through intellectual property rights (IPR) that aremade available across the globe including the developing countries. There has been divisionof south and north on debate and dialogue with reference to utilisation and regulation ofbiological resources and sustainable use and development of biological diversity. This hasbecome very much pertinent issue since the current global standards Advocate for vibrantpromotion of IPR. In this concern, there have been various attempts at international level onthe regulation and sustainable use of biological resources and the biodiversity. The presentpaper intends to present the international law on the sustainable use of biological resourcesand biodiversity. At the same time, it attempts to address the issue of regulation of IPR inbiological resources at the international level.

Introduction

Biological resources include plants, animaland microorganisms or parts thereof, theirgenetic material and by-products withactual or potential use or value. Thebiodiversity is not the same as biologicalresource although mutually, they formpart of each other. The conservation ofbiological diversity is distinct but related

to biological resources. Biodiversitymeans variety and variability of all lifeforms on earth. Biological resources andbiodiversity are important for survivalof life, catering the health needs, ensuringfood security, up keeping of aestheticvalues, maintaining ethical concerns,facilitating ecological services forpromoting religious and culturalpurpose, sustainable development of

* Professor of Law and Head, School of Business Laws, National University of Juridicalsciences, Kolkata. Currently on lien as Founder and Chairman, Department of Law,Karnataka State Open University, Mysore, Karnataka.

** Mr. Kariyanna. K.S, (UGC-JRF) Research Fellow, Department of Studies and Research inLaw, Karnataka State Open University, Manasagangotri, Mysore, Karnataka.

*** Professor of Chemistry, University of Mysore and Vice-Chancellor, Karnataka State OpenUniversity, Manasagangotri, Mysore, Karnataka.

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indigenous knowledge and so on and soforth. In this sense, biological resourcesand biodiversity are important foreconomic progress of the nation. At thesame time, bio resources managementand utilisation for human welfare is veryimportant and is a critical component ofbiodiversity. It is because the activities ofthe individual, communities andcommercial ventures are likely to posethreat to biological resources. Populationgrowth inevitably leads to an increaseddemand for resources and an indefiniteincrease in that demand is notcompatible with conserving ourresources base. Invariably, to satisfy theneeds of the increased population manhas started to apply the science andtechnology over biological resources.Through modern techniques, such asbiotechnology, genetic engineering, etc.man has started to marshal the genes inthe living beings to get more, advancedand desired results for commercial andindustrial purposes. The multinationalcompanies from the developed countriesthrough science and technology startedexploitation of biological resourcesmostly available in the developingcountries.

For such endeavours of utilisation ofbiological resources in innovative waysresulting in the creative worksintellectual property rights (IPR) havebeen claimed.1 These rights have beengranted over the biological resources inthe modified form. Since the exploitationof biological resources is going on at anaccelerated pace where various IPR havebeen claimed, the situation demands for

regulation of IPR in biological resources.2

Since the use and exploitation ofbiological resources has been done atinternational level where more than onecountry is directly or indirectly involved,it gives rise to the need for aninternational framework for theregulation of exploitation of biologicalresources and the claimed IPR. At thisjuncture, the current write-up attemptsto analyse the various internationalnorms with reference to the issue at hand.At the international level, there are someconventions and agreements whichregulate IPR in general and overbiological resources in particular. Theseconventions and agreements have beendiscussed below in detail while touchingupon their contribution on the issue ofuse of biological resources andregulation of IPR.

1 Sreenivasulu N.S, Kariyanna. K. S, and Viswanath B.S, Biological Diversity, IntellectualProperty and Patents: Concerns of Biological Resources, Manupatra Intellectual PropertyReports, Volume: I, Part: II, February, 2012.

2 Ibid.

3 As on 5th January, 2012, 75 countries are part to the Budapest Treaty. India became amember of this Treaty with effect from 17th December 2001.

4 It was originally signed on 28th April, 1977 but entered into force on 9th August, 1980. It wassubsequently amended in the year 1980.

5 It is a special agreement under the Paris Convention. This Treaty is basically on theinternational recognition of the deposit of microorganism for the purpose of patent protectioncame into existence on 28th April, 1977 and subsequently amended in 1980.

Budapest Treaty regulatesIPR in microorganisms byway of insisting deposit of

microorganism in anInternational Depository

Authority

The Budapest Treaty 19773

Budapest Treaty on the InternationalRecognition of the Deposit ofMicroorganisms for the Purpose of PatentProcedure entered into force on August1977.4 Budapest Treaty5 is theinternational treaty that also deals withthe regulation and sustainable use of

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biodiversity. It regulates IPR inmicroorganisms by way of insistingdeposit of microorganism in anInternational Depository Authority.6

According to this treaty, deposit isnecessary to satisfy the requirement ofsufficiency of description of patent lawfor inventions relating tomicroorganisms or the use ofmicroorganisms. It also recognises thedeposit of microorganism in officiallyapproved culture collections for thepurpose of patent applications in anycountry that is a party to this treaty.Because of the difficulties and virtualimpossibility of reproducing amicroorganism from a description of itin a patent specification, it is essential todeposit a strain in a culture collectioncentre for testing and examination byothers. An inventor is required to depositthe strain of a microorganism in arecognised depository, which assigns aregistration number to the depositedmicroorganism. This registration numberneeds to be quoted in the patentapplication dealing with themicroorganism. Obviously, a strain of

microorganism is required to bedeposited before filing a patentapplication. It may be observed that thismechanism obviates the need ofdescribing a microorganism in the patentapplication. Further, samples of strainscan be obtained from the depository forfurther working on the patent.7 Patentoffice’s across the globe demanddepositing microorganisms to get patentprotection8 on the claimedmicroorganism.

International Convention for theProtection of New Varieties of Plant(UPOV), 19919

Another initiative at the internationallevel for the regulation and sustainableuse of biological resources andbiodiversity is International Conventionfor the Protection of New Verities of Plantwhich came into existence in 1991.10 Themain objectives of the convention are toprovide an international system of plantverity protection with the goal ofencouraging the development of newverities of plant.11 It gives protection fordeveloped or discovered plant varieties

6 “International Depositary Authority” is a scientific institution typically a “culture collection”which is capable of storing microorganisms. Such an institution acquires the status of“international depositary authority” through the furnishing, by the Contracting State on theterritory of which it is located, of assurances to the Director General of WIPO to the effect thatthe said institution complies, and will continue to comply, with the requirements specified inArticle 6(2), including, in particular, that it will be available, for the purposes of the depositof microorganisms, to any “depositor” (person, firm, etc.) under the same conditions, that itwill accept and store the deposited microorganisms and that it will furnish samples thereofto anyone entitled to such samples but to no one else. The said assurances may be furnishedalso by certain intergovernmental industrial property organizations (Article 7(1) (a)). See:WIPO Intellectual Property Hand Book: Policy, law and Use, http://www.wipo.int/about-ip/en/iprm/pdf/ch5.pdf last visited on 5th January, 2012.

7 R Saha, Management of Intellectual Property Rights in India, Source; http://www.pfc.org.in/workshop/workshop.pdf last visited on 3rd January, 2012.

8 Rama Sharma, Intellectual Property Laws, Wadwa and Company, Nagpura, Ist Edition,Volume 1, 2007, p 69.

9 It originally came into existence on 2nd December, 1961 and revised at Geneva on 10th November,1972 and 23rd October, 1978 and 19th March, 1991. At present, some states are parties to the1978 Act while some are parties to the 1991 Act. Non-member states which wish to join theUPOV regime at present must join under the 1991 Act but there is no obligation for existingmember states to ratify the latest version of the convention if they do not wish to.

10 The International Union for the Protection of New Varieties of Plants (UPOV) is anintergovernmental organization with headquarters in Geneva (Switzerland).

11 Jayashree Watal, Intellectual Property Rights in the WTO and Developing Countries, OxfordUniversity Press, p 129.



which are new, distinct, uniform andstable.12 It also recognises and ensuresrights of breeders13 over new plantverities.14 The companies or researcherwho develops new genetically modifiednew plants can get protection under thisagreement. So the researcher, who bredor discovered and developed newverities, can get protection. It imposesobligations on member countries to grantand protect breeder’s rights.15 The personwho gets protection under thisconvention gets rights of production orreproduction, offering for sale, selling ormarketing, importing, etc.16 With regard

to disclosure of origin, the conventionencourages the provision of informationon the origin of the genetic material usedin creating it, but it does not consider thatdiscloser of origin should become anadditional condition for protection.Further, UPOV promotes the principle oftransparency and ethical behaviourregarding the legality of access to geneticresources including proof of priorinformed consent.17 Consequently, accessto genetic material must be carried out inaccordance with legal framework for thecountry of origin.18

Convention on Biological Diversity(CBD) 1992

The landmark and comprehensiveconvention, at the international level, onthe regulation and sustainable use ofbiological resources and biodiversity isthe Convention on Biological Diversity(CBD). It was negotiated and signed bynations at the UNCED19 Earth Summit atRio de Janeiro in Brazil in June 1992. TheConvention came into force on 29 th

December, 1993. India became a Party tothe Convention in 1994. At present, there

12 Article 5 of the UPOV.

13 According to Article 1(IV) of the UPOV convention breeders means:

the person who bred, or discovered and developed, a variety;

the person who is the employer of the aforementioned person or who has commissioned thelatter’s work, where the laws of the relevant Contracting Party so provide, or

the successor in title of the first or second aforementioned person, as the case may be.

14 Infra Note 16, p. 485.

15 Article 2 of the Convention.

16 Dr. S.R Myneni, Intellectual Property, Asia Law House, Hyderabad, 5th Edition, 2009, p488.

17 Dr Sreenivasulu N.S and Kariyanna K.S, Intellectual Property and Traditional Knowledge,Manupatra Intellectual Property Reports, Volume: I, Part: I, January, 2012

18 See the views of UPOV with respect to the work of the Working Group on Access andBenefit-sharing on an international regime on access and benefit-sharing, adopted by theCouncil of UPOV at its thirty seventh ordinary session on 23rd October, 2003, were providedto the Secretariat prior to the second meeting of the Working Group. These are available athttp://www.upov.int/en/news/2003/intro_cbd.htm and also See: Draft report by JorgeCabrera Medaglia, “Study on the relationship between the ABS International Regimen andother international instruments which govern the use of genetic resources: The World TradeOrganization (WTO); the World Intellectual Property Rights Organization (WIPO); and theUnion for the Protection of New Varieties of Plants (UPOV)” Source: http://www.bio.org/sites/default/files/study-regime-04-en.pdf last visited on 6th January, 2012.

19 The United Nations Conference on Environment and Development (UNCED), also knownas the “Earth Summit,” was held at Rio de Janeiro, Brazil, from 3rd-14th June, 1992.

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UPOV promotes theprinciple of transparency andethical behaviour regarding

the legality of access togenetic resources including

proof of prior informedconsent

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are 19320 parties to this Convention. Thebasic objectives of the Convention are asfollows:

• Conservation of biologicaldiversity

• Sustainable use of the componentsof biodiversity21

• Fair and equitable sharing ofbenefits arising out of theutilisation of genetic resources

This Convention is a landmark in theenvironment and development field, asit takes for the first time a comprehensiverather than a frontier approach to theconservation of earth’s biodiversity andsustainable use of biological resources.Though the Convention on BiologicalDiversity is basically addressing theissue of biodiversity, number of CBDprovisions, documents and decisiontaken by the Conference of the Parties hasaddressed substantive issues related toIPR over biodiversity.22 This conventionindirectly, while promoting conservationof biodiversity, also promotes andregulate IPR in biological resources andbiodiversity. It imposes obligation on themember countries to obtain priorinformed consent23 before obtaining IPRover the biological resources andbiodiversity from where it originate.Further, it imposes duty upon themember countries to share the benefitarising out of the utilisation of biologicalresources. Transfer of the technology isone of the modes of sharing of benefitsarising out of the utilisation of resources.Thus, technology transfer is highlightedas a method for achieving one of theconvention’s three objectives and IPR areidentified as a significant aspect oftechnology transfer.24 Apart from this,

following articles of CBD also regulateIPR in biodiversity and biologicalresources. Article 8(J) of the conventionstates; “subjects to its national legislation,respect, preserve and maintainknowledge, innovation and practice ofindigenous and local communitiesembodying traditional lifestyles relevantfor the conservation and sustainable useof biological diversity and promote theirwider application with the approval andinvolvement of the holder of suchknowledge, innovations and practicesand encourage the equitable sharing ofthe benefits arising from the utilisationof such knowledge, innovation andpractice.”

Article 15(6) of the Convention states“each contracting party shall endeavorto develop and carry out scientificresearch, based on genetic resourcesprovided by other contracting partieswith the full participation of, and wherepossible in, such contracting parties.”Further, Article 16(1) requires each partyto provide or facilitate access and transferto other parties of technologies,including biotechnology, which are therelevant for the sustainable use that makeuse of genetic resources and are notsignificantly threatening environment.Further, Clause (3) states that eachcontracting party shall take appropriatemeasure, with the aim that contractingparties, in particular those that aredeveloping countries, which providegenetic resources are provided access toand transfer of technology which makeuse of those resources on mutuallyagreed term, including technologyprotected by patents and other IPR.25

Similarly, Article 19(1) states eachcontracting party shall take legislative,

20 As on 14th September, 2011.

21 Sustainable use of biodiversity means use of natural resources at a rate that the earth canrenew them. See Article 2 of the CBD for definition of the term sustainable use.

22 See: Article 1 of the CBD.

23 See ibid, Article 15.

24 www.unctad.org/trade_env/.../IPR%20and%20plant%20biodiversity.doc. Last visited on24th August, 2011.

25 Ibid.


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administrative or policy measures, asappropriate, to provide for the effectiveparticipation in biotechnologicalresearch activities by those contractingparties, especially developing countries,which provide the genetic resources26 forsuch research, and where feasible in suchcontracting parties shall promoteinternational technical and scientificcooperation in the field of conservationand sustainable use of biodiversity. Intransfer of technology, it may includefollowing class of technology.27

(1) Technology relevant tobiodiversity conservation: thisincludes techniques for surveyingecosystems,28 classifyingorganisms and monitoringchanges in biodiversity forestreplanting technique, etc.

(2) Technology necessary to dogenetic research generally; suchas genetic engineering, laboratorytechniques, screening tests, andlaboratory equipment itself.

(3) Technology that enablesimitation of existingbiotechnology invention whichincludes techniques, or drugs, oragricultural products29.

Apart from the above provisions to acertain extent Conference of the Parties(COP)30 to the CBD has been addressingIPRs issues. Since conference of theParties No 2, in 1995, it has takenfollowing decisions relating to IPR.

(1) Decision II/12 of COP 2, III/17,IV24 A, and VI 24 C,31 speaksabout IPR and genetic resourcesand benefit sharing.

(2) Decision V/16, V/5, VI/5 of Cop4 speaks about IPR andtraditional knowledge.

(3) Decision III/17 of the COP 3speaks about IntellectualProperty and coordination withrelevant organisation.

United Nations Convention on Law ofthe Sea (UNCLOS), 1994

The United Nations Convention on theLaw of the Sea (UNCLOS) also called asthe Law of the Sea Convention or the Lawof the Sea Treaty is the internationalagreement that resulted from the thirdUnited Nations Conference on the Lawof the Sea (UNCLOS III) which took placefrom 1973 through 1982. The UNCLOSreplaces the older and weaker “freedomof the seas” concept, dating 17th century;where national rights were limited to a

26 According to Article 2 of the CBD genetic resources means genetic material of actual andpotential value.

27 According to Article 2 of the Convention on Biological Diversity technology includesbiotechnology.

28 The ecosystem is a core concept in Biology and Ecology, serving as the level of biologicalorganization in which organisms interact simultaneously with each other and with theirenvironment.

29 Shail Jain, and R.K Jain, Patents: Procedures and Practices, Universal Law Publishing co,New Delhi, 2011, p. 164.

30 The Conference of the Parties is the governing body of the Convention, and advancesimplementation of the Convention through the decisions it takes at its periodic meetings.To date the Conference of the Parties has held 10 ordinary meetings, and one extraordinarymeeting. From 1994 to 1996, the Conference of the Parties held its ordinary meetingsannually. Since then these meetings have been held somewhat less frequently and, followinga change in the rules of procedure in 2000 will now be held every two years. To date theConference of the Parties has taken a total of 299 procedural and substantive decisions.http://www.cbd.int/cop/ visited on 16th September, 2011.

31 Bonn Guidelines on Access to Genetic Resources and Fair and Equitable Sharing of theBenefits Arising Out of the Utilization.

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specified belt of water extending from anation’s coastlines, usually threenautical miles. Now it can be extendedup to 200 nautical miles. The Law of theSea Convention defines the rights andresponsibilities of nations in their use ofthe world’s oceans, establishingguidelines for businesses, theenvironment, and the management ofmarine natural resources. TheConvention, concluded in 1982, replacedfour treaties adopted in 1958. TheUNCLOS convention came into force in199432. Presently, it has 16133 states aswell as, the European Community.34 Itgives sovereign rights35 and imposesobligation on the coastal states on theirterritorial marine areas. The researchermust obtain prior informed consent fromthe coastal state before conductingresearch activity. The researcher mustprovide access to the data collected bythem in respect of the research to thecoastal state.36 Further, Article 241 of theconvention would seem expressly topreclude patenting the result of marinescientific research.37

Trade-related Aspect of IntellectualProperty Rights (TRIPS)

The World Trade Organization (WTO)38

is the international organization dealing

with the rules of trade between nations.In becoming Members of the WTO,39

countries undertake to adhere to the 18specific agreements40 annexed to theAgreement establishing the WTO, amongthose agreements, Trade-related Aspectsof Intellectual Property Rights (TRIPS) isalso one Agreement, which has been inforce since 1995 and is till date the mostcomprehensive multilateral agreement onintellectual property. The TRIPSAgreement introduced global minimumstandards for protecting and enforcingnearly all forms of IPR. The TRIPSAgreement now requires all WTOmembers, with few exceptions, to adapttheir laws to the minimum standards ofIPR protection. This TRIPS Agreementintroduced detailed obligations for theenforcement of IPR.41 Though the objectiveof the TRIPS Agreement is to recogniseIPR over new invention, some provisionsregulate IPR over biological resources and

32 http://unlawoftheseatreaty.org/ last visited on 16th September, 2011.

33 As on 25th August, 2011.

34 http://untreaty.un.org/cod/avl/ha/uncls.html visited on 25th August, 2011.

35 See: Preamble of the Convention.

36 Tejaswini Apte, A Simple Guide to Intellectual Property and Biodiversity and TraditionalKnowledge, Kalpavriksh Grain and IIED, Pune/Delhi.2006, p.97.

37 Peter Prows, Tough Love: The Dramatic Birth and Looming Demise of UNCLOS PropertyLaw(and what is to be done about it), http://www.tilj.org/journal/42/prows/Prows%2042%20Tex%20Intl%20LJ%20241.pdf last visited on 6th January, 2012.

38 The World Trade Organization is an organization that intends to supervise and liberalizeinternational trade. The organization officially commenced on January 1, 1995 under theMarrakech Agreement, replacing the General Agreement on Tariffs and Trade whichcommenced in 1948. The organization deals with regulation of trade between participatingcountries; it provides a framework for negotiating and formalizing trade agreements, anda dispute resolution process.

39 There are 153 member countries as on the 23rd July, 2008. See: http://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm, last visited on 3rd January, 2011.

40 There are two types of agreements such as multilateral and plurilateral.

41 http://www.who.int/medicines/areas/policy/wto_trips/en/index.html visited on 14th

September, 2011.

The TRIPS Agreementintroduced global minimum

standards for protectingand enforcing nearly all

forms of IPR


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biodiversity by excluding some inventionfrom the purview of the IPR.

Article 27(3)(b) stipulates that “membermay exclude from patentability, plantsand animals other thanmicroorganisms,42 and essentiallybiological processes for the productionof plants or animals other than nonbiological and microbiological process”.However, members shall provide for theprotection of plant varieties either bypatents or by an effective sui-generissystem or by any combination thereof.”Though Article 27(3)(b) excludes patentprotections to plant and animals andbiological process, it allows protectionmicroorganisms and microbiological ornon biological process. Microorganismsinclude viruses, algae, bacteria, fungiand protozoa and genes, genesequences.43 IPR could be obtained overmicroorganism. As per the TRIPSagreement, though it is not compulsoryto grant patents for plants, animals andbiological process, members can choiceeither patent or enact their own suegeneris system for protection of plantverities. With regard to patents on genesextracted from the plants, animals,microorganisms the Agreement is silent.It is up to the member countries to decidewhether to grant patent or exclude themfrom the patent monopoly. Further,Article 27(2) excludes certain inventionsfrom patentability, to protect human,animal, or plant life or health or to avoidserious prejudice to the environment.44

Further, it imposes obligation upon the

42 Microorganisms are very diverse compared to animal and plants, they possess both animaland plants characteristics ,See Sreenivasulu N.S, Vishwanath B.S and Kariyanna K.S.Manupatra Intellectual Property Reports, Volume: I, Part: II, February, 2012.

43 Jayashree Watal, Intellectual Property Rights in the WTO and Developing Countries, OxfordUniversity Press, p 129.

44 Dr. Sreenivasulu N. S. & Aranab Sengupta, Patenting Biological resources: Biodiversityand Intellectual Property Rights, Sources; http://legaleserve.com/patenting-biological-resources-biodiversity-intellectual-property-rights/ visited on 8th August, 2011.

45 See: Article 22 of the TRIPS.

46 Laurence R Helfer, Intellectual Property in Plant Verities: International Legal Regime andPolicy Options for National Government, Food and Agriculture Organisation of the UnitedNation, Rome, 2001 (FAO Legislative Study) p 87.

47 Article 13 of the ITPGR.

member countries to give geographicalindication rights to the goods, includingnatural, agricultural and manufacturedgoods where a given quality, reputationor other characteristics of the goods isessentially attributable to itsgeographical origin.45 Thus, thisprotection gives IPR over agriculturaland natural products developed orproduced with a particular or deferentquality attributable to its origin. Thepeople who are producing or workingon agricultural or natural products getmonopoly control over such productsdeveloped in a particular region with agiven quality.

International Treaty on Plant GeneticResource (ITPGR) for Food andAgriculture (FAO), 2001

On 3rd November 2001, a conference of120 government delegates concludedseven years of negotiations and adoptednext of binding International Agreementon Plant Genetic Resources for Food andAgriculture.46 Concerns led to thecreation of this Agreement were:

Firstly, that plant genetic resourcesshould be conserved,

Secondly, that the notions of farmersrights should be introduced intointernational law to balance out theincreasing use of plant breeders rightand

Thirdly, developed countries wereabusing the free availability of cropsfrom the developing world.

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48 Tejaswini Apte, A Simple Guide to Intellectual property and Biodiversity and TraditionalKnowledge, Kalpavriksh Grain and IIED, Pune/Delhi.2006, p. 87.

49 Shail Jain, and R.K Jain, Patents: Procedures and Practices, Universal Law Publishing co,New Delhi, 2011, p. 87.

50 http://www.unctad.org/trade_env/docs/cbd-trip.pdf visited on 12th September, 2011.

51 Jonathan Carr, Agreement that Divide: TRIPS versus CBD and Proposal for Mandatory Disclosureof Source and origin of Genetic Resources in Patent Applications. Sources:http://www.law.fsu.edu/journals/transnational/vol18_1/carr.pdf.

52 Ibid

The main objectives of the ITPGR are theconservation and sustainable use ofplant genetic resources for food andagriculture and the equitable sharing ofthe benefits arising out of the utilisation.It insists for sharing the benefits throughinformation-exchange, access to and thetransfer of technology, and capacity-building.47 It also foresees a fundingstrategy to mobilise funds for activities,plans and programmes the help, aboveall, small farmers in developingcountries. This funding strategy alsoincludes the share of the monetarybenefits paid under the MultilateralSystem. It facilitates the exchange of seedsand other germ to be used for research,breeding and crop development.48 Thistreaty promotes this exchange byestablishing a multilateral system. Theperson who uses genetic resources mustpay benefits to the fund administered bythe treaty which will be used to promotesustainable use of plant geneticresources.49 Breeders can assert IPR overnew commercial products developedfrom this genetic material.

The famous TRIPS and CBD: Controversy

In the course of our discussion onbiological resources, biodiversity andintellectual property protection wouldnot be fruitful without discussing thecontroversy between the TRIPSagreement and the CBD. The controversybetween TRIPS and CBD could bediscussed as follows.

The Convention on Biological Diversitywas adopted in 1992 with an aims forconservation and stainable use ofbiodiversity. The Agreement on trade-

related aspects of intellectual propertycame into existence in 1995. It setsminimum slandered for IPR in themember countries.50 The relationshipbetween the TRIPS and CBD ismultifaceted and complex.51 However,there are four categories of viewsexpressed by member states regardingthis conflict:

(1) There is no conflict and nationalgovernment can implement thetwo in a mutually supportiveway;

(2) There is no conflict, yet furtherstudy regarding the patentsystem is required;

(3) There is no inherent conflict;however, internationalintervention is needed in toensure that the two agreementare mutually supportive;

(4) There is inherent conflict, thusrequiring an amendment toTRIPS to resolve the conflict.

The fourth view is the subject of the mostintense international debate on theissue.52 The Convention on BiologicalDiversity and TRIPS have conflictingobjectives. The CBD intends to conservebiological diversity, the sustainable useof its components and the fair andequitable sharing of the benefits arisingout of the utilisation of genetic resources.On the other hand, TRIPS is intended toprovide private rights over products andprocess on innovations from all the fieldsof science and technology including theinnovations resulted out of the utilisationof biological resources. It is felt thatconvention on Biological Diversity


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supports the view point and interest ofdeveloping countries. The TRIPS on theother hand respect the interest of thecorporate sector, the most visible face ofwhich is the life sciences industry.53 TheConvention on Biological Diversity givessovereign rights to the member state overtheir biological resources. Wherein, statehas the right to regulate access tobiological resources and knowledge, andto determine access to biologicalresources and benefit sharingagreements. It means that the respectivecountry has every right to decide whetheror not to allow biological resources to becovered under patent law or not.54, 55

TRIPS overlooks this right by prescribingpatent protection on microorganism,non-biological and microbiologicalprocess, as well as patent and sue generisprotection on plant verities.56 The CBDgives recognition to the efforts made bythe traditional communities in theconservation of biodiversity and insistfor the protection of traditionalknowledge relevant for the conservationof biodiversity. It states “subject to itsnational legislation, respect, preserveand maintain knowledge, innovationsand practices of indigenous and localcommunities embodying traditionallifestyles relevant for the conservationand sustainable use of biologicaldiversity and promote their widerapplication with the approval andinvolvement of the holders of suchknowledge, innovations and practicesand encourage the equitable sharing ofthe benefits arising from the utilisation

of such knowledge, innovations andpractices57.” On the other hand, TRIPSbased on western style patents has nosystem for recognising or protectingbiological resources.58 The CBD requiresthat free prior informed consent beobtained from contracting partiesproviding access to genetic resources.59

In this connection, the “Bonn Guidelineson Access to Genetic Resources and Fairand Equitable Sharing of the BenefitsArising Out of their Utilisation” arevoluntary guidelines and were recentlyadopted by parties to elaborate on theirobligations and rights with respect togenetic resources. The Bonn Guidelinesencourage parties to ensure that free priorinformed consent is obtained fromcommunities for gaining access to geneticresources.60 Further, it insists for thesharing of the benefits arising out of theutilisation of biological resources. ButTRIPS prevents government’s action forsharing of the benefits of the use ofbiodiversity and ensuring suchutilisation in sustainable way whileconserving biodiversity in an equitablemanner since it obliges states to protectmonopolies.61 Article 22(1) of the CBDprovides that the conventions provisionsshall not affect rights and obligationderiving from any existing internationalagreement, except where the exercise ofthose rights and obligations would causea serious damage or threat to biologicaldiversity. However, it is not clear howthe said article would apply in the caseof conflict with the TRIPS Agreement.

53 Suman Sahai, The relationship between TRIPS and CBD Sources; http://www.genecampaign.org/Publication/Article/Biodiversity/Bio-RelBetweencbd-trips.pdfvisited on 12th September, 2011.

54 Tejaswini Apte, A Simple Guide to Intellectual property and Biodiversity and TraditionalKnowledge, Kalpavriksh Grain and IIED, Pune/Delhi 2006, p.24

55 Supra note 43, p. 96.

56 http://www.grain.org/article/entries/20-trips-versus-cbd visited on 26th August, 2011.

57 See: Article 8(J) of CBD.

58 Dr. Vandan Shiva, Radha Holla Bhar, Asfar H. Jafri, Corporate Hijack of Biodiversity,Navadanya, New Delhi, First Edition, 2002, p. 30.

59 Ibid

60 Anne Perrault, Facilitating Prior Informed Consent in the Context of Genetic Resources andTraditional Knowledge, Sustainable Dev. L. & Pol’y 21, 2004.

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The TRIPS Agreement itself contains noexplicit reference to the CBD or any otherenvironmental agreements. Conventionon Biological Diversity states thatdeveloping countries supplying geneticmaterial must be involved inbiotechnological research. But in TRIPSno direct reference to the involvement ofdeveloping countries in biotechnologicalresearch activities has been made.Though there are above said conflictsbetween the CBD and TRIPs agreementssome developed countries, including US,62

Japan and EU viewed that CBD and TRIPSdo not conflict with each other and thetwo treaties can be implemented in amutually supportive way. With regard toaccess biological resources, benefitsharing and prior informed consent, theTRIPS Agreement does not prevent theparties from adopting a sui generis regimeor any system providing the sharing ofthe benefits. As far as CBD is concerned,the treaty does not prohibit patents oninnovations using genetic material butrecognise the rights over innovationsincorporating genetic resources63.

Conclusion

Having gone through key discussion onthe international framework forregulation of intellectual property inbiological resources and biodiversity, itis clear that international forums regulatethe use of biological resources andbiodiversity for IPR rather than

prohibiting IPR over biological resources.It could be for the reason of fulfilling theneeds of the increased population. Thevarious conventions on IPR talk aboutprotection of intellectual skill and labourin the utilisation of biological resources.The TRIPS agreement provides for IPRover the biological resources andbiodiversity. The agreement intends toregulate use of biological resources byexcluding certain inventions frompatentability, to protect human, animal,or plant life, or health, or to avoid seriousprejudice to the environment. On theother hand, biological resources relatedconventions and treaties also regulate theuse of biological resources andbiodiversity by stipulating for priorinformed consent, fair and equitablesharing of benefits arising out of theutilisation of genetic resources forcommercial exploitation. The issue nowwould be that of efficacy of the variousinternational norms in the effective andoptimal utilisation of biologicalresources for sustainable developmentwhile rewarding IPR.

61 Rama Sharma, Intellectual Property Laws, Wadwa and Company, Nagpura, Ist Edition,Volume 1, 2007, p. 39.

62 USA has not ratified the Convention on Biological Diversity. Because since it is developedcountry rich in technology rather than biological resources.

63 Panumas Kudngaongarm, Human Rights Standards for the Protection of IntellectualProperty: Traditional Knowledge and Indigenous Resources, Thailand Law Journal 2009Spring Issue 1 Volume 12, Source: http://www.thailawforum.com/articles/Legal-Protection-Of-Traditional-Knowledge-3.html visited on 26th August, 2011.

The TRIPS agreementprovides for IPR over thebiological resources and

biodiversity


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Composing the Right Tune forthe Song of Justice

Smita Chandra*

The objective of writing this paper is to focus on the unjust and unfair situation in theBollywood Industry under the shadow of a decision of the Hon’ble Apex Court whicheffectively has emasculated the rights of music composers and lyricists. The paper discuss indetail the Supreme Court decision of 1977 in IPRS v. EMPA and then goes on to discuss therecent decisions of the Bombay, Delhi and Calcutta High Courts. The recent judgments haveupheld the rights of the music companies over sound recordings, to the exclusion of thelyricists and composers whose works were the underlying materials for the sound recording.Therefore, through this paper the author has tried to bring out the loopholes in the currentcopyright scenario because the question in front of us is whether the current position of lawtoday is truly serving the ends of justice. The answer is in negative and the pending CopyrightAmendment Bill, 2010 stands evidence to the existence of a substantial body of opinion tothe same.

Introduction

An artistic, literary or musical work isthe brainchild of the author, the fruit ofhis labour and so, considered to be hisproperty. So highly is it prized by allcivilised nations that it is thought worthyof protection by national laws andinternational conventions.1

The copyright situation in India wasalways not very clear and according tothe author, it is still not as simple as thetaxation law in our country. Theconfusion with regard to the ownershiprights till date exists and one of thereasons for which is the acute lack ofknowledge and information amongst theuser of Copyright material as well as theowners themselves.

The objective of the present paper is tofocus on the rights of the music

composers, lyricists and scriptwriterswhose works are incorporated intocinematograph films. The fact that thevery creator gets a highlydisproportionate return when comparedwith someone who merely packages,markets and commercialises is highlyunjust and unfair to these people.“Inequity” is the one word to describethe present situation. Our country hasseen the ill-fate of these creators despitetheir works have been minting largeamount of money. The film producers getthe entire copyrights signed from theseartists for a meager lump-sum eventhough their works reap multiple timesat the box office.

This paper emerged as a reaction to thefailed attempts of the Indian PerformingRight Society Limited (IPRS) to collectroyalties on behalf of the music

* Student, 4th Year, Hidayatullah National Law University, Raipur

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composers, lyrists of the worksincorporated in the cinematographicfilms for the grant of licenses forperformance in public of such works. Theinclusion of works in a cinematographicfilm as well as in a sound recording hasaffected the rights of the creators of suchworks and as per the author, it hasnegatively affected their rights whenanalysed under the purview of theCopyright Act, 1957.

The first part deals with the variousprovisions of the Copyright Act, 1957 inrespect of the rights of the creators of theunderlying works in a cinematographicfilm. The provisions of theCopyright Act, 1957 in respect of acinematograph film and soundrecordings are not identical in view ofthe nature of the two works. However,what is important to note is the similarmanner in which exclusivity of the rightsare conferred by the Act to the producerswho are the owners of the copyright inthe underlying works in cinematographfilms and sound recordings. The secondparts deals in depth with the decision ofthe Hon’ble Supreme Court in 1977,Indian Performing Right Society Ltd. v.Eastern Indian Motion Pictures Associationand Ors. (IPRS v. EIMPA) which hascreated confusion as to the interplaybetween creation and ownership ofcopyright in musical works andassociated lyrics. The third part dealscategorically with the recent decisionsof the Kerala High Court, High Court ofDelhi and High Court of judicature atBombay in the matter of IPRS discussingthe similar question of law as thatdiscussed in the 1977 judgment.According to the author’s view pointeven after three decades, our High Courtsare blindly following the decision of theApex Court holding it to be a good law.The paper thus aims to bring out the

loopholes in the decision of our judiciaryand also suggest the need to overturn thedecision in light of bringing fairness tothese music composers and lyricists. Thepaper thus aims to bring out theloopholes in the decision of our judiciaryand also suggest the need to overturn thedecision in light of bringing fairness tothese music composers and lyricists inpart fifth.

Provisions Involved

The entire debate over the rights of musiccomposers and lyricist with regard to theperforming rights in their musicalcompositions and literary works createdby them involve certain provisions of theCopyright Act, 1957 which needs to bediscussed in order to understand thedecisions of our judiciary.

Ownership

The most important question in front ofus is as to who is the first owner ofcopyright in a musical work, etc. thatunderlie a cinematograph film? Let uslook firstly at the interpretation clause ofthe act. According to Section 2(d) the Act2

“author” in relation to musical work isthe composer and in relation to a literarywork it is the author of the work. Further,as per Section 2(ffa) of the Act3 a“composer” in relation to a musical work,means the person who composes the musicregardless of whether he records it anyform of graphical notation.

Section 17 of the Act; however, limits theownership rights in certain cases. It canbe concluded that in generalcircumstances it is the composer who isthe first owner of copyright and this canonly be limited under the two situationsgiven in Section 17(b) and (c) of the Act.In the context of musical works, i.e. forthe music composed for acinematographic film there can be twosituations:

1 Chinnappa Reddy, J., Gramaphone Co. v. Birender Bahadur Pandey, MANU/SC/0187/1984:AIR 1984 SC 667 at p. 676.

2 The Copyright Act, 1957, No. 14 of 1957, section 2(d) [hereinafter The Act].

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(1) Music Composed for a Film (bythe author in the course ofemployment under a contract ofservice) – The most essentialelement to bring a case under thepurview of Section 17(c) is toestablish the master – servantrelationship between theemployer and the composer ofthe music. The wordings of thesection is very clear to the factthat unless there is anyagreement to the contrary theemployer, who may be the filmproducer, becomes the firstowner of copyright in themusical work. Thus, the musiccomposer loses all the rightswhich effectively vests in theemployer. Consequently, all therights in relation to the musicalworks including the right toperform or communicate to thepublic also now vests with theemployer.

It is significant to note thatSection 17(c) does not limit itselfto certain kinds of work butincludes all types of “works”.4

(2) Music composed for a film (bythe author for valuableconsideration under a contractfor services) – The musiccomposers rarely work assalaried employees of the filmproducers under anemployment contract. Generally,the music composers composemusic at the instance of theproducers or any other personfor a cinematographic film.Thus, the concept of “contract forservices” arises.

However, the question arises as towhether such works will be coveredunder Section 17 (b) of the Act? Thewording of Section 17(b) has been clear

enough to limit its ambit to coverownership of copyright in specific worksonly. It includes photographs, portraits,paintings or engravings andcinematograph films. The scope ofSection 17(b) is very limited which canbe clearly pointed out as it excludessculptures even though it is a type ofartistic work as defined under Section2(c). Therefore, a musical work, which istreated as a separate work under theCopyright Act, does not fall within theambit of Section 17(b) of the Act, readwith Section 13(4).5

It is therefore, obvious that Section 17(b)cannot operate in a manner to make thecomposer lose copyright over his musicalwork to the commissioner, who may ormay not be the film producer, and it iswrong to assume that ownership ofcopyright in a musical work vestsautomatically with the commissioner/film producer just because it has beenmade under a “contract for services”.

To take an analogy, the film producermay commission a script (literary work)under a contract for services, as theunderlying story of the film. Literaryworks, like musical works, do not fallwithin the ambit of Section 17(b). Thescript writer will continue to have,among various other rights, the right totranslate the script and authorise themaking of another cinematograph filmin such translated language, unless hespecifically assigns these rights away tothe commissioner/film producer.

That is not to say however, that therecannot be a contract to the contrarybetween the film producer and musiccomposer to vest first ownership ofcopyright in the musical work in the filmproducer. So if one has to answer as towhether there is a difference betweenSub-sections (b) and (c) of Section 17, itcan be said without doubt that they arefundamentally different in their scope.

3 Id., Section 2(ffa).

4 The Act, supra note 2, Section 2(y).

5 The Act, supra note 2, Section 13(4).

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By virtue of Section 17(c) ownershipautomatically belong to the employerwhen created by the employee whereinas per Section 17(b) copyright in onlycertain specified works canautomatically vest in the commissioner.

The defence of Section 52(1)(y)

One of the defences to copyrightinfringement under the Indian CopyrightAct, 1957 is Section 52(1)(y).6 In this case,the exhibition of the cinematograph filmafter the term of its copyright is over isnot an infringement of the copyright inthe literary, dramatic or musical work inquestion.7 Therefore, what the abovesection essentially means is that, the rightof “public performance” in musicalworks and any associated lyrics (literaryworks) as per Section 14(a)(iii) of the Act,will not be infringed even when the filmis exhibited after the term of copyright inthe film has expired.

The legislative intent behind theexistence of such a defence under the Actis difficult to understand. The Act is notfor the benefit of the film exhibitors but tobalance the interest of the individualwriter, composer or artist and the majorindustries which basically provide theinvestment required for the creation ofsuch works.8

The operation of such a defenceinterferes with the normal exploitationof the work and unreasonably prejudicesthe copyright owner’s legitimateinterests. In effect, the defence preventshim or his heirs from earning performingroyalties even when films out ofcopyright, containing his musical works,are exhibited. This is a clear violation ofArticle 13 of the TRIPS Agreement9 which

reads “Members shall confine limitationsor exceptions to exclusive rights tocertain special cases which do notconflict with a normal exploitation of thework and do not unreasonably prejudicethe legitimate interests of the rightholder.”

Separate Copyrights

Section 13(4) of the Act10 additionallyclarifies that “the copyright in acinematograph film or a sound recordingshall not affect the separate copyright inany work in respect of which the film …or … the sound recording is made”.Section 13(4) preserves the right of thelyricist or composer and therefore merelybecause a cinematograph film is takenand the owner becomes the author it doesnot take away the right of the lyricistsand composers in their works.

For instance, if a script writer haspermitted the making of an Englishmovie based on his work will he lose allhis rights to the producer of the Englishmovie? According to the interpretationof the above provision he would still,unless specifically assigned, retain theright to, for example, authorise themaking of another film based on his book,in a different language. The underlyingwork never dies or merges with the rightsin the film, and the two continue to existas separate works, each having their ownspecific rights and term of protection.Also, under Section 14(a), the owner ofcopyright in musical works has the rightto reproduce it in any form (themechanical right), to perform it in public,and to make any cinematograph film orsound recording in respect of the work.11

6 The Act, supra note 2, Section 52(1)(y).

7 P. Narayana, Law Of Copyright And Industrial Designs 205 (3rd ed. 2002).

8 Copinger & Skone James, Copyright, ¶ 1.02 (14th ed. 1999)

9 Agreement On Trade-Related Aspects Of Intellectual Property Rights, Article 13, 15thApril, 1994, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) [hereinafter, TRIPS Agreement].

10 The Act, supra note 2, Section 13(4).

11 Nikhil Krishnamurthy, The Statutory Mechanical License in India - Whose Version [of the Law] isCorrect, MIPR 2007 (1) A-115


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Performing Right

The right of public performance in amusical/literary work is to be found inArticle 11 of the Berne Convention.12

Similarly, under the Copyright Act, 1957the owner of copyright in a musical workhas, inter alia, the exclusive rights toreproduce it in any material form,including storing it in any medium byelectronic means and to perform the workin public, or communicate it to the publicamong other rights conferred on him byvirtue of Section 14(a).

Under the provisions of the UKCopyright Act, 1911, which were madeapplicable to India in 1914,13 copyrightmeant, inter alia, the right to perform thework in public and additionally, in thecase of musical and literary works, tomake any record, perforated roll,cinematograph film or other contrivanceby means of which the work may bemechanically performed. It is thereforeclear that when a record or film is played,the musical work recorded therein is“performed” and affects the exclusive

right of public performance of thecomposer, or owner of copyright, in suchmusical work.14

The word “performance” was definedunder that Act15 to mean any acousticrepresentation of a work, including arepresentation made by means of anymechanical instrument. A “plate” wasdefined to include any appliance bywhich records, perforated rolls or othercontrivances for the acousticrepresentation of the work, are made.16

Therefore, a musical work may beperformed live in public through a liveperformance or the medium of acinematograph film. It is in the economicinterest of the authors of original worksfor their works to be performed in public,whether through live or recorded means,on account of the royalties earned fromsuch public performances. It is a well-appreciated fact that through timeimmemorial artists have been performingtheir musical works and also that it helpsto increase their sale of music throughairing it over radio or by publicperformance.

While there is no clear definition of whatamounts to a public performance, thereis a body of case law which distinguishesa public performance from those ofdomestic nature. Common exampleswhere musical works are “publicly”performed would include radio and TVbroadcasts, theatrical exhibition of films

12 Berne Convention For The Protection Of Literary And Artistic Works, art. 11 (Paris Text1971).

(1) Authors of dramatic, dramatico-musical and musical works shall enjoy the exclusiveright of authorising:

(i) the public performance of their works, including such public performance by anymeans or process;

(ii) any communication to the public of the performance of their works.

(2) Authors of dramatic or dramatico-musical works shall enjoy, during the full term oftheir rights in the original works, the same rights with respect to translations thereof.

13 P. Narayana, supra note 7 at 7.

14 Nikhil Krishnamurthy, IPRS v. EIMPA Performing Right or Wrong? MIPR 2007 (1) A-169.

15 The Copyright Act, 1911, 1 &2 Geo. 5 c.46, Section 35 (1).

16 Id.

The right of publicperformance in a musical/

literary work is to be found inArticle 11 of the Berne

Convention

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into which musical works have beenincorporated, playing of music innightclubs, aircraft, and so on.17

The 1977 Decision

The Hon’ble Supreme Court of India hadthe occasion to determine the ownershipover music which is composed forcinematograph film in the matter of IndianPerforming Right Society Ltd. v. EasternIndian Motion Pictures Association and Ors.18

The dispute had been first discussed inthe Copyright Board and aggrieved byits judgment the EIMPA had appealed tothe High Court of judicature at Calcutta.Further, dissatisfied with the decision ofthe High Court the IPRS had thusappealed to the Supreme Court. Thepresent case discussed one of the mostdebatable issues in the Copyrightscenario and addressed the followingsubstantial question of law of generalimportance:

• Whether in view of the provisionsof the Copyright Act, 1957, anexisting and future right ofmusic...composer, lyricist iscapable of assignment.

• Whether the producer of acinematograph film can defeat thesame by engaging the same person.

Facts of the Case

The IPRS had published a tariff layingdown the fees, charges and royalties thatit proposed to collect for the grant oflicences for performance in public ofworks in respect of which it claimed tobe an assignee of copyrights and to haveauthority to grant the aforesaid licences.A number of persons including variousassociations of producers ofcinematograph films who claimed to be

the owners of such films including thesound track thereof and theCinematograph Exhibitors Associationof India filed objections in respect of theaforesaid tariff repudiating the claim ofthe IPRS that it had on behalf of itsmembers authority to grant licences forperformance in public of all existing andfuture musical works which areincorporated in the sound track ofcinematograph films in which copyrightmay subsist in India or the right to collectin relation thereto any fees, charges orroyalties.

Contention of IPRS

The IPRS contended that the author(composer) of a literary or musical workhas copyright which includes inter aliathe exclusive right - (a) to perform thework in public and (b) to make anycinematograph film or a record in respectof the work. Therefore, the copyright insuch work is infringed by any person ifwithout a licence granted to him by theowner of the copyright, he makes acinematograph film in respect of thework or performs the work in public byexhibiting the cinematograph film. If aperson desires to exhibit in public acinematograph film containing amusical work, he has to take thepermission not only of the owner of thecopyright in the cinematograph film butalso the permission of the owner of thecopyright in the literary or musical workwhich is incorporated in thecinematograph film as according toSection 13(4) of the Act. The copyright ina cinematograph film or a record doesnot affect the separate copyright in anywork in respect of which or a substantialpart of which, the film, or as the case maybe the record is made.

17 Garware Plastics v. Telelink, MANU/MH/0274/1989: AIR 1989 Bom.331

It was held that showing a video film over cable TV Network to various subscribersamounts to broadcasting video films to the public. Therefore, the test to determine is to seewhether permitting such performance would in any way whittle down the protection givento the author of a copyright work under the Copyright Act resulting in the owner beingdeprived of monetary gains out of intellectual property.

18 IPRS v. EIMPA MANU/SC/0220/1977: (1977) 2 SCC 820


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They also emphasised that the provisionof Section 17(b) of the Act has noapplication to a literary or musical workor the separate copyright therein and donot take away the copyright in a literaryor musical work embodied in acinematograph film. The author of aliterary or musical work can cease to beits owner either by assignment or byrelinquishment or if the composercomposes the work in the course of hisemployment under a contract of servicewith an employer in which case, theemployer becomes the owner of thecopyright in the musical work.

Contention of the EIPMA and Others

The EIPMA relied on the definition of“cinematograph film” as under Section2(f) of the Act which includes the soundtrack and contended that“cinematograph” is required to beconstrued to include any work producedby any process analogous tocinematography, the owner of thecinematograph film is the first owner ofthe copyright therein, including the rightof the composer of the literary or musicalwork incorporated in the sound track ofthe film. Section 13(1)(b) conferscopyright on a cinematograph film andSection 14(1)(c)(ii) confers on the ownerof copyright the right to cause the film inso far as it consists of visual images to beseen in public and in so far as it consistsof songs to be heard in public and sinceunder Section 2(f) of the Act,cinematograph film includes its soundtrack, it is not necessary for the owner ofthe cinematograph film to secure thepermission of the composer of the lyricor of the music incorporated in the soundtrack of a cinematograph film forexhibiting or causing the exhibition ofthe sound portion of the film in public orfor causing the records of the sound trackof the film to be heard in public.

The Act confers a separate copyright ona cinematograph film as a film so theproducer can exercise both the rightsconferred on him under Section14(1)(c)(ii) of the Act and all that Section13(4) of the Act (when applicable)provides and therefore the rights createdby Section 14(1)(a) and (b) shall co-existwith those created by Section 14(1)(c) and(d) of the Act. Also Section 17(b) will beapplicable if someone is commissionedto make any component part of acinematograph film such as a lyric ormusical work i.e. when such componentof the film is made at the instance of afilm producer for valuable consideration,the copyright for such component shallas well vest in the producer.

Matter in the Copyright Board

The Copyright Board expressed the viewthat in the absence of proof to thecontrary, the composers of lyrics, andmusic retained the copyright in theirmusical, works incorporated in thesound track of cinematograph filmsprovided such lyrical and musical workswere printed or written and that theycould assign the performing right inpublic to the IPRS. The Copyright Boardfurther held that the tariff as publishedby the IPRS was reasonable and the IPRShad the right to grant licences for thepublic performance of music in the soundtrack of copyrighted Indiancinematograph films and it could collectfees, royalties and charges in respect ofthose films with effect from the date onwhich the tariff was published in theGazette of India.19

Matter in the High Court of Judicatureat Calcutta

The High Court held20 that unless thereis a contract to the contrary, a composerwho composes a lyric or music for thefirst time for valuable consideration for a

19 1977 Decision, supra note 18, at ¶ 4.

20 Eastern Indian Motion Pictures Association and Ors v. Indian Performing Right Society Ltd., AIR1974 Cal 257.

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cinematograph film does not acquire anycopyright either in respect of film or itssound track which he is capable ofassigning and that under Proviso (b) toSection 17 of the Act, the owner of thefilm at whose instance, the compositionis made, becomes the first owner of thecopyright in the composition. It furtherheld that the composer can claim acopyright in his work only if there is anexpress agreement between him and theowner of the cinematograph filmreserving his copyright.

It also held that though Section 18 of theAct confers power to make a contract ofassignment, the power can be exercisedonly when there is an existing or futureright to be assigned and that in thecircumstances of the present case,assignment, if any, of the copyright inany future work is of no effect.

Matter in the Hon’ble Supreme Court

According to the Hon’ble Apex Court, thesolution to the second question was givenin Provisio (b) and (c) to Section 17 of theAct.21 The Bench answered the secondquestion on the assumption that themusical compositions werecommissioned works under Section 17(b).

Hon’ble Mr. Justice Jaswant Singh, in hisjudgment, held:

(i) that the composer retains theright of performing thecompositions in public otherwisethan as part of the cinematographfilm, and he cannot be restrainedfrom doing so

(ii) that the film producer whoengages a composer for valuableconsideration under Section17(b), for creating a compositionto incorporate in a film, becomesthe first owner of copyright inthe composition and nocopyright subsists in thecomposer, unless there is a

contract to the contrary.

(iii) the above result would alsofollow even if Provisio (c) toSection 17 is applied, i.e. if thecomposer of music or lyric isemployed under a contract ofservice or apprenticeship tocompose the work.

The Hon’ble Supreme Court held thatthough a conflict may at first sight seemto exist between Sections 13(4) and14(1)(a)(iii) on the one hand and Section14(1)(c)(ii) on the other, a close scrutinyand a harmonious and rational insteadof a mechanical construction of the saidprovisions cannot but lead to theirresistible conclusion that once theauthor of a lyric or a musical work partswith a portion of his copyright byauthorising a film producer to make acinematograph film in respect of hiswork and thereby to have his workincorporated or recorded on the soundtrack of a cinematograph film, the latteracquires by virtue of Section 14(1)(c) ofthe Act on completion of thecinematograph film, a copyright whichgives him the exclusive right inter alia ofperforming the work in public.

A crystal clear conclusion was drawnby the Court that the rights of a musiccomposer or lyricist can be defeated bythe producer of a cinematograph film inthe manner laid down in Provisos (b)and (c) of Section 17 of the Act.

Further, Hon’ble Mr. Justice Krishna Iyerin his footnote to the judgment of Hon’bleMr. Justice Jaswant Singh observed thatbeyond exhibiting the film, if the producerplays the songs separately, he infringesthe composer’s copyright:

Anywhere, in a restaurant or aeroplaneor radio station or cinema theatre, if amusic is played, there comes into playthe copyright of the composer or thePerforming Arts Society.22

21 1977 Decision, Infra note 24, at ¶ 18.

22 1977 Decision, supra note 18, at ¶ 21.


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The learned Judge did indeed think aboutthe injustice that is being carried to thepersons including musicians but heldthat it is for the parliament to enact onthat point.

Observation from the 1977 Ruling

According to the author, the 1977 rulinggiven by the Supreme Court is an evidentexample of a bad interpretation of lawby our judiciary. If one reads the entirejudgment a few errors becomesimmediately apparent:

Firstly, Both the Hon’ble Calcutta HighCourt and the Hon’ble Apex Court in theinstant case proceeded to give theirrespective verdict on the assumption thatthe composers were engaged undercontract for services however, accordingto the facts of the case it was stated by theproducers that the composers wereemployed under contract of service. So ifthe relationship that existed between theproducers and the composers weredifferent then the judgment is prima faciewrong.

Secondly, the Courts interpreted thescope of works covered under Section17(b) and Section 17(c) of the Act in asimilar fashion but it did not take intoaccount that their scope is fundamentallydifferent. Section 17(b) is limited in scopeand covers only certain works whereas,under Section 17(c) all types of works arecovered.

Thirdly, the question arises as to theextension of the scope of Section 17(b) tothe underlying musical works in acinematographic film. The provisiononly reads “cinematograph films” andaccording to the author, it does not

include the underlying works. So, thedecision of the Apex Court again seemsfallible here and to add the cherry on topthe Apex Court first drew a factual matrixpointing to the application of Section17(c), i.e. that the composers wereeffectively an employee under a contractof service but then proceeded to decideunder Section 17(b).

Fourthly, The Courts concluded that thefilm producers became the first owner ofcopyright in the musical works. So itmeans that the composers have zerorights in their composition even whenthe musical works were used outside thefilm. The film producer being the firstowner automatically gets all the musicpublishing rights in the compositionincluding the right to air such work overradio, the mechanical rights over thecomposition as well the synchronisationrights,23 etc.

Recent Judicial Pronouncement

It’s a huge surprise to the author thatdespite the efflux of more than threedecades and a great deal of change inthe copyright scenario as well as thetechnological advancement the 1977decision given by the Hon’ble SupremeCourt still is held to be a good law. Thisyear saw three most surprising judicialpronouncements given by the HighCourts of Kerala, Delhi and Bombaywhich answered the same question oflaw as discussed 34 years agoanswering it in similar lines.

Mathrubhumi Printing And Publishing v.The Indian Performing Rights Society24

The substantial question of law beforethe Court was:

23 P Narayana, supra note 7 at 99.

The right to record the music as part of the sound track in a film is known as ‘thesyncronisation right’, because it is performed in syncronisation with the film. This right isincluded in the right to reproduce the work in any material form.

24 Pronounced on 8th February, 2011, FAO No. 82 of 2009, In the High Court Of Kerala atErnakulam. (For the sake of brevity will be used as “Kerala High Court decision”)

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Whether a cinematograph film fromwhich a sound recording is taken outand broadcasted in FM Radioamounts to any breach of copyright ofthe composer, lyricists, etc.

The FM broadcasting companycontended that by virtue of being alicensed broadcaster it communicates‘sound recordings’ to the public bymeans of FM stations which is no longera musical work. Therefore, once theowner of the sound recording permits thePlaintiff to broadcast the soundrecording, the Defendant cannotcomplain that their copyright overmusical work has been violated. Theybased their argument on the basis thatthe definition of cinematograph filmunder the Copyright Act takes in thesound recording also and when acinematograph film is made after theright of lyricist or composer is purchasedthe producer of the cinematograph film,who is the author becomes the absoluteowner of the entire work contained inthe film.

IPRS on the other hand contended thatby virtue of the provisions of theCopyright Act the right of the composeror the lyricist does not end and the ownerof the movie does not become thecopyright holder with respect to theextractions from the sound recordingand broadcasting through FM Stations.

The Kerala High Court held that the lawon the present matter is the authoritativepronouncement of the Supreme Court inthe 1977 judgment and so concluded thatin a cinematograph film which takes insound recording as well, the owner orthe producer of the film becomes theabsolute owner unless there is a contractto the contrary with a composer or lyricistand there remains no right with thecomposer or lyricist for assignment andtherefore even if an assignment is taken,it will not confer a right on IPRS.

Music Broadcast Private Limited v. IndianPerforming Right Society Limited25


Whether IPRS is entitled to claim and/or demand royalty fees and/or licensefees from the Plaintiff in respect of thesound recording comprising ofmusical and/or literary workbroadcast by them at their Radiostation.

The Plaintiff contended that once thelyrics and music are incorporated in thesound recordings, a new copyrightablework comes into existence viz. the soundrecordings and therefore the producer orsound recorder is the author and ownerof the entire copyright in the soundrecording with an exclusive right underSection 14(1)(e) of the Act, inter alia, tocommunicate the sound recording to thepublic. The Defendant on the other handcontended that the Plaintiff is not entitledto broadcast the said sound recordingswithout obtaining a licence from theowners of the underlying musical andliterary works therein, which are ownedby its members. They based theirargument on the existence of separatecopyright expressly mentioned inSection 13(4). Upon the making of asound recording there emerge and existtwo sets of copyright – one in the soundrecording itself and the other in theunderlying musical or literary work sorecorded. The communication of a soundrecording of a literary or musical workinvolves therefore the communicationnot only of the sound recording but ofthe underlying work too.

The Court held that once the musical andliterary works are subsumed in acinematograph film or a sound recording,qua that cinematograph film or soundrecording and as embodied in suchrecording, they do not have a separateexistence. However, in all other respects,

25 Pronounced on 25th July, 2011, Suit No. 2401 of 2006, In the High Court of judicature atBombay. (For the sake of brevity will be used as “Bombay High Court decision”)


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the separate existence even of theunderlying works continues to subsist andcan be exercised by the owners thereof. TheCourt also drew a corollary to the 1977decision and held that although it was inrespect of a cinematograph film but will beequally applicable in the case of a soundrecording.

The Indian Performing Right Society Ltd. v.Mr. Aditya Pandey And Anr. 26


The determination of the extent of thesong writer’s copyright, and whetherit extends to excluding thecommunication to the public withoutauthorisation, of the musical workembodied in it.

The Appellants contended that Section13(1) stipulates that copyright subsistsin inter alia original musical and artisticworks and also in sound recordingswhich is clear on a joint reading ofSection 13(4) and Section 14(a)(iii).Therefore, if a song writer allows hiswork to be embodied in a soundrecording, secondary copyright formingthe sound recording no doubtencompasses the copyright owner’s tocommunicate the sound recording to thepublic by virtue of Section 14(e).However, this does not detract from theseparate and independent right of thesong writer whose copyright in the workand the concomitant right to authoriseits communication to the public subsists,unless it is proved that such right hasalso been parted to the owner of thesound recording. The Defendantscontended that once the song writer orcreator of a musical work parts with hiscopyrights in the making of a film or asound recording, that copyright issubsumed with the right directly flowingfrom Section 14(d) and (e), which entitlethe copyright owner of the film or thecopyright owner of the sound recording

to communicate the entire film or theentire sound recording, which includeseither the entire song so recorded or apart thereof to the public.

The Court held that an interpretationconsistent with the one indicated in theEIMPA judgment of 1977 is appropriateto adopt. The Court held that it cannotrely on the Plaintiff’s argument stressingon the interpretation of Section 13(4). Themusical or literary work, per se which isthe subject matter of the copyright underSection 14(a) is not communicated orbroadcast; nor is there a method ofseparating that element, whilecommunicating the entire work, i.e. thesound recording, to the public. Therefore,it would be unjustified to say that whena sound recording is communicated tothe public, or played, in the public, orbroadcast, the musical and literary workis also communicated to the public,through the sound recording.

Observations

In the light of the judgments of theBombay High Court in Music BroadcastPvt. Ltd. v. Indian Performing Right Society,Delhi High Court in Indian PerformingRight Society v. Aditya Pandey and KeralaHigh Court in Mathrubhumi Printing andPublishing v. The Indian Performing RightsSociety it has become necessary to pointout some important provisions of theCopyright Act 1957 which appear tohave been missed completely from theanalysis.

These judgments effectively say that IPRSdoes not have any right to collect royaltywhen recorded music is played in publicor broadcasted on behalf of the musiccomposers and lyricists. One of thequestions framed for consideration waswhether a song-writer’s copyrightextends to excluding the communicationto the public without authorisation, ofthe musical work embodied in a soundrecording.

26 Pronounced on 28th July, 2011, CS(OS) 1185/2006 & I.A. Nos. 6486/2006, 6487/2006,7027/2006, In the High Court of Delhi at New Delhi. (For the sake of brevity will be usedas “Delhi High Court decision”)

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The Courts held that once a licence isobtained in respect of the soundrecording for communicating the sameto the public, a separate authorisation orlicense is not necessary from the ownerof copyright in the musical/literarywork. In reaching this conclusion, theHigh Court’s rested its decisions onmainly three factors outlined below:

• Copyright in sound recordingswas recognised under IndianCopyright Law post the 1994amendments.

• The 1977 decision of the SupremeCourt in IPRS v. EIMPA.

• When a sound recording iscommunicated to the public, theunderlying musical or literary workis not communicated.

However, at this juncture the authorwould like to point out that the factorson which the Courts based theirjudgment is per se not correct and hence,the analysis of these factors becomenecessary. Therefore, it can be rightly saidthat the above judgments no doubtdemonstrate a poor grasp of copyrightlaw in our country as compared to theother developed copyright jurisdictions.

Sound Recordings was Recognisedunder Indian Copyright Law, Post-1994Amendments

It is incredible that while the soundrecording has been protected by copyrightunder Indian law, since the 1911 UK Actwas extended in its application to India27

and later called “record” under the 1957Act,28 the judgments finds withouthesitation that sound recordings wereaccorded copyright protection only afterthe 1994 Amendments to the CopyrightAct. This finding, if nothing else, causesthe judgment to suffer from an incurable

defect and cannot be relied on as bindingprecedent.

Even the Supreme Court has recognisedcopyright in records in 1984.29 The caseconcerned infringing copies ofrecordings in which the Gramophone Co.owned copyright which were beingillegally imported. For a Court to come tothe conclusion today that India onlystarted recognising copyright in soundrecordings post the 1994 Amendmentsis simply too shocking, let alone therewriting of copyright law that has beendone when it comes to the rights ofowners of copyright in music and lyrics.

The Ruling of the Supreme Court inIPRS v. EIMPA in 1977

The author has in detail discussed theshortcomings of the Supreme Court’sdecision in its 1977 judgment. Therelevant fact noticed by the SupremeCourt was that authors and composerswere under “contracts of service” withfilm producers. According to the authorthe Supreme Court while delivering thejudgment could not interpret theconcepts of “contract of service” and“contract for service” and thus, lead to agross error in its judgment. Also, theCopyright Board as per the author cameup with the accurate finding that in theabsence of any contrary proof that anycontract of service existed it is thecomposer who retained the rights.

It seems highly unlikely that musiccomposers and lyric writers would havean employer–employee relationship withany one producer as they would bewriting music for various films producedby various banners. If some of them didhowever, and there was no contract tothe contrary, then the producer wouldown the underlying rights.

27 Act, 1911, supra note 20, section 19. Provision as to mechanical instruments. (1) Copyrightshall subsist in records, perforated rolls, and other contrivances by means of which soundsmay be mechanically reproduced, in like manner as if such contrivances were musicalworks………….

28 Act, supra note 4, section 2 (w), omitted by Act 38 of 1994, Section 2 (w.e.f. 10th May, 1995)

29 Gramophone Co. v. Birendra Bahadur Pandey, MANU/SC/0187/1984: AIR 1984 SC 667


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The Supreme Court for some bafflingreason however proceeded to analyse thematter under Section 17(b) of the Actwhich deals with commissioned work.This is very significant because Section17(b) only deals with certain kinds ofartistic works and cinematograph filmsgenerally, whereas Section 17(c)(concerned with the employer-employeerelationships) covers all works protectedunder copyright, including musical andliterary works.

While analysing the recent judgments, itcan be clearly pointed out that the judgeshave heavily relied on the 1977 decisionholding it to be a good law. But whatexactly is the criterion of deciding whichis a good law. Is it merely that it has to beSupreme Court decision and just becausea decision of the Hon’ble Supreme Courtexists on a certain question of law ourjudiciary will be blinded by it.

When a Sound Recording isCommunicated to the Public, theUnderlying Musical or Literary Work isnot Communicated.

The fact that author-composers alwaysenjoyed a performing right and wereentitled to receive royalty no matter howsuch music is communicated (whetherlive or recorded) is practically acornerstone of music copyright law.30

According to the Courts emphasising onthe judgment of the Delhi High Court, itwas held that the copyright proprietor ofa film, who happens to own the soundrecording, can authorise the broadcastor communication to the public of the filmincluding the sound recording part (as acomposite work) without license fromthe author of the lyrics or the composer.The Act also unambiguously points tothe film copyright content including theauthorisation to communicate the workto the public which, according to the 1977judgment, extends to permitting such

communication of the sound recordingparts alongwith the cinematograph film,without separate license from the authorof the musical work. It alsounambiguously points to an identicalright to the copyright owner of a soundrecording to authorise thecommunication of the work to the public(i.e. of the sound recording).

So what the judgment basically means isthat if the underlying right vests withsome other person other than the author-composer, say the film producer or musiclabel, this would simply mean that suchproducer or label is entitled to receiveroyalty when the underlying words andmusic are communicated either throughexhibition/broadcast of films orrecordings but not the author-composer?

The Way Ahead – UnansweredQuestions and Suggestions

The objective of writing this paper wasto focus on the unjust and unfairsituation in the Bollywood Industryunder the shadow of a decision of theHon’ble Apex Court which effectivelyhas emasculated the rights of musiccomposers and lyricists.

Looking at the Statements and Object ofReasons of the Copyright Bill, 195531

which, at Clause 2(4) stated that:

A cinematograph film will have aseparate copyright apart from itsvarious components, namely story,music, etc. it can pointed out that itwas never the intention of the framersof this Act to create unjust situation tothese authors.

Also, if we place reliance on the notes onclauses appended to the 1955 Bill statedin explanation to Clause 13, which readas follows:

Clause 13 - This clause roughlycorresponds to Section 1(1) of the UKAct and describes the works in which

30 ALCS Ltd., Independent Review of Intellectual Property (March, 2011), http://www.ipo.gov.uk/ipreview-c4e-sub-alcs.pdf

31 19th August, 1955

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Copyright shall subsist. It providesthat a separate copyright shall subsistin a Cinematograph film as distinctfrom its various component parts. Sub-clause 2(i) gives effect to therecommendation made in Article 2 ofthe Universal Copyright Convention,1952 which provides that the worksof nationals and residents of aConvention country whereverpublished should have protection ofcopyright. Sub-clause (4) makes it clearthat the copyright in a cinematographfilm shall not affect the separatecopyright in each of its variouscomponent parts. It again becomesclear that cinematograph films haveseparate rights than the artistic,literary or dramatic works and henceeven if these works are incorporatedinto a cinematograph film or a soundrecording will not lead to the death ofthe rights of the author/composer ofsuch works.

Copyright law provides to an owner a“bundle of property rights”, which maybe bundled together. These rights can co-exist being owned by many owners or byone owner as the case may be, subject tooperation of law or contract between theparties involved.32 In that light, it issubmitted that by Section 13(1) of theIndian Copyright Act, 1957 copyrightsubsists in certain “works” namely–original literary, dramatic, musical andartistic works; (b) cinematograph films;and (c) sound recordings. Further,Section 14 of the Act mandates certainexclusive rights in respect of the saidworks. Then why we need to excludecertain rights for the other rights to existand why cannot these rights co-existtogether.

A lot of unanswered question arise fromsuch decision of our judiciary. Theobjective of Indian Performing RightsSociety is to the administer the

performing rights as well as themechanical rights of its members whichare33:

• the right to perform the work inpublic;

• the right to communicate the workby broadcast;

• the right to communicate thebroadcast of the work to the publicby a loud speaker;

• the right to communicate thebroadcast of the work to the publicby any instrument;

• the right to make any record inrespect of the work.

It protects the rights of the foreigncopyright owners as well. So, if IPRScannot collect royalties on behalf offoreign right owners, which has beendecided by our judiciary the users of suchwork can be sued by these foreigncopyright owners. Also, the questionarises as to whether we have beensuccessful in upholding theInternational obligation in such regard.According to the author there is a clearnon-fulfillment of TRIPS agreement aswell as the BERNE convention.

In the author’s opinion the CopyrightBoard had held correctly that in theabsence of proof to the contrary (as to theexistence of a contract of service), thecomposers retained copyright.34

However, if we are following the Court’sjudgment then if the creators want toretain their right in their works then theywill have to work for “no valuableconsideration”. Copyright is generatedby creation and not by ideas then howcan ownership of a work be attributed tothe one who has the idea and not itscreator? It’s a shame that we do not giveback to the makers of such works theamount which they deserve. Firstly, asalready discussed in the introductorypart of the paper the plight of these artists

32 Copinger & Skone, supra note 12 at 13

33 The Indian Performing Rights Society Ltd., http://www.iprs.org/FAQs.asp

34 1977 Decision, supra note 24.


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and secondly, we see exploitation oftheir rights.

Also, at this juncture I would like to pointout the intention of the legislature whiledrafting the Copyright Act, 1957. Section52(1)(y) of the Act states that acinematograph film if exhibited after theexpiry of its copyright will not infringethe underlying literary, dramatic ormusical work recorded therein.Therefore, if the Act expressly mentionswhen the right of the Copyright holderwill not be infringed it implies that it willbe infringed in all other cases.

Since the past year, we have seen lyricistand composers fighting actively for theirrights and raising voices against thesocial injustice towards them, prominentnames among them are Mr. Javed Akhtarand Mr. A.R. Rahman.35 The CopyrightAmendment Bill, 2010 has inserted a newprovision under Section 19(9) whichreads “No assignment of the copyrightin any work to make a cinematographfilm or sound recording shall affect theright of the author of the work to claimroyalties or any other considerationpayable in case of utilisation of the workin any form other than as part of thecinematograph film or soundrecording”.36 The present amendmentintroduces a laudable, revolutionaryprovision in favour of music composersand lyricists whose works areincorporated into cinematographic films.It states that notwithstanding anyassignment of copyrights in works such

as music compositions and lyrics thathave been incorporated into a film orsound recording, the authors of suchunderlying works shall continue to havea right to remuneration from anyexploitation of the underlying works.However, there is a need to strengthenthe proposed amendment such that mostadvantageous protection can be awardedto authors and composers.

It is rightly said that Copyright is aboutcreativity. It is not to cater to the pocketsof the funder of a work than the creatorof such work. Therefore as per the authorit is one of the wisest recommendationsof the standing committee to make thefilm producers split the revenue in caseof the work being exploited other than aspart of the cinematograph film. However,this recommendation did indeed receivea strong reaction from the film producers.The Bollywood producers are nowthreatening to strike against thisprovision in the apprehension that thatif this provision converts to law, they willbe forced to shut down.37

When considering as to who to blamefor such a situation – the Copyright Act,1957 for an imbalanced approach or ourjudiciary for a gross interpretation of theAct. According to the author our judiciarywins hands down. At last it can beconcluded that now the time has comewhen either the IPRS or the artists shouldrefer the matter to a larger bench tooverrule the obvious wrong decision ofthe Supreme Court of 1977.

35 Vickey Lalwani, Rahman and Akhtar’s Musical Mission, Mumbai Mirror, 23rd February, 2010

36 Copyright Amendment Bill, 2010, http://copyright.gov.in/Documents/CopyrightAmendmentBill2010.pdf

37 Shamnad Basheer, Copyrighting a Wrong and Injecting Fairness into Bollywood, (27th

December, 2010), http://spicyipindia.blogspot.com/2010/12/copyrighting-wrong-and-infusing.html

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