SpicyIP is honoured to bring to its readers, a guest post by Senior Advocate Arvind Datar and Advocate Ananth Padmanabhan, practicing advocates at the Madras High Court. The following post is an insightful review of Mr. V.J. Taraporevala’s recent book - Law of Intellectual Property (Thomson Reuters, New Delhi, 2012).
Book Review - V.J. Taraporevala, Law of Intellectual Property (Thomson Reuters, New Delhi, 2012)
|Image from here|
The second edition of Shri.Taraporevala’s work on Intellectual Property Rights (IPR) has come not a moment too late, considering the rapid developments in this field in the past few years. The statutory landscape has undergone a sea of change, especially with the enactment of the Copyright (Amendment) Act, 2012. The judiciary has also been quite active in deciding novel and challenging issues in IPR such as trademark dilution, the requisite standard of originality for copyright protection, injunctive relief in patent infringement action, the novelty standard for design protection, and many more. This work captures many of these significant developments and is a recommended read for lawyers and students alike.
Divided into nine parts of commentary and one final part of annexures of relevant statutes, this book presents, in lucid fashion and with much conceptual clarity, the scope of different IPRs. This is indeed a tough task, considering the variations in themes and the complex nature of the debates surrounding these rights. The book not only enlightens the reader as to the approach of the Indian legal system to the scope of these rights and their protection but also discusses the law in common law jurisdictions such as the United States, United Kingdom, Singapore and Australia. This is especially helpful since important Indian legislation, including in the fields of copyright and trademark, is based on English legislation that was in force at the time. While dealing with the issue of patent protection for software and the exception to patentability contained in Section 3(k) of the Patents Act, 1970, the author has extensively covered the legal position in other jurisdictions. This makes the intent of our Parliament a lot clearer, as the expression “per se” used in our enactment derives meaning from the “technical effect” test for patent protection of software and algorithms. The nature and character of IPR cannot be appreciated without a refined understanding of the concept of property in the general law. With this foundation provided to the reader in the first part, the author proceeds to discuss patents in the second part. The golden trinity of novelty, non-obviousness and utility—capable of 'industrial application' being the words used in the Indian statute—have been well explained. Indian law is also unique in this regard due to the specific statutory exceptions to patentable subject matter contained in section 3, and the author has contributed significantly to the understanding of this provision. In true anecdotal style, the author explains the relevance of Section 115 of the Indian statute (appointment of scientific advisors) by pointing out the open expression of gratitude by Lord Hoffmann in Kirin-Amgen v. Hoechst Marion Roussel (2005) RPC 169—a watershed decision—to the contribution made by the scientific advisor in that case.
Part III of the book discusses copyright protection, with the author starting the discussion by taking us through the different kinds of work entitled to copyright protection, and elucidating the ‘minimal skill and judgment’ test. The observation by the author that there is no copyright in the title of a work is of paramount importance in the backdrop of the several title disputes plaguing the film industry today. The author draws out the correlation between the originality requirement and the requisite degree of copying for the purposes of a finding of copyright infringement, and concludes that the more original a work, lesser the degree of similarity required to be shown between the work and the allegedly infringing copy, and vice versa. In the context of ownership of copyright, the author has discussed the recent spate of amendments to Section 17 and 18 of the Copyright Act, including the rationale for these amendments as explained by the Parliamentary Sub-Committee constituted to look into the same. The discussion of new forms of remedies such as Anton Piller orders, John Doe plaints, and Norwich Pharmacal orders, in Part VIII, considerably assists practising lawyers in fashioning the relief sought for IPR infringement.
Part – VA of the book, which discusses trademarks, is the most exhaustive one, considering the voluminous trade mark litigation to which we have been witness. The author has, with admirable clarity, explained such important concepts as the use of a mark, descriptiveness and distinctiveness, the prohibition in Indian law on trade mark trafficking, the important distinction between trade mark and passing off, and infringement in the context of trade mark parodies and descriptive use. The author rightly points out that the essential function of a trade mark is to guarantee the identity of origin of the goods or services on which it is applied, and for this reason alone, genuine use of the mark must be an essential pre-requisite for trade mark protection. This is of particular concern in India, where several marks are registered for the asking due to the low costs involved and the difficulty in effective scrutiny by an overworked Trade Mark Office, and it later emerges that these marks were never put to actual use by the registrant.
The book could have, however, been edited with greater care. Some portions of the book are very lengthy and could have been trimmed. Similarly, minor grammatical and syntax errors ought to have been corrected. To make the book more student-friendly, the author needs to give illustrative examples on more complex issues such as parallel importation, source code protection for computer software etc. in future editions. A discussion of policy issues as regards the way the different laws have been currently framed is also presently missing. Despite these minor glitches, the book is a worthy guide for those interested in a study of intellectual property law.