India: Revisiting The Doctrines In Copyright: The Oxford Dispute

Last Updated: 2 December 2008

The doctrines governing Copyright Law often compete against each other to enable determine disputes involving various aspects. The idea-expression dichotomy is often balanced against the fair-use provision in the Indian copyright regime. Explicating the same and also visualizing the dispute while drawing from the standpoint of the American transformative theory is the case of The Chancellor Masters and Scholars of The University of Oxford v. Narendra Publishing House and Ors. [IA 9823/2005, 51/2006 and 647/2006 in CS(OS) 1656/2005]

The Chancellor Masters and Scholars of the University of Oxford, a well-known publisher of academic books is engaged in publishing in India since 1912. With established show rooms in different places of India, Oxford claims to be publishing substantial number of school books for use at all levels of schooling and for all subjects, with the aid of a team of highly trained and committed editorial, research, production and marketing professionals.

The issue at hand dealing with mathematics text books i.e. ("Oxford Mathematics Part A" and "Oxford Mathematics Part B" (herein after referred to as "the textbooks"). for the students of Class XI, following the course structure prescribed by the Jammu and Kashmir State Board of School Education. Having published the same in collaboration with the Jammu and Kashmir State Board of School Education (hereafter "the Board"), an agreement had been entered into and the copyright in the said textbooks vested with Oxford. The textbooks authored by one Dr. A.K. Roy, assigned the copyright in Oxford through an agreement. Averring that great skill, knowledge and expertise being invested into the work, they claimed that no part of the textbooks could be stored in a retrieval system or transmitted in any form or by any means without the prior permission in writing given Oxford, or as expressly permitted by law.

Oxford alleged that they learnt of the existence of guide books namely "Teach yourself mathematics (Fully Solved) Part A" and "Teach yourself mathematics (Fully Solved) Part B" published by Narendra Publishing House and co-parties in 2005. The infringing books, they claimed had been published, to help those students who prefer to mug up the solutions/answers rather than seriously taking the course through text books. It was averred that the guide books had immensely hampered not only the sale of Oxford' work but had also "gravely prejudiced the interest of the students at large". Oxford averred that Narendra Publishing had reproduced the exercises and their solutions/answers from their work and thus had committed an act of infringement. It was also alleged that such reproduction by Narendra Publishing showed a deliberate and malicious intent and design on their part to misappropriate, trade upon and derive benefit from its reputation and goodwill and the copyright in the subject work, enjoyed exclusively by them, worldwide. In this regard, had granted an ex-parte injunction in favour of Oxford and Narendra Publishing moved for its vacation.

Oxford contended that Narendra Publishing had indulged in a brazen word-to-word copying of the questions, in the textbooks, while Oxford stated that they had given answers to the questions in the exercises, but had not provided detailed step-by-step process to arrive at such answers. It was argued that the questions formed a valuable and central part of the work, and their substantial copying amounted to violation of the Oxford's copyright. They further stated that questions, their arrangement and selection should be considered original literary works under the Act, and therefore, are entitled to copyright protection. Reliance was placed on University London Press v. University Tutorial Press [1916] 2 Ch. 601, to assert that question papers are literary works and that copyright could vest in questions.

Narendra Publishing contended that the present issue was one of fair use, stating that the preparation of a guide book, which independently contains the working of every mathematical problem and steps for solving them, cannot be termed as an infringement of the textbook. Further, it was averred that all students were well aware that the Narendra Publishing' books are guide books whereas Oxford's publications are textbooks. Further, the questions appearing in Oxford' books were claimed to be part of the common pool of questions used and contended that the nature of the subject is such that it would be impossible for one author to claim copyright over a set of questions. Reliance was placed on Eastern Book Company v. Modak, (2008) 1 SCC 1, while contending that Oxford' work, no question of infringement arose. It was contended that Oxford' books had not been pirated or reproduced. They, also stated that since their books did not constitute adaptation as under section 2 (a), and therefore, could not be in violation of section 14 (a) (vi). It was also contended that Section 52(1)(h) was inapplicable to the matter at hand since the reproduction of the literary work was as a part of answers to those questions. Further it was argued, placing reliance on RG Anand v. M/s Delux Films, (1978) 4 SCC 118 that there can be no copyright in ideas and therefore, the questions per se are not subject matter of copyright

The Court noted that two primary issues needed to be looked into, viz. whether that part of the work of Oxford which Narendra Publishing had reproduced, prima facie merits copyright protection. Secondly, in case it did, had a case of "fair dealing" or a "fair use" been made out.

The Court noting that the "doctrine of merger" being involved in this case, posits that where the idea and expression are intrinsically connected, and that the expression is indistinguishable from the idea, copyright protection cannot be granted. The Court took notice of previous instances when on application of this doctrine the courts refused to protect the expression of an idea that could be expressed only in one, or in a very restricted manner, because doing so would confer monopoly on the idea itself. The Court opined that as far as the sequencing and schematic arrangement of the questions notice of Oxford' admission as to the same being in conformity of the J and K norms was taken notice of and that Oxford had to depict original effort, unique to their schematic arrangement or sequencing

The Court further referring to a numerous authorities on the subject observed that the same idea might be developed in different ways. Reiterating the test for determining infringement: "One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original", the Court, also looked at the "transformative work" doctrine developed in the United States, which held that: "Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises."

The Court in consideration of the wisdom behind Copyright and the various exemptions and doctrines therein, noted that whether statutorily embedded or judicially innovated, the law recognized the equally compelling need to promote creative activity while ensuring that the privileges granted by copyright do not stifle dissemination of information, vide the idea-expression dichotomy and the doctrine of "fair use" or fair dealing. The Court also opined that in addition, the transformative character of the use must also be considered, since the work if transformative, it might not matter whether the copying is whole or substantial. Further, a transformative work may not act as a market substitute and consequently, will not affect the market share of the prior work.

Looking at the dictionary meaning of the term "Review", the Court opined that in the context of a mathematical work a review could involve re-examination or a treatise on the subject. In that sense, the Court held that Narendra Publishing' revisiting the questions, and assisting the students to solve them, while providing "step by step" reasoning prima facie amounted to a review, thus falling within the "fair dealing" provision of Section 52 (1) (a) (ii) of the Act. Stating this reasoning, the High Court vacated the interim injunction.

© Lex Orbis 2008

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions