October 3 6, Workshop VIII. Aspects of the relationship between employer and employee in copyright. Tuesday, October 5, to 12.

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1 AIPPI CONGRESS PARIS October 3 6, 2010 Workshop VIII Aspects of the relationship between employer and employee in copyright Tuesday, October 5, to h Speaker: V. Lakshmikumaran (India) Curriculum Vitae V. Lakshmikumaran V. Lakshmikumaran Managing Partner Advocate and Patent Agent New Delhi Mr. Lakshmikumaran is the Managing Partner of the Law Firm Lakshmi Kumaran & Sridharan (L&S). The firm was founded in 1985 and has six offices spread across various cities in India. The areas of specialization of the firm are Intellectual Property, Tax, International Trade and Corporate and Commercial laws.

2 Mr. V. Lakshmikumaran practices as a Litigator in the area of Intellectual Property and, in particular, in the area of patents. He has handled several high profile IP litigations at various judicial fora, including the Supreme Court of India. He has extensive experience in the area of pharmaceutical and chemical patents and has overseen many Freedom-to-Operate Opinions in this area. His client portfolio includes leading multinational and Fortune-500 companies in the pharmaceutical, automobiles, manufacturing and engineering sectors. His extensive experience and expertise in dealing with IP, tax and commercial cases has also placed him in a unique position to advice companies on planning and implementing IP strategies for competitive advantages. He has been instrumental in crafting and defining the course of IP action for many reputed Indian companies. In addition, his team also provides many allied services required for companies to successfully implement these strategies such as patent drafting, prosecution before the Controller of Patents & Trade Mark, pre-grant and post-grant opposition and litigation at all forums. He began his career as Assistant Professor in Mathematics at Madras University. He served as Indian Revenue Service Officer for over 10 years with Government of India, before starting his legal practice in qualifications: LL.B. (Law), University of Madras M.Sc.( Mathematics), University of Madras practice areas: Intellectual Property Rights Tax, Customs and International Trade Laws Corporate and Commercial laws vlakshmi@lakshmisri.com Website: Summary of Presentation ASPECTS OF THE RELATIONSHIP BETWEEN EMPLOYER AND EMPLOYEE, VIS-À-VIS COPYRIGHT

3 Mr. Lakshmi Kumaran, India: Summary of the Law The ownership of the copyright over any work vis-à-vis employer and employee is governed by Section 17 of the Copyright Act, As per Section 17, as a general rule, the author of a work is considered to be the first owner of the copyright over that work. This general rule is subject to certain exceptions which are provided in Section 17(a)-(e): Exception 1: (Section 17(a)) a. In case of literary, dramatic or artistic work; b. Made in the course of his employment ; c. Under a proprietor of a Newspaper, magazine or similar periodical. d. Under a contract of service or apprenticeship; and e. The copyright relates to the publication/republication of the work in the newspaper, magazine or periodical. In this case, the said proprietor shall be the first owner of the copyright over the work, unless there is a contract to the contrary. Exception 2: (Section 17(b)) a. Subject to Exception 1; b. In case of a photograph, painting, portrait, engraving or cinematograph film. c. Made for valuable consideration ; d. At the instance of any person; In this case, the person at whose instance the work was done will be the first owner of the copyright, unless there is a contract to the contrary. If the work falls within both Exception 1 and Exception 2, then Exception 1 applies. Exception 3: (Section 17(c)) a. If the first two exceptions do not apply; b. Work is made in the author s course of employment c. Under a contract of service or apprenticeship In this case, the employer at whose instance the work was done will be the first owner of the copyright, unless there is a contract to the contrary. Exception 4: (Section 17(cc)) a. Public address/speech; b. If made on behalf of other person

4 In this case, the other person on whose behalf the speech was made is the first owner of the copyright, irrespective of whether such other person was employed by anyone else. Exception 5: (Section 17(d)) In case of government work, unless there is a contract to the contrary, the government shall be the first owner of the copyright. Government work is defined to mean a work made or published by or under the direction or control of the Government or any department of the government, any legislature of India, or any court, tribunal or other judicial authority in India. Exception 6: (Section 17(dd)) In case of a work made, or first published by or under the direction or control of any pubic undertaking, unless there is a contract to the contrary, the public undertaking shall be the first owner of the copyright. A pubic undertaking is defined to mean an undertaking owned or controlled by Government, a government company under Section 617 of the Companies Act, or a body corporate established by or under any Central, Provincial or State Act. Exception 7: (Section 17(e) r/w Section 41) In case of a work covered by Section 41 (a work made or first published by or under the direction or control of any international organizations, as published in the Official Gazette by the Central Government), the said international organization shall be the first owner. As seen above, whereas exceptions 1-3 are general ones and exception 4 is for public speech/address, exceptions 5-7 are specific exceptions associated with government or international organization work. In both exceptions 1 and 3, the phrases contract of service and course of employment are crucial and are highly fact-specific. The phrase contract of service refers to an employer-employee type relationship as opposed to a contract for service or an independent contractor relationship. Courts consider various factors to determine this, including, the nature of the remuneration, the control exercised by the employer etc. To determine whether the work is within the employee s course of employment, one looks at factors such as where the work was created, whether the work created was part of the tasks entrusted to the employee, whether employer s resources were used to create the work etc.

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