Until recently, the misuse defense did not exist in the copyright context. The existence of
misuse as an independent defense to copyright infringement is wholly supported and
justified. From the unbiased maxim that, one who comes into integrity must do so with
“clean hands” there has developed copyright actions concerning the defense of misuse. The
current century will universally be known by its cognition and information based economy,
and consequently, the significance of Intellectual Property cannot be push aside. “Thou shall
not steal”. This is the virtuous foundation of the preservative provisions under law of
Copyright. The development in this recent and modern digital era with enormous
technological evolution, the subject of Copyright has become more remarkable. The
development of technology has greatly helped the public to recognize and differentiate what
is copyright content and Public domain. The copyright protection, therefore, has been
extended to upgrade educational standards, social welfare, and intellectual creativity. The
research paper will be assessing the misuse of Public Domain as defense in Copyright
Infringement Cases, protection under copyright law, determining the extent of misuse defense
is applicable to copyright actions and, consequently the paper would come up with
appropriate suggestions to control misuse of public domain under copyright. The researcher
will also highlight the famous English case Donaldson v. Beckett 1 and discuss the issues
relating to the judgment. Indeed under copyright, public domain cases is becoming a global
complication, and it is increasing at an alarming rate. The countries in the world are trying
their level best to control it by taking rigorous steps and measures. Moreover, the widespread
use of the internet leads to modification in copyright law giving rise to new challenges in the
field.
Keywords: – Misuse, Copyright, Public Domain, Infringement, development, protection,
technology, Intellectual Property Rights.
1 Donaldson v. Beckett, 98 Eng. Rep., at 357 (1774).
INTRODUCTION: –
Presently, Public Domain is one of the most debated affair in intellectual property. The
expression public domain is not available in any statute. Public domain is described as
ingenious information that is exposed by intellectual property laws such as copyright, patent
or trademark laws. These works are accessible to all, not an individual author or artist. A
person can come into possession and use public domain work, but no one can constantly own
it. 2
The term of copyright protection in India is restricted to the life of the author and sixty years
after his death. After termination of copyright period of time, any person can use the
copyrighted work without any sanction or permission and without paying any fee or royalty.
The term of expiration of copyright differs from country to country. The WIPO Development
observe to a protectionist approach of the public domain. Its Suggestion 16 upholds to
“consider the preservation of the public domain. With WIPO’s normative processes and
deepen the analysis of the implications and the benefits of a rich and accessible public
domain”. Suggestion 20 targets “to promote rule-making activities related to Intellectual
Property that support a powerfully built public domain in WIPO’s Member States, admitting
the possibility of ready-made guidelines which could assist interested Member States in
recognizing subject matters that have fallen into the public domain within their appropriate
administration”. 3
There are four common ways that copyright enters in the public domain:
- The copyright becomes invalid ;
- The copyright owner failed to abide by copyright continuation rules
- The copyright owner intentionally places it in the public domain, known as
“dedication,” or - Copyright law does not safeguard this type of work. 4
The advanced evolution has also recommends projects, whether for profit or not, grounded on
public domain material, extracting value out of it to provide the public with cultural resources
for free or at low cost. Many businesses models are now flourishing on public domain such as
2 Copyright & Fair Use Stanford|Libraries, https://fairuse.standford.edu/overview/public-domain/welcome/ (last
visited Jan 17, 2024) .
3 WIPO (World Intellectual Property Organisation) public domain,
https://www.wipo.int/copyright/en/activities/public domain.html.
4 Ibid.
Google Books Search, and public authorities work at promoting digitization and public
availability of their cultural heritage as the Europea digital library demonstrates.
Regardless of these rights, there is always a problem of possible misuse for this content
available online and easily downloadable. And while in our minds there is this idea of the
“evil” user who breaks copyright on purpose, and stoles the images. For example, make
money under the counter out of them, the complication on the control of what happens to the
accessible content is much deeper. It is not always a matter of who makes money out of the
content, but more of what happens to the content once it is freely available for “any” purpose.
The necessary protection for public domain has become the emblem of a vast evaluation
against intellectual property and what this evaluation recognizes as its increasing extension. 5
While sanctioning the unobstructed proposition, they must think that the content holder
completely loses the control and responsibility on the reuse of content, and on the possible
consequences that may arise. This is one of the many grounds for which some records still
have hesitation about being in favor for the open access tout-court, especially when they
likely deal with sensitive content.
According to United Nations Educational, Scientific and Cultural Organization (UNESCO)
“Public domain information refers to accessible information which is available in public,
where the utilization does not infringes any legal upright, or any burden of confidentiality. It
thus refers on one hand of domain of all works or objects of related integrity, which can be
exploited by everybody without any authorization, for example because protection is not
granted under national or international law, or because of termination of the word protection.
It refers on the other hand to data and official information produced for general public and
voluntarily made available by governments or international organizations”. 6
RESEARCH METHODOLOGY: –
This paper is of descriptive in nature and research methodology for this paper includes review
of different articles, books, literature, and case laws relating to Copyright and Public domain
5 Digital meets Culture, Public Domain and misuse: some thoughts,
https://www.digitalmeetsculture.net/article/public-domain-and-misuse-some-thoughts/ (last visited Jan 17,
2024).
6 Uhlir, Paul , Policy Guidelines for the Development and Promotion of Governmental Public Domain
Information, Paris: UNESCO, 2004.
and its misuse. This research paper mainly relies on secondary sources like legal database,
scholarly articles and case laws for comparative analysis and synthesize of information.
REVIEW OF LITERATURE: –
The study by different authors also suggests that the role of public domain under copyright
plays a very important role in avoidance of copyright infringement. According to Le
Chapelier, the idea of a public domain is within the copyright system itself, to the extent this
freedom to access works results from the mechanics of divulgation, and runs parallel to the
exclusivity offered by copyright protection. Jane Ginsburg has rightly said that, “the public
domain is all the rage”. 7 Which is by choice contradictory as the public domain is by
definition no subject to intellectual property. A project by Mr. Birnhack aims, at exhibiting
that “the public domain is not entirely – or rather should not be- an unintentional by product,
or ‘graveyard’ of copyrighted works, but its very goal”. 8
M. Rose rightly describes it, that in the dawn, the story goes with all the literary world lay
free and open, but then various parts were settled and surrounded in literary property came
into being. J. Ginsburg illustrates that, even after copyright was born, its grant cannot be
considered as creating, by the same token, a public domain composed of all works that did
not comply with the requirements for protection. 9
P. Samuelson specifically renowned within the public domain, a “core” containing of
intellectual resources that are not protected by intellectual property, as well as a number of
“adjacent terrains” and some “ gloomy areas”. 10
MISUSE OF PUBLIC DOMAIN: –
As the name suggests, the copyright misuse occurs when the copyright owners use their
limited absolute rights and control their works outside the monopoly. In a case of Sherlock
Holmes in Enola Holmes, where Springer published the book 15 years, however, no action
was taken against her by the Doyle Estate. And when a movie is made on the book, the estate
has awakened its legal conscience to invoke its copyright. Out of all the works of Canon
7 J. GINSBURG, ‘Une chose publique’? – The Author’s Domain and the Public Domain in Early British, French
and US Copyright Law” in P. Torremans(ed.), Copyright Law: A Handbook of Contemporary Research, Edgar
Elgar, 2007, p.133.
8 M. BIRNHACK, More or Better? Shaping the Public Domain”, in The Future of the Public Domain, p. 60.
9 J.GINSBURG, “ A Tale of two Copyrights……”.
10 P. SAMUELSON, “ Digital Information, Digital Networks, and The Public Domain” .
Doyle, only 10 works are under copyright protection. In these works Sherlock is said to have
developed new characteristic traits, which the domain asserts to have copyright protection. It
is important that the conservation of these property would ultimately extend the protection of
the Characters of Sherlock Holmes, which has already come into the public domain. Without
Sherlock, these traits are mere generic ideas that cannot be safeguarded by copyright law.
The public domain is generally defined as encircling intellectual elements that are both
protection by copyright or whose protection has lapsed, due to the expiration of the duration
for protection. However, if someone falsely claims copyright on a public domain work and
restricts its use, it can be considered a misuse or infringement. Always verify the actual
copyright status before assuming restrictions on a work in the public domain. Misuse of
public domain typically involves someone making false copyright claims or attempting to
restrict access to works that should be freely available. This can happen through; incorrect
copyright claims unlawful restrictions; perplexity of public domain status; unauthorized
licensing.
Copyright misuse is an impartial defense established on the concept of “unclean hands” and
refer in the cases of copyright violation. Broadly, the misuse rule provides that the copyright
bearer who engages in abusive or improper conduct in exploiting or enforcing the copyright
shall be restrained from enforcing their rights against the infringer. When suchlike misuse is
proved, the complainant is not given a countermeasure for that infringement. But it doesn’t
weaken the copyright and prevent the copyright owners from claiming copyright protection
on other occasions (Video Pipeline, Inc. v. Buena Vista) 11 . Also, it is solely a sanction
defense to a claim of copyright infringement that cannot be used as an independent claim for
damages. (Ticketmaster L.L.C. vs. RMG Technologies) 12
Regardless of the authority and soundness of the above cases, the rule of “misuse of
copyright” was dismissed by the Delhi High Court in the case Tekla Corporation & Anr v.s
Survo Ghosh & Anr. 13 Justice Rajiv Sahai Endlaw reasoned that when there is a grapple
between law and equity, the law should be victorious. The Court held that Indian Copyright
law does not make copyright a provisional right which is permitted only in case of not
misusing copyright. In the case of uncontrolled courtliness, the titleholder always has the
possibility of approaching jurisdiction for an obligatory license. Section 51 and 52 14 also do
11 Video Pipeline v. Buena Vista Home Entertainment, Inc., 275 F.Supp.2d 543(D.N.J.2003).
12 Ticketmaster L.L.C v. RMG Technologies’, Inc., 507 F. Supp. 2d 1096 (C.D. Cal. 2007).
13 Tekla Corporation & Anr vs. Survo Ghosh & Anr (2014) AIR 2014 DELHI 121, 210 DLT 666.
not form any such implication regarding the misuse of copyright, therefore, creating such an
exception would be amounting to adding to or subtracting from the definition in Sections 51
and 52 15 of what amounts and what does not amount to infringement. It was also held to be
forbidden in the aspect of Section 16 16 as it would amount to eligibility / negligibility person
to copyright.
ROLE OF PUBLIC DOMAIN IN INTELLECTUAL PROPERTY:
No one targets anymore in the negative role of the public domain in the balance of
intellectual property, nor the fact that copyright is in fundamentally restricted in scope,
subject matter and duration, which leaves many aspects outside of its scope and in the public
domain.
The absence of protection of such segment or work results in a freedom to use, reproduce,
and communicate to the public what belongs in the public domain. This serves many
objectives. P. Samuelson has listed eight main values of the public domain in copyright
patent regimes: 17
● to serve as component for creation of new knowledge or creation;
● to authorize aggressive imitation;
● to enable follow-on innovation;
● to enable low cost access to information;
● to get access to cultural bequeathal;
● to promote education;
● to promote public health and safety;
● to promote democratic process and values.
Between these principles, some are especially main for the public domain in copyright. First
and foremost, the free-for-all elements in the public domain, such as plans, designs, concept,
principle, facts or works whose conservation becomes invalid, it allows follow-on creators to
build upon pre-existing section. The public domain has here a value for further creative use
14 The Copyright Act,1957, No.51 &52, Acts of Parliament, 1957 (India).
15 Ibid.
16 The Copyright Act,1957, No. 16, Acts of Parliament, 1957 (India).
17 P. SAMUELSON, “ Challenges in Mapping the Public Domain”, op. cit., p,22.
and participants in the gradual nature of all creative creation. 18 The public domain also come
up with material for educational utilization, permitting access to important pieces of society’s
knowledge and culture.
But basic harmful use is also promoted by the public domain, once a work is not secured, its
use is free for all and could be implemented at no or low cost, depending upon the procedure
of making accessible thereof by the market or public organizations. Due to the nature of
literary and artistic works, even consumptive use will have a social security payments as it
provides knowledge, culture and education to the public.
The public domain has an economic arouse, work replica can be constructed upon vulnerable
works, as the value of acquiring to such works is lessen by the expiration of copyright. Some
creators specialize in the edition of public domain books or music. The digital conditions has
additionally reduced the cost of manufacturing of public domain-based business models, for
example Google Books recently reveals that, it is really launching a new business model that
namely provides books that are not protected for the time being and offered for free to the
public. In the structure of the Development Agenda, the public domain can also be seen as a
primary tool for enlargement as it allows countries to build creation, education and
innovation through eruption to information, knowledge and culture.
The significance of the public domain in terms of the public attentiveness is thus manifold,
from educational, democratic, economic and free competition perspectives. It has an equal
role to copyright in a popular society where societal diversity and freedoms to create, to
innovate and to take part to the cultural and scientific environment are fundamental
objectives. A strong and realistic public domain in culture and science is a vital element of
the common heritage of mankind and as such, it should be made available to all. It is a key
operator for social and economic development. It should also be preserved from extreme
privatization and infringements, and should serve as a balanced counterpart to intellectual
property individually.
PROTECTION OF PUBLIC DOMAIN AS DEFENSE COPYRIGHT
INFRINGEMENT
18 J. LITMAN, “The Public Domain” , Emory Law Journal,1990, vol. 39, p . 965-1023.
Protection of the public domain comprises two steps, as laid down by the development
organization:
1) Identifying the outline of public domain, thereby helping to assess its utility and
realm, and,
2) Considering and promoting the confabulation and accessibility of the public domain.
The Copyright Act, 1957 extends copyright protection to the work by granting certain
exclusive rights on its author. The logic of providing copyright protection to the owner of the
work is to enable him to epitomize the fruits of his labour and investment by keeping out
others. But the same time, public has also been given certain rights in his work under Section
52(permitted uses). Consequently, if a person uses any of the absolute rights accessible to the
owner of copyright without his prior authorization or without any license granted by the
Registrar of Copyright, he shall be deemed to have infringed copyright provided such use
was also not allowed under section 52.
In Bobbs-Merrill company v. Isidor Straus and Nathan Straus 19 , the U.S Supreme Court
held that Infringement of a copyright is a trespass on a private domain owned and occupied
by the holder of the copyright, and however, protected by law, and infringement of copyright,
or piracy which is a identical term in this connection, consisting in work done by any person,
without the consent of the holder of the copyright, of anything the sole right to do which is
bestow by the statute on the holder of the copyright. 20
At present, the copyright law, not only protects the rights of the copyright owner and
neighboring rights but also gives hand out with the subject of public interest and tries to
affect a stability between the two in this digital environment. The copyright law has thus
covered a long journey from its earlier days when it used to protect only literary and artistic
works, and has now entered a new world full of technological innovations. The request for
positive protection of the public domain that could preserve it against privatization is an old
demand.
In his seminal article on the public domain, D. Lange asked for identification and legal status
of the public domain in early 1981 21 . This legal status has not yet been created at the
international or national level. Yet, some protection is emerging for works in the public
19 Bobbs-Merrill company v. Isidor Straus and Nathan Straus 210 U.S. 339 (1908).
20 Third Edition, V.K Ahuja Law Relating to Intellectual Property Rights, Page Number 141.
21 Ibid.
domain, both in case law and in education, that could serve as a ground for developing some
modulation principles and recommendations for preservation and better availability and use
of the public domain.
JUDICIAL PRECEDENTS:
The 19 th century was also a time where the public domain explodes in case law and in
legislative process. A notable originator in the famous English case Donaldson v. Backett 22
1774, promoted public domain,
under the false display of publici juris, once the statutory term for copyright protection as
terminated. In that decision, Lord Camden famously equated science and learning to “things
common to all mankind, that ought to be as free and general as air or water”.
● Donaldson v. Backett, it was held in this case that copyright in published works
was not perpetual but was subject to statutory limits. Some experts fail to agree on
thinking logically behind the decision. 23
● Sameer Wadekar and Another v. Netflix Entertainment Services PVT.LTD
where the court denied the Interim application of the Plaintiff and allowed
Defendant’s to release their web series ‘BETAAL’. 24
● MySpace.Inc. v. Supper Cassettes Industries Limited, in this case it was important
from a copyright perspective, the High Court of Delhi a three judge bench held that
if intermediaries are tasked with the responsibility of identifying illegal content, it
could have a unsettle effect on freedom of expression. 25
22 Donaldson v. Beckett, 98 Eng. Rep., at 357 (1774).
23 JSTOR, The Author as Proprietor: Donaldson v. Becket and the Genealogy of Modern Authorship
https;//www.jstor.org/stable/2928566 .
24 Hein Online, Analysis of Sameer Wadekar &Anr. V. Netflix Entertainment Services Pvt.Ors(2020).
25 My Space Inc. vs Super Cassettes Industries Ltd. on 23 Dec, 2016.
● R.G. Anand v. Delux Films, in this case it laid down the basic principles of the
idea-expression division- that copyright exists not in an idea but only its
expression. While dealing with alteration of the play ‘Hum Hindustani’ the
Supreme Court held that there cannot be copyright in an idea, subject-matter,
themes, plots or historical Or legendary factuality and infringement of the
copyright, in such cases it is restricted to the form, mode and positioning and
expression of the idea by the creator of the copyrighted efforts. The Court was
interpreting the Copyright, Patents and Designs Act of 1911. 26
SUGGESTIONS
The proposed actions and recommendations hubs on four sectors; estimating to protect and
develop the public domain, measures that protect and contributes to usage rights, measures to
permit creators and their spectators and estimating safeguards against copyright abuse.
● The expression copyright protection should be decreased.
● Full copyright defense should only be granted to works that have been registered
by their authors.
● Works and details generated by the public sector should be in the Public Domain.
● Judicial power to reduce the Public Domain should be restrained.
● The Public Domain should be protected from individual interests.
● Works that serve freedom of expression and information and to create should be
fully protected.
● Educational, research uses and the right to repair should be fully protected.
● Usage rights should be protected against technological and contractual override
and also protect across borders.
● Geo-blocking for audiovisual works should be prohibited.
● Creators should have the right to know their audience.
26 R.G Anand vs M/S. Delux Films & Ors, 1978 AIR 1613, 1979 SCR(1) 218, AIR 1978 SUPREME COURT
1613, 1978 4 SCC 118.
● Users who act in reasonable belief that their uses of copyrighted materials are
permitted should not face damages.
● Collective redress mechanisms should be available to protect usage rights and
creators’ rights.
● Copyright abuse should be prohibited.
● WIPO should help to set up networks of information about works in order to
facilitate the identification of authors. This would clarify the protected or
unprotected status.
● The availability of the public domain should be enhanced, notably through
cooperation with cultural heritage institutions and UNESCO.
● The role of cultural heritage institutions, and mainly libraries, in the labelling,
cataloguing, preserving and making available of public domain works, should be
recognized and supported, particularly in the digital environment.
● Any extension of the scope or duration of copyright and related rights, both at
international and national level, should take into account the empirical effects on
the sustainability of the public domain.
● The 1996, WIPO Treaties should be amended to prohibit a technical impediment to
reproduce, publicly communicate or making available a work that has fallen into
the public domain.
● The countries should respect within their territory the intellectual property
protection granted by other countries, they should recognize the public domain
status defined by other countries and prevent privatization of what is in the public
domain elsewhere.
CONCLUSION
The concept of “misuse of public domain” under copyright should be understood from a
strategic perspective and even if the legislation remains tranquil on it, the Judiciary should
take the ‘mean-end’ procedure in arriving the conclusion, where the mean would be the
creation of work and incentivization of authors and the ‘end’ would be the progress of society
and the socio-cultural enhancement. In many instances, copyright misuse claim interferes
with the right of copyright holders. If the executive view prevails, and courts recognize a
general power in the government to remove material from the public domain, the government
can control the public’s access to culture and know-how, just as it can control the public’s
access to information related to the administration of government. The public’s domain would
then become the government’s domain, where everything is ultimately subject to government
authority.
Author:- Poonam Singh
Kristu Jayanti College of Law