B.A.,L.L.B.(Hons.

) VIIth Semester

Intellectual Property Rights- 2

Project On
Emergent Genetics India Pvt. Ltd. v. Shailendra Shivam and Ors.

Submitted to Mr. Vikas Bhati Associate Professor

Submitted by Ashutosh Mani Roll No. - 34 Section A

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Index
Introduction Background of the case Issues Arguments of the parties Judgment Conclusion Bibliography

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Introduction
Copyright law protects the expression and not an idea. The idea-expression dichotomy under copyright law has another aspect when the dichotomy melts and idea is the expression and viceversa. In other words, the idea and the expression of the idea become inseparable, as there is only one way to express or depict an idea. This is known as Merger doctrine under which no one may claim a copyright in that single manner of expression or depiction because that would evict everyone else from the right to express or depict that idea. The expression, if copyrightable, would necessarily give the author a monopoly on the expression of the underlying idea. In the instant case 1, the court elaborated on the Merger Doctrine. Emergent Genetics alleged copyright infringement over reproduction of its seed's unique DNA sequencing in the hybrid seeds of Shailendra Shivam. It contended that Shailendra Shivam by repeating the DNA sequence has made the products of both the plaintiff and defendant genotypically identical, resulting in copyright infringement of the plaintiff's literary work in the unique DNA sequencing of the hybrid seeds. The issue thus framed by the Court was - Whether Copyright protection is granted under Indian law, in respect of the work, for which the Plaintiff claims relief? Copyright law does not grant the author of a literary work, protection on ideas and facts (R.G. Anand vs. M/s Delux Films)2. It is the creative expression of an idea or fact, which gets copyright monopoly for a specified period. Section 2(y) of the Copyright Act, 1957 defines 'work' as any of the following works namely: (i) a literary, dramatic, musical or artistic work, (ii) a cinematographic film, (iii) sound recording. Section 2(o) of the Act defines 'literary work' to include computer programmes, tables and compilations including computer databases and a copyright can be claimed on a 'literary work' under Section 14 of the Act. The compilation of databases is entitled to copyright protection, however the law mandates that the work claiming protection ought to be original. Section 13 of the Copyright Act provides that a Copyright shall subsist in "(i) Original literary, dramatic, musical and artistic works; (ii) cinematograph films and (iii) sound recordings. The law thus grants such recognition and protection to expressions that
1

Emergent Genetics India Pvt. Ltd vs. Shailendra Shivam & Ors I.A. Nos. 388/2004, 1267/2004&1268/2004 in CS (OS) 50/2004 2 (1978) 4 SCC 118)

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are "original". A literary work, in order to qualify as work in which copyright can subsist, must therefore be original.

Background Of The Case

The Plaintiff, is a private limited company is a Joint Venture between Hindustan Lever Ltd and Emergent Genetics LLC. It is engaged in research, development, processing and sale of seeds in India. The second Defendant - Pradham Biotech Pvt. Ltd. is an incorporated Indian company; the first, third and fourth Defendants are the Plaintiffs former employees. The fifth Defendant is the Chief Executive of Seeds India, a partnership firm which processes and packages seeds, which also used to process seeds for the Plaintiff between 13th Nov. 2001 and 17th Oct. 2003. The present order will dispose of two applications one by the Plaintiff, seeking temporary injunction, and the other, by the Defendant, seeking rejection of the plaint. The Delhi HC in Emergent Genetics India Pvt. Ltd. v. Shailendra Shivam and Ors. discussed the copyrightability of DNA sequences and whether they could be classified as literary works under the Indian Copyright Act. This case is especially interesting given that this seems to be the first time that such a question has arisen before an Indian court being earlier confined to academic discussion. Plaintiff 1: Emergent Genetics India Pvt. Ltd. (formed as a result of a Joint Venture between Hindustan Lever Limited (HLL) and Emergent Genetics LLC) is a company engaged in research and development, processing and sale of seeds in India Defendant 2: Pradham Biotech Pvt. Ltd. is an Indian incorporated company Defendants 1, 3, 4: Shailendra Shivam and Ors. are Plaintiffs former employees Defendant 5: CEO of Seeds India (a partnership firm which processes and packages seeds and used to process seeds for Plaintiff.

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Facts
Plaintiff alleged that D1, D3 and D4 were involved in passing information of Plaintiffs seed varieties to D2. It found that D2s seed varieties were genotypically similar to its own seed varieties having subjected the latters seeds to a DNA Fingerprinting Test (a test whereby the genetic makeup of two seeds is compared). It therefore sought a permanent injunction from the court restraining the defendants from manufacturing, selling or offering to sell their seeds.

Issues
Though this case involves a number of issues including genotypical similarity of seeds, violation of trade secrets etc, in this project I will be specifically dealing with the issue pertaining to copyrightability of gene sequences.

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Arguments Of The Parties

Plaintiffs Contentions Plaintiff contended that since the products were genotypically similar, D2 had reproduced its unique sequencing formula and this amounted to copyright infringement of the plaintiffs literary work. In order to bring DNA sequences under the ambit of a literary work, it was contended that they were similar to computer programmes carrying a set of instructions. S.13. of the Copyright Act, 1957 (Act) states that copyright subsists is any (a) original literary, .. works; Under S.14, literary work is one of the items wherein exclusive rights can be claimed so as to amount to copyright. S.2 (o) of the Act states "literary work" includes computer programmes, tables and compilations including computer "literary data bases; S.2(ffc) states, "computer programme" means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result; The Plaintiff contended that a DNA sequence would amount to a literary work because It was capable of being expressed in writing or by analogous means It was analogous to a computer programme as it was a set of instructions not intended for direct application by the human mind. Further it was contended that a DNA sequence could be an original work since it would not have existed but for the toil and effort of its creators who had put in their skill and labour into the process of decoding and recoding the sequence. In this case the sequence came into existence as a result of the hybridization process by the Plaintiff. In support of this contention Plaintiffs relied on, Modern Law of Copyrights and Designs Laddie, Prescott and Vitoria, Chapter 21, 2nd Ed. which states, that though a sequence is copied from nature it can still satisfy the criteria of originality because further independent

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skill, useful labour, knowledge or judgment may have been applied to it and sometimes modifications and variations are also introduced by scientists. Defendants Contentions Defendants on the other hand countered the arguments of the Plaintiff stating: The Copyright Act is inapplicable in this case as S.2 (o) does not extend to cover mere compilation of sequences. The process of DNA sequencing does not involve any literary work. In fact no copyright exists with respect to DNA sequencing anywhere in the world. There is no similarity between a computer programme and DNA sequencing. Though fixation is not a requirement under Indian copyright law, knowledge and expression of an idea are essential. There is no originality in the mere copying or compiling of gene or similar hybrid sequences which could be taken down in tangible form by anyone. Further, there exists no separate patent regime for plants and seeds in India. S.3(j) of the Patents Act, 1970 specifically excludes rights to patents with respect to seeds. The Indian Patents Act thus takes away the rights of any inventor in respect of seeds, varieties and species. The lack of patent protection to seeds and agricultural methods means that the lawmakers did not want to confer intellectual property monoply in that sphere as a matter of policy.

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Judgment
The court ruled after hearing both sides on the matter of copyrightability of DNA sequences ruled: Originality: The standard of originality required under Indian copyright law is more than mere sweat of the brow but less than a modicum of creativity3. Our law mandates that only those efforts which create work that are somewhat different in character and involve some intellectual effort and minimum degree of creativity result in copyrightable work. Therefore sequences obtained from nature cannot be considered to be original. The scientist involved in gene sequencing discovers facts and does not independently create them. These sequences are merely copied from nature that contains codes for proteins. The minimum creativity threshold is not satisfied. However the court does not address the contention of the Plaintiffs that the sequences can be original since they came into existence as a result of the hybridization process used by the Plaintiff. Therefore they amount to something more than mere sweat of the brow and by that measure they may satisfy the minimum creativity threshold. IP Protection: If the process by which gene sequences are created, or isolated does not receive intellectual property protection and is expressly denied patent protection by virtue of S.3(j) of the Patents Act, 1970 then it is inconceivable that the observation and compilation of the consequence of that process which is a natural consequence can receive an extremely wide protection as a literary work. Idea- Expression Merger Doctrine: If the use of an idea or procedure requires copying of a Plaintiffs expression, there is no copyright infringement (idea-expression merger doctrine). When there is only one or very few ways of expressing a particular idea then the expression merges with the idea. Since no copyright exists in ideas, the merged expression/idea is incapable of copyright. The idea-expression merger doctrine was first developed in the US in Baker v. Seldon4 . The idea of combining various gene components can be expressed in limited ways. Granting copyright protection would mean that others are precluded from expressing such ideas, therefore there is a merger and as a result a lack of copyright protection. Computer Programmes v. DNA Sequences: The only similarity that exists between the two is that they are a set of instructions for something to be done. However unlike computer programmes which are flexible and can have the same instruction expressed in numerous different ways (through different programme languages), DNA instructions for producing protiens can only be expressed in the form of nucleotide sequences i.e. the manner of stating the process or method of protein production is confined to one expression or programme.

3 4

(Eastern Book Company v. DB Modak 2008 (1) SCC 1. 101 U.S. 99 (1879)

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Conclusion
It would therefore seem that copyright is capable of subsisting in a scientific record consisting of a series of letters or other characters symbolizing the sequential structure of DNA, proteins and similar constructs found in molecular biology, provided the recorded sequence is of sufficient length. This view may seem somewhat surprising at first blush, but it is submitted that it is rather difficult to see how any other can be sustained, consistent with the language of the Act and wellestablished principles of copyright law. Any sense of surprise would appear to arise not from the legal principles but from the dramatically novel set of scientific facts to which they are applied. It will often be the case that suchsequences will be held in the form of computer databases. The Court thus opined that 'the sequence for a gene' obtained from nature cannot per se be original. A scientist while constructing a DNA sequence "discovers" facts from nature and thus there is no independent creation of a "work" essential for matching the originality requirement. The Court also reasoned that the processes by which these gene sequences are created to develop a unique variety are expressly denied patent protection under section 3(j) of the Patent Act 1970, therefore it is inconceivable that the observation and compilation of the consequences of that process, which is a natural consequence, can receive an extremely wide protection as a "literary work". The "Merger doctrine" was applied to hold that the idea of combining various gene components or constituents can only be expressed in limited ways, therefore granting copyright protection would mean that the others are precluded from expressing such ideas. The Court found unfavourable the analogy of computer programmes for copyright protection of DNA sequences because the manner of stating the process or method of protein production is confined to only one expression or programme. A specific sequence expressed in a manner, is the only way to express the underlining idea of the gene; therefore there is a merger of the idea with the expression, which precludes the copyrighting of DNA sequences that are codes for proteins. With this case we finally have a ruling on the interesting debate on copyrightability of DNA sequences which had been brewing for sometime.

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Bibliography

1. http://spicyipindia.blogspot.in/2011/12/debate-on-copyright-for-dnasequences.html 2. http://www.mondaq.com/india/x/205374/Copyright/Merger+Doctrine+Applied+I n+The+Case+Of+Combining+Various+Gene+Components 3. www.Delhicourts.nic.in 4. www.Indian kanoon.org

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