Thematic Highlight

In his guest post, Adarsh Ramanujan argued that there is a hidden indictment of the Aadhar Act in the Justice Sri Krishna Committee Report and its proposal for the Personal Data Protection Bill 2018. He argues that the proposal’s suggestions to make UIDAI’s functioning subject to the proposed Bill, mandating an online-offline verification split and amend Section 29 of the Aadhar Act all indicate that the Report identifies Aadhar as a problem in the data protection regime.

Topical Highlight

Rahul wrote about a constitutional challenge to provisions on compulsory and statutory licensing under the Copyright Act, 1957 in the Supreme Court. He highlights the principal arguments that have been put forth in the petition, including a challenge on arbitrariness under Article 14 and freedom of trade under Article 19. He argues that this writ is unlikely to succeed since the provision under challenge serve an important legislative purpose and there exist mechanisms to equitably determine the rate of royalty.

Prarthana wrote a post on a recent Bombay High Court decision which concerned certain ambiguities in the Patent Agent Examination 2016. The ambiguity was with respect to the correct answer to a particular question, which rested on the interpretation of Section 39 of the Patents Act, 1970. Prarthana argues that the decision, which was against the petitioner, does not provide a cogent reason to support the answer provided in the key. She also notes that the language used in the question made it inherently ambiguous.

Other Developments

Indian

Judgments

M/s. Aditya Birla Nuvo Limited v. Malook Singh & Another – Delhi District Court [September 4, 2018]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademarks “LOUIS PHILIPPE” or any other identical or deceptively similar marks or logos to the Plaintiff’s registered mark, in respect of manufacturing and trading of readymade clothing and other allied products. In arriving at this decision, the Court considered that the Plaintiff was the registered proprietor of the “LOUIS PHILIPPE” marks and logos, and the Defendant had adopted a mark which was wholly and absolutely similar to the Plaintiff’s mark in each aspect without their permission. The Court was also of the opinion that the case was fit for the award of punitive damages to the tune of Rupees 25,000 in order to deter a wrongdoer from indulging in unlawful activities.

M/s. VRS Foods Limited v. rem Chand – Delhi High Court [September 4, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “PARAS” by using an identical and deceptively similar mark “PARAS” and “PARAS GOLD”, respectively in respect of manufacturing and marketing milk and dairy products, vanaspathi and edible oil etc. The Court noted that the Defendant had adopted an identical mark to that of the Plaintiff and also dealt in identical goods. In light of the same, the Court concluded that there was a clear case for violation of statutory and common law rights in the Plaintiff’s mark.

Unilever PLC & Another v. Anoy Paul & Others – Calcutta High Court [August 10, 2018]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “CORNETTO” by using an identical and deceptively similar mark “CORNETTO” and “CONATTO”, respectively in respect of frozen desserts and ice cream. The Court opined that the packets in which the goods of the Defendant were sold in a colourable and deceptive imitation of the Plaintiff’s well-known trademark. In view of this, the Court found a sufficient prima facie case against the Defendant.

Yibeal Tradex Private Limited v. Soham Paul – Calcutta High Court [August 27, 2018]

The Court granted a decree of interim injunction restraining the Respondent from infringing and passing off the Petitioner’s registered trademark “HYPERXCHANGE” by using a deceptively similar mark “HYPER EXCHANGE” in respect of gadgets sold online and offline. The Court noted that there was substantial identity between the two marks and the Respondent as an employee of the Petitioner was aware of the said mark and the use of the marks.

Hindustan Unilever Limited v. J.K. Jain – Calcutta High Court [September 5, 2018]

The Court granted a decree of interim injunction restraining the Respondent from infringing and passing off the Petitioner’s copyright in its packet for selling the detergent powder “ACTIVE WHEEL” by using a deceptively similar mark packet for selling its detergent “AXXON”. The Court noted that the Respondent’s product was sold in a colourable and deceptive imitation of the Petitioner’s label over which it possessed copyright. However, the Respondent was not restrained from using the mark “AXXON” in relation to its detergent.

Hindustan Unilever Limited v. Gajender Jain – Calcutta High Court [September 10, 2018]

The Court granted a decree of interim injunction restraining the Respondent from infringing and passing off the Petitioner’s copyright in its packet for selling the detergent powder “ACTIVE WHEEL” by using a deceptively similar mark packet for selling its detergent under the marks “MICRO EZY WASH”, “MICRO WASH” and “MICRO POWER WASH”. The Court noted that the Respondent’s product was sold in a colourable and deceptive imitation of the Petitioner’s label over which it possessed copyright. However, the Respondent was not restrained from using its aforementioned marks in relation to its detergent.

M/s. Inter Ikea Systems BV and Another v. Sham Murari and Others – Delhi High Court [September 7, 2018]

The dispute concerned the alleged infringement and passing off of the Plaintiffs’ registered mark “IKEA” with respect to home furnishing products by the Defendants through using an identical mark for the sale of spare automobile parts. The Plaintiffs had already been granted a preliminary decree of injunction in December 2017, and the resolution of the actual amount of damages was pending. In granting damages of Rupees 15 lakhs, the Court noted that the Defendants had not been bona fide in their conduct as they had filed misleading statements and a false affidavit before the trademark registry. This sum was arrived at by the Court by estimating the profit to have been made by the Defendants over the few months in which they used the impugned mark.

News

Government seeks Geographical Indication tag for ‘Odisha Rasagola’

A study shows low IPR awareness in India

Madras High Court Deals With Liabilities Of An Intermediary In A Copyright Infringement Dispute

ISPs cannot host Tamil film without copyright

FIIT-JEE appears to be encashing on IIT’s name in co-branding of the metro station, observes HC

Dr Reddy’s Laboratories launches Neostigmine Methylsulfate Injection, USP in US Market

Trademark Infringer Before Delhi HC To Undertake Social Service In Kerala Flood Relief Camps

International

The battle over Crispr patents comes to a close

EU Passes Controversial Copyright Directive Articles 11 and 13

A long-standing rivalry between Mahindra and Mahindra and Fiat Chrysler Automobiles took a new turn on 11^th September 2018, when the US International Trade Commission (“USITC”) [the US federal agency which investigates matters of trade and interrelated IP infringement issues] instituted an investigation based on a complaint made by Fiat. In its complaint, Fiat makes allegations of trade dress, trademark infringement and unfair competition under Section 337 of the Tariff Act of 1930 against Mahindra for “sale of certain motorized vehicles and components”. Section 377 provides protection against unfair competition in importation of articles and recognizes various IP infringements as “unfair acts”. This provision vests authority in the USITC to conduct investigations in such matters and protects IP holders from infringing imports.

According to the press release dated 29^thAugust 2018 by Mahindra, the complaint alleges that certain features of the Mahindra ROXOR infringes the IP rights of Fiat’s Jeep design as the latter was designed based on the original Willys Jeep. Mahindra defends its stance by stating that the ROXOR was not “an imported low quality “knock-off” kit car” since it was only intended as an off-road vehicle and hence, it does not directly compete with the Jeep. Further, Mahindra’s statement informs us that Fiat is seeking to restrict imports and getting an injunction from the USITC to that effect; it has not claimed for monetary compensation.

This is not the first instance of Mahindra and Fiat warring over IP infringement issues. Earlier, SpicyIP had covered two Mahindra-Fiat disputes which occurred in 2008, one over Mahindra’s ad which used the marquee “jeep” and the other over the design of Mahindra Scorpio’s front grill. It is understood that Fiat and Mahindra entered into an agreement in 2009, according to which Fiat agreed to “never bring such claims” if Mahindra used a grill approved by them. In their press release, Mahindra has claimed that they were using an approved grill and had applied to the Federal Court in Michigan to restrain Fiat from participating in the ITC complaint.

Fiat has specifically claimed the violation of subsection (a)(1)(A) of Section 337 [dealing with unfair methods of competition in importation of articles] and subsection (a)(1)(C) [dealing with importation of articles which infringe registered trademarks]. According to Fiat, the ROXOR infringes its trademark rights in different kind of grills used in the Jeep. (Note that most news articles incorrectly term this as a patent dispute!)

Fiat has been highly protective of its IP in Jeep as was witnessed in its unsuccessful attempt to injunct the sale of the Hummer H2 (alleging infringement of its grill design) and its crackdown on user-generated trademark infringing content on Zazzle.com. It seems Fiat’s main concern in this entire matter is to protect its trademark rights in Jeep’s design and to prevent copycats from diluting its brand image since it hasn’t claimed for any sort of compensation from Mahindra.

All in all, this dispute might hamper Mahindra’s bid to enter the US market or might just boil down to yet another instance of Fiat’s paranoia over its grills!

Image from here.

Scared you, didn’t I?

With the title I mean. Triggering memories of an evil epoch in US history where fear reigned supreme. Where friends told on friends, to appease a blood thirsty committee trying to eradicate the curse of communism from a capitalistic America.

But this McCarthy is a far cry from the evil one. This is J Thomas McCarthy, an IP rock star who influenced the course of trademark law, not just in the US but in far flung shores such as India. In fact, I’d wager that our courts rely on him almost as frequently as US courts do. As an Indian attorney once told me: McCarthy has no clue that he’s an IP superstar in India!

The reason I now narrate all of this is in the context of a news item doing the rounds that the famed McCarthy Institute will now be housed out of the Golden Gate University.

But how did McCarthy become so popular in India? A commonwealth country that swore more allegiance to the British than the Americans. That is a story that needs some telling. While there were many factors at play, one in particular stands out. Involving as it does a young IP attorney out to make his mark in the world of IP. One who thirsted for more precision in the law than what UK judges offered in their jurisprudence. And chanced upon McCarthy who encapsulated IP nuggets in more precise pointers.

The Precision of Hindustan Pencils

This attorney began citing McCarthy extensively to an all too eager court in Delhi. Beginning with (as I understand) the Hindustan Pencils case (Hindustan Pencils Pvt Ltd vs India Stationery Products).

In this case, Hindustan Pencils (HP) sought to restrain India Stationery Products (ISP) from infringing its registered trademark (including device) ‘Nataraj’ by using it in respect of stationery pins and clips. While HP had a registered trademark, ISP registered a copyright over a substantially-similar device. Leading HP to seek a cancellation of the copyright in 1985, 3 years after it first came to know of the defendants’ adoption. Then, 3 years later (in 1988), HP sued the defendant for trademark infringement as well.

The Defendant (ISP) contended that since the suit was filed a good six years after HP first learnt of the defendant’s adoption, there was considerable delay and the plaintiff was not entitled to an injunction. The court however disagreed. In pertinent part, it held that mere delay is not sufficient (in and of itself) to provide a foolproof defence against infringement. Rather the delay must be “inordinate” and must have caused some prejudice to the defendant. To support its ruling, the court relied extensively on a host of case law and commentary from the UK and India (standard books on trademark law in use then such as Kerly on Trademarks etc). But what is interesting is that the court also begins to rely on McCarthy. See extract below:

“It would follow, logically, that delay by itself is not a sufficient defence to an action for interim injunction, but delay coupled with prejudice caused to the defendant would amount to ‘laches’.

As observed by MCCARTHY at page 383: “Laches=delay X prejudice. In this formula, it is the magnitude of the product of delay and prejudice which must be weighed, not the magnitude of solely the quantum of delay or prejudice alone. For example, in one case, a long delay coupled with even a slight amount of prejudice may suffice to prove an adequate defense of laches. Yet, in another case, a short delay coupled with a great amount of resulting prejudice to defendant may also suffice for laches”.

It has been emphasized that it is for the defendant to show that there has been prejudice caused by reason of the delay and that it would be unfair to injunct the defendant from carrying out its activities.”

Applying this principle to the facts at hand, the court held as below:

1. There was no “inordinate” delay in this case, since 3 years prior to the filing of the trademark suit, the plaintiff had vociferously objected to the plaintiffs copyright registration (for the same device).
2. Even assuming there was some delay, the defendant could not be said to be “prejudiced”, since it was clearly put on notice of the plaintiffs’ objections (through the challenge to its copyright registration). As the court rightly notes: “If the defendant continued to do business by using the impugned mark, it did so at its own peril.”
3. The defendant was a “fraudulent” or dishonest adopter of a proprietary mark and therefore disentitled to the defence of delay/laches, which is essentially an equitable defence. In order to invoke “equity”, courts have continuously ruled that you must approach them with clean hands.
4. As the court rightly notes: “It had been submitted that these was an inordinate delay on the part of the plaintiffs in filing the present suit. I have already held that inordinate delay would not defeat an action for the grant of a temporary injunction especially where the use by the defendant of the mark was fraudulent. In any case, in my opinion, the delay in the present case cannot be regarded as inordinate. Assuming for the sake of argument that, as contended by the defendants, the plaintiffs came to know about the user by the defendants of the infringing mark in March, 1982, it is not as if the plaintiffs slept over their rights for a number of years. It is to be seen that the plaintiff’s principal place of business is in Bombay while the defendant is a small businessman carrying on its business in Sadar Bazar, Delhi. The plaintiffs, in 1985, did file application for cancellation of the registration of copyright of the defendant. This amounted to first step being taken by it. The plaintiffs waited and within 3 years thereafter filed the present suit. The defendants must have known that it was adopting a mark which belongs to some one else. Any infringer who uses or adopts some one else’s mark must be aware of the consequences which may follow. The defendants ran the risk in using a mark which belonged to some one else. It continued its business uninterruptedly for a number of years before any action was taken by the plaintiffs against it. Any growth after notice is at the risk and peril of the defendant. The defendant certainly had notice of application of the copyright. The defendant should have been warned at that stage, that the plaintiff is not likely to accept the user of its mark by the defendant. If the defendant continued to do business by using the impugned mark, I did so at its own peril. The continued user cannot be set up as a defence under these circumstances.”

So there you have it. McCarthy’s influence shines though (at least a wee bit) in the above decision.

As I understand (and do correct me if I’m wrong), this is first time that an Indian court cites to McCarthy. Subsequently, we find a number of other references to McCarthy in court decisions. It would appear that our courts (and attorneys) took to McCarthy like a fish to water. For it was an easy read and you could easily spot the relevant case law that you wanted in support of the argument you were making.

Soon enough, McCarthy became a legal legend in India. But who was this IP attorney, who (allegedly) introduced our courts to McCarthy, you might ask?

None other than Pravin Anand, one of the leading lights in Indian IP today. One whom I tend to disagree with vociferously on most aspects of IP! But one for whom I continue to cherish the deepest respect. For his is one of the most creative IP minds ever.

We’re pleased to bring to you yet another insightful post in the ongoing series of posts by Prof. (Dr.) N.S. Gopalakrishnan on problems with India’s plant varieties’ regime. This post is Part III of the three-part post where Prof. Gopalakrishnan critically examines the procedure followed for registration of farmers’ varieties. Parts I and II of the post can be viewed here and here and the earlier posts in the series, here, here and here.

Problems with the Indian Plant Varieties Regime (IV):

Obliterating the “Farmers’ Variety” (Part III)?

Prof. (Dr.) N.S. Gopalakrishnan

The Parliament, as explained in the earlier post, envisages a simple and hassle free procedure for registration of farmers’ variety to promote agricultural innovation. Unfortunately, farmers have faced unexpected hurdles imposed (rather illegally) by the Authority as evidenced from the previous post. Notwithstanding these hurdles, farmers have, in the last few years showed considerable enthusiasm to get their varieties registered in the earnest belief that they will derive economic and other benefits promised by the Parliament. Registration trends shows that, in addition to varieties actually developed by farmers or groups of farmers, a large number of farmers’ varieties that are of common knowledge (traditionally cultivated and conserved by the farmers) were also registered. This appears to have been achieved by circumventing the stumbling blocks created by the Authority, resulting in unanticipated consequences. The details are discussed below with the help of registration data and a limited case study.

Registration trends and the “Pitfalls”

It is astonishing to note that as on 7^th May 2018, out of the total number of 16105 applications received by the Authority, 11420 were for farmers’ variety though it may be a minuscule proportion of the total number of the farmers’ varieties that exist in India. As on 31^st March 2018, out of the 3430 registration certificates issued by the Authority, 1550 were for farmers’ variety. But one has to strain every nerve to decipher from the official list (published by the Authority), the category of the farmers to whom registrations were issued. A perusal of the list reveals that registrations were given to farmers, community of farmers and group of farmers as separate categories identified in the 2013 form. In cases where the name and the address of an individual farmer were shown in the list, it is inferred that the registration was for a farmers’ variety “initially and exclusively developed and conserved” by the farmer. There were a large number of individual farmers who took registration and it is surprising to note that some, for example, Anjan Kumar Sinha (84), Linguram Thakur (18), etc., registered a number of varieties in their names. The Annual Report of 2016-17 indicated that Mr. Anjan Kumar Sinha was awarded the 2013 Plant Genome Saviour Farmer Recognition for engaging “in the conservation of 102 Landraces varieties of Rice, such as Raghusal, Nikunja, Nona-bogra, Malabati, Khajurchari etc., for development varietal improvement”. It is relevant to note that some of these varieties appear in his name in the registration list. It is also pertinent to note that 82 applications filed by Dr. Debal Deb (Ack. No. REG/2009/551 to 633) for different rice varieties were closed as seen from the list of closed applications published by the Authority on 7^th May 2018. These facts cast a shadow of doubt as to the genuineness of some of these registrations which requires closer scrutiny through an independent study for further confirmation.

It was in 2014 that a large number (more than 400) of “group of farmers”, substantially from the State of Odisha, were given registration. In these cases the name of the individual farmer along with “and others” was shown as applicant’s name which gave the impression that it was for a “group of farmers”. For example;  (a) Gobardhan Sarlia and others, Barsuan, Block- Birsa, Dist- Sundargarh, State-Odisha (65/2014); (b) Budhadev Majhi and others, Kathrimajhisuda, Block- Mathili, Dist- Malkangiri, State-Odisha (66/2014); (c) Sri. Omma Padiami and others, Palmeta, Block- Korukonda, Dist- Malkangiri, State-Odisha (67/2014) etc. It is a requirement in Annexure I that if the application is filed by a group of farmers, it must be registered in the name of the group. Given this, it is difficult to understand why the registrations were made in the name of individuals and not in the name of groups. One possible inference is that these registrations were for farmers’ varieties developed by an identifiable number of farmers. It was reported in a study (kaye Lushington – 2012) that the State of Odisha took the initiative with the help the Director (Agriculture and Food Production), Government of Odisha, and the Director, Central Rice Research Institute (CRRI), Cuttack to register all possible farmers’ varieties from Odisha. The study also mentioned that these varieties are generally known to the farmers and collected from individual, groups and community of farmers. This leads one to believe that these varieties could fall under the second part of the definition of the farmers’ variety ie., “wild relatives or land races or varieties about with farmers possess common knowledge”. Since the majority of registrations are in the name of groups of farmers and not community of farmers, further study is required to ascertain the overlap, if any, created by these two categories.

It is interesting to note that a large number of certificates were issued in the name of organizations including local bodies and biodiversity management committees. The possible inference is that these farmers’ varieties were registered in the category of “community of farmers”. These include Dharohar Samith(185); Amarkanan Rural Socio-Environmental Welfare Society (ARSW Society)(34); Dr. Richariya Kisani Samwardhan Samiti(29); Vrihi(20); Secretary, Seed Care(20); Jankapur Janokalyan Samobay Krishi Unnayan Samiti Limited(7); President AMAPCON(7); President, Karen Welfare Association(5) etc. In addition, one could also notice registration in the name of Indramal Tribal Seed Saver Group(31/2016); Members of Sangai Uzhavar Mandram (65/2016); Members of Poovai Uzhavar Mandram(66/2016); Members of Kulipirai Uzhavar Mandram (132/2016); Lokmata Rani Rashmoni Mission (64 & 67/2016); Farming community of kharchi village (61/2015); Som Panchyat (63,146,247/2015); Bhandal Panchayat (143-45/2015); Gram Panchayat Haripura (135/2016); Gram Panchayat Pasholy (138/2016); Biodiversity Management Committee, Jhari (65/2015); Biodiversity Management Committee (30,32/2016) etc.

Based on the varieties registered from Kerala, which one is familiar with(Chennellu, Ghadhakasala, Chomala, Jeerakasala, Veliya, Thodi, (56 to 61/2013); Hondi Mullankayama (Mullanchanna), Valichoori, Onavattan, Kurumottan, Kunjootti Matta, Marathondi, Chenthadi, Koduveliyan Thuroodi(220 to 228/2015); Thonnuran Thondi (231/2015) etc.,), it is felt that these varieties largely fall under the second part of the definition of farmers’ variety ie., “wild relatives or land races or varieties about with farmers possess common knowledge”. Contrary to the assertions made in the previous postings (see here and here), it is satisfying to note that these farmers’ varieties are finding place in the Plant Varieties Registry as envisaged by the Parliament. At the same time it is pertinent to note that it reflects the pitfalls in the endorsement in Annexure I to the application. Annexure I categorically insists that when the application is by a group/community of farmers they must declare that “we are the initial and exclusive developers and continuous conservers of candidate variety”. One is at a loss to comprehend as to how the officials could give the certificate that the variety “… is bred/developed and continuously conserved and cultivated only by the applicant community of farmers….” when it is extremely difficult to find out which community initially bred/developed the variety since it has been in cultivation from generation to generation. It appears that it was based on the endorsement the Authority gave registration to these varieties. The worst scenarios were reflected in the certificates issued in the name of Grama Panchayats and Biodiversity Management Committees. This indicates the perception of the Authority as to the notion of “community” for registration of the variety and the seriousness it gave to the content of the endorsement in Annexure I. One is apprehensive of the intention of the Parliament since there is no explanation given for the term “group/community of farmers” in the Act. To say the least, the Authority, by using of the gaps in the Act, has made a mockery of the significance our Parliament attached to the registration of farmers’ variety. In the light of the case study discussed below, a detailed study of the various varieties registered under the category of “group/community of farmers” is needed to assess the implications.

Registration of Gandhakasala and Jeerakasala – A limited case study

A brief case study of the registration of two rice varieties, Ghadhakasala (57/2013) and Jeerakasala (59/2013) reveals a complex set of problems in the classification of the “group/community of farmers” and other related issues in the registration of farmers’ variety conserved and cultivated by a large number of farmers. The list of certificates issued by the Authority indicates that these varieties were registered in the name of “Seed Care, M.S. Swaminathan Research Foundation Community”. From the information available on the website of the Foundation it appears that Seed Care, “a farmer – lead Association of Traditional Crop Conservators of Malabar”, is a grass root institutional partner of the Foundation’s Community Agro-biodiversity Centre at Wayanad District, State of Kerala. As per the website, the objective of Seed Care is to “cultivate, conserve, consume and commercialize indigenous crop varieties”. Its achievements include registration of farmers’ variety and organization of a farmer cluster for the cultivation and conservation of pure seeds of indigenous rice varieties. No details are available about the members, structure and functioning of Seed Care established in 2009 to help determine its locus standi to file the applications for these rice varieties in 2009. On an enquiry it has been reliably learnt that Seed Care is a registered cooperative society of farmers in Wayanad, cultivating traditional varieties of different crops.

The available literature on Ghadhakasala and Jeerakasala reveals that the existence of these two varieties was reported as early as 17^th century and they were traditionally conserved and cultivated by Wayanad Chettis, Kurichiya and Kuruma tribal groups. These communities claim that these varieties belong to them though currently they are cultivated by a different set of persons residing in Wayanad; majority of whom migrated from different parts of Kerala and nearby states. This being the current scenario, it is extremely difficult for these communities to declare that “we are the initial and exclusive developers and continuous conservers of candidate variety” as mandated in Annexure I. It is also difficult for the authorized officials to endorse that these two varieties are “…bred/developed and continuously conserved and cultivated only by these communities…” as mandated in Annexure I. It is in this context that one is worried about the registration of these varieties in the name of Seed Care. It is evident that Seed Care represents the farmers currently cultivating traditional crops. It is also clear that neither the tribal communities nor the members of Seed Care “bred/developed” these varieties but only continuously conserved and cultivated these varieties. In both scenarios, the twin requirements of Annexure I (bred/developed and continuously conserved and cultivated) to be satisfied by the “group/community of farmers” were not met. This being the situation, it is extremely difficult to appreciate how the local officials endorsed the certificate in Annexure I that led the Authority to register these varieties.  Ascertain the validity of the registration requires further investigation into  the status of the applicant, the farming communities involved in the submission of the application, the authorizations filed before the Authority, and the officials who issued the certificate in  Annexure I, since these documents and data are not readily available.

It is interesting to note that the Authority, in 2008, awarded the “Plant Genome Savior Community Award” to the Kuruchiya and Kuruma Tribal Communities of Wayanad for conserving these two varieties and other traditional varieties cultivated by these communities. This confirms that these communities are the traditional custodians of these two varieties and they are the most eligible group of farmers to file an application for the registration of these varieties as envisaged by the Parliament. If this be the case, it is surprising how the Authority registered these varieties in the name of Seed Care. This is a clear reflection of the anomalies in the categorization of farmers and the content of endorsement in Annexure I.

It is also important to note that these two varieties were registered in 2009 as GI (GI 186 & 187/2009) under the GI Act, 1999 jointly in the name of Kerala Agricultural University and Wayanad Jilla Sugandha Nellupadaka Karshaka Samithi as registered proprietors. It is to be noted that both the enactments (PV Act and GI Act) confer rights to use the denomination/name for the sale of seeds and farm produce respectively. It is worrying that two different organizations representing farmers are holding the registration to enjoy similar rights. This shows the possibility of overlap of registration under these enactments of certain types of farmers’ variety that particularly fall under the second part of the definition of farmers’ variety and the failure of the Parliament to take note of the same. The attention of the Parliament is urgently needed to rectify this problem to avoid similar conflicts in the future.

The worst part of the episode is that no effective steps have been taken till date by both the organizations towards the enjoyment of their rights. The registrations under the PV Act and the GI Act, it is informed, remain on paper rather than bringing any additional economic benefits to the farming communities. The registration under the PV Act is of little use since it cannot be enforced against any farmer cultivating these varieties in Wayanad. It is also not possible to enforce it against other farmers since these varieties could not be cultivated outside Wayanad District due to the lack of particular agro climatic conditions pre-requisite for cultivation of these varieties. This also brings to light the practical problems of attaching property rights (similar to that of formal IP) to farmers’ variety; a concern that requires serious reconsideration by the Parliament at the earliest. The details of this are going to be addressed in the forthcoming blog posts.

From these examples it is possible for one to infer that at least some of the other organizations (for eg., Grama Panchat, Biodiversity Management Committee etc.) representing “community of farmers” which were given registrations also stand on the same footing. If the intention of the Authority is to give registration to farmers’ variety that particularly falls under the second part of the definition of farmer’ variety to “community of farmers” who are currently cultivating and conserving these varieties, then there is an urgent need to change the format of the declaration and the endorsement in Annexure I. There is also an explanation required to the terms “group of farmers” and “community of farmers” keeping in mind the definitions of farmers’ variety, farmer and breeder in the Act to avoid complications and overlaps. This will also eliminate the impression one gets from reading Annexure 1 as to the intention of the Authority to exclude certain farmers’ variety from registration.

Conclusion

The lesson one learns from the limited case study discussed above and the steps taken by the Authority is that there are several pitfalls in the procedure followed by the Authority in registering farmers’ variety that need serious reconsideration. It is evident that the Authority had no clue on how to proceed with the registration of farmers’ variety keeping in mind the intention of the Parliament. The Authority was initially not sure whether to register farmers’ variety under the category of extant variety or under a separate category or under both categories since farmers’ variety is to be registered as part of extant variety under section 14(b) and independently under section 14(c). The Authority also failed to make a meaningful distinction between the farmers’ variety that fall under section 14(b) and (c) keeping in mind the overall objectives of the Act and the ground realities. This is evident from the application Form 1, Annexure I, Regulation 5 of 2009 framed based on section 15(2), details in the Annual Reports, the “Grow Out Test” for determining DUS, etc. It is surprising that even today the notification of the Authority for the registration of farmers’ variety states that it is “farmers variety (falling under the category of extant variety)” (See PVJ Vol.12 No.4 June 2018 p. 27) which is absolutely contrary to what is followed. It was only in 2013 that the Authority took note of the mandate to provide for a separate application form as per the proviso to section 18(1), but miserably failed to use the flexibility given to it by the Parliament to promote the interest of the farming communities. The failure of the Authority to capture the intention of the Parliament is writ large in the way in which the Authority proceeded with the registration of farmers’ variety. Hence it is safe to conclude that the steps taken by the Authority to register farmers’ variety were to obliterate farmers’ varieties developed through informal innovation. It is strongly felt that it is the failure of the Parliament to lay down special provisions for registration of farmers’ variety keeping in mind the informal innovation practices and the ground realities of in situ conservation that lead to the ‘sorry state of affairs’. One is hopeful that the Parliament will take urgent note of the practical problems that have emerged and bring necessary changes at the earliest to ensure that the farmers’ variety is registered with much ease so as to foster innovation and in situ conservation of traditional varieties.

Image from here

I had written a post on the latest Mahindra-Fiat dispute. The US International Trade Commission has instituted an investigation under Section 337 of the Tariff Act against Mahindra on the basis of Fiat’s complaint. Fiat alleges that its trademark in the grills of the “Jeep” has been infringed by Mahindra’s “ROXOR”. In my post, I briefly summarise similar disputes which have occurred in the past between Fiat and its rival companies (including Mahindra) and reflect upon Fiat’s “protectiveness” about its grills.

Following this, Prof Basheer discussed the influence of J. Thomas McCarthy on Indian IP law. In order to elaborate this, he cited the Hindustan Pencils case, probably the first case which relied upon McCarthy’s principles. This landmark decision lays down certain important legal principles of delays and laches and has subsequently cited extensively by our Courts.

Lastly, Prof. Gopalakrishnan provided us yet another insightful post on the Plant Varieties regime in India. In his latest write up, he describes the various obstacles which farmers have to face to register their plant variety. He uses statistical data to demonstrate these. He also undertakes a brief case study of the registration of two rice varieties, Ghadhakasala and Jeerakasala to point out further practical issues.

Other Developments

Indian

Judgments

Joy Creators Private Limited v. Natures Essence Private Limited – Delhi High Court [September 20, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “ALMOND AND HONEY” by using the mark on its packaging as part of the phrase “NATURE’S ESSENCE ALMOND & HONEY BODY LOTION”. The Court compared the packaging of the products sold by the Parties and concluded that the Defendant depicted the Plaintiff’s mark prominently in big font while writing “NATURE’S ESSENCE” in a smaller font. Thus, it was directed that the packaging should give prominence to “NATURE’S ESSENCE” and the use of the Plaintiff’s mark should not be 75% larger than the word “NATURE’S” and at the same time not occupy more than 75% of the area occupied by “NATURE’S ESSENCE”. Additionally, the Court directed the Defendant to change the shape of packaging of its product due to its similarity with that of the Plaintiff’s packaging and also refrain from the use of the tagline “SAMPOORNA POSHAN WALA LOTION” which was deceptively similar to the Plaintiff’s tagline “POSHAN WALA LOTION”.

Sukhdev Narayanlal Gehlot and Others v. Amar Chand and Others – Bombay High Court [September 19, 2018]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiffs’ registered copyright in its artistic work titled “KAVERI” by using an identical mark in respect of its goods. The order was passed by the Court in light of consent of both Parties through which the Defendant also agreed to deposit an amount of Rupees 2 lakhs towards the organization Bachpan Bachao Andolan.

Wockhardt Limited v. Torrent Pharmaceuticals Limited – Supreme Court of India [September 12, 2018]

The dispute concerned the alleged infringement and passing off the Respondent’s mark “CHYMORAL” by the Appellant in respect of a drug. The Single Judge ruled in favour of the Appellant, however the Division Bench of the Court reversed the same. This appeal was filed to point out the flaw in the Division Bench’s decision on the ground that it had incorrectly interfered with the Single Judge’s decision. The Court dismissed the same stating that the Division Bench had interfered on a matter of principle in pointing out the errors of the Single Judge. Moreover, it was noted by the Court that the Appellant had substantial sales under its new mark “CHYMOWOK” and therefore denied it a leave to file a special leave petition.

M/s. Ambience Private Limited v. M/s. Hotel Ambience and Others – Delhi High Court [September 19, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AMBIENCE” by using an identical mark in respect of its hotel business. The Court noted that the Plaintiff was the registered proprietor of the mark and its use by the Defendant was likely to cause confusion to the public as the Parties were in the same line of business.

Hindustan Unilever Limited v. Bikash Das – Calcutta High Court [September 20, 2018]

The Court granted a decree of interim injunction restraining the Respondent from infringing and passing off the Petitioner’s copyright in its packet for selling the detergent powder “SURF EXCEL” by using a deceptively similar packet for selling its detergent “ACTION EXCEL”. The Court noted that the Respondent’s product was sold in a colourable and deceptive imitation of the Petitioner’s label over which it possessed copyright and hence gave rise to a prima facie case for an injunction.

M/s. Sumeet Research and Holdings Private Limited and Another v. M/s. Sipra Appliances – Delhi High Court [September 14, 2018]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “SUMEET” by using an identical and deceptively similar mark “SUMEET TRADITIONAL” in respect of manufacturing and selling mixies. The Court noted that the Plaintiff’s mark had acquired a substantial reputation and goodwill in the Indian market and the Defendant’s use of the same in relation to identical goods in the same trade channel would be a clear infringement.

Navigators Logistics Limited v. Kashif Qureshi and Others – Delhi High Court [September 17, 2018]

The dispute concerned the alleged infringement of the Plaintiff’s copyright in the lists of its customers containing their contact details by the Defendants who were previously their employees. The Court was of the opinion that the list of the customers did not constitute to be a copyrightable work as the Plaintiff had failed to disclose the identity of its author, a condition considered sine qua non by the Court in order for the Plaintiff to claim copyright in it. It was also observed that the Plaintiff being a company could not be considered as an author.

Rajesh Kumar Agarwal and Another v. Mahesh Agarwal – Calcutta High Court [September 17, 2018]

The Court granted a decree of interim injunction restraining the Respondent from infringing and passing off the Petitioner’s mark “GANPATI’S” by using a deceptively similar mark “SRI GANPATI’S” in respect of catering services. In arriving at this decision, the Court noted that the Respondent has applied the Petitioner’s well known and established trademark with an intention to cause confusion and deception in the minds of the general public and thereby found a prima facie case for the grant of injunction in the Petitioner’s favour.

Lifestar Pharma Private Limited v. Go-ish Remedies Limited of Baddi – Delhi High Court [September 17, 2018]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “SCABELICE” by using a deceptively similar mark “SCABILICE” in respect of pharmaceutical preparations. In arriving at this decision, the Court took note of its prior passed interim injunction in light of which the Defendant agreed to change its mark to “SCABIES-LICE” and not use the impugned mark. An affidavit was filed stating the same and the Court decreed that though the Defendant could use the new mark as the Plaintiff consented to such use, they would remain injuncted to use the impugned mark because of its stark similarity.

M/s. Greenply Industries Limited v. M/s. Surajbhan and Sons – Delhi District Court [September 18, 2018]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “GREEN” by using a deceptively similar mark “APPLE GREEN” in respect of plywood. The Court noted that the mark “GREEN” was registered in the name of the Plaintiff for the last 30 years. Moreover, the Defendant’s adoption of a deceptively similar name had the potential to mislead the consumers and would also harm the reputation and goodwill of the Plaintiff.

Pepsico, Incorporated v. M/s. Savior Paper and Polymer Private Limited – Delhi High Court [September 13, 2018]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “PEPSI” by using an identical mark in respect of manufacturing and supplying disposable paper cups. In arriving at this decision, the Court considered that the Plaintiff was the registered proprietor of the mark and the Defendant had no real prospect of defending the claims.

Sandisk LLC and Another v. Memory World – Delhi High Court [September 12, 2018]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “SANDISK” by using an identical mark in respect of producing and selling counterfeit microSD cards. The Court noted that the Defendant had blatantly copied the Plaintiff’s mark and its packaging with an aim to benefit from its immense reputation and goodwill, thereby holding it as a fit case for infringement.

Bennett, Coleman and Company Limited and Another v. Perfect Woman Private Limited and Others – Bombay High Court [September 12, 2018]

The dispute concerned the alleged infringement and passing off of the Plaintiffs’ registered marks “PERFECT MISS INDIA” and “MISS INDIA” with respect to beauty pageants, advertisements and other allied services by the Defendants through using an identical mark or a deceptively similar mark to the same. However, no substantial reasons for the order were provided in the decision.

News

• Can’t introduce Bt cotton tech in India due to royalty issues: Bayer AG
• Amazon India could run into copyright issues for its ‘Apni Dukaan’ campaign
• Bombay HC Imposes Rs.1.5 Cr As Cost On Two Pharma Companies For Repeatedly Infringing Copyright And Selling Illegal Drugs

International

• Bula! Fiji fights US bar’s trademark on a national greeting
• Netflix sued by easyJet founder in trademark dispute
• New trial ordered in ‘Stairway to Heaven’ copyright lawsuit
• US Judge declines Request to ban I-Phone Imports but confirms Patent Infringement

This appeal on the Original Side (Original Side Appeal No.269 of 2017), was  filed under Order XXXVI Rule 1 of the O.S. Rules  read with Clause 15 of the  Letters Patent  against the  judgment and decree dated 03.07.2017 delivered in C.S.No.635 of 2011. The dispute was inter alia pertaining to the extent of copyright protection over the subject-matter cinematograph film. The judgment is available here.

Brief facts

The appellant-actress is a well-known actress in South India. In early stages of her career, she entered into a promotion / advertising agreement with the respondent wherein it was contended that the parties limited the term of copyright protection over the advertisement (which is a cinematograph film) to a period of one year. In other words, it was contended that, as per the agreement, the respondent can use the advertisement material only for a period of one year from 29/12/2008 to 28/12/2009.

The appellant issued a legal notice dated 12/09/2011 and called upon the respondent to immediately desist from using the advertisement materials. It was contended that, in spite of the receipt of notice, the respondent continued to use the advertisement materials. The appellant filed the suit seeking for the relief of compensation and for a permanent injunction so as to restrain the respondent from using the advertisement materials.

The respondent contended that the appellant, who had already received the remuneration for her performance, did not enjoy subsisting rights in the cinematography work over which the respondent holds the copyright. Citing the specific clause in the agreement which conferred copyright to the respondent over the cinematograph film, it was contended that the appellant cannot be allowed to turn around and deny the statutory rights of the respondent.

Judgment

It was held that the respondent is the producer of the cinematograph film and therefore, will fall within the definition of ”author” and consequently will also fall within the definition of ”producer”. Further, since what was produced by the respondent is a cinematograph film, it will also come within the purview of the definition of ”work”.

It is an admitted fact that the appellant, by virtue of Clause 4 of the agreement, had acknowledged that the copyright rests with the respondent. By virtue of this condition, the respondent who is the author of the “work”, shall be the first owner of the copyright. As the first owner of the copyright, the respondent will have the exclusive right to communicate the cinematograph film to the public by virtue of Section 14 (i) (d) (iii).

Once the respondent becomes the first owner of the copyright, the right shall subsist for a period of 60 years as provided under Section 26 of the Copyright Act.

Proviso to Section 17 of the Copyright Act

“17. First owner of copyright:- Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein: Provided that—

(a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work;

(b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

(c) in the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein;

……….”

In order to use the proviso in (b) against the respondent, there must be an agreement to the contrary to the effect that the parties themselves agreed that the producer will not have the copyright in spite of producing the cinematograph film. In the instant case, this proviso will not be applicable since the appellant agreed that the respondent will enjoy copyright over cinematograph film and the entire promotional material.

Further, proviso in (c) will come be applicable only where the author makes a work in the course of his employment under a contract of service. In the instant case, the respondent took the initiative and was not under any employment under a contract of service. Therefore, the proviso is not applicable.

In short, the copyright of the respondent is not curtailed by proviso (b) or ( c ) to Section 17 of the Act. The respondent was, therefore, held to be the first owner of the copyright of the cinematograph film and the promotional material produced by them.

Section 26 of the Copyright Act

The respondent was conferred with a statutory right for a period of 60 years over the cinematograph film. This statutory right cannot be taken away by a performer in the cinematograph film by virtue of an agreement. The Court held that “Clause 9 in the agreement should be assigned the meaning that as between the appellant and the respondent, the right to produce the cinematograph film and other promotional material will continue for a period of one year and the said Clause does not curtail the copyright of the respondent.” Therefore, there is no restriction or prohibition upon the appellant from endorsing or acting in the advertisement film of other producers who deal with similar products.

Section 38 A(2)

“(2) Once a performer has, by written agreement, consented to the incorporation of his performance in a cinematograph film he shall not, in the absence of any contract to the contrary, object to the enjoyment by the producer of the film of the performer’s right in the same film:

Provided that, notwithstanding anything contained in this sub-section, the performer shall be entitled for royalties in case of making of the performances for commercial use.”

Once a performer by a written agreement consents to incorporate that performance in a cinematograph film, the performer thereafter cannot object to the producer’s right in the cinematograph film, unless there is a contract to the contrary. In the present case the appellant having consented to incorporate her performance as an actor in the cinematograph film produced by the respondent who is the author of it, the appellant cannot stop the respondent from enjoying their producer’s right. There is no contract to the contrary in this case and even the agreement dated 29.12.2008 does not contain any Clause preventing the respondent from exercising his absolute right as the producer of the cinematograph film.

For the reasons above, the High Court dismissed the OSA. However, the judgment and decree in the suit  will not stand in the way of the appellant to independently workout her entitlement for royalties by virtue of proviso to sub Section (2) of Section 38-A of the Copyright Act, 1957.

Comments

As to summarise, it was held that Section 26 of the Copyright Act, which provides for the term of copyright protection, is non-derogable. Section 26 of the Copyright Act is couched in mandatory terms. If the Court is to be persuaded to adopt a dynamic or liberal interpretation, sufficient intrinsic and extrinsic materials must be provided. In this context, I guess, jurisprudential arguments might have been helpful. One among the justifications of IPR is utilitarian justification. An IP right comes at a certain cost to the society. If the parties themselves decide to limit the term of copyright protection, it means lesser cost to the society. If parties can exercise discretion by giving due regard to the costs and benefits of the arrangement, it may help the society to preclude incurring unwanted cost. In other words, it can be argued that if parties decide to limit the term of copyright protection, it is in the best interests of the society. Going by this logic, interpreting Section 26 as a derogable provision, makes logical sense.

Even though the Court held in favour of the respondent vis-à-vis term of copyright protection, the net result of this judgment may not be favourable for the respondent. As the actress can enter into agreements with competitors of respondents, who may be armed with legally acceptable puffing, the earlier advertisement of the respondent may not serve the desired purpose. Therefore, generally speaking, in the light of this judgment, the focus in promotion / advertising agreements, may shift to (legally acceptable) restraint of trade.

Carl Malamud speaking at the UC Berkeley iSchool about “(Re-)defining the public domain”, October 17, 2007. Via Wikipedia

On the occasion of Mahatma Gandhi’s 149^th birth anniversary, we at SpicyIP celebrate by bringing you a conversation with Mr. Carl Malamud – pioneering web archivist, open access advocate, the founder of PublicResource.org and a satyagrahi on a mission to free knowledge from the restraints imposed by archaic laws, institutions and values.

Mr. Malamud has been at the forefront of the fight for better access to public knowledge – having taken on (and won against) various US Government agencies like the Securities Exchange Commission as well as private associations like the American Society for Testing and Materials, to make public laws accessible to the very people they seek to govern. He’s been called a ‘rogue archivist’ and ‘the internet’s own instigator’, but prefers to think of himself as a Gandhian and a Satyagrahi. Having now taken the Bureau of Indian Standards to court to make gazetted standards open, Mr. Malamud is geared up for a much bigger task – opening up scientific knowledge for students in India.

In this interview, we discuss his efforts in India, the fight to make scientific knowledge accessible to all, and what connects open standards and Mahatma Gandhi.

What prompted you to make India a hub of your activities as an open access advocate?

I explain my thinking in the book “Code Swaraj.” After Sam Pitroda and I started working on the issue of standards, I made some trips to India with Sam and began digging deeper and deeper. For one thing, since I was making a legal case for public access on standards, I felt I should learn more about Indian law and I did a lot of reading. And, because I was interested in the broader question of how one questions authority, I read a lot about the history of the fight for independence in India as well as Gandhiji’s efforts in South Africa. And, after traveling with Sam, I started working on a number of other collections.

As I discuss in the book, this continuing interest in India also came with a growing conviction that if there is going to be a serious push for universal access to knowledge, India is the right place to start.

Do you think the US has a good model for access to knowledge that can be emulated in India?

I don’t believe the U.S. model is a good one and the TRIPS agreement has imposed that model on India under the guise of fair trade. What has happened in the U.S. and Europe is that knowledge has been commodified and corporatized. Prices have gone up dramatically. Pricing for access to journals is secret and abusive through the use of “packages” that libraries are forced to purchase. Those “packages” have some essential journals, some that perhaps people don’t care about, and many that are missing.

It seems absurd that, with the existence of the internet, the law still focuses on increasing copyright protections (for example, the TRIPS+ treaties which endorse DRM or the proposed EU Copyright Directive that endorses increased intermediary liability), and that students and researchers have to use services like sci-hub. Is there a need to completely rehaul national and international systems for copyright in the digital age? Politically, is this even a possibility, or are these systems too captured by private interests?

Yes. Particularly with scholarly information, the system must change. Barring access to students for the materials they need to further their education is a moral crime. Scientific knowledge is an essential facility and abusive monopoly power has resulted in bottlenecks that deny access to the corpus in order to extract monopoly rents. This is wrong.

I believe one possibility, under existing law, is much more aggressive use of the teaching exemption, which is enshrined internationally in the Berne Convention and nationally in the Copyright Act. Indian Universities should be able to work together to make a much larger corpus of scholarly information more readily available.

A major challenge to public access to information in India is that the Government claims copyright over government works, from databases to school textbooks. Do you think the government should ever claim copyright over what are, essentially, publicly funded works? Are there alternative systems around this?

Well, on the one hand there are assertions of copyright. On the other hand, there is the Right to Information, which is deeply rooted in not only legislation but the Constitution. I think the fact that these works are created with public funds, are meant for public distribution, and that I’m doing so on a strictly non-commercial basis makes collections such as the Hind Swaraj collection a perfectly fair use.

There’s quite an aura of civil disobedience around you. You’ve taken major personal risks to stand up for the cause of access to information and knowledge, and you continue to do so. What inspires this?

I disagree. I’m not disobedient, I actually push hard for proper adherence to the law. I do take personal risks, but that is only after I’ve studied the matter deeply and believe that the database or works that I’m posting are meant to be public and that the law supports my actions.

You could say Gandhiji was disobedient when he made salt, or you could say he was simply reinforcing the point that salt is a basic human need and you cannot deny people access to salt in a democratic society.

What is Gandhi’s relationship with the open access movement? Would you describe yourself as a Gandhian?  

I would definitely describe myself as a Gandhian, in the sense of being a student of Gandhiji and trying to learn from his many examples. I also think the Mahatma would have been a strong supporter of today’s open access movements and in particular things like open source and the use of social media to get his messages out. Remember, Gandhiji was a lawyer and a printer before he became a Mahatma and changed the world. When they opened up the Phoenix Ashram, the very first thing they did was drag the printing press into the wilderness and built a house for the printing press before they even built structures for themselves and their families. At the Phoenix Ashram, everybody was required to print: it was their bread labor.

Access to knowledge is a prominent feature of electoral politics and political agendas in many countries – take the Icelandic Pirate Party, for example. India’s People’s Movement for the RTI was also immensely successful as a political movement to secure legal change. You have been involved in many similar movements yourself. Do you have insights on political organisation along these lines? What does it take to elevate these issues to political relevancy?

There is no one easy answer to building a movement with the sole exception of a long-term focus, and a dedication to public work. Gandhiji worked for two decades in South Africa before he began to see the results of his labors. MKSS worked for decades to bring RTI into effect. If we believe access to knowledge is a human right, we must all engage in public work, we must educate ourselves, and we must inform our rulers.

You ran for the post of the office of the Public Printer of the United States in 2009. Could you please explain the role of this office and why you choose to run for it?

The Public Printer runs the Government Publishing Office which, among other things, publishes the Official Journals of the U.S. Government, including the Federal Register (equivalent to the Official Gazette of India) and the Congressional Record. GPO also publishes a huge number of fascinating books, much as the Publications Division of the Ministry of Information does in India.

It seemed like a job I was qualified to do and it fit my interests and background in printing, both books and online publication. And, because of the role in publishing the law, it seemed like I had some contributions I could make to modernizing that process in the United States. Indeed, even though I didn’t serve in office, I was a consultant to the Obama transition effort and my contribution there was to rethink how the Federal Register was published.

Do you still plan on pursuing public office, or do you prefer to be, as Wired Magazine called you, the outside ‘instigator’?

I’d be happy to serve in government! I actually consider my activities at Public Resource as an offshoot of what government should be doing but isn’t. I’d love to do the same work inside as I do outside.

I was astounded to learn that PublicResource.org is a one-man show. Why did you make this decision?

Well, I’m the only full-time employee, but we have amazing contractors, colleagues, volunteers, and a very distinguished board of directors. But, I’m the only employee.

The reason is that funding an NGO is always difficult and I didn’t want to take all our money from foundations and spend it all on personnel, then have to fire people during the dry spells. By being the only employee, I’ve been able to keep the operation going since 2007. When we do have dry spells, I put myself on furlough until we have money again. You can’t really do that with people who work for you, so I’ve resisted the temptation to add more staff when we do have cash. Besides, with contractors, I get to work with of the very best people in the world, folks I could never possibly afford to hire. The same goes for our legal help: all our law firms work pro bono and there is no way I could possibly afford the kinds of folks who have signed up to represent us.

PILs are fairly novel to the Indian judicial system, and are supposed to be less adversarial than the regular court process. What’s your experience of the legal system here been? Have courts here lent a more sympathetic ear here than elsewhere?

It has been a pleasure working with our Indian law firms: Nisith Desai and Associates and the Chambers of Salman Khurshid, both of whom are representing this suit on a Pro Bono basis. The courts have been equally interesting to observe and to learn about procedures. The PIL case in India has actually progressed quicker than similar actions in the United States.

You’re a prominent archivist. Digital archiving, particularly, is crucial in preserving history, culture and knowledge. Many personal efforts of archiving have had spectacular results (the public library of India, for example). Then again, there is a level of circumspection involved – to not reveal personal or sensitive data, for example. Should individuals and institutions (librarians, museums) take up archiving at a personal level? Any lessons on how to encourage better archiving in India?

We must be aware of the privacy implications of anything we post on-line, be it be a few individual documents or millions of books or court records. Collections such as the Public Library of India have few privacy implications, but there are of course some. We must also be aware of the “mosaic” effect. If you have some anonymized information in one source and some anonymized information in another source, sometimes when they both become visible on the net, they can be put together and linked to individuals. We must also be aware that those that came before us perhaps did not think of privacy implications. So, if you are putting court records online, you must be particularly aware of those issues. The core lesson is that privacy protection, like security, is a continuous process, not a one-time event. We must remain continually vigilant and make these values part of the process of archiving and publication.

Finally, I’ve seen some mouthwatering recipes on your Twitter feed. Any favorite dishes from the sub-continent? What else do you enjoy doing while traveling in India?

I love all the food from the sub-continent. Seriously! Amazing diversity of flavors and foods, I can’t get enough of it. My trips to India have been incredibly hectic, so I haven’t done a lot of sightseeing, but I love tagging along with Sam Pitroda and getting to visit the Sabarmati Ashram and the Bangalore Palace and places like that. My hobby while in India when I do have free time (and I’m not eating!) is to go visit government bookstores looking for material I can purchase and scan.

To learn more about PublicResource and Mr. Malamud’s work, please see http://public.resource.org/ or follow him on twitter @carlmalamud.

We’re pleased to bring to you a guest post by Abhimanyu Chopra. Abhimanyu is a Senior Associate at AZB & Partners. He has obtained his B.A. LL.B. (Hons.) degree from Amity Law School, New Delhi and his LL.M. degree from New Law College, Pune and is currently pursuing his PhD in Cyber Law from Amity Law School, Noida. He is also a qualified cyber forensics expert. He is currently practicing in the area of commercial litigation and arbitration with special focus in the area of IP & technology law. His expertise also extends to competition law, gaming law and the Insolvency and Bankruptcy Code. He has authored two books, one in the realm of cyber law and the other in that of gaming law and has a number of publications on various areas of law including IP and information technology law. He is also the creator of the Official Delhi High Court App for Android Platform.

Skechers USA v. Pure Play Sports – Implications of Actual Costs and Taxation of Costs – A Notable and Welcome Change In the IP Regime

Abhimanyu Chopra

Earlier this year, vide an order dated 15.05.2018, a suit for trade dress infringement and passing off was decreed in favour of Skechers, in a summary judgement by a Single Judge of the Delhi High Court (Justice Rajiv Sahai Endlaw). The Court granted a summary judgment in favour of Skechers, the Plaintiffs, despite there being no application filed by it for the same. The Court was of the opinion that it has the power to pass a decree in a suit summarily, if it is satisfied that nothing would come out of putting a party through the rigmarole of a trial along with costs.

Background

Skechers USA, along with its affiliated entities, had filed a suit against the four defendants, namely (a) Pure Play Sports, (b) Pearl Enterprises, (c) KVS Logistics Pvt. Ltd., (d) Simandhar Enterprises, for a permanent injunction restraining the defendants from infringing the trade dress of the plaintiffs’ qua shoes and thereby passing off their shoes as that of the plaintiffs’ and for ancillary reliefs of recovery of damages, rendition of accounts, delivery etc. Vide a detailed order dated 25.05.2016, the Court granted an interim injunction and appointed a local commissioner to visit the premises of the defendants to seize the offending goods.

Subsequently, upon enforcement of the changes introduced by the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (“The Commercial Courts Act, 2015”) (including, but not limited to strict timelines for completion of pleadings) in commercial suits such as the present case, the right of all the defendants to file written statement was declared to have closed (for the failure to file them within the prescribed period).

Thereafter, when the matter was posted before the Court, Defendant No. 2 to 4 were proceeded ex-parte as only Defendant No. 1 made the appearance. The Court granted a summary judgment in favour of Skechers on 15.05.2018, despite there being no application filed by it for the same. The Court was of the opinion that it has the power to pass a decree in a suit summarily, if it is satisfied that nothing would come out of putting a party through the rigmarole of a trial. On the basis of the averments in the plaint, the documents filed and the injunction order dated 25.05.2016, it passed a decree for permanent injunction as claimed by the Plaintiffs and costs of the suit from the Defendant No. 1.

The Plaintiffs, thereafter, filed its Bill of Costs as per the procedure enshrined under Chapter 23 of the Delhi High Court (Original Side) Rules, 2018 (“2018 Rules”), which came into effect on 01.03.2018. Interestingly, this was the first time that a party which was awarded costs had actually undergone the process of filing a Bill of Costs, presenting it before the Taxing Officer, leading evidence in support of such costs and arguing the same before the Taxing Officer (Joint Registrar of The Delhi High Court). In my opinion, this option of obtaining costs by filing a Bill of Costs wasn’t undertaken under the 1967 Rules (now replaced by 2018 Rules) solely due to the scale of charges prescribed in the Schedule appended to the Chapter 23 of the Rules. Therefore, it can reasonably be construed that the courts are conscious of the increasing docket explosion and have devised a mechanism to curb time consumed in litigation by imposing actual costs on the parties involved. Additionally, the 1967 Rules allowed for costs to be imposed only at the stage of passing of order and/or delivery of judgment, whereas the 2018 Rules allows for them to to be imposed at different stages of a suit. According to Rule 4 of Chapter 23:

“(a) Parties shall file their respective Bill of Costs at the following stages:-

• at the stage of framing of issues;
• at the stage of the defendant being proceeded ex-parte or where the defendant has stopped appearing;
• at the stage of conclusion of evidence of the parties; and
• at the stage of delivery of judgment or final order.
• additionally, each party may be required to file composite Bill of Costs not later than fifteen days from the date on which the judgment is delivered or order is passed, or within such time as the Taxing Officer may allow.(Emphasis Supplied)

(b) Notwithstanding Rule 4(a) of this Chapter, the Court may award costs at all or any stage of the case, as the facts and circumstances may warrant.”

In terms of Rule 5, the contents of the Bill of costs, include:- Court Fee, Process Fee Spent, Expenses of Witnesses, including the Actual Reasonable Expenses Incurred on Travel, Boarding and Lodging, if any, and other incidental expenses and Advocate‘s fee including the fee of a Senior Advocate, if any; along with expenses of typing, photocopying and expenses incurred for sending summons by Registered post, speed post, courier, fax, electronic mail service and by such other modes as may have been directed by Court and any other amounts as may be allowable under these Rules or as may be ordered by the Court as costs taking into account:-

• Judicial time consumed in litigation;
• Delay in service of summons or efforts made in serving summons on the defendant, as the case may be;
• Delay caused by any of the parties by raising frivolous issues or unnecessary objections during the proceedings or during recording of evidence;
• Failure of a party to effect discovery of documents or its refusal to answer interrogatories; incorrect denial of facts/ documents, thus, protracting trial;
• Monetary and other stakes involved in the proceedings;
• Costs incurred on execution of commission; and
• Any other cost which Court may deem fit and proper.

Further, Rule 2 empowers the Court to additionally impose actual costs borne by the parties. It provides as follows: “In addition to imposition of costs, as provided in Rule 1 of this Chapter, the Court shall award costs guided by and upto actual costs as borne by the parties, even if the same has not been quantified by parties, at the time of decreeing or dismissing the suit. The Court will take into consideration all relevant factors including (but not restricted) the actual fees paid to the Advocates/ Senior Advocates; actual expenses for publication, citation etc.; actual costs incurred in prosecution and conduct of suit including but not limited to costs and expenses incurred for attending proceedings, procuring attendance of witnesses, experts etc.; execution of commissions; and all other legitimate expenses incurred by the party, which the Court orders to be paid to any party. In addition to the imposition of costs as above, the Court may also pass a decree for costs as provided in Sections 35-A and 35-B of the Code or under any applicable law.”

(Emphasis Supplied)

As per the aforementioned rules, the costs are to be determined by the Taxing Officer, which is the Joint Registrar, on the filing of a bill of costs by the party concerned. To arrive at the “actual cost”, the Taxing Officer has the power to appreciate the documentary evidence put forth by the party and entertain objections, if any, as well. In the present matter, vide an order dated 20.08.2018, the cost was awarded by Joint Registrar and taxed at Rs. 86,98,173.05 (Rupees Eighty-Six Lac Ninety Eight Thousand One Hundred and Seventy Three and Five Paise only). The cost, imposed in favour of Skechers, includes the amount paid by the American footwear brand towards expenses incurred by it on litigation, local commissioner and court fees.

Impact

This case is extremely important on two counts:

• The judgment sets out the precedent that even in absence of an application for summary judgment before the Court, the Court has power to decree a suit summarily, if it is satisfied that nothing would come out of putting a party through the rigmarole of a trial. To the best of my knowledge, this was probably the second case in Delhi High Court in which a summary judgment was granted.
• The enormity of costs awarded in favour of the Plaintiffs, which going forward has the potential to change the litigation dynamics in India and which will certainly act as a major disincentive for infringers and counterfeiters.

P.S. The author represented the Plaintiffs i.e. Skechers USA Inc. and its affiliate entities in the case.

Image from here

In a recent decision, Wockhardt Limited vs. Torrent Pharmaceuticals Ltd., a 2-Judge Bench of the Supreme Court clarified certain important principles of passing off of trademarks and delays and acquiescence. 

Factual and Procedural Background

Pharmaceutical company, Torrent (“Plaintiff/ Respondent”) owns branded drugs named “CHYMORAL” and “CHYMORAL FORTE”. These drugs are used to alleviate swellings and wounds which may occur post-surgery. Rival company, Wockhardt, (“Defendant/Appellant”) started selling products under the name of “CHYMTRAL FORTE”, thereby merely substituting the letter ‘T’ with that of ‘O in the Respondent’s trademark using a deceptively similar trademark. On being approached by the Plaintiffs, the single judge Bench of the Bombay High Court refused to grant an interim injunction in their favour on the ground that no case for passing off had been made. A Division Bench of the Court, however, reversed this decision and granted the required injunction to the Plaintiff, stating that a clear case of passing off was made out by the facts of the case. The matter was thereafter appealed to the Supreme Court.

Ingredients of Passing Off

In common law, passing off is the right to protection of goodwill in business against misrepresentation by another and preventing likelihood of damage arising from such misrepresentation. Apart from deceptive similarity of products, several other factors need to be looked into for constituting a passing off claim, some of which are mentioned here. The Classical Trinity test postulates that the following should be proven: (1) goodwill owned by the claimant (2) misrepresentation by defendant; and (3) the likelihood of damage to that goodwill.

Apart from the above, certain other factors need to be considered too. Proof of false representation (which may be intentional or unintentional) which led public to believe that trademark belongs to defendant needs to be given. The single judge Bench of the Bombay HC has also held that “it is never necessary to show fraud or fraudulent intent and the defendant’s state of mind is irrelevant.”

On Delays and Acquiescence

Acquiescence is a species of estoppel and consists of express or implied assent to invasion of one’s rights, done through certain “positive acts” i.e., by sitting by or by refusing or failing to act. Such acts cannot be constituted of mere silence or inaction.

The single judge Bench of the Bombay HC drew a sharp line of dsitinction between delay and acquiescence. For acquiescence, it held that “knowledge of the defendant’s mark and product” coupled with “a long period of inaction against the alleged invasion of a claim of exclusivity”, it is no answer to say ‘there is no positive act’, for acquiescence is also not explicit consent, but is silent assent. Mere inaction is not acquiescence either, but prolonged inaction coupled with the knowledge of an invasion of that right might well be. It held that Plaintiff’s acts amounted to acquiescence since they were lying by for a long duration and they had done positive action making defendant believe he could start his business. The Division Bench, however, held that it did not amount to acquiescence since the Plaintiffs had never created such false impressions through their “positive acts”. (For more clarity on the concept of delay, refer to Prof. Basheer’s post, where he explains when delays amount to laches.)

The Supreme Court’s Verdict

The SC adopted a similar approach as that of the single judge bench of the Bombay HC and stated that fraud was not required to prove passing off. Relying on a 2001 SC judgment, it held that “though passing off is, in essence, an action based on deceit, fraud is not a necessary element of a right of action, and that the defendant’s state of mind is wholly irrelevant to the existence of a cause of action for passing off, if otherwise the defendant has imitated or adopted the Plaintiff’s mark.” On the matter of delay and acquiescence, it merely concurred with the Division Bench and did not add any extra observations of its own.

This verdict helps in reaffirming principles which have previously expressed by the High Courts of Delhi, Bombay, etc. Certain questions remain unanswered, though. It is unclear whether the Court draws a distinction between the concepts of fraud and deceit. Although the Supreme Court clearly states that fraud is not a necessary element of passing off in its decision, it does not similarly express that deceit, too, is not necessary for the same since it states that passing off is “an action based on deceit”. Also, if we are to conclude that deceit is necessary for proving a passing off claim, what would constitute as deceit and does the same differ from ‘deception’?

Image from here

This week on SpicyIP…

Mathews wrote a post on the recent Madras HC decision in Kajal Aggarwal v. VVD & Sons. The court held that a producer can exploit a cinematograph film for the statutorily sanctioned 60 years despite a contract to the contrary. Mathews argues that a wiser course of argumentation for the appellants may have been to rely on IP jurisprudence, arguing that reducing the time-period of the copyright to 1 year would improve access for the public, with the consent of the producer.

On the occasion of Gandhi Jayanti, Divij brought an interview with Mr. Carl Malamud. Mr. Malamud, who has been at the forefront of a battle to increase access in the United States, spoke about his efforts to increase access to scientific works in India, his belief in the ideals of Gandhiji and about Gandhiji’s efforts towards open access at the Phoenix Ashram.

In a guest post, Abhimanyu Chopra discussed the Delhi HC’s decision in Sketchers USA v. Pure Play Sports. After issuing an order imposing a temporary injunction on the defendants for passing off, the court issues a summary judgment in favour of Sketchers, despite no prayer for the same. Further, this case was also the first instance where a party which was awarded costs went through the process of filing a Bill of Costs and leading evidence before the Taxing Officer. These two aspects, according to Abhimanyu, as the speedy disposal of cases and imposition of enormous costs will discourage infringing activity.

Prarthana wrote a post on the SC’s judgment in Wockhardt Limited v. Torrent Pharmaceuticals, which reinstated principles pertaining to passing off and delays and acquiescence. Prarthana notes that the judgment brings out a sharp distinction between acquiescence and delay, and reaffirms similar opinions put forth by the Bombay and Delhi High Courts. She points out that the judgment did leave some lingering doubts as to the distinction between deceit and fraud, and their role in determining a passing off claim.

Other Developments

India

Judgments

M/s Shree Rajmoti Industries v. M/s Shri Vishwaprabha Food – Delhi High Court [September 27, 2018]

The question before the Court was whether or not using ‘RAJMOTI RICE’ would amount to infringing the plaintiff’s registered trademark RAJMOTI. In May 2014, an ex-parte ad-interim injunction had been granted restraining the defendants from using ‘RAJMOTI RICE’ until final disposal of the suit. The plaintiffs are the registered owners of the trademark RAJMOTI, used for edible oils, mineral water, aerated drinks, juices etc. for several decades. Since oil, mineral water and rice are articles of human consumption sold together in kirana stores and have the same class of consumers, they are allied/cognate goods. The Court decreed that it was usual for the registered TM owner to expand the business into cognate goods, and granted a permanent injunction in favour of the plaintiffs. Since the defendant’s product was not placed on record, no decree for damages or rendition of accounts could be passed.

Unilever PLC & Another v. Banu Chauhan – Bombay High Court [September 27, 2018]

The Court in its original jurisdiction granted further relief to the plaintiffs by issuing a temporary injunction restraining the defendants and its stockists, producers, employees and all parties claiming under them from using the plaintiff’s trademark DOMEX in relation to cleaning liquids (for bathrooms, kitchens, glass surfaces, interiors etc.). The Court also granted a temporary injunction restraining the defendants from using the impugned trademark HOMEX in relation to cleaning liquids (for bathrooms, kitchens, glass surfaces, interiors etc.) until final disposal of the suit.

Inter Ikea Systems v. Annanya Gautam & Anr. – Delhi High Court [September 28, 2018]

The Court, in this case, deliberated on whether or not IKAH, a trademark belonging to the defendants, infringed the petitioner’s internationally well-known trademark IKEA, and whether IKAH was used to pass off the defendant’s goods as IKEA goods. The defendant’s products were sold on their website www.ikah.in. Weighing in rival submissions, the Court came to the conclusion that since IKEA is a coined term (Ingvar Kamprad and Elmtaryd and Agunnaryd) it must be offered the highest degree of protection. The defendant’s IKAH is a registered as a logo/device mark and thus does not vest them with rights over the IKAH mark itself. The Court found IKAH to be closely similar to IKEA both visually and phonetically, that the use of IKAH in the defendant’s domain name constituted a separate ground for infringement apart from use on products. An interim injunction order was granted in favour of the plaintiffs, restraining the defendants and its employees from using IKAH in any manner. NIXI was also directed to suspend the domain www.ikah.in until complete disposal of the suit.

Unilever Plc & Anr v. Anoy Paul & Ors. – Calcutta High Court [October 01, 2018]

This dispute is concerning the alleged infringement of the plaintiff’s trademark CORNETTO by the defendants. While some of the defendants were not found at their addresses, the remaining defendants have provided affidavits of undertaking stating that they were unaware that their goods were deceptively similar to the plaintiff’s CORNETTO trademark. The Special Officer appointed shall take possession of all such wrappers and infringing materials and destroy the same in the presence of the concerned defendants. The remaining defendants were given leave to file their affidavit of the undertaking on record.

Shambu Nath & Brother & Others v.  Imran Khan – Calcutta High Court [October 3, 2018]

The Court decided whether or not the mere registration of SNJ TOOFAAN entitled the plaintiffs to maintain a suit for infringement of and passing off as TOOFAAN, and to do so, had to determine whether TOOFAAN was a device mark or wordmark. Plaintiffs are the registered and uninterrupted users of TOOFAAN for many decades, in respect of manufacture of electrical fans and contested the respondent’s application for registration of SNJ TOOFAAN, which is in respect of heating and lighting apparatus. (TOOFAAN is also copyright protected, and the jurisdiction of the Court u/s 62, Copyright Act was also invoked.) The Court found that the word TOOFAAN was an essential feature of the label, and the label itself did not have any distinctive feature apart from the word (the TM certificate clearly shows it to be a device mark. However, the petitioners had requested the TM Registry to correct the same.) Thus TOOFAAN was juxtaposed as a whole with SNJ TOOFAAN to determine deceptive similarity. Evidence also suggested that SNJ TOOFAAN was a trademark put to use, and the Court concluded that plaintiffs were entitled to maintain a suit for infringement and/or passing off.

News

Patent applications by Indian start-ups rising in India: President Kovind at IISF 2018

The JPO and the DIPP, MCI, India Agree in Principle to Start a Bilateral Patent Prosecution Highway

Checking Patent Status Online in India

IPR policy reduces pendency of intellectual property applications: DIPP Secy

Government staff apprised of provisions in biodiversity act

IPAB dismisses plea against trademark of iPhone

Mumbai trademark registry to consider Disney’s plea

International

Fiji fights to trademark ‘Bula’; time for India to think about Namaste?

Brazil court strips Gilead of hepatitis C drug patent

Suzhou to host 7th China International Copyright Expo

Ana Mendieta estate sues Amazon Studios over copyright infringement

Global green energy patents up 43 per cent in a year

Toshiba, Macronix settle patent disputes

Every time I agree to terms and conditions or software licensing agreements without reading them, I spend a brief moment feeling guilty. As if I had just betrayed the profession that I am about to enter. In hindsight, perhaps I ought to have spent a bit longer to read them because there seems to be a lot that slipped by in Twitter’s Terms of Service.

Our friends at IPKat recently carried a post concerning a decision of a Paris Tribunal that considered the validity of Twitter’s Terms of Service (ToS). The tribunal struck down a large portion of the ToS as invalid under French law, including bits concerning intellectual property rights (for those who can read French, a copy of the judgment can be found here).

We took a look at the ToS and found that there is a good chance that they will succumb to contract law or copyright law in India. In this post, I will try to bring out the potential copyright-related issues.

Is Twitter’s licensing provision specific enough?

The ToS is a component of the User Agreement that forms a binding contract with each user. The clause on licensing, under Item 3 of the ToS raises several questions. It would be useful to reproduce it below before we discuss these issues:

“You retain your rights to any Content you submit, post or display on or through the Services. What’s yours is yours — you own your Content (and your incorporated audio, photos and videos are considered part of the Content).

By submitting, posting or displaying Content on or through the Services, you grant us a worldwide, non-exclusive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such Content in any and all media or distribution methods (now known or later developed). This license authorizes us to make your Content available to the rest of the world and to let others do the same. You agree that this license includes the right for Twitter to provide, promote, and improve the Services and to make Content submitted to or through the Services available to other companies, organizations or individuals for the syndication, broadcast, distribution, promotion or publication of such Content on other media and services, subject to our terms and conditions for such Content use. Such additional uses by Twitter, or other companies, organizations or individuals, may be made with no compensation paid to you with respect to the Content that you submit, post, transmit or otherwise make available through the Services.”

It might come as a shock to many, that agreeing to Twitter’s ToS (and in fact most other social media, including Facebook, Instagram, Pinterest, LinkedIn, YouTube, SoundCloud) gives them a license to use any copyrightable content uploaded by their users, in practically any manner they deem fit. Ostensibly, this license is needed to allow Twitter to engage in routine sharing and redistributing of content uploaded by users on their platform, such as placing content on other people’s feeds, showing thumbnails on searches, allowing display pictures to be viewed by the public and other such activities. However, the licensing provision embodied in the terms of service seems to be much wider than necessary for such activities. For example, the license allows Twitter to reproduce the content without any restriction and also sub-license it on terms it deems fit.

According to Section 30A of the Copyright Act, even licensing of copyrights must be effected in conformity with the requirements (primarily, for assignment) laid down in Section 19. In France, similar requirements under the Intellectual Property Code (L131-1 to 3) state that a license must specify each right transferred, the scope of its utilisation and the purpose of its transfer. Twitter’s ToS fails to reach this degree of specificity, and was, therefore, several portions were held to be null and void by the Paris Tribunal.

However, under Section 19, the requirement in India is limited to the assignment being in writing, with the signature of the assignor, and furnished with details pertaining to the territoriality and duration of the assignment. The ToS mention all these details, barring duration. However, this defect is cured by sub-section 5 of Section 19, which states that in the absence of a time period in the agreement, an assignment is to last for 5 years. This would mean that Twitter’s rights over its users’ content are valid for 5 years from the time it was uploaded onto its platform. In this respect, therefore, the licensing provision is valid.

Can parties contract to assign rights to exploitation through mediums that are not in existence?

The clause also states that the assignment allows for exploitation through mediums that exist as on the date of uploading, and any medium developed in the future. This part of the clause is in direct conflict with the first proviso to Section 18, which states that assignments shall be made for exploitation only on mediums in existence at the time unless the particular non-existent medium is mentioned expressly.

The ToS simply states that exploitation shall be allowed on all mediums, existing and future. It does not mention any specific medium, and therefore fails to come within the exception mentioned in the proviso. This part of the clause would, therefore, be unenforceable in India.

Does assignment require consideration?

The ToS also explicitly states that no consideration will be offered by in exchange for the license to use the content uploaded by the users. This begs the question of whether royalty and consideration are necessary when transferring copyright in a work.

Prior to the 2012 amendment of the Copyright Act, Section 19(3) read:

“The assignment of copyright in any work shall also specify the amount of royalty payable, if any, to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties.”

The mention of “if any” clearly made the payment of consideration and royalty optional. However, the 2012 amendment removes this phrase from the provision:

“The assignment of copyright in any work shall also specify the amount of [royalty and any other consideration payable], to the author or his legal heirs during the currency of the assignment and the assignment shall be subject to revision, extension or termination on terms mutually agreed upon by the parties”

This would indicate that it was the Parliament’s intention to make payment of royalty and consideration mandatory. In the Standing Committee Report that discussed the amendments to Section 19 (paragraph 10.1 onwards) emphasises the importance of ensuring that authors have a right to royalty and consideration. This would indicate, therefore, that Twitter’s licensing of content, without paying any royalty or consideration is improper, and would render the assignment invalid. Further, this cannot be cured by arguing that access to Twitter’s services is the consideration, since “consideration in any other form” is a requirement to be met along with payment of royalty. Further, the wording of the ToS itself indicates that Twitter does not consider payment of consideration necessary at all.

Potential Moral Rights Hazard

There may also be a potential infringement of moral rights of the User. Item 3 under the ToS states:

“By submitting, posting or displaying Content on or through the Services, you grant us a worldwide, non-exclusive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such Content in any and all media or distribution methods […]

You understand that we may modify or adapt your Content as it is distributed, syndicated, published, or broadcast by us and our partners and/or make changes to your Content in order to adapt the Content to different media.”

The right to modify and adapt mentioned in the latter section of the provision is limited to fitting the content on different media and platforms. If acted on in this limited extent, it would be unlikely that a moral rights claim would be successful, since the author is required to prove prejudice to their honour and reputation under Section 57 (on the author’s special rights).

However, the right to adapt and modify, as mentioned in the initial part of the provision, is unqualified and absolute. As such, Twitter would have the right to bring about any changes to the work that they desire. If they do so, it is possible for authors to claim a moral rights violation under Section 57 of the Copyright Act, since it is an inalienable right that cannot be transferred by agreement.

Users beware…

There are a couple of important lessons to take from this exercise. First, it has become increasingly important to read terms of service, terms and conditions, privacy policy, rules and any other agreement that comes along with the digital products we use. It is only then that we can ensure that our rights are not being exploited by these companies. And although it may seem like a pointless exercise, since there is little room to negotiate with giants like Twitter, it is possible to communicate discontent to them, and even (I dare say), opt out of using it. And if enough people do this, it is possible to bring about the desired change.

Second, it is important for artists to consider whether they wish to use social media to promote their work. It would be practically impossible to sell work once it has been uploaded on Twitter. While budding artists may actually see a benefit in their work being infringed (and shared widely), artists concerned with the exclusivity of their work may prefer not using these platforms.

To Dr. John Watson, Sherlock Holmes would say that the best hiding place is in plain sight. And it would seem like Twitter and the lot are following this piece of advice quite successfully. With Zomato also significantly watering doing its Gold privileges recently, perhaps it is time we realise that consumers need to beware and be active.

Image from here. 

For the last few months, the Indian media has been doggedly tracking the J&J hip implant scandal. To briefly recap the main facts, the company sold its new ASR hip implants to around 4,700 patients between 2006 and 2010. Around 2010, J&J decided to withdraw the implants from the market because of quality issues with the product that threatened patient safety. One of the issues debated in the press is the need to compensate the patients. After unprecedented patient activism lead by people like Vijay Vojhala, who was one of the recipients of the faulty implant, top officials at the Ministry of Health made promises in the media that the government would set up a committee to receive claims for compensation and that the government would direct J&J to pay the patients. As pointed out by Shamnad, in an editorial for the Hindustan Times there is no provision of law which requires J&J to submit to the diktats of a government appointed committee. At most, J&J can be sued before a consumer court and several patients have already filed individual lawsuits.

But what is more interesting is the response I received when I filed a RTI application with the Ministry requesting for a copy of all the communications between the Ministry and J&J with relation to the ASR hip implants. The reply from the Ministry states that there have been no communications between the Ministry and J&J on the issue and that my RTI application was being transferred to the Central Drug Standard Control Organization (CDSCO) which is the main drug regulator. The CDSCO is currently headed by a DCGI who does not even have a permanent job – the man has been receiving 3-month extensions from earlier this year and it is highly unlikely that J&J is taking him seriously.

Several media reports over the last month have given the impression that the Ministry of Health is at the forefront of the negotiations with J&J but how is that possible when the Ministry has not even communicated with J&J on the issue? It is time for the media to switch the spotlight to the Secretary of the Ministry of Health. Going after small fry like the DCGI isn’t going to yield any results. The buck stops with the Secretary for the Ministry of Health.

We’re pleased to announce that The Advanced Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law, Singapore Management University will be holding the 4th edition of its Annual IP Scholars Asia Works-in-Progress Conference on January 30-31, 2019. The deadline for submission of paper proposals is October 17, 2018. For further details, please read the announcement below.

SpicyIP Events: 4th IPScholars Asia Works-in-Progress Conference [January 30-31, 2019; Singapore]

Singapore Management University is pleased to announce that the 4th edition of the “Annual IP Scholars Asia – Works in Progress Conference” (IPSA) will be held on January 30 and 31 of 2019. The conference is an initiative of the Applied Research Centre for Intellectual Assets and the Law (ARCIALA), which is located at the School of Law at SMU and is headed by Professor K.C. Liu. This conference provides an annual forum for IP scholars across Asian economies, to present their research before their Asian peers. The conference also attracts scholars from the United States and European Union.

The format for this year’s conference has been altered from the previous editions. The initial proposals for the conference will be reviewed by a committee of 15 leading Asian IP scholars. A total of 64 slots are available for presentations on various themes which will be chaired by leading IP scholars from Asian and non-Asian jurisdictions. In line with its mandate to promote and encourage the study of Asian IP law for the betterment of IP regimes in Asia and beyond, ARCIALA will be covering the travel and accommodation requirements of 29 Asian scholars.

ARCIALA will cover these costs by offering at total of 29 Asian IP Scholar Awards and Young Asian IP Scholar Awards (for PhD and graduate students). It will offer these awards to 4 IP scholars from Korea, Taiwan, PRC and Japan respectively, who are sponsored by KIM & CHANG (Seoul), Chen &Lin (Taipei), Sunshine Legal Foundation (Beijing) and an anonymous contributor (Japan), and 13 scholars especially from ASEAN and South Asia, who will be sponsored by ARCIALA. Full coverage of return tickets and accommodation of three nights (excluding visa fees) will be provided for the award winners. Colleagues interested in applying for the awards need to submit an abstract with an outline of 800- 1,000 words. The selected paper proposals will be stored and displayed on the website of ARCIALA: https://arciala.smu.edu.sg. The 25 awardees will be selected by the review committee.

The details of the conference including the requirements of the proposal and the contact details can be viewed on the website of ARCIALA over here. The deadline for proposals is October 17, 2018.

Last week’s decision of the US Ninth Circuit Court of Appeals to remand for a new trial in the famous Skidmore-Led Zeppelin dispute created quite a controversy. The litigation revolves around the popular Led Zeppelin rock song, Stairway to Heaven, which was allegedly copied from Taurus, a song written by the Spirit band member, Randy Wolfe.

The lawsuit was brought by Michael Skidmore (trustee of Wolfe’s Trust), claiming that “Led Zeppelin needs to do the right thing and give credit where credit is due”. The case was decided by the Californian District Court Judge, Gary Klausner, J., after a jury found in favour of the defendants. The Ninth Circuit Court has partly vacated the District Court judgment and called for a re-trial on the ground that improper instructions were given to the jury regarding protectability of selection and arrangement of  unprotectable elements and on originality (For gaining a clearer idea on related aspects of copying and substantial similarity dealt with in this case, do refer to our earlier posts here and here, respectively.) The Court further observed that since copying was in question and that there was proven “substantial evidence of access” to the Spirit’s work, a jury instruction on the Inverse Ratio Rule would be deemed appropriate. In this post, I’ll be solely dealing with this observation and contrasting it with the position in India.

The Proof of Access to Copyrighted Works

The tests which the jury had applied for examining whether there was a case for copying is as follows:

“Because direct evidence of copying is not available in most cases, plaintiff may establish copying by showing that defendant had access to plaintiff’s work and that the two works are ‘substantially similar’ in idea and in expression of the idea…Alternatively, in the absence of any proof of access, a copyright plaintiff can still make out a case of infringement by showing that the songs were ‘strikingly similar’.”

The jury, on finding no such case of striking similarity, proceeded to explore whether there was “access” to copyrighted work i.e., “defendants had a ‘reasonable opportunity’ or ‘reasonable possibility’ of viewing Plaintiff’s work prior to the creation of the infringing work”.  This can either proven through direct evidence or through circumstantial evidence in form of (1) widespread dissemination of the copyrighted work and/or (2) chain of events, both showing defendant’s access to the work. Though there was not enough evidence to show access through direct evidence or widespread dissemination, the jury found sufficient circumstantial evidence in the form of a chain of events to establish defendant’s access to “Taurus”, where it was shown that the bands had performed in succession in festivals and had also interacted with each other on multiple occasions.

The district court did not permit recordings of “Taurus” to be played to the jury for demonstrating access and only allowed Skidmore’s counsel to play recordings to Jimmy Page outside the jury’s presence, who was thereafter questioned by the jury. The reason for this was to minimize confusion or unfair biases of the jury. The Ninth Circuit Court, noting this, observed that although the jury ultimately found that Led Zeppelin members had access to the work, the decision of the Court to not allow for the recordings to be played in the jury’s presence was an abuse of its discretion. It stated that there was low risk of unfair prejudice and the decision of the Court resulted in less probative value of the information made available to the jury.

It has to be noted here that the jury was quite correct in finding a case of access against the defendants, as pointed out by Prof. Basheer here, since it is clear from the facts discussed in the decision that the Led Zeppelin members were familiar with the song.

The Inverse Ratio Rule

The Inverse Ratio Rule states that when a high degree of access to copyrighted work is proven, less degree of similarity between allegedly infringing work and copyrighted work will be required to prove infringement. The rule, as the Ninth Circuit Court correctly points out, only assists in proving copying (discussed in the section above), not unlawful appropriation (copying of protected expression). Both these elements must be proven to establish a case of infringement.

Substantial similarity can be tested under an extrinsic test (filtering of unprotectable elements such as ideas, facts, scènes à faire etc. and measuring the external, objective factors which merely focusses on unlawful appropriation), or intrinsic test (measuring the internal, subjective factors and applying the test of ‘whether the ordinary, reasonable audience’ would find the works substantially similar in the ‘total concept and feel of the works’.).

In its order, the Ninth Circuit Court explains that since the jury had merely held that the both the songs were not substantially similar under the extrinsic test, it had not reached the question of copying and hence, it had not been necessary for them to apply the Inverse Ratio Rule.

Should the Court apply the Inverse Ratio Rule in the Re-trial?

It has been argued that the access requirement, on which the Inverse Ratio Rule is based, has lost its probative value in the face of technological developments guaranteeing access to various copyrighted works and I agree with this line of view. It is quite easy to prove and in fact, almost inevitable, that most people have access to copyrighted musical works in today’s day and age of online music streaming and broadcasting.

This heavily criticized rule also suffers from logical incoherency; it implicates that increased access increases the possibility of copying, which is not true in most cases.

Further, the rule has been applied inconsistently by the Second Circuit Court and the Ninth Circuit Court and it has mostly been abandoned by the Second Circuit for the vagueness which arises in application of this test (What would constitute “more” access? How, and to what extent, will the required degree of substantial similarity be lowered?)

About the Status Quo in India

There is no such rule (thankfully) similar to the Inverse Ratio Rule in India. Courts have dealt with the proof of access test, albeit in a quite roundabout manner without laying down the test in explicit terms. A 2012 Delhi HC judgment, for instance, has deliberated on the difficulties of procuring direct evidence of copying and has held that secondary proof of copying lay in “establishment of similarities between the plaintiff’s work and the defendant’s work, combined with the proof of possibility of access by the author of defendant’s work to the plaintiff’s work” (which is similar to the proof of access test used by the jury discussed in the first section above). The wordings of this judgment hence imply that such a test is necessary for establishing a case of infringement.

The Bombay HC in a more recent judgment in 2014 has laid down that “The question of access plays a material, though not determinative, part in the assessment of any action of copyright infringement” and went on to describe the elements of access to the copyrighted and substantial similarity to prove the same. It then goes on to state that irrespective of whether access is proved or not, “if similarities are so extensive so as to eliminate any possibility of the rival work being original”, the plaintiff’s claim for injunction should be considered in that case. Since the Court has not mentioned it in express terms, I am assuming that the “extensive similarities” which they refer to are under the “striking similarity” test. However, their opinion on the need to prove access (material, not determinative) throws doubt on whether it is really necessary to prove access to copyrighted work to establish a case of infringement in India. There have also been instances where the judiciary has refrained from applying this test (For instance, see Prof’s Basheer’s post on a Kerala HC judgment where the lower court dealt with the access issue but the appellate HC failed to take note of it.). Judicial interpretation on the same by the apex court would greatly help in preventing future inconsistencies in judgments.

Conclusion: Hence, on one hand, it is clear that access needs to be proven in order to establish a case of infringement (in USA and sometimes, India!), for how can a person copy another person’s work without accessing it in the first place? On the other hand, access must not be interpreted to necessarily imply copying, as required by the Inverse Ratio Rule. This obsolete test should therefore be done away with by Courts in order to prevent legal absurdities in the future.

Image from here

An issue which keeps popping up in Indian litigation is whether it is possible for employers to restrain former employees from using customer lists after leaving employment. These legal actions are usually based in copyright law or contractual agreements that have clauses on confidentiality and restraints against post-employment competition.

In a recent judgment by Justice Endlaw, in the case of Navigators Logistics Ltd v. Kashif Qureshi & Ors. the above issues are decided in favour of former employees in a thoroughly reasoned judgment. The lawsuit was filed by an employer against former employees on the grounds that they had left employment with a confidential customer list and had began to compete in violation of the non-compete clause. As with most of his judgments, Justice Endlaw refrains from citing foreign precedents but cites a copious number of Indian judgments – the mission appears to have been to deliver a knockout judgment on the issue and he has clearly suceeded.

The judgment was also a bit of a pleasant surprise for me, because Justice Endlaw cites a recent article of mine published in the Journal of National Law University Delhi on the issue of protection of confidential information under Indian law. Hopefully, that citation takes me one step closer to academic nirvana.

The copyright issue in customer lists

On the issue of copyright infringement in the list of customers, Justice Endlaw rejects the employer’s argument on two grounds. The first was the fact that employer failed to make out a case in the pleadings that there existed a copyright in the customer lists. In the past, some courts have protected customer lists as compilations, which are identified within the definition of literary works of the Copyright Act. Compilations have however been the subject of much uncertainty after courts across the world began to move beyond the ‘sweat of the brow’ test to establish the ‘originality’ of a work. Originality is a precondition to establishing the copyrightability of a work. A work that lacks originality cannot be protected. Justice Endlaw distinguishes these precedents, where customer lists have been declared as copyrightable works, on the grounds that those judgments were delivered prior to the Supreme Court’s judgment in the now famous EBC case.

In the EBC case, the Supreme Court followed its peers around the world by moving away from the ‘sweat of the brow’ test to judge originality, to a test that required some minimum degree of creativity and skill & judgment (the test isn’t very clear). This standard does not automatically disqualify compilations from copyright protection but definitely makes it more difficult to establish originality in compilations.

According to Justice Endlaw’s holding in this case, plaintiffs will have to establish in the pleadings, the technique/criteria used for compiling the list of customers. In other words, unless the plaint makes out a case for originality in the compilation, the judge can reject the lawsuit for failure to make out a case for copyright infringement.

The second copyright related issue dealt with by Justice Endlaw is regarding the requirement of publication in Section 13 as a prerequisite for copyright protection. There is not much discussion on this point in the judgment but his honour concludes that because the pleadings have not disclosed that the list was published as required under the law, no copyright can subsist in it. Similarly, Justice Endlaw also points out, as another disqualifying factor, the fact that the author of the list has not been mentioned in the pleadings. Together, these three factors contributed to the court’s assessment that the copyright claim deserved to be dismissed for failure to even establish whether a copyright existed in the customer list. In Justice Endlaw’s assessment, “The reliefs claimed by the plaintiff on the basis of copyright thus have no chance of success in the suit and the plaint is liable to be rejected, insofar as on the premise of copyright.”

If all High Courts adopt this standard for pleadings, it will force IP lawyers to dramatically improve the quality of their pleadings or at any rate, make room for lawyers who know how to draft pleadings.

Can customer lists be considered confidential?

The second prong of the judgment was on the issue of whether customer lists can be considered confidential information and thus covered by the confidentiality clause in the employment contract.

Most employees in the course of their business will necessarily have to deal with customers and it is but obvious that when these employees quit, they will try to conduct business with these same customers. The logical strategy to stop such solicitation of such clients is to include in the contract a clause pertaining to non-solicitation but the legality of these clauses is doubtful because of the prohibition in Section 27 of the Contracts Act against non-compete clauses. Most Indian litigants try to stop such solicitation by suing for breach of confidentiality in the customer list as well as seeking enforcement of the non-compete clause on the grounds that the former employee joining the competition will lead to breach of the confidential customer list.

On the issue of confidentiality, the contact details of customers are usually found in the public domain and in most fields of commerce there are only so many customers who can be serviced. Any person working in the field is likely to know of all the customers in a particular field.

Like with the copyright analysis, Justice Endlaw finds fault with the manner in which the pleadings have been drafted, concluding the following:

“….it was incumbent for the plaintiff to, in the plaint, plead how the data etc. in which confidentiality is claimed is different from data of any other entity engaged in such business and what is secret about the same and what steps besides the clause aforesaid in the letters of appointment of defendants no.1 to 8 have been taken by the plaintiff to maintain secrecy / confidentiality thereof. The plaint in this regard is vague and cannot be put to trial. The whole purpose of pleadings in a civil suit is to let the opponent know the case to be met and which crystallizes ultimately in issues on which the parties go to trial. If such rules of pleadings are not to be adhered to, it will result in a fishing and roving enquiry and enable a party to the suit to secure a victory by springing a surprise during the course of trial.”

Notwithstanding the flaws in the pleadings, Justice Endlaw then proceeds to anyway examine whether customer lists can be confidential given that most people in the industry would be aware of the customers in that field especially when the contact details are publicly available or known to the former employees. He concludes that it is not possible to claim confidentiality in every customer list especially in this day and age of trade/business directories and that the onus is on the plaintiff to establish the economic or commercial value of the customer list.

The non-compete issue

The final issue was regarding enforcement of the non-compete clause and whether such a clause would be void in light of Section 27 of the Contracts Act. Technically, confidential information and non-compete clauses are two separate issues but thanks to a historical misunderstanding in the Golikari case the two have been conflated. In the Golikari case, decided by the Supreme Court in 1967, the court grant an injunction restraining a former employee of the plaintiff from joining the defendant for the duration of the contract with the plaintiff (despite the employee resigning) on the grounds that enforcement of the non-compete clause was the only way to restrain the employee from disclosing confidential information to the new employer.

Ideally, the court should have dealt with the non-compete and confidentiality issues separately because both are separate cause of actions. Non-compete is about whether an employee can compete with a former employer by joining the competition or setting up his own business. Confidentiality is an entirely different issue and is breached not by joining the competition but by actually disclosing information that was supposed to be confidential. You can breach a non-compete clause but still not breach confidentiality.

The Golikari decision was incorrect because the court presumes confidentiality is automatically breached when the employee joins the competition and thus grants a pre-emptive injunction restraining employee from joining the competition. There was however no evidence to suggest that the employee had breached the contractual obligation of confidentiality. Ideally the SC should have concluded that the non-compete clause was in violation of Section 27 and denied an injunction restraining the former employee from joining a new job on the grounds that there was no evidence to suggest possible breach of confidentiality.

Interestingly, there are a number of High Court judgments which have simply ignored the Golikari judgment and have refused to grant pre-emptive injunctions on the grounds that the former employee may breach confidentiality in the future. While he doesn’t mention it expressly, Justice Endlaw quietly follows the precedents of these High Courts by declaring the non-compete void due to Section 27 of the Contracts Act and avoids conflating this issue with the confidentiality issue which he had previously decided against the plaintiff.

Since the non-compete was void and the pleadings failed to establish a prima facie case of copyright infringement and breach of the confidentiality clause, Justice Endlaw dismissed the lawsuit without sending it for trial. Hopefully this judgment will deter employers from trying to intimidate their former employees against joining the competition or setting up their own businesses. More competition is a good thing for innovation and wages.

Thematic Highlight 

Rishabh wrote a post on Twitter’s Terms of Service. In his post, he states that agreeing to the licensing clause in the Terms gives Twitter the license to use the uploaded copyrightable content in any manner they deem fit. He finds that certain portions of the clause would be found unenforceable under the law of assignment in India. He also points to the possibility of infringement of users’ moral rights since, under the Terms, Twitter is given the right to adapt and modify the uploaded content as it sees fit. He concludes by warning users to read such terms carefully and artists to reconsider usage of social media to promote their works.

Topical Highlight

Prashant wrote a post on a recent Delhi HC judgment wherein Justice Endlaw held that employers couldn’t restrain former employees from using customer lists after leaving employment. Prashant describes three issues on which the case was decided. Firstly, it was found that no case of copyright infringement in customer lists was established. Secondly, Justice Endlaw concluded that it was not possible to claim confidentiality in such lists. Lastly, the non-compete clause in the employment contract was found to be void under Section 27 of the Contracts Act.

Other Posts

I had written a post on the latest development in the famous Skidmore-Led Zeppelin litigation dispute, where the US Ninth Circuit Court of Appeals remanded for a new trial on the ground that a jury instruction on the Inverse Ratio Rule should have been given in the previous trial, amongst other grounds. In my post, I describe how this Rule is logically incoherent and is based on vague standards and hence, must be done away with. I also draw a parallel to the inconsistent application of the proof of access test by Indian Courts which thereby necessitates clarification by the apex Court.

Prashant provided us an update on the J&J ASR Hip Implant scandal. The issue revolves around the withdrawal of the hip implants from the market due to quality issues and the compensation to be provided to affected patients. He states that contrary to news updates which portray that Ministry of Health has conducted negotiations with J&J regarding this issue, a response to an RTI filed by him shows that no such negotiations took place.

SpicyIP Events

Pankhuri announced that The Advanced Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law, Singapore Management University will be holding the 4th edition of its Annual IP Scholars Asia Works-in-Progress Conference on January 30-31, 2019.

Other Developments

Indian

Judgments

Kalanjiyam Cut Piece vs Kalanjiyam Dresses – Madras High Court [October 1, 2018]

The court granted an ex-parte permanent injunction restraining the Defendant from infringing the Plaintiff’s trademark ‘KALANJIYAM’. It also restrained them from infringing the copyright in its artistic work and passing off the infringing goods as those of the Plaintiff by carrying on their business under the name ‘KALANJIYAM CUT PIECE’. The court further granted compensatory costs of Rs. 2 lakhs  for Defendant’s lack of response to notices and the costs incurred by the Plaintiff.

M/s Vans Inc. USA v. Ex Parte Judgment – Delhi District Court [October 06, 2018]

Plaintiff is in the business of manufacturing footwear and is the registered owner of trademark/label “VANS”. This label is also protected under the Copyright Act. Further, the label forms an essential and material part of the Plaintiff’s domain name and email id. Defendants are users of the name “VANS OFF THE WAIL AND VANS” for their footwear and sporting goods. Court observed that while the customer base for the Plaintiff and Defendant need not be the same, the Plaintiffs are entitled to protect their proprietary rights vested in the trademark, and the Defendants’ usage of a deceptively similar name causes wrongful loss to the Plaintiff, grave prejudice and harm to the public. As proceedings are ex-parte, the Court ordered the Defendant to bear litigation costs in addition to payment of punitive and compensatory damages.

M/s Greenply Industries v. M/s Gupta Timber Bhandar – Delhi District Court [October 08, 2018]

Plaintiffs are owners of principal trademark/ house mark “GREEN” and is used in a variety of plywood products, block boards, laminated sheets and decorative laminates such as GREEN, GREENPLY, GREENCLUB etc. The Defendant has registered GREEN VATIKA for the manufacture of plywood, blockboard, doors and other wood products. Plaintiffs filed for a permanent injunction restraining the Defendant from using their registered trademark and passing off the Defendant’s goods as those of the Plaintiffs. The Court dismissed the suit as the Plaintiffs failed to adduce any evidence to discharge their onus of proof.

M/S.Kaleesuwari Refinery Pvt. v. M/S.S.N.R.Dhall Mill – Madras High Court [October 08, 2018]

Plaintiff-Respondent sought a permanent injunction restraining the Defendant-Appellants from infringing the trademark ‘GOLD WINNER’ for dhall and flour preparations. The Defendant-Appellants have used ‘GOLD WINNER’ to sell ghee and vanaspati products, and have used ‘SREE GOLD’ to sell dhall products. The Single Judge observed that the Plaintiff-Respondent was the prior user of dhall while the Defendant-Appellants were prior users of oil and vanaspati products (both falling under different classes) and granted an ad-interim injunction in favour of the Plaintiff-Respondent for a period of one year. Evidence indicates that the Defendant-Appellants were marketing dhall products in 1 kilo packages by using the mark SREE GOLD on the front side of the packet and they put the word GOLD WINNER on the rear side in small font. After some time, they started marketing range of dhalls in packages titled as GOLD WINNER and omitted the word SREE GOLD. The Court however found that a valid case for an ad-interim injunction was not made out, since a claim for infringement does not rest on mere registration of a mark. The Court finally set aside the ad-interim injunction to the extent of infringement of the registered trademark, but restrained the Appellant-Defendants from passing off dhall varieties as that belonging to the Plaintiff-Respondent for a period of one year.

Junglee Pictures v. Joy Thomas Proprietor of M/S Jubilee Pictures – Delhi High Court [October 9 2018]

The Plaintiff, the producer of upcoming Hindi film ‘Badhai Ho’, filed a suit under Section 60 of the Copyright Act seeking an injunction restraining the Defendant from giving groundless threats of legal proceedings in respect of alleged infringement of copyright in defendant’s script and movie ‘Pavithram’. The court  disposed of the suit noting, that as per the proviso to Section 60, the Section does not apply to the present case as the defendant had already filed a suit for infringement in the Kottayam District Court.

Vennilla Clothing Company v. M/S ARRS Silks – Madras High Court [October 11 2018]

The court modified the interim injunctions that restrained the Respondents from selling dhoties and shirts under its Trademark, “RAVIRAM’s” and partially allowed the vacate injunction applications by holding that the Respondents may use the changed trade dresses for a period of 11 months. The court examined the trade dresses of the Plaintiff and the Respondent and arrived at a preliminary finding that the Respondent’s trade dress is not deceptively similar to the Plaintiff’s trade dress.

La Opala R.G Ltd v. Cello Plast – Calcutta High Court [October 11, 2018]

The court confirmed the earlier interim injunction order partly and did not confirm the injunction for the mark of ‘Mystrio Black’ of the Petitioner. The court held that protection should be granted to three marks of the Petitioner and further arrived at a preliminary finding that the mark of the Respondent, ‘Ornate Black’ did not look deceptively similar to the mark of the Petitioner, ‘Mystrio Black’.

Rajesh Kumar Agarwal vs Shiv Kumar Agarwal – Calcutta High Court [October 11, 2018]

The court granted an interim injunction restraining the Defendant from using the mark ‘Ganapati’ and infringing the registered trademark of Petitioners in any form. The court held that the adoption of the said mark by the Defendant did not seem bona-fide considering the goodwill and reputation the Plaintiff’s mark carried in the market.

Indian Performing Right Society v. Vodafone Idea Ltd – Calcutta High Court [October 12 2018]

The court passed interlocutory orders directing the Respondent to deposit a sum of Rs 2.5 crores within three weeks and to use value-added services which included songs and music of certain members of IPRS till the final adjudication. The Petitioner claimed royalty for the use of songs of its members like Sony and Tips, in the value-added services offered by the Respondent. The court held that the Society is not entitled to receive royalties if Sony and Tips had the right to allow the Respondent to use such music in its value-added services. It allowed the filing of affidavits and counter-affidavits regarding the same.

News

• Rakeysh Om Prakash Mehra appears in court in copyright case
• India taking steps to reduce time for granting patents and trademarks

International

• Music Modernization Act of 2018 Signed Into Law by President Trump
• Tesla has officially filed to trademark Elon Musk’s ‘Teslaquila’
• Microsoft Open Sources 60,000 Patents to End Linux Patent Wars
• Lawsuit alleges Apple’s dual camera setup infringes on 2003 patent

Image from presentation of Dr. Mukhopadhyay

Following my criticism of an opinion piece in the Hindu by R. Prasad for his recommendation to ramp up access to bedaquiline without tackling the ethical issues regarding the flawed informed consent form for bedaquiline, he published a news report in yesterday’s Hindu on the ethics of denying early access to bedaquiline.

Titled ‘Unethical to withhold bedaquiline while waiting for Phase III results’, he cites Dr. Karin Weyer at the World Health Organisation (WHO) who claims that it would be unethical to not provide access to bedaquiline, while awaiting the Phase III trials, since MDR-TB is a difficult disease to treat and existing treatment options demonstrate side effects like ototoxicity. It is perhaps important to point out here that a statement from a professional working at the WHO is quite different from an institutional statement made by the WHO. The manner in which Prasad has tweeted out his report, unfortunately gives the impression that WHO has taken an institutional stand on the ethics of early access to experimental drugs.

Perhaps more problematic is that his report has only one source on an issue as complex as early access to experimental drugs like bedaquiline that are yet to complete Phase III trials. Although to his credit, unlike the ‘journalist-activists’ who write on health for other publications, Prasad at least acknowledges the problematic history of bedaquiline along with the fact that it is pending Phase III trials. But if he was going to tackle the issue of early access from an ethical viewpoint, he should have at the very least spoken to one person from the other side of this debate. There is a raging debate, in the United States, on the right to try new experimental drugs without regulatory supervision and the US House, in March of this year, rejected a legislation that was going to speed up access to experimental drugs before clinical trials were concluded. As reported in the New York Times, the Republicans were the ones pushing for the right to try these drugs while the Democrats opposed it. An excerpt of the NYT report:

“Supporters of this legislation talk as if effective treatments are being withheld from patients,” said Dr. Robert M. Califf, who was the commissioner of the Food and Drug Administration under President Barack Obama. “The vast majority of experimental therapies are toxic or ineffective. The only way we find out is through controlled studies where we measure the effects.”

The fear with lowering the thresholds to experimental medicine is that it would allow pharmaceutical companies to push out riskier drugs (without any liability) to desperate patients who have few other treatment options. The experimental drugs may work, they may not work and the pharmaceutical company will not be liable if things go wrong. To what extent should the state intervene in such cases? In the US, it is the Republicans who push for quicker access to experimental drugs because that fits in well with the libertarian framework of a reduced role of the state, while the Democrats generally resist lowering the threshold on the grounds that it is likely to make it easier for big pharmaceutical companies to exploit patients facing desperate medical conditions. They argue for the state playing a more interventionist role. Like most debates on medical ethics, there are several shades of grey to this debate. As a long time reader of the Hindu, I expect it to dig deeper into the issue and present the various shades of the debate around this issue. Unfortunately, Prasad presents this debate as a black and white issue, quoting only Dr. Weyer on the ethical aspect of the debate.

Since he tweeted his report to me on Twitter, I asked him whether he got her opinion on the flawed informed consent form being used by the Indian government. He replied as follows: “Whether consent taken or not taken, whether Indian TB patients were informed about the serious adverse events, including death etc are issues are outside the preview of WHO and so did not want to answer those questions.” But aren’t the issues of access and informed consent deeply intertwined? How is it ethical to advocate for early access to a controversial drug that is yet to clear Phase III trials when the consent form being used for the drug does not inform potential patients of deaths in earlier trials, dangers such as cardiotoxicity and liver toxicity and forces patients to give up claims for any compensation? Is it possible to report on one aspect without commenting on the other? In my opinion this discussion was certainly necessary because the WHO had prescribed a specific format for the informed consent form to access bedaquiline.

As I explained in an earlier piece, while India adopted WHO’s guidelines on bedaquiline treatment, it oddly enough made several deviations with regard to the format of the consent form prescribed by the WHO. These deviations include silence on the issue of deaths in the Phase IIB trials, liver toxicity, etc.

One would have expected this to be an obvious issue for further investigation by reporters but you would be mistaken. The flaws in the informed consent forms are all too obvious but most journalists prefer to ignore these glaring flaws. Take for example this piece by Madlen Davis that was republished in the Wire where she states the following:

“The drug is now only given as a last resort in a few hospitals such as NITRD where it is available, and a lengthy process must be followed to receive it, including a long ‘informed consent’ form. Campaigners say this rules out uneducated, illiterate people who might need it. “There’s all kinds of barriers put up,” explained Dr Furin.”

The first statement about a “long informed consent” form misses out on the serious omissions in the Indian form when contrasted to the WHO prescribed form.  The second statement attributed to Dr. Jennifer Furin speculating that the long consent form excludes uneducated, illiterate people who may require bedaquiline, is strange to say the least. The Helsinki Guidelines on Clinical Trials as well as Schedule Y to the Drugs & Cosmetics Rules, 1945 have different mechanisms for uneducated or illiterate people to give informed consent. Indian law for example states, “If the subject or his/her legally acceptable representative is unable to read/write – an impartial witness should be present during the entire informed consent process who must append his/her signatures to the consent form.” Thus, Dr. Furin is either unaware of or is misrepresenting the accepted legal position in India.

She also continues to misrepresent to the reporter, the reason as to why access to the drug is controlled by the Indian government. She continues to parrot the line that the Indian government is denying the drug due to fears of future drug resistance despite the fact that the sworn affidavit filed by the ministry before the Delhi High Court (as I discussed earlier on this blog) made it clear that it was controlling access to the drug because Phase III trials were not yet completed and that the government would like to wait for more data on the drug.

Given that both Dr. Jennifer Furin and Dr. Soumya Swaminathan (quoted by Prasad in the present report) were associated with the Ministry of Health process in drafting the Indian bedaquiline treatment guidelines (which also included the consent form), you would expect journalists wanting to speak truth to power to ask them how such a flawed consent form was approved in the first place and whether they flagged the issue with the Ministry. There is however too much money invested in getting bedaquiline to the market for anybody to ask the relevant questions.

The more worrying aspect of this entire fiasco is the precedent that has been set by pharmaceutical companies and regulators. Will we see more pharmaceutical companies push untested, experimental drugs to Indian patients and if they do, on what basis are we going to push back against them, especially if they point to bedaquiline as a precedent? What are the bright lines? Where are the ethical guidelines in Indian law for access to experimental drugs?

We’re pleased to announce that INTA will be hosting the 2018 Middle East and Africa Conference: Innovation, Investment, and IP on December 10-11, 2018 in Dubai. There’s an early bird discount being offered for those who register by October 19, 2018. For further details, please read the post below.

International Trademark Association’s Middle East and Africa Conference to Explore How to Seize Opportunities and Protect Intellectual Property in Expanding Markets

Tish Berard

Public and private investment from India in the Middle East and Africa is growing and set to grow further. At the same time, innovation is proceeding fast throughout the Middle East and Africa, driven by new technologies and expanding markets. Trademarks and related intellectual property (IP) play a vital role in protecting and promoting that innovation.

Join us to find out more about the opportunities in these regions and the latest IP issues at the 2018 Middle East and Africa Conference: Innovation, Investment, and IP. Hosted by the International Trademark Association (INTA), the conference will take place December 10–11, in Dubai, United Arab Emirates (UAE).

India has long had strong economic ties with the Middle East and Africa—and this connection is predicted to intensify even more in the near future. The UAE is home to some two million Indians, including many professionals and entrepreneurs. UAE-based Indians send an estimated US $13 billion in total to their families in India each year. In recent years, Middle East–based businesses have also shown considerable interest in investing in India.

In total, bilateral trade between India and the UAE was worth US $53 billion in 2016–17, according to a report by Export Genius, and the two countries aim to increase trade by 60 percent over the next five years. These bilateral links were reinforced in 2015 when Prime Minister Narendra Modi became the first Indian prime minister to visit the UAE in 34 years. In 2017, India and the UAE signed 14 memorandums of understanding covering topics such as defense, energy, and trade.

Looking further afield, India is also developing its relations with the rapidly growing markets in Africa. Trade between India and Africa is currently worth US $52 billion, and India’s Minister of State for Commerce and Industry, C. R. Chaudhary, recently expressed hope that it could triple in the next five years. In July, Prime Minister Modi visited Uganda, where he promised further commitment to Africa, including a US $205 million loan to fund agriculture and electricity distribution in Uganda.

Africa is now one of the fastest-growing regions of the world, with economic growth set to exceed 4 percent this year, and the World Bank expects most African countries to reach middle income status by 2025. As economies develop, demand for goods and services will increase, particularly in sectors such as consumer goods, pharmaceuticals, electronics, and telecoms. This will provide opportunities both for local innovative businesses and multinational investors.

As more and more opportunities open up, trademarks and related IP rights increasingly come into the picture. Early registration of IP rights combined with effective enforcement help protect the investment made in new businesses, leading to greater brand value and equity in the long term.

There are some very positive signs of improved protection for trademarks. Across the Middle East and Africa, more than 30 countries are now members of the Madrid System, including Algeria, Egypt, Ghana, Kenya, Morocco, Rwanda, Tunisia, Zimbabwe, and the 17 members of the Organisation Africaine de la Propriété Intellectuelle (OAPI). In December, Malawi will also become a member state of the Madrid Union. India joined Madrid in 2013, as readers likely know, so Indian businesses are among those that can take advantage of the opportunities offered by the Madrid System when investing internationally.

Another important development came on October 1, 2018, when the heads of OAPI, the African Regional Intellectual Property Organization (ARIPO) and the World Intellectual Property Organization (WIPO) signed a memorandum of understanding establishing a tripartite cooperation framework to support African countries. This framework means that WIPO, OAPI, and ARIPO “will undertake and provide joint technical assistance programs to the Member States of ARIPO and OAPI within the scope of their respective cooperation activities and mandates.”

Despite harmonization efforts, the Middle East and Africa are home to a wide range of IP regimes and structures, and any business investing in these regions will need good advice on protecting their IP rights. This advice should encompass the challenges around trademark registration, counterfeit goods, regulatory restrictions, data privacy, traditional knowledge, and doing business online.

In the light of these economic developments and business opportunities, now is a great time for brand practitioners in India to find out more about the opportunities in the Middle East and Africa, and, in particular, the relevant IP issues and developments of today. INTA’s 2018 Middle East and Africa Conference will address opportunities and challenges in attracting investment in these regions, how innovation is re-shaping the economy, and the importance of a thorough IP strategy for effective protection and enforcement in these regions.

The conference will open with a keynote address on “Investing in the Future” by Michael Haddad, a professional athlete, holder of three world records, environment advocate, and social entrepreneur. He will inspire the audience with his story of courage, hope, and commitment to medical research and the environment.

The educational program will cover a broad range of topics, including:

• The significant role of IP in an innovation-based economy
• The role of free trade zones to promote economic growth
• The growing need for harmonization
• How innovation is changing the IP industry
• Innovation and IP strategies: bringing your innovation to market
• Balancing IP rights and regulatory restrictions
• Taking your business online
• Data protection, data privacy, and duty of care
• Anticounterfeiting: online and offline enforcement

The speakers come from various countries, including Cameroon, India, Jordan, Kenya, Nigeria, Saudi Arabia, South Africa, Turkey, the UAE, and Zimbabwe. They include representatives of local and multinational companies, IP offices, government agencies, and law firms. Among the companies represented are Beiersdorf Middle East, Louis Vuitton Middle East FZCO, Microsoft Corporation, Nike, Safaricom Limited, and Velcro Group Corporation (where I work).

The registration fee (including VAT) is US $1,024 for INTA members or US $1,523 for non-members. You can save on these fees with Early-Bird Registration if you sign up by October 19, 2018—so act quickly to take advantage of this special offer. INTA also offers other fees for emeritus members, government/non-profits, universities, students, and professors. Details are here. The registration fee includes coffee and lunch on both days, and a Networking Reception on the evening of December 10, 2018.

If you are currently conducting business and/or eyeing expansion in the Middle East and Africa, this is one conference you won’t want to miss. I look forward to seeing you in Dubai.

Tish Berard is the 2018 President of the International Trademark Association. In this role, she is also Chair of the Board of Directors and Executive Committee.

We’re pleased to bring to you a guest post by Abhilasha Nautiyal and Aditya Gupta on the recent order of the Calcutta High Court wherein it directed Vodafone to deposit 2.5 crores in a copyright infringement suit filed by IPRS. Abhilasha and Aditya are attorneys at Ira Law, a firm that they have recently co-founded with other colleagues. Aditya was a part of a law firm for 7 years and more recently, an associate at the chambers of Mr. Amit Sibal. He graduated from National Law University, Jodhpur and then pursued a master’s in law from Harvard Law School. Abhilasha was a partner at an IP law firm and also has done her master’s in law from Harvard Law School after graduating from the Army Institute of Law. Their detailed bio can be found here.

Copyright Infringement Suits Invoking Right to Receive Royalty: Square Peg in a Round Hole?

Aditya Gupta & Abhilasha Nautiyal

The Calcutta High Court recently passed an order requiring Vodafone to deposit 2.5 crores in a suit filed by IPRS for copyright infringement, blowing the bugle in this battle for royalties.

Unfortunately, with great respect, the order is cursory and its reasoning superficial. Sample this – “Now that a society is in place to take care of the musicians, composers and lyricists, the rights of the members of the plaintiff are required to be protected…..Whether the Tips or Sony would be required to bear such liability out of the amounts received for exploitation of musical rights should not in any manner stand in the way of the society receiving its dues and share of royalty for musical exploitation.” First, the creation of a society is not the basis for the rights which are available to musicians, composers and lyricists. Second, the Calcutta High Court fails to identify as to why Vodafone is being made to deposit the amount if Tips or Sony had to bear such liability.

Much has already been written on the interpretation of the amendments carried in the Copyright Act, 1957 through the Copyright (Amendment) Act, 2012 [“2012 Amendment”]. This post seeks to address two crucial questions which the Vodafone case raises:

1. What is the nature of the “right to receive royalty” available to authors of musical and literary works?
2. Against whom can this “right to receive royalty” be exercised and what is the enforcement mechanism for exercising this right?

The question of division of royalty between authors and those who utilize their works is not covered in this piece.

A. Nature of the right to receive royalty

Prior to the 2012 Amendment, the Copyright Act 1957 [“Act”] recognized the following types of distinct rights:

• Copyright under Section 14 of the Act;
• Broadcast reproduction right under Section 37;
• Performer’s right under Section 38 of the Act;
• Moral rights/ Author’s/ Performer’s special rights under Section 57 and 38A of the Act;

As per the industry practice prior to the Copyright (Amendment) Act, 2012 , most authors of musical and literary works [“underlying works”] assigned all their rights to producers/ music labels for payment of a lump sum. This would mean that even if the song did very well, the authors of these underlying works did not get the benefit of such success.

The amendments to Ss. 18 and 19 to the Act [see 3^rd proviso and 4^th proviso of S. 18, Ss. 19(9), and 19(10)] sought to change this situation and protect the interests of authors of underlying works by guaranteeing them a share of the royalties in the event of utilization of their works.

The events leading up to the 2012 Amendment [the report of the Parliamentary Standing Committee and the Parliamentary debates] and the 2012 Amendment itself leave no manner of doubt that the authors of underlying works are now entitled to receive a portion of the royalty for exploitation of their works. This right to receive royalty has the following features:

1. It is inalienable, except as stated below, and incapable of being waived;

2. The right to receive royalty remains with the author even if the copyright has been assigned or licensed to another person [say the producer or the music label]. It can only devolve on legal heirs. Copyright societies can also be authorized to collect such royalty;

3. For underlying works incorporated in sound recordings forming part of films, this right can be exercised only with respect to exploitation of the underlying works outside cinema halls. Thus, royalties from all non-cinema hall uses of the work are to be shared with the authors.

4. For underlying works incorporated in non-film sound recordings, this right can be exercised with respect to any exploitation of the underlying works.

Is the “right to receive royalty” a subset of “copyright” under Section 14 or is it a contractual right?

One way of looking at the right to receive royalty is that it is a right incidental to the rights under S. 14. This interpretation also draws strength from the fact that S. 14 confers not only the right to do the acts mentioned therein but also “authorize” the doing of those acts. The royalty received would only be an incident of such an authorization by the right holder. If this interpretation is accepted, then it may follow that a suit for infringement for copyright can be filed for failure to pay royalty under S. 51 read with S. 55 of the Act (more on this later). Further, since S. 18 third proviso talks about a right to receive royalty for utilization of the work, this appears to be a royalty for any utilization of the work. Therefore, it should be exercisable against those who use the work and not only against the assignee of the copyright.

On the other hand, it could be argued that since the right to receive royalty is not one of the rights listed in S. 14, it cannot be considered as “copyright” within the meaning of the Act. Royalty is a term of a contract between the assignor and the assignee. Ss. 18 and 19 merely regulate this contractual term between the parties and state that a contractual term which contravenes these provisions would be void. This is similar to provisions in the Indian Contract Act which mandate that certain types of contractual obligations are void or voidable.

While both views are plausible, in our view, the second view fits better in the scheme of the Act for the following reasons:

1. The third and fourth proviso to S. 18 apply where the author has assigned the copyright. Therefore, the provisos, and the right to receive royalty, operate only in a contractual framework.

2. This right to receive royalty available to “authors” [not owners] of underlying works neither appears in S. 14 [which defines copyright] nor in S. 57 [which provides author’s special rights]. Rather this appears in Ss. 18 and 19, which regulate terms and mode of assignment between an assignor and assignee of copyright.

3. S. 19(3) was also amended by the 2012 Amendment; earlier S. 19(3) stated that the assignment of copyright shall specify the amount of “royalty, if any”. The provision was amended to state that the assignment of copyright shall specify “royalty and any other consideration payable”. The removal of “if any” clearly shows that the royalty is now a mandatory contractual obligation. This contractual obligation would of course only operate inter se the parties to the contract.

4. Similarly, earlier drafts of Ss. 19(9) and S. 19(10) used the terms “royalties or consideration payable”. The Standing Committee took into consideration the concerns that the use of the term “or” may be misinterpreted to mean that the payment of royalties is optional. It accordingly suggested changing the expression in these sections to “royalties and consideration payable”, thereby making it clear that royalty is a mandatory contractual term.

Thus, in our view, the right to receive royalty is not copyright within the meaning of S. 14 exercisable against the users of works; rather it is a statutorily mandated contractual term between the assignor and the assignee of the copyright in the underlying works.

B. Against whom can this “right to receive royalty” be exercised and what is the enforcement mechanism for exercising this right? 

If viewed as a contractual right, the right to receive royalty under Ss. 18 and 19 can only be exercised against the assignee of the copyright. The assignee of the copyright will collect the royalties from those who utilize the work and then share the same with the authors.

Under this interpretation, no suit for infringement of copyright will lie against third party users of copyrighted content. This interpretation is fortified by the language of Ss. 51 and 55 of the Act. You may recall that under the third proviso to Section 18, this inalienable right to receive royalty is provided to “authors” and not to “owners”. In contrast, Ss. 51 and 55 specifically refer to violations of rights conferred on “owners” of copyright and the remedies available to “owners”.

This contrast attains even more significance in light of the amendment carried out in S. 34 of the Act. To ensure that copyright societies can collect royalties on behalf of authors who may no longer be owners and that authors remain part of the royalty collection process, S. 34 was also amended by the 2012 Amendment to administer the “rights” [in contrast to copyright] of not only owners but also those of “authors”. The fact that S. 34 was amended to include the term “authors”, while Ss. 51 and 55 were not similarly amended, also seems to suggest that a suit for infringement against users of underlying works would not lie on behalf of the authors of these works. The “owners” i.e. the assignees of the copyright will be able to bring suit and any royalty collected would have to be shared in accordance with Ss. 18 and 19. However, an independent right of authors to sue for infringement of copyright does not appear to follow from the scheme of the Act.

The scheme of the Act ties rights granted with remedies – S. 14 rights [copyright] are enforced under S. 51 read with S. 55; S. 57 [moral rights] provides both the right and the remedy; Ss. 37 [broadcast reproduction rights], 38 [performer’s rights], and 38A [performer’s moral rights] rights are enforced under S. 55 read with S. 39A. 

This does not mean that authors of underlying works are remediless if they do not receive royalties from assignees or if the assignees fail to exercise the rights assigned to them. For instance, a question may arise, can the assignee/producers defeat the authors’ rights by licensing the sound recordings at a very high rate and licensing the underlying works at a pittance? In other words, can they undervalue the underlying works since it is only the royalty received for the utilization of the underlying works which has to be shared with the authors?

The answer lies in S. 19A of Act. S. 19A specifically empowers authors/ assignees to approach the IPAB with respect to any dispute with respect to the assignment and the IPAB can pass any order as it may deem fit, including an order for recovery of royalty payable. Importantly, under S. 19A, failure by the assignee to sufficiently exercise the copyright in the assigned work can even lead to revocation of the assignment. This provision thus gives the teeth to the right conferred by the amendments to Ss. 18 and 19.

Now that the Delhi High Court has held that the IPAB should perform functions under the Act even in the absence of a member technical (copyright), this battle ought to shift to the IPAB.

Thematic Highlight

Continuing his hard-nosed commentary on the access to bedaquiline in India, Prashant wrote a post on the ethics of early access to the drug. Responding to R. Prasad, who argued that disallowing early access to bedaquiline was unethical, Prashant notes the several nuances that were missed out in the aforementioned piece. He argues that reducing the threshold of testing will allow pharmaceutical companies to push riskier drugs into the market without any responsibility for the consequences. He also discusses the persistent issues with the consent form for bedaquiline in India, and how it is inherently relevant to the debate on early access to bedaquiline in India.

Topical Highlight

In their guest post, Abhilasha Nautiyal and Aditya Gupta covered the recent order of the Calcutta High Court which directed Vodafone to deposit INR 2.5 crores in a copyright infringement suit filed by IPRS. In this post, they discuss the nature of the ‘right to receive royalty’ under the Copyright Act and argue that it is more plausible for it to be considered a contractual right rather than a subset of copyright. The further argue that this right if viewed as a contractual one, may only be enforced against the assignee of the copyright, and not any third party infringer.

SpicyIP Events

Pankhuri shared the details and programme information of INTA’s 2018 Middle East and Africa Conference on Innovation, Investment and IP, that is to take place between December 11-18, 2018 at Dubai, UAE.

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