It has recently come to our notice that the Intellectual Property Appellate Board (IPAB) has been conducting hearings and passing orders without the quorum mandated in the Trade Marks Act!

Section 84(2) of the Trade Marks Act, read with Rule 20 of the IPAB (Procedure) Rules, 2003, require the presence of one Judicial Member and one Technical Member on the bench to form a quorum. Any order passed or hearing conducted without a quorum would, therefore, be illegal. Prof. Basheer had written about this requirement several years ago in a matter concerning Novartis’ blood cancer drug, in which advocates from both sides argued for the constitution of a bench without a Technical Member.

Presently, after the retirement of Technical Member, Sanjeev Kumar Chaawal from the IPAB took effect on December 5, 2018, the IPAB does not have a sitting Technical Member. Without a replacement, therefore, the IPAB has not had a quorum for over a month now.

It was brought to our notice that, due to this vacancy, several advocates had requested for adjournments until a new Technical Member is appointed, which have been granted. In a letter written by lawyers at ARS & Associates, Chandigarh, to the Deputy Registrar (on December 7, 2018), they had requested for an adjournment and specifically pointed out the illegality of any hearings or orders passed without a quorum –

“We write to submit herein that since the Hon’ble Shri Sanjeev Kumar Chaawal has recently retired from the post of ‘Technical Member (Trade Marks)’ with effect from 5-12-2018, it is therefore requested that the Hearing of the aforesaid matter, as having already been scheduled to be held at Delhi on 14-12-2018, may please be adjourned sine die until and unless a new Technical Member joins the Hon’ble Board, under intimation to us, at an early date, and oblige.

Any Hearing, it held and concluded by the Bench of the Hon’ble Board (not comprising of ‘one Judicial Member and one Technical Member and that too not complying with the mandatory provisions of the law as specifically embodied in Section 84 of the Trade Marks Act, 1999, read with Rule 20 of The Intellectual Property Appellate Board (Procedure) Rules, 2003) on 14-12-2018 and/or on any other date subsequent to the retirement of the above-named Technical Member would be unlawful and illegal and would also amount to negation of justice.”

Despite this letter to the Deputy Registrar, it seems that the IPAB has gone ahead with hearings, and has passed orders as well, with the bench consisting of Justice Manmohan Singh alone and no technical member. In a letter addressed to SpicyIP, lawyers from ARS & Associates note –

“It is stated herein that the Bench (comprising only of the Chairman Mr. Manmohan Singh) of the Board appears to have surprisingly gone to the extent of firstly passing and pronouncing various orders (and then purporting to have been withheld to be dispatched) in the open court and also to simultaneously grant the adjournments in various matters at Delhi and Mumbai, in the open Court and in the presence of the concerned Advocates”

And these allegations are not without proof. Our friends at ARS & Associates also apprised us of an order passed in the case of Puma SE v Arun Jain on January 8, 2019, with only Justice Manmohan Singh on the bench. Furthermore, a cause list dated January 7, 2019, also reveals that 51 matters were listed for hearing before Justice Manmohan Singh without a Technical Member on the bench. Similar hearings had been occurring from December 12 to 21, 2018.

To add to this confused state of affairs, the IPAB website has not been functional for close to a month now, making it impossible to check if the IPAB has passed any other orders without a quorum. It would, therefore, be extremely helpful if our readers could share any leads on this development so that we can get to the bottom of this matter!

Picture from here.

Image from here.

The Ministry of Information Technology has released a draft of proposed changes to the Intermediary Guidelines Rules, 2011, made under Section 79 of the Information Technology Act, 2000 (“IT Act”). Section 79 provides that certain categories of intermediaries which merely host third party content shall not be liable for such third-party content, provided that certain conditions are complied with, which is known as a ‘safe harbour’. Compliance with the Intermediary Guidelines Rules drafted under Section 79 is a pre-requisite to any intermediary claiming the immunity or safe harbour under Section 79(1).

The present draft of the proposed amendments raises a whole host of concerns concerning privacy, freedom of expression and freedom of information. For the purpose of this post, I will be focusing on Draft Rule 3(9) and its potential impact on copyright law and access to knowledge.

Draft Rule 3(9) Will Harm Access to Knowledge and Undermines Fair Dealing in India

Draft Rule 3(9) states that “The Intermediary shall deploy technology based automated tools or appropriate mechanisms, with appropriate controls, for proactively identifying and removing or disabling public access to unlawful information or content.”

Draft Rule 3(9) does not provide sufficient clarity on the basis of which intermediaries are to identify and remove information which is ‘unlawful’. ‘Unlawful’ information and content can range from criminal forms of speech under the Indian Penal Code, to civil offenses such as defamation of copyright or trademark infringement. The determination of the lawfulness of content is dependent upon the particular circumstances and context in which such information is embedded. While certain forms of speech may be presumptively illegal, without taking into account its context (for example, extreme violence or explicit child sexual imagery), the vast majority of speech cannot easily be categorized as lawful or unlawful, and such determinations should normally be made only through judicial procedures which are accountable under law.

In the absence of judicial determination, intermediaries are ill-suited to make such categorizations, particularly as the mechanisms by which they make such decisions are generally private, non-transparent and unaccountable, at least in the present legal framework under which they operate. Moreover, intermediaries may not have a direct interest in the protection of legitimate speech and have economic incentives to avoid liability for third party content, inducing them to privately ‘over-censor’ legitimate forms of speech in the absence of a clear judicial determination of what constitutes ‘unlawful information or content’. As noted by the Delhi High Court in Myspace v Super Cassettes,“…if an intermediary is tasked with the responsibility of identifying infringing content from non-infringing one, it could have a chilling effect on free speech.”

This problem is particularly exacerbated in the context of copyrighted content, the infringement of which also constitutes unlawful content. The Delhi High Court has held that Section 79 of the IT Act also covers acts of copyright infringement under the Copyright Act. The scope of Draft Rule 3(9), similarly, would extend to all intermediaries who host copyrighted works under the Copyright Act. Owing to a low threshold for copyrightability in India, such ‘works’ cover almost a significant amount of all the content uploaded on the internet, the lawfulness of each of which an intermediary cannot reasonably be expected to monitor and filter, even with the use of automated systems.

In particular, draft rule 3(9) may undermine the crucial balance between access to knowledge and the use of copyrighted works, and the protection of author’s interests which is sought to be protected under the Copyright Act. The Copyright Act protects certain uses of a copyrighted work including the ‘fair dealing’ of a work for the purpose of private use or research, or the use of any work by students in the course of instruction. However, as noted above, the fear of civil or criminal liability for third-party content is likely to induce intermediaries to over-censor copyrighted content without taking into account the protections offered by the Copyright Act.

In any event, automated systems are not sufficiently evolved or sophisticated to be able to make decisions regarding the legality of the use of copyrighted works, something that is generally left to a judicial determination. Most automated systems rely on ‘matching’ technologies such as digital fingerprinting or hashing, which are yet unable to determine the context in which the work is being used, and are ineffective proxies for a judicial determination of infringement. Even the most sophisticated automated tools, including YouTube’s ContentID system, which reportedly cost Google 60 million USD, has been demonstrated to be ineffective both for failing to catch copyright infringement and incorrectly filtering legitimate content.

The reliance on automated mechanisms to prevent copyright infringement has also been mooted in other jurisdictions, particularly in the recently proposed changes to the EU Copyright Directive, and have come under significant criticism from rights holders and fair use advocates alike. Battling online piracy and protecting author’s interests requires a far more nuanced approach than what is proposed under the draft rules. Today is the *last day* for sending in your comments on these rules to the Ministry and speak up for a free and open internet.

Divij wrote a post  about the recently released draft intermediary guidelines. In his post, he specifically focusses on Draft Rule 3(9) which provides for “automated tools” and “appropriate mechanisms” for identifying “unlawful” online content. Noting the response to the similar proposed changes to the EU Copyright Directive, he analyses the various adverse impacts the Rules may have on copyright  law and access to knowledge.

Rishabh wrote about a worrying development in the IPAB; the Board has allegedly been conducting hearings and passing orders without the quorum required under the Trade Marks Act and the IPAB Rules. The issue was brought to SpicyIP’s notice via a letter by ARS & Associates. Rishabh also draws our attention to a recent IPAB order and the cause list of 7th January, 2019, which serve as proof of these allegations.

Other Developments

Indian

Judgments

Rajesh Chugh & Another v. Chhavi Poplai & Others – Delhi High Court [January 23, 2019]

The Court dismissed the petition against the existing interim injunction restraining the Defendant from using the website name “www.nizams.com” in infringing and passing off the Plaintiff’s mark “NIZAM’S” in respect of food items. In arriving at this decision, the Court noted that even though the mark “NIZAM’S” had a historical context to it, it was capable of protection in light of the same being arbitrary in respect of the goods being sold under it. Moreover, it was noted that the proprietor of trade marks were not expected to run after every infringer and it was legitimate that the proprietor take a measure against the infringer only in a case where the infringement assumed alarming portions.

STP Limited v. M/s. Arihant Sales Corporation & Others – Delhi District Court [January 23, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from using the mark “SHALICRYL LM” in infringing and passing of the Plaintiff’s mark “SHALICRYL” in respect of water proofing products. In arriving at this decision, the Court stated that the Plaintiff was the registered user of the mark and the mark adopted by the Defendant was structurally, visually and phonetically similar to that of the Plaintiff. The Court also considered it appropriate to grant punitive and compensatory damages to the tune of Rupees 2 lakh and a decree of damages to the tune of Rupees 3 lakh in light of the Plaintiff being unnecessarily dragged into litigation.

Kinjal Lalitbhai Dave v. Red Ribbon Entertainment Private Limited – Gujarat High Court [January 24, 2019]

The dispute between the Parties arose on account of copyright in the video of the Gujarati song “Char Bangadi Wari Gaadi”. The Respondents had already assigned the song in favour of the Appellant but at the same time had a dispute concerning the song with its predecessor. The Commercial Courts passed an injunction against the Respondents stating that the Appellants met all conditions for passing the order of interim injunction. The Court set aside this order of the Commercial Court claiming that Appellant had not satisfied the Commercial Court of the gravity of the situation and at the same time, the Commercial Court had failed to consider the relevant factors prior to granting the decree of interim injunction. Moreover, the Court noted that the requirements for the grant of an interim injunction were mandated by the statute and could not be considered as a mere formality, but had to be done in the manner prescribed by the statute.

M/s. Crocs Incorporation USA v. M/s. Bata India Limited & Others – Delhi High Court [January 24, 2019]

The dispute between the Parties arose on the ground that the Respondents had infringed the registered designs of the Appellant by copying its well-known designs attached to footwear. In a suit filed by the Appellant for infringement, the Single Judge stated that the Appellant’s designs were in the public domain since 2002 and consequently denied them relief. Through the appeal of the same, the Court noted that there was no infirmity in the appreciation of law on the subject by the Single Judge. It was also stated that the Appellant’s registration was cancelled in the European Union on the ground of prior publication. The Court also claimed that a mere variation in the existing design does not entitle that design to protection. In light of these observations, the Court found that the direction of the Single Judge to the Appellants to pay Rupees 2 lakh to all Respondents was unassailable due to the burden of legal proceedings imposed on the Respondents.

Homeseek Realtors v. Deepak Kainth & Others – Delhi High Court [January 28, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “HOMESEEK REALTORS” by using a deceptively similar mark “HOMESEEK REALTY” in respect of real estate services. In arriving at this decision, the Court observed that the Defendant had no real prospect to defend the claim as the Plaintiff was the prior user of the mark.

Stillman Fashion v. Steel All Male – Gujarat High Court [January 29, 2019]

The dispute between the Parties arose on account of infringement of the Plaintiff’s mark “STEEL ALL MALE” by the Defendant through the mark “STILLMAN” in respect of garments. The Court noted that the marks of both the Parties were poles apart in terms of visual as well as phonetic perception. Moreover, it was noted as an essential point that the Plaintiff had not used its mark for 15 months and thus, the Defendant would be free to use its mark, and restrain from using the mark would cause more harm and inconvenience to the Defendant rather than the Plaintiff.

Citigroup Incorporation & Others v. Puneet Motwani – Delhi High Court [January 29, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “CITI” by using a deceptively similar formative marks containing “CITI” in respect of financial services. In arriving at this decision, the Court observed that the Defendant had no real prospect to defend the claim as the Plaintiff was the prior user of the mark.

SRMB Srijan Private Limited v. Shreegopal Concrete Private Limited – Calcutta High Court [January 30, 2019]

The Court granted an interim injunction restraining the Defendant from passing off the Plaintiff’s design in respect of iron bars. In arriving at this decision, the Court noted that even though the Plaintiff did not have a valid registration in respect of the design, the claim of passing off would succeed. Accordingly, the Court noted that the Defendant’s bars had a design which was identical and a slavish imitation of the Plaintiff’s trade dress.

News

• GI war between Bangladesh and India over Khirsapati mangoes
  

International

• Caitlyn Jenner pulls skincare line due to trademark issues after application was rejected for being too similar to ex-wife Kris and daughter Kylie
• India emerging new target for patent filing in AI: WIPO
• No secrets: Musk releases all Tesla patents to help fight climate change, save the Earth
• Netflix’s “Wild Wild Country” Creators Sued for Copyright Infringement
• Ariana Grande sued over copyright infringement by Las Vegas artist

In this belated two-part post, I will try to unpack a judgment of the Supreme Court (available here) from October 2017, on the scope of TRAI’s regulatory power with respect to broadcasting services. It reached the Supreme Court in appeal after the Madras High Court dismissed the writ petition in a split decision.

This case was about an unsuccessful challenge to the validity of certain provisions in the Telecommunication (Broadcasting and Cable) Services (Eighth) (Addressable Systems) Tariff Order 2017 (‘Tariff Order’), and the Telecommunication (Broadcasting and Cable) Services Interconnection (Addressable Systems) Regulations 2017 (‘Interconnection Regulations’).

Background

The impugned provisions were introduced by TRAI due to the practices of service providers that harmed customers by limiting choice in the market for television channels. The practice involved charging disproportionately high prices for channels sold on a standalone basis, and low prices for the same channels when sold as part of bouquets. This practice resulted in a negligible subscription of channels on a standalone basis as opposed to bouquet subscriptions.

Furthermore, service providers also used bouquets to push unpopular channels on customers by clubbing them with popular channels. These practices not only limited customer choice but also resulted in the artificial occupation of the distributors’ network capacity, barring the entry of newer TV channels.

As a result, the Tariff Order and Interconnection Regulations were brought in, which inter alia, made the following changes –

• Fixed a uniform maximum retail price for each TV channel (which is also offered as part of a bouquet) at INR 19.
• Disallowed the inclusion of TV channels priced at amounts greater than INR 19 in bouquets. They must be sold only on a standalone basis.
• Required that the price of a bouquet of television channels not be less than 85% of the sum of standalone prices of television channels included in the bouquet.
• Required that promotional schemes be only offered on standalone prices for offering television channels and not on bouquet prices, cannot exceed 90 days at a time, and can be offered only twice in a year.
• Required that pay channels and free to air channels not be in the same bouquet.

Issues

The Supreme Court based its adjudication upon the following issues –

1. Whether the impugned provisions regulate content, directly or indirectly?
2. Whether TRAI has the power to regulate the content of broadcasts?

On the first issue, the court found that the impugned provisions did not regulate content. On the second issue, the court held that TRAI has the power to regulate the content of broadcasts in the interest of the public.

Court’s Analysis

Issue 1: Do the Regulations affect content?

This question was important for the court to consider because it was the appellant’s argument that regulation of content fell within the exclusive domain of the Copyright Act, and therefore could not be regulated by TRAI.

According to the appellant, Section 37 of the Copyright Act provides for the ‘broadcast reproduction right’, and any measure that restricts its exploitation must be in conformity with the Copyright Act. In the context of the current case, it is important to note that the Copyright Act does not provide for an exception to the broadcast reproduction right on the basis of public interest.

The impugned provisions affected content by limiting the amount of money that could be earned through television channels, and therefore, the amount that is invested in television channels. As Justice Sundar held in his dissent in the Madras High Court, this hampers the creation and acquisition of new content. The impugned provisions, therefore, indirectly regulate content. Since the Copyright Act does not allow for such restriction of content on the basis of public interest, TRAI did not have the authority to pass the impugned provisions.

The court, however, rejected that the impugned provisions regulate content –

“at no stage is content of a TV channel sought to be regulated, and that pricing relating to TV channels laid down in the [Interconnection] Regulation and Tariff Order is a balancing act between the rights of broadcasters and the interests of consumers, […] The Authority has shown that it does not encroach upon the freedom of broadcasters to arrange their business as they choose. Also, when such discounts are limited [to bouquets], a subscriber can then be free to choose a-la-carte channels of his choice. Thus, the flexibility of formation of a bouquet, i.e., the choice of channels to be included in the bouquet together with the content of such channels, is not touched by the Authority. It is only efforts aimed at thwarting competition and reducing a-lacarte choice that are, therefore, being interfered with.”

Hence, the court ruled in favour of TRAI. It noted that the price ceiling operates only on channels that are sold in the form of bouquets. Channels sold on a standalone basis may be priced freely by the service provider, and therefore, content for these channels would go unaffected. The court also noted that the ceiling price of INR 19 is an improvement on the earlier amount (INR 15.12), and may also be increased from time to time, subject to market conditions.

Discussion

Although the court decided this issue in favour of TRAI on the ground that the impugned provisions do not indirectly regulate content, I would argue that the court could have also rejected the argument that indirect regulation of content affects rights granted under the Copyright Act.

Indirect regulation, as envisaged in this judgment, reflects the understanding that although TRAI has not directly regulated content (for example, by disallowing screening of religious dramas), it has affected content by reducing the viability of investing in content. However, the content that is being affected by such regulation is necessarily content that has not been created. To argue then, that the impugned provisions violate rights granted under the Copyright Act would be premature, since the broadcast reproduction right comes into existence only after the broadcast comes into existence (Section 37(2) of the Copyright Act). At a stage where content has not been created, therefore, no right may exist under the Copyright Act.

In Part II, I will discuss the second issue discussed in this case, on TRAI’s power to regulate content directly or indirectly.

Image from here.

Photo from here.

We’re pleased to bring to you a guest post by Adarsh Ramanujan. Adarsh is an advocate primarily assisting clients as a litigation attorney. He has recently started his own counsel practice with offices in Delhi and Chennai after having spent considerable time with Lakshmikumaran & Sridharan at their New Delhi and Geneva offices. He obtained his B.Sc. LL.B. (Hons.) degree (Gold Medalist) from National Law University, Jodhpur  and LL.M. degree from University of California, Berkeley. He is a qualified Patent Agent in India. A major portion of his time is spent, practicing in the areas of IP & Technology Laws as well as in International Trade Law. He was however branched out into doing commercial litigation and arbitration work. His expertise also extends to regulatory laws such as environmental laws, biodiversity laws and cyber laws. Adarsh has taught patent law in NLU, Delhi, NLU, Jodhpur and at the CEIPI Institute (University of Strasbourg). He has authored or co-authored close to 30 publications on diverse topics, including on IP, WTO, constitutional law and international tax.

Adarsh has written several guest posts for us in the past as well, which can be accessed here.

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As I listened to President Trump’s State of the Union Address this morning, a point that struck me as worth debating over on this blog related to the issue of drug pricing. According to his address, drug prices have suffered the single largest decline in the US in 46 years, during his administration and further steps are being taken to bring down the prices even further. His fundamental position appears to be that US citizens should not be asked to pay for drugs, in order to cross-subsidize lower pricing models in other jurisdictions.

This is a point he has made in the past as well. I don’t intend to argue for or against this, but rather highlight the implication for Indian IP practitioners.

The patenting of drugs and drug pricing debate is not new to this country or this blog. An oft cited argument I have come across in practice (whether in the form of arguments in proceedings or otherwise) is that most drugs (patented) are sold at supra-normal profit margins in several other (developed) jurisdictions over several years and thus, the proprietors recover sufficient profits over and above cost of R&D costs. Under the circumstances, extravagant pricing in India is not a commercial necessity for these companies and accordingly, R&D costs cannot be used as a basis to support high pricing of drugs in India. Or so, the argument goes.

One may recollect the Bayer compulsory license case, where the compulsory license applicant had led evidence pointing out figures that the total amount spent on research and development from 1994 up to 2004 were allegedly recovered by the petitioner in one year itself. The IPAB had issued a finding that the R&D costs and the prices of other drugs do not assist in deciding what the public can afford reasonably. In contrast, the Bombay High Court held that research costs certainly could have been the basis to decide the reasonable price, but on facts, recorded the failure of the patentee to produce its audited accounts and indicated that adverse inference could be drawn in such cases.

Frankly, as I think Shamnad has indicated a couple of times, without actual real-world numbers, it is difficult to argue this point either way. Further, the other issue also tends to be defining what is a ‘sufficient’ and ‘reasonable’ profit for that sector. One argument is that it should cover costs (defined to include R&D costs of the drug in question, costs of R&D failures, lost opportunity costs, costs to reach the market etc.), return on investment and reserves to invest in the next line of research. There are no magical limits or numbers accepted generally and so, the debate rages on, ad infinitum.

Nevertheless, from a conceptual point of view, it is thought provoking to consider the consequences of major jurisdictions like the USA moving towards an international pricing index model, with the intent to prevent indirect subsidization of users in other jurisdictions. It would then not be an option to make an open-ended carte blanche argument in India that proprietors obtain sufficient returns outside India and thus, must reduce their prices for the Indian market.

I’ll acknowledge right away that it’s a theoretical point today and even when such a hypothetical situation crystallises in the future, it would continue to be a numbers game. Nevertheless, I thought it was worth considering the issue for a few moments. Have a good day!

Multiple news outlets recently reported about a pre-grant patent opposition filed by two TB survivors, with support from MSF, against a patent application filed by Janssen for a salt form of its experimental TB drug bedaquiline. In a press note put out by MSF, it was claimed that this opposition “…is the first ever challenge against a TB drug patent in India”. This is a factually incorrect statement.

The patent application under challenge, as per Sandeep Rathod’s analysis of the opposition on IP Watch is 1220/MUMNP/2009. The online record of the patent application on the website of the patent office indicates that this particular patent application was opposed, as far back as 2013, by the Network of Maharashtra of People Living with HIV (NMP+) through patent agents Gopakumar Nair Associates. The patent opposition filed by Network of Maharashtra of People Living with HIV has been pending for 6 years now and it appears that for all practical purposes the first opposition stopped the patent application in its tracks. The MSF press note makes no reference to this opposition.

The Section 3(d) stumbling block?

One of the main impediments to this patent application proceeding is the Supreme Court’s interpretation of Section 3(d) of the Patents Act. This provision of Indian patent law is meant to target secondary patents like the one filed by Janssen in this case. By ‘secondary patents’, I mean the patents that are filed by pharmaceutical companies for the salt forms of the main active ingredient. As per Rathod’s analysis on IP-Watch, the main patent application for the active ingredient was filed in 2003 and would have expired in 2023. The patent application for the fumarate salt form of the main active ingredient was filed in 2006 and would have delayed the entry of generics till 2026. Section 3(d) however makes it tougher for pharmaceutical companies to patent salt forms such as the one in question in the ‘1220 application. It does so by creating the legal fiction that the salt form is the same compound from which it is derived and by doing so shifts the onus of proof on the patent applicant who has to show the patent office that the new salt form is more efficacious than the previous forms. The Supreme Court has interpreted ‘efficacy’ as meaning therapeutic efficacy meaning the new form has to show significantly superior capabilities in treating a disease. Most salt forms will not be able to demonstrate such efficacy. The main advantages of the fumarate salt of bedaquiline, according to Janssen is that it is more stable with greater bioavailability. Whether increased bioavailability will lead to better efficacy is an issue that will turn on evidence, although going by the reply filed by Janssen to the earlier opposition it appears that Janssen has almost conceded the case.

Were the right set of claims opposed?

One of the strange aspects of this pre-grant opposition is the decision of the opponents to challenge a set of amended claims that have not yet been accepted by the Controller. As with most patent applications, the patentee appears to have voluntary amend its original claims filed as part of the PCT application. But the Controller of Patent objected to these amended on the grounds that it was not in compliance with Section 59 of the Patents Act which allows for patents to be amended only by way to correction, explanation or disclaimer. According to the Controller’s examination report, Janssen had tried to expand on its original claims and this was impermissible. Janssen in its reply to the examination report once again tried amending its claims to conform with the objections in the examination report. After that set of communications, Janssen once again sought to amend its claims in 2013 after the first pre-grant opposition was filed by the Network of Maharashtra of People Living with HIV (NMP+). None of these amendments have been accepted by the Controller in which case the opponents should have challenged the original set of claims as filed in 2009. These original claims were limited to the fumarate salt form while the amended version in 2013 includes a wetting agent in Claim 1. The second opposition refers to the amended claims in 2013 and not the original claims filed in 2009.

Normally challenging the wrong claims could be the end of an opposition but I don’t think it will make a big difference in this particular case because this patent application is anyway going to trip on Section 3(d).

Indian health journalists & activists continue to ignore the ethical implications of the bedaquiline rollout in India

In the meanwhile, most health journalists and activists continue to ignore the ethical implications of the bedaquiline rollout in India. Most of them have simply turned a blind eye to the flawed consent forms and they continue to repose blind faith in the WHO recommendations for increasing the uptake on bedaquiline. What most of them ignore is that the WHO unlike the Indian government is not responsible for making arrangements for the rollout or the consequences that will follow from a flawed rollout. Nobody in India is going to go and sue WHO but they will hold the Indian government liable for possible deaths. It is then understandable as to why the government is being cautious about the rollout.

Only one health journalist Maitri Porecha of the Hindu Business Line has pointed out how the lack of digital ECGs and other crucial equipment is hampering the rollout of bedaquiline. This is the type of reporting that is required to build pressure on the government to ensure a planned, ethical rollout of bedaquiline. The danger of simply asking the government to ramp up bedaquiline without understanding the reasons for the delay is that the government will react in a kneejerk manner in order to counter its critics. In the process the government will not take care of the safety measures that should accompany the rollout of a drug like bedaquiline which has known toxicity issues.

There are other serious ethical issues with the journalism and activism surrounding the bedaquiline rollout but I won’t bore you by repeating them once again in this post. Let me end by saying that over the last 11 years that I have been reading and writing about pharmaceutical patents as a student, lawyer and academic, I’ve seen the same old faces making the same old arguments. There has been little innovation or new thinking from the activist camp. I suspect the reason for this stagnation in thinking is that the ‘activists-in-chief’ tend to become larger than the cause. It would be in everybody’s interests, especially the NGOs working in this space to force the old guard to step aside so that new ideas and thinking may come to the fore.

Thematic Highlight

In the first of a two-part post, I wrote on the Supreme Court’s judgment in Star India v DIPP. In its judgment, the court delineated the regulatory powers of TRAI, in light of alleged overlaps with the Copyright Act. The court noted that the regulations passed by TRAI did not tread onto the ‘broadcast reproduction right’ granted under Section 37 of the Copyright Act. In the next part, I will discuss the court’s holding on the outcome if there were an overlap.

Topical Highlight

In a guest post, Adarsh Ramanujan shared his thoughts on drug pricing in light of Donald Trump’s recent presidential address. He discusses the concept of an international pricing index for patented drugs, which may result in a scenario where developed countries such as the USA will not be overcharged to compensate for the lower pricing in developing countries. He argues that such a situation would, at least in theory, affect the way in which Indian litigators would be able to approach cases of drug pricing or compulsory licensing.

Prashant wrote on the opposition filed against Janssen’s patent application for the fumarate salt form of Bedaquiline. He notes that Section 3(d) would be an obstacle to the new drug receiving a patent due to the requirement of an improvement in therapeutic efficacy. He also notes that the opposition that has been made may be on the wrong grounds, but this may be moot since the patent would likely be rejected in any case.

Image from Wikimedia Commons.

The universe surely has a strange sense of humour.

Imagine our surprise when we received a notice from Google Inc., that they had de-indexed one of blogs after a complaint was filed against it by Saregama India Pvt. Ltd. On December 13, 2018, Google informed us that:

“Google has been notified, according to the terms of the Digital Millennium Copyright Act (DMCA), that some of the material found on your site allegedly infringes upon the copyrights of others. Although some of these URLs may not be available in our search results now, we are retaining these notices and will act on them if at some point in the future we do crawl these pages for inclusion in search results.”

For further information, we turned to the Lumen database, a wonderful and necessary third-party takedown notice database maintained by the folks at the Berkman-Klein Centre. Here, we saw that Saregama, on November 28, had sent Google a list of 99 problematic URLs, of which ours was one. In particular, Saregama (in its notice to Google) claimed that:

“The sound recording or other musical works /song titled APNI TO JAISE TAISE sung by KISHORE KUMAR written by PRAKASH MEHRA and music composed by KALYANJI ANANDJI being made available for streaming and/or download without license/permission from Saregama India Ltd.”

The blog which was removed on the grounds of unlawfully ‘making available’ the song, was a 2010 report by Sumathi Chandrasekharan which describes the convoluted history of the Bollywood song in question. Needless to say, there is no mention of the song apart from describing the facts in dispute.

Google’s response, owing to the peculiarities of US Copyright law, was to de-index our blog first, and notify us later. We were told that we could ‘send a counter-notice’ or ‘contact a lawyer’. Thankfully, we don’t have to look far in these parts to find a lawyer to handle this process, and our counter-notice was successful. Our post was eventually reinstated on January 21.

The Perils and Pitfalls of Notice and Takedown

Even if SaReGaM ‘correctly’ identified 98 infringing links, is the takedown of a lawful post a legitimate casualty to the process? What if the post was a criticism of SaReGaMa’s or Google’s policies, or critical of the legal process?

The present instance is the result of the US Digital Millennium Copyright Act, (S. 512) which implements a ‘notice and takedown’ regime for intermediaries to remove copyrighted content. The provision rests intermediary safe harbour for publishing putatively infringing content upon the expeditious removal of notified links, and subject to examining any counter-notice, explained in more detail here.

The Copyright Act (S. 52) and Copyright Rules (R. 75) in India, incidentally, have a similar procedure, which creates a ‘notice and takedown’ regime for intermediaries which host ‘incidental or transient’ links to copyrighted content, which includes a counter-notice mechanism with the right to reinstate the content in the absence of a court order within 21 days. Unfortunately, it is unclear what intermediaries fall within the scope of this procedure, and in the absence of such clarity, the Delhi High Court has created a separate regime for certain intermediaries in Myspace v Super Cassettes. This judicially created regime is rather vague and does not include even the minimal procedural safeguards available under the Copyright Rules.

Regardless of the form of notice-and-takedown, it is apparent that placing an obligation to police copyright infringement on intermediaries create perverse economic incentives on private parties like Google or YouTube to over-comply and take down legal content. This is not solely attributable to the intermediaries’ practices themselves, but the policy and legal decisions which are created and are supposed to to strike a balance between access to knowledge and copyright protection in the digital age.

While we hope SaReGaMa has a stern word with its lawyers, it’s funny and (perhaps on the balance) appropriate that this takedown notice came to a copyright law blog, where we can discuss and dissect such procedures. Yet, had it happened to a non-lawyer, or even someone who had ceased to take interest in their old blog, as it often does, it would result in the permanent removal of public information from an index which serves as the gateway to the internet, due to the ‘mistakes’ of private parties whose interests do not coincide with public access. What does this mean for the future of access to knowledge? These are hard questions which Indian lawyers and policy makers need to grapple with, particularly when we have senseless obligations like the mechanism for ‘automated takedown of unlawful content’ being proposed for intermediaries by the Ministry of IT

We’re pleased to inform you that the Inter University Centre for Intellectual Property Rights Studies (IUCIPRS), CUSAT is offering two Summer Fellowships under ‘IUCIPRS Justice Rajagopala Ayyangar Summer Fellowship’ program during April to June 2019. IUCIPRS has instituted this Fellowship to encourage teachers interested in IP research in India to spend minimum of two months during summer (April to June) at IUCIPRS undertaking research work in IP. Applications should reach the Director on or before March 1, 2019. The norms for the award of the fellowships can be accessed here and application form here. For further details, please visit the Centre’s website here.

We’re pleased to inform you that K&S Partners, one of India’s leading IP law firms, is looking to recruit for multiple full time as well as consultancy positions across its offices in Gurgaon, Bangalore, Hyderabad and Chennai. For further details, please see the job description for each of these positions below. If you are interested in applying for any of the positions, you may send your resume to Charu Gupta at charu@knspartners.com.

A. Full Time

Position (1)

Title: Associate Patent

Nature of Job: Full time

Location: Gurgaon

Department: Patent

Domain: Electronics and Computers

Reports To: Concerned Partners

Job Description:

1. Drafting, filing & prosecution of patent applications
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
4. Remuneration: as per industry standards
5. Patent Agent and LLB is highly preferred
6. Must be willing to travel domestic and abroad as per business needs

Qualification: (i) BE/ ECE/EEE/CS (Electronics and Communication Engineering); (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Experience of around 1-3 years

Position (2)

Title: Associate Patent

Nature of Job: Full time

Location: Gurgaon

Department: Patent

Domain: Mechanical Engineering

Reports To: Concerned Partners

Job Description:

1. Drafting, filing & prosecution of patent applications
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
4. Remuneration: as per industry standards
5. Patent Agent and LLB is highly preferred
6. Must be willing to travel domestic and abroad as per business needs

Qualification:  (i) B.E./B. Tech, M.E. / M. Tech in Mechanical Engineering; (ii) Experience in an IPR law firm or in IPR department of other organizations; iii) Overall 2-3 Years of Experience in an IPR

Position (3)

Title: Associate Patent

Nature of Job: Full time

Location: Gurgaon

Department: Patent

Domain: Chemistry

Reports To: Concerned Partners

Job Description:

1. Drafting, filing & prosecution of patent applications (searching and analytics)
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
4. Remuneration: as per industry standards
5. Patent Agent and LLB is highly preferred
6. Must be willing to travel domestic and abroad as per business needs

Qualification:  (i) B. tech / M. tech in Chemical Engineering or M. Sc / M. tech in Material science or Metallurgy or Physics (Optics) or Polymers; (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Overall 2-3 Years of Experience in an IPR organization

Position (4)

Title: Associate Patent

Nature of Job: Full time

Location: Chennai

Department: Patent

Domain: Electronics and Computers

Reports To: Concerned Partners

Job Description:

1. Drafting, filing & prosecution of patent applications
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
4. Remuneration: as per industry standards
5. Patent Agent and LLB is highly preferred
6. Must be willing to travel domestic and abroad as per business needs

Qualification:  (i) BE/ ECE/EEE/CS (Electronics and Communication Engineering); (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Experience of around 1-3 years

Position (5)

Title: Associate Patent

Nature of Job: Full time

Location: Hyderabad

Department: Patent

Domain: Computer Science

Reports To: Concerned Partners

Job Description:

1. Drafting, filing & prosecution of patent applications
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
4. Remuneration: as per industry standards
5. Patent Agent and LLB is highly preferred
6. Must be willing to travel domestic and abroad as per business needs

Qualification:  (i) BTech/MTech (Computer Science); (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Experience of around 2-3 years

Position (6)

Title: Associate Trademark

Nature of Job: Full time

Location: Hyderabad

Department: Trademark

Reports To: Concerned Partners

Job Description:

1. Proficient in TM prosecution work, liaising with the trademark offices;
2. Communication with clients;
3. Confident; sound communication skills;
4. Ability to coordinate independently with clients and professional personnel within the firm (across locations);
5. Ability to draft pleadings and to be able to appear before courts, good research skills;
6. Remuneration: as per industry standards;
7. Must be willing to travel domestic and abroad as per business needs

Qualification:  (i) LLB; (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Experience of around 2-3 years

Position (6)

Tittle: Associate Trademark

Nature of Job: Full time

Location: Gurgaon

Department: Trademark

Reports To: Concerned Partners

Job Description:

1. Proficient in TM prosecution work, liaising with the trademark offices
2. Communication with clients
3. Confident; sound communication skills
4. Ability to coordinate independently with clients and professional personnel within the firm (across locations)
5. Ability to draft pleadings and to be able to appear before courts, good research skills
6. Remuneration: as per industry standards
7. Must be willing to travel domestic and abroad as per business needs

Qualification:  (i) LLB; (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Experience of around 3 years plus.

Position (7)

Tittle: Secretary Trademark

Nature of Job: Full time

Location: Gurgaon

Department: Trademark

Reports To: Concerned Partners

Job Description:

1. Communication with clients
2. Confident; sound communication skills
3. Good academic record and analytical skills
4. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
5. Remuneration: as per industry standards

Qualification:  (i) Graduation in any stream; (ii) Experience in an IPR law firm or in IPR department of other organizations (iii) Experience of around 1-3 years

B. Professional Consultants

Position (1)

Tittle: Professional Consultant Patent

Nature of Job: Consultant

Location: Gurgaon

Department: Patent

Domain: Chemistry

Reports To: Concerned Partners

Job Description:

1. Drafting, filing & prosecution of patent applications (searching and analytics)
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
4. Remuneration: as per industry standards
5. Patent Agent and LLB is highly preferred
6. Must be willing to travel domestic and abroad as per business needs

Qualification:  (i) B. tech / M. tech in Chemical Engineering or M. Sc / M. tech in Material science or Metallurgy or Physics (Optics) or Polymers from a reputed university; (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Overall 2-3 years of experience in an IPR organisation

Position (2)

Tittle: HR Consultant

Nature of Job: Consultant

Location: Gurgaon

Department: HR & Admin

Domain: Human Resource

Reports To: General Manager

Job Description:

1. Generalist HR with essential experience in Talent Acquisition
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills;
4. Remuneration: as per industry standards

Qualification: (i) Graduate- BBA/ MBA- HR; (ii) Overall 1-2 years of experience

Position (3)

Title: Professional Consultant Patent

Nature of Job: Full time

Location: Bangalore

Department: Patent

Domain: Mechanical Engineering

Reports To: Concerned Partners

Job Description:

1. Drafting, filing & prosecution of patent applications
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
4. Remuneration: as per industry standards
5. Patent Agent and LLB is highly preferred
6. Must be willing to travel domestic and abroad as per business needs

Qualification:  (i) B.E./B. Tech, M.E. / M. Tech in Mechanical Engineering; (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Overall 2-3 years of experience in an IPR organization

Position (4)

Title: Professional Consultant Patent

Nature of Job: Full time

Location: Gurgaon

Department: Patent

Domain: Biotechnology & Bioscience

Reports To: Concerned Partners

Job Description:

1. Drafting, filing & prosecution of patent applications
2. Good academic record and analytical skills
3. Confident; sound communication skills; ability to coordinate independently with clients and professional personnel within the firm; good relationship skills
4. Remuneration: as per industry standards
5. Patent Agent and LLB is highly preferred
6. Technical depth, good writing skills, quick learner, team player

Qualification:  (i) M. Tech/Ph.D. in Biotechnology/Biochemistry/Molecular Biology from a reputed university; (ii) Experience in an IPR law firm or in IPR department of other organizations; (iii) Overall 0-3 years of experience in an IPR organization

In my previous post, I had discussed the first issue that was discussed in Star India v DIPP, regarding the regulation of content by the impugned provisions. In this post, I will discuss the second issue concerning TRAI’s power to regulate content in light of potential conflicts with the Copyright Act, and discuss some relevant observations made by the court.

Issue 2: Does TRAI have the power to regulate content?

The determination of TRAI’s power to regulate content rested on two sub-issues – the meaning of ‘regulation’ under Section 36 of the TRAI Act and the interplay between the Copyright Act and TRAI Act.

On the first sub-issue, the court had to determine whether the term ‘regulation’ under Section 36 of the TRAI Act should be interpreted narrowly or broadly. The appellant’s contention was that the provisions should be interpreted narrowly to exclude power to prohibit since it is not explicitly permitted by the provision. The impugned provisions, which prohibit certain practices with respect to the sale of television channels would, therefore, be invalid.

While the court acknowledged that ‘regulation’ had been interpreted narrowly in the past (albeit in different contexts), it held that the term must be interpreted broadly in the present case. This is because TRAI’s power to regulate (including the power to prohibit) is being used to benefit the public. Therefore, ‘regulation’ in Section 36 does include the power to prohibit. The only restriction on the power to regulate under Section 36 is the requirement that they be consistent with the TRAI Act and the rules made under the legislation.

Further, the court relied on BSNL v TRAI to note that giving ‘regulation’ a restrictive meaning would stultify the very object of the act and prevent TRAI from fulfilling its objectives enumerated under Section 11(1)(b). Therefore, ‘regulation’ is to be interpreted broadly, so as to include the power to prohibit.

On the sub-issue regarding the interplay between the Copyright Act and TRAI Act, the court effectively held that TRAI had the power to regulate in territory occupied by the Copyright Act. That is, TRAI would be permitted to pass regulations that affect rights created under the Copyright Act. The court justified this by arguing that a harmonious construction of the two statutes would require the prioritisation of public welfare. Since the regulations passed by TRAI are in the interest of the customers as well as service providers, it would take precedence over the Copyright Act, which only serves the right holders. The court stated:

“We are, therefore, clearly of the view that if in exercise of its regulatory power under the TRAI Act, TRAI were to impinge upon compensation payable for copyright, the best way in which both statutes can be harmonized is to state that, the TRAI Act, being a statute conceived in public interest, which is to serve the interest of both broadcasters and consumers, must prevail, to the extent of any inconsistency, over the Copyright Act which is an Act which protects the property rights of broadcasters.”

To further buttress this finding, the court argued that the Copyright Act does not concern itself with the interest of the public because:

“[w]hen the definitions of broadcast in Section 2(dd) of the Copyright Act and of broadcasting services in Clause 2(j) of the impugned Regulation are compared, what is clear is that the words intended to be received by the general public either directly or indirectly are completely missing from the definition of broadcast contained in the Copyright Act. Also, Section 52(1)(b) of the Copyright Act indicates that transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public is not an act that would constitute infringement of copyright.”

On the other hand, the court noted that TRAI benefits the public by considering the interests of the customers as well as service providers :

“TRAI Act has to focus on broadcasting services provided by the broadcaster that impact the ultimate consumer. The focus, therefore, of TRAI is that of a regulatory authority, which looks to the interest of both broadcaster and subscriber so as to provide a level playing field for both in which regulations can be laid down which affect the manner and carriage of broadcast to the ultimate consumers.”

Therefore, the court concluded that TRAI does have the power to regulate content, irrespective of the Copyright Act. In the context of the outcome of the case, this issue did not change much, since the court had already found that the impugned provisions do not regulate content.

Notes

Some additional aspects of this case that may be helpful to note –

• In its discussion on the applicable laws, the court noted that: “The TRAI Act, the Telegraph Act and the Indian Wireless Telegraphy Act, being statutes in pari materia, form a Code, insofar as wireless telegraphy and broadcasting is concerned.”
• The appellant argued that the mention of ‘content’ (as something that may be regulated) in the Cable Television Act, 1955, and the Sports Broadcasting Signals (Mandatory Sharing with Prasar Bharati) Act, 2007 indicates that the absence of its use in TRAI Act means that content cannot be regulated by TRAI. However, the court held that these legislations were not relevant in interpreting the TRAI Act. In the context of the latter act, the court also noted that the mention of content was solely to fulfil its preambular objectives of ensuring access to sporting events of national importance.

Discussion

While the court did hold that TRAI may regulate content indirectly, it did not clarify whether it would hold a similar opinion if TRAI directly regulated content on grounds not otherwise prescribed in the Programme or Advertisement Codes in the Cable Television Network Rules 1994. While this may seem unlikely, there is nothing in the reasoning of the court that would prevent such extrapolation in cases where there is a conflict (to read further on the regulation of content in media, including television, click here and here).

Further, the harmonious interpretation offered by the court was based on two arguments – first, that the Copyright Act is solely geared towards protecting the rights of authors, and ignores the interests of the public, and second, that the regulations passed by TRAI are always in the interest of the public.

On the first argument, there exists significant jurisprudence on how copyright law should be interpreted to include the interests of the public. Describing Copyright Law as a regime that exists solely to protect the authors’ rights does not capture the various roles that it serves in society. It would, therefore, be incorrect to assert that the Copyright Act does not heed to the interests of the public as a blanket assertion and rely on this to favour the TRAI Act.

On the second argument, and perhaps less significantly, the court missed out on clarifying whether all regulations passed by TRAI will be assumed to be in the interest of the public, or whether this is a finding that will be made in each case. This point is important to note since it is not rare to find regulatory bodies making decisions or passing regulations that may have a detrimental impact on stakeholders. Given this possibility, it would be prudent for future courts to interpret this judgment to require a case to case analysis of whether the regulations passed by TRAI serve a public interest.

Image from here.

In a major development in the European Union with repercussions for the internet at large, the European Parliament, the Council of the EU and the European Commission on February 13, 2019, agreed upon the final text of the new EU Copyright Directive.

While the text of the new rules has not yet been released, and they are yet to be officially confirmed by the parliament and council, a press release by the European Commission stated that a political agreement was reached between the three bodies after significant negotiations and obstruction, meaning that the new Copyright Directive is much closer to becoming a reality.

Prarthana wrote about the proposed changes to the EUCD when it was in its nascent stages, and as the new directive takes a step closer to fruition, its an apt time to reexamine the new form of the directive and its implications.

The ostensible purpose of the new proposed directive is to modernize copyright rules for the digital age, across the EU, as part of its Digital Single Market strategy. In particular, the commission notes the need to increase protections of digital works. The impetus for this appears to be the persistent adage of a ‘value gap’ which exists due to the internet, where rightsholders allege unfair bargaining by platforms which host third-party content and gain financially from exploiting the works of rightsholders.

These proposals have been controversial and have been heavily criticised for their potential impact on information and culture online, even though the EU Commission hit back in a blog post, calling critics a ‘mob’ or describing opposition as bots (The blog post was later removed, high drama!). The criticism centres around two proposals:

1. In Article 11, the directive proposes to grant stronger protections for press publishers, by granting rights over ‘works of a journalistic nature’, which are used by information society service providers (i.e. platforms) for a period of 20 years (the so-called “Link Tax” proposal).
2. In Article 13, the directive proposes that large content hosting platforms must, in cooperation with rightsholders, implement appropriate mechanisms to prevent the availability of works identified by rightsholders, emphasizing on the need to adopt content recognition software to monitor and filter their content to prevent access (the “Upload Filter” proposal).

The intended targets of Article 11 appear to be services like Google News or similar services which provide ‘snippets’ of the news content as part of the hyperlinks provided for its access. This could also potentially impact features like expanded hyperlinks on social media like Facebook or Twitter. The requirement for a license for all of such services might force platforms to scale down this feature. This is somewhat reminiscent of landmark cases in Google v Perfect 10, both in the EU and in the US, where Google’s use of copyrighted images for thumbnails was upheld as non-infringing use. This requirement, however, shifts the balance to publishers as far as news is concerned, and is particularly concerning because it also protects purely factual descriptions of news content, including those not covered by copyright.

Article 13 is even more concerning, as has been aptly summarized by Prarthana, here. I also wrote about the concerns of automated filtering requirements in the context of the recently proposed draft intermediary liability rules in India. As explained in detail in this paper by the Max Plank Institute, Article 13 uses language which is both vague and which is incompatible with existing legal interpretations of the liability of specific types of intermediaries for online content. In particular, the extension of safe harbour conditions to the content covered under Article 13 obligations is unclear, leaving the precise liability of platforms under Article 13 uncertain.

Enforcing monitoring and filtering obligations for platforms on copyrighted content has the potential to significantly hamper freedom of speech, access to information and culture online. In imposing privately determined pre-censorhip regime for all digital content, online intermediaries (‘in cooperation with rightsholders’), and opaque and imperfect algorithms become the determinants of the balance between copyright protection and access to knowledge, a fine balance supposed to be maintained by public institutions like laws and courts.

More broadly, the proposed EU Copyright Directive is another instance of the changing nature of internet regulation in Europe (and elsewhere), as lawmakers struggle to deal with the concerns posed by large tech platforms and their roles as mediators of speech, and seek to redefine boundaries between these platforms and other stakeholders. However, while concerns such as those of artists and authors not being duly compensated are critical to address, imposing restrictive requirements on the ability to share content, and placing the responsibility for a vibrant online cultural sphere on private companies and the use of imperfect content removal tools is far from a viable solution or compromise. While it appears that the new directive will see light of day, there is still a glimmer of hope that the directive will fail the upcoming vote of the European Parliament.

Thematic Highlight

I wrote a post on the extent of TRAI’s regulatory powers. The Supreme Court, in TRAI v DIPP, held that TRAI’s regulatory powers include the power to prohibit. Further, it held that a TRAI’s regulation are in public interest, and therefore, will remain valid even if they impinge upon rights under the Copyright Act, which only protects authors. I argue that the court’s findings on the purpose of the Copyright Act may be inaccurate in light of recent jurisprudence, and further note certain facets of TRAI’s regulatory powers that remain unclear.

Topical Highlight

Divij wrote a post about a press release that indicates that the final text of the EU Copyright Directive has been finalised. While the final text of the agreement has not been released yet, he discusses the purpose behind the new directive and the potential provisions that may come into force with the directive, especially the ‘Link Tax’ proposal and ‘Upload Filter’ proposal.

Divij also wrote a post about the notice and takedown regime under the US Digital Millennium Copyright Act in light of the de-indexing of a blog post on SpicyIP. He argues that a lack of due process under the DMCA for taking down content is problematic, and further that this may also have a detrimental impact on content available in the public domain.

SpicyIP Jobs

Pankhuri shared information about openings in consultancy positions in various offices of K&S Partners along with details for interested applicants.

Pankhuri also intimated us about the Justice Rajagopala Ayyangar Summer Fellowship programme at Inter University Centre for Intellectual Property Rights Studies (IUCIPRS) during April-June 2019 for teachers interested in research.

Other Developments

Judgments

Lumax Industries Limited v. Autonix Petrochem – Delhi District Court [January 31, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “LUMAX” by using an identical mark in respect of automobile accessories. The Court was of the opinion that the Defendant had failed to rebut the evidence furnished by the Plaintiff through documents and its witness. Moreover, the Court noted that there was no reason to believe otherwise that the Defendant had not infringed the mark.

Hindustan Unilever Limited v. Utkarsh Somani & Another – Calcutta High Court [February 1, 2019]

The Court granted an interim injunction restraining the Respondent from infringing and passing off the Petitioner’s registered mark “LIFEBUOY” by using deceptively similar marks “LIKEBUOY” and “LOVEBOY” in respect of selling and distributing soaps. In arriving at this decision, the Court observed that the Respondent had adopted similar trade design, graphics and colour scheme to that of the Petitioner’s product. Consequently, it was noted that the Respondent’s use of the aforementioned elements of the Petitioner’s mark made it appear phonetically, visually and structurally similar to the Petitioner’s registered mark.

Khadim India Limited v. Mohammed Ayub – Calcutta High Court [February 1, 2019]

The Court granted an ex parte interim injunction restraining the Respondent from infringing and passing off the Petitioner’s registered mark “KHADIM” by using a deceptively similar mark “KHADAM” in respect of footwear. The Court noted that the franchisee agreement between the Parties had ended and therefore the Respondent had no right to use the Petitioner’s mark or any mark deceptively similar to it. Moreover, on a comparison of the two marks, the Court stated that the Respondent’s mark was a slavish imitation of the Petitioner’s mark and bore a significant resemblance to the same. Resultantly, the adoption of the mark by the Respondent was branded dishonest.

Whatman International Limited v. P. Mehta and Others – Delhi High Court [February 1, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “WHATMAN” and its unique colour combination in the packaging of filter papers. The Court noted that the Defendants had failed to seriously challenge the proprietary rights of the Plaintiff in its mark. Moreover, the Court opined that the Defendants had colluded and repeatedly engaged in the dishonest practice of counterfeiting the Plaintiff’s goods. Accordingly, the Court ordered damages against the various Defendants for a sum of Rupees 3.85 crores in light of the consistent counterfeiting of goods and unauthorized use of the Plaintiff’s registered mark.

News

• Patent application for formulation of Valaganciclovir refused by the IPO
• Miss Universe 2018 Ridiculed For Wearing a Copy of Sabyasachi Mukherjee Creation

We’re pleased to bring to you a guest post by Sumit Sonkar, a Ph.D. candidate in Law at the Chinese University of Hong Kong, on his observations on the First IP & Innovation Researchers of Asia Conference, recently held in Kuala Lumpur, Malaysia.

Observations About the First IP & Innovation Researchers of Asia Conference

Sumit Sonkar

On January 31 and February 1, 2019, the Ahmad Ibrahim Kulliyyah of Laws, International Islamic University Malaysia (IIUM) hosted the first IP & Innovation Researchers of Asia (IPIRA) Conference, co-organized by IIUM, WIPO Academy, World Intellectual Property Organization (WIPO), World Trade Organization (WTO), Texas A&M University School of Law, and the School of Law, University of Geneva. During the two days, a large number of scholars from countries in Asia, Europe, North America, and Australia engaged in presentations, discussions, and debates about the law, practices, and legislative developments in all areas of IP law. Many scholars from India attended the First IPIRA, and I was one of them.

As its general mission, IPIRA aims at facilitating IP academics and researchers, from Asia and beyond Asia, to discuss their respective papers with their peers and receive feedback before submitting the papers for publication. To this end, a special ‘Workshop for IP Teachers and Researchers’ as well as a conference focusing on research methodology were organized.

Being a young scholar, what I found striking while participating in the First IPIRA Conference was that it enabled an international network of IP scholars-both senior and junior-to truly engage with, discuss, and collaborate on the intricacies of IP practices to find solutions to problems in the regulation of IP rights. This aspect of the Conference was rightly highlighted by International Islamic University Malaysia’s Rector, Professor Tan Sri Dato Dzulkifli Abdul Razak during the opening remarks. Moreover, IPIRA strives to be a platform for scholars to exchange IP understandings and its intricacies in a fast-changing world where we are globally interconnected. This extends to both research and teaching, as underlined by Mr. Sherif Saadallah, Executive Director of the WIPO Academy, with respect to the ongoing challenges and opportunities for IP teaching and research, and by Mr. Antony Taubman, the Director of the IP Division of the WTO, who also emphasized the significance of connecting the academic community with the policy makers across various countries.

Many scholars from different legal systems presented their works in progress, which not only contained doctrinal analysis but also had empirical components. The various sessions featured topics from Trademarks, Patents, AI & New Technologies, Copyrights, Access to Medicines, Standard Essential Patents, Geographical Indications, IPRs & Trade, Genetic Resources, and Traditional Knowledge. For those interested, the full program of the Conference may be found here. In terms of both participation and quality of presentations, the conference may be considered a remarkable success. Nevertheless, owing to my own physical inability to attend all the parallel panels, I would like to dwell on a few presentations which I consider to be thought-provoking attempts.

In particular, I found the presentation by Joost Poort and João Pedro Quintais from University of Amsterdam on ‘Global Online Piracy Study’, interesting. The authors presented a study on the consumption of pirated materials in 13 countries, including several countries in Asia (Hong Kong, Indonesia, Japan, Thailand), and analyzed the effectiveness of blocking websites as enforcement measures. Many empirical studies, comprising economic studies have been conducted to highlight the feasibility and effectiveness of website blocking, but most such studies are irrelevant to the Asian context. This comprehensive study, in no uncertain terms, establishes that there is a correlation between low income of the population and costs of buying copyrighted materials behind the perennial issue of online piracy.

In the investment context, Bryan Mercurio from the Chinese University of Hong Kong examined the trends of the over-cautious approach adopted by the investment tribunals in interpreting Fair and Equitable Treatment (FET) in cases concerning IPRs. FET is considered as an unruly horse which erodes the autonomy of states, however, Bryan Mercurio’s research seems to suggest that conservative approaches of investment tribunals may manifestly make FET ineffectual. Consequently, it may detrimentally affect the legitimate expectations of states in protecting IP investment.

Debmita Mondal from Hidayatullah National Law University eloquently provided a sketch of how Indian courts through ‘Rights Test’ and ‘Remedies Test’ determine whether a dispute relating to an IP is arbitrable or not. The presentation provided a balanced picture of the Indian courts’ approach towards IP arbitration. Nonetheless, it is to be seen whether these approaches can be applied uniformly and suitably in all IP related disputes. Moreover, there is progressive recognition of mediation as a suitable means to resolve IP disputes, as arbitration may not adequately address the specific requirements of the parties. On both these counts, Indian courts’ approaches may require rethinking.

Ratnaria Wahid from Universiti Utara Malaysia advocated for the creation of high-level educational resources that are free and openly available on the internet. To enable this, Ratnaria suggested that Massive Open Online Courses (MOOCs) can be path-breaking for creating an equitable and inclusive society as people from low-income countries will get access to high-quality educational resources. Howsoever laudable this idea may appear, it must be borne in mind that, firstly, all MOOCs are not free. Secondly, it is limited in scope because it cannot provide databases of high-quality educational resources. Thirdly, its real effectiveness should also be measured from the availability of technological infrastructure. Therefore, a more democratic approach would be to promote Open Access publication of journals and books to enable every user to get benefits from high-quality educational resources.

Evidently, IPIRA has achieved an impressive feat in attempting to shape an institutional approach towards addressing the specific needs of scholars from diverse settings. Also, due to resource constraints, often young scholars from developing countries are unable to get exposure to the latest ideas in the IP realm and develop thoughts to improve their scholarly work. In this respect, I am thankful to the WIPO Academy for sponsoring me and several other scholars to attend the Conference. The organizers should also be commended for their efforts in making the event as inclusive as possible. All in all, the IPIRA Conference has provided a new forum where scholars have the opportunity to enrich their learning by sharing ideas with other scholars. The preparation for the Second IPIRA Conference is already in motion, and hopefully many more scholars will join this vibrant community next year.

In a significant development for Indian patent law, the Madras High Court dismissed a writ petition challenging an IPAB order that effectively upheld a probiotic patent. This is one of the rare Indian cases, where a patent has been upheld by the IPAB and that order has effectively been validated by a High Court. Very well-reasoned, this decision by Justices R. Subbiah and C. Saravanan has important propositions for both patent law and administrative law. But first some background.

As we’d blogged earlier, Kibow biotech, a leading biotech company that effectively pioneered the use of probiotics for augmenting kidney function was granted an Indian patent covering its flagship product, Renadyl, a dietary supplement that augments kidney function and often reduces the need for kidney patients to undergo dialysis.

A local Gujarati company La Renon challenged this patent in a revocation proceeding before the IPAB in 2006, on the ground that the patent was obvious and not new etc. After hearing the parties, the IPAB dismissed the challenge. It was against this IPAB order that La Renon approached the Madras High Court in a writ petition arguing that the order of the IPAB was perverse. The Madras High Court, however, ruled against La Renon and effectively upheld the IPAB order. The order was uploaded on the court’s website only today, although the same was delivered on 10^th January.

From the vantage point of administrative law, the court makes it very clear there is a clear distinction between the scope of review in a writ jurisdiction and an appeal. The former review is far more limited than the latter. This is what the court rules in this regard:

“143. We are not exercising Appellate Court’s Jurisdiction under Article 226 of the Constitution of India. On the other hand, we have to examine the impugned order from the perspective of a Court exercising supervisory jurisdiction under Article 226 of the Constitution of India. The scope of writ petition against an order of the third respondent Appellate Board is limited. We can only examine whether there was any infirmity in the procedure adopted by the third respondent Appellate Tribunal while passing the impugned order.

144. We do not find any infirmity in the procedure adopted by the third respondent Appellate Tribunal while passing the impugned order. The impugned order also cannot be termed to palpably erroneous order on account of error on the face of record. We therefore find no grounds to intervene.”

The court also lays down the following propositions:

1. Burden of proof: when a patent is challenged, the burden of proof is on the one challenging. To quote from the decision, “[T]hough patent granted by a patent office is revocable under the provisions of the Act under Section 64 of the Act, yet the burden of proof to establish the grounds was with the petitioner…The onus of establishing invalidity on any of the grounds cannot be shifted to the patentee.”
2. A person challenging a patent must produce evidence (prior art) and argue how the prior art anticipates the patent. Merely throwing a ton of prior art is not enough. To quote from the decision,”[T]he third respondent Appellate Board has correctly observed that it is for the applicant to prove the case and it is not sufficient to make bald assertions in the pleadings and mere filing documents is not sufficient in revocation proceeding under Section 64(1)(d)(e) and (f).”
3. A person who had the opportunity to adduce evidence and make arguments before the IPAB to contest validity of patent and didn’t avail of the opportunity suitably cannot now come and demand a remand.
4. A person interested (for purpose of challenging a patent) is not just a manufacturer of a product. Therefore, although La Renon only markets and does not manufacture the product, it is still a person interested.

The decision is a significant one for Indian patent law and is lucid and well-reasoned. Hopefully, courts will be more mindful of their limited review powers in future; else proceedings will continue forever leading to wastage of time, resources and leading to more uncertainty for patentees/inventors.

Given that the US is still barking at India’s poor patent record (the latest GIPC report are testament to this), this decision needs to be thrown at them to indicate that Indian courts are not anti-patent! And that they will rule in favour of patentees, when the circumstances so demand.

If time permits, we hope to bring you a more detailed post on this.

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We’re pleased to bring to you a guest post by Eashan Ghosh on the recent decision of the Calcutta High Court in the GI and Certification TM infringement case filed by the Tea Board of India against ITC for use of ‘Darjeeling’ as part of the name of a refreshment lounge (‘Darjeeling Lounge’) in one of its hotels. Eashan has been in practice as an intellectual property advocate and consultant in New Delhi since 2011, and teaches a seminar on intellectual property law at National Law University, Delhi. Eashan writes about Indian intellectual property law, including a monthly review of Delhi High Court judgments, on his Medium page. He has written guest posts for us in the past as well (see here, here, here, here, here and here).

Certification Trade Marks and GI versus ‘Regular’ Trade Marks: The Calcutta High Court Ruling in Tea Board v. ITC

Eashan Ghosh

Earlier this month, a decision by the Calcutta High Court ruled against the Tea Board India in a certification trade mark and geographical indication (GI) infringement claim against ITC Limited. It dismisses in full, with a ₹100,000 (~$1400) costs award, the Tea Board’s claim over the use of ‘Darjeeling’ by ITC as part of its ‘Darjeeling Lounge’ at one of its Kolkata hotels. The decision closes proceedings before the court of first instance, over eight years after the Claimant filed suit in October 2010.

Upon institution, the Claimant’s motion for interim injunction was refused twice in less than a year, the latter in appeal by the Calcutta High Court in August 2011 (a post on the appeals decision was carried on this blog here). The Claimant moved the Supreme Court in December 2011.

The Supreme Court did not interfere with the August 2011 decision and eventually directed a return to the Calcutta High Court in January 2016, with an instruction to decide the case expeditiously on pleadings and admitted material alone. (The direction comes from an undertaking by the Claimant before the Supreme Court in March 2013 not to lead oral or documentary evidence, and to contest the case before the Calcutta High Court on material already presented.)

The Calcutta High Court framed issues in November 2016, before full judgment on February 4, 2019.

Three Findings

The decision returns three findings of interest.

First, it finds that the claim is barred by a limitation prohibition contained in Section 26(4) of The Geographical Indications of Goods (Registration and Protection) Act, 1999 (‘the GI Act’).

Second, the Claimant’s registration, as a certification trade mark registration under The Trade and Merchandise Marks Act, 1958, is limited to ‘goods’, and is ineffective against the Defendant here, whose business is in services.

Third, even failing the first two findings, the certification and GI registrations only protect the Claimant against a narrow class of infringements, and the Defendant’s actions do not infringe these rights.

I now discuss these findings in turn.

The Claim

The Claimant’s remit here requires it to take up representation over ‘Darjeeling Tea’. Against this Defendant, it asserts its registrations for a certification trade mark and GI, which seek to limit the identification of goods under ‘Darjeeling Tea’ to the tea estates in the Darjeeling district of West Bengal.

The claim makes three assertions.

First, it states that the association with ‘Darjeeling’ is proprietary and exclusionary (i.e. the Defendant is not allowed to use ‘Darjeeling’).

Second, it states that the Defendant’s use is misleading (i.e. the Defendant’s use associates itself with Darjeeling but does not originate from it).

Third, it states that the Defendant’s use is actionable as unfair competition and at passing off (i.e. the Defendant’s use is likely to be confused with the Claimant’s goods which do originate from Darjeeling).

The Section 26(4) Limitation

However, the Court finds that the substance behind these claims is secondary, since the Claimant’s case runs into limitation trouble.

Section 26(4) of the GI Act, to the extent it applies here, states that a Claimant loses to limitation:

• the right to file a claim
• against the use or registration of a trade mark (the Defendant’s ‘Darjeeling Lounge’)
• which infringes a registered GI (the Claimant’s ‘Darjeeling Tea’),
• if more than five years elapse between:
  • the date from which the alleged infringement has become known to the GI Claimant and
  • the institution of the claim for infringement.

Faced with this objection, the Claimant’s facts appear slightly frayed on the point. The Defendant asserts, uncontroverted, that its business under ‘Darjeeling Lounge’ commenced on January 1, 2003. The Claimant’s evidence discloses a notice of January 9, 2005 addressed to the Defendant on the subject. The Defendant’s own trade mark application was put to public notice on February 7, 2005. The Claimant’s own case elsewhere states that it became aware of the Defendant’s business in April 2005.

However, faced with a claim instituted on October 1, 2010, all these dates are handily beyond the five-year limitation under Section 26(4).

Certification Trade Marks under the 1958 Act

The second limb of the Claimant’s case asserts its certification trade mark rights under Sections Sections 69(c) and 75, and 78 of The Trade Marks Act.

The Court addresses this claim by first pressing a distinction between a “certification trade mark” and a “registered trade mark”.

It finds that the Claimant’s certification trade mark was registered under the 1958 Act, at a time when certification trade mark protection extended to goods only. Under Section 2(1)(e) of The Trade Marks Act, 1999, a certification trade mark now covers “goods or services”.

Since the Defendant here deals in services, a strict reading of the scope of the Claimant’s certification trade mark registration would mean that this registration is ineffective against the Defendant. This invites the Court to consider the repeal and savings provisions under The Trade Marks Act which succeeded the 1958 Act.

It rules, on balance, that a certification trade mark would continue to be in force and have effect under the 1999 Act. However, the effect of the Claimant’s rights under the 1958 Act would not be extended to full occupy a broader right under the 1999 Act.

“The repealing Section,” says the Court, “does not say that [the certification trade mark] issued under [the 1958 Act] would stand extended by the provisions of the [1999 Act].”

The distinction, therefore, is one between continuing effect (over goods alone) and extension (from goods to ‘goods or services’, as the revised Act provides) of the protection offered by this category of trade marks. [Elsewhere – and unconnected – the Court emphasizes that, under Sections 2(1)(e) and (f) of the GI Act, a registered GI offers proprietary rights in relation to goods.]

Different From ‘Regular’ Trade Marks?

Continuing with its certification trade mark discussion, the Court distinguishes this category of trade marks from what it calls “regular” trade marks. The principal point of difference, it observes, lies in the consequence of the certification trade mark registration.

This category of registration offers the Claimant “the authority to certify that any tea marked by the [‘Darjeeling’] name or logo, is guaranteed to be 100% Darjeeling Tea originating from the 87 tea gardens in the Darjeeling district of West Bengal and possesses certain organoleptic qualities and characteristics”.

On top of this, Section 78 offers such Claimants “the exclusive right to the use of the mark” in relation to the category of goods (or services, under the 1999 Act).

However, seeking a prohibitory injunction against this Defendant, there is no certification / verification aspect to the Claimant’s trade mark rights at all. The Court admits as much, noting that the Claimant’s certification trade mark “would stand infringed only in the event the Defendant certifies that a particular tea is ‘Darjeeling Tea’”. This evidently imagines certification trade marks in an altogether different space as against ‘regular’ trade marks.

To be sure, Section 75, the infringement provision which attaches to certification trade mark registrations, does not follow this distinction quite so readily. It permits infringement actions to be brought by such Claimants if they encounter use which is “likely to be taken as being [use] as a trade mark” in respect of the goods (or services, under the 1999 Act) that the Claimant’s certification mark is registered.

The influence of a simple, deceptive similarity-style infringement inquiry that would attach to ‘regular’ trade mark registrations, therefore, is evident. Given the setup of the Claimant’s case, though, there is little onus on this Court to examine this issue more thoroughly.

Section 22 and the Dilution Claim

Despite sufficient reason to close the claim on the Section 26(4) limitation alone, the Court discusses numerous other offshoots of the Claimant’s certification trade mark / GI registration claim. While largely surplus to requirements on these facts, the discussion does offer some useful insight to how similarly placed Indian courts might be minded to rule on such claims going forward. Two observations suffice to illustrate this.

First, the Court explores the statutory framework supporting the Claimant’s claim of GI infringement and passing off. It identifies passing off as a specie of the unfair competition genus under Section 22(1)(b) of the GI Act and its Explanations. It finds also that this risk of passing off is submerged in the present case because the businesses of the Claimant and Defendant are far removed from each other.

Second, the Court takes up the Claimant’s assertions that the ‘Darjeeling’ portion of the Defendant’s trade mark was adopted in bad faith, and that the use of ‘Darjeeling’ by the Defendant was likely to dilute the Claimant’s use of its certification trade mark / GI. Both are dismissed as unsupported by evidence.

On the bad faith allegation, it finds that the Defendant’s hotel facility was conceptualized / themed around West Bengal generally. (The fact that several parts of the Defendant’s facility are “named after West Bengal’s well-known geographical sites and dynasties”, is consistent with this motif.)

On dilution more broadly, it characterizes the Defendant’s hotel guest clientele as “high-end…educated and knowledgeable”, finds that the ‘Darjeeling Lounge’ has sufficiently restricted access, and that the services offered are unlikely to be confused with ‘Darjeeling Tea’. (There is a running mention early in the judgment of the Defendant’s facility serving beverages including Darjeeling tea, but this objection does not re-appear in the substance of the Court’s discussion.)

The consumer characterization, in particular, is in line with the elevated consumer recall Indian trade mark law has consistently associated with consumers of premium products and services.

A decision, therefore, that takes a measured step into an area of Indian trade mark / GI law with far fewer miles on it than ‘regular’ trade mark law. A decision, also, that puts down some vital markers – on Sections 22 and 26 of the GI Act and Section 75 of the Trade Marks Act especially – that may be more meaningfully addressed in the future.

Disclaimer: The author’s colleagues represented the Defendant before the Calcutta High Court.

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Eashan Ghosh wrote a guest post on a recent decision of the Calcutta High Court in a GI and Certification TM infringement case filed by the Tea Board of India against ITC for use of ‘Darjeeling’ as part of the name of a refreshment lounge called the Darjeeling Lounge in one of its hotels. In his analysis of the decision, he focussed upon the interpretation of the Court with regard to limitation under Section 26(4) and passing off under Section 22 of the GI Act. He further delved into the interpretation of certificate trade mark rights under the Trade Marks Act.

We had another guest post by Sumit Sonkar on his observations on the First IP & Innovation Researchers of Asia Conference, which was recently held in Kuala Lumpur, Malaysia on January 31 and February 1, 2019. In his post, he observes that the Conference was a significant opportunity for young scholars from developing countries to get exposure to the latest debates and ideas in IP law.

Pankhuri wrote a post on a recent decision of the Madras High Court, wherein it dismissed a writ petition challenging an IPAB order that had upheld a probiotic patent granted to Kibow Biotech for its product Renadyl. The Court examined its power under Article 226 and stated that since there was no infirmity in the procedure adopted by the Appellate Tribunal while passing the impugned order, they had no grounds to intervene.

Other Developments

Indian

Judgments

M/s. Khushi Ram Behari Lal v. M/s. Jaswant Singh Balwant Singh – Delhi High Court [January 21, 2019]

The dispute between the Parties arose on account of registration of a mark. The Petitioner intended to register the mark “TRAIN BRAND WITH DEVICE OF TRAIN” but the Respondent had already registered and was duly using the mark “TRAIN” in the business of selling rice. The Respondent thereby filed opposition proceedings against the Petitioner and the Registrar allowed such opposition proceedings. Aggrieved by the decision of the Registrar, the Petitioner approached the Intellectual Property Appellate Board claiming that the decision of the Registrar was wrong as many invoices of the Respondent had been forged. The Appellate Board noted that though many invoices appeared suspicious, the Respondent had been dealing in the business of rice and had opposed the Petitioner’s application in the first instance. The Court set aside the order of the Appellate Board on the ground that the Respondent had presented forged invoices in proving the use of its mark, a fact which could not be ignored. Moreover, the Court also stated that the Petitioner’s mark was a label mark and had been used uninterruptedly used for almost 22 years.

News

• Indian pharma lobby seeks removal of India from US patent violator list
• Skoda Auto India Settles Trademark Row With Monte Carlo, Relaunches Rapid
• Taxman wants to charge GST on trademark and logo use by subsidiaries

International

• No clarity yet from Beijing on intellectual property: USDA trade official
• As expected, the EU has advanced the catastrophic Copyright Directive without fixing its terrible defects
• Apple Submits Blueprint of Foldable Smartphone For Patent: Here Are The Details

We’re pleased to announce that University of Pennsylvania Law School and IDIA are organising an IP conference ‘A 3-D Perspective on Indian Intellectual Property: Distinct, Diverse and Democratic?’ on March 5, 2019. The conference will be hosted by the Indian Law Institute, New Delhi.

It has a stellar cast of speakers drawn from the IP profession, industry, civil society, academia and government. Mr. Rajiv Aggarwal (Joint Secretary, DIPP) will deliver the opening address. And Justice Aftab Alam (who delivered the historic Supreme Court verdict in the Novartis patent litigation and section 3(d)) will be a special guest.

For further details, please see the post below. See also our link here for a near final version of the conference schedule and speakers etc. 

A 3-D Perspective on Indian Intellectual Property: Distinct, Diverse and Democratic?

Date: March 5, 2019

Time: 9:30 am to 5:30 pm

Venue: Indian Law Institute, New Delhi

Organised by: University of Pennsylvania Law School and IDIA

Hosted by: Indian Law Institute (ILI)

Opening Address: Rajiv Aggarwal (Jt. Secretary, DIPP)

Special Guest: Justice Aftab Alam (Former Judge, Supreme Court of India)

About the Conference

Indian patent law achieved international notoriety with section 3(d). A rather unique provision that sets the bar for drug patents relatively higher than most other countries. One which caused considerable consternation for a number of drug majors, and divided the world into two camps: those that hailed section 3(d) and those that hated it!

Notwithstanding this ideological divide, there is no gainsaying the fact that section 3(d) is a “distinct” provision. One that dared to do differently in a post TRIPS world, where the pressure to conform to a globalised patent script was intense. To this extent, section 3(d) promotes diversity in global patent norms.

Section 3(d) also showcases the strength of a democracy, in that it came after extensive advocacy by public interest groups that were able have a say in an otherwise opaque law making process dominated in the past by largely industrial interests.

Drawing on these attributes of section 3(d), this conference seeks to explore whether other provisions in Indian IP law (in particular copyright law and plant variety protection law) reflect similar values: of distinctiveness, diversity and democracy. It will bring together different stakeholders in the Indian IP ecosystem, including lawyers, industry representatives, civil society activists and policy makers.

In particular, the panels will discuss the following:

1. Patent Law: Section 3(d), patent working, patent oppositions, SEP issues and injunctions etc.

2. Copyright Law: Mandatory royalty sharing provisions for film/musical works, educational exception, online intermediary liability issues etc.

3. Plant Variety Protection Law: India’s unique provisions for plant breeders, farmers rights, TK issues, Biodiversity and IP interface etc.

Program Schedule

1. Registration (9.30 am onwards)

2. Welcome Address  (10 – 10.15 am)

Prof Shyamkrishna Balganesh, Professor of Law and Co-Director of the Centre for Technology, Innovation and Competition, University of Pennsylvania Law School.

Prof (Dr) Manoj Kumar Sinha, Director, Indian Law Institute.

3. Introduction to the Theme of Conference (10.15 am to 10.30 am)

Prof (Dr) Shamnad Basheer, Bok Visiting Professor, University of Pennsylvania Law School and Founder, IDIA.

4. Opening Address  (along with Q/A) (10.30 -11.00 am)

Mr. Rajiv Aggarwal, Joint Secretary, DIPP, Ministry of Commerce and Industry, Government of India

5. Tea: 11.00 to 11.15 am

6. Panel 1 – Patents (11.15 am – 1 pm)

7. Lunch (1-2 pm)

8. Panel 2 – Copyright (2 -3.45 pm)

9. Tea (3.45 -4 pm)

10. Panel 3 – Plant Variety, Biodiversity and TK (4.00 – 5.45 pm)

11. Valedictory (6.00 pm)

12. Dinner (7 pm onwards)

Sessions and Speakers

Panel 1: Patents 

• Dr. KS Kardam (Senior Joint Controller of Patents and Designs, Indian Patent Office)
• Leena Menghaney (Regional Head (South Asia), Access Campaign at Medécins Sans Frontières)
• Dhruv Anand (Partner, Litigation, Anand & Anand)
• Sheetal Chopra, India Lead, IPR Advocacy, Ericsson
• Industry Representative (Other sector)

Moderator: Prof. (Dr.) Shamnad Basheer, Bok Visiting Professor, University of Pennsylvania Law School and Founder, IDIA

Panel 2: Copyright

• Prof. (Dr.) VC Vivekanandan (Dean, School of Law, Bennett University)
• Ameet Datta (Partner, Saikrishna & Associates),
• Dr. Arul George Scaria (Assistant Professor of Law and Co-Director of the Centre for Innovation, Intellectual Property and Competition, NLU Delhi)
• GR Raghavender (Joint Secretary, Department of Justice, Ministry of Law and Justice, Government of India)
• Mishi Choudhary (SFLC) (TBC)
• Industry Representative (internet/digital industries)

Moderator: Prof. Shyamkrishna Balganesh, Professor of Law and Co-Director of the Centre for Technology, Innovation and Competition, University of Pennsylvania Law School.

Panel 3: Plant Variety Protection, Biodiversity and TK

• Suresh PJ (Regulatory Affairs Lead, Monsanto India Limited)
• Prabhakar Rao (CMD, Nuziveedu Seeds)
• Deepa Kachroo Tiku (Partner, K&S Partners)
• VK Gupta (Former Director TKDL and Senior Advisor, CSIR)

Moderator: Prashant Reddy (Senior Fellow, Vidhi Centre for Legal Policy)

Registration

The registration fee for the event is as follows:

• Conference at ILI + Reception/Dinner at Taj Mansingh: INR 5,000
• Conference at ILI only (with lunch/refreshments): INR 3,000
• Students (Conference at ILI only with lunch/refreshments): INR 1,500

To register, please RSVP to Svetlana Correya from IDIA at svetlana@idialaw.com by February 2, 2019.

About University of Pennsylvania Law School

A member of the Ivy League, the University of Pennsylvania Law School is the law school of the University of Pennsylvania, in Philadelphia, Pennsylvania. One of the oldest law schools in the world, Penn law’s origins go back to 1790 when the University of Pennsylvania’s first lectures in law was delivered to President George Washington and the members of his cabinet by James Wilson, a signer of the US Declaration of Independence and US Constitution. Penn Law began offering its first full time program in law in 1850. Today, it continues as a world leader in legal education with world-class faculty, emphasis on cross-disciplinary education and hosting various groups of highly competitive and motivated student pool on its campus. The law school publishes the University of Pennsylvania Law Review, the oldest continuously published legal periodical in the US. Among the schools alumni are a US Supreme Court Justice, several state Supreme Court Justices and supreme court justices of other countries, as well as several founders of law firms, university presidents and deans, business entrepreneurs, and politicians.

Website: https://www.law.upenn.edu

About IDIA

The IDIA project is a pan India movement to empower underprivileged communities by creating top quality lawyers from within. IDIA is run on the backbone of highly passionate student volunteers who travel to various parts of India to identify underprivileged students with an aptitude for the study of law. IDIA then rigorously trains these students for the leading law entrance examinations. Once selected to the top law schools, IDIA arranges for sponsorships/scholarships and mentorship schemes to help these students blossom to their fullest potential. IDIA’s mission is to create a cadre of exceptional lawyers from within underprivileged communities who are Creative, Holistic, Altruistic, and Maverick Problem Solvers (CHAMPS).

Website: https://www.idialaw.com

About Indian Law Institute

Indian Law Institute was founded in 1956 primarily with the objective of promoting and conducting legal research. Among the objectives of the Institute are cultivating the science of law, promotion of advanced studies and research in law so as to meet the social, economic and other needs of the Indian people, promotion of systematization of law etc. Hon’ble CJI is the ex-officio President of the Institute. The Union Minister of Law & Justice is its Ex-officio Vice-President.

Website: http://www.ili.ac.in                                                                        

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It’s the one we’ve all been waiting for. Spotify, the Swedish music-streaming service, finally launched in India after months of speculation as to when and how the service would reach Indian consumers. Yet, an as yet unknown number of works in Spotify’s catalogue are in a precarious position, and could at any moment be pulled from the service.

While we enjoy tunes from the world’s largest online streaming service, the background music to the launch is an intense legal battle with Warner Chappel Music Ltd. (WCM), a music publisher in the Bombay High Court, which epitomises the legal uncertainty in copyright licensing in India, particularly concerning on-demand interactive digital streaming services, which have emerged as the primary means by which we listen to music online. (Long Post)

Spotify’s Nuclear Option: Section 31D and the Compulsory Licensing of Musical Works

While licensing negotiations, ostensibly the cause behind the delay in the launch, have been going on for months, the public saga began when Spotify declared its intention to invoke the Copyright Act’s statutory licensing scheme under Section 31D.

Section 31D of the Copyright Act, introduced in 2012, allows any broadcasting organisation to communicate to the public, any previously published musical work or sound recording, by invoking a compulsory license through a unilateral notice, and paying royalty rates determined by the Intellectual Property Appellate Board, in the manner prescribed under the Copyright Rules (Rules 29-31).

In response to certain ‘representations’, the Department of Industrial Policy and Promotion (DIPP) in 2016 released an Office Memorandum which brought ‘internet broadcasting organisations’ under the ambit of the compulsory licensing scheme under Section 31D.

On February 25, Spotify invoked the compulsory licensing scheme under Section 31D by filing a public notice with the IPAB of its intention to broadcast the works of WCM as an internet broadcaster. The notice, inter alia, states that Spotify intends to broadcast sound recordings in which WCM has rights to the underlying musical works. Strangely, the notice specifically excludes the broadcast of sound recordings over which WCM has a right, even though Section 31D allows for this as well. According to Spotify, WCM has the underlying rights (including rights in ‘as little as 1% of the composition’) to sound recordings in which licenses have already been obtained, and alleges uncompetitive conduct on behalf of WCM in withholding a voluntary license.

Unlike the compulsory licensing provisions under the Patents Act, Section 31D does not require the licensee to make efforts to obtain a voluntary license. Even so, Spotify’s notice states that the reason for resorting to Section 31D is due to the unreasonableness of WCM in refusing to grant a license to Spotify. It supplies further rationale for its actions, stating that it would lead to a loss of works to the public, and cause harm to Spotify as well as the artistic community. It also deposited 5,28,000 EUR with the Copyright Office as ‘advance royalty’, although its unclear how this specific sum was arrived at.

As per the notice, Spotify intended to (and did) launch the service and invoke the license from 26^th February itself, a day after the notice was served, which itself presents an anomaly. Section 31D and the Copyright Rules suggest that the statutory licensing scheme can only be invoked after the determination of royalty rates by the IPAB. Yet, until present, these rates have not yet been determined for either radio, TV or internet broadcasters, which makes it unclear whether they were authorised to jump the gun and begin their ‘broadcast’ prior to the procedure under Section 31D being completed.

In response to the notice, and anticipating infringement of copyright, WCM sued Spotify in the Bombay High Court, before Mr. Justice Kathawalla, seeking an injunction, who issued an interesting order on February 26.

Placing the application for directions on March 25^th, the Court in its order of February 26, crafted a rather peculiar interim arrangement – Spotify was to deposit a sum of 6.5 Crores with the High Court (once again, no justification for this sum), and refrain from pursuing their statutory licensing application before the IPAB. At the same time, the Court’s order appears to allow Spotify, in the absence of a voluntary or statutory license, to use WCMs catalogue of musical works, subject to the remuneration being offset upon the final disposition of the suit.

‘Big Tech’ v ‘Big Music’ – What will be the Future of Music Copyright in India?

Regardless of the Court’s interim arrangement, at the heart of the case is a battle for the soul of music copyright in the digital age – a battle echoed in courts and parliaments around the world, as the traditional music licensing and publishing industry tries to cope with new forms and models of digital communication. The frequent proclamation of a ‘value gap’ in the distribution of remuneration received by music publishers vis-à-vis technology platforms is symptomatic of this battle. While Spotify has not generally been at the receiving end of the scorn of the publishing industry (as opposed to platforms reliant on user-generated content, like YouTube), the invocation of compulsory licensing could soon place it in a similar bracket.

The legal battle against Section 31D captures this battle well. The constitutionality of the section has been frequently challenged – both before the Supreme Court as well as various High Courts. The challenge is based on the argument that Section 31D privileges the rights of broadcasting organisations over the rights of music publishers, and goes against the freedom to contract and the fundamental right to carry on business under Article 19(1)(g). There is some merit in this argument, as has been argued on this blog in the past, as Section 31D is particularly broad and permissive, without giving due (or any) account to the rights owner. Yet, suitable safeguards, for example, requiring good faith efforts to obtain voluntary licensing and factoring in anti-competitive actions by music publishers, could save such a scheme.

The situation gets even more complex when it comes to on-demand music services and the legality of the DIPP’s Office Memorandum extending 31D to online streaming. This concerns the jurisdiction of DIPP to issue an interpretation of Section 31D, and whether the justifications for statutory licensing of musical works apply outside the context of ‘traditional’ broadcasting forms, particularly in the context of ‘on-demand’ streaming and digital reproductions of musical works.

Section 31D covers the broadcasting of musical works and sound recordings, which, under Section 2(dd) relates to the right of communication to the public, which is defined under Section 2(ff), and includes the right to make a ‘performance’ available “whether simultaneously or at places and times chosen individually.” On the one hand, this language could ostensibly cover on-demand streaming services. However, the counter-argument to this could be that the relevant right which must be licensed by Spotify must also include the right of reproduction (which includes ‘electronic’ storage, which could extend to any form of data transfer, including on-demand, downloading as well as non-interactive streaming), which is distinct from the right to communicate to the public, and is not granted under a Section 31D license.

While some laws, as in the US, have made a distinction between interactive and non-interactive broadcasters for the purpose of obtaining statutory licenses, this issue has not been deliberated by Indian legislators, and we are forced to read abstractly into the language of the Copyright Act to apply the law to a state of technology which was presumably not apprehended while drafting these sections.

Ultimately, Section 31D is a provision for taking into account public interest considerations, to ensure availability and access to cultural works to the public, in which broadcasters play a crucial role. Statutory licensing schemes for broadcasts (in many forms) are a part of copyright laws across the world. Do such considerations change when applied to the digital age? Should laws encourage greater distribution of works to the public, which ostensibly privileges online platforms and ‘broadcasters’, including large (and wealthy) platforms like Spotify and YouTube, or should the interests of publishers and artists be at the forefronts? How should this balance be drawn? Ideally, the arbiter of such a dispute is lawmakers and not courts, who need to determine the ideal balance of copyright and the public interest and engage with the changes brought about by interactive and non-interactive digital music services.

Another Copyright Conundrum: Spotify’s Licensing of Musical Works in the Aftermath of IPRS v Aditya Pandey

Another issue which piques my interest in this dispute is the applicability of the Supreme Court’s interpretation of the rights in sound recordings vis-a-vs the rights in underlying musical works (compositions and lyrics). To recall, in IPRS v Aditya Pandey, the SC had stated, in a rather disappointing and anomalous decision, that when musical works are licensed for the purpose of sound recordings, the rights in those works are subsumed within the sound recordings. Therefore, the licensing of such sound recordings do not require further, separate licenses for the underlying work – essentially bundling the rights in one form, placing the liability on authors of musical works to negotiate with the recording industry than with the eventual user of the song.

How would this apply in the present dispute? To go back to Spotify’s 31D notice, the company specifically stated that it proposes to statutorily license only musical works in cases where the sound recordings of those works have been legally licensed. If the Aditya Pandey decision stands, there is no requirement for Spotify to include such a license, although for post-2012 licenses, there is a requirement for the sharing of royalties obtained through licensing, with the authors of the underlying works. Why, then, did Spotify opt for the statutory licensing scheme instead of invoking this decisions?

The thicket of copyright controversies that this singular case throws up shows us that there’s much introspection and reform required in Indian copyright law, to favour authors, publishers, and most importantly, the public’s access to music, arts and cultural work.

A reminder to our readers about the upcoming UPenn Law School & IDIA Conference on ‘A 3-D Perspective on Indian Intellectual Property: Distinct, Diverse and Democratic?’ which we had posted about earlier here. Those interested in attending the conference, please note that registration closes tomorrow, March 2.

The conference will be held on March 5 at the Indian Law Institute, New Delhi. The valedictory address will be delivered by Justice Ravindra Bhat (Delhi High Court). Also, the proceeds from conference will go towards IDIA, a project which empowers underprivileged children though legal education. For all other details of the conference, please see our updated post here and the final conference schedule & speakers’ list here.