Divij broke the news about Spotify’s launch in India. In his post, he covers the legal battle between Spotify and Warner Chappel Music Ltd. before the Bombay HC. He also analyses the applicability of Section 31D of the Copyright Act to the facts of the case. He further questions Spotify’s decision to opt for statutory licensing in light of the principles laid down in IPRS v. Aditya Pandey decision.

Pankhuri notified us about a conference on “A 3-D Perspective on Indian Intellectual Property: Distinct, Diverse and Democratic?” organised by University of Pennsylvania Law School and IDIA . She even released a reminder about the event. The conference is to be held in Delhi on 5th March, 2019.

Other Developments

News

• Thousands in Berlin protest EU’s online copyright plans
• BlackBerry sues Twitter over patent infringement
• Facebook sues four Chinese companies over trademark infringement

We’re pleased to bring to you a guest post by Kartik Puttiah. Kartik is the co-founder of InvnTree IP Services. He has over thirteen years of experience in patent consulting. He specialises in patent drafting and prosecution, and routinely advises his clients on patent portfolio development. He also works with his clients in addressing patent risks. He obtained his B.E. degree in Industrial Engineering and Management and is also a registered patent and trademark agent.

Analyzing Subject Matter Excluded from Patenting in the Backdrop of Lawsuits Involving Monsanto

Kartik Puttiah

In a judgment passed by the Supreme Court of India on January 08, 2019, an order of the Division Bench of the Delhi High Court holding a key of Monsanto as invalid, was set aside. The patent is key to Monsanto’s Bollgard II Bt cotton business vertical. The Supreme Court set aside the Bench’s order primarily because the patent was held invalid in the absence of a trial, and it bought into the argument of Monsanto that it had not waived its rights for a trial in the matter of validity of its patent. Therefore, it is important to note that Supreme Court did not scrutinize the patent in question to declare the patent valid. The question of validity of the patent is likely to be dealt with in a trial court, and eventually in the Supreme Court, given the stakes, the eventual outcome of which will be extremely important to the biotechnology industry, and more specifically to the agro-biotech industry. The decision on the validity of the patent will have a major impact on what is considered to be patent eligible subject matter in the biotech industry. The decision may also hugely impact claim drafting and IP strategy that may be adopted to protect subject matter comparable to the one claimed in the patent.

The patent includes two sets of claims, 1-24 and 25-27. The first set of claims, 1-24, cover a method of producing a transgenic plant, whereas the second set covers a product, viz., a nucleic acid sequence. The independent method claim 1 includes the step of incorporating a Nucleic Acid Sequence (NAS) into the genome of a plant. The independent product claim 25 on the other hand claims the NAS itself. The method claim targets those companies which prepare donor seeds that have NAS, and such companies are few in number. The claims which are relatively of substantial commercial value are the product claims 25-27. The product claims target those companies who prepare hybrid seeds, which are derived from a process involving the donor seeds comprising the claimed NAS. Consequently, the hybrid seeds will include the NAS, and therefore map on to the product claim.

While the validity of the process claim may be questioned, the parties who are up against Monsanto are more interested in invalidating the product claims. I will discuss later on in the post about the far-reaching impact of the product claims in question. For now, the independent product claim 25 is reproduced below:

25. A nucleic acid sequence comprising a promoter operably linked to a first polynucleotide sequence encoding a plastid transit peptide, which is linked in frame to a second polynucleotide sequence encoding a Cry2Ab Bacillus thuringiensis 8-endotoxin protein, wherein expression of said nucleic acid sequence by a plant cell produces a fusion protein comprising an amino-terminal plastid transit peptide covalently linked to said 5-endotoxin protein, and wherein said fusion protein functions to localize said 5-endotoxin protein to a subcellular organelle or compartment.

The first part of the claim, appearing before the expression “wherein”, includes elements of the product (NAS), and the second part of the claim recites the consequence of its use.

The validity of the patent is challenged based on the provisions of § 3(j) of The Patents Act, 1970 (“Act”), which excludes patenting of plants and animals in whole or in part, as well as seeds, varieties, species, and essentially biological processes for production or propagation of plants and animals. However, said section allows patenting of microorganisms.

The argument used to challenge the validity is that NAS by itself is inert and inanimate, and its only use is when it is incorporated into a plant genome to form a seed or a plant, and seeds and plants are excluded subject matter. Although I agree with the assertions in relation to the nature and utility of NAS, I am not convinced that the Act, as it stands, allows for the patent to be rejected or invalidated based on such a contention. This is so because, as per this argument, it appears that it is not the subject matter of the claim but its industrial application (which is not necessarily the subject matter of the claim), which is scrutinized to check whether it falls within the scope of excluded subject matter. Such an approach is flawed and it is the subject matter and not the industrial application (when not considered part of the claim) of the subject matter that should be scrutinized to reject or invalidate a claim based on the provision of excluded subject matter.

I will suggest a few analogies to demonstrate the faults in the argument that a claimed subject matter should be classified as being within the scope of excluded subject matter if its only use or industrial application falls within the scope of excluded subject matter. In the first analogy, consider a tool that is developed for performing surgery. In this case, the tool by itself is inert and inanimate, and its only use is in a surgical process, which is excluded subject matter under § 3(i). Similarly, consider a pharmaceutical product that is developed to fight cancer. In this case again, the product by itself is inert and inanimate, and its only use is in a medical process (consumption of the drug as per a prescribed dosage), which is also excluded subject matter under § 3(i). Going by the argument based on “use”, both the surgical tool and the pharmaceutical product should be considered to fall within the scope of excluded subject matter. Therefore, if a patent is held invalid on the basis of “use”, there would be practically a blanket ban on patenting of pharmaceutical products, which is clearly not the legislative intent, given the amendments made to the Act in the past to comply with TRIPS.

Having made arguments in favour of upholding the validity of the patent, I now look at the ground level impact of upholding the validity of the patent. It is important to note that it is the NAS that is claimed, and not the seed. Assuming that the claimed NAS is patent eligible, consider the potential infringers. Primarily, the hybrid seed companies who produce and sell seeds that include the claimed NAS are potential infringers, and so are farmers who use such seeds. Therefore, at present, the farmers are at the mercy of the patent owner, who has gone against the hybrid seed sellers (companies) and not the users (farmers). While it is certain that no company will make the mistake of filing patent suit against farmers in India, given how politically sensitive such an action would be, there is nothing in the Act that stops the patent owner from proceeding against the farmers.

Given this, the question is whether there is legislative intent expressed in the Act to shield farmers from patent suits. In my view, one may infer that there is legislative intent to shield certain activities of farmers from infringement, since § 3(j) excludes from patenting, plants in whole or in part, seeds, varieties, species and essentially biological processes for production or propagation of plants, which are used or produced by farmers. Although § 3(j) indirectly expresses the legislative intent to shield farmers from patent suits, to the extent the legislature could envisage patent threats to farmers, the protection offered by the language used in § 3(j) is inadequate. This is best understood from the example of seeds, which, though not patentable, can still include patentable subject matter (NAS), as discussed, thereby making farmers vulnerable to patent suits. The vulnerability of farmers to patent suits may be understood from the experiences in foreign countries, and the legislature should make amendments to the Act at least now, instead of assuming that patent suits are unlikely to be filed against farmers in India.

Although the amendment to shield farmers could be made by altering the language of § 3(j), I believe that such an amendment could lead to more complications. Instead, the Act may be amended, say, by adding a clause to § 47, to exclude certain acts by farmers from being considered as patent infringement. The reason why I propose such an addition rather than amendment of § 3(j), is because, I believe that it would be in line with the legislative intent to encourage inventions of the nature claimed in the patent. Such an encouragement is possible only when hybrid seed companies, like the ones Monsanto is going after, are still within the ambit of patent infringement. An amendment to § 3(j) may exclude both the hybrid seed companies and the farmers from patent infringement, whereas it may be legislative intent to shield only farmers.

Another concern in holding the patent valid is the impact on the price of such seed. A valid patent means that the seed companies will have to pay a licencing fee to the patent owner, which will eventually be passed on to the farmers. However, while the Act by way of § 84(1)(b) has provision to impact pricing, invalidation of the patent is certainly not the answer to pricing concerns. The government is and continues to regulate trait value to be paid to patent owner, which I believe is the right approach to tackle pricing concerns.

In conclusion, I believe that the subject matter as claimed doesn’t fall within the scope of excluded subject matter, and hence the validity of the patent should be upheld. The seeds produced by seed companies, and therefore the seed companies, should be within the ambit of patent infringement. Further, The Patents Act, 1970 should be amended to introduce a clause to shield certain acts of farmers from patent infringement. Additionally, price control of certain farm inputs should be carried out by calibrating trait value, as is being done currently.

Image from here

Image from here

We’re pleased to bring to you a guest post by Alphonsa Jojan. Alphonsa teaches at Tamil Nadu National Law University, Trichy. She has written a guest post for us earlier as well.

Developing Bio-Cultural Jurisprudence for Securing Rights of Indigenous Peoples and Local Communities – Divya Pharmacy v. UoI

Alphonsa Jojan

On 21^st December, 2018, the Uttarakhand High Court delivered its judgment (previously covered on the blog here) on a contentious issue under the Biological Diversity Act: whether  Indian companies, which have no foreign participation in terms of shareholding or management, need to share benefits with local communities under the Biological Diversity Act (BD Act). This question has been flooding various forums, including the Uttarakhand High Court, Nagpur Bench of Bombay High Court and the Central Bench of National Green Tribunal. Interpreting the law in this context for the first time, Justice Sudhanshu Dhulia held that Indian companies will come under the regulatory purview of State Biodiversity Boards (SBBs) under Section 7 read with Section 23 of the BD Act, as SBBs have the power and duty to collect the fair and equitable benefit sharing fee as indicated in the 2014 Guidelines on Access and Benefit Sharing Regulations (2014 ABS Regulation) notified by the Ministry of Environment, Forest and Climate Change. This ruling by the High Court is based on a purposive interpretation of the BD Act relying on India’s international obligations towards indigenous peoples and local communities when resources they conserve and knowledge they hold are accessed and used. These obligations applicable to all actors were introduced through the Convention on Biological Diversity (CBD) and crystallised by the later developments such as the Nagoya Protocol to which India is a signatory.

The judgment was passed in a writ petition filed by Divya Pharmacy, a trust which uses various herbs collected from Uttarakhand for manufacturing ayurvedic medicine and nutraceutical products. The petition challenged the notice served by the Uttarakhand Biodiversity Board directing the trust to deposit a benefit sharing fee with the Board.  The primary contention of the petitioner trust was that being a purely Indian company, the BD Act did not create any obligation on it to pay benefit sharing fee for using biological resources collected from India. In addition to this, the trust also argued that SBBs do not have powers to impose fair and equitable benefit sharing fee.

BD Act – A beneficial legislation for Indigenous Peoples and Local Communities (IPLC)

The Court rejected these arguments by anchoring its reasoning on the principles of conservation, sustainability and rights of indigenous peoples and local communities (IPLCs). Instead of following a literal reading of the provisions of the BD Act, the Court enquired into the purpose behind its enactment and considered BD Act as a beneficial legislation. It located the purpose in the Preamble of the BD Act, which links the Act to the Convention on Biological Diversity (CBD) and various other international treaties and commitments. The Court referred to these international commitments as movements encapsulating various struggles: such as the struggle of developing countries to conserve their biological resources from exploitation and extinction and the struggles of indigenous peoples to conserve their traditional knowledge and culture.  Unlike many other takes on the BD Act, which focus on bio-piracy as well as trade and intellectual property rights, the reasoning of this judgment is based on the inter-play of the three objectives of the Act–conservation, sustainability, and fair and equitable benefit sharing for providing access (ABS).

The third objective of the Act, Fair and Equitable Benefit Sharing (FEBS), is given meaning by the Court by placing reliance on India’s international commitments to give rights to indigenous peoples and local communities.  This becomes apparent as the Court cites Article 8(j) of CBD which encourages parties to the Convention to respect, maintain, apply the traditional knowledge, innovations and practices relevant for conservation and sustainable use; and encourage equitable sharing of the benefits arising from their use. The Nagoya Protocol on Access to Genetic Resources and Fair and Equitable Sharing of Benefits adopted under CBD, which elaborates on the ABS, is also relied on to reach the conclusion that indigenous peoples and local communities require protection not only from outside but also from within India. This interpretation of BD Act to impose benefit sharing obligation on Indian entities requires reading the BD Act beyond the black letters, taking into account the later international developments, including the Nagoya Protocol which entered into force in October 2014.

On this basis, the Court ruled that maintaining a distinction of a purely Indian commercial use and non-Indian commercial use is absurd, since for a meaningful recognition of indigenous peoples’ and local communities’ biodiversity stewardship, sharing of benefits arising from any commercial use of biological resources traditionally conserved by them is quintessential. In this context, it is apt to recall that one of the earliest examples of benefit-sharing of commercial utilisation of traditional knowledge and resources is by Indian entities- Kottakkal Arya Vaidya Sala and Tropical Botanical Garden and Research Institute- with the Kani tribes of Kerala.

In many ways, one can see the Court slowly developing an Indian jurisprudence on bio-cultural rights by establishing property rights for the communities over resources that have been traditionally conserved by them and/or have traditional knowledge over such resources.  It is not surprising to read such an affirmation of bio-cultural rights from a Court which has in the recent past (Lalit Miglani v. State of Uttarakhand, Mohammed Salim v. Uttarakhand) upheld rights of nature, river etc., drawing inspiration from international jurisprudence.

A mammoth task for the NBA and the SBBs to develop guidelines to facilitate negotiations and deliver shared benefits to communities

While this judgment can have ramifications on similar issues that are pending before different forums, it is more importantly a wake-up call for the National Biodiversity Authority (NBA) and the State Biodiversity Boards (SBBs) to address the long standing criticism of their failure to make mechanisms for identifying benefit claimers and sharing benefits with them. At present, the users while filling the application form are required to provide details of benefit claimers. The NBA or the SBB does not share the responsibility of identifying the benefit claimers. No protocols for following the cardinal principles of the CBD and the Nagoya Protocol such as seeking prior informed consent of IPLCs before access, and facilitating negotiations with them for developing mutually agreed terms of benefit sharing are elaborated in detail in the Indian biodiversity laws or policies. This is despite the fact that the NBA under Section 21 of the BD Act is entrusted with the responsibility to facilitate the negotiations of the terms and conditions of the access and utilisation of the accessed biological resource or knowledge associated.  The fact that applications under the BD Act are not publically accessible makes the process of access and benefit sharing opaque and immune to public scrutiny. Neither the Ministry of Environment nor the NBA speaks to these gaps in the 2014 ABS Regulation or in the recent Guidelines for processing ABS applications under Section 7. Similarly, there are no provisions for public hearings, like that in the Environmental Impact Assessment Notification, 2006, for voicing the concerns of the local communities with respect to access or benefit sharing terms. The 2014 ABS Regulation only provides that where benefit claimers are not identified, the funds will be used to support conservation, sustainable use of biological resources and to promote livelihoods of the local peoples from where the biological resources are accessed.

Unless explicit rules as well as demonstrable models and case studies for benefit sharing with communities are developed, there will be mounting attacks on the utility and effectiveness of the Act from all quarters, including from indigenous peoples and local communities.  Thus, it is imperative that the authorities take initiatives to show that the institutions under the BD Act are capable of identifying benefit claimers, facilitating ABS negotiations and sharing the benefits with the local communities and indigenous peoples for their role in stewardship. These efforts will strengthen the case for the expanded reach of Biological Diversity Act.

We’re pleased to bring to you a guest post by Swaroop Mamidipudi. Swaroop is an advocate practicing in copyright law at the Madras High Court. He has guest blogged for us in the past as well (see here and here).

Section 31D of the Copyright Act Does Not Cover Internet Broadcasting

Swaroop Mamidipudi

The Spotify litigation (covered here) centres around the question that has been simmering around the Indian copyright scene for some time – does the statutory licensing regime under section 31D cover internet streaming services such as Spotify or Saavn?

While legal opinion seemed to be divided on the issue, the Central Government through the Department of Industrial Policy & Promotion released an ‘Office Memorandum’ (‘OM’) on September 5, 2016 regarding the inclusion of ‘Internet Broadcasting Organisations’ under the purview of statutory licensing as per s 31D of the Copyright Act, 1957 (‘the Act’).

The effect of this OM was that the owners of copyright would be bound by the rates of royalty as fixed by the Copyright Board for internet-based streaming rights of a particular work. Two issues arise out of the OM: Does the Central Government have the right to issue such an OM and is it binding? Is the OM legally sound?

Central Government’s power to issue the OM

The Act sets up two main bodies to administer it, namely the Copyright Office and the Copyright Board. Certain functions are given specifically to the Copyright Office, which is headed by the Registrar of Copyrights and his subordinates, and other powers, mostly adjudicatory or quasi-judicial in nature, are given to the Copyright Board.

The principal function of the Copyright Office is to maintain a Register of Copyrights of the names, addresses of authors and owners of the Copyright for the time being and other relevant particulars may be entered. As per s 9 of the Act, the Copyright Office is under the immediate control of the Registrar of Copyrights who in turn shall act under the superintendence and direction of the Central Government.

On the other hand, the Copyright Board, set up under s 11 of the Act, is an independent body, and is not under the direction or supervision of the Central Government. It has been held to be a quasi-judicial body by the Supreme Court in the Super Cassettes judgment and by the Madras High Court in the South Indian Music Companies Association judgment. In fact, the Madras High Court held that in the selection committee and process of selection of members to the Copyright Board, primacy must be given to the judiciary. This shows that as far as the powers and functions given to the Copyright Board are concerned, it is meant to act as a body outside the control and supervision of the Central Government. There is, in other words, a separation of powers between the Copyright Office and the Copyright Board.

S 31D of the Act dealing with statutory licensing is administered by the Copyright Board and must be, as a corollary, interpreted only by the Copyright Board and the judiciary. The Central Government has no role in either administering or interpreting it. The Central Government has no right to issue any clarification, memorandum, notification or any other such note that ‘interprets’ or ‘clarifies’ s 31D.

The Government’s power is, in fact, much narrower. Unlike s 119 of the Income Tax Act, 1961 or similar such provisions in the other taxing statutes, there is no express provision in the Copyright Act, 1957 which empowers the Central Government to issue instructions or orders or clarifications regarding any statutory provision. Although the Act states that Registrar of Copyrights shall act under the “superintendence and direction” of the Central Government, it is clear that such “superintendence and direction” does not envisage the power to issue clarificatory statements.

Now, let us look at the merits of the OM.

Legislative intent

The HRD Minister, at the time of passing the bill introducing section 31D in the Parliament in his speech had stated that:

“The Copyright Board, as a matter of law, under the statute will actually decide on the quantum of money that will be required to be paid by the TV companies to the music companies who have bought over those rights. Therefore, there was some debate as to whether it should be limited only to radio, and TV should be kept out of it. But ultimately, we decided that TV should be included in it.”

From a plain reading of the speech of the HRD Minister, it is very evident that the only debate was if the provisions of s 31D should be limited only to radio or should include the TV broadcasters and it was never the intention of the Legislature to include internet broadcasters within the ambit of this section. Any attempt to do so will be against the spirit of the amendment.

Further, s 31D (3) clearly states that different rates may be set for “radio and TV” broadcasting. No other form of broadcasting is envisaged. Further, r 29 of the Copyright Rules, 2013 (‘Rules’) sets the procedure for the application for a statutory licence. R 29(3) states that “Separate notices shall be given… for radio broadcast or television broadcast…”. R 29(4), which deals with the details to be provided by the applicant states that the applicant must provide the “Name of the channel”, the “territorial coverage… by way of radio broadcast, television broadcast…”, and the “mode of communication to public, i.e radio, television or performance”. Even in r 30 relating to the maintenance of records, the rule states that separate records shall be maintained for “radio and television broadcasting”. R 31(6) of the Rules reiterates s 31D(3) when it states that the Board shall determine “royalties payable… for radio and television broadcast separately.” Lastly, r 31(7) makes a specific reference to the terms and conditions of the ‘Grant of Permission Agreement (GOPA)’ between the Ministry of Information and Broadcasting for operating the radio station.

All these provisions further show that the intent of the legislature in introducing s 31D was to regulate the licence rates for radio and television broadcasting only and not any dissemination of music through the internet.

The meaning of the terms ‘broadcasting organisation’, ‘broadcast’ and ‘communication to the public’

The OM attempts to include internet broadcasting within the ambit of s 31D(1) by reading the section with the definition of ‘communication to the public’ which is defined under Section 2(ff) of the Act. This approach is inherently erroneous.

S 31D(1) refers to a ‘broadcasting organisation’. This expression has not been defined under the Act. However, s 2(dd) introduced in 2012, defines “broadcast” as follows:

“broadcast” means communication to the public—

1. (i)  by any means of wireless diffusion, whether in any one or more of the forms of signs, sounds or visual images; or
2. (ii)  by wire,
   and includes a re-broadcast;

The definition of ‘broadcast’ has two key ingredients: (a) there must be a communication to the public; and (b) this communication must be through wireless diffusion or by wire. A close reading of this provision shows that a broadcast is the act of actually transmitting the copyrighted work through wire or wireless diffusion, and not merely making it ready for such diffusion.

The term “communication to the public” is wider than “broadcast” since the definition of “broadcast” only includes two methods of communicating the work to the public. The phrase ‘communication to the public’ is defined as under:

‘(ff) “communication to the public” means making any work or performance available for being seen or heard or otherwise enjoyed by the public directly or by any means of display or diffusion other than by issuing physical copies of it, whether simultaneously or at places and times chosen individually, regardless of whether any member of the public actually sees, hears or otherwise enjoys the work or performance so made available.

Explanation.-For the purposes of this clause, communication through satellite or cable or any other means of simultaneous communication to more than one household or place of residence including residential rooms of any hotel or hostel shall be deemed to be communication to the public;’;”

The definition of “communication to the public” contains a phrase ‘whether simultaneously or at places and times chosen individually’. The question is – who makes this choice, the owner of the copyright or the member of the public? If the choice is that of the owner, then communication will exclude streaming. But if it implies the choice of the consumer, then it will include streaming.

The phrase immediately preceding this, being “making any work or performance available”, obviously refers to the owner of the copyright making it available. The phrase “whether simultaneously…” only qualifies this “making… available”. Further, every time a phrase refers to the “public”, the “public” is intentionally invoked by the definition. The person to whom no reference is made directly, is the person “making” the communication, i.e. the owner. Therefore, I submit that “chosen individually” intends to cover only the owner of the work and not the consumer. In other words, for an act to amount to communication to the public, the communication must be at times and places chosen by the owner.

This brings us to two questions:

1. Then where is internet streaming covered?
2. Then what is the meaning of “individually”?

To answer the first question, when the owner of a sound recording gives internet streaming services for music, he gives that person a licence to do two things:  (a) to make a copy of that work on a server belonging to the streaming service; and (b) to allow the streaming service to “rent” it to the consumer.

These rights are covered under s 14(d)(i) and s 14(d)(ii). Communication of the work to the public is not invoked at all. For this reason also, the dissemination of music through an internet music streaming service provider is not a ‘communication to the public’, and is therefore not covered by the definition of ‘broadcast’ under s 2(ff). Such a reading is consistent with the entire scheme of the Act that deals with broadcasting, but only refers to radio and TV.

To answer the second question, “communication of the public” covers a broader spectrum than just broadcast. It includes theatrical distribution, public performance, narrowcasting – all these are cases where the owner chooses the times and places of communication. In fact, the Madras High Court in Thiagarajan Kumararaja v Capital Film Works, even found that dubbing and subtitling of films comes under the ambit of section 2(ff). This shows that the term “places and times chosen individually” will not become meaningless if internet streaming is excluded from its ambit.

To summarise, where the owner of the work chooses the times and places, it is “communication to the public”. Where the consumer chooses the times and places, it is not “communication to the public”. Therefore, persons running internet music streaming services are not ‘broadcasting organisations’ and will not be covered by section 31D. This would imply, obviously, that internet radio would be “communication to the public”. But the services provided by Spotify are not internet radio – the choice of what song to play and when is with the consumer. Therefore, it is not relevant to the present discussion.

What I attempt above is an internal reading of the Act and the Rules. Should statutory licensing include internet broadcasting? That is for policymakers to argue. The arguments above, I believe, are sound. But I would not be surprised if a judge leaned the other way on a reading of section 2(ff). Either way, Spotify’s action of invoking section 31D and playing the music without a licence is indefensible in law. That has already been covered on this blog before. Spotify, I think, is playing litigation strategy – try and get an interim order out of a judge and push Warner to a settlement.

In a guest post, Kartik Puttiah discussed the exclusions under Section 3(j) of the Patent Act in light of the Monsanto case. Specifically, he argues that excluding nucleotide acid sequences based on their use in plants is flawed since this does not constitute an evaluation of the subject matter, but rather its industrial application. He argues, further, that a balance between incentivising inventions in biotechnology and protecting farmers may be achieved by creating an exception for farmers under Section 47, while interpreting Section 3(j) in a manner that allows biotechnological inventions.

In another guest post, Alphonsa Jojan discussed the duties of Indian companies to share benefits under the Biological Diversity Act in light of Divya Pharmacy v Union of India. The author agrees with the verdict of the Uttarakhand High Court, which purposively interpreted the legislation to require benefit sharing on part of Indian companies with no foreign shareholding as well. She also discusses the implications of this judgment, which would require the creation of necessary frameworks and rules.

In a guest post, Swaroop Mamidipudi wrote on the scope of Section 31D of the Copyright Act in light of the recent litigation involving Spotify. He discussed the recent Office Memorandum released by the Department of Industrial Policy and Promotion, which brings internet broadcasting organisations within the ambit of the statutory licensing regime. He notes that the Government does not have the authority to release such a memo, and further, that internet broadcasters were not intended to be included in the regime by the legislature.

Other Developments

Judgments

Agarwal Deokinandan Gopiram v. Jagdamba Textiles Private Limited – Gujarat High Court [February 25, 2019]

The dispute between the Parties arose on account of the Respondent’s unauthorized use of the Applicant’s patented fabric dyeing machine. On being aware of such use of its patented machine, the Applicant sent across a desist notice. The Respondent in its reply tried to distinguish the working of the two machines. The Additional District Judge ruled in favour of the Respondent, to which the Applicant filed an appeal. The Court granted an injunction in favour of the Applicant, thereby staying the impugned order of the Additional District Judge. It was initially stated by the Court that the Respondent had failed to discharge the burden to prove that the Applicant’s machine was not patentable and that the balance of convenience was in favour of the Applicant as it was entitled to enjoy the fruits of its time and money invested for a period of 20 years.

Flipkart Internet Private Limited v. www.flipkartwinners.com and Others – Delhi High Court [February 26, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “FLIPKART” by using an identical mark in respect of online e-commerce platforms or as a part of their domain names. The Court noted that the Defendants had no real prospect of defending the claims, and had failed to appear before the Court or file a written statement. The Court also ordered the internet and telecom service providers to block access to the Defendant’s websites.

Samsung Electronics Company Limited and Another v. Lakhan and Others – Delhi High Court [February 28, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “SAMSUNG” by using an identical mark in respect of mobile phones, accessories and allied products. In arriving at the decision, the Court noted that the Defendant No. 8 had no real prospect of defending the claims, and had failed to appear before the Court. Moreover, the Court noted that though Defendant No. 21 had entered appearance, it had no prospect of defending the claims.

Super Cassettes Industries Private Limited v. Kumaon Broadband Company Private Limited – Delhi High Court [February 28, 2019]

The Court granted a permanent injunction restraining the Defendant from broadcasting the Plaintiff’s copyrighted works through its cable services. In determining infringement, the Court acknowledged that the Plaintiff had valid and subsisting copyrights in its works which could subsequently not be broadcasted by the Defendant without a valid license. The Plaintiff was further granted damages of Rupees 10 lakhs, a sum arrived at by the Court through consideration of the fact that the Defendant had been deliberate and conscious in infringing the Plaintiff’s works.

Radico Khaitan Limited v. M/s. Devans Modern Breweries Limited – Delhi High Court [March 7, 2019]

The dispute between the Parties arose on account of the Defendant’s use of the mark “GODFATHER ELECTRA”, being deceptively similar to the Plaintiff’s mark “ELECTRA”. In light of the Defendant’s attempt to sell under the same brand in Delhi, the Plaintiff filed a suit and the Court granted it an interim injunction. The Court further granted a permanent injunction in favour of the Plaintiff on the ground that it was the registered proprietor of the mark “ELECTRA”, and the Defendant could not claim any right to use the same on account of prior use as its application was filed subsequent to the registration in the Plaintiff’s name. The Court also denied any delay on part of the Plaintiff in filing the suit as it had reasonably notified the Defendant to cease such use.

News

• Battle Over Origin of ‘Rasgulla’ Continues, After Odisha Files Petition Demanding Change of GI Tag
• India requires pragmatic compulsive licensing system: Cipla
• Newgen Software receives Patents from Indian Patent Office for its inventions
• Win for Bayer Monsanto as Bombay HC orders NSL to pay Rs 138 crore dues
• ‘Design Cannot Constitute Trademark’; Delhi HC Dismisses Passing Off Suit By Crocs Inc
• Manual of Patent Office Practice and Procedure published
• Screenwriters Association sets up legal fund for writers to fight plagiarism
• Legal notice to Amitabh Bachchan for sharing poem on Twitter

International

• UK IPO publishes patent case data required for the UPC

Image: Alex Norris, Dorris Mccomics

It’s been a rough time for online intermediaries operating in India, lately. Jumping on the techlash bandwagon in the wake of multiple social media fiascos concerning online disinformation, data breaches, and mass propagation of hate speech and abuse, governments across the world are taking this as an opportunity to tighten regulation for online ‘intermediaries’ – platforms which host third party content, such as social media or online marketplaces. Similarly, the hornet’s nest of intermediary liability for copyright and trademark infringement has also been stirred.

The recently released draft e-commerce policy by the DPIIT apparently stems from laudable objectives of achieving ‘data sovereignty’ for India, and ensuring a fair market for consumers and domestic entrepreneurs. Unfortunately, when it comes to the proposed solutions for achieving these aims, the policy recommends solutions which would be stifling for online trade, freedom of information and access to knowledge. This is particularly apparent in its sections related to “e-commerce platforms” and their responsibilities for trademark or copyright infringement.

Doubling Down on Private Censorship

The first concern is the section on ‘anti-counterfeiting measures’ to be undertaken by e-commerce platforms. Many of these suggestions are well-balanced and promote transparency of e-commerce platforms towards their sellers as well as towards trademark owners who choose to register on such marketplaces. Some of these, such as the notice-and-notice requirement to forward complaints between a seller and a TM owner, appear to be taken from the Delhi High Court’s judgment on online marketplaces and their responsibilities, which we covered previously. However, there are some other concerning obligations proposed in the mix:

1. The policy proposes that, for a certain category of goods, including “high-value goods”, the marketplaces will be required to take the permission of the TM owners.
2. Further, the policy proposes that online marketplaces be made directly liable to refund customers and delist ‘counterfeit goods’ upon receiving complaints from individuals.

These incongruous requirements can potentially disrupt the freedom of smaller marketplaces or vendors, as they impose significant monitoring requirements on platforms, particularly in being liable for delisting and refunding counterfeit goods in the absence of a legal determination, which could dissuade business models which platform lesser known vendors. Moreover, this policy also fails to deal with the issue of second-hand product sales or ‘domestic exhaustion’, where the permission of TM owners may not be required when re-selling a validly purchased product.

The ‘anti-piracy’ proposals in the draft policy are even more disturbing:

1. Firstly, the policy proposes a return to the notice and takedown approach for copyrighted content, which is unfortunate, given that there is a severe need to transparency and accountability structures for platform behavior, before enforcing a restrictive requirement of this nature.
2. Secondly, and perhaps most dangerous, is the proposal to allow an ‘industry body’ to identify so-called ‘rogue websites’ which host pirated content, and forward such a list to intermediaries including ISPs, search engines and payment gateways, which will have a legal obligation to block access to such websites. Creating such opaque and private mechanisms to control online information, with no public representation or judicial oversight is unlikely to be beneficial to consumers or entrepreneurs, and is detrimental to the policy’s own aims.

We face an inflection point in policy-making, where we should be seriously considering the legal implications of affording major online platforms legal immunities for content that they host without taking into account the nuances in their business models and the level of control or complicity in enabling illegal speech. The outcome should be focused on the necessity to counter a set of identified harms, in a manner which is proportionate and balanced against the restrictions to intermediaries’ activities.

Such nuance, unfortunately, has gone completely over the heads of policy-makers in India, who have responded to concerns regarding illegal speech on platforms with disproportionate and dangerous proposals that threaten freedom of speech online. One example of this, which we blogged about last month, was the suggestion by the Ministry of IT to reduce the scope of intermediary liability by making them responsible for implementing clunky upload filters for all ‘illegal content’, which presumably would cover copyright or trademark infringement.

The e-commerce policy fails on similar counts – critical definitions are vague or absent and there is a complete lack of nuance or discussion about the rationale for many of its proposals, particularly in the case of trademark and copyright related concerns. I wonder if it is too much to hope for comprehensive and constructive policy making when it comes to an issue as important as the future of the internet and the Indian digital economy.

The Draft E-Commerce Policy is open to public comments until March 29, 2019. Please send in your comments to the draft at ecom-dipp@gov.in.

says Article 19 (1) (a)

Judgments of Indian courts are often criticised for their use of convoluted language, verbosity, and tendency to digress into avoidable terrains (for instances of courts employing barely decipherable language, see this). A recent order of the Delhi High Court (‘Order’), in the matter of Horlicks Limited and Anr. v. Heinz India Private Limited falls into the third category- crossing into the territory of fundamental rights in a private law dispute.

The Order was made in an application filed by Horlicks Limited for an interim injunction against the publication of certain allegedly disparaging advertisements by the Defendant. Ruling on the application, Justice Manmohan anchors his findings on the idea that commercial speech is a protected category of speech under Article 19 (1) (a) of the Constitution. Against this backdrop, the Hon’ble Judge goes on to examine the impugned advertisement, and finds it to be non-disparaging. While the end result itself may not to be faulted, the propriety of anchoring such a finding on a Part III provision of the Constitution is questionable. Despite the fact that the dispute was between two private entities, the Hon’ble Judge did not elaborate on how, if at all, a horizontal application of fundamental rights may be justified.

Horizontal Application of Fundamental Rights

It is well know that fundamental rights under Part III of the Constitution are typically available only against the state. Application of fundamental rights in matters other than those involving the state is referred to as the ‘horizontal application of fundamental rights’ and is done only under limited circumstances (for instance, in the case of Articles 15 (2), 17 and 23). Probably, the most commonly observed horizontal application of rights is when the courts deem a private entity to be ‘state’ (based on the control exerted by the state) under Article 12. Nevertheless, no such finding was made by Justice Manmohan in the present case.

Another dimension of horizontality is when a private defendant places reliance on fundamental rights to defend its impugned actions-often referred to as ‘indirect horizontality’ (for an excellent summary of horizontal application of rights in India, see this piece by Gautam Bhatia). Nevertheless, as Bhatia points out, there is no clarity yet about the circumstances in which indirect horizontality may be brought into play in India. In any case, it is highly doubtful whether there was any need to resort to indirect horizontality in the present matter as the Defendant’s actions could have been justified even without taking recourse to Article 19 (1) (a).

Reliance on Tata Press and Bennett Coleman

Being a pure private law dispute, it is not clear on what basis the Defendant claimed recourse to the free speech guarantee. In any case, the Court goes on to examine this claim and holds that advertisements, which is a facet of commercial speech under Article 19(1) (a), may be restricted only in accordance with a law enacted under Article 19(2). In its discussion of free speech, the Order relies on the decisions in Tata Press Limited v. MTNL and Bennett Coleman & Co. v. Union of India. While the decision in Tata Press is relied on to clarify that commercial speech is a class of free speech and that corporate bodies are entitled to it, Bennett Coleman is referred to for establishing that fundamental rights of shareholders as citizens are not lost when they associate to form a corporate entity.

It would appear that the reliance on both these judgments is misplaced. In so far as Tata Press is concerned, the said decision was based on a clear finding upfront that the defendant was a government owned entity, thus implying that it was ‘state’ and open to the scrutiny of Part III provisions. Moreover, the extent of protection accorded to commercial speech in Tata Press is lower than what seems to have been asserted in the Order. Although Tata Press does say in so many words that commercial speech forms part of the free speech guarantee, it is doubtful whether the judgment intended to bring all commercial speech within the ambit of free speech guarantee. This lack of clarity stems from the language employed in Tata Press:

“We are of the view that all commercial advertisements cannot be denied the protection of Article 19(1) (a) of the Constitution merely because they are issued by businessmen. The combined reading of Hamdard Dawakhana’s case and the Indian Express Newspaper’s case leads us to the conclusion that “commercial speech” cannot be denied the protection of Article 19(1) (a) of the Constitution merely because the same are issued by businessmen.”

The underlined portion from the extract indicates that Tata Press was in no way implying an unfettered protection to commercial speech. It is also interesting to note that Tata Press premised its conclusions on the ground that “public at large is benefitted by the information made available through the advertisement”. The present case on the other hand is one which involves alleged “misinformation”, as the Plaintiff claimed that the Defendant was making false and misleading statements in its advertisements. Thus, arguably, the present Order has erred in relying on Tata Press without first determining if the impugned ads were misleading or not (for an insightful discussion on the protection of commercial speech post Hamdard Dawakhana and Tata Press, see this).

The reliance on Benett Coleman too is misplaced as the judgment therein had sought to protect the rights of shareholders from state action. The following portion of the judgment clarifies this:

“The Bank Nationalisation case (supra) has established the view that the fundamental rights of shareholders as citizens are not lost when they associate to from a company. When their fundamental rights as shareholders are impaired by State action their rights as shareholders are protected.”

Conclusion

It is in no way implied that private and public law concepts exist in independent, watertight silos. In fact, there is growing convergence of the two areas and India has been long witness to constitutionalisation of its private law sphere (for an account of constitutionalisation of tort law, see this piece by Shyamkrishna Balganesh). Although the Order gets its final result right, as it goes on to make an enquiry on whether there was actual disparagement, it opens up the possibility of future decisions leaning (at least subconsciously) on the free speech guarantee to elevate the threshold required for disparagement. Although such elevation may not necessarily be a bad thing, any such change should be preceded by a cogent exposition of why constitutional norms should inform a disparagement dispute between two private parties.

Image from here

We’re pleased to inform our readers that The Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law (UNH) and Royzz & Co. (erstwhile Solomon & Roy) have partnered to offer a scholarship for prospective international LL.M. students specialising in IP Law. The deadline for submitting applications for the scholarship is May 15, 2019. For further details, please read the announcement below:

UNH Law-Franklin Pierce and Royzz & Co. Partner for IP Scholarship

The Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law and Royzz & Co. (formerly Solomon & Roy) announce a new partnership to benefit international students interested in specializing in Intellectual Property (IP) Law. Royzz & Co. has sponsored a $5,000 International Student Scholarship that will be awarded to one international student admitted to UNH Law’s LL.M. in IP or Master’s in IP for the 2019-2020 academic year.

The University of New Hampshire School of Law offers a top-ranked U.S. legal education in global innovation. UNH Law is a top-ranked law school and ranked #5 for IP law, consistently making the top 10 since the rankings began nearly 30 years ago. LLM GUIDE recently named UNH Law to its 2019 Top 10 List for LL.M. Programs in Intellectual Property Law.

UNH Law’s 24 credit LL.M. program is ideal for domestic and foreign-trained attorneys and judges, and those with a legal education who are seeking specialized training on cutting-edge issues in intellectual property. The 30 credit Master’s program is designed for nonlawyers – engineers, scientists, inventors, business professors – seeking to understand legal issues in industry and policy who want to earn expert credentials in IP and innovation. Students have opportunities for practical training and gain invaluable hands-on experience through externships and legal clinics.

Under the guidance of the largest full-time faculty in the field of IP, students learn the fundamentals of obtaining, maintaining, and enforcing IP. Students also explore differences between domestic and international regulations and current issues shaping IP law and policy today. UNH Law’s Franklin Pierce Center for Intellectual Property offers one of the most comprehensive lists of innovative IP courses at any law school in the United States.

Graduates of UNH Law’s Franklin Pierce Center lead IP legal infrastructure around the world and are recognized for their signature approach to problem-solving and ability to hit the ground running. They are highly sought after in the marketplace and quickly rise to the top. UNH Law graduates comprise a global network of influential IP practitioners, working in more than 80 countries at major corporations, top law firms, and national IP offices around the world. This worldwide network of IP experts stands ready to help UNH Law students and graduates become the next generation of IP leaders.

UNH Law is now accepting applications for Fall 2019 from students who want to become a part of the school that sets the pace for legal education in the information age. To be considered for the International Student Scholarship sponsored by Royzz & Co., students should complete their application to the LL.M. or Master’s program in IP and then request an application for the International Student Scholarship. Scholarship applications are due by May 15, 2019.

For more information on UNH Law’s graduate law degrees, the application process, or the International Student Scholarship, please contact admissions@law.unh.edu or visit https://law.unh.edu/admissions/graduate-admissions.

Divij wrote a post on the draft e-commerce policy released by the Department for Promotion of Industry and Internal Trade. In his post, he focusses on the anti-counterfeiting measures to be adopted by e-commerce platforms and how they may adversely affect the freedom of small vendors and marketplaces. He then analyses the anti-piracy measures to be adopted and the suggestion to return to the notice and takedown approach for copyrighted content. He notes that this may lead to a disproportionate restriction in most cases.

Balu wrote a case analysis on a recent Delhi HC order dealing with an application filed for an interim injunction against the publication of certain allegedly disparaging advertisements by the defendant. The Court held that the impugned advertisement could be protected under Article 19(1)(a) as commercial speech. In his post, Balu notes that though the Court reaches the correct conclusion, its reasoning for the same is faulty since the Court could not justify the horizontal application of fundamental rights in a dispute between two private parties.

Pankhuri announced that the Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law (UNH) and Royzz & Co. (erstwhile Solomon & Roy) have partnered to offer a scholarship for prospective international LL.M. students specialising in IP Law. The last date for submitting applications for the scholarship is May 15, 2019.

Other Developments

Indian

Judgments

Hotel Panchvati and Another v. The Panchvati Hotel – Bombay High Court [February 15, 2019]

The Court granted an ex parte interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “PANCHVATI” by using a deceptively similar mark in respect of hotel and food services. In arriving at the decision, the Court observed that the Plaintiff was the registered proprietor of the mark and that the mark had attained immense reputation and goodwill due to its open and continuous use. It was further stated that it would be misrepresentation to the public if the Defendant was allowed to use the Plaintiff’s mark.

Darshan Jain and Another v. Piyush Surana – Bombay High Court [March 1, 2019]

The dispute between the Parties arose on account of the Respondent’s use of certain textile print drawings belonging to the Petitioner in an exhibition. The Petitioner filed an FIR and the Respondent admitted his guilt on being questioned by the police. Moreover, the Petitioner also filed a case for restraining the Respondent from using its drawings and appointment of a Court Receiver for seizing the goods. Subsequently, the Parties amicably settled the matter but the Respondent violated the settlement terms and destroyed evidence against it. The Court noted that the custody of the seized goods was with the Court Receiver when the Respondent destroyed the evidence, thereby committing a contempt of Court. Accordingly, the Court imposed a fine of Rupees 15 lakhs and simple imprisonment for a period of 4 weeks.

The dispute between the Parties arose on account of the Appellant’s use of the mark “SWAGATH” being identical to the Respondent’s mark in respect of hotels and catering services. The Lower Court granted an interim injunction in favour of the Respondent, and restrained the Appellant from using the mark. On appeal, the Court noted that the Lower Court had failed to discuss the similarity or dissimilarity between the Parties’ marks, in addition to wrongly presuming that the Respondent’s word mark was registered. The Court further observed that the word “SWAGATH” was common to trade and non-distinctive, thereby preventing the Respondent from the exclusive use of the word, except as part of its device. On comparison of the Parties’ marks, the Court noted that the Appellant’s mark “SWAGATH” bore no resemblance to the Respondent’s device. Ultimately, the Court stated that the Appellant had made honest, open and concurrent use of the mark since 2008. In light of all these reasons, the Court set aside the order of the Lower Court and remanded the case to be decided by the trial court.

Tata Chemicals Limited v. Puro Wellness Private Limited – Delhi High Court [March 15, 2019]

The dispute between the Parties arose on account of an advertisement campaign initiated by the Defendant where it was alleged to have made false, baseless and reckless statements against the Plaintiff’s product, “TATA SALT”. In the case initiated by the Plaintiff, the Court noted that the cause of action was separate, distinct and continuous in nature which would distinguish it from other actions filed by the Plaintiff, and hence the charge of forum shopping would not hold good against it. The Court observed in respect of the Defendant’s advertising material that it meant to denigrate white salt and especially cast aspersions on the Plaintiff’s product by making a reference to it. Accordingly, the Defendant was restrained from televising or publishing any commercials or any other advertisement which would result in the disparagement of the Plaintiff’s product.

News

• Court restrains Hyd group from using Pune-based deemed varsity’s name
• IPRS, Google sign music licensing deal for India
• Copyright tussle between ‘In The Name of God’ and ‘Laddoo’
• Investment Protection Proposals Under RCEP Threaten India’s Pharma Industry
• Madras HC restrains Lakshmi Traders from using pouch similar to that of Gold Winner
• Ex-owner of Kasi Theatre cannot use trademark, says Madras HC
• In fresh blow to Monsanto, India cuts GM cotton seed royalty
• Central Government creates Fund for Scientific Advisers to assist Court in Patent Litigation
• Cabinet approves proposal to align with global trademark system
• GI tag for Coorg Arabica Coffee, four others

International

• EU copyright bill: Protests across Europe highlight rifts over reform plans
• YouTube will require Content Owners to give Timestamps when they copyright claim a video
• The Twitter User Who Sued FuckJerry And Owner Elliot Tebele Over A Meme Has Dropped His Lawsuit
• Cardi B Wants To Trademark The Phrase ‘Okurrr’

EU’s Vote is it anyway?

The European Parliament has voted in the EU Copyright Directive for the Digital Single Market, 348-274. The vote followed high drama and widespread public mobilisation against the proposal, specifically on its impact on the rules for online platforms and user-generated content on the internet.

The text of the directive has seen many iterations, but most of the objections to the directive focus on its rules regarding the responsibilities of online platforms which host user generated content, as well as the regulation of hyperlinks from news websites.

Article 17 (which was earlier Article 13) in the final text (as of March 20, 2019), requires online content hosting platforms to only host licensed/authorized content, by specifying that all such hosting services fall within the ambit of ‘communication to the public’ – a right which must be authorised by a copyright holder. Further, the proposal removes intermediary safe harbour rules under the EU e-commerce directive.

The proposal will now go for a formal vote to the EU Council, subsequent to which it must be incorporated within national legislation within 2 years. The manner in which states choose to adopt the obligations of the regulation would be an important development to follow.

Importantly, this places significant obligations on  technology platforms on the internet and inevitably will affect the ‘borderless’ nature of the internet – the ramifications will extend to online communication outside of the EU as well. We have been following the directive and have explained the issues and controversies surrounding it, here, and here.

In a recent order, Justice Najmi Waziri of the Delhi High Court imposed a cost of Rs. 80 lakhs on the respondent party. Stating that the sum ought to be utilised for the larger public good, he went on to order the respondents to plant a large number of trees!

Factual Background

The petitioners have a patent in Sitagliptin (a pharmaceutical composition used to treat diabetes) and sold it under the brand names Januvia and Janumet, amongst other names. The repondent’s website claimed to manufacture this composition and sold it under the same brand names, thereby diluting the brand value in the petitioners’ products. The petitioners filed a suit seeking injunction against the defendants. The suit was disposed of by the Court after the parties filed a joint compromise application and entered into a compromise deed, which formed a part of the Court’s decree. The respondents later breached the compromise deed and the Court decree and the petitioners then instituted contempt proceedings against them for such breach.

The Judgment

The respondents acknowledged their breach of the Court’s order from the outset and submitted to any terms put forward by the Court. The petitioners, stating that they manufactured medicinal preparations to cure ailments and contribute to better health of people, submitted that they would be willing to forego damages imposed on respondents if the same were used for larger public benefit or public health. The Court then examined the background, business, annual turnover, etc. of the respondent company and ordered a cost of Rs. 80 lakhs to be imposed on the Respondent, “to be utilised for the larger public good“.

The “public good” which the Court had in mind were measures to fight air pollution by planting trees in a city which, in the Court’s words, was “virtually gasping for fresh air“. It took a glimpse at the Delhi Master Plan and noted that the Central Ridge area, being expansive and located at the heart of the city, could help in reducing carbon footprint, if nurtured optimally. It even touched upon the fundamental duty given under Article 51A (g) of the Constitution “to protect and improve the natural environment“.

Thus, apart from directing the respondents to file an affidavit of apology, the Court also directed them to plant 1,40,000 trees on the Central Ridge. They further gave detailed specifications regarding the type of plants to be planted and the time period for which the respondents would be obligated to nurture the plants. The respondents were also directed to ensure the presence of water sources and water retention systems and prepare a compliance report. The report is to be submitted to the Deputy Conservator of Forests.

Principles Underlying Imposition of Costs

“Costs”, as defined in the 240th Law Commission Report on Costs in Civil Litigation, is “the sum of money which the court orders one party to pay another party in respect of the expenses of litigation incurred.” The Court’s power to impose costs in this case would stem from Section 35 of the Civil Procedure Code governing general costs (For an overview of different types of costs under the Code, refer to Rahul’s post here). Under this Section, the Court is vested with the discretion to award costs, subject to conditions and limitations which may be imposed by any law in force. It provides that the costs should follow the event and that the court shall have full power to determine by whom or out of what property, and to what extent such costs are to be paid. Further, costs do not seek to inflict a “penalty on the unsuccessful party, but to indemnify the successful litigant for actual expenses necessarily or reasonably incurred” during the course of litigation. In the present case, the costs will further come within the ambit of the Delhi High Court (Original Side) Rules, 2018. The Rules provide clarity on the factors to be considered while determining costs, billing of costs, taxation of costs etc.

The Delhi High Court presumably followed the above-mentioned principles in setting the quantum of the costs at Rs. 80 lakhs. Does the Court, however, have the power to determine how such costs are to be utilised? None of the above-mentioned provisions or case laws delve into such powers.

Analysis

Interestingly, this is not the first instance where Justice Waziri has directed defaulting parties to plant trees. In a recent case, he directed a couple to plant 100 trees in the Central Ridge area for employing a minor for household work and to additionally pay ₹1.5 lakh to the victim. In another case, he ordered parties to plant 3,000 trees in the South Ridge area as a punishment for seeking time to file their reply on Enforcement Directorate’s appeal against their acquittal in a 2G scam case. Further, he quashed criminal proceedings against parties by directing them to plant trees. (As a side note, Justice Waziri is not focusing solely on planting trees. In dealing with a contempt proceeding filed against a restaurant chain for non-compliance with the Court’s order and repetitive trademark infringement, he directed the chain to provide meals to children in orphanages)  Apart from Justice Waziri, Justice Sunil Gaur of the Delhi HC has also directed the accused in a molestation case to plant trees in a government school.

While the Court’s efforts to create a healthy and clean atmosphere for the citizens of the pollution-riddled, smog-filled city of Delhi is commendable, certain questions crop up here.

Can the Court give such directions when they are not related to the heart of the dispute? Courts have directed parties to plant trees in the past and such directions have been related to the underlying matter. For instance, the Madras HC had ordered the National Highways Authority of India (NHAI) to plant 10 saplings for every tree cut for carrying out its four lane project. Courts have also delved into principles of public interest while fixing costs to be imposed on defaulting parties. Again, in such cases, such analysis was in connection to the dispute at hand. An example of this would be the imposition of exemplary costs in a case of trademark infringement of pharmaceutical products, wherein the Court had delved into various public health concerns.

In the present case, could these directions be justified as a “punishment” under Article 215 of the Constitution? This Article states that High Courts, as Courts of Record, have the power to punish for contempt of itself. The Court has, however, not made any mention of this provision. Also, let us assume for the sake of argument that the proceedings in the present case were not instituted for contempt and the Court gave similar directions. Where would the Courts derive its authority to pass such directions? A possible answer to this query lies in Section 151 of the Civil Procedure Code, which gives inherent powers to the Court to “make such orders as may be necessary for the ends of the justice or to prevent abuse of the process of the court“. It has, however, been clarified by the Court that the exercise of powers under Section 151 should be done with due care and precaution. Such exercise shall depend on the “discretion and wisdom of the court, and the facts and circumstances of the case” and the provision cannot be used as a “carte blanche to grant any relief“.

Apart from these questions of law, it would also be necessary to consider the question of whether the Court can undertake such acts of environmental activism in the guise of imposing penalties and costs. Can the Courts adopt the role of “protector of environment” when there are other appropriate authorities, committees and institutions (such as the Delhi Government’s Department of Environment, the Delhi Pollution Control Committee, the Environment Pollution (Prevention & Control) Authority for the National Capital Region etc.) to whom this task is delegated?

Such puzzling questions of law and role-delegation need to be clarified by the Courts before meting out such well-meaning yet misguided orders.

Image from here

Prarthana wrote a post on the recent ‘green order’ passed by Justice Najmi Waziri of the Delhi High Court. While the case concerned the dilution of a trademark used for the sale of a particular diabetes drug, the noteworthy aspect of the judgment is the order that required the respondent to plant 1,40,000 trees in Delhi. Prarthana analyses the law relating to costs, and questions the validity of such an order being passed, given that the trees were not a subject matter of the case.

Divij broke the news of the recent voting on the EU Copyright Directive for the Digital Single Market. He discusses the controversy surrounding certain issues, such as those concerning the intermediary safe harbour provision and informs us that of the formal vote that is to take place at the EU Council that will take place soon.

Other Developments

Judgments

Indiamart Intermesh Limited v. Ankit and Others– Calcutta High Court [March 18, 2019]

The Court extended its previously granted injunction, directing the Ministry of Electronics and Information Technology from taking down domain names which were deceptively similar to the Plaintiff’s mark “INDIAMART”. In arriving at this decision, the Court noted that no useful purpose would be served by keeping the application pending.

MakeMy Trip (India) Private Limited v. Pravasi Guide Private Limited and Others – Delhi High Court [March 19, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “MAKEMYTRIP” and domain name “www.makemytrip.com” by using a deceptively similar mark “MAKEMYPRAVAAS” in respect of online travel industry. In arriving at this decision, the Court observed that the Defendant had no real prospect to defend the claim as the mark was registered in favour of the Plaintiff and was clearly infringing its reputation and goodwill.

Devans Modern Breweries Limited v. Mount Everest Breweries Limited and Another – Calcutta High Court [March 20, 2019]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered design for its beer bottles. In arriving at the decision, the Court noted that a bare look at the bottles indicated that the Defendant was using the Plaintiff’s bottles along with its label to sell its beer. It was further suggested by the Court that such a business model was adopted by the Defendant with a dishonest motive of advantaging from the Plaintiff’s name, which was absolutely impermissible.

Radix Arc Private Limited v. Classic Electrodes (India) Limited – Calcutta High Court [March 20, 2019]

The Court granted an interim injunction restraining the Respondent from infringing and passing off the Petitioner’s registered marks “SAI ARC”, “SILVER BOND”, “FERRO FIT”, “FERRO CLASS” and “FERRO FIT” by using deceptively similar marks, in respect of welding electrodes. In arriving at the decision, the Court observed that the Respondent had adopted a colourable imitation of the Petitioner’s packaging with a view to benefit from its reputation. With respect to the question of validity of the Petitioner’s registrations, the Court noted that it could only be ascertained by the Intellectual Property Appellate Board and a civil court had no jurisdiction to decide the same. However, the Court stated that the applications of the Respondent had a user date later than that claimed by the Petitioner.

News

• Delhi High Court directs restaurant chain to use Rs 20L fine amount from trademark dispute for mid-day meals at orphanages
• The Nizam Wins Its Trademark Battle
• Disney “Worries” About Its Trademark “Hakuna Matata”
• There is no dispute that most of the Tribunals are non-functional: CJI Ranjan Gogoi
• Madras HC orders to keep in abeyance its interim order against brand of Biscuits
• Ex-owner of Kasi Theatre cannot use trademark, says Madras High Court
• Court rejects Pepsico’s suit over growing, selling of plants
• MakeMyTrip files suit against EaseMyTrip over trademark violation
• Trademark Infringement: Delhi HC Bans 12 Firms From Selling Patanjali Goods In International Market

International

• In a first, Asia generates over half of the patents filed in 2018

Last week saw the release of the trailer of ‘PM Narendra Modi’, the much-awaited biopic of our current Prime Minister which is set to hit screens on April 12, 2019. While it has garnered differing reviews, it has resulted in yet another controversy associated with the film (the Election Commission of India is already looking into whether the release of the movie would violate the Model Code of Conduct for candidates, see here and here).

This latest controversy involves the mentioning of Javed Akhtar towards the end of the trailer, attributing credit to him for contributing lyrics to the soundtracks in the movie. This, however, came as a surprise to Javed Akhtar himself, who immediately took to Twitter to distance himself from the movie and deny any contributions to its lyrics. One of the producers of the film, Sandip Ssingh, later clarified the confusion, saying that the credit screen mentions Javed Akhtar because one of the tracks for which he had provided lyrics, ‘Ishwar-Allah’ (originally from 1947 – Earth), had been licensed and used in the film.

The copyright in the whole song is reportedly owned by T-Series, who licensed the song to the film. This, therefore, precludes any copyright infringement action. However, Javed Akhtar may have recourse for the infringement of his moral rights, under Section 57 of the Copyright Act.

Javed Akhtar is no stranger to intellectual property rights, being the chief driving force behind the path-breaking amendments made to the Copyright Act in 2012. He also has a history of actively enforcing his own rights: not too long ago, he sent a legal notice to the Malik Brothers for using the ‘mukhda’ of his song in the remake of the soundtrack ‘Ghar Se Nikalte Hi’, arguing breach of moral rights (covered on our blog here). Another example is the advocacy of his moral rights over the script of the film ‘Zanjeer’ which he had written along with Salim Khan, when it was being remade in 2013.

In this post, I take a look at a possible moral rights claim over the use of his song ‘Ishwar-Allah’ in the upcoming biopic.

The Moral Right to Integrity

This is not the first time that an artist has found their work being used in inappropriate contexts or for purposes that were not intended to be associated with their work. For instance, several artists in the United States of America have objected to the use of their songs in campaign rallies during Presidential Elections (see here for a list of artists that objected to the use of their songs at Trump rallies and here for Prarthana’s post on the issue).

In cases where the artist owns the copyright over the music, there is little controversy: use of their music at election rallies without obtaining their permission constitutes a violation of copyright over the music (for the Indian position, see Section 14 of the Copyright Act, which grants the copyright holder the exclusive right to communicate their work to the public).

However, in most cases, copyright over music is held by copyright societies or production houses. In the present case, T-Series holds the copyright over the song ‘Ishwar Allah’. In these cases, artists are not in a position to enforce copyright over their work, but may have a claim to make through the moral rights that they possess in their work.

Moral rights are personal rights granted to creators of a work, and have been embodied under Section 57 of the Copyright Act as ‘Author’s Special Rights’. They include the right to paternity (to be identified as the creators of their work) and the right to integrity (to prevent derogatory treatment of the work):

Independently of the author’s copyright and even after the assignment either wholly or partially of the said copyright, the author of a work shall have the right——

(1) Independently of the author’s copyright and even after the assignment either wholly or partially of the said copyright, the author of a work shall have the right—

(a) to claim authorship of the work; and

(b) to restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work if such distortion, mutilation, modification or other act would be prejudicial to his honour or reputation:

Provided that the author shall not have any right to restrain of claim damages in respect of any adaptation of a computer programme to which clause (aa) of sub-section (1) of section 52 applies.

Explanation.—Failure to display a work or to display it to the satisfaction of the author shall not be deemed to be an infringement of the rights conferred by this section.

(2) The right conferred upon an author of a work by sub-section (1), may be exercised by the legal representatives of the author.

The right to integrity is embodied under Section 57(1)(b) above, and requires proof of two factors – first, any distortion, mutilation, modification or other act in relation to the said work (‘derogatory treatment’) and second, prejudice to the honour or reputation of the author that has been caused by the derogatory treatment.

Given the political element in the movie itself, it may be relatively easy to establish prejudice to reputation and honour of a sitting Member of Parliament. The more pressing legal issue would lie in establishing derogatory treatment.

The Requirement of Derogatory Treatment

It is important to note that the derogatory treatment of a work must be made “in relation to the said work”, and not in relation to the author generally. Here, the lyrics of the song ‘Ishwar-Allah’ as used in ‘PM Narendra Modi’ has not seen any change in the lyrics of the song as used in ‘1947 – Earth’. Nor have any additions been made to the lyrical component of the song.

The only alteration that may be claimed is the order in which the lyrics are performed by the vocalists (to compare, listen to the original version here and the reprised version here). Most notably, the reprised version starts at a different point when compared to the original version. However, it would be extremely difficult to argue that this alteration itself is directly responsible for any prejudice caused to Javed Akhtar’s honour or reputation.

The only other avenue of complaint, then, is the use of the song in this particular movie. The question, then, is whether the use of the song in a different context constitutes derogatory treatment of the work. This boils down to an interpretation of the phrase ‘other act in relation to the said work’.

I would argue that it should be interpreted broadly, to include a wide array of acts in relation to the work, including its use in a different context. That is, alteration or change of the work is not necessary to constitute treatment of the work.

In Morrison Leahy Music Ltd. v Light-Bond Ltd,[1] short extracts were taken from several of George Michael’s songs and compiled with other songs into a single remix-record. The court granted a preliminary injunction barring the release of the record in this case, noting that it may constitute derogatory treatment of George Michael’s songs. This case has strong parallels with the current one, since that court’s decision turned, not on the fact that the song was altered because of the extraction, but because their use along with other music in a single record may cause harm to the artist. Therefore, it is possible to argue that the performance of Javed Akhtar’s lyrics, in a different arrangement, and in a politically charged movie, would constitute derogatory treatment of the work.

Such an interpretation would be in line with the intention of moral rights to protect the authors ability to control their work, and also aid in addressing the mischief of use of artists’ works for purposes that were not unintended by them (such as political campaigning) and more drastic uses, such as the use of a literary work in a pornographic film or the placement of an artistic work in a setting which is entirely inappropriate to it.

On the contrary, it is possible to argue that the phrase ‘other act in relation to the said work’ should be read ejusdem generis, in the context of the words that precede it (distortion, mutilation and modification) to mean that a change or alteration of the work is necessary to constitute derogatory treatment of a work.

Such an interpretation is likely to be favoured by the authors of Copinger and Skone James, a respected treatise on Copyright law in the United Kingdom. They refer to cases where the moral rights of the author were not upheld, such as Mosley v Stanley Paul & Co.[2] (in which the plaintiff’s book was published  in a vulgar and offensive dust jacket) and Shostakovich v Twentieth Century Fox Film Corp[3] (where the music of Russian artists was used in a Russian espionage film to the dismay of the artist), to argue that mere use does not constitute derogatory treatment. Similarly, moral rights of musician Connie Francis, who sued in 2002 objecting to the licensing of her music for “sexually themed” films she found inappropriate, were also not upheld in an American court.

Conclusion

In the digital world, reusing of works has become rampant, given that only a limited amount of resources and skill is required to do it. It has become increasingly important, therefore, for artists to be able to exercise some degree of control over how their work is treated and used.

Since most artists, especially those in India’s music industry, relinquish the copyright in their work to societies or production houses, moral rights is the only way in which artists can ensure that their work is not misused. Thus, in my view, Section 57 should be interpreted in a manner that recognises these changes in society and allows the author a greater degree of control over how their work is treated and used.

[1] Morrison Leahy Music Ltd. v Light-Bond Ltd [1993] E.M.L.R. 144.

[2] Mosley v Stanley Paul & Co. [1917-23] Mac.C.C. 341.

[3] Shostakovich v Twentieth Century Fox Film Corp (1948) 80 NYS 2(d) 575.

H/T: We thank Sandeep Rathod for bringing this story to our attention.

Image from here.

The Notice on Plant Breeders’ Rights (“Notice”) has opened a whole new can of (boll)worms! In this post, I hope to describe the following:

1. The convoluted history of seed price control orders in India
2. Main features of the Notice (as above mentioned)
3. The controversial relationship between the Patents Act,1970 and the Protection of Plant Varieties and Farmer’s Rights (“PPVFR”) Act, 2001 (in so far as it relates to the dispute involving Monsanto and the domestic seed companies)

Monsanto’s BG Technology and its Dealings with Indian Seed Companies

Monsanto, an American agricultural biotechnology company, introduced Bt (Bacillus thuringiensis) cotton technology in order to increase the resistance of cotton seeds against the bollworm, a pest which has often posed a threat to the crop. There is no patent on the first generation of Bt technology, termed as Bollguard (“BG”) technology. Since cotton plants developed some resistance, Monsanto introduced Bollguard-II technology (“BG-II”), which provided for double-gene insect protection and obtained a patent for the same in many countries including India. They sub-licensed the BG-II technology to Indian seed companies and sold Bt Cotton transgenic seeds to them. The seed companies utilised them in order to breed hybrid cotton seed varieties resistant to bollworms.

Given the high demand for the price regulation of these costly seeds, multiple State Governments passed orders and sought to fix the seed prices including the “trait” value (a short hand term that refers essentially to licensing fees paid by seed companies to Monsanto for using its patented BG-II technology along with the associated ‘know-how’ and ‘trade secrets) at different rates.

Noting the need to fix uniform prices, the Central Government passed the Cotton Seeds Price (Control) Order (“CSPCO”) in 2015. Apart from giving the power to the Central Government to fix the maximum sale price (MSP) of cotton seeds, it also provided them the power to fix trait value/royalty fees.

Relying on the CSPCO, eight Indian seed companies demanded that Monsanto reduce their trait fees and they refused to pay their contractual dues. Monsanto responded by terminating their contracts and initiated arbitration proceedings to recover the contractual payments.

In 2016, the CSPCO was challenged before the Karnataka HC by the Association of Biotechnology Led Enterprises and Namdhari Seeds Pvt. Ltd. The court held that the Central Government had the power to fix the seed prices, including “trait value”. The Ministry of Agriculture also released the “Licensing and Formats for GM technology Agreements Guidelines” in 2016. These guidelines required patentees such as Monsanto to provide access on fair, reasonable and non-discriminatory (FRAND) terms to seed companies. The government however withdrew these guidelines later.

Monsanto recently received a favourable award in its proceedings against Nuziveedu Seeds Ltd. and one of its affiliates, Prabhat Agri Biotech Ltd for recovery of their contractual dues. Further, in March, the Bombay HC ordered Nuziveedu to deposit a sum of Rs. 138 crores in the Court towards payment of such dues.

All About the Notice on Plant Breeders’ Rights

The Notice relies on Section 28 of the PPVFR Act which confers IP rights on registered breeders to produce, sell, market, distribute, import or export the variety. It states that the sale and the sale price fixation can now be done only with the authorization of the registered breeder/agent/licensee.

The current procedures for fixation of sale price of seeds and trait value fees are governed by the Seeds Act, 1966 and the Essential Commodities Act, 1955. The Notice states that such price fixing procedures are now to be brought within the ambit of the PPVFR Act, instead. The process of seed certification is to be continued, however, as provided under the Seeds Act. Note here that the PPVFR Act does not extend to plant varieties not registered under the Act. Hence, the changes to be brought about in price fixation and trait value fixation procedures will only be done in case of registered plant varieties.

The Notice further mandates that Rule 36A must be followed. This provision was added to the PPVFR Rules when they were amended in 2012 and it requires the breeder to make registered plant varieties available to farmers at “reasonable market prices”. The Notice finally touches upon the non-obstante clause under Section 92 of the Act which states that the Act shall have overriding effect over any other provisions to the contrary, in any other law.

Can both the Patent Act and PPFVR Act apply?

Before I proceed to discuss the apparent conflict between the aforementioned legislations, it is essential to gain an understanding of the two different types of IP protection applicable in the present scenario. Monsanto’s patent is directed towards a method for creating a transgenic plant i.e., a nucleic acid sequence found in the micro-organism Bt, which when injected into plants, aids them in developing resistance to insects such as the bollworm. These genetically modified crops or plant varieties, incorporated with the Bt trait, can then be classified as transgenic plant varieties and be registered and protected under the PPFVR Act by their breeders (the Indian seed companies) if they satisfy the NDUS criteria (Novelty, Distinctiveness, Uniformity and Stability) given under the Act.

The issue of the conflict between the Patents Act and the PPFVR Act was first brought into the limelight in 2017 when Monsanto instituted a patent and trademark infringement suit in the Delhi HC against various Indian seed companies for not paying the contractually determined trait fees. In the interim order passed by the Single Judge, they refused to rule on patent validity at interim stage and instead, delved into whether the PPVFR Act was applicable. Section 2(za) of the PPVFR Act was cited, which states that “variety” refers to a “plant grouping”. It was stated that since the statute doesn’t throw further clarity on this term, one could refer to the explanatory notes on the definition of variety under the 1991 Act of the UPOV Convention (International Convention for the Protection of New Varieties of Plants). The definition of “plant variety” provided therein excludes disease resistant trait or a chemical or other substance like DNA or a plant breeding technology. It was hence concluded that Monsanto’s patented invention could not be classified as a plant variety since the patent was merely directed to a gene/trait.

The matter was then appealed to a division bench of the Delhi HC in 2018. In its ruling, they held that the patent was invalid under Section 3(j) of the Patents Act. Section 3(j) excludes “plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals”. It was further stated that Nuziveedu and its subsidiaries had applied for IP protection for all their Bt. Cotton Plant varieties under the PPVFR Act. The Court, in its order, observed that Section 2(za) of the Act included “transgenic variety”, and hence, the same could apply to Bt cotton plant varieties. The Court observes the following:

“…it is held that the learned single judge’s conclusion that the PV Act and the protective mechanism was an option, or alternative, which Monsanto could possibly have resorted to, in addition to patent protection, under the Patents Act, is incorrect. These two systems are not complimentary, but exclusive, in the case of all processes and products falling under Section 3 (j) of the Patents Act. Nuziveedu’s contention with respect to patent exclusion, therefore, succeeds. The court at the same time realizes that the patent granted to Monsanto has stood all this while. Given these factors, it is held that Monsanto is at liberty to claim registration under the PV Act, with the benefit of its filing the patent application, as far as the date of filing and for purposes of Section 15 of the PV Act.”

This decision of the Division Bench was further appealed in the SC in 2019. Arguments regarding the applicability of the PPVFR Act were raised before the Court. The SC held that the Division Bench should not have summarily invalidated the patent without a trial. The Court correctly did not delve into the applicability of the PPVFR Act and other arguments brought forward and left all such questions of law and fact open. Since the Supreme Court set aside the judgment of the Delhi HC Division Bench and remanded the matter to the trial court, Monsanto’s patent claim currently remains undecided.

In his analysis on the Delhi Division Bench’s 2018 decision, Prashant pointed out the inadequacy of the claim construction done by the Court and its failure to identify the invention correctly. He also pointed out flaws in the Court’s validity analysis. The Court concluded that once the Bt technology was incorporated into a plant, the resultant transgenic plant could no longer be protected under the Patents Act and had to be registered under the PPVFR Act to receive IP protection. As Prashant correctly pointed out, the patent claim is directed to a genetic sequence, not the plant. Hence, the issue of the clash between the PPVFR Act and the Patents Act should not have arisen in the first place itself.

To sum up, we can refer to Prof. Basheer’s opinion on this issue: “This new plant variety registration, however, does not extinguish Monsanto’s upsteam patent rights. Neither does the patent right override the plant variety protection. They co-exist. As such, seed companies cannot commercialise their hybrids without a patent licence from Monsanto, in much the same way that Monsanto cannot sell or distribute these hybrids without permission from the seed company.”

In a follow-up post, I’ll be examining the power to monitor prices of seeds and the multiple Authorities in which such power is vested in.

Image from here

Image from here

We’re pleased to pleased to bring to you a guest post by our Fellowship applicant, Arushi Gupta. Arushi is a 2nd year student at Maharashtra National Law University, Mumbai. This is her first submission for the Fellowship.

“See You Later, Alligator!” The Delhi High Court Rejects Crocs’ Suit For Passing Off Of Registered Design

 Arushi Gupta  

On 7^th March 2019, in Crocs Inc. USA v. Aqualite India Limited, the Delhi High Court rejected the maintainability of a suit of passing off for a registered design. The plaintiff had filed this suit after its suit of design infringement was rejected on the ground of prior publication. Thus, the first issue was whether the suit of passing off for a registered design was maintainable. The second issue was whether the passages in Carlsberg Breweries v. Som Distilleries adjudicated the controversy and, if not, whether the said paragraphs were contrary to Mohan Lal v. Sona Paint and Hardwares.

The Plaintiff contended that the common law remedy of passing off was maintainable for a registered design and submitted that the three-bench in Mohan Lal supported its claim. The Defendant challenged the maintainability of the suit in light of the dicta in the five-bench in Carlsberg and contended that the cause of action only lies when elements other than the registered design are used as trademark/trade dress. In response, the Plaintiff submitted that the definition of mark in the Trademarks Act includes shape and bar to registration of a mark as shape is only in the Design Act. Further, it averred that Carlsberg was confined to the joinder of infringement of design and passing off and otherwise affirmed Mohan Lal.

The Court ruled that a registered design couldn’t enjoy protection as a trademark. Its rationale was in two parts:

(1) The legislative intent behind Section 2(d) of the Designs Act.

(2) The interpretation of the judgment Mohan Lal v. Sona Paint and Hardware where the Delhi High Court had held that an action of passing off is maintainable in a registered design.

I. The legislative intent behind Section 2(d) of the Designs Act

Section 2(d) defines a design as “…the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article… but does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958…”

According to Section 2(d), any shape that is capable of being a mark (on account of inherent or acquired distinctiveness) cannot enjoy protection as a design. Thus, if a mark is registered as a design, it ceases to be a mark.

The Court’s rationale was that allowing a design to register as a mark would defeat the purpose of Section 2(d). The legislature has limited the protection for designs. Thus, the Court reasoned that the intent would be defeated, if after the expiry of 20 years, the same features would become a trademark. This would ever green designs and over protect them. Further, an anomalous situation would arise if one category of marks would not enjoy protection as a design whereas the other category of design would be able to enjoy protection as a mark. This would be discriminatory.

In my view, these two scenarios cannot be equated. First, the argument of ever greening is flawed. In a previous post, Professor Basheer had discussed the architecture of the Design and the Trademark Act. Although, the Design Act grants protection up to 20 years, it offers protection against substantially similar designs. In contrast, while Trademark Act offers protection for life, the ‘likelihood of confusion’ standard is much stricter. Therefore, the remedies offered differ. Second, the intent behind limiting design protection is not lost. When the design falls in the public domain, it may be used by others provided they ensure no confusion as to source.

Professor Basheer also pointed to the intent behind Section 2(d). When a mark is registered as a design, it means that the shape already has the ability to identify source. Thus, the purpose of the trademark owner to register the shape mark under the Design Act would be to avail the substantially similar standard under the Design Act. Section 2(d) bars this.

On the other hand, when a shape is registered as a design, over years of exclusive use, in some situations, it gains the ability to identify source. Thus, it requires the protection of Trademark Law to protect the interests of the owner and consumers from confusion as to source. For instance, consider the shape of Coco-Cola bottles. It was not always source-indicator for the company. However, due to widespread and long use, it acquired secondary meaning to constitute as a trademark.

II. The judgment in Mohan Lal v. Sona Paint and Hardware

In Mohan Lal, the Court held that post-registration there is no limitation on the use of a registered design as a mark since the use of a registered design as a trademark is not a ground for cancellation under Section 19 of the Design Act. However, the Court in Crocs read the judgment as holding that “post-registration a design may be a trademark if ‘something extra’ than the design functions as a mark.”

To substantiate, the Court referred to a judgment, Smith Kline & French Laboratories Ltd. vs. Sterling-Winthrop Group Ltd., which was cited in Mohan Lal. The decision was regarding a color mark where the half-and-half color combination of the capsule was distinctive. It is pertinent to note that this judgment was delivered at a time when non-traditional marks were not considered as trademarks. It was succeeded by in Re Coco-Cola where the Judge had refused to grant trademark protection to the shape of the Coco-Cola bottle since he believed no trader should be allowed to gain monopoly in shapes of containers that carry goods. In Smith, the Court considered whether product features such as colors or shapes are not marks since they form an essential part of the good. However, the Court conclusively held that the contention that a mark is not register able because it covers the whole surface of the goods was bad in law. Thus, as stated in paragraph 21.7 of Mohan Lal itself, the idea of trademark as “something extra” is untenable in cases of overlap. In cases of overlap, a design, which is part of the goods, begins to identify source. Even in Smith, the something “extra” was the color of the capsules, which was very much part of the design of the goods.

In the present case, the Court contrived this ratio to mean that if any extra features other than the registered design were used as a mark then only those additional features can claim protection as a mark. This means that no shape registered as a design can possibly gain the status of a mark. To my mind, this argument is untenable for the reasons provided above.

To summarize, the legislative intent behind Section 2(d) is to prohibit a trademark from enjoying protection as a design. It is not to prohibit a design from enjoying protection as a trademark. Rather, as discussed in by Professor Basheer in a previous post, it is the legislative intent of Section 19 to prohibit a design from (simultaneously) enjoying protection as a mark. Thus, the ratio of Mohan Lal relied on Section 19 to substantiate its holding.

Section 19 (1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely: –

(e) It is not a design as defined under clause (d) of section 2.

The section states that a design can be cancelled if it is not a “design” within the meaning of Section 2(d). Thus, if a design were used as a mark, it would lose its identity as a design. Since the Trademark Act does not prohibit a design to be registered as a mark, the design could be registered as a mark. However, upon use of the design as a mark, it would cease its identity as a design. Interestingly, the section does not prohibit an expired or cancelled design from registration as a mark. Rather, it only prohibits simultaneous protection. Thus, the concerns of overprotection and ever greening identified as the reason for prohibition of overlap remain unaddressed.

Allow me to take you back to my Coco-Cola example. If Coco-Cola made the wise decision of registering as a trademark, this is what its market situation would look like. It would enjoy protection for eternity and remedies such as infringement and passing off. However, Coco-Cola would be exposed to insults such as local traders pouring in their own drink into its novel design for a bottle. It would be unable to prove that consumers would believe that local drinks are coming from the same source as the famous drink. On the other hand, if Coco-Cola made the decision of registering as a design patent, it would enjoy the broader standard of “substantial similarity” but lose out on crucial remedies of possible injunctions against confusingly similar bottles.

Thus, the protection of a registered design cannot overlap with a trademark. In

Carlsberg, the Court held that because of Section 19(e) the design would have to be used as a trade dress or packaging to claim protection under the remedy of passing off. To my mind, this limitation is only a decision of policy. The Design Act prohibits the overlapping of rights to avoid designs from getting a backdoor trademark (not trade dress or packaging!) and prolong their life. However, as I have argued earlier, overlapping does not prejudice design or trademark. Rather, it ensures that shapes, which are designs and have the ability to indicate source and protect consumer from confusion are protected.

In my previous post, I had summarised Monsanto’s past dealings with Indian seed companies and the history of seed price control orders in India. I had also pointed out the confusion regarding the applicability of both, the Patents Act and Protection of Plant Varieties and Farmer’s Rights Act (PPVFR Act), to Bt cotton seeds. From the Notice, it is clear that it seeks to give clarification on the powers of the Plant Authority to monitor prices of registered plant varieties under the PPVFR Act. As noted in this article, a large percentage of Bt cotton seeds in the market are those of registered plant varieties. It is, hence, essential to examine the scope of the PPVFR Act and analyse all the possible legal conflicts which may arise.

Who should monitor prices-The Central Government or the Plant Authority?

In its 2017 interim order, the Delhi HC had noted that Entry 33 of the Concurrent List allowed the State and the Central Government to monitor production, supply and distribution of cotton seeds. Entry 34 of the Concurrent List confers legislative power to determine price control. Under Section 3(c) of the Essential Commodities Act, 1955, the Central Government is authorized to fix the price of any essential commodities, including cotton seeds which may be transgenetically or genetically modified. The Seeds Act, 1966, under Section 7, provides for regulation of sale of seeds of notified kinds or varieties. The Cotton Seeds Price (Control) Order (“CSPCO”) in 2015, which gives the Central Government the power to monitor seed prices, derives its legitimacy from the afore-mentioned legislations.

There is an apparent clash, however, between the Central Government’s power to monitor prices of seeds and the Plant Authority’s power to monitor prices of Bt cotton plant varieties. Since it would be correct to assume that the PPVFR Act applies to the varieties of the Bt cotton seeds registered under the said Act, the Plant Authority is authorised under Section 8(2)(e) to ensure seeds of registered varieties are available to farmers and provide for compulsory licensing of such varieties if the breeder does not arrange for production and sale of seeds in the prescribed manner. Further, the recently released Notice on Plant Breeders’ Rights (“Notice”) also implies that the power to monitor sale and price fixation of seeds of registered varieties should vest in the Plant Authority.

In my opinion, the principle of “generalia specialibus non derogant” (the provisions of a general rule must yield to a special one) should apply in this case. Since the PPVFR Act is a special Act intended to “provide for the establishment of an effective system for protection of plant varieties, the rights of farmers and plant breeders and to encourage the development of new varieties of plants”, it should prevail over the Essential Commodities Act and Seeds Act, which are general laws. Further, the PPVFR Act itself provides a non-obstante clause under Section 92 which provides that the Act shall override other provisions to the contrary, in all other laws, to the extent of any “inconsistency”.

The Notification, hence, rightly points out that the fixation of prices of seeds of registered varieties (in the limited context of section 8(2)(e)) should be done by the Plant Authority.

Should the trait value be determined by the Central Government?

Note that the “trait value” differs majorly from the seed price. As already explained in my previous post, trait value can be described as the “licensing fees paid by seed companies to Monsanto for using its patented BG-II technology along with the associated ‘know-how’ and ‘trade secrets. Further, under the CSPCO, it has been described as “the amount, which the Licensor collects from the Licensee under the License Agreement for granting license to GM Technology”. Though the Notice mandates that the fixation of the trait value should be done solely under the PPVFR Act, the Act does not vest such power in the Plant Authority. Also, the Plant Authority’s power to monitor prices of seeds under Section 8(2)(e) cannot translate into the power to monitor trait values since, as mentioned earlier, trait value and seed price differ from each other.

It would then be prudent to assume that the power to fix trait value still vests in the Central Government, as laid out in the CSPCO. In an instance, when this power of the Government had been challenged, the Karnataka HC observed as follows:

“Thus, unless it is manifestly unjust, any action by the Government in exercise of its regulatory power in the matter of availability of any essential commodity at a fair price will be perfectly legal and justified. With a view to ensure that the Bt. Cotton seeds are made available to the farmers at fair prices, regulation of the trait value is essential and is one of the steps, which will certainly help in ensuring fair price. In our opinion, trait value forms an intrinsic and integral part of the cotton seeds and the two cannot be severed if the price of the Bt. Cotton seeds is to be effectively regulated so as to benefit the consumer public. Trait value is a key component of the price of cotton seeds. Therefore, it was incumbent upon the Central Government to fix the trait value. We are also of the view that Bt. Cotton seeds are nothing but cotton seeds, which is an essential commodity. Prima facie, we are of the view that there is no illegality in fixing the trait value.”

Would it, however, be fruitful to vest this power in the Central Government? The reports of political pressure and backdoor deals to which the Central Government has apparently succumbed to in fixing such prices seems to imply otherwise. Further, in his post on the CSPCO, Rahul had pointed out that lowering the trait fees, unlike lowering MSP, would have no impact on farmers’ access to Bt technology since it would only prove beneficial to powerful seed companies and the National Seeds Association of India. He also noted that the same would amount to “grant of a license in the nature of a compulsory license to seed manufacturers to use the patented genes of biotechnology companies under the garb of promoting equitable distribution of an essential commodity”.

In such a case, would it not be preferable to have a neutral, independent Authority to be in charge of monitoring trait fees? Such questions need to be mulled over, in addition to the patentability of Monsanto’s invention, to arrive at a wholesome solution for all the stakeholders involved in this protracted legal battle.

Image from here

Image from here

We’re pleased to bring to you a guest post by Shubham Borkar and Nitish Daniel. Shubham is a Senior Associate at Khurana and Khurana Advocates and IP Attorneys and Nitish is an Assistant Legal Advisor at ONGC.

Need for Boosting Trademark Law for Keeping Pace with Artificial Intelligence

Shubham Borkar & Nitish Daniel 

Business Giants like Google, Facebook, IBM are integrating AI systems into their operations, so are online retailers, online marketers, and product manufacturers like Amazon. For example, you upload a picture on Facebook, it suggests you the name of the person you want to tag. Amazon Inc. admits that without machine learning based AI systems, it won’t be able to grow its business, improve its customer experience and selection, and optimize its logistic speed and quality. Amazon recently announced a new initiative called ‘Project Zero’ that will use AI to detect and remove counterfeit products. This initiative is in its initial stages, but eventually is likely to be implemented globally. So, marketing and product branding is being affected by AI revolution. In this post, we will be discussing the implications likely to arise in trademark law due to AI.

What’s Artificial Intelligence (AI)?

The definition of artificial intelligence (AI) hasn’t been stagnant, rather ever involving. The term ‘artificial intelligence’ was first coined by John McCarthy in 1956, the focus of which was ‘thinking machines’. Eventually, the meaning evolved with the modern meaning focusing more on the ability of the machine to imitate human intelligence. According to Oxford English Dictionary, ‘artificial intelligence’ is “The theory and development of computer systems able to perform tasks normally requiring human intelligence, such as visual perception, speech recognition, decision-making, and translation between languages.” Frankly, it can be said there are too many definitions of AI, but this simplistic definition gives us enough understanding to analyse the legal implications surrounding the field. AI systems can be classified into different categories, the main one being strong AI (systems think and perform tasks exactly like a humans) and weak AI (systems focusing just on one narrow task).

We might feel that trademark law has always been the same and has always served the same purpose, but the way we shop has undergone multiple revolutions and each of these revolutions have influenced several changes in trademark law. Trademark law was laid down in the era when shopkeepers or dedicated shop assistants used to suggest the products to consumers which the consumers bought. As these shopkeepers or shop assistants were well versed with every product’s details and trademarks, the likelihood of them getting confused with other deceptively similar marks was infinitesimal. Then came the era of self-service stores in 1916 with the Piggly Wiggly chain of stores of Memphis USA which revolutionized the way we buy products. With the advent of this era, the consumers made shopping choices themselves based on the reputation of the brand. Consequentially, the value trademarks served increased multiple folds, but so did the likelihood of consumers being confused between trademarks. In the 1990s we were hit with another revolution of online retailing with which trademark law faced the challenges of incorporating new concepts of domain names, metadata, meta-tags, initial interest confusion etc. The social media revolution of the 2000s impacted our buying choices by suggesting products while we scroll the social media feeds.

Now, with the advance of AI, another revolution seems to be taking place in the consumer market. These online retailers are using AI to recommend us products that we would like to buy by analysing our buying profile, search history and many other things. Trademarks served as a means to help consumers choose a product they trust and want to buy. AI in the future is likely to deprive the consumer of this choice and remove the consumer from the decision making process as to what product to buy. Analysis by Mr. Ajay Agrawal, author of the book ‘Prediction Machines: The Simple Economics of Artificial Intelligence’ reveals that AI systems will reduce the cost of accurately predicting an outcome drastically. So, he predicts that in the future, marketing strategy would change from ‘shopping to shipping’ to ‘shipping to shopping’. Online retailers would be able to accurately predict your needs using AI and then ship out the product to you, you will try the product and if you like it, the payment will be deducted. They will be able to do so as AI outcome prediction would be extremely cheap, enabling them to invest more into efficient shipping technologies like drones as well as product return infrastructure.

Currently, we are seeing a surge of products like Amazon Echo, Google Home, and Apple HomePod that provide AI assistance to humans. Consider a scenario where such an AI assistant is asked by a person to buy a product based upon the predetermined standards for buying that product such as quality and quantity. Such ‘Amazon Echo’, ‘Apple HomePod’, or ‘Google Home’ orders a counterfeit/infringing product, would then Amazon or Google be liable for secondary infringement along with the infringing product manufacturer. How will the standards of ‘likelihood of confusion’, ‘imperfect recollection’, and ‘average consumer’ applies to AI? Or should they at all be applied to the AI?

Same issues will have to be considered in case of another emerging revolutionary technology called the Amazon Dash Replenishment Service (DRS) which enables connected devices to order physical goods automatically from Amazon when supplies are running low. The customer selects the products they want to automatically reorder and the device supporting DRS measures and tracks usage and when the supplies are running low, places an order using DRS, and Amazon then ships the product to the customer. In future such service may have the discretion to choose the product as well.

If this seems too far fetched to you then there are AI chatbots in the marketplace that act as personalized shopping assistants, an example would be eBay’s ShopBot, H&M’s Kik. Surveys reveal that consumers are comfortable with sharing their personal information to receive better recommendation on products and a good AI chatbot influences their loyalty. What if ShopBot suggests an infringing product to the consumer and the consumer buys it? Shouldn’t such AI assistants be forced to be indiscriminate between brands while suggesting a product, otherwise it will keep recommending those brands which pay such AI assistant corporation?

The beauty brand Coty has partnered with Amazon to launch a new skill for the Echo Show, which is the first Alexa-enabled voice device with a screen. The interface allows users to input personal attributes, including hair, eye and skin color, and Coty supplies an on-demand, occasion-based look planning service, capable of delivering more than 2,000 combinations of hair and makeup looks. Along with curated tutorials and quick tips, thereby acting as a user’s personalized stylist. The consumer will be able to choose the look they like and order the products required to achieve that look via Amazon Echo voice. Shouldn’t such AI assistants be forced to be indiscriminate between brands while suggesting a product, otherwise it will keep recommending those brands which pay such AI assistant corporation?

All this demands revision of concepts like ‘imperfect recollection’, ‘likelihood of confusion’, ‘the average consumer’, and ‘secondary infringement’ etc. which form the foundation of trademark law, as all these are centered around human beings and their capabilities. In Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited,[1] Supreme Court of India clarified that average consumer is the one with average intelligence and imperfect recollection. AI will have neither average intelligence nor imperfect recollection and there would be less likelihood of confusion, so perhaps trademarks could be closer looking? How would the courts apply the ‘average consumer’ standard to AI? Would these online retailers be liable for secondary infringement?

AI is also likely to influence how trademark enforcement will be done. According to Charlie Hill, head of product at TrademarkNow a global IP resource believes that because of factors like numerous applications and registrations of new trademarks, unsynchronized and disconnected trademark offices, and imperfect analysis of trademarks by human eyes, humans aren’t well suited for trademark analysis and we must incorporate AI based trademark searching and monitoring services.  As mentioned above, Amazon’s Project Zero is an anti-counterfeiting measure introduced by Amazon that uses AI. So, in future more trademark enforcement measures are likely to be introduced that will use AI.

In conclusion, with the current AI revolution that is taking place, every legal field is going to be affected and trademark law would also not be spared. Therefore, we need to constantly keep exploring how it will affect trademark law and try to keep the law at pace with the AI development, so that these trademark issues don’t become loopholes.  Currently, nobody can definitely suggest how solutions to these issues are likely to unfold. But, by being positive and influencing law the correct way, we can hope that the ultimate result is the elimination of counterfeiting, quality products for consumer, reduction of monopoly, and increase in competition.

Thematic Highlight 

I had written a two-part post on the Notice on Plant Breeders’ Rights. In the first post, I examined the history of seed price control orders in India and the main highlights of the Notice and the controversial relation between the Patents Act and the Plant Varieties  Act in relation to Monsanto’s dispute with Indian seed companies. In my post, I conclude that both the legislations co-exist harmoniously. In the follow-up post, I examine the the clash between the Central Government’s power to monitor prices of seeds and the Plant Authority’s power to monitor prices of Bt cotton plant varieties and conclude that the latter should have the power to monitor such prices. I also examine the Central Government’s power to monitor trait fees.

Topical Highlight

Rishabh wrote a post on the controversy surrounding the trailer of the biopic ‘PM Narendra Modi’ and Javed Akhtar’s alleged contribution to the soundtrack ‘Ishwar-Allah’ in the movie. In his post, Rishabh examines the ingredients of the right to integrity under Section 57(1)(b) of the Copyright Act. He argues that, in addition to distortion, mutilation and modification, “derogatory treatment” of work under the statute should also include use of the copyrighted work in a different context.

Other Posts

In the first application for the SpicyIP Fellowship 2019-20, Arushi wrote a post on the Delhi HC’s rejection of Croc’s suit for passing off of a registered design. In her post, she examines the legislative intent behind Section 2(d) of the Designs Act and revisits the Mohan Lal judgment. She argues that the Court is incorrect in its conclusion that a shape registered as a design cannot claim protection as a mark. She argues that Section 2(d) only prohibits a trademark from enjoying protection as a design and it does not prohibit a design from enjoying protection as a trademark.

We had an interesting guest post on the implications of AI on marketing and product branding and its consequent effects on trademark law. In their post, the authors examine different kinds of products which provide AI assistance to humans and conclude that trademark law concepts which centre around human capabilities will need revision in the context of these new developments.

Other Developments

Indian

Judgments

Technova Tapes (India) Private Limited v. Technova Imaging Systems Private Limited – Madras High Court [March 13, 2019]

The Court set aside a permanent injunction restraining the Appellant from infringing and passing off the Respondent’s registered mark “TECHNOVA”, by using an identical mark in respect of adhesive tapes. In arriving at this decision, the Court noted that the mark innovated by the Respondent could be used by anyone and it could not be concluded merely on the basis of such use that the Appellant possessed a dishonest intention. It was further noted by the Court that the goods of the Parties were altogether different, and registration of the Respondent’s mark under a Class would not grant it a monopoly to use it for all goods under that Class.

Super Smelters Limited v. SMC Power Generation Limited – Calcutta High Court [March 19, 2019]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “YY RIBS” by selling or offering for sale TMT Bars which were a colourable imitation of the Plaintiff’s mark. In arriving at the decision, the Court acknowledged that the shape of goods are considered as an element of a trademark, and thus copying the unique shape of goods on the mark could lead to infringement. The Court further noted that the Defendant had prima facie engaged in infringement of Plaintiff’s mark.

Metro Brands Limited v. Metro Footwear – Bombay High Court [March 26, 2019]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “METRO” and its formative marks by using identical marks, in respect of footwear. The Court however did not give any reasons for the decision.

Hindustan Unilever Limited v. JMS Industries – Bombay High Court [March 26, 2019]

The Court granted an interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “SURF EXCEL” by using deceptively similar marks “SARAF” along with the “SPLAT” device, in respect of footwear. However, the Court failed to give any reasons for the decision.

M/s. Nav Jagriti Niketan Education Society v. Delhi International School and Others – Delhi High Court [March 28, 2019]

The Court vacated an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “DELHI INTERNATIONAL SCHOOL” by using an identical mark, in respect of offering educational purposes. The Court observed that the previously granted interim injunction was based on the wrong assumption that the Plaintiff had registered the word mark “DELHI INTERNATIONAL SCHOOL”. It was further noted that there was no restriction over the Defendants from using the word mark and domain containing “DELHI INTERNATIONAL SCHOOL” as it would be unlikely that students in Delhi would want to seek admissions in the Defendants’ schools.

Time Incorporation v. Mr. Anand Nadar and Another – Delhi High Court [March 29, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered marks “FORTUNE ASIA” and “FORTUNE” by using a deceptively similar mark “FORTUNE ASIA 2018 & CIO AWARDS” and the domain name “www.fortuneasiaevent.com” in respect of its blockchain technology and the marketplace. In arriving at this decision, the Court observed that the Defendant had no real prospect to defend the claim as the mark was registered in favour of the Plaintiff and was clearly infringing its reputation and goodwill.

Shyam Steel Industries Limited v. Shyam Sel and Power Limited and Another – Calcutta High Court [April 2, 2019]

The Court rejected the grant of an interim injunction restraining the Defendants from infringing and passing off the Plaintiff’s registered mark “SHYAM”, by using an identical mark in respect of TMT bars. In arriving at the decision, the Court noted that the mark was a part of the Defendants’ business name. The Court stated that the Defendants would be granted time to file affidavit-in-opposition within two weeks to show the honest adoption of the mark.

Louis Vuitton Malletier v. Iqbal Singh and Others – Delhi High Court [April 3, 2019]

The Court upheld its interim injunction granted previously in restraining the Defendants from infringing and passing off the Plaintiff’s marks “LOUIS VUITTON” and “LV” by using identical mark, in respect of garments. The Court observed that the Plaintiff was the registered proprietor of its marks and the Defendants had employed these marks in sale of its counterfeiting products. It was further noted by the Court that in doing so the Defendants intended to ride off the reputation and goodwill enjoyed by the Plaintiff. Consequently, the Court granted damages to the tune of Rupees 3.5 lakhs in favour of the Plaintiff in light of the flagrant infringing activities of the Defendants.

News

• Ambala shopkeeper selling fake clothes of international brands booked under Copyright Act
• Startup action plan: 120 ventures get patents, 1 granted in just 101 days
• Bengaluru college students invent smart helmet, apply for patent

International

• ContentsDeal project is putting copyright on the blockchain
• Gigi Hadid Wants Court To Toss Copyright Infringement Claim Over Instagram Photo
• Now in the court of a-peels: A copyright dispute over a banana costume

We are pleased to announce that the Inter University Centre for Intellectual Property Rights Studies (IUCIPRS), CUSAT is hosting a seven-day exhaustive training programme for law teachers from 21st to 28th June, 2019. The theme for 2019 is “IPRs and Competition-Social Dimensions”. The deadline for submission of applications is May 15, 2019. For further details, please read the announcement below:

Announcing the 5^th edition of our Annual Refresher Course on IPR for Law Teachers on Developmental Perspectives of Intellectual Property Rights, June 21-28, 2019

We are pleased to inform that our Centre is hosting a seven-day exhaustive training programme for law teachers. The theme for 2019 is “IPRs and Competition-Social Dimensions”, which is going to take place in the month of June (21st -28th). The last date for application is May 15, 2019.

Objective

We have been conducting various programmes on IP laws so as to create awareness among students and faculty. One among those is the “Refresher Course for Law Teachers”. The seven day programme is aimed at evolving a group of experts in IP laws, both in teaching and research, who would be capable of addressing various policy issues as well as academic needs of the country for a crucial and highly technical area of law. It is a series of programme with the broad theme as Developmental Perspectives of IPR Laws, wherein every year we choose specific area in IPRs for through deliberations and discussions. The programme started in 2015 focusing on the various forms of IPRs. It was followed by “Patent Law and Development” in 2016 and “Copyright: A Social Justice Perspective” in 2017. This year the theme of our programme is “IPRs and Competition-Social Dimensions”, which is the fifth in series of the programme. Our purpose behind this theme is to look at the look at the interplay between competition and intellectual property rights so as to understand whether both the legal regimes need to work together so as to achieve a common objective of global welfare.

Concept Note

The intellectual property rights and the competition may seem to be in conflict with each other at the first instance. However, a deeper understanding of the same sheds light to the fact that both aim to achieve a common end- i.e. global welfare. The means to this end, followed by both the systems, might be diverse.  Intellectual property, in itself, does not confer absolute monopoly to the IP holder but a limited monopoly keeping in mind the consumer welfare that the IP seeks to achieve. If IP is to promote affordable access, one cannot do so forgoing competition. It is with this view that competition principles are pushed into the IP framework. This is evident from the express competition provisions present inside the TRIPs agreement, which is the present international document binding the member countries to create national IP law. Apart from the express provisions on competition, TRIPs contains provisions which has an effect of encouraging competition. The positive side of bringing competition inside the IP law is that the dynamic efficiency of the IP regime does not get hampered. At the same time, this does not prohibit the national competition policy and authorities from monitoring the conduct of the IP holders. It is therefore the aim of this programme to have a better understanding of the tryst between competition law and IP.

The tentative dates of the programme are from June 21st to 28th, 2019. The sub themes for the programme are:

1. Principles of Competition
2. Concept of Innovation and economic efficiency
3. Interplay between competition and intellectual property law
4. Indian Competition law, its principles and intellectual property law
5. Competition principles within Indian Patent Law
6. Patents and Access to Medicine: Competition Law as a Flexibility
7. Competition principles within Indian Copyright Law
8. Plant Varieties Law and Competition

Registration Details

Teachers who are interested to participate may register by mailing to rc.iuciprs@gmail.com along with a brief description of their academic profile, on or before May 15, 2019. Registration fee for the programme is Rs. 2000/-(inclusive of working lunch and refreshments for the programme days). Participants will be reimbursed the amount of second class sleeper charges from the railway station nearest to Aluva, Cochin. Participants have to manage and bear the cost of accommodation. Participation is limited to the first thirty registrations. For further details of the programme, kindly log on to our website ciprs.cusat.ac.in.

For Queries

Co-ordinator

Anjana Girish

Assistant Professor, IUCIPRS

Email: anjana.girish87@gmail.com

Mob: 91 9847063736

Joint Co-ordinator

Vishnu Sankar P.

Research Officer, IUCIPRS

Email:  vishnusankar.cusat@gmail.com

Mob: 91 8089726467

Student Co-ordinator

Vivek A.V.

Email:vivek16kichu@gmail.com

Mob: 8714310160

The Sony Betamax case may be familiar to some readers of this blog. The US Supreme Court ruling first elaborated the concept of ‘substantial non-infringing use’ as applied to the sale of technologies which could enable piracy or copyright infringement. In many ways, this ruling and the rationale behind it have been applied to subsequent technologies and regulations around these technologies – from p2p filesharing, to, most recently, online content hosting platforms. The Betamax and its history should be carefully studied to understand the impact that laws, specifically copyright law, can have on the development and usage of technologies and innovation.

At Medianama, I wrote a short riff on this subject, examining the relationships between the three-and-a-half decade old Betamax case and the recent regulatory attempts around restricting the use of technologies through measures like the new EU Copyright Directive or India’s draft Intermediary Liability Rules. My opinion, encompassed in the concluding paragraph –

“The Betamax ruling allowed innovation in content sharing technologies without requiring creators to monitor the use of their technology, or fearing that they will be liable for its misuse. Yet, as our technical ability to create and share evolves, our laws seem to be regressing from this standard. The choice for the future is clear – we can either side with this legal tradition, or place legal shackles on our ability to create, share and innovate.”

The full piece is available at Medianama, here.