A recent judgement of the Bombay High Court may have finally put to rest the convoluted saga of the applicability of the statutory licensing scheme under the Copyright Act to online streaming services. In a blow to online music services in India (looking at you, Spotify), in Tips Industries v Wynk Music, Mr. Justice Kathawalla has comprehensively rejected the claim that online streaming services are eligible for being granted statutory licenses for broadcasting under Section 31D of the Copyright Act.

Background

The plaintiff is Tips Industries Ltd., a music label in India, which controls copyright over a significant repository of popular music. In 2016, this repository was licensed to the defendant, Wynk Music Ltd., an online music streaming service launched by Airtel. After expiry of the license in 2017, both parties attempted to renegotiate licensing terms for allowing Wynk offer downloading and streaming of musical works owned by Tips.

After negotiations broke down, Wynk took refuge by invoking Section 31D of the Copyright Act. Section 31D of the Copyright provides for a statutory licensing scheme, as per which any ‘broadcasting organisation’ desirous of ‘communicating to the public’ any sound recording, may obtain a statutory license to do so, provided they pay the royalty rates to the copyright owners, at rates fixed by the Intellectual Property Law Board.

Section 31D has been a source of much antagonism between online music service providers and music publishers and labels. We recently noted the dispute between Spotify and Warner Music, wherein largely similar issues were raised, regarding the legality of Spotify invoking statutory licensing under Section 31D when they could not reach an agreement on licensing terms for Warner’s repertoire. We have covered the debate extensively here and here.

Tips challenged Wynk’s invocation of Section 31D, and sued Wynk for infringement of their exclusive copyrights in sound recordings, under Section 14(1)(e). Mr. Justice Kathawalla systematically dismantled the defendant’s defences to the claim for infringement, and prima facie found Wynk to be guilty of direct infringement on two counts – first, for ‘selling’ works under Section 14(1)(e)(ii), for allowing downloading and offline listening of the plaintiff’s works; and second, under Section 14(1)(e)(iii) for communicating the plaintiff’s works to the public through their streaming service.

Wynk, Wynk, Nudged Out – Internet Broadcasting is not Covered by Section 31D

In accepting the plaintiff’s claims of infringement, the Bombay High Court clarified some niggling ambiguities regarding online streaming and the statutory licensing scheme under Section 31D:

1. Section 31D does not cover ‘downloading/purchase’ of works.

The court held that Wynk’s feature of allowing users to download songs and store for unlimited future use constituted ‘sale’ and not ‘communication to the public’, and therefore, did not constitute a ‘broadcast’ for the purpose of Section 31D. Therefore, Wynk cannot claim a statutory license for the use of such works.

The Court first had to grapple with the tricky question of classifying online music services. In its analysis, it came to the following conclusions for different forms of services:

• Where the copyrighted songs are allowed to be stored or cached on the devices of the users, it is classified as ‘making another sound recording’ embodying the copyrighted work, under Section 14(e)(i).
• Where the copyrighted songs are ‘sold’ through the feature allowing users to ‘purchase’ and access songs offline, it is classified as a ‘sale’ or ‘rental’ of the song, which is protected under Section 14(e)(ii).
• Finally, where the copyrighted songs are ‘streamed’ without the provision for downloading, it amounts to a ‘communication to the public’ and a ‘broadcast’ under the Copyright Act, the exclusive right to which belongs to the copyright owner under Section 14(e)(iii).

2. Section 31D Does not Cover Internet Broadcasting.

This was the central point of contention. Wynk argued that Section 31D contemplates online broadcasting, and Wynk’s streaming service is subsumed within ‘radio broadcasting’. Wynk relied, inter alia, upon a DPIIT office memorandum from 2016, which confidently stated that Section 31D included ‘internet broadcasting’.

The Court soundly rejected this interpretation.

The Court held that Section 31D was an exception to copyright, and must be strictly interpreted. Upon a strict reading of the statutory scheme – Section 31D(3), as well as the rules framed under it, – it is clear that statutory licensing was intended to cover only ‘radio’ and ‘television’ broadcasting, and not internet broadcasting. Finally, the Court examined the history of Section 31D, relying upon the Report of the Rajya Sabha Parliamentary Committee on the Copyright Amendment Act, 2012, and inferred that though the legislature was aware of internet streaming services, they intentionally chose to not include such forms of communication within the scheme of Section 31D. Therefore, the defendant could not claim that the legislature intended ‘radio’ broadcasts to subsume online broadcasts.

The Court also rejected the defendant’s reliance upon the Government of India Office Memorandum, stating that it was in the nature of ‘guidelines’ and lacked statutory authority, and therefore could not prevail over the statutory scheme under Section 31D.

Conclusion – “Section 31D contemplates only television and radio broadcasting and not internet broadcasting.

3. Section 31D can not be invoked without the prior fixation of rates by the IPAB.

This was also, unsurprisingly, answered in the negative. The Court held that, firstly, the IPAB did not have jurisdiction to fix rates for ‘internet broadcasting’. Further, the Court held that statutory scheme under Section 31D, including Rules 29, 30 and 31 of the Copyright Rules, clearly indicate that the prior fixation of royalty rates by the IPAB was essential for the invocation of a statutory license under Section 31D.

The defendant’s also attempted to argue that Rules 29, 30 and 31 were ultra vires the section as they provided for prior fixation of the royalty rate, but this contention was also rightly rejected by Justice Kathawalla, who noted that there is no inconsistency between the rules and the statute.

Finally, the Court held that the plaintiff was entitled to an interim injunction, considering that they had made a prima facie case, would suffer irreparable injury in the form of revenue lost, and that the balance of convenience was in the plaintiff’s favour.

Does India Need a Music Modernisation Act?

Though the dispute has not been finally determined (the judgement relates to interim applications for injunction), it is comprehensively reasoned and it is likely that the final judgement will flow from it. While the judgement puts to rest the questions about Section 31D and internet streaming, and forecloses action like Spotify’s use of Warner Music’s works, it is also important to reflect on whether and how online streaming services need to be incorporated into our copyright law.

For example, the distinction between making ‘copies’ and ‘communicating to the public’ over the internet, technically speaking, is an artificial one, given that the data must necessarily be copied in any model. In large part, the service has to place technical restrictions (a la DRM), to prevent the users from automatically caching the songs.

The questions then arise about whether allowing such streams to be cached also falls foul of copyright law? This issue is particularly relevant with the download caching services of many online music providers, as well as ‘stream ripping’, i.e. creating downloads from purely streaming content. Concepts of ‘copies’, ‘communication’ and ‘sale’ are perhaps ill-fitting in this digital environment.

Further, some countries like the US have made a distinction between interactive and non-interactive online streaming, which preserves the purpose of statutory licensing for audio streaming, as long as it operates similar to terrestrial radio. Even for interactive performances, royalty rates for mechanical licenses (underlying musical works) are statutorily set through a judicial tribunal. However, Justice Kathawalla’s opinion, for now, forecloses this option in India. Admittedly, this is a matter for greater legislative deliberation, and maybe it is time for a more comprehensive settlement of issues arising from copyright on the internet than stretching the provisions which are inapplicable to internet business models.

Can the Seeds Act govern GIs?-The Delhi HC, in an interesting order issued last month, dealt with this question in some detail.

The factual matrix is simple here; The Ministry of Agriculture had, through an Office Memorandum (OM), set forth the characteristics of “Basmati” rice variety. They had further stated through another OM that in order to ensure the linkage between the variety and the GI, only such Basmati varieties which were  grown in Indo-Gangetic area would come under the “Basmati” GI. This was later challenged by the Madhya Pradesh Government.

The MP Government mainly argued that the matter was not under the scope of the Seeds Act and that the Act could not cover GIs. The Agricultural and Processed Food and Products Export Development Authority, in response to these allegations, claimed that these OMs were issued on the basis of recommendations made by the Sub-Committee of the Central Seeds Committee, which is governed under Section 3 of the Seeds Act. They also argued that the same was done to achieve the objective of the Seeds Act.

In considering such arguments, the Court looked at a number of provisions of the Act and a few of the Court’s main conclusions (with regard to the Seeds Act and GI) can be summarised as follows:

Image from here

We’re pleased to bring to you a guest post by Jupi Gogoi. Jupi is an Assistant Professor at the Faculty of Law, University of Delhi. She was formerly associated with the Indian Law Institute, New Delhi.

The Need to Look Beyond Wines and Spirits: GI Law in India and the Woes of Muga Silk

Jupi Gogoi

Muga is a silk variety endemic to the state of Assam. Attires made of Muga Silk are reflection of the culture and heritage of the people of Assam. One of the most famous attire made out of this silk, Muga Mekhela Sador is mostly recognized outside the state of Assam as the dress worn by the Bihu dancers, but for the women of the state, owning a pair of Muga Mekhala Sador (Mekhela Sador is the traditional attire of Assamese women) is considered a matter of pride. Besides this, Muga Silk is now increasingly used for making other garments, furnishing materials and decorative items.

Muga and its Assamese Identity

The history of usage of Muga silk in the valleys of Assam goes centuries back. It has found mention in Kautilya’s Arthashastra and famous historian Edward A. Gait’s A History of Assam as one of the finest silk in the world. Recognizing the importance of the silk, it was registered as a Geographical Indication (GI) of Assam in 2006. The initiative for registration was taken by Assam Science Technology and Environment Council (ASTEC) with the help of a firm called Corporate Law Group based in New Delhi. Law of GI limits the usage of the indication/tag to the authorized users belonging to a specific territorial area. The Geographical Indications of Goods (Registration and Protection) Act, 1999 under section 21(1)(b) gives exclusive right to the ‘authorised user’ to use the geographical indication in relation to the goods in respect of which the geographical indication is registered. Use of the indication by anyone beyond authorised users is considered infringement under the law.

Muga v. Moonga

However, what has been observed recently in various textile exhibitions especially around Delhi NCR is that a silk called ‘Moonga’ is sold on a huge scale.[1] The sellers mention[2] that this silk is produced in Jharkhand, Chhattisgarh, UP and Bihar. Moreover, many websites[3] also advertise Moonga silk, some with the image of traditional Muga Silk embodying traditional Assamese designs and some with other textile images. Interestingly, most people are not aware of the characteristics of the Muga silk (the simple fact that the uniqueness of Muga Silk is its natural golden yellow colour) and hence have been buying ‘Moonga’[4] considering it to be synonymous with Muga. Inspite of Silk Board of India confirming that there is no silk variety called Moonga, the sellers have been selling Moonga silk without fear. It is important to note that such incidents are not only confined to Muga silk. Another textile item that faces such challenge is the Banarasi saree. It is reported that Banarasi saree weavers face tough competition from cheap silk fabric from China and in order to sustain in the market, cheaper material and synthetic fabric are used substituting silk in which traditionally the Banarasi saree is woven.

GI Registration Is Not an End in Itself

In India, currently, there seems to be a competition amongst states on who can have the highest number of GI registered products, completely ignoring the main purpose of the GI law, i.e, to fetch a premium price due to the GI tag eventually benefiting the producers and other stakeholders of the GI product. To view registration of a GI product as an end in itself is wrong and extremely shortsighted. There is a serious lack of strategy post registration. Advertisements, creating awareness about the specialty of the product and other brand building tactics are lacking. The GI proprietors do not have a plan after registration and commonly cite[5] lack of funds as an impeding factor.

There are also very limited instances of infringement suits filed by GI proprietors or authorised users in India. The two major hurdles cited are lack of awareness of GI law by the enforcement agencies and lack of ‘additional protection’ to products beyond wines and spirits. Article 23 of the TRIPS Agreement provides for Additional Protection for Geographical Indications for Wines and Spirits. The aforementioned provision states that “each Member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like”. It means that that the additional protection of wines and spirits is absolute and unqualified, and, unlike right holders of other goods, the proprietor of GI relating to wines and spirits do not have to prove that incorrect use of the geographic origin is misleading as well.

Need to Extend Additional Protection to Products beyond Wines and Spirits in India

Interestingly, India was opposed to the idea of providing additional protection to only wines and spirits at the WTO-TRIPS negotiations, thereby inserting section 22(2) in its domestic GI legislation providing an opportunity for adding products other than wines and spirits in the additional protection list. Section 22(2) states that the Central Government may, if it thinks necessary so to do provide additional protection to certain goods or classes of goods by notification in the Official Gazette, specify such goods or class or classes of goods, for the purposes of such protection. Sadly, disregarding the original intention, the government of India has so far issued notification under section 22(2) extending higher level of protection only to wines and spirits but not to other products, though they should have rightly done so.

In the instant case, textile does not fall under the category of ‘additional protection’ and in the event that an infringement case is filed in future, it will be difficult for the proprietors and registered users to prove the infringement. The burden of proof in absence of additional protection lies with the plaintiff (in this case the proprietors and users of Muga) that the usage of ‘Moonga’ is able to dilute the image of Muga and hence substantial losses are incurred by them. Moreover, the defendant party can easily bring the defence that the word ‘Moonga’ is sufficiently dissimilar and is not an act of unfair competition including passing off in respect of registered geographical indication.

This is just one of the numerous instances where GI law ‘seems’ to be failing to provide adequate protection to the GI registered products. Till the above concerns are taken care of, infringement of GI products will continue unabashed. Steps have to be taken immediately to deal with them. It is time that the GI authorities wake up and take concrete steps for effectuating the GI law, thereby, providing an opportunity of socio-economic benefit to the GI producers and other stakeholders. The proprietors and registered users have to be pro-active to deal with such infringements. In the case of the Muga, the GI proprietors, the registered users as well as the government of Assam should take steps so that Muga and its identity with ‘Assam’ and its people remain intact.

[1] The visit to the exhibitions were a part of the author’s doctoral research. Also see, https://www.meraevents.com/event/Weaves-of-India-Delhi wherein an event called Weaves of India was advertised to be held from 11^th April, 2019 to 16^th April, 2019. The write-up of the advertisement stated, “The Bhagalpuri stall has saris made of Tussar, Kosa and Moonga silk.”

[2] Ibid.

[3] There are many websites such as (i) https://www.utsavfashion.in/saree/muga (ii) https://www.utsavpedia.com/textiles/muga-silk-the-golden-silk/ (which uses the word Muga and shows pictures of other sarees); (ii) https://www.luxurionworld.com/products/saree/fabric-sarees/moonga-silk (luxurion interestingly sells Moonga from Assam, Bhagalpur as well as Banaras); (iii) https://www.exportersindia.com/m-r-handloom-fabrics/moonga-silk-fabric-1322041.htm provides pictures of Muga silk and traditional Assamese designs and markets it as Moonga silk fabric based in Bhagalpur, Bihar; (iv) https://www.holyweaves.com/collections/fabric-muga-silk/fabrics shows Muga having olive green, beige and rosy brown colour (Muga is a silk which is naturally golden yellow).  There are many other such websites who are fraudulently using the GI tag of Muga and selling other products. There are others who are using the word ‘Moonga’ but shows Muga fabric. There are many who are trying to create a new silk called Moonga from different states including Assam whereas such a silk does not exist. There are others such as https://www.tradeindia.com/fp5384828/Handloom-Moonga-Silk-Sarees.html who are trying to state that Moonga and Muga is same (It states, “We are locally popular manufacturer of Handloom Moonga Silk Sarees in Bhagalpur, Bihar, India. Muga silk is a variety of wild silk geographically tagged to the state of Assam in India.”) It is basically an act of passing off in respect of registered GI.

[4] The abovementioned sources in footnote 3 also indicates that sellers are trying to dilute the distinctiveness of Muga and Moonga is portrayed as synonymous to Muga. Moreover, the author during her doctoral research enquired if people knew about a silk variety called Moonga. The people who said they knew about a silk called Moonga were not able to differentiate between the two and said that Muga and Moonga are most probably the same.  Many even tried to authenticate Moonga by sending links such as: https://www.thehindu.com/features/metroplus/fashion/drape-a-piece-of-pride/article4481756.ece which actually had images of Muga.

[5] The author during her doctoral research interviewed officials of State Government Departments and Central Government Departments which had GI proprietorship. One of the common answer for not investing in brand building and advertisement of GI was cited as lack of funds for the said purpose.

Image from here

Divij broke the news about a recent order delivered by the Bombay HC in the Tips Industries v. Wynk Music matter, wherein the Court decided upon the applicability of the statutory licensing scheme under Section 31D of the Copyright Act to online streaming services. The Court, in its order, held that internet broadcasting is not covered under Section 31D. In his post, Divij also delves into the question of whether there is a need to introduce internet streaming services into Indian copyright law.

I had posted about a Delhi High Court order which dealt with the applicability of the Seeds Act to GIs. The Court delved into this issue when certain office memorandums issued by the Ministry of Agriculture (allegedly, on the basis of the Central Seed Committee’s recommendations) set forth that only Basmati varieties which were  grown in Indo-Gangetic area would come under the “Basmati” GI. The Court examined the provisions of the Seeds Act and concluded that GIs do not come within the ambit of the Act.

We had a guest post on the infringement of the ‘Muga’ silk GI, belonging to Assam. In recent textile exhibitions held around Delhi NCR, a silk called ‘Moonga’ was being sold on a large scale by being advertised as Muga silk. The author notes that GI registration is not an end in itself and there was a need for strategy post registration. She also concludes that there is a need to provide additional protection to products other than wines and spirits in the additional protection list notified under Section 22(2) of the GI Act.

Other Developments

Indian

Judgments

Flipkart Internet Private Limited v. Flipkartwinnerdraw.com and Others – Delhi High Court [May 3, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “FLIPKART” by using the mark as a part of its domain names. 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 the Defendant had failed to appear or file a written statement.

News

• Indian tech startups pile on the patents
• Ipaf wins Madras court injunction after Indian firms breach copyright

International

• Public Citizen files test case over copyright liability for embedded images
• Let It Go: Singer Drops Copyright Suit Over ‘Frozen’ Song
• Nvidia Sued for Patent Infringement
• Guns N’ Roses sues brewery for trademark infringement
• Ugg: kick in the guts as Aussie maker loses US trademark case

In Bata India v Chawla Boot House, a case concerning trademarking infringement and passing off, the Delhi High Court came down heavily on the practice of ‘defendant masking’. Plaintiffs use this strategy to avoid detection of the matter in cause lists and thereby obtain injunctions in initial hearings without the presence of the main defendant’s counsel. The court took notice of this strategy in this case, and directed stricter measures from the Registry to control it in all IPR suits.

Background

This particular case involves a trademark infringement and passing off suit filed by Bata against the mark POWER FLEX and the tag line THE POWER OF REAL LEATHER used for footwear by the ‘main defendant’, Leayan Global Pvt Ltd. The court found trademark infringement for the mark POWER FLEX. Specifically, it rejected Leayan Global’s challenge to the distinctiveness of the mark POWER in relation to footwear, and further, found their use infringing. However, it did not find that the tagline THE POWER OF REAL LEATHER infringed any of Bata’s trademarks.

The court also gave consideration to a compromise suggested by Leayan Global, wherein they would undertake to use the POWER FLEX mark to market and sell only leather footwear, and not extend it to sportswear, the category for which Bata uses the mark POWER. However, the court rejected this compromise, suggesting that a distinction between these two sub-categories would be artificial, and may unfairly restrict Bata’s future plans of brand expansion.

Interestingly, this case also saw the likes of M.S. Dhoni and Virat Kohli being pitted against each other, with both personalities endorsing Bata and Leayan Global respectively. Their advertisements were used as evidence of bona fide use of the mark POWER by both parties. While the court eventually found that Kohli’s endorsement did not relate to the marks in question, and was therefore irrelevant to the matter, the court did have to listen to arguments suggesting that Virat Kohli was not a prominent personality in 2014!

Arraignment of Defendants

It would be noticed that while the main defendant in this case is Leayan Global, the first defendant is Chawla Boot House, a retail outlet in Delhi. This represents an attempt by Bata to ‘mask’ the main defendant in this case. This makes detection in cause lists more difficult by hiding ‘Leayan Global’ under the mask of ‘Chawla Boot House & another’ or ‘others’ and increases the chances of obtaining the first hearing, generally on injunctions, ex parte.

The practice of ‘defendant masking’ is not new (Mr Sandeep Rathod had compiled a list of patent cases in which this strategy had been adopted in 2016). In addition to patent suits and trademark suits such as the present one, this strategy has also been identified in a copyright case. In Micolube, the court disparaged this practice, and likened it to coming to the court with unclean hands:

“It is not only in this case, but in several other cases that this Court has noticed this unhealthy trend on the part of the plaintiffs to array the main defendant as defendant No. 2 or defendant No. 3 while naming some innocuous dealer or retail outlet as defendant No. 1. The object is easily discernible. When the counsel for the main defendants scan the list of cases, they would not be able to know as to whether any case has been filed against them so as to enable them to appear on the very first date on which the case is listed before court. The very fact that the plaintiff has also indulged in this practice is also an indicator that it did not want the counsel for the defendant No. 2 to appear on the first date on which the matter was taken up for consideration of the grant or non-grant of ad interim injunction. This fact also disentitles the plaintiff to any equitable relief. I am of the view that the plaintiff has concealed and suppressed material facts from this Court.”

It is clear, therefore, that this practice has been considered improper for a while now. In order to combat its continued practice, the court directed the Registry to ensure strict compliance of the judgment in Micolube and additionally seek an undertaking from the Plaintiff in all IPR cases where there are multiple defendants that the Defendant No.1 being arraigned is the main contesting defendant in the suit. The same is also reflected in a circular issued by the Delhi High Court. However, it would be apt to exercise caution in this process, since defining the ‘main defendant’ may not be a simple task in all cases across IPRs.

Image from here.

I wrote a post on the Delhi HC’s recent order and circular that seek to prevent the practice of ‘defendant masking’. The order and circular prescribe stricter checks by the registry and an undertaking from the plaintiff suggesting that the defendant arraigned as Defendant Number 1 is the main contesting defendant.

Other Developments

Indian

Judgments

International Cycle Gears v. The Controller of Patents and Designs and Others – Calcutta High Court [May 10, 2019]

The Appellant filed an appeal against the cancellation of its registered design “COASTER BRAKE HUB” by the Assistant Controller of Patent and Designs, on the ground that the Controller failed to appreciate the difference between its registered design and a Russian design which was examined. The Court noted at the outset that the distinction in features of the two rival designs were essentially mechanical, and the Russian design was published prior to the Appellant’s design. Considering the fact that the two designs contained similar features, the Court noted that the Appellant’s design was devoid of newness and originality. Moreover, the Court observed that the Appellant’s design could have been cancelled merely on the ground that the Russian design was published before the Appellant’s design. Accordingly, the Appellant’s appeal was dismissed.

M/s. Lucky Exports v. The Controller of Patents and Designs and Others – Calcutta High Court [May 10, 2019]

The Appellant preferred an appeal to the order of the Controller rejecting the application for the cancellation of a design “COASTER BRAKE SUB ASSEMBLY”. The Court set aside the order of the Controller and observed that the Controller merely considered whether the article was merely a mechanical device but failed to consider whether the article appealed to the eye. It was further explained by the Court that as long as an article was not merely a functional device and appealed to the eye, the same was capable of design registration if it was original. The Court, however, noted that the Controller had failed to appreciate all the evidence forming part of the case. At the same time, it was observed that the Respondent had failed to establish that its design was original and hence, failed to discharge their burden. Accordingly, the Court ordered the cancellation of the Respondent’s design.

News

• Interim injunction against Dr. Reddy Laboraties for lorcaserin
• Madras HC vacates interim order on film Gorilla
• Alphonso fights bitter battle against Karnataka mangoes in Maharashtra
• Ramdev’s firm accuses yoga teacher of trademark violation
• Senior citizen gets seven day jail for copyright violation in Chennai

International

• Public Citizen files test case over copyright liability for embedded images
• Haas F1 title sponsor Rich loses court case over logo

Image from here.

Does an architect, as the creator and legal ‘author’ of a building having artistic significance, have the right to object to the modification or destruction of their work by the owner of the building? A recent judgement of the Delhi High Court answers this firmly in the negative. In Raj Rewal v Union of India and Ors., Mr. Justice Endlaw has comprehensively rejected the claim that an author’s moral rights over a building take precedence over the rights of the building owner to destroy or modify the building. The judgement is significant in its contribution to the jurisprudence on the scope and limitations of ‘moral rights’ in Indian copyright law. We had previously published an analysis of this debate here.

Legal Context and Court’s Decision

The Hall of Nations building was designed by the architect Raj Rewal and structural designer Mahendra Raj. The building stood tall in the Pragati Maidan grounds in New Delhi as was widely hailed as an icon of modernist Indian architecture. In 2016, the Indian Trade Promotion Organisation proposed to destroy the Hall of Nations complex in order to build an ‘Integrated Exhibition-cum-Convention Centre’. After a few failed interventions by the plaintiff before administrative and judicial bodies, the complex was demolished. Subsequently, Raj Rewal instituted a suit in the Delhi High Court against the actions of the ITPO, claiming that the demolition had derogated the plaintiff’s ‘special rights’ under Section 57 of the Copyright Act, and prayed for a mandatory injunction to reinstate the building according to the original plans.

Section 57 of the Copyright Act provides authors with special rights to attribution and to integrity, generally known as ‘moral rights’, and subsist with the author of the work over and above the economic rights (all other copyrights), and regardless of assignment or transfer of such rights by the author (although to what degree authors may alienate their moral rights is unclear in the Indian context, see here for an interesting discussion on the subject).

The High Court rejected the plaintiff’s claims that his rights under Section 57 were abrogated by the destruction of his architectural work. The court framed the issue as a conflict of two distinct rights – the author/architect’s rights under Section 57, and the property or landowner’s rights to their property.

The court observed that, were the plaintiff in the present case allowed to prevent the destruction of the building by the defendant, it would amount to a restriction of the defendant’s right to deal freely with their property and land. Further, the court held that while the plaintiff’s rights in the work were purely statutory rights circumscribed by the Copyright Act, the right to property was a constitutional right under Article 300A, which must prevail over statutory rights, observing that “when the Constitution in Article 300-A mandates that no person shall be deprived of his property save by authority of law, no law unless expressly providing for deprivation of property can, by implication be interpreted as depriving a person of his property.”

The court further held that the author’s rights to prevent ‘distortion, mutilation or modification’ of their work under Section 57 did not permit an author to prevent the destruction of a work in its entirety, since “that what cannot be viewed, seen, heard or felt, cannot be imperfect and cannot affect the honour or reputation of the author.” Therefore, the architect’s rights are restricted to the right to prevent the building owner from making changes to the building and proclaiming that the architect is the author of the modified building. To support its position, the court also relied upon Section 52(1)(x), which provides as an exception to copyright – “the reconstruction of a building or structure in accordance with the architectural drawings or plans by reference to which the building or structure was originally constructed”. The court reasoned that the ‘reconstruction’ contemplated under Section 52(1)(x) could only occur if the building or structure had been previously demolished. Observing that the Copyright Act must be harmoniously read, the court therefore stated that Section 57 could not possibly contemplate the right to object to the destruction of a building.

The court therefore dismissed the suit on the grounds that the plaintiff had no cause of action against the demolition of the Hall of Nations.

The End of Integrity? What Remains of Moral Rights for Artistic Works in India?

The Delhi High Court’s decision in Raj Rewal v UoI is quite significant, particularly in the development of moral rights jurisprudence in India, which has only been sparsely deliberated upon by courts. However, in my opinion, while the court ultimately comes to the correct conclusion, particularly in denying the relief of mandatory injunction to reinstate the building, the decision muddies the waters of moral rights under Section 57.

To begin with, the Court did not engage with Section 57 jurisprudence in India, particularly the landmark case of Amar Nath Sehgal v Union of India, wherein a coordinate bench of the same court had held, in direct contrast to the present judgement, that –

“There would therefore be urgent need to interpret Section 57 of the Copyright Act, 1957 in its wider amplitude to include destruction of a work of art, being the extreme form of mutilation, since by reducing the volume of the authors creative corpus it affects his reputation prejudicially as being actionable under said section. Further, in relation to the work of an author, subject to the work attaining the status of a modern national treasure, the right would include an action to protect the integrity of the work in relation to the cultural heritage of the nation.”

The decisions in Raj Rewal and Amar Nath Sehgal are a study in contrasts. In Raj Rewal the court held in broad terms that the destruction of a work does not constitute a violation of the rights under Section 57, and also restricted the scope of moral rights to those expressly codified under the Copyright Act, a diametrically opposite position from that taken by the same court in Amar Nath Sehgal, which leant heavily on international conventions on the preservation of cultural heritage to interpret Section 57.

One way to reconcile this conflict could be to read Raj Rewal restrictively in the context of only architectural works and the factual matrix of the case. However, even in this context, the decision is highly restrictive to the rights of architects contemplated under Section 57, as it holds that ‘urban planning’, as well as technical or economic reasons for modifying a building will outweigh any countervailing claim that the architect of a building may have for the preservation of its artistic integrity. This effectively restricts an architect or designer’s remedies under Section 57 to the right to disclaim authorship of the modified building.

Ultimately, the decision signals the need to have clearer statutory rules on the scope of moral rights in architectural works in particular, but also in artistic works generally. Perhaps such dilemmas could be avoided if the legislature adopts a rule similar to that in Australia (Copyright Regulation 195AT(3A)), where building owners must in good faith consult with the architect or author of a work prior to its modification or demolition. Further, in the particular context of preservation of historical and cultural heritage, perhaps the remedy does not even lie in the field of copyright law, which typically relies upon private action. Until such legislative change, however, it appears that architects and authors are in a precarious position for protecting the integrity of their works.

According to an anonymous report received by us at SpicyIP, the Indian Patent Office (“IPO”) is yet to issue Patent Agent Registration numbers aka IN/PA numbers to a certain number of successful candidates who have cleared the Patent Agent Examination, 2018 (“Examination”).

The Examination took place in October, 2018 and the results were released in January, 2019. The IPO released instructions on the procedure to be followed by the candidates who had qualified the Examination and announced that they were to file their application for registration in Form-22 along with a number of identification documents and the requisite fees for registration and continuation in one financial year .

Though the IPO has issued IN/PA numbers to a certain number of candidates, many are yet to receive them. Given that the results have been released around 5 months ago, such delay should not be condoned. Candidates who are yet to receive their Registration numbers cannot start practising and may thereby lose out on prospective clients and suffer losses.

We hope that the IPO takes note of this disappointing state of affairs and that they quicken the process of issuing Registration numbers to the remaining successful candidates.

Image from here

Divij broke the news about a recent order delivered by the Delhi HC in Raj Rewal v. Union of India and Ors., wherein the Court ruled that an architect, in the capacity of a legal ‘author’ of a building, does not have the right to object to its modification or destruction by the owner of such building. The Court’s decision contradicts the one delivered in Amar Nath Sehgal v. Union of India, where the Delhi HC had taken an opposite stance on the matter altogether. In his post, Divij states that this decision highlights the need to release statutory rules on moral rights of authors of artistic works for the sake of resolving such conflicts.

I posted about the Indian Patent Office’s delay in releasing Patent Agent Registration numbers. In my post, I point out that this matter needs to addressed quickly since the results of the Patent Agent Examination 2018 have been released a long time ago and such delay hinders successful candidates from initiating their practice.

Other Developments

Indian

Judgments

Parveen Kumar Jain v. Rajan Seth and Others – Delhi High Court [May 8, 2019]

The Court refused to grant an injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “CHUR CHUR NAAN” and “AMRITSARI CHUR CHUR NAAN”, by using a deceptively similar mark “PAHARGANJ KE MASHOOR CHUR CHUR NAAN”. The Court observed that the term “CHUR CHUR” simply meant “crushed” in common parlance, and was incapable of acquiring trade mark signification. Moreover, it was pointed out by the Defendant that various sellers of Naan distinguished their shops by using the proprietor’s name. Accordingly, the Court instructed the Defendant to change its name to “PAHARGANJ SETH KE MASHOOR CHUR CHUR NAAN”, with a further instruction that the entire name should be written in a uniform manner in order to avoid giving any undue prominence to the phrase “CHUR CHUR NAAN”.

Sun Pharma Laboratories Limited v. Ajanta Pharma Limited – Delhi High Court [May 10, 2019]

The dispute between the Parties arose on account of the Defendant’s use of the mark “GLOTAB”, which was argued to be allegedly similar to the Plaintiff’s mark “GLOEYE”. The question of prime importance in the case was whether the test for infringement and passing off for nutraceutical products was the same as that for pharmaceutical products. At the onset, the Court took the fact  that both Parties were registered trademark holders into consideration, and accordingly no case for infringement could be made out. The Court observed that even though both the nutraceutical products were derived from plants, no lenient test for passing off could be adopted in their respect. Accordingly, the test for pharmaceutical products would be applicable to nutraceutical products in matters of passing off. With respect to the question of similarity between the two marks, the Court noted that both of them were to be used for ocular diseases and the suffixes “EYE” and “TAB” were insufficient to create a distinction between them. Additionally, the Plaintiff’s product had been registered prior to that of the Defendant’s product. In light of these facts, the Court granted an interim injunction in favour of the Plaintiff.

Adidas AG and Another v. Praveen Kumar and Others – Delhi High Court [May 14, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing and passing off the Plaintiffs’ registered “THREE STRIPES” mark by using an identical mark in respect of footwear. In arriving at this decision, the Court noted that the Plaintiffs were the registered proprietors of the “THREE STRIPES” mark, and the same had been used by them for several years. Moreover, the Court observed that various decisions had been decreed in favour of the Plaintiffs in respect of its “THREE STRIPES” mark. Accordingly, the Court awarded damages to the Plaintiffs to the tune of Rs. 21 lakhs from all the three Defendants, in order to cover the heavy costs of litigation, investigation and fees of the Local Commissioners.

Unilever PLC and Another v. Masqati Dairy Products – Bombay High Court [May 20, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiffs’ registered mark “FEAST” by using a deceptively similar mark “CHOCO FEAST” in respect of ice-creams. This order was passed on the condition that the Defendant donate Rs. 5 lakhs to the Aware Foundation, which cares for wounded and sick animals found on the streets. Interestingly, the Court also ordered the infringing goods seized by the Court Receiver to be distributed among poor children, and the wrappers of the same to be destroyed by Parties.

News

• Delhi HC dismisses ShareChat copyright violation petition against Helo
• Thrissur Pooram: Resul Pookutty denies copyright allegations
• Pubs, restaurants face music from the makers
• Order refusing UOC’s Patent application for Enzalutamide set aside by the DHC and the matter remanded back for reconsideration
• Natco Prohibited from Manufacturing Generic Ceritinib
• HC imposes interim stay on 9 cos for trade mark infringement
• Himachali Kala Zeera, Chulli Oil get Geographical Indication tag

International

• The Copyright for the Satoshi White Paper is Already Causing Trouble
• Iron Maiden Suing Developers Of Ion Maiden For Copyright Infringement
• Poland challenges EU’s new copyright law over censorship fears
• Redditor wins right to use anonymous screen name in copyright case
• Facebook Files Patent for Kite Drone

We are happy to inform you that S. Majumdar & Co. is immediately looking for lawyers specialising in IP litigation for its New Delhi office. For further details, please see the job description below:

Litigation Associate at S. Majumdar & Co., New Delhi

Position

Associate (Litigation)

Responsibilities

The candidate must be competent to draft all kinds of pleadings and appear in Courts, brief Senior Counsels and assist them during the hearings.

Desired Joining Date

July 1, 2019

Desired Qualification & Experience

·  LLB degree and/or LLM

·  Minimum 5 years of experience in litigation relating to IP laws

Selection Process

1. Interested candidates can send their CVs to  smco.naukri@gmail.com.

2. The HR team will screen resumes and conduct a telephonic interview.

3. Shortlisted candidates will then have to appear for in-person interview and also take a written test.

Compensation

As per industry standards

About S Majumdar & Co.

Please refer to www.majumdarip.com.

We are pleased to bring to you a guest post by Arun Mohan on the recent Madras High Court judgment in the Ilayaraja copyright dispute. Arun is a graduate of the London School of Economics and has experience in working on intellectual property and commercial matters, in India and internationally. He has worked on various prominent IP disputes including appearing for Rajinikanth in the recent landmark decision on celebrity rights, in the TVS v. Bajaj patent dispute and against Google in the ongoing litigation on the use of third party trademarks in its Adword program. He also regularly appears before the Intellectual Property Appellate Board and Competition Commission. He is a guest lecturer at NALSAR focusing on intellectual property litigation and a consulting editor of the Manupatra Intellectual Property Reports (MIPR). He also regularly appears regularly in several arbitration forums with an emphasis on energy and infrastructure. He has authored a number of guest posts for us in the past, the most recent of which can be viewed here, here, here and here.

Why the Ilayaraja Judgment Is a Boon for Producers

Arun Mohan

The recent judgement involving Ilayaraja is undoubtedly a modern milestone in intellectual property jurisprudence. It addresses in depth the rights of composers and producers, especially in the light of the much vaunted 2012 amendment of the Copyright Act. The interpretations, which use various resources including international treaties, is terrifically nuanced and injects a much needed boost to modern copyright law.

The many press reporting of this judgement have hailed this judgement as a victory of composers’ rights, fitting quite neatly into the narrative surrounding the 2012 amendment.

However, in substance the judgement confirms absolutely the rights of producers as owners of “sound recordings” in films, prior and post the 2012 amendment. The judgement also subsumes “musical works” into “sound recordings” by stating once “musical works” find expression as “sound recordings” i.e. in a film, further “sound recordings” cannot be made based on the same. The only limitation that is placed on the producer is the exploitation of the musical work in a manner other than as expressed in the sound recording, for example as a standalone instrumental piece. Similarly, the composer stands restricted in expressing the musical work as a sound recording in any other manner, for example as a song with different lyrics in another film. Practically therefore, commercial exploitation of the music in the version we know it (song and dance) remains undoubtedly with the producer. Interestingly, amongst the grounds for such conclusion has been the “stature” of Ilayaraja, leading to a finding that the arrangement between the parties could not have been a “work for hire” but was on a “principal to principal” basis. This is relevant as a “work for hire” would vest even the musical work with the producer as per the order, a portion which producers are likely to pounce upon for future disputes with persons bereft of such “stature”.

Finally, in recognizing the risk the producer assumes, the order concludes that the ownership of sound recordings vests with him/her unitarily (unless there is an agreement specifically retaining ownership by the composer). The order recognizes the “extremely attractive argument” that all rights in musical works and sound recordings ought to vest with the composers but does not agree with the argument.

Rather the conclusion is that the rights of composers are balanced in the 2012 amendment granting irrevocable statutory entitlement to royalties for composers. The impact of this practically in the judgement for Ilayaraja is rather negligible, as the bulk of his work has been prior to the amendment. Given that Ilayaraja did not file any agreements with producers, the conclusion of the judgement is that the sound recordings (and the musical work on which they are based) vests with the producer, which makes it a rather resounding reaffirmation of producers rights. The strategic upside of the ownership vesting with the producer is rather apparent, as the producer can pick and choose the means of exploitation and the composer merely receives the royalties thereof, if any. The saving grace for composers has only been the reiteration of their “moral rights” under Sec 57 of the Copyright Act i.e. their right to prevent any mutilation or distortion. This is needless to state an absolute entitlement, which even the producer (the defendant) in the order don’t appear to have argued against. The conclusion, therefore, not only allows the producer (Echo Music) to exploit the sound recordings but recognizes it as the owner.

The other conclusion of the judgement on interpretation of assignment and related deeds has been on a reading of Sec 19(5), which has been given a rather strict interpretation. In the absence of any specified period, the judgement makes it rather clear that the statutory period of 5 years for an assignment would apply.

The order makes for a truly delightful read, with the adulation for the maestro flavoring arguments, orbiter and ratio. The conclusion speaks for itself:

“To the thousands of his admirers, the author of this judgement included, the music of the Maestro was simply, sheer magic. It dissolved barriers, made the incomplete, complete and the world an infinitesimally better place to be in. Nowhere is this more apparent than from the fact that all counsels who argued the matters, though divided in their interpretation of the law, were united in their adulation of his music.”

As our readers may recall, in April last year, the Delhi High Court had disposed of the patent working PIL filed by Prof. Basheer in 2015, directing the Government to complete all steps towards effectuating necessary amendments to optimise the patent working provisions within strict timelines. As per its undertaking, the Government had agreed to publish the amended version of Form 27 as approved by the competent authority (DIPP) on or before September 6 last year.

Unfortunately, the Government failed to abide by this timeline, as detailed in our earlier blog post. By now, it was meant to have done the following:

• Gazette Notification of Draft amendment to Rules/Form 27 (this was supposed to have been done by September 6, 2018 )
• Receiving comments/suggestions from Stakeholders and consultation meeting on Draft Amendment Rules/Form on Draft Amendment Rules/Form 27 (this was supposed to have been done by September 6, 2018)
• Final Draft of the amended Rules/Form 27 to be submitted to competent authority (this was supposed to have been done by October 6, 2018)
• Vetting of the amended Rules/Form 27 by Law Ministry and inter-ministerial consultation (this was supposed to have been done by December 6, 2018 )
• Competent Authority approval and Gazette notification of amended rules/Form 27 (this was supposed to have been done by January 6, 2019)

Far from officially notifying the amended Form 27, the Government has merely published a draft Form 27 proposal for comments. And this too, just a week or so ago. We believe there will also be a stakeholders meeting on this soon.

The proposed revisions to the Form 27 format has both good and bad: though the bad predominates and will really kill the spirit of what patent working and Form 27 are meant to achieve!

These proposed revisions can be found in the recently notified Draft Patent (Amendment) Rules, 2019.

Hopefully, the Government will now speed up the process and try and achieve some compliance of the court order. Else, there will be no option other than to file a contempt application.

Huge Concerns in the Proposed Form

While the proposed Form does contain some improvements over the current one, these are pale in comparison to the other changes proposed that really damage the core essence of the patent working requirement and the Form 27 format. Highlighted below are the changes and the concerns:

While the current Form calls for extensive information on working from patentees and their licensees, the proposed one dispenses with a lot of this information. The patentees and licensees are no longer required to submit any of the following information under the proposed format:

1. Quantum of the patented product manufactured in India or imported into India;

2. Country wise details of the value and quantum of the patented product imported into India;

3. Steps being taken towards working (if patent has not been worked);

4. The licenses and sub-licenses granted during the year.

Instead of seeking more elaborate details in this regard as suggested in the PIL, the proposed Form has done away with the requirement of disclosing the very factum of licenses and licensees’ names. This is despite the Court having clarified last year that the details of licences such as number, date and particulars of the licensees are not confidential. In an order dated 07.02.18, the Court, referring to Ericsson’s refusal to disclose the details of licenses in Form 27 for the reason of confidentiality, had observed as follows:

“All that the patentees submitting Form-27 are required to submit, is the details of the licenses and sub- licenses. This information certainly cannot be termed “confidential” and therefore, the Patents Office has to treat such suppression as failure to comply with the requirements of Section 146 of the Patents Act, 1970 arid to take action against the patentees who do not furnish the required information.”

Consequent to this order Ericsson intervened in the PIL claiming that the “club confidentiality” orders passed in its favour in SEP litigations protected it against disclosure of details of licences in Form 27, including the mere existence of a license(s) and the licensee(s) names. The Court rejected Ericcson’s claim noting that the details such as number, date and particulars of the licensees cannot be termed as confidential and “in case, any party has reservation of any kind in furnishing details, it would have to disclose the reasons for such reservation and the patent office would be required to take a view in the matter so far as its satisfaction regarding compliance with the requirements of Section 146 is concerned.”

It made clear that a patentee could not, under the guise of confidentiality, refuse to disclose the very existence/factum of licenses and the names of licensees. It referred to Section 67 of the Patents Act which requires a mandatory disclosure of the existence of the licenses and the names of licensees and Section 72 which requires these details to be part of a register which is open to public inspection. It further noted that Section 69 only permits the patentees to request the Patent Office to secure the confidentiality of terms of the license.

It is important that disclosure of licensing details be mandated in Form 27 as one cannot merely self-certify that one has “worked” the patent without more. They must be required to back this claim by data/information on how they have worked the patent, including through a set of licenses. Else, Form 27 becomes a meaningless form and our patent working disclosure norms will be rendered redundant. Also, this requirement may not pose too onerous an obligation, as patentees are already known to submit such information to tax authorities and also internally capture it for accounting and other commercial purposes.

5. Statement on whether public requirement has been met at a reasonable price

Again instead of calling for more particular information in this regard as suggested in the PIL, the proposed Form has omitted this requirement altogether. It is critical that the Form requires the patentees to submit particular information that would help the Patent Office assess whether the requirement of the public has been met at a reasonable price or not. In particular, the patentee ought to be asked to submit the following:

1. estimated demand of the patented invention or product;
2. extent to which the demand has been met (i.e. availability); and
3. details of any special schemes or steps undertaken by the patentee to satisfy the demand

Further, in case of pharmaceutical patents, where the patentees claim to have met this requirement through Patient Assistance Programmes (PAPs), they must be required to clearly indicate the quantity and price (if any) in the Form.

Brevity as an Escapee Route: Word limit!

The revised Form also sets a word limit of 500 words for the statement on justification for not working the patent. This limit appears quite arbitrary! And will end up preventing the patentee/licensee from submitting all information that may be necessary for explaining why it has not worked the patent. Further, it may also permit crafty patentees to supply minimal obscure information and then claim that they couldn’t “tell it all” owing to the word limit!

The word limit must go! And patentees/licensees must be permitted to submit as much information as they deem necessary, including the option to attach relevant documents.

Other Changes

1. A critical part of Form 27, Paragraph 3 currently merely asks to “Give whatever details are available” and includes the question on whether the patent has been worked or not. In the proposed version of the Form, a separate paragraph has been inserted asking whether patent has been worked or not and the words “Give whatever details are available” have been replaced by the words “If worked, details”. While this may appear to be a mere change in form, it does, to some extent, mandate disclosure in slightly stronger terms.

2. The current Form asked for the ‘value of the patented product’ manufactured in India or imported from other countries, but it fails to capture the actual sale of the product in India as it is not clear what is meant by ‘value’. The proposed version brings in clarity by instead asking for the ‘approximate value accrued in India from the patented product’ to the patentee/licensee filing the statement through manufacturing in India and importing into India. This is however just a slight improvement and still does not address the concerns raised in the PIL. For instance, the proposed format is still insufficient to assess the extent to which the patented invention or product is able to meet the reasonable requirement of public. When it comes to patented drugs, for instance, it is necessary to know the required dosage per patient to effectively assess as to how many patients are being served through the supply of the patented product.

Further, unlike the current Form, the proposed Form also calls for specific information in respect of ‘process’ patents. If the subject matter of the patent is a process, the Form asks the patentee/licensee to state the approximate value accrued in India to them from the product(s) obtained directly by that ‘process’ through manufacturing in India and importing into India.

3. Unlike the current Form, the proposed version mandates disclosure of the details of all related patents and the value accrued from all such patents, where the value accrued from a particular patented invention cannot be derived separately from the value accrued from related patents, and all such patents are granted to the same patentee(s). Such disclosure is critical especially in the telecommunications and other technology sectors where often there are multiple patents covering the same product. However, as suggested in the PIL such disclosure must be mandated in all cases, and not only in cases where the value accrued from a patented invention cannot be derived separately. A failure to disclose such information adversely impacts innovation and competitors significantly, as it unduly increases their search costs in all cases where there are potentially multiple patents covering the same product.

4. The proposed amendment categorically states the Form is required to be filed by both the patentee/s as well as the licensee/s (exclusive or otherwise). If there are two or more patentees, they may file the Form jointly; however, each licensee is required to file the Form individually. Although Section 146(2) of the Act clearly requires every patentee and every licensee to file Form 27, this clarification is important in light of the confidentiality claim made by Ericsson last year as discussed above.

Call for Objections/Suggestions

The proposed amendment is open for objections or suggestions till June 30, 2019. These have to be addressed to Shri Sushil K Satpute, Director, DPIIT, Ministry of Commerce and Industry, Government of India, Udyog Bhawan, New Delhi – 110011 or can be sent by e-mail at sushil.satpute@nic.in. We encourage as many of our readers to submit comments in support of a stronger Form 27 and hope that the final version of the Form requires disclosure of all information that is necessary for an effective assessment of the commercial working of the patented inventions.

Image from here

We’re pleased to announce that PHD Chamber of Commerce & Industry in association with Office of the Controller General of Patents, Designs & Trade Marks, Ministry of Commerce and Industry and United IPR are organizing a full day conference on ‘Intellectual Property through Collaborative Enforcement’ on June 20, 2019 in New Delhi. For further details, please read the announcement below:

Conference on ‘Intellectual Property through Collaborative Enforcement’

June 20, 2019, New Delhi

Menace of fake and counterfeit goods (both online and offline spheres) is one of the major challenges that is faced by the IP right holder adversely affecting the economy as well as the consumers. In order to make the IP framework more efficient and promote IP protection and enforcement it is imperative that specific institutional efforts involving all stakeholders shall be made in order to secure consumer’s interest.

Against this backdrop, PHD Chamber of Commerce & Industry in association with Office of the Controller General of Patents, Designs & Trade marks, Ministry of Commerce and Industry and United IPR are organizing a full day “Conference on “Intellectual Property through Collaborative Enforcement” with a mission to address all the issues in regard to enforcement, counterfeiting and piracy in an Indian.

The program will begin with an inaugural session on the importance of IPR protection followed by two Panel Discussions on counterfeiting as a menace in the Offline and Online world, featuring dignitaries from the legal world as well as the Enforcement Agencies and will conclude on the notes of networking and High Tea. The session will provide a major opportunity for interaction with the judiciary, enforcement agencies, law practitioners and representatives from the industry.ecosystem.

The Chief Guest for the conference is Hon’ble Mr. Justice Dipak Misra(Retd.), Former Chief Justice of India and the Guest of Honour are Hon’ble Justice Manmohan Singh Chairman of IPAB, Mr. M.K. Singh, Commissioner of Customs (Tuglakabad), Mr. Sanjay Goel, Chief Executive Officer, National Internet Exchange of India (NIXI) , Shri Rajeev Talwar, President of PHD Chambers , Mr. N. R. Meena, Deputy Controller Patents & Designs. The Panel Discussions  would be chaired by Advocate S K. Bansal (Partner, UNITED IPR) , Professor C.J. Rawandale, Director Symbiosis Law School, Noida, Advocate Gaurav Gogia (Senior Associate, UNITED IPR) and Advocate Rishi Bansal (Managing Associate, United IPR) and other dignitaries from police and judiciary department.

Day | Date | Time and Venue

Thursday, June 20, 2019 | 09:30 AM

PHD House, 4/2, Siri Institutional Area, August Kranti Marg, New Delhi, Delhi 110016

With the aim to foster and facilitate a better IPR protection and enforcement regime, we cordially invite you to attend this important event.

In a guest post, Arun Mohan shared his thoughts on the recent Ilayaraja judgment passed by the Madras High Court. He notes that the judgment consolidates producers’ rights over sound recordings that incorporate musical works that are created prior to and post the 2012 amendments. The judgment does, however, pay heed to the composers’ moral rights to paternity and integrity.

Pankhuri wrote a post on the developments from the order passed by the Delhi HC in the patent working PIL filed by Prof. Basheer. The government has failed to comply with the timeline laid down in an order by the Delhi HC for publishing the amended version of Form 27. Further, Pankhuri notes that the draft that was recently released misses out on a significant portion of the suggestions made, and subsequently critically examines certain aspects of the draft, including the information required and word limit for the statement of justification amongst others. She concludes by informing us how we can make our views known to the government, the deadline for which is June 30, 2019.

SpicyIP Events

Pankhuri shared details of the Conference on Intellectual Property through Collaborative Enforcement, to be held on June 20, 2019, at Lakshmipat Singhania Auditorium, PHD Chamber of Commerce and Industry, New Delhi. The conference is being organised by PHD Chamber of Commerce & Industry in association with the Office of the Controller General of Patents, Designs and Trade Marks, Ministry of Commerce & Industry and United IPR.

SpicyIP Jobs

Pankhuri informed us of the requirements and selection process for a job opening at S. Majumdar & Co. for a Litigation Associate.

Other Developments

Indian

Judgments

M/s. Teleecare Network India Private Limited v. M/s. Asus Technology Private Limited and Others – Delhi High Court [May 28, 2019]

The Court granted a permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s registered marks “ZEN MOBILE” and “ZEN” by using a deceptively similar mark “ZENFONE” in respect of the sale of mobile phones. In arriving at the decision, the Court noted that the rationale behind the recognition of trademarks was to ensure that people do not get confused about the source of goods and services. Further, the Court observed that the Plaintiff’s registered marks were arbitrary in respect to mobile phones, and were accordingly entitled to higher protection. The Court also noted that the Plaintiff had furnished the registration certificates for its marks, and was the prior user of its marks since 2008. Additionally, the Court concluded that the Defendant had passed off the marks of the Plaintiff as all the three tests for passing off had been satisfied.

Pentel Kabushiki Kaisha and Another v. M/s. Arora Stationers and Others – Delhi High Court [May 28, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged use of the Appellants’ design concerning ballpoint pens. The Single Judge noted that the features alleged by the Appellants are not novel or substantially new or original to have protection under the Designs Act, and accordingly ruled against the grant of an injunction in its favour. The Appellants filed an appeal to this order, where the Court observed in the beginning that the Single Judge had failed to consider the fact that during the pendency of the suit, the Respondents had obtained registration for the same design as that of the Appellants. The Court noted that the Respondents have registered an identical design could not turn around and question the originality of the same when already registered by a prior registrant. Accordingly, the Court allowed the appeal and set aside the decision of the Single Judge.

M/S Crocs Inc USA v. M/S BATA India and Others – Delhi High Court [May 29, 2019]

The appeal was filed against an order which held six Shape Trademark Suits (STSs) filed by the Appellants as not maintainable. At the outset, the Court noted that in each of the STSs, the relief sought was for a permanent injunction on the grounds that the Defendants adopted and copied the shape trademark and trade dress of the Appellant. The Court observed that the Appellants made out a prima facie case for grant of the limited interim relief which would not prejudice the Defendants since the STSs against them were not being revived for the present and no similar STSs against any of them was permitted to be filed by the Appellant during the pendency of the present appeals. The Court further directed that during the pendency of the appeals, the impugned judgment of the Single Judge would not constitute a precedent to bar other STSs of the Appellant, and the maintainability of such STSs would be decided independently. Accordingly, the Court disposed the applications and set the list for final hearing on October 17, 2019.

M/s. Allied Blenders and Distillers Private Limited and Others v. Amit Dahanukar and Another – Delhi High Court [May 30, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged unauthorized use of the Plaintiffs’ marks “MANSION HOUSE” and “SAVOY CLUB” in respect of alcoholic beverages. Plaintiff No. 3 had granted Defendant No. 2 a license to use the aforementioned marks in 1983, and in an agreement in respect of buying of concentrates (used in alcoholic beverages) was entered into between the Parties in 1987. These agreements were terminated in 2003 and Plaintiff No. 3 entered into a licensing agreement with a third party. In spite of such termination, the Defendant allegedly continued to use the Plaintiff’s marks. In arriving at a decision, the Court noted that Plaintiff No. 3 was denied an injunction by the Bombay High Court in an identical proceeding against the same Defendant. Drawing from that decision, the Court observed that Plaintiff No. 3 had conceded before the Bombay High Court that they had transferred and assigned the aforementioned trademarks to Defendant No. 2 in 1987. The Court also stated an unexplained and inordinate delay of 11 years to be a cause to not award an injunction in favour of Plaintiff No. 3. With respect to the suit filed by Defendant No. 2 seeking to dismiss the suit for a permanent injunction of Plaintiff No. 3, the Court noted that regardless of the decision of the Bombay High Court, infringement of trademark gave a continuous cause of action to a party. Therefore, the fresh suit filed by Plaintiff No. 3 could not be dismissed on the ground that it amounted to activating an already relinquished part claim.

M/s. Agi Music Sdn Bhd v. Ilaiyaraja and Another – Madras High Court [June 4, 2019]

The dispute between the Parties arose over a licensing agreement for a sound recording. Defendant No. 1 is a world-renowned composer assigned his sound recordings to his wife, who further entered into a licensing agreement with the Plaintiff in respect of those recordings. As there was no term for the assignment, Defendant No. 1 claimed that the default period of 5 years be considered and therefore, the use of those sound recordings by the Plaintiff beyond the statutorily specified period would be an infringement of his recordings. The Court noted that the producers of the films held copyright in respect of the sound recordings of Defendant No. 1, as he had failed to produce any evidence of reservation to the same. The Court further stated that despite the assignment of rights in the sound recordings, Defendant No. 1 had a claim to authorship based on the provision relating to moral rights. Having decided the producer to be the owner of the sound recordings appearing in their cinematograph films, the Court observed that the assignment made by Defendant No. 1’s wife to the Plaintiff had no statutory sanction in regard to those specific recordings. Regardless, the Court noted that other sound recordings (not appearing in the cinematograph films) would be valid for the statutorily specified period of 5 years, as no term had been mentioned in the assignment deed.

Reliance Industries Limited and Another v. Dhananjay Dinkarrao Khairnar and Another – Bombay High Court [June 10, 2019]

Defendant No. 2 submitted to abide by the decree according to which they would be restrained by a permanent injunction from using the marks “JIOFIT” and “JOIFER” or any other marks deceptively similar to that of the Plaintiffs’ mark, “JIO”. Additionally, Defendant No. 2 agreed to furnish the correct account of the stocks available with it and return to the Plaintiffs all label, materials etc. with the infringing marks for destruction.

Siyaram Silk Mills Limited v. Stanford Siyaram Fashion Private Limited and Others – Bombay High Court [June 11, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s mark “SIYARAM” by using an identical mark for marketing apparels. This suit on infringement was stayed in light of the rectification filed by the Plaintiff against the registration granted to the Defendant. The Defendant opposed the filing of the infringement suit claiming that the Act prevented the Plaintiff from filing a suit for infringement as its mark was registered. The Court dismissed this argument stating that the Act expressly enabled filing of a suit for infringement against a registered mark. Therefore, it was noted that the action of passing off clubbed with the infringement suit was permitted.

M/s. Proline Incorporation v. Ramesh Jain – Calcutta High Court [June 12, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “SWETON” by using a deceptively similar mark “SWEETON” in respect of speakers and its components. In arriving at the decision, the Court observed that the marks were artistically, visually, phonetically and structurally similar, and the Defendant’s use of the mark would create confusion in the minds of customers. Moreover, it was observed by the Court that the Plaintiff’s mark was senior to the Defendant’s mark as the Plaintiff had used its mark since 1982.

News

• Delhi HC restrains over 60 sites from audio broadcast of ICC World Cup 2019
• Music maestro Ilaiyaraaja wins 5-year long legal battle on copyright suit
• Draft Copyright Amendment Rules, 2019 – Changes Proposed In Statutory Licenses And Functioning Of Copyright Societies
• Delhi HC to Hear Asus’ Plea Against Zenfone Trademark Injunction on July 10
• ‘Bharat’ is on: Delhi High Court dismisses plea to change the film’s name
• Passing Off Suits In Relation To Registered Design Used As Trademark Maintainable For Now : Delhi HC
• Court not to issue administrative directions when a quasi-judicial authority is seized with a proceeding
• Commercial Working Statement Proposed To Be Overhauled In Proposed Amendments to Patent Rules
• Don’t arrest farmers for sowing next-gen GM cotton and Bt Brinjal, address their issues
• Cusat team develops green technology

International

• Bill To Broaden Patent Eligibility Spurs Clash At Sen. Hearing

Have an interest in IP law? Love legal research and writing? Look no further! Apply immediately to become a SpicyIP Fellow!

Year after year, our fellowship series has attracted some of the brightest minds to the world of IP. We are now pleased to announce the 7th edition of the SpicyIP Fellowship for 2019-20. 

SpicyIP Fellowship 2019-20

For those of you who are new to the blog, the SpicyIP Fellowship is a coveted position for those seeking to make a mark in the world of IP. Warning though: it entails a high level of rigour in research and writing! Though great fun as well, given the range of topics covered and the freedom you enjoy in creatively crafting your take on various IP cases and developments.

We are now looking for a fresh set of sharp, passionate and dedicated fellows who can help us grow even spicier this year. Apart from the sheer joy of writing, the selected Fellows will earn a stipend of approximately Rs. 45,000 a year (Rs. 1,000 per post).

Our Journey So Far

SpicyIP’s avowed aim is to produce a more transparent, collaborative and productive IP and innovation ecosystem in India. We’ve been working very hard towards achieving this for the last thirteen years. We say so, albeit with modesty: our efforts have not gone unnoticed. We have consistently been ranked among the top IP blogs in the world. Some of our achievements can be viewed here.

We now boast a subscriber base of over 6,500 and receive an average of 1,60,000 views per month. Our blog stats too show the growth we’ve had over the years, thanks in great part to our readers who keep us on our toes with their rigorous critique of our posts.

Eligibility

Anybody is welcome to apply. Sex no bar, age no bar, caste no bar, ideology no bar. So long as you are committed to the craft of writing, and possess a keen mind willing to learn and an attitude open to experimenting with fun formats and themes, this is the place for you!

How to apply? 

1. Interested candidates are required to submit the following to pankhuri@spicyip.com with a cc to contact@spicyip.com with “Application for 7^th SpicyIP Fellowship” in the subject line (Important: If “Application for 7th SpicyIP Fellowship” is not mentioned in the subject line, the e-mail may be missed) by July 15, 2019:
   1. At least two (2) blog posts;
   2. CV (not exceeding 2 pages); and
   3. A statement (not exceeding 1000 words) as to why the applicant thinks he/she would be a good fit for the blog.
2. The posts must be relevant to the Indian IP landscape even if not directly about an Indian development. If you’re not sure whether your topic will be suitable, you may check with us at pankhuri@spicyip.com with “Fellowship Topic Check” in the subject line.
3. All posts must be analytical and not merely descriptive. Posts that reflect on current IP developments will be preferred. Even historical IP related issues or posts that reflect on larger IP themes at a conceptual or macro level are welcome.
4. The word count of each post must be within the range of 900 to 1200 words.
5. Fellows will be selected based on the quality of the posts submitted to us during this four week period. If the two posts submitted by the applicant are not sufficient to make a determination of suitability for the fellowship, more posts may be required after mutual dialogue with the applicant.
6. The name of selected Fellows will be announced on the blog.
7. If the first post from an applicant is of sub-standard quality, further posts from him/her will not be considered, barring exceptional circumstances.
8. The posts that meet the editorial standards of the blog will be published as guest posts. However, if the topic has already been covered on the blog, then the post will not be published unless it introduces a new angle or dimension or perspective.

Evaluation criteria

• Topical Relevance
• Research skills
• Grammar/Lucidity /Language skills
• Logical flow, coherence and structure
• Enthusiasm/Passion
• Creativity
• Discipline/Timeliness/Proactivity

Terms and conditions

• Once selected, Fellows will be on a probationary period for the first two months of the Fellowship. The probationary period may be extended if more time is required to assess the performance of the Fellows.
• Fellows will be required to write a minimum of 4 posts per month for a period of 12 months. If notified in advance, this can be reduced to 2 posts during the months of internship (maximum twice a year) and exempted during the period of exams (maximum twice a year).
• These posts can be on either the Fellows’ own preferred topics so long as they fit within our broader mission statement, or ones chosen from a pool of topics open to all members of the team.
• Each post must be of a minimum of 900 words and preferably under 1200 words (unless the situation otherwise warrants).
• Apart from the posts, the Fellows may be required to assist in research. Depending on the load of research, posting requirements may be adjusted accordingly.
• The expected tenure of Fellowship will be from August 1, 2019 to July 31, 2020.
• Once the probationary period is over and the fellowship is confirmed, the Fellow will be paid a stipend (approximately Rs. 1,000 per post). If we receive more donor funding, we will enhance this stipendiary amount.

Termination

• If the Fellow does not diligently fulfill his/her obligations as set out above or is otherwise deemed unfit for the blog during the probationary period, we will not confirm the fellowship.
• After confirmation of the fellowship, if a Fellow is found to not diligently fulfill his/her obligations at any time during the fellowship period, we reserve the right to terminate the fellowship at any point in time.
• If the fellowship is so terminated, the Fellow will receive no more stipend than what they have already received up to that point.

If there are any queries in relation to the Fellowship, please drop us an e-mail at <pankhuri@spicyip.com>. We look forward to receiving your applications!

(This post has been co-authored with Bhavik Shukla, a 4th year student at NLIU, Bhopal)

Recently, in a decision that is likely to have a significant impact on pharmaceutical patents and access to medicines, a Division Bench of the Delhi High Court, upheld a Single Judge’s decision and ruled that the ‘export’ of a patented invention for experimental purposes is also covered under Section 107A of the Patents Act, 1970 (India’s Bolar exception), and thus does not amount to patent infringement. It accordingly dismissed Bayer’s appeal and left it to the trial court to decide if the end use and the purpose of export of Bayer’s patented drug ‘Sorafenib Tosylate’ by Natco and Alembic was reasonably related to research, experiment or was for submission of information to regulatory authorities in a foreign country, as permissible under Section 107A (a) of the Act.

Background

Bayer v. Natco

In 2014, Bayer filed a writ petition before the Delhi High Court seeking a mandamus to the Custom Authorities to restrain Natco from exporting Bayer’s patented drug ‘Sorafenib Tosylate’ (for which it was granted a compulsory license in 2012) to China. It argued that the export was contrary to the terms of the compulsory license which was “solely for the purposes of making, using, offering to sell and selling the drug covered by the patent for the purpose of treating HCC and RCC in humans within the territory of India” and thus constituted infringement of its patent. The court granted an interim order directing the Customs Authorities to ensure that Natco does not export more than 15 grams of the drug for the purpose of conducting development/ clinical studies and trials. Later, during the pendency of the petition, the court permitted Natco to export 1 kg of the drug for this purpose, though on Bayer’s appeal it prohibited Natco from doing so till the decision of the writ petition.

Bayer v. Alembic

During pendency of the decision in the writ petition filed by Natco, Bayer filed a suit against Alembic in December 2016 in order to restrain Alembic from making, selling, distributing, advertising, exporting, offering for sale or dealing in Rivaroxaban, a product it claimed to infringe its patent. In the course of hearing, Alembic claimed that its export of Rivaroxaban was covered under Section 107A of the Act, and that it had not commercially launched the drug. In the same hearing, Bayer contended that Alembic had already exported 90 kilograms of Rivaroxaban, and such large quantities could not be permitted to fall within the scope of the provision. After hearing the parties, the Court referred to Natco’s writ petition involving a similar interpretation of the provision, and indicated towards deciding the matters together. Later, Alembic gave a 15-day notice to Bayer for export of Rivaroxaban to Palestine and Brazil, but the court adjourned the matter in light of the pending decision.

Single Judge’s Decision

The Court (Single Judge) decided the petition against Bayer in 2017, holding that ‘export’ of a patented invention for experimental purposes was covered under Section 107A of the Act, and thus would not amount to patent infringement. It thereby allowed Natco and Alembic to export drugs to other countries for the purposes specified in Section 107A of the Act.

Bayer’s Appeal to the Division Bench

Bayer appealed the decision before the Division Bench, arguing that Section 107A of the Act had to be interpreted narrowly in light of it being a proviso to the exclusive rights of the patentee, and if interpreted accordingly the term “exports” would not be covered within “selling” appearing in the provision. During the hearing of the suit, Natco disputed Bayer’s argument on the scope of “selling”, and contended that “exports” would be covered in the provision if the same were done in compliance with its scope.

Division Bench’s Decision

The Court before dealing with the issues raised in the appeal, suited itself to delve into the history of research-oriented exceptions across the world and the analysis of the legislative history of Section 107A of the Act. The substantive issues were discussed thereafter, the most important and elaborate being the one pertaining to the ambit of the term “selling” found in the provision.

– Interpretation of “selling” in Section 107A (a) and whether it encompasses exporting

Section 107A (a) of the Act, India’s Bolar provision, reads as follows:

“Certain acts not to be considered as infringement. -For the purposes of this Act,-

(a) any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product.”

The main issue before the court was whether the expression “selling” as used in the provision includes ‘exporting’ within its meaning or not. Bayer had argued that it does not, while Natco and Alembic had presented counters to the same as briefly mentioned in the section above. The court divided this issue based on Bayer’s arguments as follows, to analyse each argument comprehensively.

a) Express use of the term “export” in other provisions does not exclude export from the ambit of ‘sale’ under Section 107A (a)

Bayer had argued that the term ‘export’ does not find explicit mention in Section 107A of the Act, and hence export was meant to be excluded from its ambit. To support this argument, Bayer stated that the express mention of ‘importing’ with the term “selling” in the provision indicated that the legislature intended to exclude exporting. It further bolstered this argument by relying on sections 84, 90 and 92A of the Act wherein the term is expressly mentioned, implying that the Legislature intended to per se exclude exporting from the ambit of Section 107A (a). The Court rejected this argument noting that while interpreting a statute, although it is a rule that the same word must be given the same meaning throughout the statute, this rule is neither inflexible nor of universal exception, and the object of the provision is important in determining whether the same meaning is to be attributed to a word in all parts of the statute. With respect to the provisions relied upon by Bayer, the Court observed that the term “export” is used in different contexts in those provisions which primarily deal with compulsory licensing, and thus its omission in Section 107A (a), an exception for research purposes, could not be interpreted to mean that the term “export” was intended to be excluded from the ambit of the term “selling” used in it.

The Court’s reasoning in this regard, however, is not very convincing. When the term ‘export’ is not even used in Section 107A (a), it is not clear as to why it used the interpretation rule of ‘same word, same meaning’ while analyzing Bayer’s argument on explicit use of the term in other provisions of the Act.

b) Section 107A of the Act is an independent provision and not an exception to Section 48

Bayer had contended that Section 107A of the Act is an exception to the exclusive rights granted to the patentee under Section 48 of the Act, and thus the provision has to be strictly interpreted. The Court came hard on this argument stating that it is Section 48 which is made subject to other provisions including Section 107A, and not the other way round. It laudably noted that the provision is not an exception to Section 48 but an independent provision dealing with the right to use the patented invention for research purposes, which was enacted to comply with TRIPS and was subject of vigorous Parliamentary debates and scrutiny of a Joint Committee Report. Accordingly, it rejected Bayer’s argument that Section 107A (a) should be read subordinate to Section 48.

c) Scope of ‘sale’ under Section 107A (a) cannot be restricted to include export of only the information developed in India and not the patented invention itself

In respect of the argument on territoriality, Bayer had stated that reference to laws or regulations of other countries in Section 107A (a) was to be understood in a way that the experimental use of the patented invention has to be made in India alone, and only the information derived from such use could subsequently be exported and not the patented invention itself. The Court dismissed this argument observing that Section 107A (a) clearly allows sale of a patented invention as long as it is for the purpose of research and thus the scope of sale cannot be narrowed down to sale within India only. It further noted that some countries’ laws may even require the research to be carried on within their territory and hence it is undesirable that the Indian law govern the requirements of other nations by limiting the research exception to its territory.  Furthermore, the Court rightly observed that there was no question of any injury to the patentee’s interests if the patented invention is exported solely for the purpose of research. Accordingly, it held that the provision ought to be given the fullest effect and not an artificial narrow interpretation so as to include export of only the information developed in India and not the patented invention itself.

Further, the Court also rejected Bayer’s subsidiary submissions based on the Drugs and Cosmetics Rules, 1945 and the Canada Dispute ruling by the WTO Dispute Settlement Body. 

– Reasonable Relation Test

Having held that the export of a patented invention is allowed under Section 107A (a), the Court also took note of the fact that if exports are not regulated, the Bolar exception could be misused to export beyond what is ‘reasonably related’ to the purpose of developing information for obtaining regulatory approval. It thus held that safeguards were necessary to prevent such misuse. However, it made it clear that there could be no “iron clad rule” (such as that related to the volume of the patented invention etc.) to determine whether the export is ‘reasonably related’ to the research purpose or not, and each case would have to be determined on its individual facts. The Court laid down an indicative list of factors for helping with such a determination as below:

1. The patent in question;
2. The nature of the product or elements to be exported;
3. The details of the party importing the product;
4. The quantity to be exported;
5. Other details with respect to the end use of the product to establish that its solely for research purposes;
6. All details regarding the relevant regulations covering the kind of scope and inquiry;
7. If regulations are in the language of another country, an authentic English translation of the same;
8. Appropriate interim order including an undertaking to compensate the plaintiff in the event the suit were to be decreed in the plaintiff’s favour, and the extent of such compensation;
9. Verification through the Indian mission (and its trade division) abroad regarding the  authentication of the third party vendor and/or its facilities abroad, if necessary; and
10. In case the product to be imported is a generic product, award of suitable restitutionary relief to the defendant to preclude frivolous litigation.

Accordingly, the Court found the Single Judge’s approach, of holding the export of 1000 or 2000 tablets to constitute reasonable use and permitting it without assessment of any of the above factors, to be unacceptable.

– Dismissal of Appeal and Direction for Trial

Further, the court noted that such disputes are the subject matter of a civil suit and not a writ petition, as an investigation into the facts can be done and the full range of reliefs can be granted only in a civil suit. It accordingly dismissed Bayer’s appeal and left it to the trial court to decide if the end use and the purpose of export of Bayer’s patented drug ‘Sorafenib Tosylate’ by Natco and Alembic was ‘reasonably related’ to the purpose of research for submission of information  to regulatory authorities in a foreign country.

Balance between Public and Private Interest

The judgment marks a huge victory for public health as it allows generic companies in India to export patented drugs to other countries for the purpose of generating sufficient regulatory information to warrant an approval in those countries. As such, it helps speed up access to affordable medications in those countries soon after the expiry of the patent. Further, the judgment is also to be hailed for having adopted an approach that strikes a right balance between public interest and private rights of patentees. The application of the ‘reasonable relation’ test for determining whether an export is permitted under Section 107A (a) would ensure that exports genuinely made for research purposes are not restricted, whilst at the same time safeguarding the patentees’ rights.

Image from here

Pankhuri co-authored a post with Bhavik on a recent decision of the Delhi HC, which dismissed Bayer’s appeal and left it to the trial court to apply the reasonable relationship test for deciding whether the use and export of Bayer’s patented drug ‘Sorafenib Tosylate’ by Natco and Alembic was permissible under Section 107A of the Patents Act (India’s Bolar Provision). The Court ruled that the ‘export’ of a patented invention for experimental purposes was covered under the provision. In their post, the authors conclude that this is a positive development which will aid in ensuring genuine exports are unrestricted, increasing access to affordable medications and also protecting the rights of patentees at the same time.

Pankhuri also announced about the 7th SpicyIP Fellowship 2019-20! Interested candidates can apply till July 15, 2019. It’s been a great experience for us at SpicyIP and I would strongly urge anyone who has a flair for writing and a keen interest in IP law to consider applying for the Fellowship.

Other Developments

Indian

Judgments

M/s. Allied Blenders and Distillers Private Limited v. Rangar Breweries Limited – Delhi High Court [May 21, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “OFFICER’S CHOICE” by using bottles embossed with the Plaintiff’s mark in order to market its country liquor. The Court noted that there had been various proceedings instituted against the Defendant in the past in order restrain it from using the bottles embossed with the Plaintiff’s mark. In light of the consistent default by the Defendant, it was observed by the Court that it was satisfied that bottles bearing the Plaintiff’s mark were in fact being used by the Defendant in some manner for sale.

Raj Rewal v. Union of India and Others – Delhi High Court [May 28, 2019]

The dispute between the Parties arose on account of the Defendant No. 2’s decision to demolish the Hall of Nations and the Nehru Pavilion, Plaintiff being the architect of these structures, for re-structuring the Pragati Maidan Complex. The question for consideration in the case was whether an architect, as author of an artistic work could restrain or seek compensation from the owner of the land on which the building was constructed, for demolition of such building. On an analysis of moral rights undertaken by the Court, it was noted at the onset that the Plaintiff should have been informed before demolition of the structures, and also furnished with the reasons for the same. The Court went on to analyse the position of copyright law qua property law, and observed that the former could not trump the constitutional right. It was further noted by the Court that moral rights of an architect in case of a building were restricted to the extent that such architect could claim the building to be his work and that such work could not be altered without his permission. However, the Court went on to observe that destruction of the building did not violate the moral right of the architect as the building no longer existed for a person to view and judge. Stating that the “requirements of urban planning outweigh the moral rights of an architect”, the Court noted that the right to property of the owner of a land would not be restricted by the moral rights of the author of an architectural work. The Court concluded that no jurisdiction in the world had prohibited demolition of a building or structure, and consequently dismissed the suit on the ground that the Plaintiff had no cause of action.

Sterlite Technologies Limited v. ZTT India Private Limited – Delhi High Court [May 31, 2019]

The Court granted an interim injunction restraining the Defendant from infringing the Plaintiff’s patent numbered “IN 241433” in respect of optical fibres. The Court noted that it could not arrive at a decision with respect to infringement of the Plaintiff’s patent. Nevertheless, it was observed that patent offering a limited monopoly, would be harmed if the Defendant was not restrained from using and marketing the patented invention. The Court noted that experimentation with interim orders was the need of the hour, and the grant of the aforementioned interim injunction would balance interests.

M/s. Sahee Leathers v. The Registrar of Geographical Indications – Madras High Court [June 14, 2019]

The Petitioner filed a writ petition praying for a writ of mandamus, directing the Respondent to hear and decide an interlocutory application filed by the Petitioner on the maintainability of a rectification application filed by some private parties. The Court noted the request of the Petitioner to be innocuous and accordingly directed the Respondent to hear and decide the aforementioned application within a period of six weeks from the receipt of the Court’s order. It was further observed by the Court that the rectification application could only be decided after the disposal of the interlocutory application.

Suraj Kumar Mahavir Prasad Jaiswal and Another v. M/s. Pragya Films and Others – Bombay High Court [June 17, 2019]

The Court granted an interim injunction restraining the Defendants from infringing copyright in the Plaintiffs’ film “F.O.S.L.A.” or any other film, by communicating it to the public, broadcasting it or exporting copies of the same until the next hearing of the case.

Royal Dryfruit Range v. Royal Suvidha – Bombay High Court [June 17, 2019]

The Court granted a permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered mark “ROYAL” by using an identical mark in respect of sale of dry fruits. In arriving at the decision, the Court observed at the onset that the Plaintiff could maintain its action for interim relief even though the registration of the assignment of the mark “ROYAL” in its favour was pending with the Registrar. Furthermore, the Court noted that the Plaintiff’s mark was senior as it had been carrying on its business since 2012 as opposed to the Defendant’s use of the mark since 2016. Ultimately, it was stated by the Court that the word “ROYAL” was a prominent and essential feature of the Plaintiff’s mark, and the Defendant had dishonestly adopted it with an intention to ride upon the goodwill and reputation of the mark.

Godrej Consumer Products Limited v. Shobha Berry – Bombay High Court [June 18, 2019]

The Court confirmed the continuance of a previously granted interim injunction against the Defendant restraining it from infringing the Plaintiff’s mark “GODREJ NO. 1” by using deceptively similar marks “STARGLOW NO. 1” and “BESTGLOW NO. 1”, as the Defendant failed to oppose the suit.

Devans Modern Breweries Limited v. Mount Everest Breweries Limited and Another – Calcutta High Court [June 19, 2019]

The Court disposed off the case directing that the interim injunction against the Respondents restraining them from infringing the registered design of the Plaintiff’s bottles, passed on an earlier date shall continue, considering that none of the Respondents appeared or contested the case.

Shambhu Nath and Brothers and Others v. Manish Jaiswal – Calcutta High Court [June 19, 2019]

The Court disposed off the case directing that the interim injunction passed against the Respondent on an earlier date restraining it from infringing the registered mark of the Plaintiff “TOOFAN” by using a deceptively similar mark “SHRI KRISHNA TOOFAN” shall continue, considering that the Respondent was not interested in contesting the case.

News

• Delhi HC restrains NGO from using the trade name of multinational courier delivery service, Gati
• Bengaluru Court Passes Injunction Against Google In A Case Alleging Diversion Of Site Traffic By Illegal Use Of Keywords
• Kolhapuris: The famous leather chappal get Geographical Indication tag
• Why WWE wrestler Brock Lesnar’s #Advocate, Paul Heyman has served notice on Ranveer Singh

International

• VidAngel ordered to pay $62.4M for copyright infringement
• CoinTelegraph faces copyright infringement suit after a photo allegedly went uncredited
• Amazon US Gets Patent to use Delivery Drones for Surveillance Service
• Huawei Threatens to Raise Patent Royalties on US Firms
• Adidas loses EU bid to extend its trademark

Image from here

We’re pleased to bring to you an interesting guest post by Dr. Sunanda Bharti. Dr. Sunanda is an Assistant Professor in Law at Delhi University. She has written two guest posts for us in the past as well, which can be viewed here and here.

Saree Draping Styles as a ‘Traditional Cultural Expression’ (TCE)

Dr. Sunanda Bharti

Introduction

Whether it be Atpoure shari, the most identifiable saree draping style of West Bengal popularised now by so many Bollywood movies – where the the female actor is shown in a saree with pallu appearing on both the shoulders and a bunch of keys tied to the veil end that goes over the right shoulder; or the Nauvari (nine-yard saree identified with the folk dance lavani) worn like a dhoti (loincloth), with one end going front to back between the legs, which is then tucked around the waist; or the ubiquitous Nivi drape worn most commonly – saree in India has had many forms since times immemorial. The drape, essentially the tying style of the unstitched garment, differs according to region, community, functionality and sometimes occasion. Irrespective, saree is an indispensable part of the Indian culture, tradition and expression.

Exploring laws where various facets of saree may be covered

Interwoven within the folds of the above obvious understanding is the claim to protection of sarees through the intellectual property regime. Is it protected? Well, the answer to that question is both, a yes and a no. Let me explain why. The answer would be in the affirmative if one is looking at trademark law since a saree brand can definitely be trademarked. Garden vareli, Co-optex, Nalli etc. are popular examples. Likewise, a print on a saree may be an ‘original artistic work’ under the Copyright Act, 1957 or an industrial design under the Designs Act, 2000 if it’s appealing to the eye and registered.

The answer to the question whether sarees are protected is a big yes again if one looks at the protection that the Geographical Indications of Goods Act, 1999 (GIGA) has given to sarees. In fact, the most immediate branch of IP that the mind connects with sarees is Geographical Indications (GIs). However, not many of us would know that out of the 344 registered GIs, as many as 27 are in respect of sarees. And this number does not include those in the registered name of which the word ‘saree’ does not figure—for instance, Bhagalpuri silks, Kaanchipuram Silks, Mysore and Muga Silks, which are world-famous as fabrics associated primarily with sarees. That brings the count to 31. Needless to mention that given these impressive statistics, sarees are definitely an object of some serious protection by law. In fact, seen from this perspective, GIGA appears to be a good recourse towards protecting some of the traditional knowledge (TK) associated with Indian sarees. However, the difficulty is that in the context of sarees, all TK might not be comprised in the end product. So much of the TK is in the art of draping those 6 to 9 yards which seems to be protected nowhere!

Advocating that saree draping styles are TK in the form of Traditional Cultural Expressions (TCEs)

Saree draping essentially is an ‘activity’ or a process or a style that does not seem to be protected under any statute. Usage of the word ‘process’, may take one to the domain of patent protection; but due to lack of novelty or matter being in the public domain, one cannot imagine any patent protection for a saree draping style. Hence, to conclude briefly, what is protected by above laws, including GIs, is the process of production, the weave, the fabric, the unique designs, motifs or a combination of all, along with the producers who have been responsible for protecting/maintaining the standards and nurturing the culture and tradition associated with the concerned GI.

And that brings us to another branch of IP – Traditional Knowledge (TK). TK is that organic element of knowledge that is passed on from generation to generation within a community, not necessarily through any institutionalized or formal means of teaching. WIPO’s program on TK also addresses traditional cultural expressions (TCEs). Traditional Cultural Expressions (TCEs) are taken to be synonymous with folklore. One good definition has been attempted by section 2 of the WIPO- UNESCO Model Provisions for National Laws on the protection of Expressions of Folklore against Illicit Exploitation and other Prejudicial Actions, 1985. Under this model law, folklore has been defined to mean and include–productions consisting of characteristic elements of the traditional artistic heritage developed and maintained by a community of or by individuals reflecting the traditional artistic expressions of such a community, in particular:

(i) Verbal expressions, such as, folktales;

(ii) Musical expressions, such as, folk songs and instrumental music;

(iii) Expressions by actions, such as, folk dances, plays and artistic forms or rituals; whether or not reduced to a material form; and

(iv) Tangible expressions, such as:

(a) productions of folk art, in particular, drawing, paintings, carvings, sculptures, pottery, terracotta, mosaic, woodwork, metal ware, jewellery, basket weaving, needlework, textiles, carpets, costumes;

(b) Musical instruments;

(c) Architectural forms.

Two points are worth noting in the above context:

1. There is no comprehensive exhaustive list of what can be branded as folklore or TCE.

2. Tangible expressions in the form of costumes, traditionally used by ‘folk’- that is, men and women of a community or country are distinctly covered and saree draping styles can be covered here.

To elaborate, in context of the saree draping styles, the author wants to emphasise that saree is a costume identified with India, draped in more than 100 ways—ways that were learnt informally and unofficially from everyday experience. It, hence, fits perfectly in the above proposed definition of TCE by WIPO-UNESCO. Clearly, TK, that subsumes TCE, is a category that is open for some unventured forms of knowledge where saree draping may fit in.

Rta Kapur Chishti, who is perhaps the only person who can be categorised as an authority on sarees in the world, maintains that there are more than 100 ancient ways of draping the garment (see the picture above). No one can deny that the myriad ways in which a saree can be draped in India is an integral part of the Indian tradition. This traditional wisdom and cultural expression of the preceding generations is nourished and vitalised by the succeeding generations and the process continues. It is, in fact, rare that TK or TCE gets transmitted in the written form to the succeeding lineage. The next question that arises is how this IP can be (mis)appropriated?

Can TCEs, that manifest as saree draping styles, be misappropriated?

Having made out a case for saree draping styles to be TCEs, a question that needs to be answered is whether its misappropriation is possible. The author suggests the answer to be a ‘yes’. Misappropriation here essentially has two forms—1) commercial exploitation of traditional Indian saree draping styles and 2) exploitation that disturbs the uniqueness, aesthetics, sanctity and cultural sensitivity of the garment. Since the various Indian saree draping styles have continued to be timeless and now even gone global by serving as an inspiration to other creators and innovators who have adapted this traditional expression/version to make it universally palatable, these should be taken as examples of appropriation of TCE. After all, there are elaborate gowns and dresses being designed and stitched to get the ‘look’ or comfort of a particular saree drape which is innate to and hence, can be traced to some region of India (see picture below).

Saree is just a sartorial choice and not a problem if cultural sanctity of the drape is maintained and the activity is non-monetary: Wearing of the saree by non-Indian communities and cultures has never been a problem and it is not a cause of protest in this write-up as well. It is commercialization of various ‘inspired’ saree draping styles into horrendous gowns and other apparel that hits ones cultural sensitivities. The knowledge, traditions, rituals and practices that are associated with sarees are often sacrosanct and there is no harm in being skeptical in partaking with the same freely, with the outside world. The crises of identification of world’s diverse cultures and languages is far greater than the biodiversity crisis, only if we recognise it.

Suniti Ila Rao, the producer of the project The-Sari-A-How-to-Drape-Film-Series, hints that since Indian saree has been a fluid garment acceptable across economic stratas and cultures, its appropriation by the western world is not considered as profane by Indians. Those foreign to the saree culture tend to inquire –‘is it religious?’ (Answer: No); ‘does one have to be married to wear it?’ (No); ‘is it meant to be worn only by Hindus?’ (No). Suniti maintains that perhaps this is overwhelmingly why Indians are not offended, and in fact, enjoy seeing others embrace the garment.

What may be taken as culturally offensive: The various ways in which one can swathe in the garment has inspired many a fashion designers from across the globe. So, we have ruffled sarees, plastic sarees, steel versions and saree ‘inspired’ evening gowns etc, as modern foreign avatars, which the traditional puritans might judge as vulgar, indelicate, offensive and as cultural misappropriation. It must be clarified again that casually picking up a certain fashion, dialect, customs, and traditions of a certain country or community is different. It is only the commercial use of the TCE that is proposed to be problematic. Any TCE, including a saree draping style may be safely and fairly used for purely personal and educational/research purposes.

According to Nadra Kareem Nittle [i], ‘cultural [mis]appropriation is the adoption of certain elements from another culture without the consent of people who belong to that culture. Cultural appropriation typically involves members of a dominant group exploiting the culture of less privileged groups.’ The author of Who Owns Culture? Appropriation and Authenticity in American Law, defines cultural appropriation as ‘taking intellectual property, traditional knowledge, cultural expressions, or artifacts from someone else’s culture without permission. This can include unauthorized use of another culture’s dance, dress, music, language, folklore, cuisine, traditional medicine, religious symbols, etc…’

Much like the misappropriation of traditional knowledge in medicines, biodiversity etc., the tangible expressions of folklore manifested in the various saree drapes have also been usurped from their traditional context, indiscriminately commercialized without adequate attribution and sensitivity towards the communities/countries to which they belong. Copying the unique saree draping styles of India and presenting them in [what may be considered] as gross versions of the original, is hence a violation of TCE.

Considering the absence of any law, the scholarly opinion on the issue of protection of saree draping is likely to fall in two main categories—those who would scowl at the very prospect of protecting it, maintaining that the idea to be an absurdity; others who (like the author) would advocate that the different forms of saree drapes/styles are an important part of the Traditional Cultural Expressions (TCEs) of India and hence, deserve some respect and possible protection from blatant and gross misappropriation.

This brings us to its legal protection: can we have a law to curb appropriation of these TCEs – saree draping styles? Can we identify and reward those who have been assiduously preserving this artistic and stylistic aspect of our culture – benefit sharing a la GI style? Answers to these questions are not easy but nonetheless need to be explored.

 What can be done to protect saree draping styles?

The author believes that TCEs can also be economic assets, and they should, for culturally diverse and rich countries such as India – and if sensibly exploited can be a source of income generation, and branding for the country. The author proposes to utilise the often forgotten economic right called Domaine Public Payant (Paying for Public Domain) in the context of TCEs like saree draping styles that have been in the public domain since long. Briefly put, the right of Domaine Public Payant refers to royalty that is payable for commercial use of works in the public domain.

Upon implementation, every non Indian person who commercially exploits the saree draping styles of India would be expected to pay a certain royalty, which may be deposited in the government treasury. Generally, the system works like a compulsory license scheme. So, the use is conditioned on payment of the prescribed fee to the collecting society or equivalent.

The author would like to point out that we would not be the first ones to implement the scheme. More than 4 decades ago, the WIPO published the Tunis Model Law on Copyright for Developing Countries, Section 17 of which proposed the idea of domaine public payant. Nation states willing to establish a paying public domain were free to do so and many did. However, presently just a few countries like Argentina and Uruguay still have a thriving domaine public payant structure.

The Tunis Model law has a functional appeal and relevance in the present century as it provides a feasible mechanism to compensate traditional knowledge including traditional cultural expressions. The money collected can be used for promoting tourism in the country and projecting India as a unique cultural and traditional hub along the lines of the ‘Incredible India’ campaign.

Developing sensitivity towards others’ cultures and the self regulation that it commands, is perhaps also another offshoot of the answer. TCE has an allurement in it, to which the outside world is attracted. The moment it is used by the outer world, it no longer retains that asthetic quotient and everything degenerates into a money making venture. As Nadra Kareem Nittle puts it, “genuine interest in other cultures is not to be discounted. The sharing of ideas, traditions, and material items is what makes life interesting and helps diversify the world. It is the intention that remains most important and something everyone can remain conscious of as we learn from others”.

Having made out a case for protection to saree draping styles through the uncodified TK/TCE, I would like to leave you with a teaser:

Would the art of saree draping be covered by the Copyright Act, 1957?

After all, ‘any other work of artistic craftsmanship’ as a residuary clause under the definition of artistic works [section 2(c)(iii)] does seem to beckon! But there are problems associated with the above. Some pressing ones are as follows:

1. If saree draping is absorbed under the current copyright regime by treating it (as suggested) as ‘any other form of artistic expression’, it would be impossible to calculate the term of protection-there being no definitive traceable person to whom one can attribute the ‘authorship’ of introducing to the world, the art of any particular saree drape for the first ever time. Also, such a pre-condition would fail to address the need of indigenous and traditional communities to protect TCEs in perpetuity.

And then of course, is the core related issue of ‘originality’ of the saree draping styles; as calculated in the context of contemporary times, the various styles have been in the public domain since times immemorial.

2. The above nagging and recurring problem of locating ownership of TCEs may be compounded by the fact that sarees are culturally a common garment in other countries like Bangladesh and Nepal. So, there are proprietary/territory issues related to this TCE.

Post Script: A brief research, compelled by curiosity, took me to investigate whether the various saree drapes of some of our national dances, for instance Bharatnatyam and Mohiniattam are protected. The answer is in the negative, as the authority that tags them as ‘national’ is Sangeet Natak Academy, a registered society. Can the Copyright Act, 1957 come to the rescue here too?

[i] Nadra Kareem Nittle has written about education, race, and cultural issues for a variety of publications including the Robert C. Maynard Institute for Journalism Education and Change.org.

Wondering if it’s worth applying for the SpicyIP Fellowship? Hear from our current batch of Fellows on their experience so far. Their words are sure to dispel all your doubts. Here’s what they’ve to say:

Prarthana Patnaik

“I first heard about SpicyIP when my seniors were discussing a few IP law issues and how a certain blog post had cleared all their doubts. It piqued my interest and I checked out the blog-I couldn’t stop reading! I was fascinated by the way complex legal issues could be broken down into such simple terms and explained in a such an interesting (and often quirky) manner. Later on, when I decided to hone my writing and research skills, I couldn’t think of a better platform than SpicyIP.

When I started posting as a SpicyIP Fellow and took up a few challenging topics, I began to appreciate the amount of hard work and research one needs to put in for producing such posts. Apart from boosting my analytical skills and being intellectually enriching, the Fellowship also gave me the opportunity to connect with a team of brilliant and dedicated professionals who were always willing to listen to my opinions and clarify my doubts. It was also very humbling to know that my posts were read by a large audience and it was quite helpful to receive their inputs on a number of occasions. 

For those who love writing and are interested in IP law-do apply! This is the perfect opportunity to showcase your skills and learn from the best.“

Rishabh Mohnot

“I joined SpicyIP with a keen interest in intellectual property rights and a drive to explore its vast terrain. I am happy to say that my experience at this Fellowship has allowed me to do this. Firstly, it has improved my academic knowledge and understanding of IPR and even encouraged me to read more about non-mainstream IPRs. Second, it has enriched my appreciation of the real-life impact that IPR decisions and policies have on different areas of society. Consistently writing for SpicyIP has also improved the clarity of my thought when dealing with different issues. Further, the mentorship at SpicyIP enables one to explore different topics, improve writing skills, appreciate the importance of good research and add different perspectives to their thought and posts. I would highly recommend this fellowship to all those who are interested in intellectual property rights and enjoy writing.”

You may also read what our previous batches of Fellows had to say about their Fellowship experience here, here, here and here.

The applications for the 7th SpicyIP Fellowship are now open and will close on July 15, 2019. So apply away and become our new SpicyIP Fellow!

Look forward to an enthusiastic response!

We’re pleased to inform our readers that the Sports Law and Policy Centre (SLPC), Bangalore is organising the third edition of the SLPC Symposium on August 02-03, 2019 at the Bangalore International Centre. For further details of the event, please read the post below:

The Sports Law & Policy Symposium 2019

Bangalore International Centre

August 02 – 03, 2019

The Sports Law & Policy Centre, Bengaluru, (www.sportslaw.in), powered by LawNK and the GoSports Foundation, is organising the third edition of the Sports Law & Policy Symposium in Bangalore, India over the course of two days, August 02 and 03, 2019 at the Bangalore International Centre. Since the first edition of the Symposium in 2017, each year, the Symposium highlights emerging concerns in the domain of sports law and policy in India, and encourages deeper engagement in the issues to benefit the Indian sports eco-system.

In the context of the increasing role of data in sport; as a monetizable commodity, as a platform for fan engagement and as an instrument for objective analysis, the 2019 edition of the Symposium will focus on “Data in Sport”, and also engage with the following themes/subjects – Football Laws, Politics, Human Rights, Hyperandrogenism and India’s Sporting Transformation.

The Symposium will feature presentations, seminars and interactive sessions involving leading legal practitioners, administrators, regulators and industry experts across the sporting spectrum, from India and overseas.

More details about the event and past editions of the SLPC Symposium can be found at http://sportslaw.in/home/symposium/.

About the SLPC

The SLPC is an independent think-tank focused on interdisciplinary research, scholarship, education and institutional support for public and private enterprises in areas relating to legal, policy and ethical issues affecting amateur and professional sports in India. The Symposium is SLPC’s annual flagship conference, and represents SLPC’s continuing commitment to thought leadership in India by bringing together leading sports law practitioners, sports policy experts, in-house counsel, researchers, academicians, sports administrators, NGOs and students in India to exchange and share their experiences and learnings on various aspects of the law and policy relating to sports in India.