We’re pleased to bring to you a guest post by Swaroop Mamidipudi on the recent decisions in MRF v. Metro Tyres and Yash Raj Films v. Sri Sai Ganesh Productions, wherein the Delhi High Court held that making of a substantially similar copy (and not only a physical copy) of a copyrighted film amounts to infringement of copyright in the film itself.

Swaroop is an advocate practicing in copyright law at the Madras High Court. He has guest blogged for us in the past as well (see here, here and here).

Creating More Copyright in Cinema: But What of the Actual Creators?

Swaroop Mamidipudi

Two recent decisions of the Delhi High Court – MRF v. Metro Tyres and Yash Raj Films v. Sri Sai Ganesh Productions – have disagreed with the Bombay and Madras High Courts on the “physical copy” doctrine as applicable to copyright in cinematograph films.

I have written earlier on this blog on this issue, arguing that as far as cinematograph films and sound recordings are concerned, the Copyright Act, 1957 (“the Act”) only protects the physical recording itself and not the contents of the film or the sound recording. I had further argued that the rights to the contents of the film, being remake rights, sequel rights or any other such rights in the film only belonged to the writers of the film. I had written why this doctrine exists in our Act and why it is important to the scheme of the Act.

Mr. Jagdish Sagar had written a response to my piece with a powerful argument that there is a “complex overarching act of creative authorship” in the making of the film. In other words, there is a creative leap from the page to screen and that the Act ought to be interpreted in a manner so as to protect this leap. In these two recent judgments, the Delhi High Court does exactly that.

In MRF v. Metro Tyres, the Plaintiff claimed that the Defendant had infringed his advertisement (a cinematograph film) by making a deceptively similar advertisement for his own product. The Plaintiff sued for copyright violation in his ad film itself. On the other hand, in Yash Raj Films, the Plaintiff sued the Defendant for making an unauthorised remake of their film “Band Baajaa Baaraat”, but argued that this was a violation of copyright in their script. In both cases, Justice Manmohan held that it was a violation of the copyright in the cinematograph film itself.

Since YRF merely follows the judgment in MRF, I shall examine the reasoning in MRF point wise, along with my response to the same:

1. Cinematograph film is an independent work and copyright vests separately in it. This principle itself is correct. The copyright in a cinematograph film vests in it exclusively. But that is true even of the copyright in the script and the other underlying works. The question is not whether a cinematograph film has a separate underlying copyright, but what the scope of the protection is.

2. A cinematograph film is more than the sum of its parts. This proposition, again, cannot be quarreled with. However, this argument does not take Justice Manmohan too far – the question is not what a cinematograph film is, but what is protected under the Act. Unless he can identify which limb of section 14(1)(d) is violated, he cannot show infringement.

3. A copy does not mean a physical copy. Under section 14(1)(d) of the Act, the owner of copyright in a cinematograph film can make a “copy” of the work, give on rent or hire a copy of the work and communicate the work to the public. Under section 51 of the Act, an act amounts to infringement only if a person does one of these things mentioned in section 14(1)(d). Justice Manmohan relies on the arguments in (1) and (2) to hold that remaking a film would fall under making a “copy”. However, he does not deal with section 51, or with the definition of “infringing copy” under section 2(m) of the Act. An “infringing copy” is defined as a copy of “the film” on “any medium”. Which also means that the scope of protection under section 14(1)(d) is only for the actual copy of that particular film on a medium and not a remake. Further, section 14(1)(d) itself states that to make a copy of the film includes the right to make a photograph of an image forming a part of the film and to store a copy of the film on any medium. Since these are the two methods of making a “copy” mentioned in the Act, it is unlikely that the Act intended to include remaking a film within the meaning of “copy”.

4. Berne Convention supports this view. There are two separate issues here. One is Justice Manmohan’s interpretation of the Berne Convention itself, and the second is of its applicability to interpret the Act. Justice Manmohan relies on Article 14bis(1), but fails to note sub-Article (2) which reads:

“Ownership of copyright in a cinematographic work shall be a matter for legislation in a country where protection is claimed.”

On the issue of whether the Berne Convention can be used in this context at all, it is instructive to note the judgment of the Supreme Court in Commissioner of Customs v. GM Exports where the Supreme Court holds that a convention can be relied on (to summarise a rather longwinded principle) in cases where the legislation was framed “in pursuance of”, in “furtherance” of or to “enforce” a treaty obligation. In Vishaka v. State of Rajasthan, the Supreme Court held that an international treaty can be used to interpret the law when there is a lacuna in domestic law. The Act was not made in pursuance of the treaty or to enforce the treaty, nor is there a lacuna in the law. Importantly, India is a dualist state. Therefore, the reliance on the Berne Convention is erroneous.

The error in YRF is more apparent. The Plaintiff here did not even argue that it was a violation of the cinematograph film. The judge, following his own decision in MRF held so anyway. In any case, even if a “copy” includes a remake of the film, to succeed on infringement, the Plaintiff should show that there is a substantial audio-visual similarity between his film and the infringing film. There is no discussion on this aspect at all. Infringement is presumed.

These judgments will only increase the power that producers have in an already unequal film industry. Indian producers are well known for underpaying talent and exploiting any talent not established in the industry. Any director, writer, actor or technician will testify that those at the start of their careers are grossly underpaid. The physical copy doctrine at least gives one segment of artistes, the writers, a bargaining chip with producers. A.R. Rahman has famously retained copyright in his music to use and reuse them as he wishes and commercially exploit the same music in different industries. The destroying of the physical copy doctrine (since provisions relating to sound recordings are substantially similar) could strike a blow to this as well. After the judgment of the Madras High Court in Thiagarajan Kumararaja, at least two writers (that I personally know of) have been able to strike lucrative deals for remake rights of their successful Tamil films. MRF will give producers back their unchallenged prime place in the industry.

That leaves us with the last thorny question – what of that creative leap? Does our law not protect it? Unfortunately, it doesn’t. These judgments hand the creative leap to the producers, whereas the ones responsible for this leap are often the directors. Other jurisdictions, especially in the UK and Europe have recognized principal directors as being stakeholders in the earnings of films. Perhaps its time for Indian law to look at amendments along those lines.

In the next post in the ongoing series on The Sustainable Seed Innovations Project, Natalie Kopytko, Post-Doctoral Research Associate at University of Leeds shares stories of farmers creating model farms to educate others about natural farming methods. The cultivation techniques are a crucial aspect to sustainable innovations; moreover, this story discusses community support and socio-economic sustainability.

Model Farms and Farmers in Seva

Natalie Kopytko

Cultivation of traditional varieties, often termed Desi seeds, require no external inputs (chemical fertilizers or pesticides).  These ‘natural farming’ methods work with nature, specifically the local environmental conditions, rather than attempting to create uniformity by controlling nature, as is the case of conventional agriculture.  In this manner, the natural conditions and the knowledge of the farmer select seeds with new, adapted varieties eventually developing over time. Nature and farmers are partners in sustainable seed innovation.

This story highlights the work of Punjabi and Chhattisgarhi farmers in seva[i] , as they develop model farms to inspire and teach other farmers about natural farming. These farmers either hold another occupation, in addition to their time spent farming, or have moved from more lucrative employment to full-time farming. Their farms and their work are crucial to building human capital, creating social capital through networks, and ultimately realising greater economic sustainability (financial capital) for farmers in their communities.

Developing Economic Models with Model Farms in Punjab

Nonetheless, in many regions of India, conventional agriculture and not traditional/natural farming has become the norm. This is particularly true in Punjab where the Green Revolution started in India. Change can be difficult, especially when that change concerns one’s livelihood.  Our first farmer in seva hopes to make this change easier for farmers in Punjab.

Gursher next to sign at Pingalwara model farm.

Inspired both indirectly and directly by Pingalwara model farm near Amritsar, Advocate Gursher Singh Gill now works to develop his own model farm to inspire others. Along with demonstrating cultivation techniques, Gursher made developing an economic model a priority to facilitate the change to natural farming. Moreover, with an economic model to support farmers, they will be less likely to switch back to conventional practices after perceived failures in natural farming. Gursher expresses his concerns by stating, “If one farmer leaves natural farming, they probably won’t come back for generations.” The economic model that he has been using successfully on his own farm involves matching two farms directly with ten families in the local area. One farm can grow 10-15 different crops; and therefore, produce all the fruit, vegetables, rice, wheat and other grains needed by the families. Two farms support ten families with all their nutritional needs, or one can say that ten families support the livelihoods of two farming families. This model achieves financial security for farmers, nutritional security for local families, and environmental sustainability by following a local production-consumption paradigm.

While Gursher develops an economic model, the indirect inspiration he received from the Pingalwara model farm, in the first instance, demonstrates the importance of social capital and networks. Ranjit Singh Bath’s father was the first farmer in the region to switch to natural farming after receiving inspiration from Pingalwara farm. Ranjit’s father then inspired many others including Gursher, while also providing much needed guidance on dealing with pests. As described next, the work of the farmers in Chhattisgarh exemplify the importance of building social capital.

Creating the Culture of the Village with Model Farms in Chhattisgarh

Stark evidence of decreasing water levels. For the last 3 years, the Mani-hari river in Chhattisgarh has been completely dry for a period. The first time in memories of local farmers

Yash Mishra runs a stationery business; however, his real passion lies with caring for the environment. To begin with he planted trees in cities, then, after visiting local villages, he became concerned about the impacts of conventional farming. He attributes local decreases in soil fertility, depletion of water levels, and increases in health problems to conventional farming, while at the same time burdening farmers with the increasing costs of inputs. These observations, along with inspiration provided by Sri Sri Ravi Shankar, motivated Yash Mishra to be a natural farmer, create a model farm and educate others about natural farming.

Yash Mishra stands next to desi seeds at his model farm.

At the heart of Yash’s work was a revival of seed systems. The search for seeds in wild forests and tribal areas involved YLTP students and Art of Living volunteers. As local tribal women said in discussions, everyone is always searching for seeds. An integral part of Indian culture necessitates helping each other; one manifestation of this cultural trait involves the sharing and exchanging of seeds. Yash expresses his wish to resurrect the ‘culture of the village’ through the creation of seed banks and sharing of seeds. He promotes a model where every village develops at least five kinds of seeds on their own. The villages not only conserve the seed, but also test the seeds to understand germination rates along with other properties.

Tribal women discussing traditional varieties.

Yash is not the only farmer in seva in the region. Once a professional hairstylist, Shilpi Rajput returned to natural farming five years ago due to a desire to give back. Again, she explained that small farmers no longer have an awareness of natural farming techniques. She stresses that she needs to develop her own farm to provide an example for other farmers to follow. Along with training farmers, Shilpi works to create markets to help small farmers financially as they return to traditional farming, beginning with Basmati rice.

Shilpi Rajput stands next to her harvest.

Inspiration and Perspiration

The great innovator Thomas Edison said, “Genius is one percent inspiration and ninety-nine percent perspiration”. It might be only 1%, but inspiration is still a requirement for innovation. These inspired farmers not only inspire other farmers through their model farms; they also ensure more success and less toil for future natural farmers. They do so by developing economic and social models, while also teaching the techniques of natural farming. When properly equipped with this knowledge these farmers will succeed, with 99% perspiration.

[i] Seva is the Sanskrit word for self-less service as part of spiritual practice.

In the next post in the ongoing series on The Sustainable Seed Innovations Project, Natalie Kopytko, Post-Doctoral Research Associate at University of Leeds shares the story of a variety of wheat recently named Sona Moti. In way of context, the post briefly describes the current revival of ancient grains globally, specifically Emmer wheat varieties. The story of Sona Moti demonstrates the issues of traceability in variety development and the importance of intellectually property-broad.

The Story of Sona Moti

Natalie Kopytko

The story of Sona Moti demonstrates the important connections between intellectual property in a broad sense and generating financial capital/economic sustainability. Intellectual property distinguishes a product from other available products, so that consumers can make informed decisions. In naming this relatively unknown variety, Sona Moti, Sri Sri Ravi Shankar has differentiated the ancient grain from others available on the market. The name Sona Moti translates to golden pearl to describe the unique round shape and golden colour of the emmer wheat variety. Due to nutritional qualities of the grain determined by tests, the Art of Living are working with farmers in Punjab to establish markets and a better price for the product. The story of Sona Moti is also part of a wider comeback of ancient grains, particularly a growing recognition of the importance of emmer wheat varieties.

Emmer Wheat: An Ancient Grain Coming to a Plate Near You

Ten thousand years ago emmer wheat was amongst the first cereals domesticated. Emmer along with Einkorn and Spelt make up the hulled wheats distinguished from the free-threshing wheats by the persistent encasement. The extra protection from this hull is also the reason why these wheats are typically grown in mountainous areas with poor soil conditions [1].

According to Herodotus (495–425 BC) the people of Egypt considered emmer “the only fit cereal for bread”. Indeed, historical record shows that emmer was the sole wheat cultivated in ancient Egypt until Graeco-Roman times when outside political decisions dictated cultivation practices rather than local tastes. Neighbouring countries grew mainly free-threshing wheat, and yet Egyptians did not change practices, indicating a clear dietary preference [1].

In Italy, landrace conservation happened out of necessity, since emmer wheat provides a reliable harvest even in steep mountain fields where modern wheats fail [2]. The traditional Italian cultivation techniques of emmer wheat meet organic standards and emmer contains high levels of fibre; customer recognition of these healthy properties has created a comeback for emmer wheat. For instance, the market for hulled wheats increased by about 15% per year and farmgate prices increased some 30% per year from 1998 to 2000 [2].

However, due to this recent demand, cultivation spread from the mountains to plain areas and methods of cultivation moved away from traditional organic practices. To recognise and value traditional, local production, the mountain community of Garfagnana acquired European recognition for Protected Geographical Indication (PGI) in 1996. The regulations for the Garfagnana emmer variety included a description of the genotype adapted to the local climate and terrain and prescribed agronomic practices for production. Regulated by the Italian Association for Organic Agriculture (AIAB), these prescribed practices include rotations with meadows, prohibition of the use of chemical pesticides, herbicides and fertilizers and the mandatory use of seeds coming from local populations [2]. Producers now receive a price up to 30 percent higher than hull wheat without a geographical indication label [3]. Production also boosts the local economy which faces socio-economic problems like the other mountainous regions of Italy.

Nonetheless, the emmer wheat comeback is not limited to Italy. Due to the species’ high protein content and tolerance to drought it is viewed to have the potential to improve nutrition, boost food security, foster rural development and support sustainable agriculture in Africa [4]. Moreover, emmer varieties provide a supply of useful genes in wheat breeding due to inherent resistance to rusts, powdery mildew, tolerance to heat and drought, and suitability to marginal lands [5]. Indeed, productivity gains in wheat production in India during the green revolution might not have happened if it were not for the Sr2 (stem rust resistance) gene from emmer wheat [5].

Punjab: Paying a High Price to be India’s Granary

The green revolution first came to India through Punjab. Initially seeming to heap the greatest benefit from improvements in yields, Punjab has now plateaued in terms of productivity and production [6]. Moreover, productivity increases happened because of the increasing use of costly inputs such as pesticides, fertilisers and seeds. Farmers have limited financial resources; therefore, unavoidably farmers borrow money to cover these costs. Economic studies conducted throughout Punjab provide clear evidence of considerable economic hardship in many farming communities [7]. Specifically, farm debt has been estimated to be 760,000 rupees per farming household [6]. From economic strife, social issues inevitably follow, the most notable being farmer suicides. Between 2000 and 2010, almost 7,000 farmer suicides were recorded in Punjab. Alarmingly, 7,000 suicides have been reported in the past five years indicating a potentially significant increase in suicide rates [8]. To address this issues, many have argued for a transformative shift in agricultural practices in the region [9]. Indeed, many farmers in Punjab are converting to organic or natural farming. However, on a recent visit to Punjab, I learned that some farmers recently abandoned organic cultivation when they were unable to attract a strong enough price for their product. Clearly the work of the Art of Living in securing markets for Sona Moti is paramount.

Sona Moti: Starting with a Handful of Gold

The price for Sona Moti cultivated with natural farming practices catches 75-80 rupees per kilogram by comparison the price for other organic wheats fetch 30 rupees per kilogram. Currently 20 farmers in Punjab are cultivating Sona Moti for sale through the Art of Living.

Nagpal, a farmer with the Art of Living, describes his initial experiences with Sona Moti.

“Five years ago, I visited Pingalwara ashram in Amritsar with my friends. We visited the ashram to learn about natural farming. The in-charge of that ashram told us about a different variety of wheat which is sugar free. They gave us a handful of wheat in a form of parshad (holy gift) and they advised us to grow this wheat for the sake of humanity. I grew that wheat (parshad) and first year the yield was only 3 kg. And second year the yield of wheat was 80 kg and slowly- slowly after five years with the grace of God we have 40 Qt wheat this time.”

Sona Moti possesses nutritional qualities that attracts a higher price. The low sugar content of Sona Moti makes it ideal for diabetic patients. Moreover, Sona Moti has three times the folic acid compared to any other grain, and an exceptionally high mineral and protein content. These qualities would not be known and would not be conveyed to customers if it were not for the work of the Art of Living.

For continued success, the integrity of the product must be maintained. Pingalwara Ashram chose a most suitable farmer to entrust with the seed. Not all farmers take the care necessary, and have the knowledge for seed conservation. Nagpal has been training farmers in techniques to avoid cross-pollination and seed contamination to ensure the purity of the seed and product integrity. Indeed, Nagpal felt reluctant to share the seed with farmers who did not have the knowledge to maintain seed purity.

Experts argue that further increases in emmer wheat cultivation require a well-organised, transparent and traceable production chain [5]. Interestingly, tracing the source of this wheat prior to its cultivation at the Pingalwara ashram has been a challenge. It came to Punjab by way of an unnamed farmer on a Yatra (pilgrimage). Cycling and walking from Southern India, he brought two plants of the wheat variety.  We are not able to credit this farmer due to a lack of traceability. The future of Sona Moti production will include traceability, so that future farmers are ensured proper credit for their work.

References

1. Nesbitt, M. and D. Samuel, From staple crop to extinction? The archaeology and history of the hulled wheats. 1996. p. 41-100.
2. Buerli, M. Farro in Italy The Global Facilitation Unit for Underutilized Species, 2007. 10.
3. N., E.-H.S., G. C., and H. C. Organic Agriculture and genetic resources for food and agriculture. in International conference on Biodiversity and the Ecosystem Approach in Agriculture, Forestry and Fisheries. 2002. Rome, Italy: FAO.
4. Council, N.R., Lost crops of Africa: volume I: grains. 1996: National Academies Press.
5. Zaharieva, M., et al., Cultivated emmer wheat (Triticum dicoccon Schrank), an old crop with promising future: a review. Genetic resources and crop evolution, 2010. 57(6): p. 937-962.
6. SidhuI, M.S. and V.P. Singh, Fifty years of Punjab Agriculture: An Appraisal. Productivity, 2018. 59(1): p. 21-36
7. Jodhka, S.S., Beyond ‘Crises’: Rethinking Contemporary Punjab Agriculture. Economic and Political Weekly, 2006. 41(16): p. 1530-1537.
8. Bharti, V., On farm front, red is the new green. The Tribune, 2017. 137(21): p. 2.
9. Brown, T., Agrarian Crisis in Punjab and ‘Natural Farming’ as a Response. South Asia: Journal of South Asian Studies, 2013. 36(2): p. 229-242.

We have had a gargantuan week at SpicyIP, with plenty of content on recent decisions around courts, and updates from the Sustainable Seed Innovations Project. Below is a summary of the week gone by:

Topical Highlight

In a guest post, Swaroop Mamidipudi wrote on twin decisions of the Delhi High Court that expand the scope of protection of cinematograph films. Prior to this decision, it was understood that copyright in cinematograph films could only be infringed if a physical copy of the film is made. However, these decisions goes one step further to note that substantially similar films, even if reshot, can violate the copyright in a cinematograph film. Swaroop argues that this interpretation is incorrect, and may also disturb the balance of power in the cinema industry.

Thematic Highlight

In a guest post, Simrat Kaur writes on the impact of mandating automatic filtering of copyright-infringing content by internet intermediaries. She discusses Rule 3(9) of the Draft Intermediary Amendment Rules, 2018, which requires intermediaries to set up automatic filters for defamation. She notes that the principal opposition to this provision is the scepticism over whether AI technology will be able to recognise the subjective contexts in which the same material may be appropriate or inappropriate. Simrat notes that intermediaries should shoulder the responsibility of weeding out inappropriate content since it is they who benefit from content generally. She further notes that the concern with respect to the pricing out of start-ups due to such technology may be tackled by exempting them from the obligation to set up automatic filters.

Other Posts

In a four-part post, Professor Gregory Radick provides an overview of the educationally focused “second prong” of the position paper’s three-prong approach. He discusses the need to redesign elements of agricultural training to ensure a better fit with the goal of greater sustainability, looking in particular at how his historical research into the organization of knowledge in two areas — Mendelian genetics and intellectual property — has opened up new options (Part 1, Part 2, Part 3, Part 4).

In a three-part post, Dr Mrinalini Kochupillai discusses Prong 3 of the Sustainable Seed Innovations Project, which comes while India is looking to adopt various blockchain solutions on the one hand, and debating a ban on cryptocurrencies on the other. She provides an overview of the key beneficial features of blockchain technology, how the potential use cases of blockchain technology go well beyond the financial services sector, and, most importantly, how this technology is highly promising for the cause of promoting and incentivizing sustainable seed innovations (Part 1, Part 2, Part 3).

In a two-part post, Julia Köninger shares the findings of her investigation into research funds that flow into different farming approaches. She notes that most funding currently flows into high-input farming neglecting the sustainability of these practices. It emphasizes the consequent dearth of research for low-input farming and shows the urge to adapt research funds in order to close current knowledge gaps (Part 1 and Part 2).

In another post on the Sustainable Seed Innovations Project, Natalie Kopytko shared stories of farmers using traditional methods to store seeds. She notes that the chemical-free techniques of cultivation that depend on using seeds of traditional varieties can provide a strong foundation upon which much knowledge can be built. In another post, she then shared stories of farmers creating model farms to educate others about natural farming methods in Seva. The cultivation techniques are a crucial aspect of sustainable innovations; moreover, this story discusses community support and socio-economic sustainability. Finally, in another post, she shared the story of a variety of wheat recently named Sona Moti. By way of context, she briefly describes the current revival of ancient grains globally, specifically Emmer wheat varieties. The story of Sona Moti demonstrates the issues of traceability in variety development and the importance of intellectually property-broad.

In a four-part post, Dr Mrinalini Kochupillai identifies key legal hurdles that currently prevent sustainable seed innovations in India. She discusses how blockchain/DLT, coupled with AI/Machine learning applications can potentially help overcome these hurdles. In the final part of this blog post, she also highlights certain ethical issues that might arise when rolling out technological solutions based on blockchain/DLT/AI. She recommends that these ethical issues be thoroughly researched from multi-disciplinary as well as multi-stakeholder perspectives, in order to ensure that the prescribed solution does not lead to new problems. The necessity to neither roll out nor reject a promising technology that is at its nascent stages of development is also highlighted. (Part 1, Part 2, Part 3, Part 4)

In her fourth submission for the SpicyIP Fellowship, Arushi Gupta unpacks certain issues pertaining to intermediary liability that arose in the recent Amway decision of the Delhi High Court. First, she notes that the judge interpreted the term ‘seller’ and ‘use’ under the Trade Marks Act to place the responsibility on intermediaries when they help with: advertisements, offers of sale, meta-tags and promotions. Second, she notes that the placement of goods on the Direct Selling Market constituted meant that they had been ‘put on the market’, and therefore, the defendants may not rely on Section 30 of the Trade Marks Act as a defence. Lastly, she notes that the judgment leaves a large chunk of the ‘safe harbour’ defence for determination at a later stage.

SpicyIP Jobs

Pankhuri brought to our notice the opening of the positions of Attorney and Paralegal at Dodd & Co. an IP boutique law firm based in New Delhi.

Other Developments

Indian

Judgments

M/s. V.V.V. & Sons Edible Oils Limited v. M/s. Shivraja Impex Company – Madras High Court [July 1, 2019]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “IDHAYAM” by using an identical mark in respect of sesame oil. In arriving at this decision, the Court noted that the Defendant’s label was a perfect replica of the Plaintiff’s label, thereby indicating that the Defendant had intentionally copied the Plaintiff’s label in order to market its sesame oil.

M/s. Fine Footwear Private Limited v. Skechers U.S.A. Incorporation and Others – Karnataka High Court [July 15, 2019]

The civil court granted a temporary injunctive relief against the Petitioner. The Petitioner, in turn, filed a writ petition against this order claiming that the matter was exclusively triable by a commercial court, considering that the suit was a “commercial dispute”. The Court dismissed the writ petition, stating that a plaintiff had the privilege to choose the court and determine the valuation of the suit. In order to assail such choice of the plaintiff, the Court observed that the Petitioner had to bring forth material to show that the value of the suit was Rupees 3 lakh or above, as required for the suit to be exclusively tried by a commercial court. In such an instance where the pecuniary conditions for jurisdiction were not fulfilled, the Court noted that the wide ambit of Section 9 of the CPC, 1908, which gave expansive jurisdiction to the civil court would prevail. Accordingly, the Court held that the Respondents had validly invoked the jurisdiction of the civil court.

Balaji Kumar v. M/s. Star Polaris and Another– Madras High Court [July 15, 2019]

The Respondent filed a petition in order to vacate the interim order granted in favour of the Appellant with respect to the release of its film “KOLAIYUDHIR KAALAM”. The dispute between the Parties concerned the copyright in the title of a book which was adopted for the title of a film. The Court noted at the onset that titles could not be considered as a subject matter of copyright protection but were protected through trademark and unfair competition laws. On the question of vacation of the interim order, the Court noted that the balance of convenience and the irreparable loss aspects were in favour of the Respondents. Accordingly, the Court vacated the interim order.

Natco Pharma Limited v. Bristol Myers Squibb Holdings Ireland Unlimited Company and Others – Delhi High Court [July 16, 2019]

The dispute between the Parties arose on account of the Appellant’s alleged attempt at commercializing and offering for sale the generic version of the molecule “APIXABAN”, patented by the Respondents, under the brand name “APIGAT”. The Single Judge granted an interim injunction in the Respondents’ favour restraining the Appellant from infringing their patent. The Court set aside the order of the Single Judge, and observed at the onset that the order passed by the Single Judge in the instant case was very similar to the order passed by it in Natco Pharma Limited v. Bayer Healthcare LLC, decided on the same day. Taking a cue from the Natco appeal decision, which involved almost identical facts, the Court stated that the Single Judge had failed to apply the three tests for the grant of an interim injunction. Moreover, the Court noted that the Single Judge had not clarified the scope of activities which the Appellant was allowed to carry out when the interim injunction was in force. In view of the aforementioned points, the Court ordered the Single Judge to decide the case by way of a fresh order.

Durian Industries Limited v. Binder Pal – Bombay High Court [July 16, 2019]

The Court granted an ex parte decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “DURIAN” by using a deceptively similar mark “DURIAN TOUCH” in respect of home and office furniture. In arriving at the decision, the Court noted that the Plaintiff had made out a strong case for interim relief, and the balance of convenience was also in its favour. The Court also noted the Defendant’s deliberate absence in spite of being served twice

Exxon Mobil Corporation v. Exoncorp Private Limited – Delhi High Court [July 16, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “EXXON” by using a deceptively similar mark “EXON” in its corporate name as well as the domain name. The Court observed at the onset that the Plaintiff was the proprietor of the mark and had filed numerous petitions to protect it. In respect of the jurisdictional issue, the Court stated that the Court had jurisdiction to entertain the suit as the Defendant carried out its business throughout India, including Delhi. Furthermore, the Court noted that the Plaintiff’s mark was a well-known mark, and accordingly, the Defendant could not have used the same for even IT services. The Court concluded by stating that the mark adopted by the Defendant was almost identical to the Plaintiff’s mark and did not obviate the chances of confusion between the Parties’ marks.

Transformative Learning Solutions Private Limited v. Pawajot Kaur Baweja and Others – Delhi High Court [July 17, 2019]

The Court rejected the Plaintiffs’ application for the grant of a permanent injunction to restrain the Defendants from disclosing or using their trade secrets or using any other proprietary content, including the Plaintiffs’ copyright. The Defendants were the former employees of the Plaintiffs and had commenced fresh business after disassociating themselves from the Plaintiffs. An interim order was granted in favour of the Plaintiffs according to which the Defendants had been restrained from using any confidential information belonging to them. In rejecting the Plaintiff’s plea for a permanent injunction, the Court observed that though civil suits usually require each party to divulge details, there are certain documents and information which are not to be leaked in the public domain. However, the Court mentioned that the Plaintiffs’ choice of not sharing the confidential list of customers in which it claimed copyright would be unfair and contrary to law if the Defendants would be restrained by an injunction without even knowing the copyrighted content. Therefore, the Court gave the Plaintiffs a chance to make their confidential list available, but the Plaintiffs chose against it and thus the Court disposed of the review petition.

News

• Delhi High Court Directs Interim Deposit In Court Of Rs.54 Crore In Non-SEP Infringement Litigation
• Delhi HC grants Natco Pharma interim relief in BMS patents case
• IIT students develop ‘ Smart Agricopter’ to eliminate manual spraying of pesticides in agricultural fields
• HC issues a permanent injunction against Lee Pharma in a plea by Mankind Pharma
• ‘Haven’t applied for patent because want my technique to remain free for all farmers’: Subhash Palekar
• PepsiCo should pay compensation to Gujarat potato growers, demand farmer leaders

We’re pleased to bring to you a guest post by Eashan Ghosh on the recent Delhi High Court ruling in Suzuki Motor v. Suzuki India. Eashan has been in practice as an intellectual property advocate and consultant in New Delhi since 2011, and teaches a seminar on intellectual property law at National Law University, Delhi. Eashan writes about Indian intellectual property law, including a monthly review of Delhi High Court judgments, on his Medium page. He has written guest posts for us in the past as well (see here here, here, here, here, here, here and here).

The Timken Template: The Delhi High Court Ruling in Suzuki Motor v. Suzuki India

Eashan Ghosh

Earlier last week, the Delhi High Court made available its July 17 judgment issuing a trade mark infringement decree for the Claimant in Suzuki Motor v. Suzuki India.

It is an unexceptional finding against the Defendant that turns on three clear facts. First, the Defendant’s adoption of the trade mark ‘SUZUKI’ (for financial services) occurred at a time when the Claimant’s trade mark (for motor vehicles) was already well-known in India. Second, as a consequence, there was a later user burden on the Defendant – one which it fails here – to either adopt a different trade mark or establish honest concurrent use. Finally, the Defendant’s adoption of the trade mark is found to be mala fide, and the story offered in support of its adoption ruled “unbelievable”, “farfetched” and “unacceptable”.

The Timken Connection

These adjectives used by the Suzuki Court seem familiar – too familiar, as it turns out.

It emerges that paragraphs 50, 51, 56-59, 62-68, and 70 of the Suzuki ruling are spliced together, word for word, from various parts of the same judge’s May 2013 ruling in The Timken Company v. Timken Services. (A copy of the judgment identifying the portions taken from the Timken template is accessible here; the portions that do appear are almost entirely uncredited to their source.)

This is, of course, far from the only recent instance of template judgments by judges of this High Court. The compulsion to go down this route – inevitably an outcome of growing workloads under severely limited judicial time – can certainly be sympathized with to a degree. This is especially so in ex parte cases, where the premium on reciting accurate affirmative material in support of the final decision is high and the value gained from deviating from a template is negligible.

However, in a case where there is non-zero contest from the Defendant to a trade mark infringement claim, this approach, no matter what the quality of the template, can raise concerns.

One issue from the Suzuki ruling suffices to illustrate the point.

The Delay Defence in Suzuki

This issue rests on the Defendant’s principal defence, which is one of delay. The Defendant professes to have been in business in a different category of services to the Claimant continuously for a number of years. It asks the Claimant to answer a delay of “over 25 years” in bringing this action. (The Defendant claims continuous use since 1982, and this is not a point traversed by the Claimant’s recorded submissions.)

Borrowing from the Timken template, the Suzuki Court offers three renditions of the role of delay in assessing the merits of a trade mark infringement claim.

First, if the Defendant’s conduct in infringing a trade mark is fraudulent, it is per se barred from accessing the defences of delay, laches or acquiescence. Second, even “inordinate delay” does not defeat the grant of a temporary injunction if the Defendant’s use of the trade mark is fraudulent. Third, “mere delay” cannot defeat an action if the Defendant’s adoption of the trade mark is with a dishonest intention, and in the case of a continuing tort, every breach creates a fresh cause of action.

To be clear, these three renditions can be justified on their own terms. Even so, they certainly travel in different directions to some degree.

The first rendition, for instance, prescribes an absolute condition where Defendant fraud overrides any delay. The length of the delay is therefore immaterial.

The second rendition squares up the length of the delay with the remedies available to a Claimant. It rewards even a lengthy delay with a temporary injunction in the event of Defendant fraud. This runs in extension of the position that a lengthy or unexplained delay may influence post-trial remedies such as damages but ought not to deny the Claimant a temporary injunction.

The third rendition is the softest statement of the three. It simply offers that a delay, without anything further, should not cause the action as a whole to be thrown out if the Defendant has acted dishonestly.

However, here lies the difficulty: while all three renditions can be asserted in suitable circumstances, they cannot, by hypothesis, all apply to single set of facts. The Suzuki Court, despite (and perhaps because of) its Timken-inspired monologue, never actually commits to a clear position on which of these renditions applies to the facts of this case.

The Ruling

Instead, the Court summarily decrees the claim against the Defendant goes after it with the threat of criminal prosecution for making false claims in Court. This seems to mesh most directly with the first rendition, in which delay is irrelevant in the face of Defendant fraud.

However, if so, to what end is the four-paragraph discussion on categories of delay? If not, to what category of delay does this case belong? Is the staggering length of the delay at a point where, on balance, it must be set against the degree of dishonesty or fraud in the Defendant’s adoption of the trade mark? And how, ultimately, does a claim brought over 25 years after a Defendant has been in continuous (if fraudulent) business fall to be adjudicated?

This is a complex subject since the assessment, by its very construction, is rooted in equity. As such, judicial exertions are bound to invite responses from across the spectrum.

Indeed, the Delhi High Court alone has, over the years, when confronted with the delay defence, issued decisions exactly in line with Suzuki, authorizing concurrent use Defendants, vacating injunctions against Defendants for varying reasons, confirming injunctions against Defendants with directions to keep accounts and without, requiring both parties to maintain status quo, ruling on “mere delay” to permit injunctions,  ruling on “long and inordinate delay” to deny injunctions, and even deferring the delay question until a full trial.

In view of this, the Suzuki Court’s eagerness to fit the facts before it into the Timken template is disappointing. It is more disappointing still when set against the fact that the delay defence is practically the only feature of interest in the Defendant’s case.

In sum, it is a classic bright side/downside scenario. The Suzuki decision shows that acceptable judicial outcomes do demonstrably lie within existing templates, yet it also exposes that the trade-offs inherent to adopting them mean that they will not always be ideal outcomes.

We’re pleased to bring to you a guest post by Dr. Sunanda Bharti on the GI tag for Kolhapuri chappals. 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, here and here.

Happy Feet and Not-so-Happy Hands: Meaning of GI for Kolhapuri chappals

Dr. Sunanda Bharati

Introduction

Though GI in favour of Kolhapuri was registered in December 2018 itself, the news caught the fancy of the media only recently. After 10 years of wait, the battle for legal recognition has been won by this handicraft.

Before I begin to deal with whether it is a victory yet/at all, it would be apt to highlight a strange anomaly in the records of the GI Registry regarding Kolhapuri chappals.

As per the GI registry website, the organisation that applied for the registration is Central Leather Research Institute, CSIR, New Delhi; whereas the Journal of Geographical Indications reveals the applicant/s name to be different and CSIR to be just a facilitator. Snapshots of the two concerned document portions are pasted below:

Relevant portion of the GI Journal (Journal 109)

Whether it is a goof-up or actually a norm, only the Registry can tell. Meanwhile, the common understanding is that a joint bid for GI tag was made by the Sant Rohidas Leather Industries & Charmakar Development Corporation Limited of Maharashtra (LIDCOM) and the Dr Babu Jagjeevan Ram Leather Industries Development Corporation of Karnataka (LIDKAR) in 2009, which fructified in 2018 into GI tag being granted in favour of the artisans of the two states.

GI tag for Kolhapuri and Popular Belief

Let me focus on the main relevance of the post–what results from this recognition which is being hailed as a victory for the artisans involved?

The GI tag, it is believed, would open up the world market (as against local or domestic) to the craftspersons registered as authorised users in the 8 districts-4 each of Maharashtra and Karnataka. Read negatively and exclusively, it forbids the producers of footwear in any other part of the country from using the term Kolhapuris to sell their ware.

To elaborate, for these chappals to receive Kolhapuri name, they must be produced by artisans of Kolhapur, Solapur, Sangli and Satara districts of Maharashtra and Dharwad, Belgaum, Bagalkot and Bijapur districts of Karnataka and –‘one of the activities of either the production or of processing or preparation must take place in such territory’ [per section 2(e) of GIGA, 1999]. Each step in production to the final packaging would be monitored by the registered proprietor/s (LIDCOM and LIDKAR) and only they would be legally entitled to brand the finished chappals with the seal of ‘KC’, qualifying them as authentic Kolhapuris.

For those who would want to savour details, Kolhapuri for chappals is an ‘appellation of origin’ GI because if reveals the name of the place to which the good (that is chappals), its source, quality and reputation belongs. Though the expression ‘appellation of origin’ is not used by the Indian law, the international understanding of GI essentially bifurcates into 1) indications of source and 2) appellation of origin. The basic difference between the two being that the latter need not use the name of any geographical place in it. It might just be an ‘indication’, a clue or a hint to a certain region. For example Pashmina, Basmati, Alphonso—they are not geographical places but still are GIs. The Geographical Indication of Goods Act, 1999 (GIGA 1999) under section 2(e), while giving the definition of GI states in its explanation that: ‘For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be…’

So, only the artisans of the 8 districts get to rake in the moolah from Kolhapuris. But, where is the money?

Handicap for Hands that Make Kolhapuris

There are three difficulties here, not often highlighted–

1) The demand for Kolhapuris might have increased, the supply of leather—which is the basic raw material, has reduced. Historically, when only cattle were used to plough the fields, the dead ones were used by chappal manufacturers. Advent of field mechanisation replaced cattle with tractors and other machinery resulting in a drop in the supply of raw hides. It is important to clarify here that Kolhapuri chappals are ‘all-leather’, essentially hand-crafted items – with even their stitching and other ornamentations being typically in leather.

Additionally, Maharashtra banned slaughter of animals belonging to the cow progeny (bulls, bullocks, ox and oxen for meat) 4 years ago in March 2015 through an Amendment to the Maharashtra Animal Preservation Act, 1976. It clearly had a never contemplated, unintentional effect on the Kolhapuri chappal industry. It may be taken as a classic example of conflict of interests within the State—on one hand it should promote Kolhapuris (and now more so, given the GI tag) in the domestic and international market and on the other hand it is duty bound/politically inclined to enforce the cattle slaughter ban.

It may be relevant to add that sourcing the raw material from the friendly neighborhood Karnataka is possible but only after adding/tackling the prohibitive material and transportation costs.

2) The second related problem has been of change of taste amongst the youth in India and across the globe. PETA (People for Ethical Treatment of Animals) says ‘Animals are not ours to experiment on, eat, wear, use for entertainment, or abuse in any other way.’ So, the general trend has been to move away from leather because of anti cruelty concerns or availability of other more economical, fashionable, branded and sufficiently durable alternatives in footwear.

3) Rise in competition, both legal and illegal (involving fakes/knockoffs) has always been a bane for Kolhapuri chappals and it has only increased with globalization and technology. The almost proverbial threat of ‘Chinese imitation’ always looms large. The tanners and cobblers involved in the Kolhapuri chappal industry might just be ill-equipped to handle the dangers involved.

What Should be Done to Make GI Protection of Kolhapuri Meaningful ?

The above enumeration supports the fact that a mere declaration of a certain good as a GI product is insufficient per se to successfully protect the traditional knowledge it embues. Once legal rights over a GI are obtained, they have to be defended and enforced.

This entails many things—primarily, it involves assuring the artisans raw material at affordable rates. The concerned two state governments should take it upon themselves to ensure this, for after all, a GI product is national property/heritage. It acts as a brand ambassador for a nation, projecting its culture and tradition in the wake. Given this, it only makes sense that the Kolhapuri chappal industry gets State support.

Secondly, the protection mandates a continuous monitoring of the markets to determine whether counterfeit goods (Kolhapuris) are being passed off. It is suggested that a specialised watchdog agency may be set up jointly by the state governments of Maharashtra and Karnataka to achieve the above task and also to help the artisans involved enforce their GI in domestic as well as foreign jurisdictions.

The author submits that unless the above is achieved, it is futile to remain stoned by the euphoria of just fetching a GI tag for Kolhapuris. They merit and deserve much more.

This week, we had a guest post by Eashan Ghosh on Suzuki Motor v. Suzuki India, a Delhi HC ruling dealing with the trademark infringement of the trade mark ‘SUZUKI’. After giving a brief overview of the case, he then delves into how portions of the judgment have been copied word to word from The Timken Company v. Timken Services, a 2013 Delhi HC judgment. He further delves into the Court’s 3 different renditions of delay and the problem in applying  these renditions with each other.

We had another guest post by Dr. Sunanda Bharti. She wrote a post on the grant of GI to Kolhapuri chappals. In her post, she highlights several factors which render the grant of GI ineffective such as lack of leather supply, rise in competition, initiatives such as PETA which fight against animal cruelty etc. She suggests that, in order to make GI effective, one’s legal rights pursuant to a grant of GI should be defended and enforced and the market should be constantly monitored for culling out counterfeits.

Other Developments

Indian

Judgments

Thermax Limited v. Thermax Engineers Private Limited – Delhi High Court [July 19, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “THERMAX” by using a deceptively similar mark “THERMAX” in its corporate name. In arriving at this decision, the Court noted that the Defendant had two remedies in such a case, one falling under the purview of The Companies Act, 2013 which disallowed companies from registering corporate names already registered, and other being the common law remedy of passing off. The Court further observed that the remedy provided by The Companies Act, 2013 would not restrict the jurisdiction of the Civil Court in granting an injunction under the common law regime. Therefore, the Court granted the permanent injunction stating the Plaintiff’s mark to be extremely well-known and that both the Parties dealt in similar services.

U.C. Surendranath v. Mambally’s Bakery – Supreme Court of India [July 22, 2019]

The dispute between the Parties arose on account of the Appellant’s alleged infringement of the Respondent’s mark “MAMBALLY’S BAKERY” by using an identical mark. The Trial Court granted an injunction in favour of the Respondent, and also sentenced the Appellant to imprisonment for a week in light of its wilful disobedience. The Kerala High Court affirmed this order, and the Appellant filed a Special Leave Petition before the Court in response. The Court noted that the nature of wilful disobedience, capable of imposing a criminal liability on the party had to be proved to the satisfaction of the Court. Further, the Court stated that in a subsequent visit of the Commissioner the Appellant had removed all labels from their products indicating the Respondent’s mark and that only the hoarding contained the Respondent’s mark. The Court observed that such facts would not be sufficient to prove wilful disobedience, and accordingly set aside the order of the High Court and instructed the Trial Court to decide the case afresh.

Dr. Vijay Abbot v. Super Cassettes Industries Private Limited and Others – Delhi High Court [July 29, 2019]

The dispute between the parties arose on account of the Defendant’s alleged infringement and passing off of the Plaintiff’s mark “KHANDANI SHAFAKHANA” by using it in respect of a film’s title. The Court noted at the onset that the marks of the Plaintiff were no more registered as per the Registry’s records. Having noted this, the Court observed that such concealment of essential facts by the Plaintiff was reason enough to dismiss the suit. Regardless the Court proceeded to examine the film, and stated it to be a work of fiction which impressed the importance of the socially relevant subject of sex education and stigmatization of sexual dysfunctions. The Court extensively distilled various principles pertaining to preventing the release of films and subsequently concluded that the plaint did not show any cause of action for the Plaintiff to sue. The Court further noted that the Plaintiff had not used its mark in the past 18 years and that the words forming a part of its mark were generic in nature. In light of the aforementioned considerations, the Court dismissed the Plaintiff’s plea for an injunction in respect of the film’s release or the use of its mark in the film’s title.

News

• Madras high court stays release of Telugu version of Balloon
• Individual files patent infringement case on Ashok Leyland and Sun Mobility for battery swapping technology
• After West Bengal, Odisha gets GI tag for its version of Rasagola
• Pisco Brandy from Peru or Chile? Two South American nations fight over liquor’s name in India

International

• Switzerland ranked as World’s Most Innovative country for ninth consecutive time; India stands at 52
• Porn Purveyors’ Use of Copyright Lawsuits Has Judges Seeing Red
• Katy Perry’s lawyer calls Dark Horse copyright verdict ‘a travesty of justice
• Kodaikanal’s malai poondu granted GI tag
• Walmart targets cryptocurrency in patent filing

We are saddened beyond words to inform you that our Founder and Chief Mentor, Prof. (Dr.) Shamnad Basheer, has passed away in an unfortunate accident.

As our readers know, his contribution to legal scholarship, especially intellectual property rights in India, was unparalleled. Beyond that, he established IDIA, which gave wings to the dreams of numerous aspiring law students from marginalized backgrounds to access legal education. His body of work is only matched by his personality – incredibly kind, loving, caring, generous, empathetic and friendly to one and all.

We hope to carry forward the mission of democratisation of discourse around IP law and policy that he embarked upon through SpicyIP!

As we try and come to terms with this devastating loss, we hope our readers will join us in celebrating his wonderful life that touched so many lives!

While we’re all struggling to come to terms with the heart breaking loss of our Founder and Chief Mentor, Prof. (Dr.) Shamnad Basheer, we bring to you a lovely tribute to him by Prashant Reddy or the “Prolific” Prashant, as Prof. Basheer often used to fondly call him. Prashant was invited by Prof. Basheer to join the blog in 2007 and had since then worked very closely with him towards fostering transparency in the Indian IP ecosystem, both through regular blogging at SpicyIP (till earlier this year) and otherwise. Prashant currently heads the Judicial Reforms vertical at the Vidhi Centre for Legal Policy.

Shamnad Basheer (1976–2019): The Man, the Academic and the Friend

Prashant Reddy

Shamnad Basheer meant a lot of different things to those who knew him in person or through his writings. A towering genius, an inspiring academic, a mentor, a lovely friend, a master with the pen, a creative lawyer, a social entrepreneur, a writer of recommendation letters, a passionate man with a line for every moment, an aficionado of bad puns and great acronyms, a sampler of strange concoctions, storyteller par excellence and most importantly, a kind man.

Let me start, with the last listed virtue, kindness. One of his most endearing qualities was his ability to speak to a person, identify their best trait, praise them for it publicly and make that person feel exceptional. As a rather cynical lawyer, I was always amazed by this ability of his to see the good in everybody. His faith in people would sometimes be misplaced but come the next person he would automatically reset to unvarnished kindness. It is this endless reservoir of kindness in his heart that led to so many enduring friendships and the setting up of ventures like IDIA.

The second personality trait of Shamnad that always struck me, was his talent of storytelling. Over the last 12 years, I have met him countless times and at each encounter he would have a fascinating story about his life experiences from the past or the present. At times, even if the story was not very great, Shamnad would narrate it with such flair that we would be hanging off the edge of our chairs.

The Academic

I presume that most of the readers of SpicyIP will remember Shamnad for his academic brilliance and his stellar writing. After graduating from the National Law School of India University, he earned multiple degrees at Oxford, including a PhD in IP as a Welcome Trust scholar. He was teaching at the George Washington University when he first shot into the national limelight in India in 2007 after a high-level expert committee of the Indian government on patent laws was accused of plagiarizing his report which was commissioned by the Intellectual Property Institute. Unlike what has been hinted at in the obituary published in the Indian Express, Shamnad had publicly disclosed the source of the funding in his report, which is available on SSRN for anybody to check. The actual controversy at the time was the allegation that his conclusions were influenced by the funding. It was an allegation that hurt him deeply but he did tell me later that the episode taught him that perception of neutrality is as important as actually maintaining academic integrity. He continued to publish high-quality pieces on various aspects of patent law. For those of you interested, all of his papers are available on SSRN over here.

The Spiciest Blog

In 2007, SpicyIP which Shamnad had started out of boredom, was still in its infancy. The controversy around the government report helped thrust the blog into the national limelight. Here was a charismatic, media savvy academic breaking down complex legal issues into simple speaking points. With reporters hungry for information about the new amendments to Indian patent law and its implications for public health, they often turned to the blog and by implication Shamnad, to make sense of a complicated subject area. In his inimitable style, Shamnad helped frame the debate and explain the nuances of the law to virtually every reporter on the pharma beat. It was only a matter of time before he became one of the most influential voices in Indian IP. His aim for SpicyIP at the time, was always to breakdown intellectual property law into a language simple enough that could be understood by everybody and not just lawyers. As an experiment with dissemination of legal information, I think most of us will agree that Shamnad’s experiment SpicyIP succeeded with flying colours. His style of writing, without the heavy jargon that has come to define academic writing in India, was one the main reasons for this success.

My fondest memories of Shamnad are of him as the chief mentor at SpicyIP. He gave me a simple brief – keep it spicy! While none of us could match him on the ‘spicy’ quotient, it never stopped us from trying. He was extremely perceptive of our individual strengths. For me, it was apparently my ability to sniff out a spicy story through RTIs.

There was a time on the blog when we were doing several pieces that strained his relationship with his friends who were practitioners in law firms or the industry. As his chief troublemaker on SpicyIP, my pieces were very often the reason for those strained relationships. It was a challenging period for both of us and it did lead to some turbulence in our relationship on SpicyIP. Despite this, not once did Shamnad ask me to run a story by him first for his approval.

Over the years, I could see a hint of pride in him as he saw all of us grow as writers on the blog, get admitted into top IP programs across the world’s best universities and make our mark in the professional world. He deserved to be proud of our achievements. After all, he was the reason that many of us writers on SpicyIP are where we are today. Be it through recommendation letters for colleges or job or client referrals, Shamnad took care of all of us and never asked for anything in return. It was an unconditional love that most of us can only strive to emulate.

The Litigant        

Somewhere along the way, Shamnad also became the most visible academic litigant in India. The restless soul that he was, he could not stick to academic writing when the law afforded him the opportunity to drag the government to court and test an academic hypothetical before a court of law. While he is most remembered for his intervention in the Novartis case where he argued before the Supreme Court on the interpretation of Section 3(d) and the Delhi University photocopy case where he was the key legal strategist, his first foray into public interest litigation was actually a constitutional law case where he challenged the constitutionality of the Intellectual Property Appellate Board (IPAB) on the grounds that it lacked judicial independence from the central government. It was a case that I had helped him with when I was his Research Associate in Calcutta in 2010 and we were both very excited about it. The case ended in a victory, with the Madras High Court striking down certain provisions of the law apart from bulletproofing the IPAB from executive interference.

A second pending case, which has slipped from public memory but which was very close to his heart was the one involving the RTI Act and its clash with the Patents Act. There are several other lawsuits filed by him, that are pending before the Supreme Court and Delhi High Court, regarding Aadhaar, the Bar Council of India and Form 27. The aim with each of these cases was to get the courts to push the boundaries and set down new jurisprudence that promoted transparency, protected judicial independence and protected our rights.

The Entrepreneur

Separate from the academic and litigation aspects of his IP career, Shamnad was fascinated by grassroot innovators. There was a very long phase when I would regularly hear updates from him on the brilliant inventors that he would meet in different parts of the country working out of garages and sheds creating excellent inventions of great utility. Not only did he want to forge ways to bring such untapped creativity to the market, he also wanted to make creativity and inventor ‘cool’. He did want to institutionalize such an effort but there is only so much one man can do.

In 2010, the social entrepreneur within him, which was not satisfied with excelling in academia, set into motion another experiment with the setting up of the IDIA venture to bring students of varying backgrounds into law school to ensure that quality legal education did not remain the privilege of elite. Most of the outpouring for him in the last few days has been because of the lives he has impacted through IDIA.

The Memories

Over the last few years Shamnad was afflicted by a mystery illness that was never diagnosed. It was clear that his body had taken a beating. Surprisingly his mind was still agile, although you could tell that he was growing weary of his physical condition. I can only hope he is at peace now.

For many of us, especially his young IDIA students, I suspect Shamnad’s death at the young age of 43 is one of the biggest personal tragedies we have faced in our lives. It has certainly been the case for me. The last few days have been a haze of disbelief, confusion and buckets of tears. It has been heart-breaking to refer to him in the past tense in this piece with the knowledge that I will never receive another excited email or phone call from him discussing the latest bit of IP gossip or the latest angry email he got from someone upset with SpicyIP.

I am told time will heal all wounds, even a Shamnad-sized wound. Regardless of whether that happens, I do think we must all celebrate his life and the memories he left behind for us. He went too soon but what a life it has been!

In January this year, we had reported that the IPAB website was down, leaving the latest orders and judgments of the IPAB inaccessible. For the last few days, we have noticed that the website is back online. But it is not exactly good news, as the website seems to be displaying links that allow one to check their Passenger Name Record (PNR) status for trains online rather than of the tribunal. Click here and see for yourself!

We have heard that this is the outcome of a hacking attempt that has been carried out successfully. And sustained itself for at least a few days! If any of our readers have any more information on this most absurd development, please do share in the comments!

To view our previous coverage of the controversies surrounding the IPAB this year, click here, here, here, here and here.

Image from here. 

The Delhi High Court, over the course of a dozen interim orders between July 27 and August 12, 2019, has issued website blocking injunctions for ISPs to block dozens of websites and their mirror/redirect versions, including popular pirate websites Tamilrockers and eztv. The orders are available here.

The ex-parte orders, passed in suits instituted by Warner Bros. Entertainment Inc., compel nine ISPs to block the entire website URL’s for specific websites, and further grant the plaintiff’s ‘dynamic injunctions’, which allows them to refer any additional ‘mirror/redirect/alphanumeric’ to the Joint Registrar of the Delhi High Court, who can expand the scope of the judicial order to include such websites. Readers would recall that this form of injunction was first granted in India in the case of UTV Software Communication Ltd. vs. 1337X.TO and Ors., which we covered here.

As per the orders, the suits were resorted to after ‘legal notices’ had already been sent to the defendant websites, asking them to take down the infringing content. In the absence of any response from the defendant websites, the Plaintiff approached the court, praying for permanent injunction, rendition of accounts and damages.

These orders also present a further novelty in terms of online injunction jurisprudence in India. In each of the orders, the Department of Telecom and the Ministry of IT has also been directed to ‘suspend the domain name registration’ of the impugned website. It is unclear under what law this direction has been issued and what authority these government agencies have to ‘suspend’ the domain name registrations of these websites, several of which are domain names which are not even registered with registrars within India. More concerning is the shift towards implicating various online intermediaries into policing online content for copyright infringement in a manner which defies legal or economic logic without providing greater justification for the same.

India’s website blocking jurisprudence is plagued with issues which we have consistently covered at this blog. As we have documented before, there are multiple legal avenues in India under which injunctions appear to be granted to online intermediaries for matters of copyright. The manner putatively intended by parliament is the notice and takedown regime under the Copyright Act (S.52) read with the Copyright Rules (R. 75). Yet, for various reasons, this has been circumvented in its entirety by various High Courts across the country, which have instead issued blocking injunctions to intermediaries under their inherent powers under Section 151 of the Civil Procedure Code (a catch-all section empowering the Court for the ‘ends of justice’).

With the increase in website blocking orders (being granted for the asking), we seem to be moving away from the balanced standard which had for some time been endorsed by the Bombay High Court which restricted blocking orders to specific URLs demonstrated to be infringing. In fact, the Bombay High Court had endorsed a suggestion by Prof. Basheer, made on this blog, to institute a ‘IP Ombudsman’ to act as a neutral party to verify and deal with the mass of blocking injunctions, while applying an impartial judicial mind. Lawmakers and courts would do well to develop similar mechanisms for ensuring the legitimacy and proportionality of blocking injunctions in their efforts to curtail copyright infringement.

We are incredibly excited to bring to our readers a guest post by the fantastic Dr. Arul George Scaria, on one of the most cutting-edge developments in technological developments which implicate copyright law – text and data mining and their status under Indian copyright law.

Dr. Scaria is an Assistant Professor of Law and Co-Director of the Centre for Innovation, Intellectual Property and Competition (CIIPC). He is also an Affiliate Faculty of the CopyrightX program, which is a course offered each year from January to May under the auspices of the Harvard Law School, the HarvardX distance-learning initiative, and the Berkman-Klein Center for Internet and Society, Harvard University. Arul did his doctoral research (2008 October – 2011 December) at the International Max Planck Research School for Competition and Innovation, Germany, and post-doctoral research (2012 January to 2014 February) at the Catholic University of Louvain (UCL), Belgium. His key areas of interest and specialisation are science and technology policies, open movements, intellectual property law, and competition law. Arul has two single authored books to his credit. His first book, Ambush Marketing: Game within a Game, was published by the Oxford University Press in 2008. His second book, Piracy in the Indian Film Industry: Copyright and Cultural Consonance, was published by the Cambridge University Press in 2014. He is currently working on projects in the areas of open science, open innovation, and regulation of digital markets in the context of big data, AI, and IoT. Dr. Scaria has previously written guest posts for us here and here.

Should Indian Copyright Law Prevent Text and Data Mining?

Dr. Arul George Scaria

A recent article in Nature has brought to the attention of the world a revolutionary project undertaken by Carl Malamud, one of the most vocal fighters in the access to knowledge movement, in collaboration with Andrew M Lynn, a renowned bioinformatician at Jawaharlal Nehru University (JNU). The project involves 73 million journal articles from different sources, stored on a 576-terabyte storage facility at JNU. The duo have a noble mission – enabling knowledge discovery through text and data mining (“TDM”) of those files. While 73 million may not be all the journal articles published in the world, it is a significant subset and TDM on those 73 million articles can certainly pave way for some path-breaking research findings in many fields.

But the Nature article has also raised an important legal question – are the researchers violating copyright law when they engage in TDM at this facility, which they refer to as ‘JNU data depot’? This question is relevant as at least some of the articles in the JNU data depot (“data depot”) may still be under copyright protection and it is probable that they might have been included in the database without permission from the copyright owners. India is yet to see any specific litigation with regard to TDM and so it is difficult to give a concrete answer to this question. But this post is intended to share some perspectives on the legality of the facility in question.

What is TDM and What Makes the Data Depot Unique?

As defined by the UK IPO, text and data mining refers to “use of automated analytical techniques to analyse text and data for patterns, trends and other useful information.” TDM has enormous potential in knowledge discovery and some of the fields that have already witnessed the enormous potential of TDM are biomedical sciences, linguistics, and machine learning. It’s important to recognise that the application and potential of TDM is not limited to any specific fields and the potential fields of application include law. As some scholars have pointed out, TDM can be conceputalised as happening in four stages – access, extraction, mining, and use.

As is evident from the Nature article, certain specific access related restrictions have been imposed on the users of the Data depot. For example, though the facility will have access to 73 million journal articles, no one will be allowed to read or download those works from that facility. The only thing that the facility permits is use of computer software to crawl over the text and data without allowing those users to actually “read” the works. The users also have to physically visit the facility to use it. Most importantly, the researchers are currently allowed to use the facility only for non-commercial research purposes. The terms and conditions for the use of the depot are very similar to the conditions used by the Hathi Trust and a copy of it can be accessed here.

Copyright Law and The Concerned TDM Activities

In most of the TDM projects, at least some of the contents used for mining might be the ones which are still under copyright protection. This could include journal articles, photographs, or even sound/ video clippings. While some of the works might have already entered the public domain and some of them might be open access works, it is very much probable that some are works wherein the copyright owners have reserved all their rights and are still under copyright protection. In such a scenario, researchers are often worried as to whether they will be infringing the copyrights in those works when they engage in TDM. The explicit demand for TDM licenses from the side of some publishers have increased the anxieties among researchers and institutions. Recognising the potential of TDM in research and innovations, different countries are creating exceptions for TDM through different approaches.

For example, the UK included a specific exception (Sec. 29A) under the Copyright, Designs and Patents Act 1988, allowing TDM for non-commercial purposes. But the UK exception provision can be availed only when the user has lawful access to the concerned copyrighted material (for example, having subscription to the concerned journals). The recent EU directive on copyright in the single market (Directive 2019/ 790) has also included two specific TDM related provisions. Art. 3 of the Directive mandates the member states to provide exceptions for reproductions and extractions made by research organisations and cultural heritage institutions for the purposes of “scientific research”. As one may notice from the manner in which the directive has defined the term ‘research organisation’, this exception provision will benefit public funded, not-for-profit entities like universities (including university libraries), research institutes, and other entities whose primary goal is to conduct scientific research or to carry out educational activities involving scientific research. Similar to the UK exception, this exception provision can be used only with regard to works to which they have lawful access. Art. 4 of the Directive also mandates member states to provide exceptions for TDM and unlike the exception provided under Art. 3, there are no purpose related restrictions in Art. 4. It can be used by for-profit organisations and independent (unaffiliated) researchers. While Art.4 might give the impression of a broad exception in the first reading, it is in effect very narrow in scope, as it has provided an opt-out system for right holders. According to the provision, if a right holder has explicitly reserved her rights, the exception will not be applicable. To assess the practical effectiveness of both Art. 3 and Art. 4 of the DSM directive, one may have to wait for the implementation of those provisions in domestic laws of EU member states. It is also hoped that those domestic laws and the Court of Justice of the European Union (CJEU) might give more clarity on the scope of different terms used in the exception provisions, including ‘scientific research’.

The country considered as the most favourable jurisdiction for TDM activities might be USA. Though it doesn’t have any specific exceptions for TDM, the fair use exception under the US copyright system is broad enough to cover most TDM activities, including those for commercial purposes. As most readers of this blog are aware of, the fair use exception under US copyright law is not limited to any specific purposes and a judge will have to decide on the fair use argument, based on certain important factors evolved through case-laws. The most prominent factors in this regard are – (1) purpose and character of use; (2) nature of the copyrighted work; (3) amount and substantiality of the portion taken; and (4) impact on the potential market. These are inter-related factors and a review of the recent fair use cases suggest that one of the sub-factors of the first factor, i.e., whether the use was a transformative use, can have substantial impact on analysis in most factors and final outcome in a litigation. The more transformative a use is, the higher the likelihood of a court reaching a finding of fair use.

As Prof. Matthew Sag has pointed out in a recent article published in the Journal of the Copyright Society of the USA, in general, the use of a copyrighted work can be classified as expressive use or non-expressive use, depending on the purpose of the use. When we use a copyrighted work for appreciating the expressive aspects of that work, it is referred to as expressive use. The examples cited by him in this regard are downloading a movie to watch it or making photocopies of texts for reading them. On the other hand, non-expressive uses generally refer to acts of “reproduction that is not intended to enable human enjoyment, appreciation, or comprehension of the copied expression as expression”. TDM is a good example for non-expressive use, as the purpose of TDM is not to read those individual articles, but to discern through automated analysis of the combined data certain information such as patterns, trends, or correlations. As Prof. Sag points out with the help of landmark cases such as Google Books case and the Hathi Trust case, copying expressive works for non-expressive uses is generally considered by courts as fair use.

As indicated above, one of the important aspects of the US approach in this area is that even TDM for commercial purposes might be well within the fair use exception. While the question of whether the use in question was for a commercial purpose might have some relevance for analysis under the fourth factor (impact on the potential market of the plaintiff), the courts have held that there cannot be any presumption against a finding of fair use just because the use in question was commercial in character. For example, in the Google Books case, Google was engaging in a commercial activity and it didn’t prevent the court from reaching a conclusion of fair use. In a nut-shell, the current fair use system might be providing sufficient protection for researchers in the US from any copyright infringement liability, when they engage in TDM.

But what is the legal position in India? In my view, TDM activities like the ones provided by the data depot, should be considered as legal in India on three different, but inter-related, grounds.

Firstly, it is a basic principle of copyright law that there cannot be any copyright in facts or ideas. Copyright law only protects the expression of ideas. When a researcher is using a copyrighted article (or for that matter any other copyrighted work) for the purpose of TDM, they are using the work only as data or large sets of data, which are clearly outside copyright protection. As Prof. Sag has pointed out, the use is clearly non-expressive use of an expressive work and the copyright holder do not have any legal or moral grounds to prevent such uses.

Secondly, if facts and ideas are clearly outside copyright protection, it is morally and legally impermissible to allow publishers to use End User License Agreements (EULA) or any other contractual tools to restrict researchers from using articles for TDM. Courts should take a strong position against such contracts which are trying to create property rights over non-protectable subject matter.

Thirdly, it is important to remember that copyright law is not just about the rights of creators of works, but also of users of those works. As rightly explained by Justice Endlaw in the famous Delhi University Photocopy Shop (Single Bench) decision (para 41), “…the rights of persons mentioned in Section 52 are to be interpreted following the same rules as the rights of a copyright owner and are not to be read narrowly or strictly or so as not to reduce the ambit of Section 51, as is the rule of interpretation of statutes in relation to provisos or exceptions…”. In other words, one has to treat the rights given to the users at par with those given to creators. This position is very much in recognition of the fact that knowledge creation is a cumulative process and access to existing knowledge is important for creation of future knowledge. Hence one has to also look at the exceptions provided under Indian copyright law, before jumping into any conclusion as to whether the TDM activity in question is illegal under Indian copyright law.

If one looks at the exceptions in India (Section 52), it can be seen that the country follows a hybrid system of exceptions wherein a relatively broad fair dealing exception is complemented with a long list of specific, enumerated exceptions. As many readers are aware of, the often cited distinction between the fair use system and the fair dealing system is that the fair dealing exception is limited to the specific purposes mentioned in the provision, whereas the fair use system is not limited to any specific purposes and it can be applied for a broader range of activities. However, if we look at the evolving jurisprudence in this area (particularly cases from countries like Canada which has a fair dealing provision similar to India), it can be seen that the fair dealing provision can also be a dynamic tool that can respond adequately to the developments in technology and changing user requirements.

There are three essential steps in a fair dealing analysis. First question a court may ask is whether there was a dealing. As long as the plaintiff can show that the defendant has made use of her work, this requirement would be met.[i] In the context of the data depot, it is certainly evident that researchers would be “using” some copyrighted materials, even though as explained earlier, it is good to remind ourselves that the use is just a non-expressive use of an expressive work. In the second step, the court may look into the question of whether the use was for a purpose specifically mentioned under the provision and an objective analysis is required in this regard.[ii] The Indian fair dealing provision specifically includes private or personal uses, including research, as a purpose for which the fair dealing provision is applicable. The access restrictions explicitly put in by the data depot indicates that the users of the facility will be using it only for research purposes, and only in their personal capacity. As the activity in question is for a purpose specifically mentioned in the provision, the second requirement is also met. The third and the final step involved in a fair dealing analysis is to ask whether the dealing was “fair”. While the copyright statute does not define the term “fair”, different judgments have provided some guidelines for analysing “fairness”. The most famous among them is the observations of Lord Denning in Hubbard v. Vosper:

“It is impossible to define what is “fair dealing”. It must be a question of degree. You must first consider the number and extent of the quotations and extracts. Are they altogether too many and too long to be fair? Then you must consider the use made of them. If they are used as a basis for comment, criticism or review, that may be fair dealing. If they are used to convey the same information as the author, for a rival purpose, that may be unfair. Next, you must consider the proportions. To take long extracts and attach short comments may be unfair. But, short extracts and long comments may be fair. Other considerations may come to mind also. But, after all is said and done, it must be a matter of impression.”

As is evident from the observations of Lord Denning, fairness is a question of degree and impression. Another landmark decision that has provided a better analytical framework for fairness analysis is the decision of the Canadian Supreme Court in CCH Canadian Ltd. v. Law Society of Upper Canada. The Canadian Supreme Court highlighted six factors that might be taken into consideration in the fairness analysis and it might be a good idea to analyse the “fairness” of the data depot in light of those six factors.

(1) Purpose of the dealing – According to the court, “purpose of the dealing will be fair if it is for one of the allowable purposes under the Copyright Act”. It is beyond doubt that the TDM facility at JNU is intended only for research purposes and it is a purpose clearly permitted under Indian copyright law.

(2) Character of the dealing – Under this factor, the Court suggests that we must examine how the works were dealt with. According to the Court, “[i]f multiple copies of works are being widely distributed, this will tend to be unfair. If, however, a single copy of a work is used for a specific legitimate purpose, then it may be easier to conclude that it was a fair dealing. If the copy of the work is destroyed after it is used for its specific intended purpose, this may also favour a finding of fairness. It may be relevant to consider the custom or practice in a particular trade or industry to determine whether or not the character of the dealing is fair.” When we analyse this factor in the context of the data depot, it can be seen that the copying of the articles has been done with a very specific purpose – enabling research and knowledge discovery through TDM. TDM cannot be done in the absence of access to copyrighted works and extraction of data from those works. Hence it is evident that this factor will also be in favour of the data depot.

(3) Amount of the dealing – According to CCH Canadian decision, the amount of the dealing and importance of the work allegedly infringed should be considered in assessing fairness. But the Court itself has pointed out that the relevance of the amount taken would vary depending on the purpose. The Court has pointed out that for some purposes such as research or private study, it may be essential to copy an entire academic article. In the context of TDM, it is important to remind ourselves that copying of the full text is very relevant for effective TDM and a court should not rule this factor against the data depot, just because the complete text in a copyrighted work has been copied for the purpose of TDM.

(4) Alternatives to the dealing – Under this heading, the CCH decision has highlighted the importance of exploring alternatives to dealing with the infringed work. In case of TDM, it is a fact that the level of access to contents will determine the quality of the outputs. While some publishers might try to point out their licensing schemes as an alternate, it is not a viable option to take licenses from thousands (if not millions) of copyright owners merely for the purpose of TDM. We should also remind ourselves that those licenses are in effect trying to extract money on non-protected subject matter (data) under copyright law. Hence the analysis under this factor also stands in favour of data depot.

(5) Nature of the work – According to CCH Canadian decision, the nature of the work in question should also be considered by courts while assessing whether a dealing is fair. Some of the questions that the court may take into consideration is whether the plaintiff’s work was an unpublished one and whether the work was confidential. While publication of unpublished works is considered as fair by the court, publication of a confidential work may drive the court more in favour of a finding that the dealing was unfair. In the context of the contents currently available in the data depot, it is evident that the TDM is relating to published works (and not confidential works) and hence this factor will also be in favour of the data depot.

(6) Effect of the dealing on the work – CCH Canadian decision has also suggested looking at the effect of the dealing on the work, as a factor in the fairness analysis. In this regard, the Court will be primarily looking at the question of whether the reproduced work is likely to compete with the market of the original work. As is clear from the description of TDM technology, results of TDM (new discoveries) are not competing with the market of copyright holders (journal articles). Hence there are no market displacements happening through TDM. Hence this factor will also be in favour of the data depot.

CCH Canadian decision had also very specifically pointed out that these six factors are not exhaustive and the relevance of the factors would depend on the factual context. Hence we may take into consideration one more question during a fairness analysis – is it fair to allow copyright holders to prevent an activity that is clearly outside the scope of rights provided to them under copyright law? As discussed earlier, TDM involves only non-expressive uses of an expressive work and we should not extend copyright protection to the ideas and facts behind an expressive work. All these factors should lead to a ruling in favour of the data depot, in the event of a litigation from the side of copyright holders.

Conclusion

From a legal and policy perspective, the data depot can and should resist any unlawful copyright threats from the side of copyright holders, particularly publishers. As India hopes to use artificial intelligence and machine learning to address many of the socio-technological challenges it faces today, the collaborative TDM facility at JNU might be showing the researchers and policy makers across the country, a bold path to unlock knowledge discovery. The current copyright law in India provides sufficient safeguards for TDM and copyright related threats should not be allowed to act as a hindrance in the progress of science.

[i] Lionel Bently & Brad Sherman, Intellectual Property Law (4^th ed., Oxford University Press, 2014), 224.

[ii] Ibid.

Picture from Wikipedia

Carl Malamud is at it again, riling up copyright owners and setting the stage for yet another lawsuit on a fascinating copyright issue. His latest effort to ‘liberate’ copyrighted information from scientific publishers is an enterprising venture, called the ‘JNU Data Depot’ which is based out of the Jawaharlal Nehru University (JNU) and which was the subject of an excellent report by Priyanka Pulla in Nature. In the past, Malamud has provoked a firestorm of a debate in multiple jurisdictions, including India, with regard to the accessibility of legally binding standards whose copyright is owned by private standard setting bodies. A few months ago, the New York Times published an editorial backing Malamud in his litigation against legal publishers, that is to heard by the United States Supreme Court in its next term.

The JNU Data Depot

The ‘JNU Data Depot’ consists of 73 million journal articles (576 terabytes of information), which were compiled by Malamud from an undisclosed source and stored on a few disk drives which he has housed in an ‘air gap’ facility in JNU, which means that it cannot be accessed through the internet. Researchers have to visit the facility in person. Malamud’s reluctance to disclose the source of his papers does not sit will with his stated commitment to Gandhian principles of resistance and the complete truth.

Malamud intends to make available the JNU Data Depot available to scientific researchers for text and data mining (TDM). Simply put, TDM is the practice of using automated tools to analyse large amounts of text or data to track useful trends or patterns. It has the potential to dramatically improve the quality of scientific research. Most publishers of journals do offer API access for subscribers wanting to conduct TDM research but they cannot match the scale of the JNU Data Depot because individual publishers can provide the TDM facility for only their journals and not for journals owned by other publishers. With the JNU Data Depot, researchers will now be able to conduct specific searches over the 73 million articles. It is not clear how much information will be shown in the search snippets. Will it be Google Books style snippets or an entire page of a journal article? Depending on how much information is being displayed in the search results, researchers may require access to the entire journal article, which I presume they will access through either an authorized subscription or through Sci-Hub, which is the pre-eminent database of pirated academic papers. The papers on Sci-Hub however are not searchable and are usually accessed through their DOI identifiers. Sci-Hub combined with the JNU Data Depot facility would be a potent alternative for those lacking access to the expensive databases of individual publishers. If the JNU Data Depot is deemed to be legal under Indian law, Indian universities should seriously reconsider their subscriptions to the very expensive academic databases.

Can the Depot be Defended under the Copyright Act?

The question now is whether JNU and Malamud are liable for copyright infringement? The depot after all hosts 73 million articles without the permission of the copyright owners. Even if the full text of the articles is not being made available to visitors, the fact of the matter is that the very act of copying 73 million articles constitutes copyright infringement unless Malamud and JNU can establish a clear defense under Section 52 of the Copyright Act. The fact that only snippets will be shown helps their case although we have no idea of the size of these snippets. However even then it is up to Malamud and JNU to reveal the provision of law which they intend to defend a possible claim of copyright infringement.

According to Malamud’s statement to Nature, since the JNU Data Depot is showing only snippets of the paper, it would not be liable for copyright infringement under American copyright law. Malamud maybe right about the position of law in the US given the unique ‘fair use’ provision in American law which in the past has protected Google Books. However, as the Nature article rightly points out, American law is irrelevant because the depot is located within India and will be governed by Indian copyright law. Indian law is very different on the point. Unlike the free wheeling American ‘fair use’ provisions which only lay down a set of principles that are to be applied in various scenarios, Indian law lays down specific uses which are exempted from copyright infringement.

Private and Personal Use?

The second defence of Malamud’s data depot has been put forth by Arul George Scaria in a lengthy and wonderfully articulated post yesterday on SpicyIP. The long and short of Arul’s defence of the data depot rests on the “fair dealing” limitation articulated in Section 52(1)(i) for the purposes of “private or personal use, including research”. He argues as follows:

“The Indian fair dealing provision specifically includes private or personal uses, including research, as a purpose for which the fair dealing provision is applicable. The access restrictions explicitly put in by the data depot indicates that the users of the facility will be using it only for research purposes, and only in their personal capacity. As the activity in question is for a purpose specifically mentioned in the provision, the second requirement is also met.”

While Arul maybe right in saying that the researcher using the facility maybe covered under the exception on the grounds that it is ‘personal use’ (although it is debatable), it is clear as day that neither Malamud or JNU can use this defence because the data depot is sitting in a public university, with an invitation for any researcher to use. This is the definition of ‘public use’. If the data depot does not qualify as either ‘private’ or ‘personal’ there is simply no point in conducting a ‘fair dealing’ analysis because the main requirements of the provision, regarding nature of the use, are not met.

Neither Malamud nor Arul have identified any other provision of the Copyright Act that can provide a safe harbor for the JNU data facility.

JNU’s Liability

Separate from Malamud, there is also the question of JNU’s liability. Unlike Malamud, JNU has multiple subscription contracts with academic publishers for legitimate access to their databases. By hosting the data depot facility, there is a possibility that JNU is in violation of those contracts and may incur significant liability if the publishers decide to initiate legal action under those contracts. Since most of these contracts have arbitration clauses requiring arbitration to take place under foreign laws and in foreign jurisdictions, JNU could be looking at a pretty hefty legal bill. However, it makes little sense for publishers to take the trouble of initiating legal action as long as Sci-Hub continues to be accessible in India. It makes little commercial sense to take down the JNU data depot when Sci-Hub, which is far more used in India, continues to thrive. A study in 2016, revealed that Indians made 3.4 million downloads from Sci-Hub. Only the fear of laches may spur the publishers to file a lawsuit.

Shogun Organics Limited v. Gauri Hari and Others is a curious case concerning burden of proof and an apparent conflict between the Patents Act, 1970 and the Insecticides Act, 1968.

Facts

Shogun Organics Limited (plaintiff) filed a suit seeking a permanent injunction to restrain the defendants from infringing its process patent. The patent relates to the manufacturing of d-trans Allethrin (an active ingredient in mosquito repellants). Shogun had also obtained an ‘original’ registration for the manufacture of this product under the Insecticides Act, 1968.

Shogun relied on the following to prove infringement of its patent:

1. the defendant’s ‘follow on’ registration under Section 9(4) of the Insecticides Act;
2. a clarification from the Central Insecticides Board and Registration Committee (“CIBRC”) which stated that an applicant of a ‘follow on’ registration under Section 9(4) must follow the same process of manufacture as the original registrant in order to make the same product with the same chemical composition.
3. an affidavit of an expert which examined the product sold by the defendants, which concluded that the defendants’ product contained various contents that could only be present when using the plaintiff’s patented process.

The defendants challenged the novelty of the patent on the ground that the plaintiff had previously published the process when applying for registration under the Insecticides Act.

Burden of Proof and Adverse Inference

The court held that unless the defendants could prove that the  patent was disclosed to the authorities under the Insecticides Act, the patent  was not prior published. However, the defendants failed to led any evidence to prove this. The court also held that such a disclosure would not constitute ‘public disclosure’ since (a) Section 30 of the Patents Act exempts disclosures to the government and (b) disclosure was without any public (non-secret) use.

On the issue of infringement, the burden was placed on the defendant to prove non infringement because the defendants had failed to disclose their process (despite being directed to). The court held that the defendants cannot withhold their best evidence especially if the same is within their knowledge. If such evidence is withheld, the court can draw an adverse inference against the defendants. Since the defendants did not disclose their process, highlight the differences in the two processes and show that the defendant’s product has different properties / ingredients / reactants, an adverse inference was drawn against the defendants. On the other hand, the plaintiff had led evidence to show that the patented process was being used by the defendants through a high performance liquid chromatography test. The test results were not challenged and the authenticity of the results were not questioned. Therefore, the defendants were held to be infringing the  patented process.

The court disregarded the submissions on the Insecticides Act since the patented process was not connected to the insecticides registrations as the plaintiff had developed a new process which was different from the one that was disclosed while obtaining its insecticides registration.

Follow on Insecticide Registrations and the Patents Act

Follow on or ‘me too’ registrations under the Insecticides Act have been a topic of controversy in India especially with respect to data exclusivity. We have blogged about these issues, here, here and here.

As per Section 9(3) of the Insecticides Act, the original applicant of an insecticide must file an application disclosing various technical details of the proposed insecticide. After scrutiny, the applicant is awarded a registration as the ‘original’ manufacturer / registrant. Thereafter, any other person who desires to manufacture / import the same insecticide can do so by obtaining a ‘follow on’ registration under Section 9(4). As per the clarification from the CIBRC, it appears that a ‘follow on’ registrant must follow the same process of manufacture as the original registrant in order to make the same product with the same chemical composition.

This clarification results in an absurdity in law. While the Patents Act grants exclusivity to a patentee over the patented process, the Insecticides Act appears to permit copying of patented processes.

Examining a similar issue, the Kerala High Court held that the Insecticides Act and the Patents Act are independent statues and the authority under the Insecticides Act does not have the power to examine issues of patent infringement / validity. However, the court did not address the apparent conflict between the two laws.

It is a settled principle of statutory interpretation that in order to prevent absurd results, the two conflicting provisions of law should be read together and where necessary be modified so as to reconcile the respective provisions and to give effect to both of them.

While the process patent of the original registrant can be enforced to prevent the follow on registrant from using the patented process, the follow on registrant will continue to hold a valid registration under the Insecticides Act. What then is the point of the insecticides registration which continues to be valid even after a permanent injunction under the Patents Act? In order to reconcile this conflict, could the court have required the ‘follow on’ registrant to (a) obtain consent of the original registrant for using its patent process or (b) obtain an order of invalidity of the patent, prior to granting the registration? If nothing else, can patentees legitimately use follow on registrations as a ground for showing a real and imminent threat to their patent and file suits seeking ‘quia timet injunctions’ i.e. injunctions based on a fear of infringement without any actual infringement.

Thank you to Sandeep Rathod for bringing the Delhi High Court decision to our notice!

This month, we received the tragic news of the passing away of our Founder and Chief Mentor, Prof. (Dr.) Shamnad Basheer. He touched the lives of all of us here at SpicyIP in innumerable ways and always encouraged us with our work at the blog on a day-to-day basis. His loss cannot be put into words, but we hope to honour his legacy by continuing the good work he started with SpicyIP. See the tribute penned for our blog by Prashant Reddy here.

Topical Highlight

Aparajita wrote a post on Shogun Organics Ltd v Gauri Hari. This case concerned an infringement action for a patent over the manufacturing process of d-trans Allethrin (an active ingredient in mosquito repellants). The Delhi HC found patent infringement because, amongst other things, an adverse inference could be drawn over the defendant’s failure to disclose their process despite being directed to. This case brought out an important contradiction between the Patents Act 1970 and Insecticides Act 1968, where a ‘follow-up registration’ under the Insecticides Act requires imitating the process of the ‘original’ registration, but the Patent Act prevents such imitation if the process is registered as a patent. She concludes by offering possible solutions to this problem, in the form of consent from the patentee, or an order of invalidity of the patent.

Thematic Highlights

In a guest post, Dr Arul George Scaria addressed the legality of text and data mining in the India context. He specifically addresses the issue in light of JNU Data Depot, a project that allows on-site data and text mining of over 73 million journal articles. Dr Scaria argues that this project would be legal since the text and data mining would come within the purview of ‘fair dealing’ under Section 52 of the Copyright Act 1956. He concludes by noting the potential of the project in India’s quest to overcome socio-technological challenges and lead the way in innovative ways of unlocking knowledge discovery.

Prashant Reddy penned a reply to Dr Scaria’s post, arguing that the JNU Data Depot would not be protected under Section 52 of the Copyright Act 1956. He notes that the four-factor test that has evolved in the United States of America cannot be imported into Section 52 since this provision lists out specific instances in which fair dealing would be permitted. He also argues that the defence of personal use for research under Section 52(1)(i) would not be applicable since the Depot is open to the public for use. He concludes by laying out the potential ramifications of a legal dispute for JNU but states that a legal dispute would be unlikely.

Other Posts

Rajiv Choudhury wrote a post on Pelham v Hutter, a case on infringement of copyright in music before the Court of Justice of the European Union. The defendant, in this case, had sampled 2 seconds of music from the plaintiff’s record and used it on loop in their track. The case was decided in favour of the plaintiff since the music sampled, although short in duration, was easily discernible and recognisable. In his discussion, Rajiv Choudhury notes that using ‘recognition’ as a test for the infringement may be inappropriate since often music is created by tweaking existing tracks. If these tracks are only tweaked to the extent that they avoid recognition by the human ear, they would unfairly evade an infringement claim.

Divij wrote a post on the over the interim orders passed by the Delhi HC between July 27 and August 12, 2019. These orders consisted of website blocking injunctions for ISPs to block dozens of websites and their mirror/redirect versions, including popular pirate websites Tamilrockers and eztv. He notes that these orders add to Indian jurisprudence by requiring the Department of Telecom and the Ministry of IT to ‘suspend the domain name registration’ of the impugned website. He argues that this development represents a harsh stance towards online intermediaries and is not justified by existing laws, jurisprudence from courts or policy considerations. He concludes by noting that an ‘IP Ombudsman’ model, suggested by Prof. Basheer would be a suitable way to deal with blocking injunctions.

I wrote a SpicyIP Tidbit sharing information on the malfunctioning IPAB website and inviting readers to share any information they have on this issue.

Other Developments

Indian

Judgments

Hindustan Unilever Limited v. Seif Khan – Calcutta High Court [July 31, 2019]

The Court granted a decree of interim injunction restraining the Respondent from infringing the Petitioner’s marks “ACTIVE WHEEL” and “SURF EXCEL” by using the marks “ACTIVE LOVELY DETERGENT POWDER” and “LOVELY DETERGENT CAKE” respectively in respect of selling detergent. In arriving at the decision, the Court observed that the Petitioner was the registered proprietor of the marks. Moreover, the Court noted that the Respondent’s products were sold in a colourable and deceptive imitation of the Petitioner’s artistic works over which it possessed copyright, and hence gave rise to a prima facie case against it.

Hindustan Unilever Limited v. Beeru Mishra – Calcutta High Court [July 31, 2019]

The Court granted a decree of interim injunction restraining the Respondent from infringing the Petitioner’s marks “ACTIVE WHEEL” and “SURF EXCEL” by using the mark “AARO DETERGENT POWDER” in respect of selling detergent. The Court observed that the Petitioner was the registered proprietor of the marks and the Respondent’s trade dress was similar to that of the Petitioner’s packaging. Moreover, the Court noted that the Respondent’s products were sold in a colourable and deceptive imitation of the Petitioner’s artistic work over which it possessed copyright, and hence gave rise to a prima facie case against it.

Gopi v. M/s. Sha Jayaraja Industries– Madras High Court [August 2, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “GAYATHRI” by adopting a deceptively similar mark “GOLDEN GAYATHRI”, and infringing its copyright in the label “GODDESS GAYATHRI SITTING ON A PINK LOTUS WEARING A RED SAREE” by an identical label, adopted by the Defendant in respect of incense sticks. In arriving at the decision, the Court noted that the Defendant had copied each and every literary feature found on one side of the panel of the packaging carton. Terming it a slavish imitation, the Court observed that the Plaintiff had clearly proved the infringement of its trademark as well as its copyright in the label.

Hindustan Unilever Limited v. Himanshu Lohani and Another – Calcutta High Court [August 2, 2019]

The Court granted a decree of interim injunction restraining the Respondent from infringing the Petitioner’s mark “SURF EXCEL” by using the mark “TAJ ACTIVE” in respect of selling detergent. The Court observed that the Petitioner was the registered proprietor of the mark and the Respondent’s trade dress was similar to that of the Petitioner’s packaging. Moreover, the Court noted that the Respondent’s products were sold in a colourable and deceptive imitation of the Petitioner’s artistic work in its “SURF EXCEL MATIC” packaging over which it possessed copyright, and hence gave rise to a prima facie case against it.

Tata Sia Airlines Limited v. M/s. Pilot18 Aviation Book Store and Another – Delhi High Court [August 5, 2019]

The Court granted a decree of permanent injunction restraining the Defendants from infringing and passing off the Plaintiff’s mark “VISTARA” by adopting an identical mark in respect of various products, such as badges, name tags and other accessories. In arriving at the decision, the Court noted that the plea taken by the Defendants that they did not use the mark “VISTARA” was a grave misstatement. Additionally, the Court observed that the Defendants had engaged in the manufacture of uniforms, badges etc. of other prominent airlines which could translate into a serious security threat by giving unauthorized access to persons. Ultimately, the Court declared the mark “VISTARA” to be a well-known mark and noted that the use of the same in connection to unrelated services would also create confusion and deception.

Parle Agro Private Limited v. Shree Balaji Food and Beverages and Others – Bombay High Court [August 6, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “BAILLEY” by using an identical mark in respect of selling packaged water. The Parties had previously contracted through which the Defendant was authorized to manufacture and sell the Plaintiff’s products in certain territories of Maharashtra. However, this agreement between the Parties was terminated in 2018, when the Defendant failed to obtain a Bureau of Indian Standards (BIS) license. Subsequently, during a raid in the Defendant’s premises, the BIS found identical packaged water to that of the Plaintiff. The Court observed that the introduction of contaminated water in the market would lead to harm and injury to the general public. Accordingly, the Court emphasized that it had to remain particularly vigilant where packaged water was being passed off.

Astrazeneca AB and Others v. P. Kumar and Others – Delhi High Court [August 8, 2019]

The Court vacated the interim injunctions granted in favour of the Plaintiffs to restrain the Defendants from infringing its patents in the chemical component “TICAGRELOR”. The Court had previously passed several interim injunctions restraining the Defendants from dealing in the “TICAGRELOR” tablets. At the outset, the Defendants claimed that the Plaintiffs’ patents were liable to be revoked based on a prior invention registered in India which had already published the working of “TICAGRELOR”. The Defendants furthered evidence in the form of the Plaintiffs’ admissions across other jurisdictions, wherein it claimed that its patent actually involved a similar working of “TICAGRELOR” like the prior patent in India. Accordingly, the Court noted that a prima facie finding in favour of the Plaintiffs could not be arrived at in light of the serious challenge to the anticipation of “TICAGRELOR”. The Court also noted that the Plaintiffs had prima facie failed to exhibit “therapeutic efficacy” under Section 3(d) of the Patents Act, 1970 in respect of the “TICAGRELOR” tablets. However, the Court noted that the Plaintiffs had substantially disclosed its pending litigations, and no order for a vacation of the interim injunction could be passed on that ground. Evaluating all the claims, the Court noted that the Defendants had succeeded in making out a serious challenge to the validity of the Plaintiffs’ patents, which was sufficient to vacate the interim injunctions granted in its.

Meso Private Limited v. Liberty Shoes Limited and Another – Bombay High Court [August 8, 2019]

The dispute between the Parties arose on account of the Respondents’ alleged infringement and passing off of the Plaintiff’s marks “FLIRT” and “LEGEND” by adopting identical marks in respect of its perfumes. The Single Judge granted an ad-interim injunction in favour of the Appellant, considering the presence of a prima facie case in its favour. In appeal, the interim order of the previous Single Judge was vacated by another Single Judge who noted that the marks “FLIRT” and “LEGEND” were common words, being extensively used by others in the market in relation to perfumes. In the present appeal, the Court noted that the Appellant was using the mark “DEVON” along with its marks “FLIRT” and “LEGEND” on the same side of the wrapper, whereas the Respondents were similarly using the mark “LIBERTY” along with the marks “FLIRT” and “LEGEND”. Accordingly, the Court observed that there could be no confusion as to the house names of the products. The Respondents also pointed out various manufacturers using the marks “FLIRT” and “LEGEND” in association with their house names. In furtherance, the Court noted that the trade channels for the two Parties were different, as the Respondents only sold their products through select outlets and e-commerce platforms and the Appellant was merely engaged in export of its products. The Court also stated that an average consumer of perfumes would not choose the products casually, and would give due importance to the house name they are being sold under. Therefore, the Court concluded that there could not be any confusion between the two products and refused to grant an interim injunction in favour of the Appellant.

Mr. A.D. Padmasingh Isaac v. A. Shakul Hameed – Madras High Court [August 9, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AACHI MASALA KULAMBU CHILLY POWDER” by adopting a get-up and colour scheme deceptively similar to it in connection with its mark “AUNTY’S FOR TASTY MASALA” in respect of spices. The Court considered the affidavit of the Defendant to arrive at the decision, wherein the Defendant had claimed that it would not make future use of its mark which had been declared “abandoned” by the Trademark Registry. In light of the Defendant’s affidavit, the Plaintiff gave up its prayers in relation to claiming account of profits and costs of the suit.

Radha Bharadwaj v. Ellipsis Entertainment Media LLP and Others – Bombay High Court [August 9, 2019]

The dispute between the Parties arose on account of the Defendants’ alleged infringement of the Plaintiff’s copyright in its book “A MOST AUSPICIOUS JOURNEY” in producing the film “MISSION MANGAL”. The Plaintiff claimed that the script of the film was substantially similar to its book. At the onset, the Court admonished the Plaintiff for not presenting the allegedly infringing script before it at the time of the hearing. The Court further stated that in the absence of such script it would be impossible for it to come to a prima facie conclusion. The Court also noted that it could not grant an injunction based on the teaser or trailer of the Defendants’ film, without analysing the whole script of the Defendants’. The Court observed that the Plaintiff’s oversight in permitting the Defendants to use the script to produce the film had shifted the balance of convenience in the Defendants’ favour. Accordingly, the Court rejected the Plaintiff’s claim for the grant of an injunction, stating that none of the three elements for its grant was in the Plaintiff’s favour.

Deepak Wadhwa v. Flipkart Internet Private Limited and Others – Calcutta High Court [August 14, 2019]

The Court granted a decree of interim injunction restraining the Defendants from infringing the Petitioner’s registered design in its wristwatches sold under the firm name “TIME WEAR AND BEYOND”, by adopting an identical design in respect of their watches. In arriving at this decision, the Court observed that the Petitioner had made out a prima facie case of infringement and the balance of convenience also lay in its favour.

Aegon Life Insurance Company Limited v. Aviva Life Insurance Company – Bombay High Court [August 19, 2019]

The Court refused to grant an injunction restraining the Defendant from passing off the Plaintiff’s mark “ITERM” by using a deceptively similar mark “ITERM” in combination with the words “AVIVA SMART”. The Court observed at the onset that the Plaintiff’s mark was highly descriptive of the services provided under it, as the term “ITERM” was a directly derived expression from “TERM INSURANCE”, the policies under which were sold online. In determining whether the mark had obtained a secondary meaning, the Court noted that the Plaintiff had a higher burden to discharge whereby it was expected to establish the significance of its mark in the public mind. The Court further observed that the Plaintiff had failed to do so as it had sold only a few insurances and its reliance on promotional expenses was misplaced. It was accordingly stated that sales and promotional expenditure could not be the sole criteria to grant secondary meaning, and the Plaintiff should have relied on market trends and surveys to establish the same. In respect of the infringement issue, the Court noted that the Plaintiff’s mark was not registered, and hence only a passing off action could be sustained. The Court dispelled any confusion between the Parties’ products on the ground that the customers would make an informed decision to purchase policies. Consequently, the Court held that the Plaintiff had failed to establish its mark as a trademark or distinctive of its products and hence was unable to make a prima facie case. Finally, the Court held that the Plaintiff was also unable to show the balance of convenience in its favour, as the Defendant’s policy had been sold to customers already, and any change in its status would result in financial damage to the customers.

Novartis AG and Another v. Natco Pharma Limited – Delhi High Court [August 20, 2019]

The Court vacated the interim injunction granted in favour of the Plaintiffs to restrain the Defendant from infringing its patents containing the chemical compound “CERITINIB”. In previous proceedings before it, the Court had adjourned the final determination of the case in light of the post-grant opposition filed by the Defendant. Accordingly, the Defendant brought it to the Court’s notice that the Plaintiff’s patents had been revoked by the Controller on the ground of lack of novelty on August 16, 2019. The Court in furtherance of the same observed that an injunction could not be granted in absence of a valid and a subsisting patent as the statutory right in its respect had been extinguished.

News

• Madras high court stays release of Telugu version of Balloon
• Prevent websites from uploading pirated version of ‘Nerkonda Paarvai’: Madras HC
• Titan gets interim relief, Delhi HC tells Snapdeal to delist counterfeit watches
• Delhi HC directs internet service providers to block tamilrockers, other similar websites
• Meso’s appeal in HC against Liberty Group dismissed
• DHC vacates injunction in favour of AstraZeneca for Ticagrelor
• Delhi HC restrains illegal streaming of Warner Bros content, directs ISPs to block URLs of offending platforms
• Delhi HC bars New York based Ink Mango from using ‘Juggernaut’, citing trademark violation
• No Infringement Action Maintainable In Respect Of An Unregistered Or Revoked Patent: Delhi HC
• ShareChat takes down videos after TikTok notice
• Bangalore Court restrains Curefit from launching Gym.fit, allied services in suit by Book Your Gym

International

• ‘Going down’ Is a Trade Mark That Causes a Bad Influence on Morality, Says the Beijng High Court in China
• Youtube slightly changes music copyright claim rules to favour creators
• Top U.S. publishers sue Amazon’s Audible for copyright infringement

Even as we continue to come to terms with the passing of Prof. Shamnad Basheer, it has been of some comfort to hear of the various initiatives and ideas that people have started considering to help continue carry his legacy forward, in both the IDIA community as well as the IP community. While we look forward to seeing many of these ideas bloom, we are pleased to bring to our readers news of one such initiative that has just been undertaken: the Shamnad Basheer IP/Trade Fellowship with Texas A&M University School of Law, in collaboration with the Association for Accessible Medicines. The deadline for applications is September 15, 2019. For further details, please see the announcement below:

Shamnad Basheer IP/Trade Fellowship with Texas A&M University School of Law

In memory of Shamnad Basheer, the founder of SpicyIP and IDIA, the Association for Accessible Medicines in collaboration with the Texas A&M University School of Law invites applications for the Shamnad Basheer IP/Trade Fellowship with Texas A&M University School of Law. The Fellow will work closely with Prof. Srividhya Ragavan of Texas A&M University School of Law and Jonathan Kimball of the Association for Accessible Medicines to produce a white paper that examines the Special 301 submissions of the Pharmaceutical Research and Manufacturers of America to the Office of the U.S. Trade Representative (USTR). The Fellow will evaluate the submissions’ role and impact on USTR policy making and their consistency with the approach to intellectual property protection and enforcement outlined in the Bipartisan Congressional Trade Priorities and Accountability Act of 2015 (Trade Promotion Authority) and the May 10 Agreement concerning international trade negotiations and access to healthcare and pharmaceutical innovation.

Eligibility: Researchers of all ranks are eligible to apply for the Fellowship. All applicants must disclose any actual or potential conflict of interest, including past employment with, consultation for, or ownership of any substantial financial interest in any company or organization that would benefit from their white paper.

Terms

The Fellowship will be for a period of three months, extendable to up to five months. The opinions and conclusions contained in the white paper are the Fellow’s sole responsibility and do not reflect the views of Texas A&M University School of Law.

The Shamnad Basheer IP/Trade Fellow will receive a stipend of $10,000, subject to the following requirements:

• a) Preparation and submission to Texas A&M University School of Law of a white paper addressing the foregoing questions – the opinions and conclusions in which shall be the Fellow’s sole responsibility, and do not reflect the views of the School of Law;
• b) Spending up to five days in residence at Texas A&M University School of Law, presenting the white paper to faculty and students; and
• c) Presenting the paper at a policy forum in Washington, D.C.

Note: In addition to the stipend, Texas A&M University School of Law will cover reasonable travel and lodging expenses for the law school residency, up to $2,000. The Law School will further cover the travel, lodging, and food expenses for the visiting Fellow’s travel to Washington, D.C.

Applications

Applications not to exceed 300 words, outlining the candidate’s interest and highlighting any relevant past work, should be submitted, along with a curriculum vitae, to Ms. Lori Bacon (lbacon@law.tamu.edu) along with subject line Shamnad Basheer Fellowship no later than September 15, 2019.

Questions may be directed to Prof. Srividhya Ragavan, at ragavan.sri@tamu.edu.

Last week, I had reported that IPAB’s website was malfunctioning. It had been displaying untoward links that did not belong on a website run by the IPAB, or any other tribunal for that matter! My guess (based on gossip travelling around the grapevine) was that this was a successful hacking attempt, and nothing more. Indeed, this conclusion would sit well with current trends, with the there being at least 25 reported instances of successful hacking attempts of government websites only this year!

Alas, I was wrong! It turns out that the reason for IPAB website’s unbecoming behaviour was not a simple case of hacking, but a deliberate sale to a private party! Read on to get the full details on this story which involves an auction, a display of brazen disregard for rules by a statutory body, and, what I hope are signs of a happy ending!

The IPAB Website We Knew and Loved

IPAB launched its website in 2016, serving as a portal for the latest orders passed by the Intellectual Property Appellate Board. However, for more than a while now, it has been malfunctioning. For a brief stint, it went completely offline. And when it resurfaced, it was displaying infelicitous links to PNR statuses of trains and not the content that we at SpicyIP are always craving!

Now, we have found that ownership of the IPAB website’s domain name (ipabindia.org) actually lies with a private party with a mailing address in Andhra Pradesh (further information has been redacted). In fact, the website was never owned by the IPAB itself, but rather, by the Deputy Registrars of the IPAB, in turn. Records reveal that it was finally auctioned to a private party on May 2, 2019, for a sum of $190.

So where does this leave us? Has the IPAB decided that it no longer requires a website? Not quite!

The IPAB Website We Deserve

Our Government realised that in the age of technology, there needed to be uniformity and a minimum standard of quality prescribed for all government websites. To this end, a document titled Guidelines for Indian Government Websites (GIGW) was released in 2009. As the years went by, a need was felt to update these guidelines, and so, in February 2018, we had the second, updated version of these guidelines (GIGW 2.0). They form a part of the Central Secretariat Manual of Office Procedures issued by the Department of Administrative Reforms and Public Grievances, Ministry of Personnel, Public Grievance and Pensions (Government of India).

GIGW 2.0 prescribes measures that can be divided into 3 categories: mandatory, advisory and voluntary. The consequences of this classification are best explained in the FAQ section of a government website:

Mandatory: The usage of the term ‘MUST’ signifies requirements which can be objectively assessed and which the Departments are supposed to mandatorily comply with.

Advisory: The usage of the term ‘should’ refers to recommended practices or advisories that are considered highly important and desirable but for their wide scope and a degree of subjectivity these guidelines would have otherwise qualified to be mandatory.

Voluntary: The usage of the term ‘may’ refers to voluntary practice, which can be adopted by a Department if deemed suitable.

Thus, these guidelines do create mandatory requirements that any government website must meet. Now, under Part 2.2 of GIGW 2.0, there is a mandatory obligation for government websites to possess the secondary domain name ‘gov’. That is, all government websites must end in ‘gov.in’. GIGW, the predecessor of GIGW 2.0, had a similar requirement, with the additional option to end with ‘nic.in’ (also under Part 2.2). It is clear then that IPAB, which qualifies as a body that requires a government website, has flouted the rules of GIGW and GIGW 2.0 for the past 3 years since ipabindia.org meets neither has a ‘nic’ nor ‘gov’ in it.

Other tribunals, such as the National Green Tribunal or Income Tax Appellate Tribunal have websites that meet these criteria. NCLAT, however, is still stuck with a nic.in website, and should be changing it soon.

Signs of a Happy Ending, Coming Soon?

All does not seem bleak, however. Preliminary research suggests that the IPAB may well be on its way to rectify its earlier errors and obtain a domain name ending in gov.in. The search engine on the government registry’s website reveals that the domain name ‘ipab.gov.in’ is currently unavailable, with the IPAB being the registrant organisation. Further, a domain name can only be auctioned away voluntarily, which may indicate that the auction of ‘ipabindia.org’ was a deliberate move to bring IPAB’s website within the confines of GIGW 2.0. One can only hope that this will materialise in the near future.

But would this mean that all problems solved? Perhaps not. The owner of the domain name ‘ipabindia.org’ now has the ability to create email addresses such as registrar@ipabindia.org, along with the legitimacy that IPAB has granted that domain name by using it for 3 years. This leaves the door open for potential for misuse in the future.

PS: It is perhaps fitting that, in all of this mess, a government website suggests that the domain name of IPAB’s current website is actually ipabindia.in (and not ipabindia.org). This domain name is also owned by the IPAB.

H/T: Huge thanks to Kumar Panda for providing invaluable leads in this sleuthing exercise.

Image from here. 

Image from here

On 8th August, the Single Bench of the Delhi High Court vacated the interim orders granted in favour of AstraZeneca (‘plaintiff’) preventing Micro Labs, Natco Pharma and Dr. Reddy’s Laboratories (‘defendants’) from selling, marketing or dealing with TICAGRELOR (an effective platelet aggregation inhibitor) or any other product violating the plaintiff’s registered patents- IN 907, IN 984 and IN 674. The case relates to two important issues, namely, selection patents and the difference between coverage and disclosure in a patent. The interim applications dealt with in the instant case were IA 3986/2018 in CS (Comm.) 749/2018, IA 4771/2018 in CS (Comm.) 792/2018, IA 9332/2018 filed in CS (Comm.) 1023/2018 filed by the plaintiffs, and IA 5096/2018 in CS (Comm.) 749/2018 filed by the defendants seeking vacation of the interim orders.

Background

TICAGRELOR is a platelet aggregation inhibitor produced by AstraZeneca which is prescribed to patients who have suffered a recent heart attack or unstable angina (chest pain) for reducing the chances of another heart attack or stroke. According to the plaintiff, TICAGRELOR was first approved in the US in 2011 and is being marketed by the plaintiff under the trademark, BRILINTA. In India, the plaintiff received drug regulatory approval in May 2012 and was commercially launched in India in October 2012 as BRILINTA and AXCER.

In 2018, the plaintiff received information from various sources that the defendants were planning to launch generic versions of TICAGRELOR in India and accordingly filed patent infringement suits. In 2018, the Delhi HC passed orders in the plaintiff’s interim applications restraining the defendants from selling, marketing or dealing with TICAGRELOR tablet or any other drug violating the plaintiff’s registered patents- IN 907 (‘species patent’), IN 984 (‘polymorph patent’) and IN 674 (‘formulation patent’). The plaintiff alleged that the defendant’s drug TICAGRELOR fell within the scope of IN 907 (published in 2005) and IN 984. Further, the plaintiff argued that the finished formulation of TICAGRELOR was covered within the scope of IN 674. Micro Labs’ petitions for revocation of IN 907 and IN 984, are pending before the IPAB.

Defendants’ Arguments

All the defendants in the instant case filed similar arguments. The salient arguments are as follows:

1. The plaintiff’s patent IN 229 is the genus patent which expressly covers and discloses TICAGRELOR and has expired on 14.7.2018.
2. Form 27 filed in India for IN 229 expressly refers to BRILINTA and AXCER being covered by IN 229.
3. The plaintiff has deliberately failed to mention that the foreign patent equivalents of the plaintiff’s Indian patents have been invalidated in contested proceedings in China, Europe and South Korea. In doing so, the plaintiff has failed to comply with section 8 of the Indian Patents Act which requires intimation to the Indian Patent Offices of the status of all corresponding foreign applications.
4. The instant case is a “textbook instance of patent ever-greening by the plaintiffs”- As the genus patent IN 229 has already expired, any party is free to manufacture or sell generic versions of TICAGRELOR in India. By obtaining patents (IN 907 and IN 984) on the same Markush, namely, TICAGRELOR, the plaintiff has sought to illegally extend the monopoly granted under IN 229.
5. The plaintiff’s patents- IN 907, IN 984 and IN 674- lack novelty and are obvious.
6. The plaintiff is creating a false dichotomy between “coverage” and “disclosure” wherein they argue that IN 229 generically covers but does not specifically disclose TICAGRELOR; this amounts to artificially extending the monopoly under the expired patent 229 through subsequent patents on TICAGRELOR.
7. The plaintiff’s patents are liable to be revoked under section 3(d) because they do not exhibit any enhanced therapeutic efficacy over the known substances disclosed in IN 229.

Plaintiff’s Arguments

The plaintiff rebutted the defendants’ arguments on the following grounds:

1. The genus patent (IN 229) was published on 2nd February 1999 after the priority date of the species patent (IN 907). Therefore, the genus patent does not constitute prior art for evaluating novelty of the species patent.
2. There is no specific or enabling disclosure of TICAGRELOR in the genus patent. The genus patent only discloses (1.5×1020) compounds one of which was later discovered to be TICAGRELOR. The defendants’ argument that TICAGRELOR can be derived from the general Markush formula in the genus patent is untenable and a case of hind sight basis (i.e. cherry picking based on ex post facto knowledge).
3. Mere structural similarity is not sufficient to trigger section 3(d). The plaintiff relied on the affidavit of expert, Dr. Robert Riley, to argue that TICAGRELOR has demonstrably greater therapeutic efficacy than IN 229, owing to TICAGRELOR’s vastly superior metabolic stability and a far greater availability of the drug in the body.
4. On non-disclosure of various revocation patents outside India, the plaintiff argued that the equivalent of IN 907 was revoked in China but an appeal was filed by the plaintiff; the appeal implies an automatic stay of the operation of the revocation order and does not amount to non-disclosure.
5. Form 27 only states that the genus patent has worked through TICAGRELOR and does not imply that TICEGRELOR has been disclosed in IN 229. It is possible that multiple patents cover a single product.
6. The plaintiff relied on Novartis v. UOI to argue that coverage (for the purpose of infringement) will not be granted by the court unless a specific disclosure has been made in the patent. However, this does not mean that disclosure is equivalent to coverage.

Court’s Analysis

Noting that the defendant’s claims challenged patentability of the plaintiff’s invention, the court stated that the issue of patentability of pharmaceutical inventions is highly technical and a mixed question of fact and law. Therefore, the court would rely on expert evidence to determine this issue (citing Merck v. Glenmark Pharmaceuticals (2015) and Martin F.D’Souza v. Mohd. Ishfaq (2009)). The court then proceeded to examine the claims made by the parties.

Statement of Working in Form 27 as Proof that TICAGRELOR is Disclosed in the Genus Patent

The court found that the plaintiff had declared TECAGRELOR as the patented invention in Form 27 filed for the local working of patented inventions of IN 229, IN 907, IN 984 and IN 674. In Form 27 for all the above patents, the plaintiff had stated the same quantum of sale of BRILIANTA and AXCER.

The court also referred to a litigation in the US by the plaintiff against Mylan Inc. to enforce US Patent 6251910 (equivalent of IN 229). In this litigation, the plaintiff had stated that dealing in TICAGRELOR was in breach of the US Patent 910.

The court rejected prima facie the plaintiff’s argument that although the genus patent had worked through TICAGRELOR, TICAGRELOR was not disclosed in 229. The court relied on Novartis v. UOI wherein the SC rejected the dichotomy between coverage and disclosure in a patent; the SC in Novartis held that such a dichotomy negated the fundamental rule underlying the grant of patents.

Suppression of Material Facts by the Plaintiff Related to the Genus Patent

The court found that the plaint did not disclose important information regarding IN 229, especially Form 27 for IN 229 and the US court proceedings instituted against Mylan. Further, it was only in response to the defendant’s arguments that the plaintiff had stated that IN 229 was worked (although not disclosed) through TICAGRELOR.

The court held that this was a case of clear omission of mentioning important facts in the plaint.

Section 3(d) – Lack of Proof of Enhancement of Known Therapeutic Efficacy for the Suit Patents

The court found that the plaint was completely silent about any enhancement of known therapeutic efficacy for the suit patents. The court then examined the affidavit of Dr. Robert Riley- the court found that while the affidavit stated that the species patent had some advantages over the genus patent, the fact that both IN 907 and IN 229 could be used as platelet inhibitors pointed to a prima facie finding that the suits were not altogether new or unconnected to IN 229.

The court relied on Novartis v. UOI wherein the SC held that only those properties of a drug which directly related to therapeutic efficacy were relevant in a case involving section 3(d).

The court found that the plaintiff’s argument that the suit patents had advantages such as lower does and increased metabolic stability did not prove enhanced therapeutic efficacy of the suit patents over IN 229.

No Suppression of Material Facts under Section 8 – Information and Undertaking Regarding Foreign Applications

On the issue whether the plaintiff had failed to disclose relevant patent revocation proceedings in foreign jurisdictions, the court was of the opinion that the plaintiff had not suppressed material facts. The court accepted the plaintiff’s submission that as the revocation orders had been appealed by the plaintiff, this implied an automatic stay on the revocation order.

According to the court, the determining factor when deciding whether the court should continue the interim injunction granted in a patent infringement case was whether the defendant had raised a credible challenge to the validity of a patent held by the plaintiff (citing F. Hoffman-LA Roche v. Cipla (2015)).

The court found that in the instant case the defendants had raised a credible challenge to the validity of the patent on various grounds including section 3(d). Accordingly, the court set aside the interim injunctions against the defendants.

Hat tip to Mr. Sandeep Rathod for bringing this important development to our notice!

[Update: An appeal against the Single Bench order has been filed in the Division Bench]

A recent decision by Justice Prathiba Singh of the Delhi High Court, in the case brought in by Novartis AG against Natco this year, reiterates the black letter law regarding non-maintainability of infringement actions in respect of unregistered or revoked patents.

Section 62(2) read with Section 11A(7) of The Patents Act, 1970 provides that “No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of publication of the application for restoration of the patent.”

Justice Singh, in para 8 of the judgement notes:

The fact that no infringement action is maintainable in respect of an unregistered or revoked patent is further clear from a reading of Section 62(2) and Section 11A(7) of The Patents Act, 1970. Even if a patent is not renewed, no infringement action would lie. Similarly, once the patent is published, no infringement action can be filed till the patent is granted, though damages can be sought with effect from the date of publication.  Thus, the continuation of an injunction, even for a day, would not be permissible once the patent is revoked.

Procedural History

Novartis AG had filed a suit for permanent injunction, damages, rendition of accounts, etc. in respect of its granted patent, Indian Patent No. 276026 titled ‘Novel Pyrimidine Compounds and compositions as Protein Kinase Inhibitors‘ (hereinafter, ‘026 patent). Novartis’ case is that it had been granted the ‘026 patent for a novel and inventive compound Ceritinib.  This is a drug meant for treatment of non-small cell lung cancer.  The ‘026 patent was filed as a PCT application claiming priority since 2007, and was granted on 28.09.2015.

Natco filed a post grant opposition within the statutory period under Section 25(2) of The Patents Act, 1970. Initially, the Opposition Board gave a favourable opinion in Novartis’ favour, but later Natco produced additional documents because of which the Board ultimately revoked the patent on 16.08.2019 on the grounds that the ‘026 patent lacked novelty (in view of disclosure in patents IN 240560 and IN 232653).

Taking note of the revocation of the patent, the court held:

…[R]ights in a patent are only for the life of a patent which remains granted and has not been revoked. The manner in which patent rights operate is that they are merely statutory rights and there are no common law rights in patents. Patent infringement actions are maintainable only in respect of granted and live patents.

The fact that no infringement action is maintainable in respect of an unregistered or revoked patent is further clear from a reading of Section 62(2) and Section 11A (7) of The Patents Act, 1970. Even if a patent is not renewed, no infringement action would lie. Similarly, once the patent is published, no infringement action can be filed till the patent is granted, though damages can be sought with effect from the date of publication. Thus, the continuation of an injunction, even for a day, would not be permissible once the patent is revoked.

This is a good decision that clearly sets out proper application of the black letter law.