There have been two pieces on this blog about Carl Malamud and Andrew Lynn’s JNU data depot project and whether it violates Indian copyright law. While Dr. Arul George Scaria argued that it doesn’t, and argued that section 52(1)(a)(i) of the Copyright Act, 1957 would protect this project, the indefatigable Prashant Reddy argued otherwise. The debate needs more hard facts on how the data depot acquired the data to decide this way or that, but I would think, making certain assumptions based on the available material, Dr. Scaria is right – JNU’s data depot is not infringement of copyright in India. Dr. Scaria has dealt with the policy arguments, and has made a passionate case for its legality. I will attempt to address some textual arguments in favour of the depot, and, hopefully, provide an answer to Reddy’s objection.

There are three steps in this data depot:

• A computer program, presumably, crawls databases that JNU has legal access to, and downloads papers on to the hard disks of the data depot.
• Researchers run TDM programs on this data, without actually reading any of the text.
• Researchers use results of the TDM to draw results for their research.

It is clear that (ii) and (iii) involve no copyright issues. Under section 51 of the Act, it is only infringement to do something that the owner of the copyright is exclusively given the right to do. The owner of the copyright is not given an exclusive right to run TDM programs on his works, or to write research papers based on his works. So, the only issue can arise from (i).

Section 14(a) lists the rights available to the owner of a copyright in a literary work. The relevant right in this case is the right, in sub-clause (i) to “reproduce the work in any material form including the storing of it in any medium by electronic means”. The structure of this sub-clause, and the use of “including” suggests that the words “storing of…” are a subset of “reproduce the work in any material form”. The words “storing of…” only clarify what is already contained in the first part, and do not expand it. Hence, the term “material form” will qualify even storing by electronic means.

The Madras High Court in Daily Calendar Bureau v United Concern (AIR 1967 Mad 381) has held that “material form” would mean a “tangible form”. The judgment even quotes with approval the definition of “reproduce” from the Shorter Oxford Dictionary which states, “The action or process of building again before the mind in the same form.” In the context of electronic storage, it must mean that the work, being the paper, must be accessible to be read, not merely mined, for only a readable copy would be a “reproduction” of the work. The data depot does not allow reading of the papers. The article in Nature clarifies that researchers can only run TDM programs on the papers, but not access the papers themselves. While this might amount to “storing… by electronic means”, it will not amount to storing in “material form”, as argued above.

Even if this argument fails, section 52(1)(a)(i), as noted by Dr. Scaria, would apply. Reddy argues that this clause applies only to “personal” or “private” research and not to a depot being made available for the “public”. This argument is flawed because “personal” and “private” qualify the use of the works themselves, and not the making available of the works. The works are not “used” until there are actually trawled by TDM programs for research.

Our old librarians manually trawled journals and created index cards that researchers used for finding papers that were relevant to their research. Even in public libraries, that would not amount to “public” use, because the librarian is not “using” the work. The data depot is one step removed from even an index card. It allows the researcher to run data mining programs on the papers – it does not even allow access to the papers. Malamud or JNU are only facilitators of the research and are not researchers themselves. As long as the research in steps (ii) or (iii) is “private” or “personal”, the fact that step (i) creates a publicly accessible data depot does not make a difference.

In the Delhi University Photocopying case, the Delhi High Court chose a wider reading of the exceptions under section 52 in order to promote academic interests. I believe similar considerations must apply to the data depot as well.

Image from here

A recent stand-off between TikTok and ShareChat, two major online social media platforms in India has brought to fore several issues and inconsistencies in India’s intermediary liability regime.

On August 23, it was reported that ShareChat, the ostensibly ‘homegrown’ social media app, complied with certain takedown notices sent by TikTok over content which had previously been shared on TikTok, claiming it had ‘exclusive rights’ over such content, and it was being uploaded and shared without authorisation on ShareChat. On August 27, it was reported that ShareChat had written to MEITY, claiming that TikTok’s actions and claims of ‘exclusivity’ over content on its platform were inconsistent with its status as an intermediary under the Information Technology Act, which TikTok denied in a statement. According to a report by Economic Times, ShareChat asked the government to “clarify the intermediary liability status of platforms engaging in such practices.”

Subsequently, the issue appears to have been taken up by government officials as well as in parliament, with questions being raised over TikTok’s takedown notices as well as dredging up issues over its ownership and control by chinese companies, its security practices as well as its content moderation efforts.

The dispute raises a number of legal issues which it is important to consider at this stage, not just for TikTok and ShareChat, but for the state of platform regulation across India. It is also important to clarify important aspects of India’s intermediary liability regime.

There are a few distinct forms of intermediary regulation in India. The foremost and broadest of these is located within the Information Technology Act, particularly under Section 2(w) read with Section 79. This is also the law relevant to our analysis.

As per these sections, an intermediary is defined as per the functions it serves for specific ‘electronic records’. As per Section 2(w), an ‘intermediary with respect to any particular electronic records, means any person who on behalf of another person receives, stores or transmits that record or provides any service with respect to that record and includes …’ (emphasis mine)

Under Section 79, which provides exemptions or ‘safe harbour’ from liability for ‘third party information’ under certain circumstances. These circumstances include where “the intermediary does not– (i) initiate the transmission, (ii) select the receiver of the transmission, and (iii) select or modify the information contained in the transmission.” ‘(emphasis mine).

‘Transmission’ is not defined under the IT Act.

To go back to the present dispute, the broad question to be answered is – does TikTok’s claims of ownership or ‘exclusivity’ over certain content on its platform change its status as an intermediary qualified for the exemptions under Section 79? In my opinion, the statements made by certain lawyers and politicians that it does so are incorrect and misread the applicable law.

The language of the IT Act, which I have emphasised above, explicitly limits the functional qualification of intermediaries to a particular electronic record or to a specific transmission. The implication of this is that an ‘intermediary’ under the law should not be understood a general broad category applicable across all of its functions, but a legal category applicable when an entity is dealing with a particular ‘electronic record’ in a particular manner.

This would mean, therefore, that TikTok’s claims of copyright or control over content may exclude it from claiming safe harbour exemptions for the specific pieces of content over which it is claiming to exercise exclusive control (either as a copyright holder or on behalf of the copyright holder), on the grounds that such content no longer qualifies as ‘third-party information’, or that it is ‘selecting or modifying’ the transmission. If such content includes unlawful content, TikTok may be found liable under other applicable laws. However, on a textual reading of the law, this would not generally make TikTok liable for all content on its platform over which such control is not exercised.

This conceptual obscurity about the scope of Section 79 is not only seen in media statements but also increasingly present in various judgements, including otherwise well-reasonsed judgements of High Courts. Moreover, that TikTok may still claim intermediary safe harbour is not to downplay that the platform has not adequately addressed accusations of displaying a lack of responsibility over unlawful content that it hosts – including child pornography and hate speech. The law as it stands – which requires judicial determinations over the unlawfulness of every specific piece of content, is clearly inadequate for regulating manifestly unlawful speech at scale which occurs on platforms.

What this does point to is the need to reframe and broaden the discussion around intermediary liability and platform regulation. As I have argued elsewhere, framing the discussion around present ideas of ‘liability’ for intermediaries is insufficient for governing contemporary content sharing platforms. What we need to work towards is a form of platform regulation which ensures that platforms are more transparent and accountable to their users and to the state, including perhaps the creation of a sectoral regulator able to audit the platform’s adherence to its codes of conduct and due processes when dealing with illegal content. Until the law is amended, however, it would be difficult to claim that TikTok is generally liable for the third-party content hosted over its platform.

Image from here

When FaceApp took the Internet by storm, there was furor over its broadly worded privacy policy. FaceApp is not alone, as there is similar backlash against Facebook’s vaguely worded terms. For instance, take a look at this term in Facebook’s policy:

“Permission to use your name, profile picture, and information about your actions with ads and sponsored content: You give us permission to use your name and profile picture and information about actions you have taken on Facebook next to or in connection with ads, offers, and other sponsored content that we display across our Products, without any compensation to you.”

The terms of service of FaceApp state:

“You grant FaceApp a perpetual, irrevocable, nonexclusive, royalty-free, worldwide, fully-paid, transferable sub-licensable license to use, reproduce, modify, adapt, publish, translate, create derivative works from, distribute, publicly perform and display your User Content and any name, username or likeness provided in connection with your User Content in all media formats and channels now known or later developed, without compensation to you.”

These terms are not unique to FaceApp. Rather, other companies, including facial recognition services and Facebook include similar terms. In essence, these terms invoke the right of publicity and its transferability. The right of publicity grants individuals control over commercial use of their name, image or likeness. There is confusion regarding its theoretical foundation. In this post, I would argue that the right of publicity is a personal right and hence, not alienable and non-transferable under Indian law.

Delhi HC dealt with the first notable case, ICC Development (International) v. Arvee Enterprises. The plaintiff, ICC Development, organizer of ICC World Cup, had filed a suit to own and control all commercial rights relating to ICC events. It contended that due to widespread publicity, ICC World Cup had acquired a “persona” of its own in ICC cricket events. It alleged that the defendant, Phillips India misrepresented their association with plaintiff in their advertisements and was commercially exploiting the “persona” or “identity” of the plaintiff to sell its goods.

The crux of the argument, regarding personality rights was that the plaintiff had developed a “personality” with respect to an event and had transferred these rights to its sponsors. Thus, the defendant could not commercially exploit and free ride onto the identity of the plaintiff. The Court rejected this. It held that non-living entities are not entitled to personality rights for twin reasons. First, non-living entities enjoy adequate protection under other laws. Second, including non-living entities violates the understanding of “persona”. The Court referred to Black’s Law Dictionary and New York law to restrict the meaning of “persona” to living entities.

Further, the Court held, “The right of publicity has evolved from the right of privacy and can inhere only in an individual or in any indicia of an individual’s personality like his name, personality trait, signature, voice, etc… Any effort to take away the right of publicity from the individuals, to the organizer {non-human entity} of the event would be violative of Articles 19 and 21 of the Constitution of India. No persona can be monopolized. The right of publicity vests in an individual and he alone is entitled to profit from it.”

The Court established the right of publicity as a personal right, which means that its diginitarian foundations do not allow it to alienated or held by non-living entities. This is an important conclusion, as it acknowledges the illegality of all terms and conditions that treat the right of publicity as property.

In contrast, in DM Entertainment v. Baby Gift House, Daler Mehndi had assigned his personality rights to DM Entertainment. The Delhi HC recognized this transfer as he had a “quasi-property” right in his persona to protect his “economic” interests. Interestingly, the Court also held, “The right of publicity can, in a jurisprudential sense, be located with the individual’s right and autonomy to permit or not permit the commercial exploitation of his likeness or some attributes of his personality.”

Thus, the Court held that both, right of publicity—as property and privacy—co-exist.

On one hand, it held that the transfer was justified to protect economic interests. On the other hand, it rooted right of publicity in autonomy, and not transferable. It would be quite paradoxical if a right inhered in autonomy allowed property rules to destroy itself.

In Titan Industries v. Ramkumar Jewelers, the plaintiff had sued for the unauthorized use of their advertisement in relation to diamonds, which Mr. Amitabh Bacchan and Ms. Jaya Bacchan were promoting. These celebrities had assigned their personality rights to the plaintiff. On plaintiff’s standing to sue on behalf of the celebrities, the Court delved into a succinct discussion. It held that plaintiff had standing over an exclusive license agreement with the celebrities. Interestingly, the Court referred to a paragraph in Haelan Laboratories v. Topps Chewing Gum, which has recognized a right of publicity independent of privacy to protect “economic” interest in personality rights. Haelan created a common law right of publicity to validate the exclusive agreement between plaintiff and celebrity basketball players who were promoting the product.

With these rulings, the Delhi HC drew a trajectory as US. In essence, it recognized a “property” interest in personal rights, without explicitly distinguishing the right of publicity from its alignment with privacy, as in Haelan.

It was misguided to create a distinct right of publicity. First, ICC clearly held that right of publicity was a facet of privacy. Second, ICC was not contradicted by subsequent cases, which created a distinct publicity right without ground. For instance, D.M. Entertainment concurred with ICC on jurisprudential basis whereas Titan Industries cited a paragraph from Haelan Laboratories, an American case, to express dissent! In Puttaswamy, Kaul J. affirmed ICC. His obiter was restated in Puttaswamy (2018).

Further, it was misguided to create a co-existing right of publicity and right of publicity as privacy. This is because the latter is a personal non-alienable right whereas, as property it is not. This creates to a contradiction. If the right of publicity were a “personality right”, it cannot be transferable, especially after the Puttaswamy ruling. In Puttaswamy, the Court had ruled that right of privacy is rooted in diginitarian foundations, and hence, not a property right. Since the US recognizes privacy as a property right, the alienability of publicity is still at issue. To this, scholars have suggested that while privacy is a property right, it is not a transferable one. But, in India, there is no scope for discussion. The right of publicity is rooted in privacy, and hence cannot be alienable. Thus, other cases are outliers in the overall framework of treating publicity as a non-transferable personal right, which is capable of protecting both economic and non-economic interests.

The alienability of publicity has been severely criticized. It has been argued that the approach in Haelan—to create an assignable right in order to protect commercial interests—is itself unrequired. Further, this approach has created a class of publicity holders. This class benefits from the economic exploitation of human data, whereas identity holders are unable to profit. In the digital age, this unexpected outcome is even more exacerbated. It also lacks any theoretical foundation, since a “publicity holder” can enforce the rights of an identity holder, even against the latter! Attachment of a property label also disengages the foundation of publicity and privacy.

To this effect, any term of service that treats publicity as an assignable property right is against the law, regardless of India’s lack of a data protection law. Thus, it is interesting that a largely ignored field of IP is not only, not a field of property law but also capable of serving us well in the digital age, where all else might fail!

Last week, Rishabh Mohnot had reported that the IPAB’s website (ipabindia.org) was malfunctioning. This week, Rishabh wrote a report on the reasons for this. In his report, he states that the domain name was voluntarily auctioned to a private party on 2nd May this year! Further, the domain name, ending with ‘org’ has flouted the Guidelines for Indian Government Websites (GIGW) 2018, under which a Government website must possess the secondary domain name ‘gov’. Thus, he suggests that the auction might be a sign that IPAB is rectifying its mistake. There is sufficient evidence to corroborate this, as ‘ipab.gov.in’ is currently unavailable with the IPAB being the registrant organization. However, he suggests that the buyer of the domain name has the ability to create email addresses and the legitimacy that IPAB has granted to it by using it for 3 years.

Devika Agarwal discussed the Delhi HC’s decision to vacate an interim order restraining the defendants, Micro Labs, Natco Pharma and Dr. Reddy’s Laboratories from violating the plaintiff, AstraZeneca’s registered patent; TICAGRELOR sold under trademarks BRILINTA and AXCER. The defendants were planning to launch generic versions of the drug and hence, the dispute. The first issue was whether Form 27 covered BRILINTA and AXCER under IN 229. The court relied on Novartis to reject the artificial dichotomy between coverage and disclosure in a patent, as it would evergreen the patent. The second issue was whether the plaintiff had suppressed material facts. The court ruled held that the plaintiff had omitted to disclose important facts. The third issue, which was deliberated upon, was whether the suit patents were liable to be revoked under Section 3(d). The court held that there was no proof on enhanced therapeutic efficacy of the suit patents. Both the species and the genus patent could be used as platelet inhibitors. Thus, the therapeutic efficacy of the suit patents over IN 229 was not proven and the court ruled in favor of the defendants. The fourth issue was whether the plaintiff had failed to disclose relevant patent revocation proceedings in foreign jurisdictions. The court held that the plaintiff had not done so, as the plaintiff had appealed the revocation, which was an implied stay on the order.

Rajiv K. Chowdhury reported on Novartis AG v. Natco, where the Delhi HC clarified the black letter law on Section 62(2) read with Section 11A(7) of the Patents Act 1970, whereby which no suit for infringement lies for a revoked patent. This includes the period between its revocation and the date of publication of application for its renewal. It also includes an unregistered patent until its grant.

In an interesting piece, Swaroop Mamidipudi wrote on the JNU data depot report and whether it violates the Copyright Act, a subject on which there have been two contrary blog posts (which can be found here and here). In his post, he makes textual arguments in favor of the depot. The ‘issue of law’ was whether the step where a computer program that crawls through databases that JNU has access to, violates copyright law. He answers this in the negative. Firstly, he contends that Section 14(a)(i) means, “storing by electronic means” is a subset of “reproduces the work in ‘material form’.” With reference to Daily Calendar Bureau v. United Concern, he argues that “storing by electronic means” must be readable for it to qualify as reproduction. In the data depot, the work is mined but not readable and hence, may be “storage by electronic means” but not reproduced within the meaning of Section 14(a)(i). Secondly, in an arguendo, he contends that the argument that Section 52(1)(a)(i) applies to private or personal and not public research is flawed, since the former qualifies the use of the works themselves, and not making the work available. Lastly, he supports a wider reading of the exceptions under Section 52 in order to promote academic interests, like the court did in the Delhi University Photocopying case.

SpicyIP Announcements

This week, Swaraj Paul Barooah informed us of the Shamnad Basheer IP/Trade Fellowship with Texas A&M University School of Law, in collaboration with the Association for Accessible Medicines. The selected fellow will get the coveted opportunity to 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 and evaluates the role of the Special 301 submissions of the Pharmaceutical Research and Manufacturers of America to the Office of the U.S. Trade Representative (USTR). The deadline to apply is 15^th September 2019.

Other Developments

Indian

Judgments

Apollo Hospitals Enterprise Limited v. Sai Apollo Pharmacy – Madras High Court [August 6, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademarks “APOLLO” and “APOLLO PHARMACY” by using a deceptively similar mark “SAI APOLLO PHARMACY” in respect of pharmacy services. The Court observed that the Plaintiff was the registered proprietor of the mark “APOLLO PHARMACY” and that the Defendant was using the Plaintiff’s mark in a similar font by reducing the size of the prefix “SAI”. Therefore, the Court concluded it to be a clear case of infringement of the Plaintiff’s marks

D. Sunil Kumar Reddy v. Lodhi Calcium Products– Madras High Court [August 8, 2019]

The Court granted an ex parte decree of permanent injunction restraining the Defendant from infringing and passing off of the Plaintiff’s mark “ASIAN CEMENT” by adopting an identical mark in respect of cement. In arriving at the decision, the Court noted that the Plaintiff was the registered proprietor of the mark. The Court further noted that the Plaintiff had a substantial turnover and had appointed dealers in various states, which indicated its permanent reputation and goodwill. After comparison of the Parties’ cement bags, the Court concluded that the Defendant had adopted an identical mark to the Plaintiff’s mark with a malafide intention.

A.D. Padmasingh Isaac v. M/s. Kalyan’s Enterprises – Madras High Court [August 14, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “AACHI” by adopting an identical mark in respect of the sale of Kulambu chilli powder. The Court observed that even the get-up and colour scheme of the Defendant’s packaging were deceptively similar to that of the Plaintiff, thereby constituting a clear case of infringement of trademark.

M/s. Syed Ibramsha Cottage Industries v. M/s. Jayanthi Agencies – Madras High Court [August 16, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “ANIL BRAND” by adoption of the mark “GOLD WINNER” in respect of the sale of stationery. After comparison of the Defendant’s packaging with that of the Plaintiff, the Court observed that the get-up and colour scheme of the Defendant’s packaging were deceptively similar to that of the Plaintiff, thereby constituting a clear case of infringement of trademark.

Castrol Limited v. Sun Petroleum – Madras High Court [August 21, 2019]

The dispute between the Parties arose on account of the Defendant’s alleged infringement of the Plaintiff’s mark “CASTROL” by using a deceptively similar mark in respect of lubricants. The Defendant submitted an affidavit through which it claimed that it had stopped carrying on the retail business of selling lubricants in 2009 and was not infringing the Plaintiff’s mark anymore. In light of the affidavit, the Court disposed off the case and noted that the Plaintiff could file a fresh case if the Defendant infringed its mark in the future.

Unilever Plc and Another v. Royal Ice Cream – Calcutta High Court [August 26, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “CORNETTO” by adopting a deceptively similar mark “KORNETTO” in respect of ice-creams and frozen desserts. The Court observed that the Defendant’s adoption of the deceptively similar mark was prima facie infringing in nature and appointed a Special Officer to inventorize the infringing products at the Defendant’s godown.

Emami Limited v. Shree Baidyaraj Ayurved Bhawan Private Limited  – Delhi High Court [August 26, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s registered trademark “ZANDU PANCHARISHTA” by using a deceptively similar mark “BAIDYARAJ PANCHARISHTA” in respect of medicinal ayurvedic preparations. The Court observed that the Plaintiff was the registered proprietor of the mark and that the mark was not generic in nature as it had no connection to its use for curing digestive ailments. Moreover, the Court did not find any strength in the Defendant’s argument that the mark was registered by third parties.

Warner Brothers Entertainment Incorporation v. Moviesflix.net and Others – Delhi High Court [August 26, 2019]

The Court granted a decree of interim injunction restraining the Defendants from infringing the Plaintiff’s copyright in its cinematograph films by unauthorized communication of such works through their domain names, and by further allowing the viewers to make unauthorized copies of such works. In arriving at this decision, the Court noted that there was a prima facie case in favour of the Plaintiff along with the balance of convenience, and irreparable harm would be caused to it if an injunction was not granted in its favour. Accordingly, the Court directed the telecom service providers to block the Defendants’ websites. Further, the Court referred to its previous decision in UTV Software Communication Limited to observe that the Plaintiff could implead mirror sites through mere filing of an affidavit with sufficient supporting evidence of the same.

Hindustan Unilever Limited v. Rohit Singh– Calcutta High Court [August 26, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s mark “SURF EXCEL” by using the mark “SHINE PLUS EASY WASH” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the mark and the Defendant had adopted a colourable and deceptive imitation of the same. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Hindustan Unilever Limited v. Vinod Harde – Calcutta High Court [August 26, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s mark “SURF EXCEL” by using the mark “NINE SHINE” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the mark and the Defendant had adopted a colourable and deceptive imitation of the same. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

News

• Copyright Office clarifies that no license is required for utilizing sound recordingsin the course of any marriage related function.
• Writer John Charles accuses makers of the film ‘Kaappaan’ of plagiarism and moves Madras HC for an interim injunction.
• Chennai court dismisses film director KP Selva’s plagiarism charge against the makers of the film ‘Bigil’; also denies permission to file a fresh suit before the Madras HC.
• Amazon moves Supreme Court challenging Delhi HC’s interim order that restrained various e-commerce platforms from enabling sale of products of direct selling companies without their consent.
• Kalyan Kankanala argues that data mining from JNU Data Depot is ‘fair and enabling’.
• Bengaluru based artist, Shilo Shiv Suleman accuses the makers of the film ‘Saaho’ for copying her 2014 artwork ‘Pulse and Bloom’ for the film’s poster.
• Upon Reliance Jio Infocomm’s petition, Corporate Affairs Ministry directs three companies, Jiokind Healthcare, Jio Rich and Doctor Jio Healthcare to change their names within six months.
• Pakistani actress Mehwish Hayat alleges that Alia Bhatt’s Prada song is copied from Pakistani song ‘Gore rang ka zamana’.

International

• USPTO invites public comments on patent-related issues regarding AI inventions.
• Film and music companies protest against Copyright Amendment Bill in South Africa, urge the President to not sign it; others hail it as a move towards increasing access to education.
• China’s revised drug law removes generic drugs approved in other countries but not in China from the category of fake medicines; may open door for Indian generic medicines.
• You Tube comes under mounting pressure, as South Korea cracks down on massive copyright infringement.
• “Baby Shark” song owner Pinkfong faces a copyright infringement lawsuit in South Korea — based on a public domain song.
• Sony, Warner, UMG file a massive copyright infringement lawsuit against RCN accusing it of not doing enough to prevent piracy.
• In the first half of 2019, China accounts for 70% of global blockchain patent applications.

Image from here

Singapore’s New Trademark App

The Intellectual Property Office of Singapore has recently launched an app called ‘IPOS GO’ available on the Apple App Store and the Google Play Store. The app provides various on-the-go trademark services, which include even direct filing of trademark applications (making this the world’s first mobile app for enabling the filing of trademark applications). 

The various functions that the app can perform are:

“Use IPOS Go to:

• Apply for and renew trademark registrations in Singapore*
• Search for similar trademarks and other registrable IPs in Singapore
• Be notified of application status updates and read correspondences from IPOS*
• View and manage portfolio of previous applications*
• Save and retrieve drafts of trademark applications*”

 All the functions that have an asterisk symbol require users to login through either a ‘Singpass’ or a ‘Corppass’ account. While the Singpass (for personal accounts) appears to be available only to Singapore citizens/ permanent residents, certain identified pass holders or a work permit holder, the Corppass appears to extend to foreign registered entities as well.

The IPOS has also made a short animated video available here, which briefly shows how the app works and how the process of filing a trademark is now easy peasy, lemon squeezy! The person applying for a trademark just needs take a picture of the proposed trademark, upload it on the app and then select the industry and relevant goods / services. The app then shows the applicant a list of potentially similar marks, on the basis of which the applicant can either modify her mark or proceed to submit her application. The app also notifies the applicant of the progress of the mark.

The search function does not require users to login and is very easy to use. The user only has to upload an image (in case of a device mark) or enter the proposed word mark and in a matter of seconds, the app generates results of similar trademarks (in all the classes or only in those classes specified by the user). The search results provide details of the mark, description of the goods / services, name of proprietor, events in relation to the mark and the address of service.

The press release states that the app integrates AI to enhance searches for similar trademarks on the IPOS register, which can prevent applicants from filings trademarks that are too similar to existing ones.

As per new reports, IPOS Go reflects IPOS’ commitment to advance Singapore’s Smart Nation agenda by offering digital innovations that will serve citizens and businesses better.

Trademark Application Process in India

The Trade Marks Rules, 2017 permit applicants to directly file trademark applications. However, in order to apply for a trademark online, the trademark applicant is required to comply with various requirements and engage with poor technology.

The e-filing system only supports specific operating systems i.e. Windows 7 and above and does not support Mac / Linux OS. In order to directly file an application, the applicant needs a digital signature certificate. This certificate is required to authenticate the submission of any form on the e-filing system. Applicants are required to obtain (on paying the prescribed fees) either a class II or class III (issued only on physical verification) digital certificate from a designated certifying authority. There are currently eight such certifying authorities that have been authorised under the Information Technology Act, 2000.

Before filing the application, in order to assess whether there are applications / registrations for similar marks, the applicant has to spend a substantial amount of time conducting a trademark search on the public search tool available here. Each proposed trademark has to be searched in each relevant class, separately. For device marks, the applicant is first required to classify the device into the appropriate Vienna Code and then search each code in each relevant class. There are 29 Vienna Codes with numerous sub-codes and several times, one device mark can fall within 7 to 10 (or more) different Vienna Codes, requiring 7 to 10 separate searches in each relevant class making the process tedious. Also, since this process is time consuming and requires some prior knowledge (in terms of conducting searches in the right classes, the right Vienna codes), applicants either hire trademark agents / attorneys to conduct searches (which increases business costs) or sometimes choose not to conduct any searches (leading to unnecessary objections / oppositions at a later stage).

When it comes to the actual filing, while the form is simple enough, for a business owner / innovator filing an application directly, the process may not be completely intuitive since there are no pre-defined prompts that help applicants define the description of the goods / services to fit within the NICE classification and applicants desiring to file directly may not always be aware of these requirements and may face issues at later stages of their application.

Further, e-filing forms on the website requires patience as the platform works slowly, refreshes if not kept alive for few minutes, the preview and uploading of forms involves navigating through various dialogue boxes etc. which makes the simple process of filing forms unnecessarily time consuming.

Apart from the trademark application process, the general soundness of office actions including objections that are issued by trademark examiners, is questionable, which may be partly due to the complicated search tool. Further, since such office actions involve repetitive actions, an improvement in technology could result in fewer and more relevant objections / oppositions and consequently lesser backlog.

 Technology and the Indian IP Office

The Trade Marks Office has started engaging with technology in the recent past, even if such engagement is limited to recognizing ‘email’ as an actual mode communication for serving notices / examination reports / oppositions, issuing electronic registration certificates and sending email prompts for renewals. The TMR has also introduced hearing through video conferencing and apparently has a mobile app (which doesn’t seem to work). However, the technology used for searches, filings, as well as repetitive administrative functions such as examination of applications and renewals are not user friendly or streamlined.

The Controller General of Patents, Designs and Trademarks appears to be receptive to using AI and has in the past (in August 2018) issued a request for an ‘expression of interest’ for AI and other technologies in patent processing (also blogged about here). However, it has been more than a year but a vendor has not yet been selected, let alone the project being implemented! As of December 2018, there were 10 bidders that were shortlisted (here) and as of August 30, 2019, the IPO has extended the date for submission and other clarifications with respect the RFP and other selection events to later this year.

I had previously co-authored a post with Shamnad on the need to ease trademark and other IP e-filing processes here.

AI Being Used by IP Offices in Other Countries

This article here, provides a summary of how IP offices in other countries use artificial intelligence. The WIPO, for instance, launched a new image search option on its WIPO Global Brand Database. The search technology is powered by AI and appears to be similar to the search tool on the IPOS GO app. However, as reported, the new tool is able to identify combinations of concepts in addition to shape and colour to identify similar trademarks.

China’s National Institute of Intellectual Property and the Norwegian Industrial Property Office have also started using AI-image search tools. The Instituto Nacional de Propiedad Industrial, in Chile, has been using AI in trademark examinations. Japan is currently considering different ways in which AI can be adopted to ease the trademark prosecution process.

Technology used in India for its trademark prosecution processes stands in contrast to the processes implemented in Singapore and to technologies that have been adopted in other countries. It is time for India to start adopting better technology for streamlining administrative and other repetitive processes.

We’re pleased to announce that The Advanced Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law, Singapore Management University will be co-organising the 5th edition of the annual ‘Asian IP Works-in-Progress Conference’ with School of Law, City University of Hong Kong on January 9-10, 2020. The deadline for submission of paper proposals is October 15, 2019. For further details, please read the announcement below:

5th Asian IP Works-in-Progress Conference [January 9-10, 2020; Hong Kong]

Singapore Management University is pleased to announce that the 5^th edition of the “Asian IP Works-In-Progress Conference” will be held at the School of Law, City University of Hong Kong on January 9-10, 2020. The conference is an initiative of the Applied Research Centre for Intellectual Assets and the Law (ARCIALA), Singapore Management University, School of Law, headed by Professor Liu Kung-Chung. This conference provides an annual forum for IP scholars across Asian economies, to present their research before their Asian peers. The conference also attracts scholars from the United States and European Union.

The initial proposals for the conference will be reviewed by a committee of 15 leading Asian IP scholars. A total of 60 slots are available for presentations on various themes which will be chaired by leading IP scholars from Asian and non-Asian jurisdictions. In line with its mandate to promote and encourage the study of Asian IP law for the betterment of IP regimes in Asia and beyond, ARCIALA will be covering the travel and accommodation requirements of 25-28 Asian scholars.

ARCIALA will cover these costs by offering a total of 25-28 Asian IP Scholar Awards and Young Asian IP Scholar Awards (for PhD and graduate students). It will offer these awards to 3 IP scholars from Southeast Asia sponsored by the School of Law City University, 3 IP scholars from Japan sponsored by an anonymous sponsor, 4 IP scholars from Taiwan funded by Chen & Lin (Taipei), and 4 IP scholars from China sponsored by Sunshine Legal Foundation (Beijing), and 11-14 scholars (depending on available budget) without geographical restriction, who will be sponsored by ARCIALA. Full coverage of return tickets and accommodation of three nights (excluding visa fees) will be provided for the award winners. Colleagues interested in applying for the awards need to submit an abstract with an outline of 800 words. The selected paper proposals will be uploaded and displayed on the ARCIALA website. The awardees will be selected by the review committee.

The details of the conference including the requirements of the proposal and the contact details can be viewed on the website of ARCIALA over here. The deadline for submission is October 15, 2019.

Gandhi Portrait

In response to my piece on the ‘JNU data depot’, I received a couple of emails from Carl Malamud alleging factual inaccuracies in my piece. I invited him to respond to the errors on SpicyIP, in response to which he started calling me abusive names. When I told him, I was going to publish the abusive email on SpicyIP, he apologized and the next day withdrew the apology in another abusive email. He then publicly attacked SpicyIP on Twitter.

 I find it necessary to discuss his backlash on this blog because Malamud likes to market himself as a Gandhian in India. His book on Code Swaraj with Sam Pitroda is all about taking inspiration from Gandhi for a modern- day campaign of civil resistance against the state to democratize access to knowledge for all citizens.

Last year, on Gandhi’s birthday we published an interview of Malamud on SpicyIP, where he unequivocally described himself as a Gandhian. Here’s an interesting quote from Malamud: “I would definitely describe myself as a Gandhian, in the sense of being a student of Gandhiji and trying to learn from his many examples.”

While I was teaching at NALSAR last year, I had organised a lecture by Malamud after he expressed his interest to speak at our university. Once again, he made Gandhi and Gandhian values a part of his lecture.

Whether or not you like Gandhi, you have to admit that he is a very tough act to follow. This was a man who would have chosen death over untruth and who chose the path of non-violence even if he was being physically attacked. There is a reason we call him the Mahatma.

So, imagine my surprise when I received abusive emails from Malamud for critiquing his project on legitimate grounds. But the abusive emails are a minor offence compared to his refusal to confirm whether he had sourced his papers from pirated databases, like SciHub, despite specifically being asked the question by Priyanka Pulla who wrote about his project in Nature.

I flagged this issue in my earlier post but did not delve into much detail. It is however an important issue because a database built from legitimate copies will be viewed very differently in a court of law from a database built from a source like Sci-Hub which has been declared to be a pirated database. I assure you the Google Books case would have ended very differently in the United States if Google had uploaded scanned copies of pirated books rather than legitimate copies stored in libraries. A database built from pirated copies will automatically be copyright infringing because of theories of secondary liability where although the party has not committed the primary act of illegally copying, it has benefited from the same. The same stands true for the DU Photocopy case – the case would have ended very differently if the Rameshwari Photocopy shop was photocopying pirated textbooks instead of legitimate copies from the DU library.

There is no question of a fair dealing analysis in such cases. For example, if Malamud has got the papers for the database from Sci-Hub which has been declared to be a pirated database by multiple courts in the west, there is a strong case of secondary liability against Malamud and JNU. If the source of papers is from a legitimate database, a court will have to examine whether contractual conditions have been violated because most publishers have contractual conditions preventing the use of their copyrighted material in such a manner. I presume this is the reason that Malamud did not launch a similar data depot in the US despite the Google Book case offering legal cover for such a project.

If Gandhi had launched the data depot at JNU, he would have been brave enough to be honest about the source of these papers. A commitment to the complete truth was an integral part of Gandhi’s values, even if it meant facing harsh consequences like a lawsuit for copyright infringement. Gandhi was ready to choose death over being untrue. It is only in testing conditions, that a person’s true commitment to the truth can be tested. Any person can be honest in cases with no consequences.

A second tangential issue that I wanted to comment upon is regarding Malamud’s brand of activism. His venture in JNU has exposed the public university to significant financial risk because JNU and the Government of India has contracts with multiple publishers across the board for accessing databases. I am quite sure that hosting the JNU data depot violates those contracts. The cost of defence, especially in foreign arbitration will be significant and I do not think cash starved Indian universities should be expending their money on such litigation. If Malamud’s intention was to help Indian scientists, he could have silently provided the data depot to JNU without calling a journalist to write about it in the most widely read science journals in the world. But the need for publicity is unfortunately the oxygen of the non-profit world without which it is difficult to raise funds from donor organisations.

Image from here

Indian weddings are an expensive affair- a recent survey reports that 20% of all loans taken by young Indians in 2018-2019 was to fund their wedding expenses! It comes as some respite then for betrothed couples that the Indian Copyright Office has recently clarified (in a Public Notice No. 10-26/2019-CO) that licences are not required for utilisation of sound recordings in the case of marriage related functions.

The clarification pertains to section 52(1)(za) of the Copyright Act. Section 52(1)(za) lays down an exception in copyright for:

“the performance of a literary, dramatic or musical work or the communication to the public of such work or of a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority.

Explanation-For the purpose of this clause, religious ceremony including a marriage procession and other social festivities associated with a marriage.” [Emphasis supplied]

The notice clarifies that use of sound recordings in the course of a religious ceremony including a marriage procession and other social festivities associated with a marriage does not amount to copyright infringement and therefore, does not require a copyright licence.

The copyright exception itself is straightforward, however, it does give rise to some food for thought.

The Public Notice by the Copyright Office is in the nature of a clarification, this means that even prior to the clarification being issued, the legal position was that the use of musical works for any religious ceremony does not require a copyright licence. It seems, however, that this is not how it played out in the real world.

In some cases, wedding venues and event management companies in India insist on fees for paying for copyright licences for music played at weddings or sangeet ceremony. The website of The Wedding Company (a wedding planner in India) lists out the different kinds of licences required for one’s wedding. The website currently states that the music-related licences required for wedding/sangeet ceremony are Phonographic Performance Limited licence or a Novex licence for DJ, and an IPRS and ISRA licence for live performances. It is a common practice for a venue hosting an event (involving use of copyrighted music) to require proof of licence to use the music from the event organiser; this is because under section 51 of the Copyright Act, even a person who permits for profit the use of any place for communication of a copyrighted work to the public such that the communication amounts to copyright infringement, is liable for copyright infringement [emphasis supplied].

Interestingly, I found two instances (here and here) where it was reported as early as April 2018 that copyright licences are not required for weddings and wedding related events. As one of these websites states, this clarification came from DPIIT (then DIPP).

While the Copyright Office’s Notice clearly confirms that there is no requirement for a copyright licence in the course of any marriage related ceremony, some grey areas still remain. For instance, will music played at sangeet (a pre-wedding event in Hindu marriages where the bride and groom’s families sing and dance together) be covered under this exception? In this article, Isha Tewari argues that because of section 52(1)(k), playing of music in sangeet only in an enclosed room or hall (not being a hotel or commercial establishment) or as part of the activities of a non-profit club or similar organisation may be covered. However, I disagree with this view because the clarification has been issued with respect to section 52(1)(za) of the Copyright Act and specifically exempts the communication of a sound recording in the course of any bona fide religious ceremony without placing constraints based on whether the venue in such cases is not for profit. In my opinion, sangeet being “other social festivity associated with a marriage” is covered by the exception.

Thanks to Quora, I stumbled upon an interesting judgment of the Punjab and Haryana High Court in Phonographic Performance Ltd. v. State of Punjab (Civil Writ Petition No.7772 of 2011 (O&M)), a case which involved a copyright claim by Phonographic Performance Ltd. (PPL) against Light Sound and DJ Association, Amritsar for payment of royalties for a DJ performance in a marriage hall. The DJ association relied on the copyright exception in section 52(1)(za) to argue against payment of royalties to PPL. The P&H HC dismissed the DJ Association’s claim and observed as follows:

“[…] It would make no difference, even if it were to take place in a religious ceremony. A sound reproduction by a DJ performing at such an event is surely a function that is connected to marriage. It is not as if a DJ’s performance amounts to conducting the marriage. Marriage is definitely different from the functions connected to the marriage and the tariff regime applies to performances at such functions even if it has a religious overtone.” [Emphasis supplied].

I believe that the P&H HC interpreted the copyright exception too narrowly. Going by the court’s logic, even baaraat and sangeet would not be covered as they are (to use the court’s language) functions connected to marriage but do not amount to conducting the marriage. As such a restriction has not been placed in the copyright exception, it would be wrong to do so by way of judicial interpretation.

Thank you Balu and Prashant for raising some interesting issues on this development.

This week, Divij Joshi wrote on the TikTok and ShareChat dispute, where TikTok served the latter with takedown notices, claiming it had ‘exclusivity’ over the content. Subsequently, ShareChat wrote to the Government, asking it to clarify whether TikTok is an intermediary, under Section 79 of the IT Act. To this effect, Divij asks a pertinent question—‘whether TikTok’s claims of ownership or ‘exclusivity’ over certain content on its platform change its status as an intermediary qualified for the exemptions under Section 79?’ He answers in the negative, by emphasizing the language of Section 79, which limits the functional qualification of intermediaries to a particular electronic record or to a specific transmission. He concludes that ‘intermediary’ under law should not be understood as a general broad category applicable across all of its functions, but a legal category applicable when an entity is dealing with a particular ‘electronic record’ in a particular manner. This would mean that TikTok might be liable for a particular ‘electronic record’ over which it exercises control but not for all content on its platform. Divij argues that the obscurity in law points to a need to reframe and broaden the discussion around intermediary liability to make platforms more accountable to both users and the state. He suggests that there should be creation of a sector regulator who is able to audit the platform’s adherence to its codes of conduct and due processes when dealing with illegal content.

In my first post as a fellow, I argued for the application of right of publicity claim to terms of service of Facebook, FaceApp and facial recognition applications. These terms of service allow the transfer of the user’s name, image or likeness, as a condition to use the services. I argue that the transferability of right of publicity is untenable under the law. To this effect, I argue that in India, in ICC Development, the right of publicity is recognized as a personal non-transferable, inherent in privacy. Further, subsequent decisions neither challenge this jurisprudence nor create a common law right of publicity. Rather, they create a property interest in publicity without ground. Lastly, the co-existence of right of publicity as privacy and property is troubling since in India, privacy is recognized as a non-transferable personal right, rooted in diginitarian foundation. I also argue that this distinction creates a class of publicity holders distinct from identity holders, which defeats the purpose of publicity right. Thus, if the right of publicity were treated as an inalienable right, which I argue that it ought to be under Indian law, then the terms of service, which treat it as otherwise, are against the law. I conclude by stating that this conception of right of publicity might be successful in protecting our data.

Aparajita Lath informed us of the recent launch of Singapore’s trademark application, which makes it the first trademark mobile application in the world. The application allows both Singaporean citizens/permanent residents and foreign registered users to file trademark applications. The process is extremely user friendly and the feature for search of similar marks is integrated with AI to provide accurate and reliable results, reducing the possibility of infringement! In comparison, Aparajita points to the lethargic Indian system, where trademark applications cannot be filed online without a certified digital certificate on an e-filing system that does not support specific operating systems. Further, the feature for search of similar marks is complicated and ineffective, which means most of the work is manual. Lastly, the form is simple but cumbersome, as it requires prior knowledge to fill in. Overall, the website suffers due to poor technology. In the end, she concludes with a brief comparison of the use of AI in WIPO, China, Norway, Chile and Japan and comments on the need for adoption of better technology to streamline administrative and other repetitive processes in India.

Prashant Reddy wrote a follow-up to his piece on the JNU Data Depot prepared by Mr. Carl Malamud. In this post, he discusses the response of Mr. Malamud, a self-proclaimed Gandhian. He states that Mr. Malamud’s response was abusive and dishonest, which is quite contrary to Gandhian ideals. Further, he comments on the source of the Data Depot, which was built from a source of pirated content, such as SciHub. He explains how this database is secondarily liable for copyright infringement, as SciHub has been declared a pirated database by multiple courts in the West. He concludes that this academic dishonesty is incompatible with Gandhian ideals for truth and honesty, and risks the cash starved JNU to lawsuits by publishers. Thus, he concludes that even if Mr. Malamud’s intention were to provide academic works to Indian scientists, he should not have aired his actions.

Devika Agarwal wrote a post on the recent notification by the Indian Copyright Office, clarifying that licenses are not required for utilization of sound recordings in the case of marriage related functions. The clarification pertains to Section 52(1)(za) of the Copyright Act, which creates an exception for religious functions and marriages. Despite the straightforward nature of the exception, Devika details that the clarification was necessary, as in the real world; it is not treated as such. She points out that in some cases, wedding venues and event management companies insist on fees for paying for copyright licences for music, since it is a common practice for a venue hosting an event (involving use of copyrighted music) to require proof of license to use the music from the event organizer. This is because of Section 51 of the Act, which makes a person who permits for profit the use of any place used to communicate copyright infringing music liable under the law.

Further, she points out that the exception is still not without grey areas. For instance, it is unclear whether sangeet would be covered within the exception. She maintains that since sangeet is an “other social festivity related to marriage”, it should be covered within the exception. Lastly, she points to judicial interpretation of Section 52(1)(za) in Phonographic Performance Ltd. v. State of Punjab where the P&H High Court held that the PPL should be paid royalties by the DJ Association, as the sound reproduction took place in a marriage hall, in an event connected to marriage and not in the conduct of marriage. Devika argues that this interpretation is too narrow and excludes even baaraat and sangeet.

SpicyIP Announcements

This week, Pankhuri Agarwal gave us exciting news about the call for paper proposals at the 5th edition of the annual ‘Asian IP Works-in-Progress Conference’, which will be co-organized by the Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law, Singapore Management University and School of Law, City University of Hong Kong on January 9-10, 2020. The Conference is an opportunity for IP Scholars across Asian economies, to present their research before their Asian peers. A total of 60 slots are available for presentations on various themes which will be chaired by leading IP scholars from Asian and non-Asian jurisdictions. Moreover, for 25-28 scholars, ARCIALA would provide their travel and accommodation requirements. Interested candidates need to submit an abstract of not more than 800 words before 15^th October 2019.

Other Developments

Indian

Judgments

Facebook Incorporation and Another v. Surinder Malik and Others – Delhi High Court [August 28, 2019]

The dispute between the Parties arose on account of the Appellants’ alleged infringement of the Respondents’ mark “DA MILANO” by advertising and offering to sell products under an identical mark of the Respondents. The Court observed that Appellants did not play an active role as intermediaries and merely had the duty to take down posts which were brought to their notice by the Respondents. Accordingly, the Court directed the Appellants to take down unauthorized posts which infringe the Respondents’ mark on express notification by the Respondents. The Court also directed the Appellants to intimate the Respondents of doubtfully offending posts on their platforms to enable the Respondents to pursue action in relation to them.

M/s. Ever Bake v. M/s. Everbake Bakers Private Limited – Delhi High Court [August 30, 2019]

The dispute between the Parties arose on account of the Petitioner’s alleged infringement of the Respondent’s mark “EVER BAKE” by using an identical mark in respect of running a restaurant. The Petitioner had filed an application for the rejection of the Respondent’s suit on the ground of lack of territorial jurisdiction. The Court rejected this application and observed that the Trade Marks Act conferred additional jurisdiction on a plaintiff to institute a suit in a place where it had its registered office. Relying on the same, the Court noted that the Respondent had its place of business in Delhi, thereby enabling it to institute proceedings there.

Theobroma Foods Private Limited v. Fresh Baked Goodness and Others – Bombay High Court [September 3, 2019]

The Court vacated the previous interim orders granted in favour of the Plaintiff restraining the Defendants from using the Plaintiff’s mark “THEOBROMA” in respect of bakery products. At the hearing, the Defendants stated that there was no entity by the name of “Fresh Baked Goodness” which was included as Defendant No. 1. Accordingly, the Court allowed the Plaintiff to strike off Defendant No. 1. With respect to the other Defendants, Defendant No. 3 filed an affidavit claiming that they never infringed the Plaintiff’s mark and would not do so in the future as well. The Defendant also agreed to remove any reference to the Plaintiff’s mark on its website.

Xotik Frujus Private Limited v. R.R.E. Foods and Soft Drinks Private Limited – Bombay High Court [September 3, 2019]

The Court granted a decree of permanent injunction restraining the Defendant from infringing and passing off the Plaintiff’s mark “JEERU” by adoption of a deceptively similar mark in respect of beverages. In arriving at this decision, the Court gave effect to the terms mentioned in the affidavit filed by the Defendant. Moreover, the Defendant also tendered a cheque of Rupees 2.5 lakhs in favour of the Plaintiff as full and final settlement.

News

• After Delhi HC restrained it from manufacturing or marketing Novartis’ diabetes drug, Vildagliptin until its secondary patent’s expiry in December, Natco files a suit in Hyderabad court claiming its right to manufacture the drug on the basis of the expired patent covering it.
• GI Registry defers the hearing on revocation of GI tag granted to ‘Banglar Rasogolla’ to 21st October after West Bengal Government seeks more time to submit its arguments.

Opinions

• Dr. Kalyan Kankanala, Managing Partner of BIP Counsels, argues in favour of statutory licensing of music for interning broadcasting.
• A piece in The Hindu argues that a GI tag for a product makes little impact on its prospects in the market due to lack of awareness, enforcement of protection and adequate support structures.

International

• Uber denies request for the disclosure of its driver’s list, as it cites it as a ‘trade secret’.
• CJEU rules that EU trade mark infringement suits can be filed in the member state where the alleged infringer’s consumers are based.
• An Australian Senate Committee recommends abolition of innovation patent system.

Image from here

The borderless nature of the internet has, time and again, challenged conventional notions of jurisdiction and enforcement. While countries have a legitimate interest in protecting / preserving their laws, with the internet, there is always a fear of the law becoming a general law of the internet. Maintaining this balance is key when deciding questions that pertain to issues involving parties belonging to different jurisdictions.

The Delhi High Court was tasked with resolving a trademark infringement and passing off dispute between a US based company and an Indian company. While we would presume that the Indian party (the usual suspects in trademark wrong doings) was the defendant, the roles in this case were reversed. The court was dealing with a foreign defendant and an Indian plaintiff.

Juggernaut Books Private Limited (the plaintiff) is a Delhi based publisher of books and e-books and offers its books and services on a subscription based website www.juggernaut.in. The website was introduced in India in 2015. The plaintiff also has a presence on social media platforms. The trademark ‘Juggernaut’ has been registered by the plaintiff in class 16 and is pending registration in classes 41 and 42.

William Dalrymple, a famous author and associated with the plaintiff, brought to the plaintiff’s notice the defendant’s website www.thejuggernaut.com. The defendant’s had emailed the author and requested him to contribute to their new website “The Juggernaut” which aimed at publishing stories in relation to South Asia.  The defendants were incorporated in 2018 in New York. While the defendant’s website was registered in 2003 (through a company called NameCheap Inc), the website was dormant until 2019. The defendant’s website is accessible in India and Indian users can subscribe to the services offered on the website. The name of the defendant’s website is almost identical to that of the plaintiff, and is used in relation to similar services, and since there was evidence of confusion among consumers, the plaintiff brought a suit before the Delhi High Court.

Since the defendants are residents of a foreign country, the court was required to assess whether or not it had jurisdiction to hear this dispute. The court, citing the Banyan Tree judgement and other related judgements, applied the ‘purposeful availment’ test to hold that the defendants had “purposefully availed” / established substantial connection / targeted customers in Delhi and therefore the cause of action had arisen in Delhi. The conclusion was reached due to the following facts (a) the defendant’s website is accessible in Delhi and subscription to the website can be obtained by customers in Delhi, (b) the defendant’s website publishes articles that have a close connection with India, (c) the defendant wrote to William Dalrymple who works out of Delhi for a considerable portion of the year, and (e) the plaintiff’s registered office is Delhi.

In addition to holding that the Delhi High Court has jurisdiction, the court also passed an ex parte interim order restraining the defendants from using the mark ‘Juggernaut’ or any other similar mark in relation the the services offered by the plaintiff and also directed NameCheap Inc to block the domain name www.thejuggernaut.com till the next hearing.

Active or Passive?

Jurisdiction

Trademark infringement and passing off actions are treated differently when it comes to the exercise of jurisdiction. In a trademark infringement action, the plaintiff can bring a suit in the court within whose jurisdiction the plaintiff resides or carries on business. This is in addition to the general rule prescribed under the Civil Procedure Code which confers jurisdiction on courts where the defendant resides or where the cause of action rises. Where the plaintiff is the registered proprietor and resides / carries on business within the territorial jurisdiction of the court, there is no requirement for the court to look any further to assume jurisdiction. Even in case of foreign defendants and where the defendant’s website is a “passive” website, from a plain reading of the law, the court must still assume jurisdiction.

In cases of passing off, in order to establish a cause of action, courts in India require the plaintiff to establish that the defendant has purposely availed itself or targeted consumers of the jurisdiction of the forum court (see Banyan Tree, Millennium and Copthorne). Courts have held that a passive website, which does not enable the defendant to enter into commercial transactions or lacks interactivity, does not pass the test of purposeful availment.  Even the Delhi High Court in the Juggernaut decision, has applied this test to the question of jurisdiction.

This test is, however, at odds with the Civil Procedure Code, which requires the plaintiff to choose a forum court based on where the cause of action arises. The test of purposeful availment shifts the focus from the plaintiff’s cause of concern (showing prior use, reputation, misrepresentation) to establishing the intention of the defendant to avail of a particular jurisdiction. So long as the plaintiff can establish a cause of action, regardless of whether the defendant targeted or purposely availed a particular jurisdiction, the civil procedure code requires the forum court to  take up the matter. Further, this test cannot be a one size fits all kind of test. For instance, this test does not fit for cases of well known trademarks because in such cases a cause of action certainly arises even with the mere accessibility of a “passive” website that uses a similar trademark. Also, in infringement actions, where the plaintiff does not reside in India / carry on business in India, by virtue of holding a registered trademark in India, the plaintiff can show a cause of action by the mere existence of a passive website within the jurisdiction of the court. In such situations, the test of purposeful availment is irrelevant.

Enforcement 

The bigger issue that this case highlights is the issue of enforcement of orders against foreign defendants. In this case, the defendants did not enter appearance and the court proceeded in their absence. However, after the interim order of blocking the website was issued, the defendants entered appearance. The order of blocking was a harsh but quick way to ensure the foreign defendant’s appearance. Executing a decree of an Indian Court outside the country is not a straightforward process. Had it not been for this order, the Indian plaintiff would have had to undertake an expensive and long process of initiating proceedings in the US.

Thank you very much to Aanchal Tikmani for bringing this order to our notice!

The Indian Music Industry (IMI) which is the primary lobbying arm for the music industry, along with Deloitte’s consulting arm, has recently released a report on “The Economic Impact of the recorded music industry in India”. The report is an attempt to place a value, not on the music industry, but its contribution to the economy by valuing its contribution to the various industries which use music as a “raw material”. As per the report, the music industry created a value of Rs. 8,660 crores for partner industries like television, radio, live events, films and streaming apps. For example, the contribution of the music industry to the radio industry was valued at Rs. 2,170 crores. This is apart from the value created for brass bands which perform for marriages, malls, restaurants, non-ticketed events and performances, which were not valued by the report.

As with all industry reports advocating the industry interests, the figures in the IMI report should be taken with a pinch of salt. However, such reports are always interesting because they provide an insight into the thinking of the industry and can help identify the key policy challenges as self-identified by the industry.

In the case of the Indian music industry, the key challenges identified by the report are: piracy, the increasing value gap, public performance rights compliance and conversion of free services to subscription services.

Can music piracy still be a challenge?

On the issue of piracy being a challenge to the music industry, I am rather skeptical because music today is accessible for free as long as you have an internet connection. Gone are the days where everyone used to line up at songs.pk to download music. There has been a veritable explosion of free streaming services like Saavn, Gaana, Spotify and of course, YouTube. All you need in an internet connection and you can access high quality music for free. How can you “steal” something that is free?

According to an older report of the IMI, the main grouse of the music industry appears to be “stream-ripping” wherein some users use special software to rip music off websites like YouTube to covert it into a downloadable format that can be played without having to stream content by using expensive data services. A previous IMI report (on Page 8) has very helpfully provided a list of services which provide stream-ripping services.

There is no real way for the music industry to figure out how just how many people are using such software to indulge in “stream ripping” of music and it is even tougher for the industry to actually prove that such stream ripping is hurting the music industry.

My guess is that the only reason people were using these stream ripping services was because of the cost of data services or because of the poor quality of internet services in parts of the country. With the price war launched by Reliance’s Jio, internet prices have crashed. If people are still using stream-ripping services it is because of poor connectivity in parts of the country and I doubt whether that small sliver of users is causing enough harm for the IMI to classify piracy as its number one threat.

We should be constantly wary of the piracy rhetoric from copyright owners because terrible things have been done in India in the guise of fighting piracy. We are one of the few countries to permit preventive detention for the offence of copyright infringement. We are also one of the few countries to allow the police to search premises and arrest people on suspicion copyright infringement without any warrants from a court of law. These are draconian measures for non-violent criminal offences.

The value-gap

The second gripe of the IMI, is the value-gap due to legislative measures such as Section 31D and safe harbor protection for internet intermediaries. I am much more sympathetic to the Indian music industry on these two issues.

Section 31D basically allows the radio and television industry to apply to the Copyright Board (now the IPAB), for statutory licenses to broadcast music owned, by the music labels, at a rate fixed by the tribunal. The last time the Copyright Board decided one such compulsory licensing dispute in 2010, it fixed the royalty rate at 2% when the music industry asked for a rate of 20% of ad revenues. An appeal against the badly reasoned order of the Copyright Board has been pending for the last 9 years before the Madras High Court. I think it is time to evaluate whether India should be adopting the statutory licensing regime or whether it should take the route of competition law to take aim at the dominant music labels abusing their power. Smaller music labels or even big labels playing by the rules should not be forced to license their music at rates fixed by tribunals. Of course, if the music industry is going to form a cartel under the aegis of a copyright society like Phonographic Performance Ltd. and negotiate with the broadcast industry, it should be penalized under competition law.

Regarding the ‘value-gap’ argument due to safe harbor protection for giants like YouTube and Facebook, there is some merit in pushing back against the present legal regime. Due to the present safe harbor provisions, intermediaries are not required to take down material for a period more than 21 days unless the music label is able to get a court order. This relieves intermediaries of the responsibility of actively monitoring their platforms to take down infringing content. This decreases the bargaining power of music owners because the risk and threat of potential lawsuits is the greatest reason for intermediaries to take licenses from the music industry. With safe harbor protection that risk is largely minimized which in turn reduces the ability of the music industry to negotiate higher licensing rates. This is the theoretical argument that was used to spur a pushback in Europe recently, to do away with safe harbor protection for platforms like YouTube. There are strong reasons for Indian policymakers to rethink the safe-harbour protection introduced in Indian copyright law in 2012.

Public performance rights compliance

The IMI-Deloitte report then lists the difficulty in enforcing public performance rights as the next big challenge. This basically requires the music industry convincing event managers, hotels and other businesses to purchase licenses for the music they play for members of the general public. In my many conversations with the event management industry, I have learnt that they are usually ready to pay up because the clients usually have a budget for music, but most of the event managers are extremely unhappy with the lack of transparency and ghoulish tactics used by the thugs employed by the music industry to extort money for licenses. From the stories I have heard, the music industry has lost the trust of most people in the event management industry. If the Indian music industry wants to extract its legitimate value from the event management industry, they need to get more professional and build trust. To begin with they cannot be hiring thugs for their enforcement actions.

With regard to the hotel and hospitality industry, from what I understand there are services sprouting up that are providing specialized streaming services/packages. This is one of the reasons that some coffee shops play the same music in a loop, every day.

Converting to subscription services

One of the final challenges identified by the IMI-Deloitte report is the challenge for their OTT streaming services to convert their listeners into paying customers who subscribe and pay for music on a monthly basis. This would increase the size of the pie allowing for music labels to demand more royalties from the OTTs. According to figures presented in the report the conversion rate is at merely 1% of 150 million customers who currently stream music. Contrast this to the 232 million subscribers for Spotify and 60 million subscribers for Apple Music in the global market. Clearly, the Indian market has some distance to go although I am not sure if the Indian music listener will behave in the same manner as his counterparts in the West. The Indian market is very unique on several counts and it is possible that India needs a radically different business model.

Prashant analysed the challenges highlighted by a recent report released by the Indian Music Industry (IMI) and Deloitte:

(i) Music Piracy:  He states that it is not very relevant in a day and age where everyone has free access to music if s/he has access to the internet.

(ii) Value-gap: He agrees with the report’s stance on the issue of value-gap due to legislative measures such as: (1) Section 31D of the Copyright Act, which allows the radio and television industry to apply to the Copyright Board (now the IPAB), for statutory licenses to broadcast music owned, by the music labels, at a rate fixed by the tribunal, which is usually very low, and (2) safe harbour protection of intermediaries, under which intermediaries are not required to take down material for a period more than 21 days unless the music label is able to get a court order.

(iii) Public performance rights compliance: This issue relates to the difficulty faced by the music industry in convincing event managers to purchase music licenses. Prashant states here that the event management industry complain that though they remain ready to pay up, they often face extortion from the music industry for buying licenses.

(iv) Converting to subscription services: The report states that OTT streaming services aim to convert their listeners into paying customers who subscribe and pay for music on a monthly basis. Prashant, however stated that the Indian market is quite unique and may need a  different business model in this regard.

Aparajita wrote a post on a Delhi High Court judgment, wherein the Court dealt with a trademark infringement and passing off dispute between Juggernaut Books Private Limited, an Indian company (plaintiff) and a US based company (the defendant). The plaintiff offered its books and services on a subscription based website www.juggernaut.in and they own a trademark on the word ‘Juggernaut’. The defendants offered similar services through a website entitled www.thejuggernaut.com. This caused confusion amongst Indian consumers and the plaintiff filed a suit before the Delhi HC. The Delhi HC passed an ex parte interim order restraining the defendants from using the mark ‘Juggernaut’ and ordered them to block the domain name www.thejuggernaut.com till the next hearing. In her post, Aparajita notes that the Court has applied the purposeful availment tend, i.e.,  in order to establish a cause of action, courts in India require the plaintiff to establish that the defendant has purposely availed itself or targeted consumers of the jurisdiction of the forum court. She points, however, that this test is at odds with the CPC, which requires the plaintiff to choose a forum court based on where the cause of action arises. She also highlights the larger issue of enforcement of orders against foreign defendants which arises here. She points out that, had it not been for the Delhi HC’s order, the plaintiffs would have to undertake an expensive journey to the US to avail justice.

Other Developments

Indian

Judgments

Hindustan Unilever Limited v. Pappu Kumar – Calcutta High Court [September 4, 2019]

The Court granted a decree of interim injunction restraining the Defendant from infringing the Plaintiff’s mark “SURF EXCEL” by using the mark “SURF EXCEL PLUS” in respect of selling detergent. The Court observed that the Plaintiff was the registered proprietor of the mark and the Defendant had adopted a colourable and deceptive imitation of the same. Moreover, the Court noted that the Defendant’s products were sold in packets which were prima facie infringing of the Plaintiff’s copyrighted artistic works.

Super Cassettes Industries Private Limited v. M/s. M. World TV News – Delhi District Court [September 6, 2019]

The Court granted an ex parte permanent injunction restraining the Defendant from broadcasting Plaintiff’s copyrighted works through its cable services. In determining infringement, the Court acknowledged that the Plaintiff had valid and subsisting copyrights in its works which could subsequently not be broadcasted by the Defendant without a valid license. The Plaintiff was further granted costs of Rupees 10 Lakhs, a sum arrived at by the Court through observation of the non-compliance on the part of the Defendant even after being tendered a cease and desist notice.

News

• In a recent order, the Delhi HC reiterates the obligation of online intermediaries when it comes to online content which infringes intellectual property rights.
• The TM Registry proposes to restrict display of documents containing parties’ confidential information on its website.
• The Start Up Intellectual Property Protection  scheme has been extended to all applicants using the services provided by WIPO’s Technology and Innovations Support Centre (TISCs).
• The IPO released the list of scientific advisers, as required under Section 103 of Patent Rules, 2003.
• Madras HC dismisses plagiarism case filed against the movie ‘Kaappaan’.
• India will be hosting the meeting of RCEP members on September 14-15.
• Delhi HC restrains the makers of ‘Dream Girl’ from exploiting the Marathi song ‘Var Dhagala Lagli Kal’.
• Director Praveen Mochale has filed a case in the Bombay HC against the writer and the producer  of the movie ‘Bala’ , alleging plagiarism.
• ‘Srivilliputhur Palkova’, a milk sweet produced in Tamil Nadu,  gets GI tag.

Opinions

A piece in the Indian Express covers the rise in property claims by companies by focussing on FC5, a potato crop grown by Haribhai Devjibhai Pateland to which US company PepsiCo has claimed rights.

International

• Google wins legal battle in Germany over copyright fees demanded by publishers.
• Nintendo filed a suit against RomUniverse.com, for hosting free downloads of Nintendo games.
• YouTube shuts down music companies’ use of manual copyright claims to steal creator revenue.

Image from here

We’re pleased to bring to you a guest post by Karan Dhalla, a 4th year student at the National Law School of India University, Bangalore. The post critically analyses the judgment passed by the Bombay High Court in Tips v. Wynk earlier this year, wherein it was held that the statutory licensing scheme under Section 31D of the Copyright Act does not apply to internet broadcasting. We’d covered this judgment in an earlier post here.

Tips Industries v. Wynk Music: A Case of Statutory Mis-Interpretation?

Karan Dhalla

In Tips Industries Limited v. Wynk Music Limited & Anr., J. Kathawala of the Bombay High Court held inter alia, that the scheme for statutory license under Section 31D of the Indian Copyright Act, 1957 does not cover internet broadcasters. Divij’s previous post covered the background of this dispute. With respect to internet broadcasting, he covered how the High Court read the full scheme of Section 31D with Rules 29 & 31 of the Copyright Rules, 2013 to limit statutory licenses to radio and TV broadcasters.

In my opinion, the Bombay High Court has erred on 3 counts – first, Section 31D does not discriminate over the medium of broadcast; second, legislative commands in Section 31D do not affect the powers of the Intellectual Property Appellate Board (IPAB) and third, the lack of qualification to “broadcast” in Section 31D(1) shows that the Parliament has no intention to discriminate between broadcasters.

No Discrimination Over the Medium of Broadcast

Section 31D does not discriminate between broadcasting organizations over the medium of broadcast. A bare perusal of Section 31D indicates that provision for a statutory license is contained in the first part of the section itself, and all the following sub-sections are merely legislative commands on the conditions precedent for availing the statutory license. Section 31D(1) is plenary in nature and provides that “any broadcasting organization desirous of communicating to the public by way of broadcast” may potentially avail of a statutory license. Broadcast under Section 2(dd) of the Act is communication to the public by any means of wireless diffusion. Neither Section 2(dd) nor Section 31D(1) draws any distinction between broadcasters on the basis of their chosen medium. Thus, the Bombay High Court has effectively supplied words to Section 31D(1), reading “by way of broadcast” as “by way of radio and TV broadcast”. This reading down of a clear and unambiguous provision is impermissible.

An interesting indirect challenge to this line of argument was raised by MV Swaroop in a previous post. According to him, it is questionable whether internet music streaming service providers “broadcast” content in the first place – for on-demand streaming does not qualify as communication to the public. He argues that the definition does not cover services, where individuals can decide the place and time for hearing music.

With respect, I disagree with his assessment. “Communication to the public” has been defined under S. 2(ff) as “making any work or performance available for being seen or heard…. Whether simultaneously or at places and times chosen individually, regardless of whether any member of the public actually sees, hears or otherwise, enjoys the work so made available.”

The obligation incumbent on the proprietor is to solely make the musical works available and her status as a communicator to the public is not affected by how individuals may choose to consume the work. Music streaming providers clearly meet this threshold. All musical recordings are made available for being heard by the user simultaneously, and the user may choose to actually hear some music and not hear others. The factum of an individual having the choice manifests only in some songs being heard while other songs left unheard. Section 2(ff) clearly does not contemplate such a high threshold on the service provider to limit consumption to a particular time and place, as long as they make it available simultaneously, they are covered.

Digressing from statutory licensing, such an interpretation would also not cover recording options offered by almost all satellite providers, merely because individuals decide what to record and when to watch. Copyright issues aside, this would mean that the organizations will not be extended some basic protections afforded to communicators to the public solely in respect of record-able content [author may waive royalty rights for communication to the public under S. 18 et al]. This would create an artificial schism between general broadcast and recordable broadcast and unnaturally raise the cost of compliance for potential broadcasters.

Legislative Commands Do Not Affect the Powers of the IPAB

Section 31D(3) is a specific provision for TV and radio broadcast that does not exclude anything included within the general provision under Section 31D(2). It is true that Section 31D(3) prescribes that the royalty rates shall be different for radio and TV broadcast. However, it must be read with Section 31D(2), which authorizes the IPAB to set royalty rates for all applicants, who may be “any broadcasting organization desirous of communicating to the public by way of broadcast or by way of performance.” A joint reading of the two provisions does not support the conclusion that Parliament intended to limit statutory licenses to radio and TV broadcasters, rather Section 31D(3) is merely a legislative command to the IPAB  on how to proceed in a specific context– since music TV and radio broadcast are consumed differently and reach different sections of society, Parliament commands the IPAB to set royalties differently. This legislative command does not limit the plenary authorization of the IPAB contained within Section 31D(2), to set rates for all potential applicants.

Further, it is settled law that rules have to be interpreted within the contours of the statute. Rules are made to implement the rights granted in the parent statute. An interpretation of the Rules that abrogates statutory rights is wrong and impermissible. J. Kathawala’s use of Rule 29 & 31 to circumscribe the openly-worded guarantee of Section 31D(1) to radio and TV broadcasters is thus, an incorrect construction. If this interpretation holds up and the Rules are deemed to discriminate between broadcasters over the choice of medium, then they are blatantly inconsistent with Section 31D(1) and are void.

No Qualification to “Broadcast” in Section 31D(1) is Telling

J. Kathawala’s reliance on the Rajya Sabha report is misplaced. Use of external aids to interpret a provision is legitimate when the provision is unclear or ambiguous. Where the statute is clear, external aids cannot be used to dilute the statute. In any case, J. Kathawala’s inference that the Parliament knew about internet platforms and thus, the omission of internet broadcasting from Section 31D is clinching, is tenuous. It could just as well be argued that had the Parliament intended to distinguish between broadcasters on the basis of medium, it would have done so in Section 31D(1). Parliament was of course, aware that the definition of broadcast in Section 2(dd) as ‘communication to the public by any means of wireless diffusion’ is open-ended and clearly covers Internet broadcasting. Thus, Parliament’s refusal to qualify the term “broadcast” in Section 31D(1) reflects the intention to not discriminate between providers on the basis of their medium.

The draft Copyright (Amendment) Rules, 2019 have clarified the government’s intention at least. The DPIIT have substituted any reference to ‘radio and television broadcasting’ in favor of ‘each mode of broadcast’ to resolve this interpretative conundrum. The intention is clear; internet broadcasters serve public purpose and can indeed apply for statutory licenses. It will be interesting to see if this amendment causes a shift in J. Kathawala’s reasoning in the almost identical Spotify dispute later this year.

Is Internet Broadcasting Really So Different from Radio?

The unarticulated major premise behind the Tips judgment is that an open construction of Section 31D would significantly prejudice the ability of the copyright holders to negotiate optimal arrangements for themselves and allow broadcasters to profit. But Parliament has made that trade off in favor of broadcasters. The statutory licensing scheme stems from recognition of the problem that record labels often use their monopoly power to withhold communication to the general public or negotiate exorbitant royalties. With this scheme, the State has endeavored to award compulsory licenses to ensure greatest access to the public, at fair and equitable royalty rates.

If radio broadcasters are covered in this scheme, internet broadcasters have to be included as a matter of principle. Aside from the fact that internet broadcasters have greater outreach, there is also virtually no difference between the business models of radio and internet broadcasters. Both broadcast music to the public for free, and leverage their outreach for ad revenue. The only difference is that broadcasting on the internet is interactive as users can pick and choose songs. In contrast, radio broadcasting is non-interactive and random. A new “Music Modernisation Act” for India should take this difference into account. Statutory licenses for interactive internet broadcasting may significantly affect the exclusive value of the copyright. Unfortunately for record labels, the Copyright Act [unlike international best practices] does not make that distinction. In the current regime, any discrimination over the basis of medium of broadcast is grounded in statutory mis-interpretation.

Image from here

We’re pleased to bring to you an interesting guest post by Jupi Gogoi on the ongoing dispute between West Bengal and Orissa over the GI tag for rasgulla, which we’ve covered on the blog earlier here, here and here.

Jupi is an Assistant Professor at the Faculty of Law, University of Delhi. She was formerly associated with the Indian Law Institute, Delhi. Jupi has guest blogged for us in the past as well (see here).

Banglar Rasogolla v. Odisha Rasagola: Deciphering the Real Win

Jupi Gogoi

 The sweet taste of Rasogolla/ Rasagola took a bitter turn when the two states, West Bengal and Odisha started their fight on who owns this popular sweet under the Geographical Indications (GI) law. GI is an indication identifying a good as originating in a particular country, region or locality of that country. The reputation, quality, or characteristics of such goods are attributable to their geographical origin. On registration of a GI, registered proprietor of the GI and the authorised user or users can file for infringement of GIs. A registered geographical indication (GI) is infringed by a person who is not an authorised user but uses such indication in his or her goods that it originated in a geographical territory which is not the true place of origin. Such use misleads the consumer as to the origin of the good; uses GI in a manner that constitutes an act of unfair competition and passing off in respect of registered GI.

Decision of the GI Registry

In November 2017, West Bengal State Food Processing and Horticulture Development Corporation Limited got the GI registered as ‘Banglar Rasogolla’. It was reported that Bengal won the dormant fight between Odisha and Bengal on who would own the famous sweet. The legal fight for the GI registration began when an objection to the GI Registration was filed citing that the origin of this famous sweet was in the Jagannath Temple of Puri in Odisha (see the document numbered 11 here). An application for removal of the registration of the GI status was filed in February, 2018 which is still pending. In the meantime, in July this year, the GI Registry notified that Odisha got the GI registered as ‘Odisha Rasagola’, following which there were many reports stating that Odisha did not lose the race but got a tie. It is very important to note that the GI Registry has not given registration to the term ‘Rasogolla/ Rasagola.’ It has specifically prefixed two words to the GI tag, one is ‘Banglar’ and the other one is ‘Odisha’, thereby, implying that ‘Rasogolla/ Rasagola’ is a generic word which can be used by anyone in their trade and business. Thus, so far as the law is concerned, neither of the states has got a monopoly on the word ‘Rasogolla/ Rasagola’. So, it is free for anyone in the trade to continue selling the sweet as Rasogolla/ Rasagola or any other synonym. What is prohibited is the usage of the word ‘Banglar Rasogolla’ and ‘Odisha Rasagola’ by anyone other than the ‘authorised user’ under the law.

Was It Right to Give GI Registration to ‘Banglar Rasogolla’ and ‘Odisha Rasagola’?

This brings us to an interesting question that whether the GI Registry was right in granting registration to these GIs considering the fact that Rasagola/ Rasogolla has fallen in common use throughout the country? The sweet finds place in almost all sweet stalls throughout the country. The GI Act under section 9(f) states that GIs which are determined to be generic names shall not be registered as GI. Coming to what is a generic word, explanation to section 9 of the GI Act states that “generic names or indications”, in relation to goods, means the name of a goods which, although relates to the place or the region where the goods was originally produced or manufactured, has lost its original meaning and has become the common name of such goods. In determining whether the name has become generic, account shall be taken of all factors including the existing situation in the region or place in which the name originates and the area of consumption of the goods. The fact that West Bengal State Food Processing and Horticulture Development Corporation Limited filed for ‘Banglar Rasogolla’ and not just ‘Rasogolla’ and that in its application for the registration of ‘Banglar Rasogolla’ under the column ‘specification’, it has stated that it is a “syrupy desert/ sweet popular in all over West Bengal as well as India and abroad” (see the document numbered 22 here) clarifies that this sweet is not limited to the state of West Bengal. Besides this, the formality check report (see the document numbered 20 here) given by the GI Registry asked the applicant to show the uniqueness of the ‘Banglar Rasogolla’ along with comparison or differences with other Rasogolla (prepared in other Places of India) but in the reply given to the formality check report, the applicant was not able to properly (see the document numbered 13 here) distinguish the uniqueness of the Banglar Rasogolla to other Rasogollas of other places.[i] This was also covered in an earlier post on the blog. In the same way when an application was filed before the Registry for cancellation of registration of Banglar Rasagolla (citing that the sweet originated in the Jaganath Temple in Puri, Odisha and if at all a GI registration is to be given to this sweet variety, it is the state of Odisha who is the true claimant), the applicant also mentioned that Rasagola differently spelled as Rasgulla, Rasogulla, Rasogolla, etc. and known as Rasbhari or Rasbari in Nepali is a syrupy dessert popular in the Indian subcontinent and regions with South Asian diaspora (see the document numbered 11 here). Should the GI Registry have altogether rejected both the applications on the aforementioned ground that this sweet variety has fallen in common use and is generic now?

The True Win for Rasagola/ Rasogolla

Although the removal of GI status of ‘Banglar Rasogolla’ is still pending, in the event that both the states continue to have their GI registered, the success of these two GI registration will lie upon the fact if the registration is able to provide a platform for better protection of the GIs (the second part of the Preamble of the GI Act). Better protection here means the product fetching a premium price post registration thereby developing the socio-economic conditions of the people who are associated with the production of these goods (that is, the workers, producers, sellers, etc.). Ironically, in India, the entire pomp and show including the media coverage is before the GI registration and once registered, it falls into oblivion. So, the question that lies ahead is how the people associated with the production of ‘Banglar Rasogolla’ and ‘Odisha Rasagola’ be able to utilise the GI platform to fetch a premium price for their goods? Only if these GI registration helps them in fetching a premium price for their versions of Rasogolla/Rasagola, thereby, improving their socio-economic condition, it can be considered a true win.

[i] They did provide a distinction as a formality but it remains a mystery on what grounds they were accepted by the GI Registry. For instance, under the Organoleptic features analysis it was mentioned Banglar Rasogolla  has Spongy feature which makes the product unique among all whereas other rasogolla absolutely Lacks spongy Character. Smooth & delicate basic mouthfeel is the characteristics of Banglar Rasogolla whereas Other Rasogolla is found to have rough & chewy features. The question is the applicant did not mention from where this other rasogolla sample was collected. Personel experience of many people and the author reveals that rasogolla not originating in west Bengal too have spongy characteristic and the second characteristic that is smoot and delicate basic mouthfeel is too subjective a term which should not have been recognised by the GI Registry. Likewise, they mentioned no starch is used in Banglar Rasogolla but it is used in Rasogolla of other states. How did they come to this conclusion and basing on what datas is missing in the reply to the examination report.

In several traditions, including those followed by Prof. Shamnad Basheer’s family, the 40th day after passing is a day of remembrance and marks the end of a mourning period. As posts, tributes and celebrations of Prof. Basheer’s life and work have poured in, some of the current and past team members of SpicyIP have written fond remembrances and eulogies, which we are publishing here today.

Balu Nair

The last 40 days have made me realize that some wounds are too difficult to heal, especially when they have come about as a result of someone very dear leaving your life. In a world which is full of skepticism and sorrow, Shamnad Sir was a beacon of hope and happiness. Although I do not think that I will ever make sense of Shamnad Sir’s passing, maybe, much like his wonderful personality, it is meant to be that way – an enigma.

Although in my five years at NUJS, I only saw him from a distance and we never even spoke once, our paths crossed later as I ended up becoming a SpicyIP Fellow. His ability to constantly encourage his fellow bloggers and the willingness to engage with each of us is a trait that is hard to find, and epitomized the man he was – someone who believed and invested in others.

Later on, as I quit my law firm job and was looking to transition to public law, Sir took me under his wings and made me a part of the P-PIL initiative he had set up at IDIA. It was there I had some of the best time in my professional career. As we worked together on the Aadhaar data security petition, he would make me revise the draft innumerable times to the point where I started to doubt my ability to finish it. I opened up to Sir about how I was overwhelmed by the task. Rather than shooing me away or berating me for not being able to work under pressure, he would gently ease me back into the task, throwing in a Rumi quote or two in the process!

Once LL.M application season started, I started hounding him for recommendations, and every time, irrespective of how last minute it was, he would be always there to help out. I will also never forget the numerous meals he treated me to at his house and outside.

I can go on and on. But, nothing that I will say is going to do justice to who he was. I think I will close by quoting one of his favourites, Rumi: “Death has nothing to do with going away, The Sun Sets and the moon sets, but they are not gone”. You will never be gone from our hearts, Sir.

Shan Kohli

I am Shan Kohli and I was Professor Basheer’s student at NUJS Kolkata. I would not normally write about someone I knew on a public platform but how could I not for someone who always encouraged and inspired me.

I knew Professor Basheer in various capacities – as his student at NUJS, his IP research associate and in more recent years he was a mentor, friend, guide and a towering presence in my life who always had my back. Though I did not eventually become a full time IP lawyer, he mentored and advised me throughout my professional career. I always felt I could approach him for anything and he would always be there to help me in every possible way. In college in his IP class, I remember how the entire class of approximately fifteen of us paid rapt attention and hung on to his every word as he broke down complex legal concepts and not only made them easier to understand but placed them in the larger context of the world view. We sat enthralled as the hours passed by and weren’t the least bit tired even though sometimes our classes stretched for as long as four hours in one sitting. That was one class I remember no one ever skipped their readings for! In fact it was the one of the few classes we looked forward to eagerly each week. Later on as his research associate, the rigour of his research tasks honed my skills and set the foundation which I would later rely on throughout my career. After law school, when I was shifting to the UK and needed help amidst some bureaucratic inefficiencies around paper work and finding a place to stay, he helped me without my even asking for it. For his students, Professor Basheer was always someone very approachable and someone you could always talk to about anything under the sun. Those of us like me who were fortunate enough to have been invited to his home in Bangalore will fondly remember how he would regale us with stories from his life or tell us about the latest books he was reading amidst his deliciously cooked organic home fare followed by a range of exotic teas. Professor Basheer has always been a guiding presence in my life motivating me to work harder and aim higher. With his loss I feel as if my safety net and guardian angel has gone. Like everyone who knew him, I cannot believe that he is really gone. Although this may seem painfully obvious, it will take quite some time for me to fathom that there will be no one on the other end of his Whatsapp number or email address anymore. I have very briefly recounted all the small but significant ways in which he helped me and changed my life but this is not my story alone. Multiply this into a 100 or 1000 or 10,000 stories and you will realise the impact Professor Basheer made across the lives of each of his students and the difference one person can make. He inspires me to be a better human being each day.

Rahul Bajaj (Extract, full piece here)

…

After a lifetime of struggling to reform systems and processes that do not serve the objectives for which they were set up, it would be natural to expect a person to become disillusioned and embittered. So many such people that one meets experience a certain hardening of the heart, their emotional energy and vitality getting demented by the years of struggle and effort. Not Shamnad Basheer. He always imbued everything that he touched with so much warmth and compassion, energy and interest. Last year, even as he was not keeping well, he made it a point to have a detailed conversation with me before I left for Oxford. In that conversation, he told me, “Rahul, I often tell people that you will be India’s first visually challenged Supreme Court judge.”

Like the rest of us, Shamnad Sir was not free from imperfections. Those of us who have worked closely with him on any project vividly recall being on the receiving end of his inexplicable flashes of anger, his mood-swings and rigidity in adhering to certain views, once he had made his mind up about them. If you learnt how to negotiate these patterns of behavior which he sometimes exhibited, however, you would not get bogged down by them and be able to fully appreciate all his wonderful qualities which I have described above. In that sense, he was not a saint, in Nelson Mandela’s famous words, unless you think of a saint as a sinner who never stops trying.

They don’t make ‘em like Shamnad Basheer anymore. I will close this post with a few lines of tribute that I have written for Shamnad Sir, which I am confident he would have appreciated, given his love of poetry.

You left us too soon,

Courageous and bold and gifted with a heart of pure gold,

You got taken from us,

Only 43 years old –

You were our lodestar, the person we aspired to become,

Through your effort and vision, courage and determination,

You helped achieve goals,

Which for most of us were only an aspiration –

We will miss your warmth and kindness,

Your fearlessness and the fire in your belly,

But we can pay no greater tribute to you,

Than to try and embody those values, no matter where we find ourselves, in whichever life alley –

The light has gone out of our lives,

But we will continue to endure,

For only then can we help take forward All that you stood for.

Divij Joshi

Dear Sir,

I hope you are well, wherever you are now. There was a ringing in my ears as I read the deluge of messages announcing that you were ‘no more’. I was in denial that evening and adamantly remain in denial still – there is no erasing the mark you have left on this world through the institutions you have built and the people whose lives you have bettered.

I was an obscure novice, with a directionless ‘interest’ in copyright law when we first met. You had, incredulously, invited me to be your teaching assistant for a remarkable course at Nirma University, on AI and Copyright Law. Not only was the subject one which I hardly expected to be broached within the restrictive confines of our academic systems, but over and above that, you had deployed a fascinating pedagogical exercise to keep the students involved. Fascinated as I had been for years by the legendary Shamnad Basheer, I knew you only through your amazing work. What I didn’t expect was that the legend would treat me like a friend, and I have the fondest memories of discussing Hong Kong cinema with you while watching Enter the Dragon. Bruce Lee doesn’t hold a candle to you.

That brief stint teaching with you sparked an affair with the law of copyright and creativity which I have not looked back on since. It led to my involvement with SpicyIP and a lasting love for intellectual property law – moving beyond the law as abstract concepts, to using it a tool for empowerment and justice. From access to medicine to access to education, your life was dedicated to practicing the law as an instrument of social empowerment, something we tend to forget in our classrooms and offices. Your faith and encouragement in my work has left an indelible imprint on my approach towards the law – to not be afraid to speak truth to power, and to use the law to fight for a more just and equitable world – something I continue to aspire to, even though I stumble often. I suppose I will have to close my eyes and imagine the inevitable mail from you proclaiming “fantastic work, divij, you showed them!” after I hesitatingly publish my next pieces on this blog.

Your illness was tremendously concerning, but I never saw you without a beaming smile and kind eyes, and your strength in adversity will remain a constant reassurance in difficult times ahead. I was looking forward to meeting you next week, after your retreat, to discuss the future of this blog and innumerable other affairs. To have you unexpectedly leave this way has been tragic, but I promise to celebrate your life and work, and live up to your legacy and expectations. Thank you, from me, and from the countless other lives you have touched, for teaching us to fight and to create the world that ought to be.

The Trade Marks Registry (TMR) issued a public notice requesting suggestions from stakeholders regarding the display and availability of documents on its official website (comments are to be submitted by September 30, 2019). It appears that the TMR has received representations from stakeholders raising concerns regarding the display of confidential information, proprietary information and personal information on its website.

The TMR is now proposing to classify documents into two categories on its website:

1. One category that will consist of documents that will be fully accessible and can be viewed / downloaded by the public.

2. The second category will contain only the name of the document but viewing / downloading will be restricted.

The public notice clarifies that the TMR does not require applicants / opponents to submit bank account details, PAN or Aadhar numbers.

One step back, slipping out the back door?

The RTI Act obligates public authorities to maintain records in a manner that facilities the right of information of the public and that ensures all records, which are appropriate to be computerised, are computerised. Further, other than those categories of information / records that are specifically exempt, public authorities are obligated to disseminate (which includes through the internet) information widely and in a manner which is easily accessible to the public.

Information that relates to commercial confidence, trade secrets and personal information are exempted for being disclosed / made accessible to the public. However, these exemptions are not absolute. With respect to information relating to commercial confidence and trade secrets, the exemption only applies if the disclosure harms the competitive position of a third party. With respect to personal information, the exemption only applies if the disclosure has no relation to any public activity or interest, or which would cause unwarranted invasion of the privacy of the individual. In both cases, the competent authority is empowered to disclose information, if public interest is satisfied.

It is for the person that seeks to restrict access to the information, to satisfy the TMR that the information falls within the exemption. These restrictions can only be imposed on a case to case basis and cannot be a result of hasty generalisations made by the TMR. The TMR is not in a position to categorise documents as confidential / proprietary or personal. Further, the TMR cannot, on its on, decide whether the disclosure of such information will result in competitive harm or invasion of privacy. Each case differs and general categorisations should not be adopted. The trademarks act or rules do not guide the TMR in this regard either and do not specifically classify documents as confidential.

Most of the information filed with the TMR is filed through pre-designated forms, e.g., a trademark application is filed in Form TM A, a notice of opposition is filed in Form TM O etc.

The proposed categorisations are arbitrary and can result in a major over classification of restricted documents / forms. For instance, in opposition proceedings, a opponent may want to establish association with a particular trade channel / show market use and recognition by submitting a list of customers, distributors and price lists. Given the broad interpretation of ‘confidential information’, such information can be classified as confidential. However, such information is only one part of the notice of opposition / evidence and not all opponents may need to disclose any confidential / proprietary information to establish a case. However, there is a risk that access to all notice of oppositions, as a general category of documents, may be restricted. Similarly, trademark application forms and most other forms require the submission of personal information (name, address, telephone number), this does not mean that trademark application forms and other forms as a category of documents can be restricted by the TMR.

Restriction of access to documents will also make due diligence processes unnecessarily complicated, incomplete and expensive. Purchasers are interested in understanding the prosecution history of important trademarks of the target company. If certain documents are restricted, getting a complete picture of the trademark may not be possible.

Assignment agreements are generally considered as commercially sensitive documents since they contain royalty rates and other commercial details. However, the industry has already adopted methods to protect their confidential information, and parties usually agree to file short form assignment agreements with the TMR. This way the fact of the assignment is recorded with all the material terms, however, commercially secret information is not disclosed in the public filing.

Artificial categorisations will also impact the prosecution process and increase the workload of the TMR. With restriction on public access, there are bound to be many RTI applications that will be filed with the TMR and the TMR’s time will be spent answering these applications which will result in a slower process and increased backlog.

Instead of blocking access to entire documents, a possible option is for the TMR to redact commercial confidential information / personal information, on a case to case basis, where the exemptions are met.

Thank you to Prashant Reddy for his inputs.

In a guest post, Karan Dhalla argues that Tips Industries v Wynk Music, which held that the statutory licensing scheme under Section 31D of the Copyright Act 1957, was wrongly decided for three reasons. First, he suggests that Section 31D does not discriminate between different mediums of broadcast because both Section 31D(1) and Section 2(dd) are clear and unambiguous, and sweeping in their scope. Second, he posits that Section 31D(1) is the operative portion of the provision, and the remaining sub-sections are only meant to be instructive in specific contexts. Thus, using Section 31D(3), which prescribes conditions of determining royalty for radio and TV broadcasts only cannot be used to read down the entire provision. Lastly, he notes that the omission of ‘internet broadcasting’ from the operative portion of the provision is just as important as its omission from the remaining portion. Thus, neither can be taken to conclusively determine the meaning of the provision.

In a guest post, Jupi Gogoi wrote about the ongoing battle between West Bengal and Odisha over obtaining GI tags for their Rasagolas. She described that battle before the GI Registry so far, and noted that the exclusion of registration of marks that are ‘generic’ under Section 9 may be relevant to disallowed registration for the Banglar Rasogolla and Odisha Rasogola. She then leaves us with a question: whether the GI registrations will actually have a positive effect through premiums on prices and socio-economic improvement.

To mark the 40th day of the passing of our Founder, Prof. Basheer, Divij shared with us some thoughts of a number of his close associates and students, including Balu Nair, Shan Kohli, Rahul Bajaj and Divij himself.

Other Developments

Indian

News

• Delhi HC grants injunction in favour of Bennett Coleman Group against use of ‘Miss India’ & ‘Mr India’.
• The government has released a press note proposing a reduction in IP filing fees for MSMEs.
• The Draft GI Amendment Rules 2019 have been notified.
• The Patent (Amendment) Rules, 2019 have been published by Ministry of Commerce and Industry.
• Gang involved in the manufacture, sale of duplicate premium watches busted in Mumbai.

Opinion

A piece in Mondaq discusses the IP and Competition challenges and remedies in India’s Automotive Spare Parts Industry in light of recent developments.

International

• 100,000 deepfake photos are up for royalty-free use in California

Image from here

We’re pleased to bring to you a guest post by our fellowship applicant, Akanshha Agrawal. Akanshha is a 3rd year student at National Law University, Delhi. This is her first submission for the Fellowship. In the first part of this two-part post, Akanshha discusses the recent US Supreme Court judgment in Iancu v. Brunetti, which held the Lanham Act’s ‘immoral or scandalous’ bar on the registration of trademarks to be unconstitutional. In Part II of the post, she analyses the constitutionality of a similar bar on the registration of scandalous and obscene trademarks under the Indian trademark law.

FUCT the USPTO? – Revisiting Free Speech Under Trademark Law (Part I)

Akanshha Agrawal

In June this year, the US Supreme Court, in Iancu v. Brunetti, had held that the ‘immoral or scandalous’ bar on the registration of trademarks under the Lanham Act violates the right to freedom of speech and expression guaranteed by the First Amendment to the US Constitution as it amounts to view point discrimination. The Court here followed its decision in Matal v. Tam (‘Tam’) from two years ago, where it had declared the Lanham Act’s bar on registration of disparaging trademarks to be unconstitutional for the same reason. The decision was analysed on the blog here and here.

Background

The Respondent, Erik Brunetti and his partner Natas Kaupas started the streetwear clothing brand FUCT in 1990. FUCT was widely known as an acronym for “Friends U Can’t Trust”. In 2011, Brunetti sought to obtain registration for its trademark ‘FUCT’ under class 25 for athletic apparel. The US Patent and Trademark Office (‘PTO’) denied registration under a provision of the Lanham Act that prohibits registration of trademarks that consist of or comprise immoral or scandalous matter. It used the Urban Dictionary to determine that the term ‘FUCT’ is the phonetic equivalent of the past tense of ‘FUCK’ i.e. ‘FUCKED’, and thus immoral and scandalous. The decision was upheld by the PTO’s Trademark Trial and Appeal Board upon review. Following this, Brunetti appealed to the US Court of Appeals for the Federal Circuit. The Court of Appeals reversed the Board’s decision, ruling that the ‘immoral or scandalous’ bar on trademark registration violates the rights guaranteed under the First Amendment and is thus unconstitutional. Upon appeal, the Court of Appeal’s decision was upheld by the US Supreme Court.

Analysis of the Court

In Tam, the Court held that the denial of trademark registration on the basis of the disparagement clause amounted to viewpoint discrimination. Firstly, the Court held that trademarks amount to commercial speech. Secondly, even though commercial speech enjoys lower protection as compared to other forms of speech, the disparagement clause does not stand even the lower threshold of scrutiny. The Court held that by allowing or denying registration of marks based on views, the government was clearly favouring certain views. This was held to be a violation of the principle of viewpoint neutrality which is fundamental to the rights granted by the First Amendment. As a consequence, the disparagement clause was held to be violative of the Constitution.

In Iancu v. Brunetti (‘Brunetti‘), the Court followed Tam and held that similar to the disparagement clause, the bar on registration of immoral and scandalous marks also amounts to viewpoint discrimination. Justice Kagan, writing the opinion of the Court, took into consideration the rejections and registrations of trademarks by the PTO in the past. She observed that the PTO has denied registration to marks such as ‘YOU CAN’T SPELL HEALTHCARE WITHOUT THC or KO KANE’ because such marks are deemed scandalous for inappropriately glamorizing drug use. These are marks expressing opinions that most Americans would find offensive. However, the PTO has granted registration for marks such as ‘D.A.R.E. TO RESIST DRUGS AND VIOLENCE’ or ‘SAY NO TO DRUGS – REALITY IS THE BEST TRIP IN LIFE’. Justice Kagan observed that it is quite obvious that the government is favouring certain ideas, which is facilitated by the Lanham Act. This cannot satisfy the scrutiny of the First Amendment. Therefore, the Court held the immoral or scandalous bar to be unconstitutional.

Implications of Brunetti on Trademark Law

The Court in Brunetti followed the principle laid down in Tam recognising that the primary purpose of trademark registration is ensuring source identification, and addition of any filters to such registration, such as the disparagement clause does not serve any purpose. Due to this, brands that were unable to register their marks earlier will be able to obtain the same now. This will allow such brands to successfully exploit the goodwill generated by them. Even though the companies were always free to use immoral or scandalous marks, they will now be able to enjoy the protection granted by trademark registration.

Even though the Court unanimously held the immoral and scandalous bar as unconstitutional, there were certain concerns on the implications that it might have. Justice Sotomayor, joined by Justice Breyer, expressed some discomfort with completely getting rid of any such bar on registration of trademarks, particularly expressing concern with registration of racial slurs. In her opinion, applicants are now going to rush to register vulgar marks and the government will be powerless to say no. A legislative action was suggested which seems necessary to ensure that the law is not abused. Vulgar marks will inevitably come up for registration and a careful legislative action will help to ensure protection from the same. However, I find it difficult to believe that the judgement will actually have such a horrifying effect as described by Justice Sotomayor. It is quite unlikely that vulgar marks will come up for registration in a mass scale. Selection and registration of marks is an important business decision and the companies would be reluctant to invest in marks that will not be accepted by the public. Therefore, the companies have a valid incentive to not file for vulgar or socially unacceptable marks.

An important concern raised by the case is the ease with which the Court accepted the user generated content from Urban Dictionary as valid evidence of the meaning of a word. This could give rise to some serious issues with respect to trademark registration in the future. Brunetti gives the applicant an opportunity to simply create certain content in relation to its mark on any user generated website and then use it as evidence while arguing for registration of that mark. Further, it is important to remember that even though the bar on scandalous or immoral trademarks has been held to be unconstitutional, there’s still a bar on registration of trademarks which bring contempt or disrepute. The case gives the rival companies an opportunity to generate contemptuous definitions of their competitors’ marks to argue against their registration.

What about the ‘Scandalous or Obscene’ Bar on Registration of Marks in India?

Similar to the US Lanham Act, the Indian Trade Marks Act, 1999 also provides certain absolute grounds for refusal of registration of trademarks. One such ground is the mark being scandalous or obscene. In the wake of Brunetti, it is important to revisit the provision that prohibits registration of such marks (Section 9(2)(c)) and assess whether it can pass the scrutiny of free speech jurisprudence in India. Part II of this post explores this question in depth.

In a bit of good news, in an otherwise bleak time for Indian IP, Justice Ravindra Bhat was recently appointed to the Supreme Court of India. For the last 15 years Justice Bhat served as a judge of the Delhi High Court (and a few months as the Chief Justice of the Rajasthan High Court) where he delivered a number of landmark judgments in IP, starting with his famous judgment in the Roche v. Cipla patent infringement battle where he denied Roche a interim injunction on the grounds of public interest. Since that judgment, Justice Bhat has achieved an iconic status in Indian and global IP circles. He is perhaps the only Indian judge to have dealt with virtually every branch of IP be it patents, copyrights, trademarks, plant variety, intermediary liability and design law. He has made an extraordinary contribution to Indian IP jurisprudence through cogent and well-reasoned judgments. Apart from IP, he has delivered landmarks judgments related to the right to Information law, the right to free speech, drug regulation law and most recently on the constitutionality of the Competition Commission of India (CCI).

I wrote a piece a few months ago highlighting some of his contributions to Indian IP jurisprudence. This is not to say I agree with all of his judgments. There have been some of his judgments like in the Monsanto case, which I think are questionable from a patent law perspective but those judgments are few and far between. Most importantly, Justice Bhat is the best example of why we do not require specialist judges. He never practiced IP law and started dealing with IP law only as a judge of the High Court. Yet he has delivered far superior judgments in IP when compared to IP practitioners appointed as judges of the Delhi High Court.

Unlike the apex courts of other countries, the Supreme Court of India does not sit en banc. It usually sits in benches of two or three, so there is no guarantee that Justice Bhat will hear every IP matter that reaches the Supreme Court. There is however an informal custom wherein the Chief Justice assigns specific matters to judges with an expertise in the subject matter. For a long time, Justice Dalveer Bhandari used to be assigned IP matters because of that one judgment in the Taj Television v. Rajan Mandal & Ors. So hopefully, some IP cases should make their way to Justice Bhat over the next 5 years. He will serve on the Court till October 2024 when he turns 65 which is the age of retirement for Supreme Court judges.

In two significant judgements made on September 24, 2019, the top court of the European Union, the CJEU, has deliberated upon the scope of the delisting and de-indexing requirements (otherwise known as the Right to Be Forgotten (‘RTBF’)) to be followed by search engine operators under the EU’s data protection laws, including the Data Protection Directive as well as the more recent General Data Protection Regulation. In Google v CNIL, the Court has held that EU law does not require or prohibit national data protection authorities from enforcing the delinking requirement at a global scale. In another dispute between French residents and CNIL, the Court has held that higher obligations for delinking exist for specific categories of sensitive personal information.

The judgements are important developments in the field of intermediary liability and data protection, particularly as India looks to import certain concepts of the right to be forgotten into its own data protection regulations.

Google Spain and the Right to Be Forgotten in the EU

The initial development of the right to ‘de-listing’ of personal information emerged in the EU as a consequence of a landmark judgement by the CJEU in Google v Spain, where the court had held that search engines must remove links to a webpage that contains personal information which is ‘inadequate, irrelevant or no longer relevant, or excessive’, (even if otherwise lawful), upon receiving adequate notice from individuals. The ruling, made in 2014, was delivered under the 1996 Data Protection Directive 95/46/EC, and linked back to Article 12(b) of the Directive, which provides that data subjects have the right to ‘rectification, erasure or blocking of data the processing of which does not comply with the provisions of [the] Directive.’

However, the Court also held that the right was not absolute and had to be read in context of the exemptions provided under the Directive, including balancing public interest in the personal information with the individual’s right to privacy. This balancing exercise was, largely, left in the hands of the search engine operator.

While Google’s Transparency Report indicates that around 45% of de-listing requests are denied, criticisms about the takedown of content relating to politicians and public figures and Google’s uneasy role as the arbiter of rights abounds as well. Even though the scope and application of the right of delinking has been largely shaped by Google’s internal practices and rules, questions ultimately arose in disputes concerning the delinking right, which were ultimately referred to the CJEU.

The Conseil d’État References: Viva La Google?

The judgements delivered by the CJEU both relate to the scope of the delinking obligation under EU law, but both arise from different disputes.

In the first case, Google v CNIL, the Court was concerned with the territorial scope of delinking requests. CNIL, the French data protection authority, claimed that an order for delinking must be enforced by Google ‘globally’, or on all of Google’s domain name extensions, which differ between jurisdictions and offer slightly differentiated services. Google argued that it was sufficient to de-link only within the EU member states or the member state of residence of the data subject. The CJEU held that EU law did not mandate that the de-linking request must be followed globally, but must at least de-link the impugned links on all versions of the search engine corresponding to EU member states. However, importantly, the decision comes with two caveats –

Firstly, the CJEU did not rule out global delisting on search engines entirely. In a somewhat incongruent phrase in Paragraph 72, the Court states that:

“a supervisory or judicial authority of a Member State remains competent to weigh up, in the light of national standards of protection of fundamental rights a data subject’s right to privacy and the protection of personal data concerning him or her, on the one hand, and the right to freedom of information, on the other, and, after weighing those rights against each other, to order, where appropriate, the operator of that search engine to carry out a de-referencing concerning all versions of that search engine.”

This leaves the door open to data protection agencies in EU states to consider situations which may gravely affect the right to privacy and order a global delisting in such situations. However, it does mean that, for the present, the EU’s right to be forgotten is restricted to the EU itself, and those of us outside its hallowed boundaries can continue to access ‘inadequate, irrelevant or excessive’ personal information.

Secondly, the CJEU ruling also requires that search engines must take ‘sufficiently effective’ measures which prevent individuals in member states from accessing the information required to be de-linked in the EU, which presumably corresponds to Google geo-fencing EU residents and redirecting to national versions of the search engine.

In the second case, concerning French citizens petitioning the CNIL, the Court was concerned with whether prohibitions on the processing of special categories of personal information applied to search engines and indexes, and if so, to what extent. These correspond to ‘sensitive’ personal information such as legal proceedings, criminal convictions, political beliefs, race or ethnicity, etc. The Court held that, for information falling within these categories, there is a default obligation on search engines to de-link such information. However, this too is subject to specific exemptions which must be weighed up and enforced by the search engines themselves. As the Court notes:

“where the operator of a search engine has received a request for de-referencing relating to a link to a web page … the operator must, on the basis of all the relevant factors of the particular case and taking into account the seriousness of the interference with the data subject’s fundamental rights to privacy and protection of personal data … ascertain, having regard to the reasons of substantial public interest … whether the inclusion of that link in the list of results displayed following a search on the basis of the data subject’s name is strictly necessary for protecting the freedom of information of internet users potentially interested in accessing that web page by means of such a search.”

Therefore, search engines bear a higher burden of proving ‘strict necessity’ prior to refusing the de-indexing of the special categories of information. In addition, the Court held that:

“even if the operator of a search engine were to find that that is not the case because the inclusion of the link in question is strictly necessary for reconciling the data subject’s rights to privacy and protection of personal data with the freedom of information of potentially interested internet users, the operator is in any event required, at the latest on the occasion of the request for de-referencing, to adjust the list of results in such a way that the overall picture it gives the internet user reflects the current legal position, which means in particular that links to web pages containing information on that point must appear in first place on the list.”

As Daphne Keller notes on Twitter, this innocuously placed paragraph has immense implications for individual name searches on Google, and also marks an interesting precedent for active intervention into determining the effect of Google’s search algorithms, apart from merely requiring Google to oblige with Notice-and-Takedown requests.

The above decisions are being praised as a victory for free speech (and for Google), and, indeed, the CJEU’s restraint and deference towards international comity in matters of cross-border effects of the privacy laws on internet access is something that should be praised – particularly in the context of other countries like Canada issuing ‘global’ takedown orders against Google in similar matters (which I had reported here).

However, I am skeptical about how much of a victory this is, particularly given the wide scope of the caveats in the first decision, and also the precedent for active judicial interventions in search algorithms without much law or indeed rationale backing such an intervention in the second. India’s own right to be forgotten jurisprudence has developed quite unevenly, and is likely to develop further – these latest developments in the EU should be carefully looked at to frame the appropriate scope for a right to be forgotten in India, particularly in its territorial scope.